Ex Parte Mengerink et al

Patent Trial and Appeal Board

Jul 24, 2017

10968197 (P.T.A.B. Jul. 24, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/968,197 10/18/2004 Matthew Mengerink 2043.206US1 9791
49845 7590 07/26/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
EVANS, KIMBERLY L
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
07/26/2017 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 MATTHEW MENGERINK,
MICHEL WEKSLER,
and BHARATHI RAMAVARJULA
Appeal 2015-004074
Application 10/968,197
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
MICHAEL C. ASTORINO, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Matthew Mengerink, Michel Weksler, and Bharathi Ramavarjula
(“Appellants”) seek review under 35 U.S.C. § 134 from a final rejection of
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 30, 2014) and Reply Brief (“Reply Br.,” filed February
23, 2015), and the Examiner’s Answer (“Ans.,” mailed December 23, 2014),
and Final Action (“Final Act.,” mailed March 26, 2014).
Appeal 2015-004074
Application 10/968,197
claims 1—50 and 57—62, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We affirm.
The Appellants invented a way of using a user network within a
network—based commerce platform. Specification, para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A system to facilitate a transaction in a network-based
commerce system, the system comprising:
[1] a hardware processor of a machine;
[2] a group association rule module
to provide a selectable set of group association rules to a
first user
that is generating a listing for a product to be offered to a
target group of users;
[3] a networking module to generate, using the hardware
processor, the target group
including at least one other user of the network—based
commerce system based on at least one group association
rule selected by the first user,
the first user and target users of the generated target
group having an existing relationship;
[4] a listing module to distribute the listing for the product
offered by the first user to the generated target group,
the listing including information on the product offered
by the first user to the generated target group;
and
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[5] a transaction module to facilitate the transaction between at
least one target user of the generated target group and the first
user for the product offered by the first user in the listing.
The Examiner relies upon the following prior art:
Burton US 2002/0055878 A1 May 9, 2002
Bamborough US 2006/0235764 A1 Oct. 19, 2006
www.eBay.com,http://web.archive.org/web/20040407121828/
www.ebay.com/Homepage/company overview (“eBay”).
Claims 1—50 and 57—62 stand rejected under 35U.S.C. § 101 as
directed to non-statutory subject matter.2
Claims 1—4, 6, 8—26, 28, 32—50, and 57—62 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Burton and Bamborough.
Claims 5, 7, 27, and 29—31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Burton, Bamborough, and eBay.3
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite something more than abstract conceptual advice as to
facilitating a transaction.
2 The Examiner raises two rationales. The first is that the claims are
software per se. Final Act. 4. The second is that the claims are drawn to
abstract subject matter. Ans. 18.
3 The Examiner withdrew a rejection under 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement.
Ans. 19.
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The issues of obviousness turn primarily on the breadth of the listing
and selection recited in the claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Burton
01. Burton is directed to providing suppliers' catalog information to
purchasers and providing orders to suppliers. Burton, para. 2.
02. Burton describes providing users with information, which may
include catalog information, ordering information, or any other
type of information, by downloading data objects, which may be
compressed, into user’s access devices, e.g., web browsers. Data
and processing functions may be downloaded to provide users
with specialized capabilities, including decompressing
compressed data. Processing functions may include functions for
locally searching, sorting, grouping, browsing, and performing
other data manipulation or calculation tasks. Processing functions
for presenting data or search results to users via an access device
display may be provided. A variety of presentation functions may
be provided to present different forms of data to users and receive
a variety of forms of user indications from users. Burton, para.
17.
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03. Burton describes accounting codes received and stored as part
order information that may define the order. When the codes are
received, the user may be presented with information about group
policies or rules governing the use of accounting codes or ordering
in general. Received codes may be checked for validity and
proper usage under group rules. If invalid codes are received, or if
rules are violated, users and administrative users of groups may be
warned or notified. Burton, para. 23.
04. Burton describes the system choosing a list to provide to the
user. The list includes suppliers that correspond to preselected
preferences associated with the ordering site through which the
user entered the system (145). Alternatively, the system may
provide the user with a list that corresponds to the user's location.
The system may provide a list known from prior transactions to
correspond to the user’s location, or it may use a geozoning
engine (146) to map the user’s location into geographic
coordinates and retrieve or generate a list of suppliers
corresponding to those coordinates. The user selects a supplier
and the system provides a catalog from the selected supplier to the
user. The user indicates a desire to place a group order. The user
is referred to as a host user and the system generates, distributes,
and manages invitations to other users (hereinafter, “invitees”) to
gather order information from the members of a group. Burton,
paras. 121—122.
Bamborough
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05. Bamborough is directed to electronic commerce transactions
with a marketing company. Bamborough, para. 3.
06. Bamborough describes a “Virtual Office” feature that provides
information vital to the operation of their business embodied in an
office page web file associated with the web site. The information
provided includes information on different product offerings and
compensation systems, training, financial information, marketing
support, customer profiles, and other information. The
information can also include information relating to sales of
marketing system products and services to a personal group and
sales of marketing system products and services by the personal
group. The personal group preferably comprises at least one
individual selected from the group consisting of a registered
Client, Member, Member Plus, and an IBO. Bamborough, para.
234.
ANALYSIS
Claims 1—50 and 57—62 rejected under 35 U.S.C. §101 as directed to non-
statutory subject matter
We are persuaded by Appellants’ argument that as to the software per
se rationale, the claims are drawn to physical structure. App. Br. 7.
As to the abstract subject matter rationale, the Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[w]hat
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else is there in the claims before us?” [] To answer that
question, [] 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. . . . [The Court]
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.”
Alice Corp. Pty. Ltd. v CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner finds they
are directed to using a network and facilitating a transaction. Ans. 19.
While the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
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The preamble to the sole independent method claim 25 recites that it
is a method to facilitate a transaction in a network-based commerce system.
The steps in claim 25 result in facilitating a transaction. The Specification at
paragraph 1 recites that the invention relates to utilizing a user network
within a network-based commerce platform. Thus, all this evidence shows
that claim 25 is directed to facilitating a transaction in the context of some
network, i.e. transacting per se.
It follows from prior Supreme Court cases, and Bilski v. Kappos, 561
U.S. 593 (2010) in particular, that the claims at issue here are directed to an
abstract idea. Like the risk hedging in Bilski, the concept of transacting per
se is a fundamental business practice long prevalent in our system of
commerce. The use of transacting per se is also a building block of any
market economy. Thus, transacting per se, like hedging, is an “abstract
idea” beyond the scope of § 101. See Alice Corp. Pty. Ltd., 134 S. Ct. at
2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of transacting
per se at issue here. Both are squarely within the realm of “abstract ideas”
as the Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at
2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing
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it, and displaying certain results of the collection and analysis” are “a
familiar class of claims ‘directed to’ a patent ineligible concept”); see also In
re TLI Commc ’ns LLCPatent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 25, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data collection, analysis, and
facilitating processing and does not recite an improvement to a particular
computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract
because they “focused on a specific asserted improvement in computer
animation”). As such, claim 25 is directed to the abstract idea of receiving,
analyzing, and facilitating the processing of data.
The remaining claims merely describe attributes of the data employed.
We conclude that the claims at issue are directed to a patent-ineligible
concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
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ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to produce rules, generate and communicate a list based on the
rules, and facilitating a transaction amounts to electronic data query and
retrieval—one of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
previously known to the industry. In short, each step does no more than
require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of transacting per se as performed by a generic
computer. To be sure, the claims recite doing so by advising one to generate
a list of names based on some set of criteria (rules) and send an ad to those
people while also somehow facilitating further processing for a transaction.
But this is no more than abstract conceptual advice on the parameters for
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such promotion and the generic computer processes necessary to process
those parameters, and do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 21 pages of Specification spell
out different generic equipment and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of distributing an ad as precursor for a
transaction under different criteria. They do not describe any particular
improvement in the manner a computer functions. Referring to generic
equipment with context specific adjectives, such as “marketplace
applications,” in the Specification adds no meaningful information. Instead,
the claims at issue amount to nothing significantly more than an instruction
to apply the abstract idea of transacting per se using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice Corp. Pty. Ltd., 134
S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] . . . against” interpreting
§ 101“in ways that make patent eligibility ‘depend simply on
the draftsman’s art.’”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
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We are not persuaded by Appellants’ argument that the Examiner
provided no evidence to support the findings. Reply Br. 2. What the claims
are directed to is a question of law, but further, as we find supra, the claims
and Specification provide sufficient evidence to support the Examiner’s
findings.
We are not persuaded by Appellants’ argument that claims are not
non-statutory just because they involve an abstract idea, but must be directed
to an abstract idea. Reply Br. 3. Again, the claims and Specification show
the claims are directed to transactions per se. The claims do not even
perform transaction, but only facilitate them, which can be the most
tangential ephemeral form of facilitation and still be within the claim scope.
We are not persuaded by Appellants’ argument that the claims must
be considered as a whole. Reply Br. 4. We show such consideration supra.
We are not persuaded by Appellants’ argument that the claim
limitations to beyond the abstract idea of facilitating a transaction. Reply
Br. 6. We make findings that all such limitations are conventional computer
search and retrieval activities that do not provide a technological
improvement.
Claims / 4, 6, 8—26, 28, 32—50, and 57—62 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Burton and Bamborough
Claim 1 is a system that generates a list based on some selected rule of
target parties, and distributes a product listing to those parties and somehow
facilitates any resulting transaction. Upon reading claim 1, it is natural to
jump to the conclusion the user is a merchant, but the claim is not that
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narrow, and the Examiner applies Burton, in which the user is a customer
who solicits other customers to form a group of purchasers. This is within
the scope of the claim.
We are not persuaded by Appellants’ argument that the art fails to
describe the limitations. Burton describes providing a selectable group
based on user preferences, user location, or prior transactions corresponding
to the user location. The claim does not recite or narrow the manner of
implementation of the recited selecting, so choice among these alternatives
is within the claim scope. These selection criteria form a relationship
between the user and the other selected group parties. Burton generates and
communicates a proposal for a group purchase based on this selection. FF
01—04. Bamborough is more explicit in terms of providing information
about a product to a group such as the invitees in Burton and that it was
known to provide such information. FF 05—06. The very fact that Burton’s
invitees are invited to purchase something is sufficient motivation to look for
art describing what information would be included in such an invitation.
Claims 5, 7, 27, and 29—31 rejected under 35 U.S.C. § 103(a) as
unpatentable over Burton, Bamborough, and eBay
These claims are argued on the basis of claim 1.
CONCFUSIONS OF FAW
The rejection of claims 1—50 and 57—62 under 35 U.S.C. § 101 as
directed to non—statutory subject matter is proper.
The rejection of claims 1—4, 6, 8—26, 28, 32—50, and 57—62 under
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35 U.S.C. § 103(a) as unpatentable over Burton and Bamborough is proper.
The rejection of claims 5, 7, 27, and 29—31 under 35 U.S.C. § 103(a)
as unpatentable over Burton, Bamborough, and eBay is proper.
DECISION
The rejection of claims 1—50 and 57—62 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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