Ex Parte Sanguinetti

Patent Trial and Appeal Board

Oct 18, 2017

13966215 (P.T.A.B. Oct. 18, 2017)

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.
13/966,215 08/13/2013 Thomas V. Sanguinetti RGFT-002-U S2 4708
19437 7590
P&T LAW, APC
1965 Chatsworth Boulevard
San Diego, CA 92107
EXAMINER
STOPP, COURTNEY L
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
10/20/2017 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):
eofficeaction @ appcoll.com
ky le @ ptlawgroup .com
docketing @ ptlawgroup .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS V. SANGUINETTI
Appeal 2016-0040221
Application 13/966,215
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 3—10, and 21—
36. We have jurisdiction to review the case under 35 U.S.C. §§ 134(a)
and 6.
The invention relates generally to sending “virtual object[s].” Spec.
11-
Claim 1 is illustrative:
1. A computer-implemented method for selecting and
transmitting images to users of a social network, said images
1 The Appellants identify Craze, Inc. as the real party in interest. Br. 3.
Appeal 2016-004022
Application 13/966,215
being associated with gifts to one or more of the users, wherein
the method comprises:
identifying, by one or more processing devices, a first
image associated with a gift given by a first user of a social
network to a second user of the social network;
causing the first image to display on one or more
computing devices operated by one or more additional users of
the social network prior to delivery of the gift to the second user;
and
causing, by the one or more processing devices, a second
image associated with the gift to display on the one or more
computing devices operated by the one or more additional users
only after initiating delivery of the gift to the second user.
Claims 1, 3—10, and 21—36 are rejected under 35 U.S.C. § 101 as
directed to ineligible subject matter in the form of an abstract idea.
We AFFIRM.
PRINCIPLES OF LAW
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 implicit
exceptions: “[ljaws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim 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. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409
U.S. 63, 64 (1972) (“They claimed a method for converting binary-coded
decimal (BCD) numerals into pure binary numerals.”).
The following method is then used to determine whether what the
claim is “directed to” is an abstract idea:
[T]he decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can
be seen—what prior cases were about, and which way they were
decided. See, e.g.. Elec. Power Grp., 830 F.3d [1350], 1353—54
[Fed. Cir. 2016]. That is the classic common law methodology
for creating law when a single governing definitional context is
not available. See generally Karl N. Llewellyn, The Common
Law Tradition: Deciding Appeals (1960). This more flexible
approach is also the approach employed by the Supreme Court.
See Alice, 134 S. Ct. at 2355—57. We shall follow that approach
here.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016) (footnote omitted).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
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scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 67.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. 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.
ANALYSIS
Appellant’s arguments fail to persuade us that the claims are not
directed to an abstract idea because, according to the Appellant, the “claims
will not preempt others from ‘notifying users of a delivery’ in general,” and
because “no factual evidence has been provided to prove that the particular
claim limitations, and combination thereof, are purely conventional.” See
generally Br. 5—9. In accordance with Mayo and Alice, we begin our
evaluation of the Appellant’s assertions with what the claims are “directed
to,” although we note that the Appellant does not challenge expressly the
Examiner’s finding that the claims are “directed to” an abstract idea. See
generally Br. 5—9.
The express language of independent claim 1 indicates that it is
directed to identifying and sending content to one or more destinations, then
sending additional content after an event has occurred. See also Spec. 11
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Application 13/966,215
(“the invention relates to a system, method and computer program product
... for a conveying user to send a virtual object to an electronic ID, virtual
identity or the like of a receiving user and for sending a realized object (e.g.,
real-world tangible product or service) to the physical contact address of the
receiving user without a priori physical contact address of the receiving user
by the conveying user.”). The claim is similar to two cases that our
reviewing court has found are directed to abstract ideas. See Amdocs 841
F.3d at 1294. For example, the Examiner identifies, in support of the
rejection, that independent claim 1 is similar to the claims in Accenture
Global Services, where an event triggers the application of rules to
determine tasks to be completed, much like sending additional content “after
initiating delivery” in the present claims. Answer 9 (citing Accenture
Global Services, GmbHv. Guidewire Software, Inc., 728 F.3d 1336 (Fed.
Cir. 2013) (rehearing en banc denied (Fed. Cir. 2013), cert, denied, 134 S.
Ct. 2871 (Mem) (2014))). Independent claim 1 is also similar to the claims
in Cyberfone, where information is transmitted according to its classification
to multiple destinations. Answer 9—10 (citing Cyberfone Sys., LLC v. CNN
Interactive Grp., 558 Fed. App’x. 988 (Fed. Cir. 2014)).
Thus, because we find that what independent claim 1 is “directed to”
is similar to other claims found by the courts to be “directed to” abstract
ideas, we are unpersuaded that the Examiner erred in asserting that
independent claim 1 is directed to an abstract idea, even without purported
factual evidence.
Turning to the second step of the Alice analysis, because we find that
independent claim 1 is directed to an abstract idea, the claim must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
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element, or combination of elements, which is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
To that end, we are unpersuaded by the Appellant’s argument that the
claims recite “significantly more than an abstract idea,” because, according
to the Appellant, the claims “relate to very particular features that extend far
beyond the abstract idea,” as “two images that serve different purposes
beyond notification.” Br. 8—9. The Appellant indicates significance that the
images “represent[ ]” and “convey [ ] a virtual representation” of specific
meanings to the receiving users, such as to “indicate that fulfillment [had]
occurred.” Spec. H 12, 27, 48 (cited at Br. 3—4). The Appellant has not
shown, however, how the particular meanings imposed on the images
selected for transmission affect the performance of the relevant portion of
the method, which involves identifying images to transmit, and transmitting
the images, some being transmitted only after the occurrence of an event.
We are unclear how what meaning the images are intended to represent is
anything more than an abstraction that does not affect the performance of the
method steps of identifying and transmitting the images. Indeed, the content
of the images would appear to be nothing more than printed matter. See In
reNgai, 367 F.3d 1336, 1338 (Fed. Cir. 2004).
Additionally, independent claim 1 only utilizes what is essentially a
generic computer, which we are unpersuaded is “significantly more.” See
Spec. H 50 (“any other programmable device”), 52 (“[a]ny suitable
programming language”), and 55 (“a general-purpose central processing
unit, multiple processing units, dedicated circuitry for achieving
functionality, or other systems”). “[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
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ineligible claim patent-eligible. The bare fact that a computer exists in the
physical rather than purely conceptual realm is beside the point.” DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
(internal citations and quotation marks omitted).
Dependent claims 3—10 expand on where and when images are
displayed, the nature of the image transmitted, and the means of
communicating the images recited in claim 1. We are unpersuaded that
anything, however, in dependent claims 3—10 purports to improve computer
functioning or “effect an improvement in any other technology or technical
field.” Alice, 134 S. Ct. at 2359. Nor are we persuaded that the claims solve
a problem unique to the Internet, because the Internet is not recited, and not
utilized in all embodiments described in the specification, such as at
paragraphs 24 and 28. See DDR Holdings, 773 F.3d at 1257. The claims
also are not adequately tied to “a particular machine or apparatus.” Bilski v.
Kappos, 561 U.S. 593, 602 (2010).
Because the Appellant has not shown the Examiner erred in asserting
(1) that claims 1 and 3—10 are directed to an abstract idea, and (2) that
nothing in the claims adds an inventive concept, we sustain the Examiner’s
rejection of claims 1 and 3—10 under 35 U.S.C. § 101.
We find no meaningful distinction between independent method
claim 1 and either independent “medium” claim 212 or independent
“system” claim 29; the claims all are directed to the same underlying
invention. We, therefore, sustain the rejection under § 101 of claims 21
2 Claim 21 recites a “non-statutory computer usable medium.” Based on
original claim 17, which recites a “non-transitory computer usable medium,”
we interpret the “non-statutory” term in claim 21 as an inadvertent
typographical error that instead was intended to be “non-transitory.”
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and 29. As the Federal Circuit has made clear, “the basic character of a
process claim drawn to an abstract idea is not changed by claiming only its
performance by computers, or by claiming the process embodied in program
instructions on a computer readable medium.” See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) {citing In re
Abele, 684 F.2d 902 (CCPA 1982)). Additionally, because we find that
dependent claims 22—28 and 30-36 lack additional elements that would
render the claims patent-eligible, we also sustain the rejection under § 101 of
these dependent claims on the same basis as the independent claims from
which they depend.
DECISION
We AFFIRM the rejection of claims 1, 3—10, and 21—36 under 35
U.S.C. § 101.
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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