Ex Parte Liu

Patent Trial and Appeal Board

Jun 11, 2018

13430102 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/430,102 03/26/2012
49845 7590 06/13/2018
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Qian Liu
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.A07US 1 9743
EXAMINER
MISIASZEK, MICHAEL
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/13/2018 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):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QIAN LIU
Appeal2017-003276
Application 13/430, 102
Technology Center 3600
Before ALLEN R. MacDONALD, JEREMY J. CURCURI, and
ADAM J. PYONIN, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
1 Appellant indicates the Real Party in Interest is eBay Inc. App. Br. 2.
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Application 13/430,102
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM.
Representative Claim
Representative claim 1 under appeal reads as follows ( emphases and
bracketed material added).
1. A method for facilitating an exchange of a first item
with a second item via a location-enabled mobile device, the method
compnsmg:
[A.] receiving, at a location-enabled first device, a request for
one or more matching items available to be exchanged with the first
item;
[B.] receiving, in response to processing of the request, results
including a plurality of matching items, the plurality of matching
items identified based on one or more characteristics of the first item
and at least one pre-determined criteria;
[ C.] presenting the plurality of matching items presently
available for exchange one at a time on a display portion of the
location-enabled first device, wherein a next matching item of the
plurality of items is displayed when a presently displayed matching
item is dismissed;
[D.] in response to receiving a selection of the second item from
among the plurality of matching items, automatically generating a
trade request message requesting an exchange of the first item for
the second item, wherein the trade request message is generated on
behalf of a first user associated with the first item; and
[E.] transmitting the trade request message to a second user
associated with the second item.
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Rejection
The Examiner rejected claims 1-29 "under 35 U.S.C. 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more," i.e.,
for being directed to patent-ineligible subject matter. Final Act. 2, emphasis
omitted.
We select claim 1 as representative. Appellant does not argue
separate patentability for claims 2-29. As to the dependent claims of this
group, Appellant asserts "[ t ]he Examiner has thus failed to establish a prima
facie case that these dependent claims are not eligible for patent protection
under 35 U.S.C. § 101. For example, the Examiner has not applied the
Mayo two-step process to these dependent claims." App. Br. 13-14.
However, Appellant does not attempt to explain why the Examiner's
conclusions2 are not applicable to the dependent claims. For example, as to
dependent claim 11 which adds "goods" to the bartering of claim 1, in light
of Appellant's admission (Spec. 3) that the bartering of goods is a well-
known human activity, Appellant does not explain why further § 101
analysis is required beyond that set forth by the Examiner.
Further, Appellant's assertion as to the dependent claims does not
comply with the requirements for making a separate argument. 37 C.F.R.
§ 4I.37(c)(l)(iv)("Under each heading identifying the ground of rejection
2 The Examiner concludes: (1) "[ t ]he dependent claims are found to be
ineligible for similar reasons [to the independent claims]," and (2) "they do
not set forth technical activities that amount to more than the merely
application of manual activities that could be performed by a human
operator to a generic computer environment." Final Act. 4.
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being contested, any claim( s) argued separately or as a subgroup shall be
argued under a separate subheading that identifies the claim(s) by number").
We find Appellant's dependent claim assertion does not rise to the
level of substantive arguments addressing each individual claim. Without
more, this fails to constitute an argument on the merits. See 37 C.F.R.
§ 4I.37(c)(l)(iv); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Except
for our ultimate decision, claims 2-29 are not discussed further herein.
Issue on Appeal
Did the Examiner err in rejecting claim 1 for being directed to patent-
ineligible subject matter?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments (Appeal Brief) that the Examiner has erred.
A. Section 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). 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
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nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of these concepts." Alice, 134 S. Ct. at 2355. The first
step in that analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts," such as an abstract idea. For
example, a fundamental economic practice is an abstract idea.
[In Bilski v. Kappas], the Court grounded its conclusion that all
of the claims at issue were abstract ideas in the understanding
that risk hedging was a " 'fundamental economic practice.' " 561
U.S., at 611, 130 S. Ct. 3218.
Alice, 134 S. Ct. at 2357.
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). If
the claims are not directed to an abstract idea, the inquiry ends. Otherwise,
the inquiry proceeds to the second step where the elements of the claims are
considered "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, 132 S.
Ct. at 1298, 1297).
In other words, the second step is to "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."' Id. ( alteration in original) ( quoting
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Mayo, 566 U.S. at 77-78). The prohibition against patenting an abstract
idea "'cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment' or adding 'insignificant
postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010).
B. Examiner's §101 Rejection -Alice/Mayo - Steps 1 and 2
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes:
Claim[ 1 is] directed to facilitating item exchange, which is
merely a method of organizing human activity, and thus an
abstract idea.
Final Act. 2.
Applicant asserts that it appears the examiner has classified the
claims as "facilitating item exchange" by ignoring the claim
limitations and the claims as a whole and merely adding the word
"facilitating" to the Title of the specification. On the contrary, it
appears that applicant has ignored the claims as a whole with
such an assertion, as the concept of facilitating item exchange
(which was never intended to be limiting, but merely a summary
of the inventive concept) was taken directly from the preamble
of the claims. Accordingly, such a description is apt.
Final Act. 4--5.
Applying step 2 of the Alice/Mayo analysis, the Examiner concludes:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the claims do not amount to an improvement to another
technology or technical field; the claims do not amount to an
improvement to the functioning of a computer itself; the claims
do not move beyond a general link of the use of an abstract idea
to a particular technological environment; the claims merely
amount to the application or instructions to apply the abstract
idea on a computer; and the claims amount to nothing more than
requiring a generic computer to perform generic computer
functions that are well-understood, routine and conventional
activities previously known to the industry.
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Each of the "receiving" and "transmitting" steps is consider
merely data transmission and thus insignificant extra-solution
activity. The "presenting" and "generating" steps each amount
to activities that could be performed manually by a human
operator merely applied to a generic computer system ( a
location-enabled device). Accordingly, the claims are directed
to a method of organizing human activity, and thus an abstract
idea.
Final Act. 2-3.
Applicant ... asserts that the claims amount to
significantly more because they do not amount to routine and
conventional steps. However, each of the technical activities
performed (that is, receiving data, presenting data in a display;
generating data ( trade request message), and transmitting data
( the trade request message) is performed in a routine and
conventional manner. There is no recitation of technical
activities that are performed in a manner that is unconventional.
Applicant further asserts that, similar to DDR, the present
claims recite aspects that override the routine or conventional
sequence of events. The Examiner respectfully disagrees. The
"presenting" limitation is only unconventional inasmuch as the
particular data displayed and the arrangement of data within the
display can be distinguished from that of the most relevant prior
art. The technical manner in which the data is displayed is
conventional, as it amounts to matching items being displayed in
response to a request for matching items, which is the expected
and conventional sequence of steps.
Final Act. 6.
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C. Appellants ' § 101 Arguments
1. General Assertions
Appellant asserts, in contending that the Examiner erred in rejecting
claim 1 as directed to non-statutory subject matter, "The Examiner has not
established a prima facie case that the claims are not directed to patent-
eligible subject matter." App. Br. 10 ( emphasis omitted).
Appellant also asserts, "The Examiner's allegations do not satisfy the
evidentiary requirements set forth by the Supreme Court, Federal Circuit,
PTAB, the MPEP, or even the examination guidelines." App. Br. 10,
emphasis omitted.
Appellant further asserts:
Unlike the Supreme Court, the Federal Circuit, the PTAB,
the MPEP or the guidelines, the Examiner has chosen not to base
the § 101 rejection on substantial evidence, but rather chosen to
rely on conclusory statements that can be used to reject the
claims of any application without reference to the actual
elements of the claims.
App. Br. 12.
We are unpersuaded by these general assertions unsupported by
particularized arguments. We address these assertions below to the extent
that Appellant presents particularized arguments to support the assertion.
2. Abstract Idea
Appellant also raises the following arguments in contending that the
Examiner erred in rejecting claim 1 as directed to non-statutory subject
matter.
According to the July 2015 Update, "[b ]ecause the courts
have declined to define abstract ideas, other than by example,"
examiners are instructed to "refer to the body of case law
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precedent in order to identify abstract ideas by way of
comparison to concepts already found to be abstract," and "a
claimed concept is not identified as an abstract idea unless it is
similar to at least one concept that the courts have identified as
an abstract idea." Regarding the phrase "certain methods of
organizing human activity," the July 2015 Update states that the
term "certain" is used "to qualify this category description, in
order to remind examiners that (1) not all methods of organizing
human activity are abstract ideas, and (2) this category
description is not meant to cover human operation of machines."
The Office Action on pages 2-4 asserted that the alleged
abstract idea to which the rejected claims are allegedly directed
is "a method of organizing human activity." However, the
Office Action provided no comparison of this alleged abstract
idea to any other concept, much less to any concept that the
courts have already found to be abstract. Although the Office
Action on page 2-4 stated that the alleged abstract idea "a method
of organizing human activity," this statement simply labels the
alleged abstract idea as "a method of organizing human activity"
and does not perform any actual comparison of the alleged
abstract idea to any specific concept from any specific court
decision. As a result, it cannot be reasonably said that the claims
have been compared to, let alone been found similar to, "at least
one concept that the courts have identified as an abstract idea."
For at least this additional reason, it is respectfully submitted
that the rejections under 35 U.S.C. § 101 have not been
properly established, and reconsideration and reversal of these
rejections are requested.
App. Br. 12 (Appellant's emphasis omitted; Panel emphasis added).
[T]he July 15 Update to the guidance directs examiners to "refer
to the body of case law precedent in order to identify abstract
ideas by way of comparison to concepts already found to be
abstract," and "a claimed concept is not identified as an abstract
idea unless it is similar to at least one concept that the co 1 srts
have identified as an abstract idea."
The Examiner has alleged that the claims are directed to
a method of organizing human activity and are thus directed to
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an abstract idea. The basis for this seems to be that the Examiner
believes "'presenting' and 'generating' steps each steps each
amount to activities that could be performed manually by a
human operator merely applied to a generic computer system ( a
location-enable device)."
Appellant traverses the statement since the Examiner
has misstated the guidelines and the law that all methods of
organizing human activity are prohibited. The Examiner's
§ 101 rejection seems to be implying that any method of
organizing human activity is automatically considered to be an
abstract idea. However, this is contrary to both the case law and
the guidelines. The guidelines state that only certain methods of
organizing human activity may be recite abstract ideas.
[E]ven if the claims are directed to a method of organizing
human activity ( which Appellant disputes), the Examiner has not
provided any evidence that the method is of the certain type that
falls into the category of abstract ideas.
App. Br. 14--16 (emphasis added, footnotes omitted).
We are not persuaded by Appellant's "abstract idea" arguments. The
July 15 Update acknowledged by Appellant is specific as to the "organizing
human activity" of the "facilitating item exchange" we find before us. The
Update at section III. B. (third bullet) specifically addresses cases which
have found abstract "concepts relating to advertising, marketing and sales
activities or behaviors." Appellant acknowledges that the field of their
invention is "exchange or barter of items." Spec. 2. Barter is "to trade by
exchange of commodities rather than by the use of money."3 Contrary to
Appellant's arguments, we conclude that the claimed "exchange of a first
3 [B]arter. Dictionary.com. Dictionary.com Unabridged. Random House,
Inc. http://www.dictionary.com/browse/barter ( accessed: May 20, 2018).
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item with a second item" is a "marketing and sales activity or behavior" type
of organizing human activity deemed abstract in the July 15 Update.
Further, the U.S. Internal Revenue Service (IRS) confirms the market
based (i.e., commercial) nature of bartering. The IRS describes the
exchange of goods and service, i.e., "bartering," as "the oldest form of
commerce." In particular, the IRS states the following about bartering.
IRS Tax Tip 2011-33, February 16, 2011. 4
In today's economy, small business owners sometimes look to
the oldest form of commerce - the exchange of goods and
services, or bartering. The IRS wants to remind small business
owners that the fair market value of property or services received
through barter is taxable income.
Bartering is the trading of one product or service for another.
Usually there is no exchange of cash. However, the fair market
value of the goods and services exchanged must be reported as
income by both parties.
Here are four facts about bartering that the IRS wants small
business owners to be aware of:
1) Barter Exchange [:] A barter exchange functions primarily
as the organizer of a marketplace where members buy and sell
products and services among themselves. Whether this activity
operates out of a physical office or is internet based, a barter
exchange is generally required to issue Form 1099-B, Proceeds
from Broker and Barter Exchange Transactions, annually to their
clients or members and to the IRS.
2) Barter Income[:] Barter dollars or trade dollars are
identical to real dollars for tax reporting. If you conduct any
direct barter - barter for another's products or services - you will
have to report the fair market value of the products or services
you received on your tax return.
4 https ://www.irs.gov/newsroom/four-facts-about-bartering ( accessed: May
22, 2018).
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3) Taxes[:] Income from bartering is taxable in the year it is
performed. Bartering may result in liabilities for income tax, self-
employment tax, employment tax, or excise tax. Your barter
activities may result in ordinary business income, capital gains
or capital losses, or you may have a nondeductible personal loss.
4) Reporting[:] The rules for reporting barter transactions
may vary depending on which form of bartering takes place.
Generally, you report this type of business income on Form 1040,
Schedule C Profit or Loss from Business, or other business
returns such as Form 1065 for Partnerships, Form 1120 for
Corporations, or Form 1120-S for Small Business Corporations.
3. Significantly More
Appellant also raises the following arguments in contending that the
Examiner erred in rejecting claim 1 as directed to non-statutory subject
matter.
a. Level of Generality in Claims
Here, the operations recited in the claims at issue are at a
lower-level of generality than the operations recited in the claims
at issue in Bilski and Alice. The operations include, for example,
"receiving, at a location-enabled first device, a request for one
or more matching items available to be exchanged with the first
item," "receiving, in response to processing of the request, results
including a plurality of matching items, the plurality of
matching items identified based on one or more characteristics
of the first item and at least one pre-determined criteria,"
''presenting the plurality of matching items presently available
for exchange one at a time on a display portion of the location-
enabled first device, wherein a next matching item of the
plurality of items is displayed when a presently displayed
matching item is dismissed," "in response to receiving a
selection of the second item from among the plurality of
matching items, automatically generating a trade request
message requesting an exchange of the first item for the second
item, wherein the trade request message is generated on behalf
of a first user associated with the first item," and "transmitting
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the trade request message to a second user associated with the
second item."
The low level of generality indicates that the claims of the
present application are more than simply an abstract idea as
alleged by the Examiner. Thus, rather than a high-level
articulation of an abstract idea, the claim elements recite detailed
operations that when considered as a whole, add more than the
abstract idea.
App. Br. 17 ( emphasis added).
We are not persuaded by Appellant's "level of generality" argument.
First, we agree with the Examiner's response that "the [c]ourts have not set
forth the level a generality of claim language as a stand-alone test for
eligibility. Ans. 5.
Second, this argument ( and subsequent arguments) misapplies the two
steps of the Alice/Mayo analysis by conflating the abstract idea analysis of
step 1 with the step 2 analysis to ensure the claim is significantly more than
a patent upon the ineligible concept itself. The conflation results in an
attempt by Appellant to demonstrate "significantly more" by pointing to
details of the abstract idea (bartering, exchanging, or trading); rather than
relying on whether or not the computer's components, functions, and
activities (or combination thereof) are well-understood, routine, and
conventional. A low level of granularity in the ineligible concept does not
transform the nature of the claim into a patent-eligible application.
b. Not Conventional & Rooted in Computer Technology
Appellant submits that to properly evaluate whether an
element is or is not conventional, the correct approach is to look
at the element of the claim as written and evaluate whether the
result of the element is conventional. This is the approach that
the Fed. Cir. took and the reason that the elements, as defined in
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the claim, were found patentable. Likewise, Appellant asserts
that the unique combination of operations recited in the claims
of the present application are not "conventional" and the
Examiner has provided no evidence to the contrary.
App. Br. 21 ( emphasis added).
[T]he claims at issue solve a technological problem in
conventional industry practice of, for example, "provid[ing] a
mechanism to decide between presented matching items and
complet[ing] a trade with the owner of the selected matching
item." This is a problem rooted in computer technology and
arising particularly in the computer networking realm.
The "in response to receiving a selection of the second
item from among the plurality of matching items, automatically
generating a trade request message requesting an exchange of
the first item for the second item, wherein the trade request
message is generated on behalf of a first user associated with the
first item" is something unconventional.
App. Br. 21-22 (emphasis added).
We disagree with Appellant's "result of the element" and "rooted in
computer technology" arguments. First, we again note that unconventional
abstract idea results do not serve to show a computer's components,
functions, and activities ( or combination thereof) are not well-understood,
routine, and conventional. Id.
Second, we see no reason on the record to question the Appellant's
assertion that the claimed invention improves "an exchange of a first item
with a second item," by improving the business transaction (i.e., trading
steps) of bartering. However, the fact that a claimed concept is
"[g]roundbreaking, innovative, or even brilliant" does not "itself satisfy the
§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2117 (2013). A claim directed to a unique and
advantageous marketing and sales arrangement is nonetheless directed to a
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marketing and sales arrangement and constitutes an abstract idea. 5 "[U]nder
"the 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);
Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). We conclude that the
improvement of claim 1 is an improved sequence of trading steps to
exchange a first item with a second item (organizing human activity), that is,
an improved abstract idea.
Further, in contrast to cases such as BASCOM, we conclude claim 1
contains no technical solution. BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Unlike the claims at
issue in BASCOM, claim 1 does not introduce a technical advance or
improvement. It contains nothing that amounts to significantly more than a
patent upon the [abstract idea] itself. Id. See Synopsys, Inc. v. Mentor
Graphics Corporation, 839 F.3d 1138, 1152 (Fed. Cir. 2016). To the extent
claim 1 adds anything to the abstract idea, it is a statement to use "a
location-enabled first device" and an "automatically generat[ ed] ...
message." "[I]f a patent's recitation of a computer amounts to a mere
5 See Ultramercial, Inc. v. Hulu LLC, 772 F.3d. 709 (Fed. Cir. 2014). In
this case, the patentee argued that its financial arrangement ( a method of
using advertising as an exchange or currency) was distinguishable from the
"routine," "long prevalent," or "conventional" abstract idea in Alice
because it was "directed to a specific method of advertising and content
distribution that was previously unknown." Id. at 714. The court rejected
the patentee's position that "abstract ideas remain patent-eligible under
§ 101 as long as they are new ideas not previously well known, and not
routine activity." Id.
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instruction to 'implement' an abstract idea 'on ... a computer,' that addition
cannot impart patent eligibility." Alice, 134 S. Ct. at 2358 (quoting Mayo,
132 S. Ct. at 1301). Appellant's argument that the "trade request"
information within an automatically generated message shows the solution
of a problem rooted in computer technology is simply an attempt to reach
into the ineligible concept ( trade request step of the item exchange) to show
an improvement to the well-understood, routine, and conventional activity of
automatic message generation. The timing and execution of a trade request
in an exchange of goods is a marketing and sales problem, not a
technological problem.
c. Ordered Combination
The claimed elements are to be considered as an ordered
combination. Is something extra present in the claims when the
steps are considered as an ordered combination? Again, there is
no analysis showing that the Examiner actually considered the
ordered combination recited in the claims.
For reference, claim 1 is reproduced below. The portions
of the claim that are not explicitly directed to "facilitating item
exchange" are bolded and italicized.
receiving, at a location-enabled first device, a
request for one or more matching items available to
be exchanged with the first item;
receiving, in response to processing of the
request, results including a plurality of matching
items, the plurality of matching items identified
based on one or more characteristics of the first
item and at least one pre-determined criteria;
presenting the plurality of matching items
presently available for exchange one at a time on
a display portion of the location-enabled first
device, wherein a next matching item of the
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plurality of items is displayed when a presently
displayed matching item is dismissed;
in response to receiving a selection of the
second item from among the plurality of matching
items, automatically generating a trade request
message requesting an exchange of the first item for
the second item, wherein the trade request message
is generated on behalf of a first user associated
with the first item; and
transmitting the trade request message to a
second user associated with the second item.
As can be seen above, the details provided in the claim
show that no attempt is being made to claim an invention directed
to only "facilitating item exchange" but instead is directed to a
specific new and useful invention.
App. Br. 22 (footnotes omitted).
We disagree with Appellant's "ordered combination" argument.
Again, we note that unconventional abstract idea results do not serve to
show a computer's components, functions, and activities (or combination
thereof) are not well-understood, routine, and conventional. As we discuss
above, Appellant is reaching into the ineligible concept (trade request step of
the item exchange) in an attempt to show a technological improvement to
the well-understood, routine, and conventional activity of automatic message
generation. We find no such technological improvement here.
Appellant's arguments overlook that while a sales process can be
automated on a computer display with automated messaging, this
automation does not convert sales process steps into improved technological
steps. Rather, they remain an ineligible concept to and the step 2 question is
whether there is a technological solution to a technological problem within
the technology applied to this ineligible concept. For example the following
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basic sales sequence does not become technological merely by being
automated with well-understood, routine, and conventional computer
components, functions, and activities: (1) a customer walks into a shop; (2)
the customer states the criteria of their desired goods; (3) a salesperson
determines the shop's goods that match that criteria; (4) one-at-a-time the
salesperson presents the goods to the customer; (5) one-at-a-time the
customer rejects the goods until reaching an acceptable one of the goods;
( 6) the customer states they desire to purchase the acceptable one of the
goods (issues a trade request); and (7) the customer then pays ( cash or
barter) for the acceptable one of the goods.
Claim 1 does not "focus on a specific means or method that improves
the relevant technology," but is "directed to a result or effect that itself is the
abstract idea and merely invoke[s] generic processes and machinery."
McRO, 837 F.3d at 1314. This is not enough to transform an abstract idea
into patent-eligible subject matter. See, e.g., Alice, 134 S. Ct. at 2360
( explaining that claims that "amount to 'nothing significantly more' than an
instruction to apply the abstract idea ... using some unspecified, generic
computer" "is not 'enough' to transform an abstract idea into a patent-
eligible invention" (quoting Mayo, 566 U.S. at 77, 79)); Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342
(Fed. Cir. 2016) ("[T]he claim language here provides only a result-oriented
solution, with insufficient detail for how a computer accomplishes it").
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Application 13/430,102
D. Additional 101 Arguments
1. Preemption
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 as directed to non-statutory subject
matter.
Given the particularities of the operations included in the
systems, methods, and media and the ways in which each of these
operations is performed, independent claims 1, 12, 20, and 26
cannot and does not preempt the making, using, and selling of
basic tools of scientific and technological work. Instead,
granting a patent in this case would merely preempt a particular
way of facilitating an exchange of a first item with a second item
via a location-enabled mobile device.
App. Br. 18 ( emphasis added).
Appellant's pre-emption arguments overlook that the Court's
Alice/Mayo two-step ( abstract idea/significantly more) analysis is the
Court's framework for determining pre-emption.
[W]e set forth a frame-work 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.
Moreover, "the absence of complete preernption does not demonstrate
patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) ("Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, []
preemption concerns are fully addressed and made moot."). Contrary to
Appellant's arguments, the Examiner correctly applied the Alice/Mayo
framework. Final Act. 2-7.
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2. Novel and Non-obvious
Appellant also raises the following argument in contending that the
Examiner erred in rejecting claim 1 as directed to non-statutory subject
matter.
Appellant submits that a finding of novel and non-obvious
subject matter is relevant to a pragmatic analysis of § 101 m
search for an "inventive concept."
App. Br. 24 ( emphasis added).
[I]f the known art does not render the ordered combination of
elements obvious, then those differences that serve to make the
claims nonobvious should also serve to make the claims
"something more" than the mere recitation of an alleged abstract
idea combined with known technology.
App. Br. 24 ( emphasis omitted).
Appellant's "novel and non-obvious" (i.e., prior art) argument does
not persuade us of Examiner error. Although the second step in the
Alice/Mayo analysis includes a search for an inventive concept, the analysis
is not an evaluation of novelty or nonobviousness, but rather, a search 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 ( quoting Mayo, 566 at
71 ). A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 at 89-91. Further, "under the
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., 818 F.3d at 1376.
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Application 13/430,102
CONCLUSION
The Examiner has not erred in rejecting claims 1-29 under 35 U.S.C.
§ 101 for being directed to patent-ineligible subject matter.
DECISION
The Examiner's rejection of claims 1-29 is affirmed.
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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