Ex Parte Fu

Patent Trial and Appeal Board

Jul 24, 2017

13132017 (P.T.A.B. Jul. 24, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/132,017 01/03/2012 Yanchao Fu 2043.589US2 1302
49845 7590 07/26/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
CIV AN, ETHAN D
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
07/26/2017 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):
USPTO@SLWIP.COM
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YANCHAO FU
Appeal 2015-007619
Application 13/132,0171
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of 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.
1 The Appeal Brief (page 2) identifies eBay Inc. as the real party in interest.
Appeal 2015-007619
Application 13/132,017
THE INVENTION
The Appellant’s claimed invention is directed to electronic commerce
activities over a network (Spec. 1,11. 9, 10). Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A computerized method comprising:
accessing information retrieved from a search query conducted
by a potential buyer for a product;
extracting buyer information of the potential buyer from the
accessed information, the buyer information including contact and
interest information of the potential buyer;
transmitting the buyer information of the potential buyer to a
third party;
receiving a compensation for the product from the potential
buyer, the compensation identifying the third party as a promoter of
the product; and
transferring, using one or more processors, a commission to the
third party in response to the received compensation for the product
from the potential buyer, wherein the commission to the third party is
determined based on a reputation of the third party that is evaluated by
a total value of one or more past successful promotions achieved by
the third party.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1—20 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1—20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Donaldson (US 2005/0203766 Al, pub. Sept. 15, 2005)
and Shastry (US 2008/0147540 Al, pub. June 19, 2008).
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Appeal 2015-007619
Application 13/132,017
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 U.S.C. § 101
The Appellant argues that the rejection of claim 1 under 35 U.S.C.
§ 101 is improper because the claim recites more than a generic computer
structure performing generic computer functions, is more than a mere
abstract idea, solves a technological problem in conventional industry
practice, and that the claim passes the machine or transformation test (App.
Br. 7-10, Reply Br. 2, 3).
In contrast, the Examiner has determined that the rejection is proper
(Ans. 2, 3, 8, 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: “[ljaws of
nature, natural phenomena, and abstract ideas” are not patentable. See, e.g.,
Alice Corp. Pty Ltd. v. CLS Bank Inti, 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
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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Appeal 2015-007619
Application 13/132,017
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 2358.
Here, we find that the claim is directed to the concept of providing
commissions between parties in a sales transaction. This is a fundamental
economic practice long prevalent in our system of commerce, and is an
abstract idea beyond the scope of § 101. 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.
Considering each of the claim elements in turn, 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.
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Appeal 2015-007619
Application 13/132,017
Here, the claim is not rooted in technology, but rather in the abstract
concept of providing commissions between parties in a sales transaction.
For these reasons this rejection of claim 1 is sustained.
Rejection under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitation wherein:
the commission to the third party is determined based on a reputation
of the third party that is evaluated by a total value of one or more past
successful promotions achieved by the third party
(App. Br., Claims App’x).
In contrast, the Examiner has determined that the cited claim
limitation is suggested by the combination of Donaldson flflf 17, 18, 24—26)
and Shastry 18, 19) (Ans. 4, 5, 10).
We agree with the Appellant. Here the argued claim limitation
requires in part that the commission to the third party “is evaluated by a total
value of one or more past successful promotions achieved by the third
party.” While Shastry at paragraphs 18 and 19 does disclose the use of a
third party 105 in the transaction, there is no specific disclosure that the third
party specifically performed past promotions. For these reasons the
rejection of claim 1 and its dependent claims is not sustained. The
remaining independent claims 9 and 15 contain a similar limitation and the
rejection of these claims is not sustained as well.
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Appeal 2015-007619
Application 13/132,017
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1—20 under 35 U.S.C. § 101.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1—20 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 1—20 is affirmed.
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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