Ex Parte PLATEK

Patent Trial and Appeal Board

Dec 20, 2018

14012410 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/012,410 08/28/2013
23373 7590 12/25/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
NirPLATEK
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.
Q206263 1046
EXAMINER
GARG, YOGESH C
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIR PLATEK
Appeal2017-010089 1
Application 14/012,410
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 32--42. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
THE CLAIMED INVENTION
The present invention relates generally to "improved computerized
systems and methodologies for sales of products." Spec. ,r 4. Independent
claim 32 is directed to a computerized system for sale of non pre-catalogued
products having non pre-catalogued parameters. Br. 13.
Claim 32, reproduced below, is representative of the claimed subject
matter:
1 According to Appellant, the real party in interest is Elady Ltd. Br. 2.
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Application 14/012,410
32. A computerized system for sale of non pre-catalogued
products having non pre-catalogued parameters, the system
compnsmg:
a non pre-catalogued product database including:
a product parameter table including selectable
parameters; and
a product parameter value table including selectable
values corresponding to said parameters;
at least one server computer connected to said non pre-
catalogued product database, said at least one server computer
including:
a non pre-catalogued product listing engine
configured to prompt a listing seller to select in a
structured manner at least one of said parameters relating
to a product to be listed and to select at least one of said
values corresponding to said selected parameters and to
store selected ones of said parameters and selected ones of
said values corresponding to said selected parameters in
said non pre-catalogued-product database to create a listed
product; and
a non pre-catalogued product description engine
configured to provide for each said listed product, human-
readable descriptions of said selected non pre-catalogued
parameters and corresponding selected non pre-
catalogued values, said human readable descriptions
corresponding to selections of said non pre-catalogued
parameters and values made by said listing seller; and
a display providing to a customer, different from the
listing seller, said human readable descriptions of said listed
product in response to a customer query.
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REJECTIONS ON APPEAL
Claims 32--42 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception without significantly
more. Final Act. 6.
Claims 32--42 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Amazon.com, Inc. (WO 03/038560 A2; published May 8,
2003) ("Amazon"). Final Act. 9.
ANALYSIS
35 US.C. § 101 Rejection
Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under 35 U.S.C. § 101.
In the first step, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355. In the
second step of Alice, 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." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other words, the
second step is to "search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Id. (quoting Mayo, 566 U.S. at 72-73).
The Examiner concludes the claims are directed to an
abstract idea of managing seller listings for items for sale by
prompting them to select one or more parameters and to enter
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Application 14/012,410
values against the selected parameters and other relevant
description related to the items listed for sale and presenting them
to buyer which is "an idea itself' involving mental/human
activity related to commercial practices and solutions which have
been recognized as abstract idea by the courts.
Final Act. 7; see Final Act. 8; see Ans. 3--4. Appellant does not rebut the
Examiner's determination that the claims are directed to an abstract idea.
Appellant contends the claim elements amount to significantly more
than the abstract idea. See Br. 11. Specifically, Appellant argues the
claimed invention recites "a system that assists a user in generating a
product listing for a non pre-catalogued product," and is drawn to
"technological solutions to technical problems arising from the use of
computer," similar to Amdocs (Israel) Limited v. Openet Telecom, Inc., 841
F.3d 1288 (Fed. Cir. 2016). Br. 11. According to Appellant, the claimed
invention is "specifically designed to solve a specific problem - of how to
describe a non pre-catalogued product - that arises from the use of
interconnected computers in communicating information from one user to
another user." Br. 11.
We are not persuaded by Appellant's arguments of Examiner error.
We agree with the Examiner's finding and conclusion that the claimed
invention does not "recite any specific and particular computing device
limited to improvement in a computer or computer network," or any other
"technical solutions in a computer-related technology by allowing computer
performance of a function not previously performable by a computer." Ans.
5.
In Amdocs, our reviewing court found an ineligible abstract idea under
step one of the Alice analysis can still be eligible under step two because it
contains "a sufficient 'inventive concept"' because the claim entailed "an
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unconventional technological solution ( enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases)" and the requirement of generic components
was such that "these generic components operate in an unconventional
manner to achieve an improvement in computer functionality." Amdocs,
841 F.3d at 1300--01. We agree with the Examiner that the present claims,
unlike those in Amdocs, are
not directed to any improvement/solution in a technical field but
instead directed to an abstract idea of providing business solution
related to helping a seller listing for items for sale in a catalog
format and using generic computers as merely tools for
implementing an abstract idea without reciting "significantly
more."
Ans. 5.
Appellant has not responded to the Examiner's determination that the
present claimed invention uses generic computers (i.e., the claimed
computerized system comprising a product database, a server with engines
to prompt user input of product descriptions, and a display) to provide a
business solution to help a seller list items for sale in a catalog rather than a
technological solution to a technological problem.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
independent claim 32, as well as dependent claims 33--42, not separately
argued.
35 US.C. § 102(b) Rejection
Claim 32 recites "a non pre-catalogued product listing engine" and "a
non pre-catalogued product description engine."
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Appellant contends Amazon's "computerized system for sale of
pre-catalogued products" does not teach or suggest "a computerized
system for sale of non pre-catalogued products or a non pre-catalogued
product database." Br. 8. According to Appellant, Amazon's description of
a browsable detail page for a product, and the seller fully identifying the
product to be listed by browsing the detail page, as well as the lack of need
for the seller to supply a detailed product description, does "not show or
suggest either a non pre-catalogued product database, a non pre-catalogued
product listing engine or a non pre-catalogued product description engine."
Br. 9.
We are not persuaded of Examiner error. Specifically, we agree with
the Examiner's finding that Amazon's listing seller being prompted to select
parameters with a corresponding value such as "[U]sed---Like New" and the
value being stored for displaying to a customer describes the claimed "non
pre-catalogued product listing engine," and Amazon's prompting a seller to
enter a human readable description corresponding to selecting parameters
and values such as "got this gift 3 months ago" or "Dust cover missing"
describes the claimed "non pre-catalogued product description engine."
Final Act. 10 (citing Amazon Fig. 3C, 3D).
The claims do not provide any limiting definition for "non
pre-catalogued products having non pre-catalogued parameters," "a non
pre-catalogued product listing engine," or "a non pre-catalogued product
description engine." Appellant's Specification provides examples
describing "the non pre-catalogued parameters, which are not available in
existing catalogs, including, inter alia, the non-inherent parameters relating,
for example to the current condition of the product, for how many years it
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has been in use and the presence of scratches, dents or other defects." Spec.
,r 37. The claimed "non pre-catalogued products" and "non pre-catalogued
parameters," and associated "non pre-catalogued product listing engine" and
"non pre-catalogued product description engine," in light of the
Specification, encompasses products with parameters including current
condition of the product.
Amazon describes the "condition page 330 restates the product to be
listed for sale, and prompts the seller to select from a list 345 of predefined
product condition descriptors," and the "comment 352 may be used to
further specify the item's condition." Amazon 21, 11. 10-12, 22-23. In
other words, as found by the Examiner, Amazon's parameters including "the
current condition of the product, for how many years it has been in use and
the presence of scratches, dents or other defects" describes non pre-
catalogued parameters as defined in Appellant's Specification. Ans. 6-7
( emphasis omitted).
Appellant has not provided persuasive evidence or argument that the
claimed non pre-catalogued products and parameters, encompassing
products with parameters including the current condition of the product, is
not described by Amazon's products with parameters including the current
condition of the product.
Accordingly, we sustain the 35 U.S.C. § 102(b) rejection of
independent claim 32, as well as dependent claims 33--42, not separately
argued.
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DECISION
The Examiner's rejection of claims 32--42 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 32--42 under 35 U.S.C. § 102(b) is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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