Ex Parte Kunze et al

Patent Trials and Appeals Board

Sep 26, 2018

10758922 - (D) (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/758,922 01/16/2004
23460 7590 09/28/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
David Kunze
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.
261353 6533
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID KUNZE and SRINIV AS JASTHI
Appeal2017-006875
Application 10/758,922
Technology Center 3600
Before JUSTIN BUSCH, JENNIFER L. McKEOWN, and SCOTT B.
HOWARD, and Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 3-6, 8, 10-13, 15-22, 31, 33, 36, 38--43, 45, 46,
and 55---60. Claims 2, 7, 9, 14, 23-30, 32, 34, 35, 37, 44, and 47-54 have
been cancelled.
We affirm.
1 According to Appellants, the real party in interest is American
International Group, Inc. App. Br. 1.
Appeal2017-006875
Application 10/758,922
STATEMENT OF THE CASE
Appellants' disclosed and claimed invention "relates generally to
computer software-based pop-up displays and more particularly relates to a
software program that monitors input data in real-time to selectively initiate
an interactive purchase display." Spec ,r 2.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method for facilitating travel insurance sales on a
computer system that is receiving data during a travel reservation
purchase routine, the computer system having a processor
programmed to perform the method, the method comprising the
steps of:
(A) actively monitoring, by the processor, data streams
associated with at least one data sequence entered in a travel
reservation purchasing routine accessed through the processor of
the computer system;
(B) storing, by the processor, at least a portion of the
data streams being monitored in a memory device of the
computer system;
(C) identifying, by the processor, a predetermined data
stream in the data sequence;
(D) in response to identifying the predetermined data
stream, executing, by the processor, a travel insurance purchase
routine, including:
launching, by the processor via a video driver, a window
in a display, the window including indicia offering an option to
purchase travel insurance,
after receiving, from a human/machine interface operably
arranged with the processor, an indication of acceptance to
purchase travel insurance, launching, by the processor, at least
one form with travel insurance data fields in the disp 1 ay and
populating, by the processor, at least a portion of the travel
insurance data fields with data from the stored data streams
previously entered during the travel reservation purchase routine.
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Application 10/758,922
THE REJECTIONS
The Examiner rejected claims 1, 3---6, 8, 10-13, 15-22, 31, 33, 36, 38-
43, 45, 46, and 55---60 under 35 U.S.C. § 101 as directed to patent-ineligible
subject matter. Final Act. 4--6.
The Examiner rejected claims 1, 3---6, 8, 10-13, 15-22, 31, 33, 36, 38-
43, 45, and 46 under 35 U.S.C. § 103 as unpatentable over Eizenburg (US
2002/0026336 Al, published Feb. 28, 2002) and Blair (US 4,792,890, issued
Dec. 20, 1988). Final Act. 6-17.
The Examiner rejected claims 55---60 under 35 U.S.C. § 103 as
unpatentable over Eizenburg and Pedro (US 2002/0091732 Al, published
July 11, 2002). Final Act. 18-26.
ANALYSIS
THE REJECTION UNDER 35 U.S.C. § 101
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1, 3---6, 8, 10-13, 15-22, 31, 33, 36, 38--43, 45, 46,
and 55---60 as directed to patent-ineligible subject matter.
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (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 Corp. Pty.
Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). The first step in that
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts" (id.), for example, to an abstract idea. If
the claims are directed to one of the patent-ineligible concepts, the inquiry
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proceeds to the second step where the elements of the claims are considered
"individually and 'as an ordered combination'" to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 132 S.
Ct. at 1297).
The Examiner determines that the claims are "directed to fundamental
economic practices and methods of organizing human activities or more
specifically the abstract ideas of creating a contractual relationship and also
the abstract idea of comparing new and stored information and using rules to
identify options." Final Act. 4--5; see also Ans. 2 (identifying the abstract
idea as the "fundamental economic practice of purchasing a good or service
[on] a computer."). Then, the Examiner determines that the claims do not
"include additional elements that are sufficient to amount to significantly
more than the judicial exception." Final Act. 5. The Examiner, in
particular, points to the Specification's discussion of the general nature of
the computer. Final Act. 5---6.
With respect to the first part of the eligibility analysis, Appellants
assert that "[ t ]he appealed claims do not simply claim an abstract idea, a
mental process or substantially all practical uses of a law of nature or a
natural phenomenon." App. Br. 5. Appellants' general assertion, though,
does not identify or explain any error in the Examiner's determination that
the claims are directed to a fundamental economic principle and a method of
organizing human activity. Moreover, we agree with the Examiner that the
claims are directed to an abstract idea. See, e.g., BuySAFE, Inc. v. Google,
Inc., 765 F.3d 1350 (Fed. Cir. 2014) (concluding claims directed to the
economic principle of creating contracts are patent-ineligible); Elec. Power
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Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)(concluding claims
directed to collection, analysis, and display of certain data are patent-
ineligible ); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F .3d
1364 (Fed. Cir. 2017)(concluding claims collecting data, then analyzing and
using data to perform an action are patent ineligible).
Under step two of the eligibility analysis, Appellants assert that
"[ c ]laim 1 recites additional elements that amount to significantly more than
a judicial exception." App. Br. 7; see also App. Br. 9--10 (presenting similar
arguments for claim 31); App. Br. 11-12 (presenting similar arguments for
claim 55). Appellants highlight certain components of the claim, i.e.
computer system, memory device, video, driver, human/machine interface,
and display, and maintain that these features transform the claims to satisfy
the machine-or-transformation test. App. Br. 7.
We find this argument unpersuasive. As the Examiner explains, "the
claimed invention represents applying the abstract idea of a fundamental
economic practice of purchasing a good or service to a computer." Ans. 3.
Notably, the "transforming" components identified by Appellants are merely
generic computer components, such as a memory, display, and human
interface. Under Alice, these generic components do not transform the
abstract idea of the claims into patent eligible subject matter. See Alice, 134
S.Ct. at 2358. Namely, we agree with the Examiner that the computer
system is recited merely as a tool to implement the abstract idea. Final Act.
5---6; Ans. 3. The Specification similarly describes the invention may be
implemented by generic computer components and operating systems. See,
e.g., Final Act. 5---6 ( citing Spec. ,r,r 25-26).
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Appellants next contend that the claims are "rooted in computer
technology" to address needs "specifically arising in the field of interactive
purchase displays, namely by providing efficiency-improving features that
enhance the experience of both the user and the consumer to thereby make a
more commercially appealing product." App. Br. 8; see also App. Br. 9--13
(presenting similar arguments for claims 31 and 55). Appellants highlight
the invention's population of data fields without requiring data re-entry and
allege that the claims are a "significant improvement over any existing
technological process known at the time of the invention." App. Br. 8.
According to Appellants,
The claimed approach includes unconventional steps and
limitations that improve the operation of the claimed "travel
reservation purchase routine" by automatically prompting the
offer to purchase travel insurance and by facilitating the data
entry relating to the acceptance to purchase travel insurance by
populating travel insurance data fields with data from the stores
data streams that had been previously entered.
App. Br. 8-9.
We disagree. The claims are not rooted in computer technology nor
are the claims a significant improvement over the prior art. Appellants have
not identified or explained any technological improvement to how the
computer itself or the travel reservation system itself functions. Rather, the
claims are directed to "a technological solution to manual data entry." Ans.
4. But, relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible. See Alice, 134
S.Ct. at 2359 ("use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions" is not an inventive
concept); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (US.), 687
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F.3d 1266, 1278 (Fed. Cir. 2012) (a computer "employed only for its most
basic function ... does not impose meaningful limits on the scope of those
claims" and "[ 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"); cf DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1258-59 (Fed. Cir. 2014) (determining a computer-
implemented method is patent eligible where the claims recite a specific
manipulation of a general-purpose computer such that the claims do not rely
on a "computer network operating in its normal, expected manner"). The
claims here merely use generic computer components operating in the
normal, expected manner and, as such, we are not persuaded of error in the
Examiner's determination. See Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013).
Accordingly, for the reasons discussed above and provided by the
Examiner, we affirm the Examiner's rejection of claims 1, 3---6, 8, 10-13,
15-22, 31, 33, 36, 3 8--43, 45, 46, and 55---60 as directed to patent-ineligible
subject matter.
THE REJECTION UNDER 35 U.S.C. § 103 BASED ON EIZENBURG AND BLAIR
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1, 3---6, 8, 10-13, 15-22, 31, 33, 36, 38--43, 45, and
46 as unpatentable over Eizenburg and Blair.
The Examiner finds that Eizenburg teach or suggests the limitations of
claim 1, except for the recited actively monitoring data streams. The
Examiner relies on Blair for this step. Final Act. 7-9.
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Appellants, on the other hand, assert that Eizenburg "fails to render
unpatentable a method facilitating travel insurance sales on a computer
system that is receiving data during a travel reservation purchase routine
having the combination of steps and features recited in claim 1." App. Br.
15. Further, according to Appellants, Eizenburg' s system generates
customized web pages through an interactive process with a travel agent and
a client populating travel templates. App. Br. 17. Appellants assert that a
user can select journey options that allows a user to buy insurance, but
Eizenburg lacks disclosure with respect to further insurance purchasing
routine steps. Id.
As such, Appellants maintain that Eizenburg does not actively
monitor data streams associated with at least one data sequence entered in a
travel reservation purchasing routine. App. Br. 17. Specifically,
Eizenburg's "Journey Maker" button 60a (or a hypertext
link) does not teach or suggest using a processor to identify a
predetermined data stream in the data sequence. The passive
response to the execute command sent by a user when selecting
the button or clicking the hypertext link is not the same as the
claimed step which is performed by the processor in conjunction
with the active monitoring step without waiting for a trigger from
a user. Rather, in claim 1, the processor actively monitors the
data streams entered in the travel reservation purchasing routine,
and when it identifies a predetermined data stream, it executes
the travel insurance purchase routine.
App. Br. 17. Appellants acknowledge that the Examiner relies on Blair to
teach active monitoring and allege that Blair does not cure the deficiencies
ofEizenburg. App. Br. 18.
We find this argument unpersuasive. As the Examiner explains, and
Appellants acknowledge, the rejection does not rely on Eizenburg for
actively monitoring, but instead finds that Blair teaches this limitation. Final
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Act. 9 ( citing Blair col. 4, 1. 30- col. 5, 1. 4); Ans. 8 ( citing the same).
Appellants general assertion that Blair does not cure the deficiencies with
respect to Eizenburg does not persuasively identify error in the Examiner's
findings. See App. Br. 18 (asserting that "Blair fails to cure the deficiencies
of Eizenburg" without more).
Appellants' contention that Eizenburg fails to teach or suggest the
executing travel insurance purchase routine steps is likewise unavailing.
App. Br. 17-18. Appellants quote the claim language as absent from
Eizenburg and then assert that
Far from being nonfunctional, the foregoing steps relating to the
travel insurance purchase routine create a useful result which
helps facilitate travel insurance sales. The steps recite specific,
machine-implemented actions that change the display in ways
that can help a user conduct more travel insurance sales.
App. Br. 18.
While we agree that the steps of launching a form with travel fields
and automatically populating a portion of the data for the fields with
previously stored information is not non-functional descriptive language, the
Examiner identifies where Eizenburg teaches these limitations. For
example, the Examiner finds that Eizenburg teaches launching templates and
populating fields from stored information. Final Act. 7; Eizenburg ,r,r 29-
31, 35, and 36. We understand the Examiner to be finding that the launching
a form process and populating the fields with stored information would be
the same for travel insurance as with other travel data and, as such, the
Examiner refers to the data fields themselves as intended use or non-
functional descriptive information. See Final Act. 8. Because Eizenburg
expressly teaches launching a form for travel insurance and teaches
populating data forms from previously stored information, we are not
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Application 10/758,922
persuaded that Eizenburg fails to at least suggest the disputed travel
insurance purchase routine steps. Final Act. 7-9; Eizenburg ,r,r 29-31, 35,
36, and 80.
Further, we find Appellants' conclusory assertions that it would not
have been obvious at the time of the invention to modify Eizenburg with
Blair unconvincing. App. Br. 15. Namely, Appellants generally assert that
"it is respectfully submitted that one skilled in the art would not have a
credible reason for combining the various elements selected from the applied
references as proposed in the pending Office Action." App. Br. 15; see also
App. Br. 19 (asserting the same for claim 31).
Notably absent, though, is any persuasive explanation as to why the
Examiner's reasoning is insufficient. The Examiner reasons that
It would have been obvious to one of ordinary skill in the art at
the time of the invention to add these features into Eizenberg.
One of ordinary skill in the art at the time of the invention would
have added these features into Eizenberg with the motivation to
enable a processor to run prioritized tasks on a single interrupt
level without queuing multiple interrupt requests (Blair, Column
2, lines 10-15).
Ans. 8; see also Final Act. 9. As such, Appellants general assertion does not
persuade us of error in this determination.
With respect to claim 31, Appellants additionally contend that
Eizenburg "fails to teach or suggest actively monitoring input data streams
entered in the GDS system for booking a travel reservation to identify a
predetermined portion of the input data stream that signifies a predetermined
point in a travel reservation booking process" and that Blair does not cure
the deficiencies. App. Br. 19. Appellants' conclusory assertions, again, do
not persuasively identify error in the Examiner's findings. Namely, as
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discussed above, the Examiner relies on Eizenburg in view of Blair as
teaching active monitoring step. Ans. 12-13. As such, we are not persuaded
of error.
Accordingly, we affirm the Examiner's rejection of claims 1, 3---6, 8,
10-13, 15-22, 31, 33, 36, 38--43, 45, and 46 as unpatentable over Eizenburg
and Blair.
THE REJECTION UNDER 35 U.S.C. § 103 BASED ON EIZENBURG AND PEDRO
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 55---60 as unpatentable over Eizenburg and Pedro.
Appellants present similar arguments to those discussed above with
respect to claim 1. For example, Appellants present conclusory assertions
that it would have not been obvious to modify Eizenburg with features from
Pedro. See App. Br. 20-21. Without more, though, this argument is
unpersuasive. See Final Act. 22-23.
Appellants next argue that neither Eizenburg nor Pedro disclose
"actively monitoring for a predetermined data stream which when identified
causes the processor to launch a graphic visible in a display where the
graphic includes indicia adapted to remind to offer the traveler an option to
purchase travel insurance" or "the recited steps relating to receiving an
indication that the traveler accepts the offer to purchase travel insurance or
an indication that the traveler declines the offer." App. Br. 21. Appellants'
conclusory assertions are unpersuasive. Merely reciting claim language is
insufficient. 37 C.F.R. § 4I.37(c)(l)(vii)("A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim."); see also Ans. 13-14.
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Appellants also allege that
The depiction in FIG. 42 of Eizenburg of a button that can be
selected to launch an insurance purchase and indicia stating that
the user has not selected any options is different from the claimed
step which places a graphical notice on a travel itinerary that
travel insurance has been offered but was declined.
App. Br. 22. Appellants' argument, though, fails to consider that claim 55, a
method claim, recites this limitation in the alternative. In other words, claim
55 only requires performing one of the alternatively recited steps (i.e.,
launching a form used to purchase travel insurance or generating a notice
indicating insurance was declined).
Accordingly, we affirm the Examiner's rejection of claims 55---60 as
unpatentable over Eizenburg and Pedro.
DECISION
We affirm the Examiner's decision to reject claims 1, 3---6, 8, 10-13,
15-22, 31, 33, 36, 3 8--43, 45, 46, and 55---60.
AFFIRMED
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