Ex Parte JoaoDownload PDFPatent Trial and Appeal BoardFeb 26, 201813134132 (P.T.A.B. Feb. 26, 2018) Copy Citation 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. RJ367 2515 EXAMINER CRAWLEY, TALIA F ART UNIT PAPER NUMBER 3687 MAIL DATE DELIVERY MODE 13/134,132 05/31/2011 7590 02/26/2018 RAYMOND A. JOAO, ESQ. 122 BELLEVUE PLACE YONKERS, NY 10703 Raymond Anthony Joao 02/26/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAYMOND ANTHONY JO AO Appeal 2016-007826 Application 13/134,132 Technology Center 3600 Before JOHN A. JEFFERY, JOYCE CRAIG, and STEVEN M. AMUNDSON, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1—4, 6—11, and 18-44. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s invention fulfills subscriptions by enabling subscribers to receive associated goods and services from providers at different geographical locations, such as retail facilities or stores. See generally Abstract; Spec. 1, 4—5, 41—44; Figs. 7A—B. Claim 1 is illustrative: 1. An apparatus, comprising: a receiver, wherein the receiver receives a request to receive or pick-up a good, a service, or a printed issue of a periodical, a Appeal 2016-007826 Application 13/134,132 newspaper, or a magazine, at a retail facility or a store, or at a location of a service provider, pursuant to a subscription; a processing device, wherein the processing device processes information regarding the request, wherein the processing device determines whether the subscription is active or not active or determines whether any good, any service, or any issue or any issues of the periodical, the newspaper, or the magazine, remain to be fulfilled pursuant to the subscription; and a transmitter, wherein the transmitter transmits a message in response to the request, wherein the message contains an authorization or a denial of the request, and further wherein the message is transmitted to a transaction device or to a communication device located at the retail facility or the store or at the location of the service provider. THE REJECTION The Examiner rejected claims 1—4, 6—11, and 18-44 under 35 U.S.C. § 101 as directed to non-statutory subject matter. Final Act. 5.1 CONTENTIONS The Examiner finds that the claims are directed to the abstract idea of receiving and fulfilling subscriptions—a fundamental economic practice. Final Act. 5. According to the Examiner, the additionally recited elements amount to no more than mere instructions to implement the abstract idea on a generic computer. Id. Appellant argues that independent claim 1 is not directed to an abstract idea, but rather a subscription for goods, products, and services that 1 Throughout this opinion, we refer to (1) the Final Rejection mailed March 24, 2015 (“Final Act.”); (2) the Appeal Brief filed September 12, 2015 (“Br.”); and (3) the Examiner’s Answer mailed June 9, 2016 (“Ans.”). 2 Appeal 2016-007826 Application 13/134,132 provides subscription fulfillment flexibility such that subscribers can receive goods, products, and services from providers that may be at different geographical locations. Br. 22—23. According to Appellant, claim 1 contains an inventive concept such that the claim is directed to an application of the identified abstract idea by providing subscription fulfillment flexibility. Br. 23—27. Appellant adds that claim 1 does not preempt the identified abstract idea nor its field. Br. 27—28. Appellant makes similar arguments regarding independent claim 18, but adds that the recited apparatus facilitates creating or initiating a subscription that provides flexibility in (1) the number or amounts of goods, products, or services that can be provided pursuant to the subscription; (2) the subscription’s time period or length; (3) the manner of the subscription’s fulfillment; and (4) provider involvement in fulfilling the subscription. Br. 28—35. ISSUE Has the Examiner erred in rejecting claims 1—4, 6—11, and 18 44 by concluding that they are directed to ineligible subject matter under § 101? This issue turns on whether the claimed invention is directed to a patent- ineligible abstract idea and, if so, whether the claim’s elements—considered individually and as an ordered combination—transform the nature of the claim into a patent-eligible application of that abstract idea. 3 Appeal 2016-007826 Application 13/134,132 ANALYSIS Claims 1—4, 6—11, 21—31, and 37—44 To determine whether claims are patent eligible under § 101, we apply the Supreme Court’s two-step test articulated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine whether the claims are directed to a patent-ineligible concept: laws of nature, natural phenomena, and abstract ideas. Id. at 2354—55. If so, we then proceed to the second step and examine the claim’s elements—both individually and as an ordered combination—to determine whether the claim contains an “inventive concept” sufficient to transform the claimed abstract idea into a patent-eligible application. Id. at 2357. Alice Step One Applying Alice step one, we see no error in the Examiner’s finding that claim 21 is directed to the abstract idea of receiving and fulfilling subscriptions—a fundamental economic practice. Final Act. 5. Claim 1 recites, in pertinent part, a receiver that receives a request to receive or pick up a good, service, or printed issue of a periodical, newspaper, or magazine at a retail facility or store, pursuant to a subscription. The claim further recites a processing device that determines whether (1) the subscription is active or inactive, or (2) any good, service or printed issues remain to be fulfilled pursuant to the subscription. Lastly, claim 1 recites a transmitter that transmits a message responsive to the request, where the message (1) contains a request authorization or denial, and (2) is transmitted to a transaction or communications device located at the retail facility, store, or service provider’s location. 4 Appeal 2016-007826 Application 13/134,132 In essence, the claimed invention is directed to an apparatus that is used to fulfill subscriptions according to an associated business relationship which, as the Examiner indicates, can be contractual. See Ans. 3. We, therefore, see no error in the Examiner’s finding that claim 1 is directed to the abstract idea of receiving and fulfilling subscriptions—a fundamental economic practice. Final Act. 5; Ans. 3^4. That the claimed invention determines (1) the subscription’s status, and (2) whether the received pick-up request is authorized or denied does not change our conclusion, for these determinations are fundamental business decisions that would be made to fulfill a subscription consistent with its associated terms and conditions. Such fundamental economic and business practices are often held to be abstract. See, e.g., Alice, 134 S. Ct. at 2356 (holding the concept of intermediated settlement is an abstract idea directed to a “fundamental economic practice long prevalent in our system of commerce”) (citation omitted); see also buy SAFE v. Google, Inc., 765 F.3d 1350, 1353—54 (Fed. Cir. 2014) (citing cases where contractual relations at issue constituted fundamental economic practices, and noting that forming or manipulating economic relations may involve an abstract idea); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (explaining that claims directed to “the mere formation and manipulation of economic relations” and “the performance of certain financial transactions” have been held to involve abstract ideas). Even assuming, without deciding, that the claimed invention provides flexibility in fulfilling subscriptions as Appellant contends (Br. 22), that does not change the fact that the claimed invention is, in essence, 5 Appeal 2016-007826 Application 13/134,132 directed to a fundamental business practice that facilitates fulfilling a subscription consistent with its associated terms and conditions. We, therefore, agree with the Examiner that claim 1 is directed to an abstract idea. Alice Step Two Nor do the recited elements—considered individually and as an ordered combination—transform the nature of claim 1 into a patent-eligible application of the abstract idea to ensure that the claim amounts to significantly more than that idea. See Alice, 134 S. Ct. at 2357. That a receiver, processing device, and transmitter is used to this end does not change our conclusion. First, sending and receiving data via a transmitter and receiver (e.g., via a network) is conventional generic computing functionality. See buySAFE, 765 F.3d at 1355 (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”). Second, the recited processing device is likewise a generic computing component that uses conventional generic computing functions, such as comparing data stored in databases, to make the recited determinations. Accord Ans. 3 (noting that the request is compared with subscription information stored in a database to determine whether the subscription is active and identify fulfillment options). Even assuming, without deciding, that the recited components add efficiency, any speed increase comes from the capabilities of the generic computer components—not the recited process itself. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing 6 Appeal 2016-007826 Application 13/134,132 Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”)). Like the claims in FairWarning, the focus of claim 1 is not on an improvement in computer processors as tools, but on certain independently abstract ideas that use generic computing components as tools. See FairWarning, 839 F.3d at 1095 (citations and quotation marks omitted). In short, merely reciting these generic computing components cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2358. In other words, merely reciting an abstract idea while adding the words “apply it with a computer” does not render an abstract idea non-abstract: there must be more. See id. at 2359. Nor does the claimed invention improve the computer processor device’s functionality or efficiency, or otherwise change the way that device functions. Cf. Enfish LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). To the extent that Appellant contends that claim 1 recites a practical application of the identified abstract idea by providing subscription fulfillment flexibility (Br. 23—27), we disagree. To be sure, abstract ideas can become eligible when reduced to some practical application. See In re Alappat, 33 F.3d 1526, 1542 n.18 (Fed. Cir. 1994). But that is not the case here, particularly given the recited fundamental business practice that facilitates fulfilling a subscription consistent with its associated terms and conditions, and its generic computing device implementation as noted previously. That is, even assuming, without deciding, that the claimed invention provides flexibility in fulfilling subscriptions as Appellant 7 Appeal 2016-007826 Application 13/134,132 contends (Br. 22), that does not change the fact that the claimed invention is, in essence, directed to a fundamental business practice that facilitates fulfilling a subscription consistent with its associated terms and conditions. To the extent that Appellant contends otherwise (see Br. 22—27), we disagree. A claim for a beneficial abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379—80 (Fed. Cir. 2015). For similar reasons, Appellant’s contention that claim 1 does not preempt the identified abstract idea or its field (Br. 27—28) is likewise unavailing. For claims covering a patent-ineligible concept, preemption concerns “are fully addressed and made moot” by an analysis under the Alice framework. Id. at 1379. Therefore, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 2—4, 6—11, 21—31, and 37-44 not argued separately with particularity.2 Claims 18—20 and 32—36 We also sustain the Examiner’s rejection of claim 18 reciting, in pertinent part, an apparatus with a processing device that processes a request to create or initiate a subscription, where the apparatus transmits a message containing information regarding the created or initiated subscription to a communications device or transaction device associated with a retail facility, store, or service provider location. 2 Although Appellant nominally argues claims 21, 22, 24—31, and 37—44 separately (Br. 35—42, 49-62), Appellant reiterates arguments made for claim 1. We, therefore, group these claims accordingly. 8 Appeal 2016-007826 Application 13/134,132 Our emphasis underscores that, unlike claim 1, claim 18 involves creating or initiating a subscription. According to Appellant, the recited apparatus functionality provides flexibility in (1) the number or amounts of goods, products, or services that can be provided pursuant to the subscription; (2) the subscription’s time period or length; (3) the manner of the subscription’s fulfillment; and (4) provider involvement in fulfilling the subscription. Br. 28—35. Despite these contentions, we are not persuaded of error in the Examiner’s rejection even assuming, without deciding, that the claimed invention provides the above-noted flexibilities as Appellant contends. For reasons similar to those indicated previously, we find that the claimed invention is directed to an abstract idea, and the additional recited limitations do not add significantly more to that abstract idea. In short, the above-noted flexibilities do not change the fact that the claimed invention is, in essence, directed to a fundamental business practice that facilitates initiating and creating a subscription consistent with its associated terms and conditions. Nor do we find that the claimed invention practically applies the abstract idea to render it patent eligible. To the extent that Appellant contends otherwise (see Br. 31—34), we disagree. For similar reasons, Appellant’s contention that claim 18 does not preempt the abstract idea or its field (Br. 34—35) is likewise unavailing. 9 Appeal 2016-007826 Application 13/134,132 Therefore, we are not persuaded that the Examiner erred in rejecting claim 18, and claims 19, 20, and 32—36, not argued separately with particularity.3 CONCLUSION The Examiner did not err in rejecting claims 1—4, 6—11, and 18-44 under § 101. DECISION We affirm the Examiner’s decision to reject claims 1—4, 6—11, and 18-44. 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 3 Although Appellant nominally argues claims 32—36 separately (Br. 42-49), Appellant reiterates arguments made for claim 18. We, therefore, group these claims accordingly. 10 Copy with citationCopy as parenthetical citation