Ex Parte Farraro et al

Patent Trial and Appeal Board

Jun 18, 2018

12638897 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/638,897 12/15/2009 Eric J. Farraro
150601 7590 06/20/2018
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
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.
2043.655US 1 5885
EXAMINER
CIVAN,ETHAND
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
tquick@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC J. F ARRARO, JOHN TAPLEY,
and WEI DIANA CHIANG
Appeal2016-006435
Application 12/638,897
Technology Center 3600
Before BIBHU R. MOHANTY, MEREDITH C. PETRA VICK, and
AMEE A. SHAH, 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 from the final
rejection of claims 1-20 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.
Appeal2016-006435
Application 12/638,897
THE INVENTION
The Appellants' claimed invention is directed to a system and method
of allowing a user to select fashion accessories in an electronic marketplace
(Spec., para. 2). Claim 14, reproduced below, is representative of the
subject matter on appeal.
14. A method of retrieving information related to
marketplace items within an electronic environment, the
method comprising:
storing the information related to the marketplace items,
the information including one or more user-created items, the
one or more user-created items including images of a plurality
of celebrity models, each of the plurality of celebrity models
having one or more tagged items, each of the one or more
tagged items having associated descriptive metadata;
receiving a query from an end-user;
querying the stored information, using one or more
hardware-based processors, to match constraints contained
within the query to the associated descriptive metadata of the
one or more tagged items; and
displaying to the end-user one of the plurality of celebrity
models and the one or more tagged items.
THE REJECTION
The following rejection is before us for review:
Claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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Appeal2016-006435
Application 12/638,897
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 1.
ANALYSIS
Re} ection under 3 5 US. C. § 101
The Appellants argue that the rejection of claim 14 is improper
because the claims have not been shown to be patent-ineligible subject
matter (App. Br. 9-12). The Appellants argue the claim has not been
properly shown to be an abstract idea (App. Br. 12, 13, 16, 17). The
Appellants further argue that the claim is directed to "significantly more"
than any alleged abstract idea (App. Br. 13, 17, 18). The Appellants also
argue that the rejection failed to properly consider the dependent claims
(App. Br. 14).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2, 3, Ans. 2-9).
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 Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
1 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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Appeal2016-006435
Application 12/638,897
In judging whether claim 14 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" 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 2357.
Here, we determine that the claim is directed to the concept of storing
information, receiving a query, and performing the query. This is a method
of organizing human information and fundamental economic practice long
prevalent in our system of commerce, and is an abstract idea beyond the
scope of§ 101. See 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
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Appeal2016-006435
Application 12/638,897
abstract idea using generic computer components. We conclude that it does
not.
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. The
Specification, at paragraphs 63----67, describes using conventional computer
components such as personal computers, computer networks, and memory
devices in a conventional manner for their known uses.
We note the point about pre-emption (App. Br. 15). While pre-
emption "might tend to impede innovation more than it would tend to
promote it, 'thereby thwarting the primary object of the patent laws'" (Alice,
134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012)), "the absence of complete preemption
does not demonstrate patent eligibility" (Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362----63 (Fed. Cir. 2015),
cert. denied, 136 S. Ct. 701, 193 (2015) ("[T]hat the claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.").
For this reason the rejection of claim 14 is sustained.
We reach the same conclusion as to independent system claim 10.
Here, as in Alice, "the system claims are no different in substance from the
method claims. The method claims recite the abstract idea implemented on
a generic computer; the system claims recite a handful of generic computer
components configured to implement the same idea." Alice 134 S. Ct. at
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Appeal2016-006435
Application 12/638,897
2351. "[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention. Stating an
abstract idea 'while adding the words "apply it'" is not enough for patent
eligibility." Id. at 2358 (quoting Mayo, 132 S. Ct. at 1294).
Independent claims 1 and 19 are directed to similar subject matter and
the rejection of these claims is sustained as well. The Appellants have
provided no specific arguments for the subject matter of the dependent
claims in the application. However, a review of these claims indicates that
they are directed to similar subject matter and the rejection of these claims is
sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-20 under 35 U.S.C. § 101
DECISION
The Examiner's rejection of claims 1-20 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)(l ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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