Ex Parte Loui et al

Patent Trial and Appeal Board

Mar 28, 2018

14100191 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/100,191 12/09/2013
145704 7590 03/30/2018
M&GeBay
P.O. Box 2903
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Jeffrey Loui
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.
17666.0343USC1/IP-P613US2 1078
EXAMINER
MILLER, BRITTNEY N
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
USPT0145704@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY LOUI, DAVID VOGT
JARED KAPLAN, and TONY LAM
Appeal2016-008713
Application 14/100, 191
Technology Center 3600
Before ST. JOHN COURTENAY III, THU A. DANG, and JOYCE CRAIG,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 2-13, which constitute all claims pending in the
application. Claim 1 has been previously canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify eBay Inc. as the real party in interest. App. Br. 2.
Appeal2016-008713
Application 14/100, 191
STATEMENT OF THE CASE
According to Appellants, the claimed invention relates to "a system to
display information related to items associated with a network-based
marketplace." Spec. i-f 2. Claim 2, illustrative of the invention and the
subject matter of the appeal, reads as follows:
2. A computer-implemented method, comprising:
identifying, using one or more processors, at least one
item offered for sale by a seller in a network-based
marketplace, the item associated with a listing and a first set of
information describing the listing;
based at least on the first set of information, generating,
using one or more processors, a second set of information to
supplement the first set of information, wherein the second set
of information comprises information at least related to the item
and further comprises information related to the seller of the
item;
generating, using one or more processors, one or more
multimedia programs, the one or more multimedia programs
comprising at least some of the second set of information, and
including snippets relating to the item and the seller of the item;
pushing, using one or more processors, the second set of
information to at least one user in the network-based
marketplace;
enabling the user to make a purchase request for the item
for sale using the second set of information, and
receiving the purchase request for the item for sale from
the user.
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Application 14/100, 191
The Rejections on Appeal
1. Claims 2-13 stand rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-5 and 7-15 of U.S. Patent No.
8,700,491. Ans. 3.
2. Claims 2-13 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Id.
3. Claim 13 stands rejected under pre-AIA 35 U.S.C. § 112, second
paragraph. Id. at 5.
ISSUES
The principal issue before us is whether the Examiner erred in
concluding that the claimed "computer-implemented method" that comprises
the steps of "identifying," "generating," "pushing," "enabling the user to
make a ... request for," and "receiving" various information/data (claim 2)
is directed to patent ineligible subject matter.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made, but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2015). On the record before us, we are not
persuaded the Examiner has erred. We adopt as our own the findings and
reasons set forth in the rejections from which the appeal is taken and in the
Examiner's Answer, and highlight and provide the following for emphasis.
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Appeal2016-008713
Application 14/100, 191
Rejection Under Nonstatutory Double Patenting
Appellants merely state that "[t]he remaining rejection under Non-
Statutory Double Patenting will be address by the filing of appropriate
Terminal Disclaimers if this Appeal is upheld." App. Br. 8. Because
Appellants do not substantively challenge this rejection, we summarily
sustain it.
Rejection Under 35 USC§ 112 (Second Paragraph)
Appellants merely contend that claim 13 "will be formally corrected
by the filing of an amendment post Appeal." App. Br. 8. Because
Appellants do not substantively challenge the rejection of claim 13 under
35 U.S.C. § 112, we summarily sustain it.
Re} ection Under 3 5 US. C. § 101
Appellants argue the Examiner erred in concluding the claims
constitute patent ineligible subject matter. App. Br. 8-19. In particular,
although Appellants do not contest the Examiner's legal conclusion that the
claims are directed to an abstract idea under step one of Alice, Appellants
contend that, under step two, "the relevance and functionality of the claimed
subject matter is respectfully 'significantly more' than the prior art and also
provides an 'inventive concept' under the Alice case." Id. at 11; see Alice
Corp. Pty Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). In
particular, Appellants contend, "[t]he technical problem is ubiquity of
indistinct (first) content on the internet" wherein "[t]he business and
technical solution is to provide distinguishing supplemental (second)
information." App. Br. 11. According to Appellants, "a distinct and specific
stream of second information, separate from the first information, is sent to a
user." Id. at 12 (emphasis omitted). Appellants refer to a prior PTAB
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Application 14/100, 191
Decision, CBM2015-00167, 2 and contend that, for similar reasons here, the
Examiner "has over-simplified the claims," and "has not reviewed them as
an ordered combination" to determine whether additional elements in the
claims "transform the nature of the claims into a patent-eligible application."
Id. at 15-16 (emphasis omitted).
Appellants draw the Board's attention to dependent claim 11
depending from claim 2, which recites "pushing the second set of
information to the at least one user based on a detection that the at least one
user is signed in to the network-based marketplace." Id. at 16 (citing claim
11, emphasis omitted). According to Appellants, "the claim is eligible
because it recites additional limitations that when considered as an ordered
combination demonstrates a technologically rooted solution to an Intemet-
centric problem" and thus "amounts to significantly more than merely
facilitating a purchase." Id. at 17. Appellants also direct the Board's
attention to DDR Holdings, because, in Appellants' invention, "when a user
comes online in the present case (per claim 11 ), he or she is connected to a
data source that, like a stock alert, provides 'live' first and second
information relating to item listings that are specifically tailored, again like a
'stock alert', to 'seller' information as well as to the stock value itself." Id.
at 18 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259
(Fed. Cir. 2014)). That is, "the instant claims, like the claims of DDR
Holdings, present a technical solution necessarily rooted in computer
technology." Id. at 19.
2 NRT Tech. Corp. v. Everi Payments, Inc., CBM2015-00167 (PTAB
Jan. 22, 2016) (Paper 14).
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Based on the record before us, we are not persuaded by Appellants'
contention that the Examiner erred in concluding that the claims are directed
to patent ineligible subject matter.
As Appellants acknowledge, under 35 U.S.C. § 101, the Supreme
Court, in Alice, reiterated the two-step framework previously set forth in
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step is
to "determine whether the claims at issue are directed to one of those patent-
ineligible concepts," such as an abstract idea, as the Examiner concludes in
this case. Id. 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 there are additional elements that "'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 79, 78).
In the present application, we agree with the Examiner that "[ t ]he
claims are directed to the abstract idea of facilitating a purchase." Final
Rejection 4. According to the Examiner, "[t]he concept of 'facilitating a
purchase' is considered to be an abstract idea inasmuch as such activity is
considered both a fundamental economic practice and a method of
organizing human activity by providing an opportunity for parties to enter
into a contractual relationship." Id. We note that Appellants do not dispute
the claims are directed to an abstract idea, under step one of Alice. App. Br.
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Application 14/100, 191
11. On this record, we find no error with the Examiner's legal conclusion
the claims are directed to an abstract idea under step one of Alice.
As to Alice step two, although Appellants contend "the relevance and
functionality of the claimed subject matter is respectfully 'significantly
more' than the prior art and also provides an 'inventive concept' under the
Alice case" (App. Br. 11 ), because the claims, and in particular claim 2, is
directed to of "identifying," "generating," "pushing," "enabling the user to
make a ... request for," and "receiving" various information/data, "the
relevant question is whether the claims here do more than simply instruct the
practitioner to implement the abstract idea ... on a generic computer."
Alice, 134 S. Ct. at 2359. In this case, the Examiner concludes, and we
agree, "[ v ]iewed as a whole, Applicant's method claims simply convey the
abstract idea itself applied on some generic computer." Ans.7.
That is, we agree that these limitations are all generic computer
functions (i.e., "identifying," "generating," "pushing," "enabling" the
request of, and "receiving" of data) that are well-understood, routine, and
conventional activities previous known to the industry. Alice, 134 S. Ct. at
2359. Although Appellants contend that the claims require "pushing the
second set of information to the at least one user based on a detection that
the at least one user is signed in to the network-based marketplace" (App.
Br. 16 (citing claim 11, emphasis omitted)), such pushing of particular data
in a particular manner does not add meaningful limitations to the idea of
facilitating a purchase beyond generally linking the method to a particular
technological environment. Here, the claimed pushing of information uses
"processors" as tools in their ordinary capacity to receive, generate and
transfer information.
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Furthermore, DDR Holdings does not help Appellants. In DDR
Holdings, the Federal Circuit determined that certain claims satisfied
Mayo/Alice step two because "the claimed solution amount[ed] to an
inventive concept for resolving [a] particular Internet-centric problem," i.e.,
a challenge unique to the Internet. DDR Holdings, 773 F.3d at 1257-59; see
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (noting that "[i]n DDR Holdings, we held that claims 'directed to
systems and methods of generating a composite web page that combines
certain visual elements of a 'host' website with content of a third-party
merchant' contained the requisite inventive concept"). The Federal Circuit
explained that the patent-eligible claims specified "how interactions with the
Internet are manipulated to yield a desired result ... that overrides the
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink." DDR Holdings, 773 F.3d at 1258. The court reasoned that
those claims recited a technological solution "necessarily rooted in computer
technology" that addressed a "problem specifically arising in the realm of
computer networks." Id. at 1257.
The claims here do not address a similar problem and do not contain a
similar inventive concept as the patent-eligible claims in DDR Holdings.
Instead, as the Examiner points out, "[t]he claims are directed to the abstract
idea of facilitating a purchase" (Final Rejection 4), wherein"[ v ]iewed as a
whole, Applicant's method claims simply convey the abstract idea itself
applied on some generic computer." Ans. 7.
For at least the aforementioned reasons, on this record, we sustain the
patent-ineligible subject matter rejection under 35 U.S.C. § 101 of claim 2
and claims 3-13 falling therewith.
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Application 14/100, 191
DECISION
We affirm the Examiner's rejections of claims 2-13 under 35 U.S.C.
§ 101 and under the judicially created doctrine of nonstatutory double
patenting, and the rejection of claim 13 under 35 U.S.C. § 112.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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