Ex Parte Nadiadi et al

Patent Trial and Appeal Board

Dec 14, 2018

13733628 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/733,628 01/03/2013
83579 7590 12/18/2018
LEVEL 3 COMMUNICATIONS, LLC
Attn: Patent Docketing
1025 Eldorado Blvd.
Broomfield, CO 80021
FIRST NAMED INVENTOR
Yunas Nadiadi
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.
0409-US-U3 8014
EXAMINER
MISIASZEK, AMBER AL TSCHUL
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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):
patent.docketing@level3.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUN AS NADIADI, PAUL FARNSWORTH, JEFF STOREY,
AJIT K. RAO, ERIC D. GUNDERSEN, ALLENE. DIXON, SANJIV
KUMAR, RENE GRIPPO, LUKE PHILIPS, OMPRAKASH MISHRA,
RAJIV K. SINGH, and CHRIS CUTTITTA1
Appeal2017-000613
Application 13/733,628
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-21 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ). Oral arguments were
presented on November 28, 2018 by telephone.
1 Appellant is the Applicant, Level 3 Communications, LLC, which,
according to the Appeal Brief, is the Real Party in Interest. App. Br. 2.
Appeal2017-000613
Application 13/733,628
SUMMARY OF THE DECISION
We AFFIRM.
THE INVENTION
The Appellant's claimed invention is directed to a method and system
to access, manage, and manipulate data for generating and converting sales
opportunities (Spec., para. 2). Claim 8, reproduced below, is representative
of the subject matter on appeal.
8. A method of sales prospecting and customer service
optimization comprising:
accessing and presenting geographic information in
relation to at least one technical infrastructure and in relation to
at least one customer to which access to the at least one
technical infrastructure would facilitate the provision of at least
one service to the at
least one customer;
displaying a presentation board including a pinup board
and an asset browser, the pinup board including a plurality of
asset locations where one or more presentation assets may be
assembled to define the multimedia slideshow presentation, and
the asset browser including a graphical display of a plurality of
presentation assets that may be
placed in the plurality of asset locations, wherein the plurality
of presentation assets are displayed in the asset browser are
selected from a remote database of presentation assets based on
at the selected product or service for the at least one customer
and the vertical
market of the selected customer; and
providing an estimated cost for at least one product or
service for the selected customer, the estimated cost being
based on information associated with the presented product or
service.
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Application 13/733,628
THE REJECTION
The following rejection is before us for review:
Claims 1-21 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 2
ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the Examiner has failed to properly show
that the claim is directed to non-statutory subject matter (App. Br. 6-14).
The Appellant argues that the rejection of claim 8 is improper because the
claim is not directed to an abstract idea (App. Br. 12, 13). The Appellant
also argues that the claim includes significantly more than an alleged
abstract concept (App. Br. 13).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Rej. 5-7, Ans. 2-14).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a "new and useful process, machine, manufacture,
or composition of matter." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "laws of nature,
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/733,628
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 8 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-76 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. If so, we then consider the
elements of the 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 of the abstract idea. Id. (internal
quotations and citations omitted). This is a search for an "inventive
concept" an element or combination of elements sufficient to ensure that the
claim amounts to "significantly more" than the abstract idea itself. Id.
(internal quotations and citation omitted). The Court also stated that "the
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention." Id. at 2358.
Here, we determine that the claim is directed to the concept of sales
prospecting by providing cost estimates based on data associated with a
product or service. This is a method of organizing human activities and a
fundamental economic practice long prevalent in our system of commerce,
and is an abstract idea beyond the scope of§ 101. In Versata Development
Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015)
determining a price, using organizational and product group hierarchies was
held to be an abstract idea. In Electric Power Group, LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it,
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Application 13/733,628
and displaying results from certain results of the collection and analysis was
held to be an abstract idea. The Specification at para. 2 states that the
method of the invention is directed to generating and converting sales
opportunities.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. The Specification
at paras. 28-33 for instance discloses using conventional devices such as
computing devices including a general purpose computer, wireless networks,
and memory devices (RAM, ROM) in a conventional manner for their
known functions.
We note the point about pre-emption (App. Br. 8). While pre-emption
"'might tend to impede innovation more than it would tend to promote it,'
thereby thwarting the primary object of the patent laws" (Alice, 134 S. Ct. at
2354 (quoting Mayo, 566 U.S. at 71)), "the absence of complete preemption
does not demonstrate patent eligibility" (Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015),
cert. denied, 136 S. Ct. 701, (2015)("[T]hat the claims do not preempt all
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Application 13/733,628
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.").
For these above reasons the rejection of claim 8, and its dependent
claims which were not separately argued, is sustained.
We reach the same conclusion as to independent system claims 1 and
15 and their dependent claims which are drawn to similar subject matter.
Here, as in Alice, "the system claims are no different in substance from the
method claims. 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." Alice, 134 S. Ct. at
2351. "[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 it' is not enough for patent
eligibility." Id. at 2358 ( quoting Mayo, 566 U.S. at 72).
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-21 under 35 U.S.C. § 101.
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Application 13/733,628
DECISION
The Examiner's rejection of claims 1-21 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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