Ex Parte Paleja et al

Patent Trial and Appeal Board

Sep 24, 2018

14696292 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/696,292 04/24/2015
20995 7590 09/26/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Ameesh Paleja
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.
MOVFR.OOlAl 5994
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMEESH P ALEJA and ALEXANDER ROUSE
Appeal2017-010069
Application 14/696,292
Technology Center 3600
Before STEVEN D.A. McCARTHY, CHARLES N. GREENHUT, and
JEREMY M. PLENZLER, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge GREENHUT.
Opinion Dissenting filed by Administrative Patent Judge PLENZLER.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
6 and 9-11. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal2017-010069
Application 14/696,292
CLAIMED SUBJECT MATTER
The claims are directed to a collaborative ticketing system. Claim 1,
reproduced below, with emphasis added, is illustrative of the claimed subject
matter:
1. A non-transitory computer readable medium having stored
thereon a mobile ticketing application configured to run on a
mobile device of a user, said mobile ticketing application
compnsmg:
a user interface module that provides a touch-based user
interface on the mobile device, the user interface providing
functionality for the user to at least:
browse movies and show times at theaters in a
vicinity of the mobile device;
select a movie and an associated theater and show
time;
initiate a group event in connection with the
selected movie, theater and show time, wherein initiating
the group event comprises selecting, from a display of
social network contacts, a set of one or more social
network contacts to invite to the group event, wherein the
touch-based user interface provides functionality for the
user to select the set of social network contacts by at least
( 1) tapping on a designation of a plurality of social
networking contacts previously invited by the user as a
group, whereby the user can select the plurality of social
networking contacts to invite without individually
selecting each of the plurality of social networking
contacts, and (2) tapping on designations of individual
social networking contacts; and
a group event processing module that is responsive to
initiation of the group event by at least:
initiating an electronic transmission of an invitation
to each selected social network contact, said invitation
including a link to a server system that provides
functionality for the invited social network contact to
accept the invitation; and
2
Appeal2017-010069
Application 14/696,292
generate, and display on the mobile device, an
encoded display representing a ticket for attending the
group event, said encoded display including encoded
information corresponding to the group event, said
encoded display adapted to be scanned at the theater and
used to control entry into the theater.
REJECTIONS
Claims 1-6 and 9-11 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
Claims 1 and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ramanujam (US 2012/0290340 Al, published Nov. 15,
2012) and Pollack (US 2008/0098313 Al, published Apr. 24, 2008).
Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over
Ramanujam, Pollack, and Lim (US 2015/0095777 Al, published Apr. 2,
2015).
Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over
Ramanujam, Pollack, Lim, and Amento (US 2010/0071000 Al, published
Mar. 18, 2010) and further Shah (US 2014/0074866 Al, published Mar. 13,
2014).
Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over
Ramanujam, Pollack, and Stout (US 2013/0227086 Al, published Aug. 29,
2013).
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over
Ramanujam, Pollack, and Xiong (US 2007 /0233736 Al, published Oct. 4,
2007).
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Ramanujam, Pollack, and Wheatley (US 2014/0156746 Al, published June
5, 2014).
3
Appeal2017-010069
Application 14/696,292
Claims 9 and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ramanujam, Pollack, and Brown (US 2015/0242895 Al,
published Aug. 27, 2015).
OPINION
A shortcoming in both the Examiner's patent-eligibility rejection and
the Examiner's prior-art rejection is that the Examiner does not appear to
have addressed and considered the claim language emphasized above
requiring the plurality of contacts whose designation may be tapped to be
contacts "previously invited." This requirement forms part of the limitation
argued both with respect to the § 101 rejection and the prior-art rejections.
See App. Br. 4--8; 9--11. The Examiner does not address this limitation with
particularity in the § 10 I-rejection in the Final Action. In both the § 101
rejection and the prior-art rejections the Examiner cites to paragraphs 106
and 107 and Figure 5 of Pollack as disclosing the two "tapping" options
recited in each independent claim before us, claims 1 and 10. Ans. 15-16;
18-20. However, although there is a button 390 provided in Pollack that
allows for the selection of all members from a member list 550, the cited
portions of Pollack do not identify those members that may be
simultaneously added as having been "previously invited."
The precise language of the claims must be given consideration in
both patent-eligibility and patentability determinations. As the Examiner
appears to have addressed only the gist of the subject matter claimed without
addressing certain specific limitations, as discussed above, the Examiner's
rejections cannot be sustained on the grounds set forth by the Examiner. 1
1 The dissent equates this situation to one in which the Examiner made an
erroneous fact-finding involving a cumulative or otherwise unnecessary
4
Appeal2017-010069
Application 14/696,292
DECISION
The Examiner's rejections are reversed.
REVERSED
reference in a prior-art rejection and the Board nevertheless affirms because
the appellant had a full and fair opportunity to respond to the issues
presented. See, e.g., In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976)). Here, the
issue of whether the Examiner based the § 101 rejection on an erroneous
fact-finding differs from the issues of whether the Examiner needed to make
that particular finding of fact to support that rejection and whether the
rejection would have been sustainable on some alternate basis without
relying on that finding. Although there seems to be consensus on the first of
these issues, the record presently before us, particularly as clarified by the
Examiner's Answer, does not demonstrate that Appellants had adequate
notice of the need to address the issues of whether the Examiner's finding
was necessary, and to what extent the Examiner's§ 101 rejection could be
sustained, on some alternate basis, without it. See, e.g., In re Stepan, 660 F.
3d 1341, 1345 (Fed. Cir. 2011) (It is the PTO's obligation to provide timely
notice to the applicant of all matters of fact and law asserted.). We are able
to render a decision to reverse the Examiner's rejection in this particular
appeal on the grounds specified by the Examiner without reaching these
issues which have not been briefed or put squarely before us. See 3 7 C.F .R.
§ 41.50(a)("The Board, in its decision, may affirm or reverse the decision of
the examiner in whole or in part on the grounds and on the claims specified
by the examiner") ( emphasis added); Hyatt v. Dudas, 5 51 F. 3 d 13 07, 13 12
(Fed. Cir. 2008) ("[A] "ground of rejection" ... is not merely the statutory
requirement for patentability that a claim fails to meet but also the precise
reason why the claim fails that requirement.") Although the Board is
authorized to reject claims based on new grounds under 37 C.F.R.
§ 41.50(b ), no inference should be drawn when the Board elects not to do so.
See MPEP 1213.02.
5
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMEESH P ALEJA and ALEXANDER ROUSE
Appeal2017-010069
Application 14/696,292
Technology Center 3600
Before STEVEN D.A. McCARTHY, CHARLES N. GREENHUT, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge, dissenting.
The majority determines that the Examiner has failed to establish that
claim 1 is ineligible under 35 U.S.C. § 101. In making that determination,
the majority faults the Examiner's fact-finding in the Answer related to
whether Pollack expressly teaches selection of members that have been
previously invited using a button. See Maj. Op. 4 ("[A]lthough there is a
button 390 provided in Pollack that allows for the selection of all members
from a member list 550, the cited portions of Pollack do not identify those
members that may be simultaneously added as having been 'previously
invited.'"). Because I do not believe that fact-finding is fatal to the
Examiner's rejection, and I believe the preponderance of the evidence
Appeal2017-010069
Application 14/696,292
supports the Examiner's rejection of the claims as patent-ineligible under 35
U.S.C. § 101, I respectfully dissent. 2
Under 35 U.S.C. § 101, we must first identify whether an invention
fits within one of the four statutorily provided categories of patent-
eligibility: "processes, machines, manufactures, and compositions of
matter." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713-14 (Fed. Cir.
2014). Here, claim 1 falls within one of those categories. Section 101,
however, "contains an important implicit exception [to subject matter
eligibility]: Laws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. Pty. v. CLS Bankint'l, 134 S. Ct. 2347, 2354
(2014) (citing Assoc.for Molecular Pathology v. Myriad Genetics, Inc., 133
S. Ct. 2107, 2116 (2013) (internal quotation marks and brackets omitted)).
In Alice, the Supreme Court reiterated the framework set forth previously in
Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71 (2012)
"for distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 134 S. Ct. at 2355. We first "determine whether the
claims at issue are directed to one of those patent-ineligible concepts." Id.
If so, we "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." Id.
( quoting Mayo, 566 U.S. at 78).
2 It is worth noting that the majority takes no position on whether or not
they agree with my analysis of claim 1 under § 101, which is not based on
any disputed fact-findings. It is unclear why the majority considers the
disputed teachings of Pollack fatal to the§ 101 rejection.
2
Appeal2017-010069
Application 14/696,292
The Examiner characterizes claim 1 as "describ[ing] the concept of
selecting an event (a movie) over a network, and inviting other users to join
the event. This concept is similar to the concepts involving human activity
relating to commercial practices (e.g., hedging in Bilski) that have been
found by the courts to be abstract ideas." Final Act. 3. I agree. This claim
is directed to a well-established method of organizing human activity (i.e.,
organizing a group to go to the movies). See BSG Tech LLC v. Buyseasons,
Inc., 899 F.3d 1281, 1285 (Fed. Cir. 2018) (citations omitted) ("[W]e view
well-established 'methods of organizing human activity' as abstract.").
I see no real dispute as to whether the claim is directed to a well-
known method of organizing human activity. To the extent the majority or
Appellants believe a finding that Pollock teaches "tapping on a designation
of a plurality of social networking contacts previously invited" is relevant to
that determination, I fail to see the relevance. Appellants argue that the
claim is like nothing found by the courts to be directed to an abstract idea.
Appeal Br. 5---6. This is clearly wrong, as courts have determined that well-
established methods of organizing human activity are abstract ideas. The
Examiner did not err in characterizing the claim in this manner.
With respect to the second part of the § 101 analysis, the Examiner
explains that "the recited steps represent implementing the abstract idea on a
generic computer, or 'reciting a commonplace business method aimed at
processing business information despite being applied on a general purpose
computer."' Final Act. 5 ( citations omitted). Again, I agree with the
Examiner.
Where the majority and I seem to disagree is whether the Examiner
needs to make a finding, at all, as to whether the entirety of the limitation
directed to "tapping on a designation of a plurality of social networking
3
Appeal2017-010069
Application 14/696,292
contacts previously invited by the user as a group, whereby the user can
select the plurality of social networking contacts to invite without
individually selecting each of the plurality of social networking contacts" is
well-known, routine, and conventional. The Examiner does not, which is
why the finding relied on by the majority in reversing the Examiner is not
fatal to the rejection. As indicated in the Final Action (Final Act. 3--4), who
is invited (i.e., "contacts previously invited"), for example, is simply a
narrowing of the abstract idea and cannot transform the claim into a patent-
eligible application. See BSG, 899 F.3d at 1291 ( citations omitted) ("As a
matter of law, narrowing or reformulating an abstract idea does not add
'significantly more' to it.").
To the extent the remaining features (e.g., "the touch-based user
interface provides functionality ... by ... tapping") are considered non-
abstract features of the claimed invention, there can be no real dispute that
those are well-known, routine, and conventional features. Indeed,
Appellants' Specification admits as much, noting, for example, that "[t]he
user interface illustrated in these drawings is a touch-based interface
designed to operate on a smartphone, tablet, or similar mobile device that
includes a touch screen." Spec. ,r 94.
That the Examiner addressed Appellants' incorrect argument from the
Appeal Brief in the Answer, making additional unnecessary findings, does
not make the basis for the rejection in the Final Action any less correct.
For at least these reasons, I would affirm the Examiner's rejection of
claims 1-6 and 9-11 under 35 U.S.C. § 101. Because I would affirm the
Examiner's decision to reject all appealed claims under 35 U.S.C. § 101, I
do not reach the rejection under 35 U.S.C. § 103.
4