Ex Parte Carroll et al

Patent Trial and Appeal Board

Oct 31, 2018

14309826 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/309,826 06/19/2014
43699 7590 11/02/2018
Go Daddy Operating Company, LLC
14455 NORTH HAYDEN ROAD
SUITE 219
SCOTTSDALE, AZ 85260
FIRST NAMED INVENTOR
James Carroll
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
0396 2343
EXAMINER
WONG,ERICTAKWAI
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
11/02/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
inventions@godaddy.com
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES CARROLL, PHILIP DAVIDSON, and
THY AGARAJAN LAKSHMANAN,
Appeal2017-005631
Application 14/3 09, 826 1
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3-8, 10-14, and 16-20, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
1 According to the Appellants the real party in interest is Go Daddy
Operating Company, LLC. App. Br. 2.
Appeal2017-005631
Application 14/309,826
THE INVENTION
The Appellants' claimed invention is directed to the modification or
optimization of website content for a given market or locale (Spec., para. 1).
Claim 1, reproduced below, is representative of the subject matter on appeal.
App. Br. 21.
1. A method, comprising:
communicating over a computer network by a hosting provider
with a website administrator, wherein the website administrator is
using a mobile device to communicate over the computer network
with the hosting provider;
receiving over the computer network by the hosting provider a
country and a language setting from the mobile device;
identifying by the hosting provider a target market based on the
country and the language settings from the mobile device, wherein the
target market comprises a geographical region and a language;
selecting by the hosting provider a template for a web page,
comprising a plurality of placeholders for content for the web page,
that matches the target market;
displaying by the hosting provider for selection by the website
administrator content stored in a content database, wherein the content
comprises one or more images associated with the target market;
replacing by the hosting provider the plurality of placeholders
in the template for the web page with the content stored in the content
database selected by the website administrator, thereby designing the
web page;
displaying by the hosting provider over the computer network
the web page with the selected content to the website administrator
using the mobile device;
hosting by the hosting provider the web page using the selected
template and the selected content;
receiving over the computer network by the hosting provider a
request for the web page from a user, the web page being configured
to enable the user to perform a financial transaction;
determining by the hosting provider a location of the user;
determining by the hosting provider one or more preferred methods of
payment for a geographical region including the location of the user;
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Appeal2017-005631
Application 14/309,826
generating by the hosting provider web page content in
response to the request, the web page content being configured to
enable the user to use at least one of the one or more preferred
methods of payment to perform the financial transaction; and
transmitting by the hosting provider the web page content to the
user.
THE REJECTION
The following rejection is before us for review:
Claims 1, 3-8, 10-14, and 16-20 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 2
ANALYSIS
Rejection under 35 USC§ 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea; improves the computer network;
and is rooted in computer technology (App. Br. 10-18). The Appellants also
argue that the claim is not directed to a "fundamental economic practice"
and solves a particular challenge (Reply Br. 2, 3).
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2017-005631
Application 14/309,826
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2-11, Ans. 2-8).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a "new and useful process, machine, manufacture,
or composition of matter." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as "an ordered
combination" to determine whether the additional elements "transform the
nature of the claim" into a patent-eligible application of the abstract idea. Id.
This is a search for an "inventive concept," i.e., an element or combination
of elements sufficient to ensure that the claim amounts to "significantly
more" than the abstract idea itself. Id. The Court also stated that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Id at 2358.
Here, we determine that the claim is directed to the concept of
providing templates, content, and methods of payment based on a target
market audience. This is a method of organizing human activities and a
fundamental economic practice long prevalent in our system of commerce,
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Appeal2017-005631
Application 14/309,826
and is an abstract idea beyond the scope of§ 101. In Intellectual Ventures I
LLC v. Capital One Bank (USA) 792 F. 3d 1363, 1369 (Fed. Cir. 2015),
tailoring content on a website based on a user's location and time of day was
held to be a fundamental economic practice and directed to an abstract idea.
See also Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016) where collecting information, analyzing it, and displaying
results from certain results of the collection and analysis was held to be an
abstract idea.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. The Specification at paragraphs O 17 and 108 describes using
conventional computer devices and hardware in a conventional manner for
their known functions.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. We reach the
same conclusion when the elements of the claim are considered as an
ordered combination.
For these reasons the rejection of claim 1 is sustained. The Appellants
have provided the same arguments for the remaining claims and the rejection
of these claims is, therefore, sustained as well.
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Application 14/309,826
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1, 3-8, 10-14, and 16-20 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1, 3-8, 10-14, and 16-20 is
sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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