Ex Parte O et al

Patent Trial and Appeal Board

Nov 2, 2018

13249936 (P.T.A.B. Nov. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/249,936 09/30/2011
86125 7590
Law Office of Brian Short
P.O. Box 641867
San Jose, CA 95164-1867
11/06/2018
FIRST NAMED INVENTOR
Catha! O'Sullivan
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.
Ariba-1006 2871
EXAMINER
ZUKANOVICH, BRANDY A
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
11/06/2018 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):
short. br@ gmail. com
brian.iplaw@gmail.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CATHAL O'SULLIVAN, RAGHA VENDRA
KESHA VAMURTHY, ANWAR NADAF, and
BHASKAR HIMATSINGKA 1
Appeal2017-005644
Application 13/249 ,93 6
Technology Center 3600
Before BIBHU R. MOHANTY, BART A. GERSTENBLITH, and
AMEE A. SHAH, 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, 3-5, 10, 12, 13, 16-18, 20, and 21, 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.
1 The Appellants identify the real party in interest as "Ariba, Inc. ( an SAP
Company)." App. Br. 3.
Appeal2017-005644
Application 13/249,936
THE INVENTION
The Appellants' claimed invention is directed to a supplier/buyer
commerce network for collaboration and bids between a buyer and at least
one supplier (Spec. 1 ). Claims 1, 18, and 20 are the independent claims on
appeal. Claim 1, reproduced below, is representative of the subject matter
on appeal.
1. A buyer/supplier network comprising:
a buyer/supplier server interfaced through a network to a
buyer server and a plurality of supplier servers, wherein the
buyer/supplier server is operative to:
host supplier catalogs for purchase;
provide a buyer of the buyer server electronic access to a
catalog or non-catalog item;
receive a collaboration request submitted by the buyer of
the buyer server, wherein the collaboration request includes
proposed purchase terms;
determine a minimum number of a set of a plurality of
suppliers that are to receive the collaboration request;
select the minimum number of the set of the plurality of
suppliers associated with the plurality of supplier servers to
receive the collaboration request, wherein the minimum number
of the set of the plurality of suppliers are selected based on
supplier profiles, wherein the supplier profiles include
aggregated activity information of the suppliers, wherein the
aggregated activity information includes a performance of the
suppliers on the buyer/supplier network;
create an account for each of the selected minimum
number of the plurality of suppliers that do not have an existing
account, wherein after creation of the account for each of the
selected minimum number of the plurality of suppliers that do
not have an existing account, each of the selected minimum
number of the plurality of suppliers have either a created
account or an existing account;
electronically communicate the collaboration request through the
network to the selected minimum number of the set of the plurality of
suppliers associated with the plurality supplier servers, thereby
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Application 13/249,936
initiating a negotiation between the buyer of the buyer server and each
of the selected minimum number of the set of the plurality of suppliers
associated with the plurality supplier servers;
receive a proposal from each of a minimum number N of
suppliers associated with the plurality of supplier servers
comprising enabling each of the minimum number ofN of
suppliers to log into one of the created accounts or one of the
existing accounts, and receiving a submitted proposal to the
collaboration request from each of the minimum number ofN
suppliers while the minimum number ofN of suppliers are
logged into one of the created accounts or one of the existing
accounts;
facilitate each of the minimum number ofN of suppliers
punching into a procurement system of the buyer while the
minimum number ofN suppliers are each logged into the
created or existing accounts thereby making each proposal
accessible to the buyer within the procurement system of the
buyer, wherein a value ofN is adaptively selected by the buyer
of the buyer server, and wherein N is a minimum number of
proposals required for collaboration, wherein N is based on a
company code, a commodity code or a partitioned commodity
code;
facilitate collaboration between the buyer of the buyer
server and the minimum number N of suppliers associated with
the plurality of supplier server; and
receive an acceptance or a rejection to each received
proposal from the buyer of the buyer server, thereby completing
the collaboration and negotiation between the buyer and each of
the minimum number N of suppliers.
THE REJECTION
The following rejection is before us for review:
Claims 1, 3-5, 10, 12, 13, 16-18, 20, and 21 are rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
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Application 13/249,936
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 USC§ 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (App. Br. 6-12). The Appellants
also argue that the claim is "significantly more" than the alleged abstract
idea(id. at 12, 13).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2-5; Ans. 5-8).
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 Bankint'l, 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
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 13/249,936
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," i.e., 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
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 marketplace for buyers and suppliers. 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. The claim here is similar to Buysafe, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014), where it was held that claims drawn
to creating a contractual relationship are directed to an abstract idea.
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. The Specification, at page 11, discloses using generic computer
components for their known functions.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
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conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
We note the Appellants' point about pre-emption (App. Br. 7, 12).
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, 132 S. Ct. at 1293)), "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, 193 (2015) ("[T]hat 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.").
For these reasons, the rejection of claim 1 is sustained. The
Appellants have provided the same arguments for the remaining claims and
the rejection of these claims is sustained as well as they are directed to
similar subject matter.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1, 3-5, 10, 12, 13, 16-18, 20, and 21 under 35 U.S.C.
§ 101.
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DECISION
The Examiner's rejection of claims 1, 3-5, 10, 12, 13, 16-18, 20, and
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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