Ex Parte Nokes et al

Patent Trial and Appeal Board

Feb 12, 2018

11954004 (P.T.A.B. Feb. 12, 2018)

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.
11/954,004 12/11/2007 Jeffry A. Nokes 2043.482US1 3203
49845 7590 02/14/2018
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
MAGUIRE, LINDSAY M
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
02/14/2018 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):
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 JEFFRY AN. NOKES and MICHAEL JOSEPH EVANS
Appeal 2016-005178
Application 11/954,004
Technology Center 3600
Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-23, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2016-005178
Application 11/954,004
THE INVENTION
The Appellants’ claimed invention is directed to a system to watch for
items of an electronic publishing or sales system (Spec., para. 1). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A computer-implemented method, comprising:
enabling a buyer using a first computing device to use a
first network-based interface provided by a second computing
device to the buyer via a network to identify an item offered for
sale by a seller as an item to be included in a watch list
associated with the buyer, the watch list including at least one
item to be watched for the buyer;
enabling the buyer using the first computing device to use a
second network-based interface provided by the second
computing device to the buyer via the network to provide
buyer's information and to associate the buyer's information
with the item included in the watch list, the first network-based
interface and the second network-based interface being
associated with a network-based marketplace, the second
network-based interface including a displayed arrangement of
marketplace information associated with the item included in
the watch list and the buyer's information associated with the
item included in the watch list, the marketplace information
including an identification of the seller and the item included in
the watch list, the buyer's information including item rating
information that corresponds to a relative preference of the
buyer for the item included in the watch list, and the second
network-based interface including an adjustable visual
representation of the relative preference of the buyer for the
item included in the watch list;
providing a user table, an items table and a transaction
table that operate to implement transactions for items in the
network-based marketplace, the user table including records for
buyers and sellers in the network-based marketplace, the items
table including records for items that are transacted in the
network-based marketplace, and the transaction table including
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Application 11/954,004
records for transactions of items between the sellers and the
buyers in the network-based marketplace; and
providing an items watch-list table for the buyer at the
second network-based interface, the items watch-list table
associating an identification of the buyer with a list of one or
more items included in the watch list and with corresponding
buyer's information and marketplace information for the one or
more items included in the watch list, and the items watch-list
table being dynamically updated to remove an outdated item
from the watch list when the outdated item is no longer
available in the network-based marketplace.
THE REJECTION
The following rejection is before us for review:
Claims 1-23 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.1
ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (App. Br. 15-18, Reply Br. 2-7).
The Appellants also argue that even if the claim is found to be abstract that
the claim is: nevertheless directed to patentable subject matter in a specially
configured computer, functions in a manner beyond what is purely
1 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 11/954,004
conventional, that the limitations add something more to the judicial
exception, is rooted in technology, and improves the functioning of the
computer itself (App. Br. 18-28).
In contrast, the Examiner has determined that the claim is directed to
watching items for sale in an auction system which is a fundamental
economic practice and directed to an abstract idea (Ans. 3). The Examiner
has also determined that the claim limitations do not add “significantly
more” to the abstract nature of the claim (Final Rej. 2, 3).
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,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 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., 132 S. Ct. 1289, 1296-97
(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.
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. The Court also stated that “the mere
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Application 11/954,004
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
providing a watch list of items for sale in an auction system with buyers and
sellers. This is a fundamental economic practice long prevalent in our
system of commerce and is an abstract idea beyond the scope of § 101.
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 turn, 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 and do not find
that the functioning of the computer itself is improved. The Specification at
paragraph 85 describes that the computer system may use commonly known
computer systems or “any machine capable of executing a set of
instructions.” While the Appellants at page 24 have argued that the claim is
“rooted in computer technology” we have determined in contrast that the
claim does not amount to significantly more than the abstract idea above.
Considered as an ordered combination, the computing devices of
Appellants’ method adds nothing that is not already present when the steps
are considered separately.
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We note the point about pre-emption (App. Br. 27, 28). 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 Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012)), “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)
(“[TJhat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
abstract.”).
Here, after considering the claim elements both individually and as an
ordered combination we determine that they fails to transform the abstract
nature of the claim.
For these above reasons the rejection of claim 1 is sustained.
Dependent claims 2-8 as well as claims 9-13 and 18-23 are drawn to
similar subject matter and the rejection of these claims is sustained as well.
We reach the same conclusion as to independent system claim 14 and
its dependent claims. 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 if is not
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enough for patent eligibility.” Id. at 2358 (quoting Mayo, 132 S. Ct. at
1294).
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-23 under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1-23 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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