Ex Parte Hand et al

Patent Trial and Appeal Board

Dec 6, 2018

11161467 (P.T.A.B. Dec. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/161,467 08/04/2005
27571 7590
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
12/10/2018
FIRST NAMED INVENTOR
Richard Hand
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.
6857-32010 2466
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/10/2018 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):
patents@ascendalaw.com
tarek.fahmi@ascendalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD HAND, WENDY LEVITT,
DAVID PEREIRA, ANNA AUSTIN, GREGORY COLES,
DUANE JACOBSEN, VINNY KHOSLA,
THOMAS LUNSFORD, RENEE RICHARDS, and
LEIGH TOMASKI
Appeal2017-007469
Application 11/161,467 1
Technology Center 3600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and LARRY J. HUME,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1 and 65-83, which are all claims pending in the
application. Appellants have canceled claims 2---64. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is III Holdings 1, LLC.
App. Br. 3.
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STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[]
generally to a method and system for tracking tickets, and more specifically
to a method and system for tracking unused electronic tickets and for
providing refunds for those tickets." Spec. ,r 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested prior-art limitations):
1. A method comprising:
a computing system retrieving, from a central reservation
system database, information regarding a travel ticket;
based on the retrieved information, the computing system
determining for the travel ticket that a time interval for an
unused segment of a trip associated with the travel ticket has
elapsed,
wherein the time interval corresponds to an aging period
greater than zero days for the travel ticket and is measured
starting on or after a travel date of the unused segment;
calculating, by the computer system, in response to the
determining, a residual value of the travel ticket; and
initiating, by the computer system, a refund or credit for
the residual value, wherein the determining and the initiating
are performed without a request by a user for a refund or credit
for the travel ticket.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Nov. 21, 2016); Reply Brief ("Reply Br.," filed Apr. 14, 2017); Examiner's
Answer ("Ans.," mailed Feb. 14, 2017); Final Office Action ("Final Act.,"
mailed Feb. 19, 2016); and the original Specification ("Spec.," filed
Aug. 4, 2005)
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Thomas et al. ("Thomas") US 2002/0091571 Al July 11, 2002
Gardner et al. ("Gardner") US 2002/0178034 Al Nov. 28, 2002
Rejections on Appeal3
RI. Claims 1 and 65-83 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 3.
R2. Claims 1 and 65-83 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Gardner in view of the Examiner's taking of Official
Notice. Final Act. 11 et seq.; Ans. 2.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 7-22) and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of patent-ineligible
subject matter Rejection RI of claims 1 and 65-83 on the basis of
representative claim 1; and we also decide the appeal of obviousness
Rejection R2 of claims 1 and 65-83 on the basis of representative claim 1. 4
3 The Examiner has withdrawn the rejection of claim 1 on the ground of
nonstatutory obviousness-type double patenting (OTDP) as being
unpatentable over claims 1---6, 8-10, 13-16, and 19-23 of Hand '313 in view
of Gardner and Thomas. See Advisory Action mailed Apr. 29, 2016.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claim 1 and,
unless otherwise noted, we incorporate by reference herein and adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
1. § 101 Rejection RI of Claims 1 and 65-83
Issue 1
Appellants argue (App. Br. 9-17; Reply Br. 2-3) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus is patent-ineligible under
§ 101?
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Analysis
Alice Framework
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Alice Corp., 134 S. Ct. at 2354.
The Supreme Court's two-part Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Alice Corp., 134 S. Ct. at 2354 (internal quotation marks,
citation, and bracketing omitted). First, we "determine whether the claims at
issue are directed to [a] patent-ineligible concept[]." Id. at 2355. If so, we
"examine the elements of the claim to determine whether it contains an
'inventive concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 79).
Although the two steps of the Alice framework are related, the "Supreme
Court's formulation makes clear that the first-stage filter is a meaningful one,
sometimes ending the § 101 inquiry." Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the Supreme Court
"has not established a definitive rule to determine what constitutes an
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'abstract idea"' for the purposes of step one. Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S. Ct at 2357).
In Enfzsh, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
Alice. Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed.
Cir. 2016). The disclosed technique enabled faster searching and more
effective storage of data than previous methods. Id. at 1333. The court
found the claims directed to "a specific improvement to the way computers
operate, embodied in the self-referential table" (id. at 1336), and explained
that the claims are "not simply directed to any form of storing tabular data,
but instead are specifically directed to a self-referential table for a computer
database" that functions differently than conventional databases. Id. at 1337.
In McRO, the claims were not held to be abstract because they recited
a "specific ... improvement in computer animation" using "unconventional
rules that relate[ d] sub-sequences of phonemes, timings, and morph weight
sets." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1302-
03, 1307---08, 1314--15 (Fed. Cir. 2016). In McRO, "the incorporation of the
claimed rules, not the use of the computer," improved an existing
technological process. Id. at 1314.
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "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. Abstract ideas may include, but are not limited to, fundamental
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economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice 134 S. Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step 1 -Abstract Idea
Appellants generally contend the Examiner erred in asserting the
claims are directed to an abstract idea. App. Br. 12. More specifically,
Appellants argues, "[t]he claims do not "merely recite the performance of
some business practice known from the pre-Internet world along with the
requirement to perform it on the Internet," but instead, "the claimed solution
is necessarily rooted in computer technology in order to overcome a problem
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specifically arising in the realm of computer networks." App. Br. 13
( emphasis omitted).
Appellants further contend the Examiner erred because no evidence is
cited to establish that the claims are abstract. App. Br. 16-17.
Appellants' argument concerning the absence of evidence supporting
the § 101 rejection also does not persuade us of Examiner error. "Patent
eligibility under§ 101 presents an issue of law." Accenture Glob. Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir. 2013).
There is no requirement that an examiner cite evidentiary support to
conclude that a claim is directed to a patent-ineligible concept, such as an
abstract idea.
The courts consider the determination of whether a claim is
eligible ( which involves identifying whether an exception such
as an abstract idea is being claimed) to be a question of law.
Rapid Litig. Mgmt. v. CellzDirect, 827 F.3d 1042, 1047, 119
USPQ2d 1370, 1372 (Fed. Cir. 2016); OIP Techs. v.
Amazon.com, 788 F.3d 1359, 1362, 115 USPQ2d 1090, 1092
(Fed. Cir. 2015); DDR Holdings v. Hotels.com, 773 F.3d 1245,
1255, 113 USPQ2d 1097, 1104 (Fed. Cir. 2014); In re Roslin
Institute (Edinburgh), 750 F.3d 1333, 1335, 110 USPQ2d 1668,
1670 (Fed. Cir. 2014); In re Bilski, 545 F.3d 943, 951, 88
USPQ2d 1385, 1388 (Fed. Cir. 2008) (en bane), affd by Bilski
v. Kappas, 561 U.S. 593, 95 USPQ2d 1001 (2010). Thus, the
court does not require "evidence" that a claimed concept is a
judicial exception, and generally decides the legal conclusion of
eligibility without resolving any factual issues. FairWarning IP,
LLC v. Iatric Sys., 839 F.3d 1089, 1097, 120 USPQ2d 1293,
1298 (Fed. Cir. 2016) (citing Genetic Techs. Ltd. v. Merial
LLC, 818 F.3d 1369, 1373, 118 USPQ2d 1541, 1544 (Fed.
Cir. 2016)); OIP Techs., 788 F.3d at 1362, 115 USPQ2d at
1092; Content Extraction & Transmission LLC v. Wells Fargo
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Bank, N.A., 776 F.3d 1343, 1349, 113 USPQ2d 1354, 1359
(Fed. Cir. 2014).
MPEP § 2106.07(a) (III).
Appellants also argue, "the claims are quite different from the closest
prior art that the Examiner has been able to uncover, and thus any assertion
that they recite a 'known' practice cannot be sustained." App. Br. 13.
The Examiner concludes the claims
are directed to an abstract idea of providing a reimbursement
for an unused product, specifically providing a refund or credit
for unused portions of a travel ticket, which is (i) a fundamental
economic practice, (ii) a method of organizing human activities,
(iii) an idea of itself, or (iv) a mathematical relationship or
formula.
Final Act. 3--4.
In tum, Appellants argue the claims are not directed to any of these
four categories of abstract ideas. App. Br. 13-15.
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 838 F.3d
at 1257 ( citation omitted).
Turning to the claimed invention, claim 1 recites, in pertinent part, a
method that requires the steps of:
(a) "retrieving ... information regarding a travel ticket;"
(b) "determining ... that a time interval ... has elapsed,"
( c) "calculating ... a residual value of the travel ticket;
and"
( d) "initiating ... a refund or credit for the residual
value."
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Our reviewing courts have often identified abstract ideas by referring
to earlier precedent, e.g., by comparing a claimed concept to the concepts
previously identified as abstract ideas by the courts. Amdocs (Israel), Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d. 1327, 1334 (Fed. Cir. 2016). For example, in
Alice, the Supreme Court identified the claimed systems and methods as
describing the concept of intermediated settlement, and then compared this
concept to the risk hedging concept identified as an abstract idea in Bilski.
Because this comparison revealed "no meaningful distinction between the
concept of risk hedging in Bilski and the concept of intermediated settlement
at issue here", the Court concluded that the concept of intermediated
settlement was an abstract idea. Alice, 134 S. Ct. at 2356-57. Similarly, the
Federal Circuit in Amdocs compared the claims at issue with "eligible and
ineligible claims of a similar nature from past cases" as part of its eligibility
analysis. 841 F.3d at 1295-1300.
Under step one, we agree with the Examiner that the invention
claimed in independent claim 1 is directed to an abstract idea, i.e., providing
a reimbursement for an unused product, specifically providing a refund or
credit for unused portions of a travel ticket. In agreement with the
Examiner, we further conclude this is a fundamental economic practice
relating to agreements between entities in performance of a financial
obligation, e.g., performing or resolving a financial obligation under a
contractual agreement. See Final Act. 3--4; Ans. 3--4; and see buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("The claims are
squarely about creating a contractual relationship- a 'transaction
performance guaranty' - that is beyond question of ancient lineage [ ] . The
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dependent claims' narrowing to particular types of such relationships,
themselves familiar, does not change the analysis. This kind of narrowing of
such long-familiar commercial transactions does not make the idea non-
abstract for section 101 purposes.") (internal citation omitted).
As the Specification discloses, "[t]his invention relates generally to a
method and system for tracking tickets, and more specifically to a method
and system for tracking unused electronic tickets and for providing refunds
for those tickets." Spec. ,r 2. 5 We find this type of activity, i.e., providing a
refund for an unused portion of a ticket, for example, includes longstanding
conduct that existed well before the advent of computers and the Internet,
and could be carried out by a human with pen and paper. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson."). 6
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
5 See also Spec. 22 ("Abstract"):
An automated method and system for refunding the unused
portion of an electronic ticket are provided. In accordance with
the method, an aging period is set and is added to the scheduled
departure date of the issued ticket. If the scheduled departure
date plus the aging date is earlier than the current date, a
determination is made as to whether the ticket has been used. If
the ticket has not been used, the residual value of the ticket is
calculated and a refund is issued.
6 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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Court has enhanced the § 101 analysis since Cy her Source in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-
47 (Fed. Cir. 2016) (alteration in original) (quoting Elec. Power Grp., 830
F.3d at 1354).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information (e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power, 830 F.3d at 1353-54 (collecting information
and "analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category"). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Also,
collecting and comparing known information has been determined to be an
abstract idea. Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d
1057, 1067 (Fed. Cir. 2011) ("Claim 1 of the #283 patent states the idea of
collecting and comparing known information"). Further, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is abstract. Digitech Image Techs., LLC v.
Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Also, more
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recently, our reviewing court has also concluded that acts of parsing,
comparing, storing, and editing data are abstract ideas. Berkheimer v. HP
Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
Appellants also imply claim 1 is patent-eligible because its practice
does not preempt practice by others. App. Br. 16. We disagree because,
"[w]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility .... \Vhere a
patent's claims are deemed only to disclose patent ineligible subject matter
under the lvfayo frarnework, as they are in this case, preernption concerns are
fully addressed and made moot." 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) ("that 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").
Further, Appellants' reliance on DDR (App. Br. 13) is misplaced as
the recited claims do not improve the computer. In DDR, the claims at issue
involved, inter alia, "web pages displays [with] at least one active link
associated with a commerce object associated with a buying opportunity of a
selected one of a plurality of merchants" (claim 1 of US 7,818,399). The
Federal Circuit found the claims in DDR to be patent-eligible under step one
of the Alice test because "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR Holdings, 773 F.3d at 1257.
Specifically, the Federal Circuit found the claims addressed the "challenge
of retaining control over the attention of the customer in the context of the
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Internet." Id. at 1258. In agreement with the Examiner (Ans. 8), we find the
rejected claims are dissimilar to DDR's web page with an active link, and the
Specification does not support the view that the computer related claim
elements are unconventional. See Spec. ,r,r 18, 26.
Appellants generally invoke Enfzsh and McRo ( citations, supra), and
argue the "claims relate to an improvement to the relevant system" (App.
Br. 2), and further allege "the claims 'improve computer-related technology
[ e.g., 'ticket tracking and refunding system'] by allowing computer
performance of a function not previously performable by a computer."' App.
Br. 3. We disagree.
We disagree because the claims in McRO recited a "specific ...
improvement in computer animation" using "unconventional rules that
relate[ d] sub-sequences of phonemes, timings, and morph weight sets."
McRO, 837 F.3d at 1302---03, 1307---08, 1314--15. InMcRO, "the
incorporation of the claimed rules, not the use of the computer," improved
an existing technological process. Id. at 1314. Appellants do not, however,
identify how claim 1 improves an existing technological process, other than
to allege (App. Br. 3) it improves "ticket tracking and refunding system."
Cf Alice, 134 S. Ct. at 2358 (explaining that "the claims in Diehr were
patent eligible because they improved an existing technological process").
Rather, claim 1 is directed to a method for refunding or crediting
residual value for an unused portion of a travel ticket ( claim 1 ), a process
that can be carried out in the human mind and/or by use of pen and paper.
See CyberSource, 654 F.3d at 1375. Moreover, Appellants do not direct us
to any evidence that the claimed retrieving, determining, calculating, and
initiating steps correspond to unconventional rules.
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Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than identifying, collecting, storing, comparing, and
generating data, without any particular inventive technology- an abstract
idea. See Elec. Power Grp., 830 F.3d at 1354. 7
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
7 Merely automating previously manual processing by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
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Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea; 8 mere instructions to implement an
abstract idea on a computer; 9 or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 10
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of refunding or crediting residual value for an
unused portion of a travel ticket into a patent-eligible application of that
abstract idea. See Ans. 10.
The Examiner concludes:
[T]he claimed invention does not further or improve upon the
technology or the technical field as merely having a general
purpose device to perform the steps of the abstract idea is
nothing more than having the general purpose device perform
the well-understood, routine, and conventional activities already
known in providing a reimbursement for an unused product,
which results in the claimed invention not amounting to being
"significantly more" than the judicial exception. The Examiner
further notes that the decision of DDR Holdings does not apply
as, unlike DDR Holdings, the claimed invention is not "deeply
rooted in the technology" since: 1.) humans have, for some
8 Alice, 134 S. Ct. at 2357-58.
9 Alice, 134 S. Ct. at 2357-58, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84--85).
10 Alice, 134 S. Ct. at 2359, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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time, longed been known to perform the well-understood,
routine, and conventional activities in the field of providing a
reimbursement for an unused product, e.g., gathering the
necessary information pertaining to the specifics of the ticket to
determine a refund; and 2.) the well-understood, routine, and
conventional activities of the abstract idea does not change,
alter, or improve upon how the technology, i.e. the computing
device, fundamentally functions. The invention further fails to
improve upon the technical field (providing a reimbursement
for an unused product) because merely using the general
purpose device to perform the well-understood, routine, and
conventional activities of the providing a reimbursement for an
unused product and that such use of the technology has been
held to not be an "inventive concept" as the general purpose
device is being used for the very purpose that such device are
known to be used for, e.g. more efficient, faster, more cost-
efficient, [ ] etc.
Ans. 10-11.
The Examiner further concludes, "[l]ooking at the limitations as an
ordered combination adds nothing that is not already present when looking
at the elements taken individually. There is no indication that the
combination of elements improves the functioning of a computer or
improves any other technology. Their collective functions merely provide
conventional computer implementation." Ans. 11.
We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
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As evidence of the conventional nature of the claimed network
components and processes, we note the Examiner's citation (Ans. 11) to
Appellant's Specification in paragraphs 18 and 26. For example:
[T]he refund method in accordance with the invention is
practiced by implementing various process steps on a
computer 11. Computer 11 is preferably a centralized computer
controlling and/or interfacing with each of the various
databases.
Spec. ,r 18.
For example, as noted above, the databases that have been
referred to can be individual databases, a single central
database, or databases partitioned in ways other than as
illustrated in the figures. Preferably the invention is practiced
through use of a single central computer which can contain all
transactions for a particular client, regardless of location of that
client or various departments, divisions or other segments of
that client.
Spec. ,r 26.
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
techniques, particularly in light of Appellants' Specification, as quoted
above. 11
11 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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With respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of a "method" using a "computing
system" and "database" is simply not enough to transform the patent-
ineligible abstract idea here into a patent-eligible invention. See Alice, 134
S. Ct. at 2357 ("[C]laims, which merely require generic computer
implementation, fail to transform [an] abstract idea into a patent-eligible
invention."). 12
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped claims 65-
83, not argued separately, and which fall therewith. See Claim Grouping,
supra.
2. § 103 Rejection R2 of Claims 1 and 65-83
Issue 2
Appellants argue (App. Br. 18-21; Reply Br. 3-5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over Gardner
in view of the Examiner's taking of Official Notice is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art in view of Official
Notice teaches or suggests a method that uses a computing system to
determine "a time interval for an unused segment of a trip," wherein "the
12 Appellants merely allege, "the present claims are not directed to an
abstract idea but rather an improvement to the functioning of the relevant
system and, accordingly, are directed to patent-eligible subject matter."
Reply Br. 3.
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time interval corresponds to an aging period greater than zero days for the
travel ticket and is measured starting on or after a travel date of the unused
segment," as recited in claim 1?
Analysis
Appellants contend, "Gardner utterly fails to teach or suggest the use
of such an 'aging period.' The Examiner even concedes this point.'' App.
Br. 18. Appellants further argue:
The Examiner "takes Official Notice that it is notoriously
old and well-known in the art of commerce for service
providers to utilize the concept of refunds/ credits and to further
tie it to an expiration date that dictates for how long the
consumer would be eligible to receive the refund/credit.'' Final
Office Action at 20. The Examiner further takes Official Notice
"that it is notoriously old and well-known in the art to provide a
beginning date and an end date, i.e. time interval/aging period."
Id. at 23.
Appellant does not concede the propriety of these alleged
Official Notices, and further does not concede that ( even if
proper) they would have any relevance to the instant claims.
App. Br. 19.
Appellants further question the relevance of the evidence in various
patent references cited by the Examiner in support of the taking of Official
Notice. App. Br. 20. According to Appellants, "[n]one of these references
appear to provide any support whatsoever for an 'aging period' or a 'time
interval."' App. Br. 21 ( emphasis omitted).
The Examiner responds by reiterating:
[ A ]ppellant's arguments are, again, directed towards Gardner
not disclosing the phrase "aging period", as well as the aging
period is of a particular value, i.e. greater than zero days or at
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least fifteen days. Further, contrary to the appellant's arguments,
the Examiner is not conceding to Gardner not teaching an
aging period, but teaching the value for the aging period. The
Examiner asserts that this is a mischaracterization of the
rejection that was provided and asserts that the Examiner's
position was made very clear by the fact that "greater than zero
days" was the language that was emphasized in the 103 portion
of the rejection and that "greater than zero days" was
substituted with "[ . .. ]" in the Gardner section of the
rejection to make it clear that aging period is taught and not the
value for the aging period.
Next, the Examiner provided several different
explanations that demonstrated why Gardner does, indeed,
teach an aging period, which the appellant fails to address, as
well as an Official Notice statement, supported by eight
different patents, in order to teach that assigning a value to an
aging period is, indeed, well-known in the art, arbitrary, found
in various different industries, and obvious to one of ordinary
skill in the art. The Examiner asserts that the appellant has
failed to address any of this, but simply states that it is unclear
what Gardner and Official Notice are being relied on to teach.
Ans. 28.
"Furthermore, the Examiner asserts that the number of days that
defines the aging period, i.e. the time period in which the consumer would
be eligible for a refund, is non-functional descriptive subject matter."
Ans. 29.
The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative), ajfd, No. 06-1003 (Fed. Cir.
June 12, 2006) (Rule 36); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005)
(informative), ajfd, 191 Fed. Appx. 959 (Fed. Cir. 2006).
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Further, if the claimed contested data element is positively recited as:
(1) actually being used to change or affect a machine function (for apparatus
claims), or (2) actually being used to change or affect the manner in which a
step or act is performed (for method or process claims), then such data
elements are generally considered by the US PTO and PT AB to be functional
descriptive material, and are given full patentable weight.
However, in this Appeal, such is not the case. In agreement with the
Examiner, "what the number of days is supposed to be does not change how
the determination of a time interval, i.e. the aging period, is performed. The
Examiner asserts that it does not matter what the number of days is supposed
to be as the same end result or performance of 'determining ... a time
interval' will still be performed the same." Ans. 17.
With respect to dependent claim 71, Appellants allege this claim
"further recites that 'the aging period is at least fifteen days.' None of the art
of record (neither Gardner nor the references cited as allegedly supporting
Official Notice) teaches or suggests an aging period, much less an aging
period of at least fifteen days." App. Br. 21. Additionally, "[t]he length of
time recited by the claims is perfectly functional, in that it affects when the
other recited claim limitations occur." Id.
The Examiner finds:
In regards to claim 71, Gardner discloses wherein the
aging period is at least fifteen days (As has already been
discussed above, the Examiner ... asserts that the time period
is considered to be non-functional descriptive material, a design
choice, and an intended result that provides no patentable
distinction with the combination of Gardner and Official
Notice. One of ordinary skill in the art would have found it
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obvious to make the time period any amount of time that the
practitioner of the invention wants while still achieving the
same predictable result, i.e. provide reimbursement for an
unused segment of a ticket at a particular point in time.).
Ans. 28-29 ( emphasis omitted).
In agreement with the Examiner's findings, we find the choice of an
aging period of at least 15 days would have been a mere design choice and
would not have been "uniquely challenging or difficult for one of ordinary
skill in the art." See Leapfrog Ent. Inc. v. Fisher-Price Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007). Thus, we find choosing the aging period to be 15
days or more is simply a modification of a familiar prior art practice or act
(as taught by the Examiner's Official Notice) that would have realized a
predictable result. The Supreme Court has determined that the conclusion of
obviousness can be based on the interrelated teachings of multiple patents,
the effects of demands known to the design community or present in the
marketplace, and the background knowledge possessed by a person having
ordinary skill in the art. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418
(2007). The skilled artisan is "a person of ordinary creativity, not an
automaton." Id. at 420-21. 13
13 We also observe that Appellants have not imparted any special
significance to the recitation of at least 15 days ( or greater than zero days) in
the claims. In fact, Appellants' Specification broadly discloses, "[t]he
traveler or the traveler's employer sets an aging period beyond which tickets
are deemed to be unused." Spec. ,r 6. Further, " [ t ]he aging criteria is a period
of time ranging from zero days to three hundred and sixty five days. The
aging criteria is set by the client and establishes a criteria for determining
how old a ticket must be before it is assumed that ticket will not be used.
Usually the aging criteria is set at between about fifteen days and about sixty
days." Spec. ,r 11 ( emphasis added). We find the italicized portion of
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 65-83 which fall therewith. See Claim
Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2-3) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4I(b)(2)), which Appellants have not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subject matter Rejection RI of claims 1 and 65-83 under 35 U.S.C. § 101,
and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 1 and 65-83 under 35 U.S.C. § I03(a) over the cited prior art
combination of record, and we sustain the rejection.
paragraph 11 above supports the Examiner's conclusion that the selection of
an aging period of at least 15 days is an obvious design choice.
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DECISION
We affirm the Examiner's decision rejecting claims 1 and 65-83.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
25