Ex Parte Grove et al

Patent Trial and Appeal Board

Feb 14, 2018

13225009 (P.T.A.B. Feb. 14, 2018)

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.
13/225,009 09/02/2011 Steve Grove P2395.10156US04 1607
132897 7590 02/16/2018
Maschoff Brennan/ PayPal
1389 Center Drive, Ste 300
Park City, UT 84098
EXAMINER
OYEBISI, OJO O
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
02/16/2018 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):
docket @ mabr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE GROVE, KEVIN DULSKY, and ZAK EDSON
Appeal 2016-004856
Application 13/225,009
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’
final decision rejecting claims 1—9, 11—20, 22—31, and 33—39, which are all
of the pending claims, under 35 U.S.C. § 101 as being directed to non-
statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief (“Br.,”
filed June 25, 2015) and Specification (“Spec.,” filed Sept. 2, 2011), and to
the Examiner’s Answer (“Ans.,” mailed Feb. 1, 2016) and Final Office
Action (“Final Act.,” mailed Mar. 25, 2015).
2 According to the Appellants, the real party in interest is eBay Inc. Br. 2.
Appeal 2016-004856
Application 13/225,009
STATEMENT OF THE CASE
The Appellants’ “invention relates generally to purchasing products
over a network-based commerce facility. More particularly, the invention
relates to a system and method for submitting offers to purchase products
offered via the Internet.” Spec. 12.
Claims 1, 12, 23, and 34 are the independent claims on appeal.
Claim 1 (Br. 28 (Claims App.)) is illustrative of the subject matter on appeal,
and is reproduced below:
1. A computer implemented method comprising:
presenting, via a network-connected computer and a user
interface, a plurality of listings to a user;
presenting periodic payment data associated with each of
the plurality of listings to the user via the user interface, the
periodic payment data being specific to the user,
the periodic payment data informing the user of a cost
associated with each of the plurality of listings based on periodic
payments;
presenting both the plurality of listings and the periodic
payment data associated with each of the plurality of listings to
the user via the user interface;
receiving financing data from a financing facility;
identifying, from the financing data, a maximum bid based
on the periodic payment data to effect a transaction, the
maximum bid being uniquely associated with the user; and
allowing the user to bid on one of the plurality of listings
up to the maximum bid.
ANALYSIS
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
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this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (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, 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. (citing
Mayo, 132 S. Ct. at 1296—97). If so, the second step is to consider the
elements of the claims “individually and ‘as an ordered combination”’ to
determine whether the additional elements “‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct.
at 1297-98).
In other words, the second step is to “search for an ‘inventive
concept’—i.e., 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.’” Id. (alteration in original) (quoting
Mayo, 132 S. Ct. at 1294). 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, 132 S. Ct. at 1293.
We, therefore, look to whether the claims focus on a specific means or
method that improves the relevant technology or are instead directed to a
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result or effect that itself is the abstract idea, and merely invoke generic
processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
Prima Face Case
The Appellants first contend that the Examiner’s rejection is in error
because the Examiner “has not established a prima facie case that the claims
are not directed to patent-eligible subject matter.” Br. 7 (emphasis omitted);
see also id. at 8—13. We disagree.
We find unpersuasive the Appellants’ arguments that the Examiner
has not met the burdens outlined in the Administrative Procedure Act,
MPEP, and Supreme Court, Federal Circuit, and PTAB to “provide
‘substantial evidence’” in the form of “support or evidence and . . . argument
or reasoning as to why” facilitating a transaction is “a fundamental economic
practice” (Br. 8—9; see also id. at 11—12), and “to clearly articulate the
reasoning and underlying findings of fact to support a rejection under
35 U.S.C. § 101” (id. at 10 (emphases omitted)). We note that patent
eligibility is a question of law reviewable de novo. Dealertrack, Inc. v.
Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012); In re Ferguson, 558 F.3d
1359,1363 (Fed. Cir. 2009).
Here, in rejecting the pending claims under § 101, the Examiner
analyzes the claims using the Mayo!Alice two-step framework. Specifically,
the Examiner looks to the language of the claims and determines that the
claims are directed to the abstract idea of “facilitating a transaction in a
network-based commerce facility,” a fundamental economic practice. Final
Act. 3; see also Ans. 2. The Examiner further determines that the additional
elements of the claims, taken alone and as an ordered combination, do not
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transform the abstract idea into a patent eligible invention, because “the
claims do not include an improvement to another technology or technical
field, an improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment,” noting that the functions of the
claims “are done by generically recited storage devices and computer
processors.” Final Act. 3; see also Ans. 2—5. And the Examiner determines
that “[t]he limitations are merely instructions to implement the abstract idea
on a computer and require no more than a generic computer to perform
generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.” Final Act. 3; see
also Ans. 2—5. The Examiner, thus, has clearly articulated and has notified
Appellants of the reasons for the rejection.3
Further, there is no such requirement that Examiners must provide
evidentiary or documentary support in every case before a conclusion can be
made that a claim is directed to an abstract idea. Evidence may be helpful in
certain situations where, for instance, facts are in dispute. But it is not
always necessary. It is not necessary in this case. Although the Appellants
cite to Alice, 134 S. Ct. 2347, Bilski v. Kappos, 561 U.S. 593, 611 (2010),
and to BuySAFE, Inc. v. Google, Inc,, 765 F.3d 1350, 1354 (Fed. Cir. 2104),
(Br. 11, n. 19—20), the Appellants do not direct attention to, nor do we find,
any statement that requires the Examiner to identity specific references or
documentation to support a finding that a claim is directed to an abstract
3 We further note that the MPEP and guidelines are not legal requirements.
Cf. In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005) (“The MPEP and
Guidelines ‘are not binding on this court’”) (citations omitted).
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idea. Nor, contrary to Appellants’ assertions {id. at 11—12), did this Board
hold, in PNC Bank v. Secure Axcess, LLC, CBM2014-00100,
2014 WL 4537440 (PTAB Sept. 9, 2014), rex’d-in-p art, vacated-in-part,
Secure Axcess, LLC v. PNC Bank Nat’l Ass'n, 848 F.3d 1370 (Fed. Cir.
2017) or in Ex parte Renald Poisson, Appeal No. 2012-011084 (PTAB
Feb. 27, 2015), that there is any such requirement.4
Moreover, the Federal Circuit has repeatedly noted 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 has, thus, held that the USPTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies the requirements
of 35 U.S.C. § 132 by notifying the Appellants of the reasons for 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). Thus, all that is required of
the Examiner is that it 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 has clearly articulated
the reasons for the rejection and has notified Appellants of the reasons for
the rejection “together with such information and references as may be
4 We would not be bound, in any event, by a non-precedential decision of
the Board.
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useful in judging of the propriety of continuing the prosecution of [the]
application.” 35 U.S.C. § 132. And we find that, in doing so, the Examiner
set forth a prima facie case of unpatentability.
We also find unpersuasive the Appellants’ argument that the
Examiner “failed to consider the dependent claim elements separately and
has not established a prima facie case against the dependent claims.” Br. 12
(emphases omitted); see also id. at 13. We decline to find error in the
Examiner’s decision not to recite each dependent claim limitation and
address its patent-eligibility separately. The Examiner’s discussion in the
Final Office Action appears under the heading “Claims 1—9, 11—20, 22—31,
and 33—39 are rejected under 35 U.S.C. 101 because the claim(s) as a whole,
considering all claim elements both individually and in combination, do not
amount to significantly more than an abstract idea” Final Act. 3. There is
no indication that the Appellants were not put on notice of the Examiner’s
rejection regarding the dependent claims or that the rejection otherwise
failed to satisfy the requirements of 35 U.S.C. § 132.
Streamlined-analysis
We are not persuaded of Examiner error by the Appellants’ argument
that “the claims do not preempt the entire field of ‘facilitating a transaction
in a network-based commerce facility,”’ and thus “should have been
analyzed using the streamlined analysis.” Br. 13—14 (citing 2014 Interim
Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16,
2014) (“Interim Guidance”). There is no dispute that the Supreme Court has
described “the concern that drives [the exclusion of abstract ideas from
patent eligible subject matter] as one of pre-emption.” Alice Corp.,
134 S. Ct. at 2354. But characterizing preemption as a driving concern for
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patent eligibility is not the same as characterizing pre-emption as the sole
test for patent eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
“[Preemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility.” Id.
Further, as set forth in the Interim Guidance, the streamlined analysis
is an optional tool for Examiners to use at the Examiner's discretion. See
Interim Guidance at 74625 (“[A] streamlined eligibility analysis can be
used.”) (emphasis added). “[I]f there is doubt as to whether the applicant is
effectively seeking coverage for a judicial exception itself, the full analysis
should be conducted.” Id. (emphasis added). Here, the Examiner’s decision
to perform a full § 101 analysis is not an error.
First step of the Alice framework
We find supported and adopt the Examiner’s determination that the
claims are directed to “facilitating a transaction in a network-based
commerce facility,” without any inventive technology. See Final Act. 3,
Ans. 2, 4. Independent claims 1, 12, 23, and 34 recite methods and
apparatuses to perform the functions of presenting data comprising listings
and payments, receiving financial data, identifying maximum bid data, and
allowing the user to bid. See Br. 28—33 (Claims App.). The dependent
claims further provide for receiving a selection of the data and presenting
option data, further narrow where and the type of data listed, and conditional
acceptance of a bid. See id. The Specification provides that the invention
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“generally to purchasing products over a network-based commerce facility,”
and more particularly to “submitting offers to purchase products offered via
the Internet.” Spec. 12. We note that the Appellants do not contest the
Examiner’s characterization of the claims.
The claims are similar to those found to be abstract ideas in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (using
advertising as an exchange or currency), Smart Sys. Innovations, LLC v.
Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017) (“formation of
financial transactions in a particular field (i.e., mass transit) and data
collection related to such transactions.”), and Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (summarizing cases discussing “claims directed to the
performance of certain financial transactions as involving abstract ideas”).
As such, we find unpersuasive the Appellants’ argument that the
claims are not directed to an abstract idea because they “are not directed to
an idea of itself.” Br. 15 (emphases omitted). We further find unpersuasive
the Appellants’ argument that “[t]he claims at issue are not directed to a
fundamental economic practice long prevalent in our system of commerce,”
because “the Examiner has provided no such proof.” Id. at 16 (emphases
omitted). As discussed above, there is no such requirement on the part of
the Examiner. Further, as discussed above, the claims at issue here are
similar to those our reviewing courts have found to be directed to abstract
fundamental economic practices. See Amdocs (Israel) Limited v. Openet
Telecom, Inc., 841 F.3d 1288, 1294—1301 (Fed. Cir. 2016) (applying the
decisional mechanism of examining earlier cases to determine whether the
claims are directed to a patent-ineligible abstract idea).
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We also find unpersuasive the Appellants’ argument that the claims
are not directed to an abstract idea because “[w]hen viewed as a whole, the
claims at issue do not seek to tie up a judicial exception such that others
cannot practice it.” Br. 17 (emphases omitted); see also id. at 18. As
discussed above, “questions on preemption are inherent in and resolved by
the § 101 analysis” and “the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa, 788 F.3d at 1379; see also Two-Way
Media Ltd. V. Comcast Cable Comms., LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (“where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Alice framework, as they are in this case,
preemption concerns are fully addressed and made moot.”).
Second step of the Alice framework
We do not agree with the Appellants’ contention that “[ajssuming,
arguendo, that the claims at issue are directed to an abstract idea, the claims
at issue are nevertheless directed to patentable subject matter.” Br. 18
(emphases omitted); see also id. at 19-23.
Rather, we find supported and adopt the Examiner’s determinations
that the steps and functions of the claims, considered individually and as an
ordered combination, “do not include an improvement to another technology
or technical field, an improvement to the functioning of the computer itself,
or meaningful limitations beyond generally linking the use of an abstract
idea to a particular technological environment,” “are done by the generically
recited storage devices and computer processors,” and “are merely
instructions to implement the abstract idea on a computer and require no
more than a generic computer to perform generic computer functions that are
well-understood, routine and conventional activities previously known to the
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industry.” Final Act. 3; see also Ans. 3—5. The Specification supports this
view in providing for a system, comprising a generic client machine, servers
and database, to perform the functions of the claims. See Spec. Tflf 18—22,
Fig. 1. There is no further specification of particular technology for
performing the steps. See Affinity Labs of Texas, LLC v. DIRECTV, LLC,
838 F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfish, 822 F.3d. at 1336
(focusing on whether the claim is “an improvement to the computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity”). As such, we find unpersuasive the
Appellants’ argument that the Examiner’s rejection is in error because the
Examiner “misapplied both the law and the guidelines.” Br. 23—25. Rather,
we conclude the Examiner properly applies the Alice framework.
We do not agree with Appellants’ contention that the claims are
eligible under § 101 because “[a]n analysis of the relevant factors weighs in
favor of the subject matter eligibility of the claims at issue.” Br. 18
(emphases omitted); see also id. at 19-22.
Contrary to the Appellants’ assertions, the claims are not eligible
under § 101 because they “recite a specially-configured computer.” Br. 19.
A general purpose computer programmed to perform conventional functions
does not amount to an inventive concept such that the claims are
significantly more than the abstract idea. See EON Corp. IP Holdings LLC
v. AT & TMobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A
microprocessor or general purpose computer lends sufficient structure only
to basic functions of a microprocessor. All other computer-implemented
functions require disclosure of an algorithm.”), and Alice, 134 S. Ct. at
2357—60 (Applying an abstract idea, such as an algorithm, on a general
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purpose computer is not enough to transform a patent-ineligible abstract idea
into a patent-eligible invention.).
The Appellants’ argument that the claims are significantly more than
the abstract idea because they recite operations “at a lower-level of
generality than the operations recited in the claims at issue in Bilski and
Alice” (Br. 20) is unpersuasive because the limitations, even if specific,
merely elaborate on the abstract idea using generic technology to perform
routine, conventional, and well-understood functions of presenting,
receiving, identifying, and allowing submission of data.
The Appellants’ argument that the functions are not purely
conventional functions (Br. 20) is unpersuasive of error. The Appellants do
not provide adequate evidence as to how or why the claimed functions of
presenting, receiving, identifying, and allowing submission of data are not
conventional functions of a generic computer. The introduction of a
computer to implement an abstract idea is not a patentable application of the
abstract idea. Alice, 134 S. Ct. at 2357—58. The computer implementation
here is purely conventional and performs basic functions. See id. at 2359-
60. The Appellants do not adequately show how the claimed functions are
done technically such that they are not routine and conventional functions of
a generic computer. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1334 (Fed. Cir. 2015).
That “the Examiner has not presented any rejections of the claims
under 35 U.S.C. §102 or 35 U.S.C. §103” (Br. 20), does not automatically
indicate patent-eligible subject matter under 35 U.S.C. § 101. An abstract
idea does not transform into an inventive concept just because the prior art
does not disclose or suggest it. See Mayo, 132 S. Ct. at 1304.
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“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology, 133 S. Ct.
at 2117. Indeed, “[t]he ‘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.” Diamond v. Diehr, 450 U.S. 175, 188—89
(1981); see also Mayo, 132 S. Ct. at 1304 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the better
established inquiry under § 101”).
The Appellants’ argument that the elements of the claims as an
ordered combination are something more than the abstract idea (Br. 20—21)
is not persuasive. The claims use a conventional ordering of steps — first
presenting data, then receiving data and identifying data based on the
received data, and allowing submission of further data — with conventional
technology to achieve the desired result. See Two-Way Media, 874 F.3d
at 1339.
The Appellants’ argument that the claims amount to significantly
more than the abstract idea because they “purport to improve the functioning
of the computer itself’ (Br. 21) is unpersuasive. Identifying maximum bid
data associated with a user does not improve the technology of the computer
itself. At best, it improves a consumer/fmancial problem of being aware of
monthly payment obligations of a bid. See Spec. 14. The Appellants do not
provide adequate evidence or technical reasoning that the claims improve
some existing technological process or solve some technological problem in
conventional industry practice. Versata, 793 F.3d at 1334 (Fed. Cir. 2015)
(finding that the “claims recit[ed] a commonplace business method aimed at
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processing business information despite being applied on a general purpose
computer.”).
The Appellants’ argument that the claims “do not preempt the
making, using, and selling of basic tools of scientific and technological
work” (Br. 21) is unpersuasive for the reasons discussed above.
We do not agree with the Appellants’ contention that the claims are
eligible under § 101 because “[l]ike the claims in DDR Holdings[, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)], the claims at issue are
rooted in computer technology in order to overcome a problem specifically
arising in a particular computer realm.” Br. 22 (emphases omitted). The
Appellants identify the problem specifically arising in computer networks
that the claims overcome as “allowing a user to bid on an item using a
monthly payment up to a user-customized maximum bid.” Id. However,
this is not a technological problem specifically arising from computer
network technology, but a fmancial/consumer issue that is applied to the
field of the Internet. Rather, the present claims generically and broadly
recite the use of a network and components operating in their normal
capacities. See DDR Holdings, 773 F.3d at 1258—59 (citing Ultramercial,
772 F.3d at 1264).
Finally, we do not agree with the Appellants’ contention that
dependent claims 7, 18, and 20 are directed to statutory subject matter
because the additional limitation of the claims of presenting the user with a
bid option based on a single payment is “distinct and unconventional.”
Br. 26. The step of further displaying option data simply elaborates on the
abstract idea at issue. And, as discussed above, further providing option data
based on other data is a routine, convention, well-understood function of a
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generic computer. Further, as discussed above, novelty does not
automatically indicate patent-eligible subject matter under 35 U.S.C. § 101.
Thus, we are not persuaded that the Examiner erred in rejecting
claims 1—9, 11—20, 22—31, and 33—39 under 35 U.S.C. § 101, and we sustain
the Examiner’s rejection.
DECISION
The Examiner’s rejection of claims 1—9, 11—20, 22—31, and 33—39
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
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