Ex Parte Koch et al

Patent Trial and Appeal Board

Jul 25, 2018

13659756 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/659,756 10/24/2012
26379 7590 07/27/2018
DLA PIPER LLP (US )
2000 UNIVERSITY A VENUE
EAST PALO ALTO, CA 94303-2248
FIRST NAMED INVENTOR
Peter Koch
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.
384948-991102 6161
EXAMINER
GARG, YOGESH C
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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):
PatentDocketing US-PaloAlto@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER KOCH and DAVID TSO
Appeal2017-007780
Application 13/659,756 1
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-26. 3 We have jurisdiction under
35 U.S.C. § 6(b).
1 Appeal 2017-009025 (Application 13/197 ,669) is related to this appeal.
This appeal and its related appeal are directed to the same underlying
inventions and issues. These appeals are decided concurrently.
2 According to Appellants, the real party in interest is Balluun Management
AG. App. Br. 1.
3 Appellants indicate they are unaware of any other related appeals. See
App. Br. 1. However, Appeal 2017-009025 (Application 13/197,669) is
related to this appeal. See 37 C.F.R. § 41.37(c)(ii). We respectfully request
Appellants and Appellants' counsel review pending and future proceedings
before the Board and ensure that all related appeals are identified.
Appeal2017-007780
Application 13/659,756
We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to a system and method of a business to
business (B2B) marketplace and social networking in the B2B marketplace
(Spec. 1 :9--10). Exemplary claim 1 under appeal reads as follows:
1. A social business to business marketplace system,
compnsmg:
a computer based marketplace for at least one seller and
at least one buyer, the marketplace having a store front for each
seller, a shopping cart for each buyer at each the storefront for
each seller, an order management unit that manages orders
submitted using the shopping cart and a payment management
unit that manages the payment for orders to facilitate a
transaction between a buyer and a seller who are users of the
marketplace;
a computer based social feed system, integrated into the
marketplace, that provides company walls, employee walls,
partner walls and private messaging and generates an
opportunity social feed to the seller when an item is placed into
the shopping cart by a buyer so that the seller is able to
communicate with the buyer about the item; automatically
generates [an] order management social feed to the seller when
the buyer submits a completed order for the item and
automatically generates a purchase social feed to the seller
when the buyer has purchased the item; and
wherein the opportunity social feed, the order
management social feed and the purchase social feed permit the
buyer and seller to sends feeds to each other during the
transaction.
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REFERENCES and REJECTIONS
Claims 1-26 stand rejected under 35 U.S.C. § 101 as not being
directed to patent-eligible subject matter. See Final Act. 10-16.
Claims 1-2, 4--16, and 18-26 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Leff et al. (US 2008/0228598 Al; published Sept. 18,
2008) ("Leff') and Hemiak et al. (US 2008/0177641 Al; published July 24,
2008) ("Hemiak"). See Final Act. 19-27.
Claims 3 and 17 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Leff, Hemiak, and Deacon et al. (US 2009/0192871 Al;
published July 30, 2009) ("Deacon"). See Final Act. 27-28.
Claims 15-26 are provisionally rejected under 35 U.S.C. § 101 as
claiming the same invention as that of claims 15-26 of co-pending
Application No. 13/197,669. See Final Act. 16-17.
Claims 1-14 are provisionally rejected on the ground of non-statutory
double patenting as being unpatentable over claims 1-14 of co-pending
Application No. 13/197,669. See Final Act. 17-18.
PRINCIPLES OF LAW
Patent-Eligible Subject Matter
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). According to this framework, the first step of the analysis is to
determine whether the claims at issue are directed to a law of nature, natural
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phenomena, or abstract idea. See id. If so, the second step of the analysis is
to determine whether the elements of each claim, considered both
individually and "as an ordered combination," "transform the nature of the
claim" into patent-eligible subject matter. Id.
Obviousness
The Supreme Court has rejected the rigid requirement of
demonstrating a teaching, suggestion, or motivation in the references to
show obviousness. See KSR Int'! Co., v. Teleflex Co., 550 U.S. 398, 415-16
(2007); see also In re Ethicon, Inc., 844 F.3d 1344, 1350 (Fed. Cir. 2017)
("KSR directs that an explicit teaching, suggestion, or motivation in the
references is not necessary to support a conclusion of obviousness.").
Further, one cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references. See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d 413,425 (CCPA 1981).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. We are persuaded the Examiner erred in
rejecting the claims under 35 U.S.C. § 101 for not being directed to patent-
eligible subject matter. We, however, are not persuaded the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a) as obvious over the cited
references, and we adopt as our own the findings and reasons set forth by the
Examiner. See Final Act. 19-28; see also Ans. 10-13. We highlight and
address specific findings and arguments for emphasis as follows.
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Rejection Under 35 US.C. § 101
Independent claims 1 and 15 recite a social B2B marketplace system
and method that facilitates a transaction between a buyer and seller who are
users of the marketplace, that generates an opportunity social field, order
management social feed, and purchase social feed, and are, therefore,
directed to one of the four statutory categories of patentability enumerated
by 35 U.S.C. § 101 (process, machine, manufacture, or composition of
matter). Applying the first part of the Alice analysis, the Examiner finds the
claims are directed to facilitating a seller and buyer to sell and purchase
goods in a social marketplace, which is "an idea, having no particular
concrete or tangible form," and "similar to the concepts involving human
activity relating to commercial practices," and, thus, claim 1 is directed to an
abstract idea. Ans. 4. Applying the second part of the Alice analysis, the
Examiner finds the additional elements or combination of elements in the
claim other than the abstract idea itself amount to no more than generic
functions that can either be performed manually or by a generic computer.
See Ans. 7-8.
Beginning with the first step of the Alice analysis, we must determine
"whether the claims at issue are directed to one of those patent-ineligible
concepts," including abstract ideas. Alice, 134 S. Ct. at 2355. In performing
this determination, we must ask whether the focus of the claims is on a
specific asserted improvement in computer capabilities or, instead, on a
process that qualifies as an "abstract idea" for which computers are invoked
merely as a tool. Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2358-59).
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Appellants first argue the claims do not preempt any fundamental
business practice or abstract idea, and are therefore patent-eligible. See App.
Br. 9. This argument is not persuasive, as the Federal Circuit has made clear
that "the absence of complete preemption does not demonstrate patent
eligibility" of a claim. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015).
Appellants further argue the claims are directed to improving
computer capabilities (i.e., the ability of the computer to be used for
buying/selling goods using a social feed system), and not any alleged
abstract idea in which a computer is invoked merely as a tool. See App.
Br. 9. As described below, we conclude that, under step two of the Alice
analysis, the claims are significantly more than an abstract idea, and thus,
transform the nature of the claims into a patent-eligible application. Thus,
we conclude it is not necessary to identify the precise nature of the abstract
idea recited in the claims. See DDR Holdings, LLC v. Hotels.com, 773 F.3d
1245, 1257 (Fed. Cir. 2014) ("identifying the precise nature of the abstract
idea is not as straightforward as in Alice or some of our other recent abstract
idea cases ... under any of these characterizations of the abstract idea, the
... claims satisfy Mayol Alice step two").
We tum to the next step of the Alice analysis. In step two, as
previously discussed, we consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether the additional
elements "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566 U.S. at 78).
Here, Appellants argue the claims are directed to a technical problem
(i.e., an electronic sales marketplace) and a solution (the claimed
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marketplace and social feed system) that did not exist before the Internet.
See App. Br. 9--10. Thus, according to Appellants, the claims are not
directed to simply a computer-implementation of a notoriously well-known
idea, such as hedging. See App. Br. 10.
We are persuaded by Appellants' argument that, similar to DDR
Holdings, the appealed claims are "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer" technology, and that the claimed invention is not simply using
computers to serve a conventional business purpose. See DDR Holdings,
773 F.3d at 1257. Appellants' Specification describes limitations of prior
B2B marketplace systems, disclosing that it would be desirable to provide a
business with access to and provide a medium to enable conversations with
its customers, other businesses, etc., within the B2B marketplace. See
Spec. 1: 19--22. Further, Appellants' Specification, and the appealed claims,
describe a social feed structure that is integrated into the B2B marketplace,
where the social feed structure provides for public messaging, private
messaging, and activity streams (i.e., indications within the social feed
structure that indicate what is happening within the system based on
activity). See Spec. 10:4--12:2; 15:8-17:9; 17:23-18:26; Claim 1. Thus, the
problem and solution specifically arise in computer technology, and the
claimed invention does not simply use a computer to serve a conventional
business purpose.
Therefore, we are persuaded the Examiner erred in finding claims 1-
26 recite patent-ineligible subject matter. Accordingly, we do not sustain the
rejection of claims 1-26 under 35 U.S.C. § 101.
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Rejection Under 35 US.C. § 103(a)
Appellants contend the combination of cited references fails to teach
or suggest "a computer based marketplace ... having a store front for each
seller, [and] a shopping cart for each buyer at [each] storefront for each
seller," as recited in claim 1, and similarly recited in claim 15. See App.
Br. 11, 13. As argued by Appellants, Leff merely discloses a marketplace for
purchase of products or services in which the marketplace has a business
directory and a shopping cart for the marketplace. See App. Br. 12-13.
According to Appellants, Leff fails to teach or suggest the following
elements recited in claim 1 : (a) a store front for each seller; and (b) a
shopping cart for each buyer at each store front for each seller. See App.
Br. 12-13.
We are not persuaded by Appellants' contention. Contrary to
Appellants' argument, Leff teaches that the marketplace includes a webpage
for displaying a plurality of business members on an online business
directory, where the web page includes section icons that allow a user to
view information about a business in a window of the page. See Ans. 10
(citing Leff,I 42). Consistent with the Examiner's findings, neither
Appellants' claims, nor Appellants' Specification, define or describe the
claimed "store front" in a manner that distinguishes the claimed "store front"
from Leffs business member webpage. See Ans. 10. Further, Leff teaches
that upon a user selecting a business, a new page is displayed with content
appurtenant to the business, where the new page includes a shopping-cart
icon for a user to select a quantity of a product offered by the business
member, and to take steps to purchase the product through a checkout
procedure. See id. ( citing Leff ,r 4 7). Similar to the claimed "store front,"
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neither Appellants' claims, nor Appellants' Specification, define or describe
the claimed "shopping cart" in a manner that distinguishes the claimed
"shopping cart" from Leffs shopping cart icon. See Ans. 10. Thus, Leff
teaches or suggests the claimed "store front for each seller," and the claimed
"shopping cart for each buyer at each storefront for each seller."
Appellants also contend the combination of cited references fails to
teach or suggest "a social feed system that ... generates an opportunity
social feed to [a] seller when an item is placed into [a] shopping cart by a
buyer so that the seller is able to communicate with the buyer about the item;
generates [an] order management social feed to the seller when the buyer
submits a completed order and generates a purchase social feed to the
seller," as recited in claim 1, and similarly recited in claim 15. See App.
Br. 12, 14. Appellants further argue Hemiak merely discloses cooperation
between buyers and not between a buyer and a seller, and thus, fails to teach
or suggest the claimed generating an opportunity social feed to a seller,
generating an order management social feed to the seller, and generating a
purchase social feed to the seller. See App. Br. 12-14.
We are not persuaded by this contention either. The Examiner did not
solely rely on Hemiak for teaching the claimed "social feed system." See
Ans. 11. Instead, the Examiner relied upon the combination of Leff and
Hemiak for teaching or suggesting the aforementioned claim element. More
specifically, the Examiner found Leff teaches or suggests a system that
includes a social network site that facilitates communication between buyers
and sellers, where the system tracks movement or behavior of users of the
social network site and displays an advertisement on a private bulletin board
of a user when the user's movement or behavior is determined to be
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repetitive. See Ans. 11 (citing Leff,r,r 14--15, 17, 53-54, and 57). The
Examiner further relied upon Hemiak for teaching or suggesting an
indication that a collaborative shopper has placed an item in a shopping cart
for purchase, an indication received by a retailer that a collaborative shopper
has selected or purchased an item, and an advertisement provided to a
collaborative shopper by a retailer according to information related to a
selected or purchased item. See Ans. 12 (citing Hemiak ,r,r 32-35 and 67-
70). Appellants' argument fails to address the combination of references,
and, thus, is not persuasive of Examiner error.
No separate arguments are presented for the remaining dependent
claims. See App. Br. 15. Therefore, we are not persuaded that the Examiner
erred in finding claims 1-26 unpatentable in light of the cited prior art
references. Accordingly, we sustain the rejection of claims 1-26 under
35 U.S.C. § 103(a).
Double Patenting Rejections
Appellants have not provided any arguments to show error in the
Examiner's findings regarding either the statutory double patenting rejection
under 35 U.S.C. § 101 or the non-statutory double patenting rejection. See
Ans. 2. "If an appellant fails to present arguments on a particular issue - or
more broadly, on a particular rejection - the Board will not, as a general
matter, unilaterally review those uncontested aspects of the rejection." Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Accordingly, we summarily affirm the aforementioned double patenting
rejections.
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DECISION
We reverse the Examiner's rejection of claims 1-26 under 35 U.S.C.
§ 101.
We affirm the Examiner's rejection of claims 1-26 under 35 U.S.C.
§ 103(a).
We summarily affirm the Examiner's rejection of claims 15-26 on the
ground of statutory double patenting.
We summarily affirm the Examiner's rejection of claims 1-14 on the
ground of non-statutory double patenting.
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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