Ex Parte Lutnick

Patent Trial and Appeal Board

Sep 25, 2018

11616735 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/616,735 12/27/2006
63710 7590 09/27/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Howard W. Lutnick
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.
06-2047 3008
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/27/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD W. LUTNICK
Appeal2017-006732
Application 11/616,735 1
Technology Center 3600
Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR., and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 64--89, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to "filtering reports" of delivery service
providers capable of delivering a purchased item, such as by focusing on
reports originated by friends and relatives. Spec. ,r 483.
1 Appellant states that the real party in interest is CFPH, LLC. App. Br. 3.
Appeal2017-006732
Application 11/616,735
Illustrative Claim
Claim 64 is illustrative and reproduced below with certain limitations
at issue emphasized:
64. A method comprising:
receiving, via a processor, a request from a customer on a
remote device to purchase an item, in which the item is to be
delivered to a location, in which the processor and the remote
device are in electronic communication over a network;
computing, via the processor, that a plurality of delivery
service providers are capable of delivering the item to the
location;
displaying on a display, via the processor, a plurality of
reports, in which each of the plurality of reports comprises an
evaluation that is submitted by a previous customer regarding an
experience with one of the plurality of delivery service providers,
receiving, via the processor, a request to filter the plurality
of reports in accordance to a characteristic desired by the
customer;
in response to the request to filter, removing, via the
processor, at least one report from the display that does not have
the characteristic desired by the customer;
receiving, via the processor, a request from the customer
to select a specific delivery service provider to deliver the item,
in which the customer selects the specific delivery service
provider from the plurality of reports that is displayed on the
display, and in which the customer selects the specific delivery
service provider based on the evaluation for the specific delivery
service provider;
monitoring, via a processor, a length of time from when
the item leaves a merchant's site to when a product is delivered
to the location;
receiving, via the processor, a specific evaluation from the
customer regarding the specific delivery service provider;
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Application 11/616,735
generating, via the processor, a new report for the specific
delivery service provider that includes the monitored length of
time and the specific evaluation.
Rejections
Claims 64--89 stand rejected under 35 U.S.C. § 101 as being directed
to ineligible subject matter without significantly more. Final Act. 2.
Claims 64--67, 73, 82, 84--86, 88, and 89 stand rejected under
35 U.S.C. § I03(a) as obvious over the combination of Ourega (US
2008/0162304 Al; July 3, 2008) and Harding et al. (US 2005/0144052 Al;
June 30, 2005). Final Act. 4.
Claims 68, 83, and 87 stand rejected under 35 U.S.C. § I03(a) as
obvious over the combination of Ourega, Harding, and Porat et al. (US
7,330,826 Bl; Feb. 12, 2008). Final Act. 6.
Claims 69 and 70 stand rejected under 35 U.S.C. § I03(a) as obvious
over the combination of Ourega, Harding, Porat, and Hall et al. (US
2008/0281719 Al; Nov. 13, 2008). Final Act. 6.
Claim 72 stands rejected under 35 U.S.C. § I03(a) as obvious over the
combination of Ourega, Harding, Porat, and Ahn et al. (US 2006/0271281
Al; Nov. 30, 2006). Final Act. 7.
Claims 74 and 77-80 stand rejected under 35 U.S.C. § I03(a) as
obvious over the combination of Ourega, Harding, and Ahn. Final Act. 7.
Claims 75 and 76 stand rejected under 35 U.S.C. § I03(a) as obvious
over the combination of Ourega, Harding, Ahn, and Hull et al. (US
2005/0171955 Al; Aug. 4, 2005). Final Act. 8. 2
2 The rejection under 35 U.S.C. § 112, second paragraph was withdrawn
after an amendment by Appellant. See Advisory Act. (Mar. 1, 2016).
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Application 11/616,735
ISSUES
1. Did the Examiner err in concluding that claim 64 was directed
to ineligible subject matter without significantly more under § 101?
2. Did the Examiner err in finding the combination of Ourega and
Harding teaches or suggests "a plurality of reports, in which each of the
plurality of reports comprises an evaluation that is submitted by a previous
customer regarding an experience with one of the plurality of delivery
service providers"; "receiving, via the processor, a specific evaluation from
the customer regarding the specific delivery service provider"; and
"generating, via the processor, a new report for the specific delivery service
provider that includes the monitored length of time and the specific
evaluation," as recited in independent claim 64?
3. Did the Examiner err in finding Ourega teaches or suggests
"receiving, via the processor, a request to filter the plurality of reports in
accordance to a characteristic desired by the customer" and "in response to
the request to filter, removing, via the processor, at least one report from the
display that does not have the characteristic desired by the customer," as
recited in independent claim 64?
ANALYSIS
§ 101
Section 101 defines patentable subject matter, but the Supreme Court
has "long held that this provision contains an important implicit exception"
that "[l]aws of nature, natural phenomena, and abstract ideas are not
patentable." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 70 (2012) (quotation omitted). "Eligibility under 35 U.S.C. § 101 is a
question of law, based on underlying facts." SAP Am., Inc. v. InvestPic,
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LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). To determine patentable subject
matter, the Supreme Court has set forth a two-part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014).
"The inquiry often is whether the claims are directed to 'a specific means or
method' for improving technology or whether they are simply directed to an
abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas" (Mayo, 566 U.S. at 71), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, "the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In the second step, we "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has "described step two of this analysis as a 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. (quotation omitted).
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For the first step of the Alice/Mayo framework, Appellant argues that
because the Examiner determined the claims were directed to three abstract
ideas rather than "one and only one abstract idea," the rejection is improper.
App. Br. 8. We agree with the Examiner, however, that "a claim can
comprise more than one abstract idea" and still be invalid under § 101. Ans.
3. For example, the Federal Circuit has held that "[a]dding one abstract idea
(math) to another abstract idea ( encoding and decoding) does not render the
claim non-abstract." RecogniCorp, 855 F.3d at 1327.
Appellant also contends that "the Office Action fails to provide
sufficient rationale or evidence to support a finding of abstractness for any
of the three alleged ideas." App. Br. 8. We are not persuaded by this
argument. The Examiner determines that "[ c ]laim( s) 64-89 is/ are directed to
presenting recommendations to a user which is a method of organizing
human activity and an abstract idea"; "[ t ]he step of computing that a
plurality of providers are capable [ of] delivering the item to the location
compares new and stored information and uses rules to determine options
and is an abstract idea"; and "[t]he step of filtering reports in accordance
with a characteristic is the abstract idea of using categories to organize, store
and transmit information." Final Act. 3. These determinations are
supported by case law.
In addition to the decisions cited by the Examiner (Ans. 3), the
Federal Circuit has "applied the 'abstract idea' exception to encompass
inventions pertaining to methods of organizing human activity." In re TL!
Commc'ns LLC Patent Litig., 823 F.3d 607,613 (Fed. Cir. 2016).
Moreover, "the 'realm of abstract ideas' includes 'collecting information,
including when limited to particular content"'; "'analyzing information by
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Application 11/616,735
steps people go through in their minds, or by mathematical algorithms,
without more, [ which are] essentially mental processes"'; "'merely
presenting the results of abstract processes of collecting and analyzing
information, without more ( such as identifying a particular tool for
presentation) ... as an ancillary part of such collection and analysis"'; and
"a combination of these abstract-idea categories." Fair Warning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
"We have previously held other patent claims ineligible for reciting similar
abstract concepts that merely collect, classify, or otherwise filter data."
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1327 (Fed.
Cir. 2017); see also SmartGene, Inc. v. Advanced Biological Labs., SA, 555
F. App'x 950, 955 (Fed. Cir. 2014) (unpublished) ("Whatever the
boundaries of the 'abstract ideas' category, the claim at issue here involves a
mental process excluded from section 101: the mental steps of comparing
new and stored information and using rules to identify medical options.").
Thus, all of the ideas challenged by Appellant (i.e., organizing human
activity; comparing new and stored information and using rules to identify
options; and organizing, storing, and transmitting information) have been
identified as abstract ideas by the Federal Circuit.
Appellant also contends that the claims "clearly add functionality to a
computer that was previously not available and therefore are not directed to
an abstract idea" and "the claims clearly recite improvements to technology
and electronic delivery services that are rooted in networking and
computers." App. Br. 9. We agree with the Examiner, however, that
Appellant "has not identified" what those specific improvements are or how
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they are rooted in networking and computers. Ans. 3. The Supreme Court
has made clear that "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention."
Alice, 134 S. Ct. at 2358. We agree with the Examiner, at step one of the
Alice analysis, that the claims are directed to one or more abstract ideas.
Accordingly, we tum to the second step of the Alice analysis, in which we
determine whether the additional elements of the claims transform them into
patent-eligible subject matter.
Appellant further argues that "the Office Action has not made any
showing that each and every one of the claim limitations taken separately
and together is not something more than any or all of these ideas." App. Br.
9. However, "[i]t has been clear since Alice that a claimed invention's use
of the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention 'significantly more' than that ineligible
concept." BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018). The Examiner also is correct that the Specification describes the
claimed processor and machine-readable medium as generic and
conventional components. See Spec. ,r,r 464---65, 475; Ans. 3; see also Final
Act. 3--4. Here, Appellant has not specifically identified any limitation it
believes is both beyond the abstract idea and not well-understood, routine,
and conventional. We are not persuaded that the claims recite significantly
more to transform the abstract idea into a patent-eligible application.
Accordingly, we sustain the Examiner's rejection of independent
claim 64 under§ 101, and claims 65-89, which Appellant does not
substantively argue separately. See App. Br. 7-10; 37 C.F.R.
§ 4I.37(c)(l)(iv).
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Application 11/616,735
§ 103
Independent claim 64 recites "a plurality of reports, in which each of
the plurality of reports comprises an evaluation that is submitted by a
previous customer regarding an experience with one of the plurality of
delivery service providers"; "receiving, via the processor, a specific
evaluation from the customer regarding the specific delivery service
provider"; and "generating, via the processor, a new report for the specific
delivery service provider that includes the monitored length of time and the
specific evaluation."
Appellant argues that in paragraphs 163 and 164 of Ourega, "[ t ]he
example interface discussed merely presents available options with no
evaluation information at all" and therefore do not teach or suggest any
"reports" or "evaluations" as claimed. App. Br. 11-12. Appellant also
argues that "Harding deals with seller selection and evaluation" and
therefore "does not teach or suggest anything regarding evaluation of
delivery service providers." Id. at 13 (emphasis added).
The Examiner, however, is relying on a combination of both Ourega
and Harding, not the references individually. Final Act. 4--5; Ans. 4 (citing
Ourega ,r,r 161, 163, 164, Fig. lOB; Harding ,r,r 23, 25, 26). "Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, we agree with the Examiner that it would have been obvious to
combine Harding's customer feedback on sellers with Ourega's listings and
ratings of delivery service providers. See Ans. 4. Although Appellant
purports to quote paragraphs 23, 25, and 26 of Harding in arguing that those
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paragraphs are unrelated to reports (Reply Br. 5---6, 8-9), Appellant's quoted
text is from Ourega, not Harding. Compare Ourega ,r,r 23, 25, 26, with
Harding ,r,r 23, 25, 26. Appellant's argument therefore is not persuasive of
Examiner error.
Appellant also argues the Examiner's Answer "introduces a new
ground of rejection" that "should not be considered." Reply Br. 5; see also
id. at 8. However, by regulation:
Any request to seek review of the primary examiner's failure to
designate a rejection as a new ground of rejection in an
examiner's answer must be by way of a petition to the Director
. . . filed within two months from the entry of the examiner's
answer and before the filing of any reply brief. Failure of
appellant to timely file such a petition will constitute a waiver of
any arguments that a rejection must be designated as a new
ground of rejection.
37 C.F.R. § 4I.40(a). Thus, in an appeal, we do not address arguments that
the Examiner's Answer contains a new ground.
Independent claim 64 further recites "receiving, via the processor, a
request to filter the plurality of reports in accordance to a characteristic
desired by the customer" and "in response to the request to filter, removing,
via the processor, at least one report from the display that does not have the
characteristic desired by the customer."
Appellant argues that in the Office Action, "[t]he examiner does not
even mention any request to filter or removing any reports." App. Br. 13.
However, in the Answer, the Examiner explains that "Ourega
discloses that the buyer chooses selection criteria (i.e., filters) that include
rating levels (i.e., reports of the carrier)." Ans. 4 (citing Ourega ,r 161).
Appellant argues that this "introduces a new ground of rejection" that
"should not be considered." Reply Br. 7. As discussed above, such
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arguments must be raised by way of petition, not a reply brief. We also note
that the Examiner relied on the same finding in the Office Action that
"Ourega further discloses that the buyer chooses selection criteria that
include rating levels (i.e., reports of the carrier)." Final Act. 4 (citing
Ourega ,r 161 ).
Appellant also argues that "[ t ]hese portions [ of Ourega] do not discuss
any filtering of any reports" and instead "discuss a shipping manager
filtering out shipping options." Reply Br. 7. However, Ourega discloses "to
filter out the shipping options available from potential carriers" using, for
example, "a rating level of the carrier." Ourega ,r 161. Appellant has not
sufficiently explained how Ourega's rating level of a carrier is different from
a report as claimed. We therefore are not persuaded by Appellant's
argument.
Accordingly, we sustain the Examiner's rejection of independent
claim 64 under§ 103, and claims 65-89, which Appellant does not
substantively argue separately. See App. Br. 10-13; 37 C.F.R.
§ 4I.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 64--89 under both 35 U.S.C. § 101 and 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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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