Ex Parte Leon et al

Patent Trial and Appeal Board

Dec 6, 2018

11241883 (P.T.A.B. Dec. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/241,883 09/29/2005 Jean-Michel Leon
150601 7590 12/10/2018
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
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.
2043.239US 1 3035
EXAMINER
LEVINE, ADAM L
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
12/10/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-MICHEL LEON, ANSELM PAUL BAIRD-SMITH, and
LOUIS MARCEL GINO MONIER
Appeal2017-001982 1
Application 11/241,883 2
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, MICHAEL W. KIM,
Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeals from the Examiner's
decision to reject claims 1-23, 37 and37. We have jurisdiction under§ 6(b).
We AFFIRM.
1 We reference the Specification ("Spec.," filed Sept. 22, 2009), Appeal Brief
("App. Br.," filed Mar. 2, 2016), and Reply Brief ("Reply Br.," filed Nov. 21,
2016), as well as the Examiner's Answer ("Ans.," mailed Sept. 9, 2016) and Final
Office Action ("Final Act.," mailed May 15, 2015).
2 According to the Appeal Brief, the real party in interest is EBAY INC.
Appeal Br. 2.
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Application 11/241,883
SUBJECT MATTER ON APPEAL
The invention "relates generally to the technical field of data
communication." Spec. ,r 2. More specifically, the invention contemplates
"methods and system [sic] to facilitate searching a data resource," which is "used
by sellers and buyers that transact items in a network-based marketplace."
Spec. ,r,r 2, 6.
Claims 1, 12, and 23 are the independent claims on appeal. Independent
claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method to facilitate searching items in a network-based
marketplace, the method including:
presenting, by the network-based marketplace, an interface to
author, by a seller, an item listing for an item that is being offered for
sale on the network-based marketplace, the item listing to present the
item to a buyer when viewing the item in the network-based
marketplace, the item listing including an item description authored by
the seller, the network-based marketplace being a computer
implemented system coupled to a network to interact with user devices
to perform item transactions between users of the network-based
marketplace, the users of the network-based marketplace including
sellers and buyers, the seller being one of the sellers and the buyer being
one of the buyers, the sellers being those who offer items for sale on the
network-based marketplace, and the buyers being those browsing the
network-based marketplace;
receiving, by the network-based marketplace from the interface,
the item description;
evaluating, by the network-based marketplace in response to
receipt of the item description, the item description with an expression
from a rule, the rule including the expression and supplemental
information, the expression evaluating to true for the item description,
the rule being stored in a first data resource of the network-based
marketplace prior to receipt of the item description;
supplementing, by the network-based marketplace in response to
the rule evaluating to true, the item description by adding the
supplemental information to the item description for the item listing to
create a supplemental item description for the item listing; and
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storing, by the network-based marketplace, the supplemental
item description for the item listing in a second data resource of the
network-based marketplace, the evaluating, supplementing and storing
performed in real time, using one or more processors, to facilitate
search of the item description and the supplemental information in real
time.
REJECTIONS
Claims 1-23, 36 and 37 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
Claims 1-23, 36, and 37 stand rejected under pre-AIA 35 U.S.C. 103(a) as
unpatentable over Clendinning et al. 3 in view of Subramanian et al. 4.
ISSUE
Two issues are before the Board on Appeal: (1) has the Examiner
erred in rejecting the claims under 35 U.S.C. § 101; and (2) has the
Examiner erred in rejecting the claims under 35 U.S.C. § 103(a) as
unpatentable over Clendinning in view of Subramanian.
ANALYSIS
Claims 1-23, 36 and 37 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The Supreme
Court, however, has long interpreted§ 101 to include implicit exceptions: "[l]aws
3 Clendinning, US Patent Application Publication No. 2013/0198183 (pub. Aug. 1,
2013).
4 Subramanian, US Patent Application Publication No. 2002/0123912 (pub. Sept.
5, 2002).
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of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice
Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
In determining whether a claim falls within the excluded category of abstract
ideas, we are guided in our analysis by the Supreme Court's two-step framework,
described in Mayo and Alice. Id. at 2355 ( citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 77-78 (2012)). In accordance with that
framework, we first determine what concept the claim is "directed to." See Alice,
134 S. Ct. at 2356 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement risk.");
Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners'
application explain the basic concept of hedging, or protecting against risk .... ");
Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing respondents' claims
according to the above statements from our cases, we think that a physical and
chemical process for molding precision synthetic rubber products falls within the
§ 101 categories of possibly patentable subject matter."); Parker v. Flook, 437 U.S.
584, 594--595 (1978) ("Respondent's application simply provides a new and
presumably better method for calculating alarm limit values."); Gottschalk v.
Benson, 409 U.S. 63, 64 (1972) ("They claimed a method for converting binary-
coded decimal (BCD) numerals into pure binary numerals.").
The following method is then used to determine whether what the concept
the claim is "directed to" is an abstract idea:
[T]he decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen-
what prior cases were about, and which way they were decided. See,
e.g., Elec. Power Grp. [v. Alstom S.A.], 830 F.3d [1350,] 1353-54
[(Fed. Cir. 2016)]. That is the classic common law methodology for
creating law when a single governing definitional context is not
available. See generally Karl N. Llewellyn, The Common Law
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Tradition: Deciding Appeals (1960). This more flexible approach is
also the approach employed by the Supreme Court. See Alice, 134
S. Ct. at 2355-57. We shall follow that approach here.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir.
2016) ( footnote omitted).
Concepts determined to be abstract ideas, and thus patent ineligible, include
certain methods of organizing human activity, such as fundamental economic
practices (Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611); mathematical
formulas (Flook, 437 U.S. at 594--95); and mental processes (Benson, 409 U.S. at
69). Concepts determined to be patent eligible include physical and chemical
processes, such as "molding rubber products" (Diehr, 450 U.S. at192), "'tanning,
dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores'" (id. at
184 n.7 (citing Corning v. Burden, 56 U.S. 252, 267-268 (1854)), and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S.
780, 785 (1876)).
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature of the
claim into a patent-eligible application of the abstract idea. Alice, 134 S. Ct. at
2355. This is a search for an "inventive concept"-an element or combination of
elements sufficient to ensure that the claim amounts to "significantly more" than
the abstract idea itself. Id.
The Appellants argue claims 1-23 and 36-37 as a group. Appeal Br. 11-14;
Reply Br. 2--4. We select independent claim 1 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner finds claim 1 directed to "tagging an item listing with more
common descriptive information in order to facilitate searching, or indexing a list
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of items by category." Final Act. 10. The Examiner then explains that this
concept "is the same as the fundamental economic practice of organizing products
by category information in a catalog, simply utilized in electronic form within the
field of digital commerce." Final Act. 10. The Examiner further compares the
claims at issue to, among other cases, those in Intellectual Ventures I LLC v. Erie
Indem. Co., 134 F. Supp. 3d 877 (W.D. Pa. 2015). The Examiner underscores that,
in Intellectual Ventures I, claims directed to "the abstract idea of gathering, storing,
and acting on data based on predetermined rules," and "retrieving information
from a database using 'an index of XML tags and metafiles, '" was found ineligible
as "directed to the abstract idea 'of creating an index and using that index to search
for and retrieve data."' Ans. 4.
The Appellants argue that the Examiner's comparison is incorrect, and that
the "claims are directed to improving computer search technology" analogous to
those determined to be patent eligible, for example, in Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016). Appeal Br. 14; Reply 3. We agree with the
Examiner.
Specifically, we agree with the Examiner's determination that the
Appellants' claims are directed to "tagging an item listing with more common
descriptive information in order to facilitate searching, or indexing a list of items
by category." Final Act. 10. Representative claim 1 includes assigning
supplemental information to an item listing- authored through its interface-and
stores that supplemental information to "facilitate a search of the item description
and the supplemental information in real time." The specification explains further
that this supplemental information, or item classification information, may include
"a domain, classification tags, and inference tags." Spec. ,r 90. As noted by the
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Examiner, these tags represent more common descriptive information that the
invention uses to facilitate searching items by category.
We further agree with the Examiner that the claims at issue are similar to the
claims found ineligible in Intellectual Ventures I. Like the claims in Intellectual
Ventures I-which were found to be directed to the concept "gathering, storing,
and acting on data based on predetermined rules," which are an abstract idea-the
current claims review the item listings, authored through its interface; supplement,
based on a set of rules, the item listings with supplemental information to create a
supplemental item description; and store that supplemental item description. We
agree with the Examiner that these steps, like the ones in Intellectual Ventures I,
constitute no more than the abstract idea of "gathering" information, "acting on
data based on predetermined rules," and "storing" that information.
By contrast, we are unpersuaded by the Appellants' argument that its claims
are directed to an improvement in computer technology like those in Enfish. In
Enfish, the invention at issue was directed at a wholly new type of logical model
for a computer database: a self-referential table that allowed the computer to store
many different types of data in a single table and index that data by column and
row information. Enfish, 822 F.3d at 1330-32. In finding the claims "not directed
to an abstract idea," but "to a specific improvement to the way computers operate,"
the Federal Circuit noted that "the claims are not simply directed to any form of
storing tabular data, but instead are specifically directed to a self-referential table
for a computer database." 822 F.3d at 1336-37 (emphasis in original).
Unlike the claims at issue in Enfish, we find the current invention not
directed to any specific thing that improves computer functionality. The
Appellants appear to be asserting that the following combination of limitations
constitute computer operations "resulting in the creation, use, and manipulation of
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specialized data structures in a computer system": "evaluating, by the network-
based marketplace .... an expression from a rule," "supplementing, by the
network-based marketplace ... the item description by adding the supplemental
information," and "storing ... the item listing in a second data resource." App. Br.
13. The problem, however, is that the Appellants do not identify anything that is a
computer-specific operation similar to the self-referential table of Enfish. For
example, we are unpersuaded that "evaluating ... an expression from a rule" is
computer-specific - as claimed, it is nothing more than a mental process step, with
instructions to "apply it" to a network-based marketplace. In another example, we
are unpersuaded that the "second data resource" is computer-specific when the
particulars of how the "second data resource" stores is not specified. The same
analysis can be applied to the Appellants' comparisons to McRO, and Bascom.
Reply Br. 4.
Because we are unpersuaded that the Examiner erred in asserting that the
claims are directed to an abstract idea, we tum next to Alice step 2 and assess
whether the claims recite additional elements that transform the nature of the claim
into a patent-eligible application of the abstract idea.
Under Alice step 2, the Examiner finds that the claims at issue "amount to
nothing more than a recitation of generic computer structure that serves to perform
generic computer functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry." Final Act. 10-11.
The Appellants conversely argue that the claims "recite[] an unconventional
combination of elements that confine the claim to a particular useful application
other than what is well-understood, routine and conventional in the field." Appeal
Br. 13. For example, the Appellants assert that the claims "include[] the
presentation of an authoring interface to permit users to create item listings" that
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are "then texted and manipulated to include additional, or supplemental
information .... [ and] stored with the item description to enhance searching of the
listings." Appeal Br. 13-14. The problem, however, is that the only item listed
above that can be considered an additional element to the abstract idea is the
"authoring interface," but that term does not appear in the claims. Of course, the
term "interface" does appear, however, the purportedly unconventional functions
attributed to the "interface," such as "permit users to create item listings" and
"include additional, or supplemental information" are part of the abstract idea of
"tagging an item listing with more common descriptive information in order to
facilitate searching, or indexing a list of items by category."
For these reasons, we sustain the Examiner's rejection of claims 1-23, 36,
and 37 under 35 U.S.C. § 101 as patent in-eligible subject matter.
Claims 1-23, 36 and 37 rejected under 35 U.S.C. § 103(a) as obvious over
Clendinning in light of Subramanian
The Examiner rejected claims 1-23 and 36-37 under 35 U.S.C. § 103(a) as
obvious over a combination of Clendinning and Subramanian. Final Act. 11. The
Appellants assert that neither Clendinning nor Subramanian disclose any of
"modifying the item description for the listing," "vendors being presented with a
user interface to enter an item listing," and "the information is actually a listing
(because one must travel to the vendor themselves to purchase any item)." Appeal
Br. 15-22; Reply Br. 4--5. We address each assertion in tum. 5
5 We note that the Appellants only argue independent claim 1 specifically, and also
assert that "[i]ndependent claims 12 and 23 recite subject matter similar to that
argued above with respect to claim 1 and are also allowable for the reasons given
above. Dependent claims 2-11, 13-22 and 36-37 ultimately depend from one of
allowable independent claims 1 or 12 and thus are also allowable." Appeal Br. 15-
22; Reply Br. 4--5. Accordingly, we also select independent claim 1 as
representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
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For "modifying the item description for the listing," the Examiner responds
that "the features upon which applicants rely (i.e., 'providing an authoring platform
to allow the seller to enter the item listing,' and 'editing the entered listing itself,')
are not recited in the rejected claims." Final Act. 5. The Examiner believes that
the "Appellants [are] confusing this [modifying listings] feature with the
'supplementing' or 'supplemental information' limitations"-both which, the
Examiner finds, are disclosed in Clendinning. Ans. 7. As an initial matter, we
agree with the Examiner that it is unclear what the Appellants are asserting. In any
case, however, even when we read the Appellants' assertion in light a most
favorable to them, we still agree with the Examiner. Specifically, even when the
Appellants are given the benefit of the doubt that they meant "supplementing,"
which is recited in the claim, instead of "modifying," which is not, the Appellants'
assertion are unpersuasive.
Essentially, it appears the Appellants are asserting that "supplementing"
means "modifying," i.e., changing an item in a data field from a pre-existing
notation to another notation, and not "adding," i.e., appending information. We are
unpersuaded the Appellants are correct. Beginning with claim language,
independent claim 1 recites "supplementing, ... in response to the rule evaluating
to true, the item description by adding the supplemental information to the item
description." Accordingly, by its own express claim language, "supplementing" is
"adding." The specification is consistent with this understanding. For example,
the specification discloses that "the received information ( e.g., item information
120) is supplemented with supplemental information ( e.g., item classification
information 131 ). Instances of item classification information 131 may include a
domain 130, classification tags 97, and inference tags 99." Spec. ,r 90 (emphasis
added). The passive use "is supplemented with" is more consistent with "adding"
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than "modifying." Indeed, further down from that, the specification discloses
"[a]dding classification tags 97 to the tagged item information 93 structures the
item information 120 .... " Spec. ,r 90. It goes without saying that the use of the
term "adding" is more consistent with "adding" than "modifying." By contrast, the
Appellants have not identified any example in the specification where anyone
"supplements" a listing by "modifying" it.
Under that construction of "supplementing," we find that Clendinning that
expressly discloses "adding" additional information as follows: "The data may be
subsequently combined with additional information collected from other sources."
Clendinning ,r 35 (emphasis added). "The information collected will typically
contain one or more product identifiers." Id. ,r 44. On those bases, we agree with
the Examiner that Clendinning discloses "supplementing by the network-based
marketplace in response to the rule evaluating to true, the item description by
adding the supplemental information to the item description for the item listing to
create a supplemented item description for the item listing."
In response to Appellant's second assertion that Clendinning does not
"mention ... vendors being presented with a user interface to enter an item
listing," Appeal Br. at 18, the Examiner responds that "the claim is not directed to
a 'vendor interface' but to 'an interface to author by a seller an item listing.'
Appellant's disclosure does not disclose or otherwise describe a 'vendor' or
'vendor interface."' Ans. at 5 (internal citation omitted). Analogous to our
analysis of "supplementing," we agree with the Examiner.
Specifically, while independent claim 1 does recite "an interface to author,
by a seller, an item listing" we are unpersuaded that this is the same as a vendor
interface, as the Appellants appear to advance. Beginning again with claim
language, by its own terms, independent claim 1 does not recite "vendor," and the
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Appellants have not explained sufficiently a relationship between "vendor" and
"seller" that would indicated otherwise. The specification is consistent with this
understanding, as it only refers to "seller" and not "vendor" with respect to the
interface. See, e.g., Spec. ,r 72 ("[a]uthoring/publishing applications, in the
example form of the listing creation applications 60, allow authors/publishers
sellers conveniently to author information ( e.g., listing pertaining to goods or
services that they wish to transact via the computer-based system 12), and
application management applications ( e.g., listing management applications 62)
allow authors/publishers to manage such published information.").
For the corresponding disclosure in Clendinning for the limitation of "an
interface to author, by a seller, an item listing," the Examiner asserts the following:
Cited portions of the reference describe a merchant using a
merchandising system to enter and store item information in a database
and author an item listing for display to shoppers. See at least
Clendinning ,r 0014---0016. An objective consideration of the reference
clearly shows that it is the merchant that is equivalent to the presently
claimed seller. See also Clendinning ,r 0036 ( describing a human
operator manually collecting item information from various sources
including a vendor, and loading this information into the
aforementioned database).
Ans. 6. The Appellants reply as follows:
Cited paragraphs 14--16 of Clendenning merely describe how users
store their own data or put it on the web. This section of Clendenning,
e.g., paragraph 1 7, also then expresses how these techniques don't work
well. The Answer also cites a section of Clendenning (paragraph 3 6)
that describes an employee of the marketplace manually entering other
people's data.
Reply Br. 5. We agree with the Examiner's assessment of the cited portions of
Clendinning as more accurate.
With respect to the Appellants' argument that Clendinning does not disclose
a "listing ... because one must travel to the vendor themselves to purchase any
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item" (App. Br. 18), the argument is misplaced because the Appellants have not
shown how the claim language requires this. All independent claim 1 recites is
"the sellers being those who offer items for sale on the network-based marketplace,
and the buyers being those browsing the network-based marketplace" which does
not preclude the actual sale being conducted at another location.
Finally, the Appellants assert that Subramanian does not remedy the
aforementioned deficiencies of Clendinning We are unpersuaded, however, that
Clendinning is deficient for the reasons set forth above.
For these reasons, we sustain the Examiner's rejection of claims 1-23, 36,
and 37 under 35 U.S.C. § 103 as unpatentable over Clendinning in view of
Subramanian.
DECISION
We AFFIRM the rejection of claims 1-23, 36, and 37 under 35 U.S.C. § 101
as directed to abstract ideas and the rejection of claims 1-23, 36, and 37 under 35
U.S.C. § 103(a).
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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