Ex Parte Hickey et al

Patent Trial and Appeal Board

Oct 6, 2017

10003471 (P.T.A.B. Oct. 6, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/003,471 10/31/2001 Matthew W. Hickey C063 4349
25784 7590 10/11/2017
MICHAEL O. SCHEINBERG
P.O. BOX 164140
AUSTIN, TX 78716-4140
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
10/11/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents @ scheinbergip.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW W. HICKEY,
JAMES H. WOLFSTON, and
RAYMOND L. PRICE
Appeal 2016-002647
Application 10/003,4711
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Matthew W. Hickey et al. (Appellants) seek our review under 35
U.S.C. § 134(a) of the final rejection of claims 19-40. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify CollegeNET, Inc., as the real party in interest.
App. Br. 3.
Appeal 2016-002647
Application 10/003,471
THE INVENTION
Claim 19, reproduced below, is illustrative of the subject matter on
appeal.
19. A computer-implemented method of attracting visitors to
a college-related web site, comprising:
executing web server software on a server, the web
server software causing the server to provide a first electronic
form on the web site, the first electronic form suited for display
on a client computer for use in nominating a college student or
prospective college student for potential receipt of a
scholarship;
receiving by the server the completed first electronic
form, the completed first electronic form including an
indication of a nominee, the nominee comprising a college
student or prospective college to be nominated for potential
receipt of the scholarship;
executing web server software on a server, the web
server software causing the server to provide a second
electronic form on the web site, the second electronic form
suited for display on a client computer through which a
nominee or a member of the general public can cast a vote for
one or more nominees;
receiving by the server the completed second electronic
form, the second electronic form include an indication of a vote
for the one or more nominees;
at the end of a given period, determining from the vote
cast a scholarship winner or scholarship winners from among
the nominees according the number of votes cast by the general
public for those winners; and
posting an announcement of the winner on the web site.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ireland US 7,062,462 B1 June 13,2006
Official Notice is taken that it was old and well known at the time
of the invention to provide a site where one or more member of
the general public or a specified subset of the general public (e.g.
based on age, location, etc.) may cast a vote for one or more
nominees; to determine one or more winners from among the
nominees based on the received votes; and to post the
announcement of the winner(s).
Final Act. 9. (Official Notice).
The following rejections are before us for review:
1. Claims 19-40 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
2. Claims 19-40 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ireland and Official Notice.
ISSUES
Did the Examiner err in rejecting claims 19-40 under 35 U.S.C. § 101
as being directed to judicially-excepted subject matter?
Did the Examiner err in rejecting claims 19-40 under 35 U.S.C.
§ 103(a) as being unpatentable over Ireland and Official Notice?
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Application 10/003,471
ANALYSIS
The rejection of claims 19—40 under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
The Appellants argued these claims as a group. See App. Br. 6—7;
Reply Br. 2-4. We select claim 19 as the representative claim for this group,
and the remaining claims 20-40 stand or fall with claim 19. 37 C.F.R.
§41.37(c)(l)(iv).
Alice Corp. Party Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that “inviting visitors to a
website to cast a vote and posting the winner who received the most number
of votes on a website is a method of organizing human activities that falls
under an entrepreneurial objective, rather than a technological
one [and therefore] claim 19 includes an abstract idea.” Final Act. 5.
We do not see that the Appellants have challenged the Examiner’s
determination under Alice step 1. The Appellants argue two points: novelty
and preemption, points more relevant to the determination under Alice step
2.
Step two is “a 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] itself5” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting
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Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72—73
(2012)).
The Examiner determined that
The steps of providing a form for scholarship applicants to use to
apply (or be nominated) for the scholarship sensor data (i.e.
sending/displaying data), receiving the completed form (i.e.
receiving data), providing a form for voters to use to vote on one
or more nominees/applicants (i.e. sending/displaying data),
receiving the completed voting forms (i.e. receiving data),
determining the winner based on the votes cast (i.e. performing
mathematical function, e.g. adding), and posting the
announcement of the winner on the web site (i.e.
sending/displaying data) are all steps requiring no more than a
generic computer to perform generic computer functions.
Specifically, sending, receiving, and displaying data, counting
the votes, and posting the winner on the web page are all routine
and conventional activities previously known in the industry.
Therefore, based on the two-part Mayo analysis, there are no
meaningful limitations in the claim that transform the exception
into a patent eligible application such that the claim amounts to
significantly more than the exception itself.
Final Act. 6.
The Appellants first argue that
the claims are not simply directed to sending and receiving data,
counting the votes, and posting the winner on the web page. The
claims are directed to a computer-implemented method for
attracting visitors to a college-related web site by allowing
members of the general public to nominate and vote for a
recipient of a college scholarship using a network connected
computer. Allowing members of the general public to nominate
and vote for a recipient of a college scholarship using a network
connected computer is not a conventional activity previously
known in the industry. See Declaration of Lloyd Thacker, filed
under 37 C.F.R. 1.132 on May 2, 2012. Because allowing
members of the general public to nominate and vote for a
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recipient of a college scholarship is not a conventional activity
previously known in the industry, the additional limitations of
claim 19 amount to significantly more than the abstract idea of
inviting visitors to cast a vote and posting the winner who
received the most number of votes.
App. Br. 6—7. This argument — that the claimed method “is not a
conventional activity previously known in the industry” — is repeated in the
Reply Brief at pages 2—3.
The argument is unpersuasive as to error in the rejection.
As a preliminary matter, this argument over novelty — that the claimed
method “is not a conventional activity previously known in the industry" — is
a factor to be considered when determining “whether the claims contain a’
"inventive concept’ to ‘transform’ the claimed abstract idea into patent-
eligible subject matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014). “[Njovelty in implementation of the idea is a factor to be
considered only in the second step of the Alice analysis.” Id. “[Pjragmatic
analysis of § 101 is facilitated by considerations analogous to those of
§§102 and 103 as applied to the particular case.” Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1347 (Fed. Cir. 2015).
However, a finding of novelty or nonobviousness does not necessarily
lead to the conclusion that subject matter is patentable eligible.
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass ’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013)
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,
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188—89 (1981) (emphasis added); see also Mayo, 132 S. Ct. at 1303—
04 (rejecting “the Government’s invitation to substitute §§ 102, 103,
and 112 inquiries for the better established inquiry under § 101”).
Here, the jury’s general finding that Symantec did not prove by clear
and convincing evidence that three particular prior art references do
not disclose all the limitations of or render obvious the asserted claims
does not resolve the question of whether the claims embody an
inventive concept at the second step of Mayo/Alice."
Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016).
Nor does a finding of obviousness necessarily lead to the conclusion
that subject matter is patentable ineligible. See also RapidLitig. Mgmt. Ltd.
v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016) (“That each of the
claims’ individual steps (freezing, thawing, and separating) were known
independently in the art does not make the claim unpatentable.”) “[PJatent-
eligibility does not turn on ease of execution or obviousness of application.
Those are questions that are examined under separate provisions of the
Patent Act.” Id. at 1052 (citing Mayo, 566 U.S. at 90.
Notwithstanding that “‘the § 101 patent-eligibility inquiry and, say,
the § 102 novelty inquiry might sometimes overlap^’] ... a claim for a new
abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (citation omitted) (quoting Mayo, 566 U.S. at
90). The question in step two of the Alice framework is not whether an
additional feature is novel but whether the implementation of the abstract
idea involved “more than the performance of ‘well-understood, routine,
[and] conventional activities previously known to the industry.’” Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d
1343, 1347-48 (quoting Alice, 134 S. Ct. at 2359).
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In that regard, the Appellants have not shown the novel features
transform the abstract idea (“inviting visitors to a website to cast a vote and
posting the winner who received the most number of votes on a website is a
method of organizing human activities that falls under an entrepreneurial
objective” (Final Act. 5)) into patent-eligible subject matter. “Allowing
members of the general public to nominate and vote for a recipient of a
college scholarship using a network connected computer" (App. Br. 6) adds
little of significance to “transform” the claimed abstract idea into patent-
eligible subject matter. The implementation — on generic computers —
remains the same. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012) (“[sjimply adding a ‘computer aided’ limitation to a claim
covering an abstract concept, without more, is insufficient to render the
claim patent eligible.”).) At best, “[ajllowing members of the general public
to nominate and vote for a recipient of a college scholarship using a network
connected computer” (App. Br. 6) characterizes what the claimed subject
matter is directed to at a level of abstraction lower than what the Examiner
has characterized it to be directed to. See Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1240-1241 (Fed. Cir. 2016) (“An abstract idea can generally be
described at different levels of abstraction. As the Board has done, the
claimed abstract idea could be described as generating menus on a computer,
or generating a second menu from a first menu and sending the second menu
to another location. It could be described in other ways, including, as
indicated in the specification, taking orders from restaurant customers on a
computer.”) But its abstract nature remains the same.
The second argument is that
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the rejected claims, if allowed, would not preempt the broader
practice of inviting visitors to cast a vote and posting the winner
who received the most number of votes. The claims are
specifically directed to a method of attracting visitors to a
college-related web site. The claims are narrowly tailored ....
App. Br. 7 (see also Reply Br. 3—4).
However, preemption is not a separate test. “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). With respect to the pre-emption concern, “[wjhat matters is
whether a claim threatens to subsume the full scope of a fundamental
concept, and when those concerns arise, we must look for meaningful
limitations that prevent the claim as a whole from covering the concept's
every practical application.” CLS Bank Intern, v. Alice Corp. Pty. Ltd., Ill
F.3d 1269, 1281 (Fed. Cir. 2013). Here, the argued-over “attracting visitors
to a college-related web site” simply narrows the abstract idea so that it is
described at a lower level of abstraction. It does not render the abstract idea
to which the claim is directed to any less an abstract idea. “Where a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework,. . . preemption concerns are fully addressed and made
moot.” Ariosa, 788 F.3d at 1379.
The remaining arguments have been considered, but are not
persuasive as to error in the rejection.
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The rejection of claims 19—40 under 35 U.S.C. § 103(a) as being
unpatentable over Ireland and Official Notice.
The Appellants argued these claims as a group. See App. Br. 8—16;
Reply Br. 4—7. We select claim 19 as the representative claim for this group,
and the remaining claims 20-40 stand or fall with claim 19. 37 C.F.R.
§41.37(c)(l)(iv).
The Appellants challenge the rejection, arguing that: (1) “Determining
a scholarship winner based on a vote cast by the general public proceeds
contrary to the accepted wisdom of awarding scholarships based on a
decision made by a panel of experts and trusted representatives” (App. Br.
8—13); (2) “A person of skill in the art would not have not seen a benefit to
awarding a scholarship based on a vote cast by the general public” {Id. at
13—14); (3) “The proposed modification of the prior art renders the prior art
unsatisfactory for its intended purpose” {id. at 14); and, (4) “Commercial
success of the claimed invention” {id. at 15).
The Reply Brief makes similar arguments. The Declaration of Lloyd
Thacker, filed under 37 C.F.R. 1.132 on May 2, 2012 was provided in
support thereof.
“Many of appellant’s arguments fail from the outset because . . . they
are not based on limitations appearing in the claims.” In re Self 671 F.2d
1344, 1348 (CCPA 1982). In fact, here, all the arguments — and the
statements made in the Declaration — are premised on limitations that are not
in fact recited in the claim.
The Appellants argue inter alia that “[pjrior art methods for awarding
a scholarship were not based on popularity or a vote cast by the general
public. Declaration at 11” (App. Br. 12 (as to argument 1)); “[a] warding a
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scholarship in a manner that would reduce the likelihood that funding
organizations will contribute funds for scholarships would not have been
seen as a benefit over prior art scholarship award methods” (id. at 14 (as to
argument 2)); “[a] method of awarding scholarships based on a vote by the
general public eliminates any control organization has in ensuring that the
goal of its funding investment is met, thereby rendering the scholarship
award method unsatisfactory for its intended purpose of promoting those
goals” (id. (as to argument 3)); and, “[t]he commercial success of
CollegeNET's method of awarding scholarships is not based on using a
panel of experts or trusted representatives to award the scholarship” (id. at
16 (as to argument 4)).
But claim 19 does not exclude using, for examples, a panel of experts
or trusted representatives. The Specification does not define “general
public” as excluding anyone. Accordingly, in reciting “general public,” it is
reasonably broadly construed to include a panel of experts or trusted
representatives.
Nor does claim 19 say anything about awarding a scholarship. The
claimed method broadly “determin[es] from the vote cast a scholarship
winner [and posting the result].” But the claimed method does not limit
awarding the scholarship consistent with said vote and posting.
Accordingly, the argument that “[a] method of awarding scholarships
based on a vote by the general public eliminates any control organization has
in ensuring that the goal of its funding investment is met” is not a persuasive
one because it is not commensurate in scope with what is claimed, which is
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much broader. Claim 19 is not limited so as to award scholarships based on
a vote by the general public, excluding a control organization.
Given that all the arguments are premised on awarding a scholarship
based on a vote by members of the general public, not to include members of
a control organization, and that claim 19 is not so limited, the arguments
cannot be persuasive as to error in the rejection as they are not
commensurate in scope with what is claimed.
The rejection is sustained.
CONCLUSIONS
The rejection of claims 19-40 under 35U.S.C. § 101 as being directed
to judicially-excepted subject matter is affirmed.
The rejection of claims 19-40 under 35 U.S.C. § 103(a) as being
unpatentable over Ireland and Official Notice is affirmed.
DECISION
The decision of the Examiner to reject claims 19-40 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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