Ex Parte Kennedy et al

Patent Trial and Appeal Board

Jul 16, 2018

13608194 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/608,194 09/10/2012
124539 7590 07/18/2018
Altisource
Meunier Carlin & Curfman, LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
FIRST NAMED INVENTOR
Christopher Kennedy
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.
10531-012US2 6698
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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):
docketing@mcciplaw.com
ipcounsel@altisource.com
Sunette.Pilat@altisource.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER KENNEDY and BRYAN HURLEY
Appeal2017-002241
Application 13/608,194 1
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-3, 6, 16, 17, and 21-30. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' "invention relates to a method and system for managing
financial transactions that require goods and/or services from multiple
1 According to Appellants, the real party in interest is Altisource Solutions
S.a.r.l. of Luxembourg. (Appeal Br. 3.)
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vendors, and, in particular, to methods and systems for selecting vendors to
carry out sub-transactions associated with a financial transaction." (Spec.
Claims 1, 16, and 26 are the independent claims on appeal. Claim 1 is
illustrative. It recites (bracketed paragraph designations added):
1. A method for selecting a vendor for at least one transaction
having a transaction profile using at least one processor, a
scorecard module, and a user interface, the method comprising:
populating, via the at least one processor, a list of available
products corresponding to the at least one transaction;
receiving, via the at least one processor in communication
with the user interface, a selection of an identified product related
to the at least one transaction;
determining, via the at least one processor, if an ordering
profile corresponding to the identified product exists, the
ordering profile comprising at least one desired characteristic
associated with the identified product;
comparing, via the at least one processor, the at least one
desired characteristic to characteristics associated with each
vendor contained in a first plurality of vendors to yield a second
plurality of vendors capable of providing the identified product;
[ (a)] accessing, via the at least one processor in
communication with the scorecard module, a plurality of vendor
scorecards for each vendor in the second plurality of vendors;
[ (b)] prompting, via the processor in communication with
the user interface, a user to select a preferred scorecard from the
plurality of vendor scorecards;
[ ( c)] upon selection of a preferred scorecard, creating, via
the processor, a prioritized vendor set for the second plurality of
vendors according to the preferred scorecard; and
[(d)] automatically selecting, via the at least one processor,
at least one vendor from the prioritized vendor set using a
distribution selection method.
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REJECTION
Claims 1-3, 6, 16, 17, and 21-30 are rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
ANALYSIS
"Whoever 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 therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if "the elements of the
claim ... contain[] an 'inventive concept' sufficient to 'transform' the
claimed abstract idea into a patent-eligible application." Id. at 2357 ( citing
Mayo, 566 U.S. at 72-73, 79).
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With regard to step one of the Alice framework, the Examiner
determines that "claims 1, 16 and 26 are directed to an abstract idea of
selecting a vendor for a transaction for supplying a product." (Final
Action 5.) Although Appellants assert that they "do not concede" that the
claims are directed to an abstract idea (Appeal Br. 9), Appellants do not
present arguments against this determination.
The Specification provides evidence supporting the Examiner's
determination. The Specification discloses that the "invention relates to a
method and system for managing financial transactions that require goods
and/or services from multiple vendors." (Spec. ,r 2.) Claims 1, 16, and 26
provide further evidence. For example, claim 16 recites "[a] system for
selecting a vendor for at least one transaction for a product or service," and
claim 26 recites "[a] method for automatically identifying at least one
vendor for supplying a product or service associated with at least one
transaction." In view of the above, we agree with the Examiner's
determination that the claims are directed to the "abstract idea of selecting a
vendor for a transaction for supplying a product." (See Final Action 5.)
We now look to step two of the Alice framework. Step two has been
described "as 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] itself."' Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 72-
73).
Appellants argue that the Examiner "fails to appropriately establish a
primafacie rejection under the second prong analysis of Mayo/Alice because
the Final Office Action fails to point to any evidence on record that
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demonstrates that the steps recited in the claim are only 'conventional' and
'routine' steps performed in the industry." (Appeal Br. 9.)
The Examiner finds that the "specification describes the computer
processor as a generic computer (See e.g. [0021 ]-[0028]). There is no
dispute that the claimed process is implemented on a generic computer or
generic computer arrangement comprising a processor, a memory etc."
(Final Action 6-7.) Further, the Examiner determines that steps (a}-(d) of
claim 1
are not unconventional because implementation of these steps on
a generic computer ( at least one processor) amount to appending
well-understood, routine and conventional activities previously
known to the industry to the abstract idea. This is in tum because
these four steps require no more than a generic computer and
peripheral components (specification [0020], [0022]) and
programming the instructions to perform the functions in suitable
programming tools.
(Id. at 8.)
We disagree that a prima facie case has not been established. 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
applicant 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."' In re Jung, 637 F.3d 1356, 1362 (Fed.
Cir. 2011) (brackets in original, quoting 35 U.S.C. § 132(a)). Here, the
Examiner notified Appellants that the claims are directed to a patent-
ineligible abstract idea, i.e., that the claims "are directed to an abstract idea
of selecting a vendor for a transaction for supplying a product." (Final
Action 5.) The Examiner also notified Appellants that the steps "in the
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claims are not deemed unconventional activities but merely appending well-
understood, routine and conventional activities which are not found to be
enough to qualify as 'significantly more'." (Id. at 8.) Thus, Appellants have
been notified of the reason for the rejection with such information "as may
be useful in judging of the propriety of continuing the prosecution of [the]
application." See 35 U.S.C. § 132(a).
Appellants further argue that "the law requires that the [claim] steps
themselves be new and useful, not whether their implementation on a
computer is new and useful. Here steps (a)-(d) are additional steps as they
fall outside the scope of the abstract idea, thus the claim as a whole 'requires
more than simply stating the abstract idea while adding the words "apply
it."' Ultramercial at 10." (Appeal Br. 12, citing Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).)
Appellants' argument is premised on the assertion that "steps (a)-(d)
are additional steps as they fall outside the scope of the abstract idea." (Id.)
But the abstract idea determined by the Examiner is that "of selecting a
vendor for a transaction for supplying a product." (Final Action 5.) Steps
(a}-(d) recite "accessing ... a plurality of vendor scorecards," "prompting
... a user to select a preferred scorecard," "creating ... a prioritized vendor
set," and "selecting ... at least one vendor from the prioritized vendor set."
In short, steps (a}-( d) relate directly to selecting a vendor for a transaction.
Therefore, we disagree with Appellants that "steps (a)-(d) are additional
steps as they fall outside the scope of the abstract idea." Thus, we do not
find Appellants' argument persuasive. Moreover, to the extent Appellants
are arguing that the abstract idea recited in the steps establishes the
"significantly more" element under step two, we disagree. "[U]nder the
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Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility." Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). In other
words, we must look for "an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself"' Alice, 134 S. Ct. at 2355
(emphasis added) (quoting Mayo, 566 U.S. at 72-73).
Appellants argue that the Examiner has not established that the claims
do not amount to significantly more because "[ n Jo evidence of any kind has
been submitted, whether through judicial notice, submission of prior art, or
otherwise which demonstrates that the process steps recited in the claims are
in fact conventional and routine steps." (Appeal Br. 12; see also Berkheimer
v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether something is
well-understood, routine, and conventional to a skilled artisan at the time of
the patent is a factual determination.").)
As an initial matter, we note that the claim steps argued by
Appellants, steps (a}-( d), when stripped of the "processor" language, recite
steps of the abstract idea that people could perform in their heads or with
pencil and paper, i.e., "accessing ... a plurality of vendor scorecards,"
"select[ing] a preferred scorecard," creating ... a prioritized vendor set,"
and selecting ... a ... vendor from the ... set." (See Claim 1.) The
processor merely automates these steps. As noted above, the Examiner finds
evidence in Appellants' Specification that "describes the computer processor
as a generic computer (See e.g. [0021 ]-[0028]). There is no dispute that the
claimed process is implemented on a generic computer or generic computer
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arrangement comprising a processor, a memory etc." (Final Action 6-7.)
Specifically, the Examiner determines that claim steps (a}-(d) "require no
more than a generic computer and peripheral components ( specification
[0020], [0022]) and programming the instructions to perform the functions
in suitable programming tools." (Id. at 8.) In other words, Appellants'
Specification supports the determination that the steps of using a computer
to access data, prompt user selection, create a set, and select from the set, are
conventional. (Id.; see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) (the steps of collecting, analyzing and
displaying information, even if limited to a specific content, are
conventional).) Thus, "[t]he limitations [(steps)] amount to no more than
performing the abstract idea of ["selecting a vendor for a transaction for
supplying a product"] with conventional computer components." See
Berkheimer, 881 F.3d at 1370.
In view of the above, we do not agree with Appellants that "[ n Jo
evidence of any kind has been [ cited] ... which demonstrates that the
process steps recited in the claims are in fact conventional and routine
steps." (See Appeal Br. 12, emphasis omitted.)
Thus, we agree with the Examiner that claim 1 is directed to a judicial
exception under § 101, without significantly more. Claims 2, 3, 6, 16, 17,
and 21-30 are not separately argued and fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
DECISION
The Examiner's rejection of claims 1-3, 6, 16, 17, and 21-30 under
35 U.S.C. § 101 is affirmed.
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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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