Ex Parte Musgrove et al

Patent Trials and Appeals Board

Feb 12, 2019

14932058 - (D) (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/932,058 11/04/2015
128144
RimonPC
7590
One Embarcadero Center
Suite 400
San Francisco, CA 94111
02/14/2019
FIRST NAMED INVENTOR
Timothy Allen Musgrove
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.
10-350-US-C6 3670
EXAMINER
SYED,FARHANM
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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):
eofficeaction@appcoll.com
docketing.rimonlaw@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY ALLEN MUSGROVE and
ROBIN HIROKO WALSH
Appeal2018-004132
Application No. 14/932,058 1
Technology Center 2100
Before MARC S. HOFF, JOHN D. HAMANN, and SCOTT E. BAIN,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants' invention is a system and method for an integrated on-line
shopping experience. A client computer executing a browser application is
1 The real party in interest is CBS Interactive, Inc. (App. Br. 2).
Appeal 2018-004132
Application No. 14/932,058
connected to the Internet. Spec. ,r 19. A shopping server, also connected to
the Internet, receives identification of a user of a client computer. Plural
merchant servers provide product information to the client computer in an
integrated shopping interface. Spec. ,r 23. A buy procedure is executed on
the merchant servers, for purchase of selected products, after the user
confirms the purchase. Spec. ,r,r 29, 30.
Claim 1 is reproduced below:
1. A method of effecting commerce in a networked
computer environment comprising the steps of:
receiving, by a shopping server having a database,
identification a user of a client computer;
receiving a selection of plural products through an
integrated shopping interface of the client computer, based
on product information in the database, for purchase from
plural merchant servers that are remote from the shopping
server;
transmitting product information related to the selected
products for presentation to the user for confirmation of a
purchase; and
causing a buy procedure to be executed on the merchant
servers for purchase of the selected products from the
merchant servers in response to the user confirming the
purchase. (See App. Br., Claims Appendix, 10).
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Call us 6,154,738 issued Nov. 28, 2000
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Shwartz et al., US 2001/0044787 Al published Nov. 22, 2001;
hereinafter "Shwartz"
REJECTIONS
Claims 1-10, 12-22, and 242 stand rejected under 35 U.S.C. § I02(e)
as being anticipated by Call.
Claim 11 and 23 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Call and Schwartz.
Claims 1-24 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
Claims 1-24 stand rejected on the grounds of nonstatutory double
patenting as being unpatentable over claims 1-24 of U.S. Patent No.
6,535,880. 3
Claims 1-24 stand rejected on the grounds of nonstatutory double
patenting as being unpatentable over claims 1--40 of U.S. Patent No.
6,714,933.
Claims 1-24 stand rejected on the grounds of nonstatutory double
patenting as being unpatentable over claims 1-100 of U.S. Patent No.
7,082,426.
2 The Final Rejection and Examiner's Answer list "claims 1-24" as being
subject to an anticipation rejection over Call. The body of the rejection does
not discuss how claims 11 and 23 are anticipated, and the Examiner's
§ I03(a) rejection makes clear that the Examiner finds the limitations of
claims 11 and 23 to not be disclosed by Call. Accordingly, we treat claims
11 and 23 as not rejected under § 102( e ).
3 The Examiner indicates that the double patenting rejections of claims 1-24
will be held in abeyance until allowable subject matter has been identified.
Final Act. 3. Nonetheless, the Examiner also indicates that claims 1-24 are
rejected on the double patenting grounds listed herein. Ans. 6-7.
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Claims 1-24 stand rejected on the grounds of nonstatutory double
patenting as being unpatentable over claims 1-12 of U.S. Patent No.
9,177,059.
Throughout this decision, we make reference to the Specification,
("Spec.", filed Nov. 4, 2015); Final Office Action, ("Final Act.", mailed Feb.
15, 2017); Appeal Brief ("App. Br.," filed June 1, 2017); the Reply Brief
("Reply Br.," filed Mar. 5, 2018); and the Examiner's Answer ("Ans.,"
mailed Feb. 22, 2018) for their respective details.
ISSUE
1. Is the claimed invention directed to an abstract idea? If so, is the
abstract idea integrated into a practical application?
2. Does Call disclose causing a buy procedure to be executed on the
merchant servers for purchase of selected products from the merchant
servers in response to the user confirming a purchase?
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. See, e.g., Alice Corp. v. CLS Banklnt'l, 573 U.S.
208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
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and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that
framework, we first determine what concept the claim is "directed to." See
Alice, 573 U.S. at 219 ("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."); see also 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.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (Gottschalkv. Benson, 409 U.S. 63, 69 (1972))
(quoting Corning v. Burden, 56 U.S. 252, 267-68 (1854))); and
manufacturing flour (Benson, 409 U.S. at 69 ( citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 at 176; see also id. at 192 ("[W]e .. view
respondents' claims [ as nothing more than a process for molding rubber
products and not] as an attempt to patent a mathematical formula.").
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Having said that, the Supreme Court also indicated that a claim "seeking
patent protection for that formula in the abstract ... is not accorded the
protection of our patent laws, ... and this principle cannot be circumvented
by attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook [internal citations omitted]);
see, e.g., id. at 187 ("It is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well
be deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to
transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
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mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are
not "well-understood, routine, conventional" in the field (see MPEP §
2106.0S(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
ANALYSIS
DOUBLE PATENTING REJECTIONS
Claims 1-24 stand rejected on the ground of nonstatutory double
patenting over various claims in U.S. Patent Nos. 6,535,880; 6,714,933;
7,082,426; and 9,177,059. Final Act. 6-7. Although the Examiner states
that the rejections are being "held in abeyance until allowable subject matter
has been identified," the rejections have not been withdrawn by the
Examiner. Final Act. 3. Appellants explicitly indicated that they do not
address the double patenting rejections. App. Br. 2. Appellants make no
mention of the double patenting rejections in the Reply Brief. Accordingly,
we sustain proforma the double patenting rejections made by the Examiner.
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SECTION 101 REJECTION
Independent claim 1 recites a method including the steps of, inter alia,
receiving a selection of plural products through an integrated shopping
interface of a client computer, based on product information in a database,
for purchase from plural merchant servers that are remote from the shopping
server; transmitting product information for presentation to the user for
confirmation of a purchase; and in response to the user's confirmation,
causing a buy procedure to be executed on the merchant servers for purchase
of the selected products. Independent claim 13 recites computer executable
code stored on a memory of a computer system having at least one
processor, which when executed causes a processor to perform steps
analogous to those recited in claim 1.
We determine that independent claims 1 and 13 are directed to a
judicial exception, specifically to the fundamental economic practice of
buying and selling products. 4 Claims 1 and 13 are directed to the purchase
of products over the internet in which the buyer, through a single unified
4 See, e.g., Alice, 573 U.S. at 219--20 (concluding that use of a third party to
mediate settlement risk is a "fundamental economic practice" and thus an
abstract idea); id. (describing the concept of risk hedging identified as an
abstract idea in Bilski as ''a method of organizing human activity''); Bilski,
561 U.S. at 611---612 (concluding that hedging is a "fundamental economic
practice" and therefore an abstract idea); Bancorp Servs., LLC v. Sun Life
Assurance Co. of Can. (US.), 687 F.3d 1266, 1280 (Fed. Cir. 2012)
concluding that ''managing a stable value protected life insurance policy by
performing calculations and manipulating the results'' is an abstract idea);
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378-
79 (Fed. Cir. 2017) (holding that concept of "local processing of payments
for remotely purchased goods" is a "fundamental economic practice, which
Alice made clear is, without more, outside the patent system.'')
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interface, can browse the unified "product catalog" of a plurality of
merchants and can engage in a single purchase transaction with the ability to
buy various items from said plurality of merchants simultaneously.
Notwithstanding that we conclude that the claimed invention is
directed to an abstract idea, we nonetheless determine that said abstract idea,
of purchasing products over the internet through a unified interface
presenting a combined product catalog of several merchant servers in a
common format, is integrated into a practical application. We conclude that
the claimed solution of combining several merchants' product catalogs into a
single integrated shopping interface is necessarily rooted in computer
technology to overcome a problem specifically arising in the realm of
computer networks. See DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d
1245, 1253 (Fed. Cir. 2014).
Appellants disclose aggregating product information from a plurality
of product information sources having disparate formats for product
information. The records are processed into one or more groups based on
which product information records are likely to correspond to the same
product. Spec. ,r 8. Product information relating to products from plural
merchant servers 40 can be displayed side by side in the browser window of
client computer 12 to permit the shopper to comparison shop and choose
products from any one or more of merchant servers 40 based on the product
information. Spec. ,r 23. Appellants disclose that one advantage of the
invention is to avoid the need for reentering usemame data and preferences.
Id. Appellants disclose the ability for the shopping customer to purchase
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products from plural merchant servers in a single shopping session and by
executing a single purchase transaction. Spec. ,r 29.
Just as the invention in DDR Holdings improved computer
capabilities by presenting a composite web page that combined certain
visual elements of a "host" website with content of a third-party merchant,
thus providing said third-party content to a customer without having the
customer leave the host website, the claimed invention improves computer
capabilities by increasing the efficiency of buying products from several
merchants. See MPEP 2106.0S(a). Appellants' invention overcomes the
problem of comparison shopping products across disparately formatted
merchant web pages, and provides the advantage of performing a single
buying procedure in order to purchase products sold on plural merchant
servers. See Spec. ,r,r 20-30.
Because we conclude that the abstract idea to which the claims are
directed is integrated into a practical application, we conclude that the
claims are directed to patent-eligible subject matter. We do not sustain the
Examiner's§ 101 rejection of claims 1-24.
SECTION 102 REJECTION
Claims 1 and 13 recite, inter alia, "causing a buy procedure to be
executed on the merchant servers for purchase of the selected products from
the merchant servers in response to the user confirming the purchase." The
Examiner finds that Call discloses execution of a buy procedure at column
30, lines 24--27. Final Act. 9. The section of Call relied upon is concerned
with a retailer's inventory control system, which assists purchasing agents to
see which products need to be ordered and which vendors need to be
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contacted to follow up on prior orders. Call col. 28:10-14; Fig. 7. We find
no disclosure in Call of causing a buy procedure to be executed for purchase
of selected products from the merchant servers in response to a user
confirming a purchase.
The Examiner's subsidiary reliance on columns 27 and 28 of Call is
similarly unavailing. See Final Act. 9. The Examiner finds that Call
discloses that the shared server provides a shopping basket and credit card
transaction services to enable the customer to complete purchases. Ans. 9.
We do not find disclosure in Call of a buy procedure executed on plural
merchant servers. Similarly, we do not find that Call discloses user
confirmation of a purchase as a trigger for causing the execution of such a
buy procedure.
We thus find that Call fails to disclose all the limitations of
independent claims 1 and 13, or of claims 2-10, 12, 14--22, and 24
dependent therefrom. We do not sustain the Examiner's § 102( e) rejection.
SECTION 103 REJECTION
As analyzed supra, we do not sustain the § 102 rejection of
independent claims 1 and 13, from which claims 11 and 23 depend
respectively, as being anticipated by Call. The Examiner does not find that
Schwartz discloses "causing a buy procedure to be executed on the merchant
servers," which disclosure we find to be missing from Call. Therefore, we
do not sustain the Examiner's§ 103(a) rejection of claims 11 and 23 over
Call and Schwartz, as lacking prima facie obviousness, for the same reasons
expressed with respect to the § 102( e) rejection of claims 1 and 13 over Call,
supra.
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CONCLUSION
1. The claimed invention directed to the abstract idea of purchasing
products over the internet through an integrated shopping interface. We
conclude that the claimed abstract idea is integrated into a practical
application.
2. Call fails to disclose causing a buy procedure to be executed on the
merchant servers for purchase of selected products from the merchant
servers in response to the user confirming a purchase.
ORDER
The Examiner's decision to reject claims 1-24 on obviousness-type
double patenting grounds is affirmed. The Examiner's decision to reject
claims 1-24 under 35 U.S.C. § 101 is reversed. The Examiner's decision to
reject claims 1-24 under 35 U.S.C. § 102(e) is reversed. The Examiner's
decision to reject claims 11 and 23 under 35 U.S.C. § 103(a) is reversed.
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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