Ex Parte Godsey

Patent Trial and Appeal Board

Nov 19, 2018

13462056 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/462,056 05/02/2012 Sandra Lynn Godsey
49845 7590 11/21/2018
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
UNITED ST A TES OF AMERICA
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.A36US 1 2154
EXAMINER
KONERU, SUJAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/21/2018 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):
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 SANDRA LYNN GODSEY
Appeal2017-005452 1
Application 13/462,0562
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
BART A. GERSTENBLITH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3, 5-9, 11, and 14--19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
August 29, 2016) and Reply Brief ("Reply Br.," filed February 16, 2017),
and the Examiner's Answer ("Ans.," mailed December 16, 2016) and Non-
Final Office Action ("Non-Final Act.," mailed January 6, 2016).
2 Appellant identifies eBay Inc. as the real party in interest. App. Br. 2.
Appeal2017-005452
Application 13/462,056
CLAIMED INVENTION
Appellant's claimed invention relates to "systems and methods of
inventory adjustment based on social network data" (Spec. ,r 1 ).
Claims 1, 3, and 19 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A system comprising:
one or more modules implemented by one or more
processors of a network-based publication system, including:
[ (a)] an access module comprising one or more
processors of a machine and in which at least one
processor is configured to retrieve a first set of user
submissions published within a first time period by a
social network service by making an application
programming interface (API) call to a social network
server that provides the social network service that
published the first set of user submissions;
[ (b)] a trend module comprising one or more
processors of the machine and in which at least one
processor is configured to:
identity a common first surge in submissions
per unit of time within a portion of the first set of
user submissions, and a subset of the first set of user
submissions, wherein the common first surge
indicates an increase in user submissions;
wherein the portion of the first set of
user submissions represents all user
submissions related to a product published
within the first time period; and
wherein the subset of the first set of
user submissions represents user submissions
indicating positive sentiment to the product
published within the first time period;
2
Appeal2017-005452
Application 13/462,056
via the API, retrieve a second set of user
submissions corresponding to the same product of
the first set of user submissions, published within an
earlier time period prior to the first time period by
the social network service;
the second set of user submissions
indicating a previous topical trend preceded
by a second surge in submissions per unit of
time;
the second surge in submissions per
unit of time existing within a portion of the
second set of user submissions as well as a
subset of the second set of user submissions;
wherein the portion of the second set
of user submissions represents all user
submissions related to the product published
within the earlier time period; and
wherein the subset of the second set of
user submissions represents user submissions
indicating positive sentiment to the product
published within the earlier time period;
identify a current topical trend preceded by
the identified first surge based on a comparison of
the first surge to the second surge that preceded the
previous topical trend, the identifying of the current
topical trend being performed by at least a first
processor of the machine;
[ ( c)] an inventory module comprising one or more
processors of the machine and in which at least one
processor is configured to adjust a scalar value
representative of a quantity of the same product within an
inventory based on the identified current topical trend that
is preceded by the first surge identified based on the
comparison of the first surge to the second surge that
preceded the previous topical trend, the adjusting of the
scalar value being performed by at least a second
processor of the machine; and
3
Appeal2017-005452
Application 13/462,056
[ ( d)] an order module configured to generate an
order for a further quantity of the product based on the
adjusted scalar value that represents the quantity of the
product.
REJECTION
Claims 1, 3, 5-9, 11, and 14--19 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
ANALYSIS
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: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
4
Appeal2017-005452
Application 13/462,056
"'transform the nature of the claim' into a patent-eligible application." Id.
( quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to adjusting inventory, i.e., to a
fundamental economic practice, and, therefore, to an abstract idea (Non-
Final Act. 4--5). The Examiner concluded that the claims also are directed to
an abstract idea because "the claims involve mathematical relationships for
determining trends and ... involve organizing human activities because
essential to the claims are the user submissions via a social network" (id.).
The Examiner further determined that the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception (id. at 5---6).
Appellant argues that the§ 101 rejection cannot be sustained because
the Examiner has provided no evidentiary support for the Examiner's
assertion that the claims are directed to an abstract idea; therefore, according
to Appellant, the Examiner has failed to establish a prima facie case of
patent-ineligibility (App. Br. 13-14).
5
Appeal2017-005452
Application 13/462,056
Appellant notes that the Supreme Court in Alice and Bilski3 cited
authoritative documentation as evidence that an abstract idea was long
prevalent in our system of commerce, and that the Federal Circuit also
followed this approach in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350
(Fed. Cir. 2014) (App. Br. 17-18). Appellant ostensibly maintains that the
Examiner is likewise required to provide authoritative documentation here to
establish a prima facie case of unpatentability (id. at 18). Yet, we find
nothing in Alice, Bilski, or buySAFE that requires an examiner to identify
specific references to support a determination that a claim is directed to an
abstract idea. Nor, contrary to Appellant's assertion (id.), did this Board
hold in PNC Bank v. Secure Axcess, CBM2014-00100, 2014 WL 4537440
(PTAB Sept. 9, 2014), that an examiner must provide evidentiary support in
every case before a conclusion can be made that a claim is directed to an
abstract idea (App. Br. 18). 4 Appellant also has not articulated sufficiently
Appellant's assertion that the Administrative Procedure Act imposes any
such requirement (id. at 14--16). Although evidence may be helpful, e.g.,
where facts are in dispute, it is not always needed. See Mortgage Grader,
Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325-26 (Fed. Cir.
2016) ("[I]t is also possible, as numerous cases have recognized, that a § 101
analysis may sometimes be undertaken without resolving fact issues.").
Appellant's bare assertion here that evidence is needed, without any
3 Bilski v. Kappas, 561 U.S. 593 (2010).
4 We would not be bound, in any event, by a non-precedential decision of
another panel of the Board.
6
Appeal2017-005452
Application 13/462,056
supporting reasoning as to why, is insufficient to require the Examiner to
provide evidentiary support. 5
The Federal Circuit, moreover, has observed repeatedly that "the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production." Hyatt v. Dudas, 492 F.3d. 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The court, thus, has held that the USPTO carries its procedural burden of
establishing a prima facie case when a rejection satisfies the requirements of
35 U.S.C. § 132 by notifying the applicant of the reasons for the rejection,
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application." See In
re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original). Thus,
the Office is required to set forth the statutory basis of the rejection in a
sufficiently articulate and informative manner as to meet the notice
requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990) ("Section 132 is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.").
The Examiner set forth the bases of the § 101 rejection here in a
sufficiently articulate and informative manner as to meet the notice
requirement of§ 132. And we find that the Examiner, in doing so, set forth
a prima facie case of patent-ineligibility.
Appellant does not maintain that the rejection was not understood or
that the Examiner otherwise failed to comply with the notice requirements of
5 We note that Appellant has put forward no rebuttal evidence showing the
claims are not directed to an abstract idea.
7
Appeal2017-005452
Application 13/462,056
35 U.S.C. § 132. Indeed, Appellant's understanding of the rejection is
clearly manifested by Appellant's response, as set forth in the briefs.
For much the same reasons, we are not persuaded by Appellant's
argument that the Examiner has not established a prima facie case against
the dependent claims (App. Br. 18-19). In rejecting the claims under§ 101,
the Examiner explained that all of claims 1, 3, 5-9, 11, and 14--19 are
directed to adjusting inventory, i.e., to a fundamental economic practice and
a method of organizing human activity, and, therefore, to an abstract idea;
and that the additional elements or combination of elements in the claims,
other than the abstract idea, does not amount to significantly more than the
abstract idea itself (Non-Final Act. 4--5). The Examiner further explained
that dependent claims 5-9, 11, and 14--18 do not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because
the additional elements such as accessing a webpage that
references the products, retrieving the set of user submissions
published by the social network service, positive ratings that
indicates a user of the social network service likes the product,
adjusting of scalar values, generating order for a further quantity
are not considered significantly more because, to whatever use
of hardware or computers or technology there are in these claims
that help implement these elements, would be considered routine
and conventional and can be done by a generic computer and
would also be considered mere data gathering, data
transformation and extra solution activity or merely an extension
of the abstract idea itself.
Id. at 5---6. We decline to find error in the Examiner's approach inasmuch as
the claims are all directed to the same abstract idea. See Content Extraction
& Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1348
(Fed. Cir. 2014) (explaining that when all claims are directed to the same
8
Appeal2017-005452
Application 13/462,056
abstract idea, "addressing each claim of the asserted patents [is]
unnecessary"). Aside from asserting that the Examiner failed to consider the
limitations of dependent claims 5-9, 11, and 14--18 individually, Appellant
offers no separate arguments for the patent-eligibility of these dependent
claims.
Specifically addressing the first step of the Mayo/Alice framework,
Appellant asserts that the claims are not directed to an abstract idea because,
like the claims at issue in Enfish, LLC v. Microsoft Corp., 822 F.3d. 1327
(Fed. Cir. 2016), the present claims "focus on a specific asserted
improvement in computer capabilities, particularly, generating an order that
includes a quantity of a product, wherein the quantity is calculated on-the-fly
by the system by retrieving user submissions to identify topical trends"
(App. Br. 21-22; see also Reply Br. 5---6). Yet, we find no parallel here
between the present claims and the claims in Enfish, which focused on a
specific type of data structure, i.e., a self-referential table for a computer
database, designed to improve the way a computer carries out its basic
functions of storing and retrieving data. We fail to see how, and Appellant
does not adequately explain how, generating an order, including a product
quantity, which is determined based on identified topical trends, constitutes
an improvement in computer functionality, like that involved in Enfzsh, as
opposed to an improvement in order generation for which a computer is used
as a tool in its ordinary capability.
Turning to the second step of the Mayol Alice framework, Appellant
maintains that even if the claims are directed to an abstract idea, the claims
are nonetheless patent-eligible because the claims contain an inventive
concept sufficient to transform the claimed abstract idea into a patent-
9
Appeal2017-005452
Application 13/462,056
eligible application (App. Br. 22-24). Appellant argues that the present
claims are directed to a "computer-centric problem of varying an inventory
and generating orders based on user submissions to networked systems" and
that the solution is necessarily rooted in computer technology because "user
submissions include user interactions with social media [sic] are by
definition limited to computers and networked systems" (id. at 23). Yet, the
Federal Circuit has cautioned expressly that "not all claims purporting to
address Internet-centric challenges are eligible for patent." DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). Thus, in
DDR Holdings, the court held that the claims at issue distinguished over
patent-ineligible claims that "broadly and generically claim 'use of the
Internet' to perform an abstract business practice ( with insignificant added
activity)," because they "specify how interactions with the Internet are
manipulated to yield a desired result - a result that overrides the routine
and conventional sequence of events ordinarily triggered by the click of a
hyperlink." Id. The claimed solution was "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." Id. at 1256.
We do not find here, and Appellant does not identify, any analogous
modification to the routine and conventional functioning of computer
network technology. Although user submissions may be network-centric,
adjusting inventory and generating orders based on user submissions is not a
"problem specifically arising in the realm of computer networks," DDR
Holdings, 773 F.3d at 1257, but rather a business problem that existed prior
to the Internet and computers. At best, the claimed invention, thus, appears
10
Appeal2017-005452
Application 13/462,056
to use generic computer components to perform an abstract business
practice.
For much the same reasons, we also do not agree with Appellant that
the present claims are analogous to claim 2 of the USPTO' s Example 21 in
the "July 2015 Update Appendix 1: Examples."6 (App. Br. 23). Although
Appellant ostensibly suggests otherwise, exemplary claim 2 was not
6 Exemplary claim 2, which appears at pages 2-3 of Appendix 1 of the
July 2015 Update (available at https://www.uspto.gov/sites/default/files
/ documents/ieg-july-2015-app 1.pdf), reads:
2. A method of distributing stock quotes over a network to a remote
subscriber computer, the method comprising:
providing a stock viewer application to a subscriber for installation on
the remote subscriber computer;
receiving stock quotes at a transmission server sent from a data source
over the Internet, the transmission server comprising a microprocessor
and a memory that stores the remote subscriber's preferences for
information format, destination address, specified stock price values, and
transmission schedule, wherein the microprocessor
filters the received stock quotes by comparing the received stock
quotes to the specified stock price values;
generates a stock quote alert from the filtered stock quotes that
contains a stock name, stock price and a universal resource locator
(URL), which specifies the location of the data source;
formats the stock quote alert into data blocks according to said
information format; and
transmits the formatted stock quote alert over a wireless
communication channel to a wireless device associated with a
subscriber based upon the destination address and transmission
schedule,
wherein the alert activates the stock viewer application to cause the
stock quote alert to display on the remote subscriber computer and to
enable connection via the URL to the data source over the Internet when
the wireless device is locally connected to the remote subscriber computer
and the remote subscriber computer comes online.
11
Appeal2017-005452
Application 13/462,056
determined to be patent-eligible merely because it involved the use of the
Internet. Instead, exemplary claim 2 was deemed patent-eligible because it
addressed an Internet-centric challenge, i.e., alerting a subscriber with time
sensitive information when the subscriber's computer is offline. Appellant
has not demonstrated that the present claims address any comparable
Internet-centric challenge.
Appellant further argues that the ordered combination of operations
recited in the claims "are not merely generic computer operations" and that
"a computer must be specially configured to perform such operations" (App.
Br. 23). But, the argument similarly fails.
We find no indication in the record, nor does Appellant direct us to
any indication, that the particular operations recited in the claims require any
specialized computer hardware or other inventive computer components,
invoke any assertedly inventive programming, or that the claimed invention
is implemented using other than generic computer components to perform
the claimed method steps, which is not enough for patent-eligibility. See
DDR Holdings, 773 F.3d at 1256 ("After Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.").
We also are not persuaded of Examiner error to the extent Appellant
maintains that the claimed invention is patent-eligible, i.e., that the claims
amount to "significantly more" than an abstract idea, because the claims are
allegedly novel and/or non-obvious in view of the prior art (App. Br. 24--25).
Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent-eligible. Although the second step of the Mayo/Alice framework is
12
Appeal2017-005452
Application 13/462,056
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for "an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice Corp., 134 S. Ct. at 2355 (citation omitted).
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188-89
( 1981) ("The 'novelty' of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting 1, 3, 5-9, 11, and 14--19 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection.
DECISION
The Examiner's rejection of claims 1, 3, 5-9, 11, and 14--19 under
35 U.S.C. § 101 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)(l)(iv).
AFFIRMED
13