Ex Parte Scherzer

Patent Trial and Appeal Board

Apr 21, 2017

14173410 (P.T.A.B. Apr. 21, 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.
14/173,410 02/05/2014 Shimon B. Scherzer 12125.0027-01000 3786
22852 7590 04/25/2017
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
04/25/2017 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIMON B. SCHERZER
Appeal 2015-008040
Application 14/173,4101
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shimon B. Scherzer (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Final Rejection of claims 1—5, 8—15, 18—25, and 28—30. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies WEFI, INC as the real party in interest. App. Br.
3.
Appeal 2015-008040
Application 14/173,410
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A network capacity management system, comprising:
at least one processor;
a display; and
at least one memory device comprising instructions which, when
executed by the at least one processor, cause the network
capacity management system to perform the steps of:
determining network capacity associated with a first
wireless network;
determining network capacity associated with a second
wireless network;
outputting data generated based, at least in part, on the first
wireless network capacity determination and the second wireless
network capacity determination;
receiving one or more bids associated with at least some
of the network capacity associated with the first wireless
network;
assigning at least some of the network capacity associated
with the first wireless network to a purchaser system associated
with the second wireless network based, at least in part, on the
one or more received bids;
receiving data representative of an effect associated with
the assigning of at least some of the network capacity associated
with the first wireless network to the purchaser system associated
with the second wireless network;
receiving one or more adjusted bids associated with at
least some of the network capacity associated with the first
wireless network based on the received data; and
displaying a simulation representative of the effect
associated with the assigning of at least some of the network
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Application 14/173,410
capacity associated with the first wireless network to the
purchaser system associated with the second wireless network.
THE REJECTION
The following rejection is before us for review:
Claims 1—5, 8—15, 18—25, and 28—30 are rejected under 35 U.S.C. §101
as being directed to non-statutory subject matter.
ISSUE
Did the Examiner err in rejecting claims 1—5, 8—15, 18—25, and 28—30
under 35 U.S.C. §101 as being directed to non-statutory subject matter?
ANALYSIS
The Appellant argued these claims as a group. See App. Br. 9-17.
We select claim 1 as the representative claim for this group, and the
remaining claims 2—5, 8—15, 18—25, and 28—30 stand or fall with claim 1.
37 C.F.R. §41.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355. The Examiner found claim 1 is
“directed to the abstract idea of business principles” (Final Act. 2) as well as
a combination of “gathering data with respect to network capacities
associated with first and second wireless networks and outputting said data”
(Ans. 4) and “managing an auction (bidding) process” (id.).
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Application 14/173,410
First, the Appellant (App. Br. 10-11) argues that “business rules” are
not abstract ideas ineligible for patenting under §101.
The case law suggests otherwise. See Accenture Global Servs., GmbH
v. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013)
(claims reciting “generalized software components arranged to implement an
abstract concept [of generating insurance-policy-related tasks based on rules
to be completed upon the occurrence of an event] on a computer” not patent
eligible). See also, e.g., The Jewelry Channel, Inc. USA d/b/a Liquidation
Channel v. America's Collectibles Network, Inc., 2014 WL 5386840, at *11
(PTAB 2014), affd. 2017 WL 104471 (Mem) (Fed. Cir. 2017) ("conducting
a reverse auction by adjusting the price and available quantities of units
based on monitored preliminary indicators, i.e., characteristics of the calls
and the auction's progress").
Second, the Appellant (App. Br. 11) argues that the claim is not
directed to “the abstract idea of ‘business principles.’”
The Appellant (App. Br. 11—13) contends that the claim does not pre­
empt the idea of “business principles” because it recites
outputting data generated based, at least in part, on the first
wireless network capacity determination and the second wireless
network capacity determination;
receiving one or more bids associated with at least some of the
network capacity associated with the first wireless network;
assigning at least some of the network capacity associated with the
first wireless network to a purchaser system associated with the
second wireless network based, at least in part, on the one or more
received bids;
receiving data representative of an effect associated with the
assigning of at least some of the network capacity associated with
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Application 14/173,410
the first wireless network to the purchaser system associated with
the second wireless network;
receiving one or more adjusted bids associated with at least some
of the network capacity associated with the first wireless network
based on the received data; and
displaying a simulation representative of the effect associated with
the assigning of at least some of the network capacity associated
with the first wireless network to the purchaser system associated
with the second wireless network.
Claim 1.
However, with respect to the pre-emption concern, “[w]hat matters is
whether a claim threatens to subsume the full scope of a fundamental
concept, and when those concerns arise, we must look for meaningful
limitations that prevent the claim as a whole from covering the concept’s
every practical application.” CLSBanklnt’l. v. Alice Corp. Pty. Ltd., Ill
F.3d 1269, 1281 (Fed. Cir. 2013) (Lourie, J., concurring). Here, the more
limited way of implementing the abstract idea narrows the abstract idea so
that it is described at a lower level of abstraction. It does not render the
abstract idea to which the claim is directed any less an abstract idea. Pre­
emption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
“significantly more” to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294.
Thus, broad claims do not necessarily raise § 101 preemption
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Application 14/173,410
concerns, and seemingly narrower claims are not necessarily
exempt.
Id. See also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (“[wjhile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”).
The Appellant (App. Br. 12—13) contends that the Examiner has failed
to present a prima facie case supported by factual evidence.
Consideration of evidence in making a determination under the first
step of the Alice framework has merit. See Apple, Inc. v. Ameranth, Inc.,
842 F.2d 1229 (Fed. Cir. 2016). But there is no requirement that examiners
must provide evidentiary support in every case before a conclusion can be
made that a claim is directed to an abstract idea. See, e.g., para. IV “July
2015 Update: Subject Matter Eligibility” to 2014 Interim Guidance on
Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014)
(“The courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law. Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception, and in most cases
resolve the ultimate legal conclusion on eligibility without making any
factual findings.”) (emphasis added, footnote omitted). Evidence may be
helpful in certain situations where, for instance, facts are in dispute. But it is
not always necessary. It is not necessary in this case.
Rather, we need only look to other decisions where similar concepts
were previously found abstract by the courts. See Amdocs (Israel) Ltd. v.
Openet Telecom, Ltd., 841 F.3d 1288, 1294 (Fed. Cir. 2016):
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Application 14/173,410
[A] search for a single test or definition in the decided cases
concerning § 101 from this court, and indeed from the Supreme
Court, reveals that at present there is no such single, succinct,
usable definition or test [for, what an ‘abstract idea’
encompasses].
Instead of a definition, then, the 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., Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016)] [n. 2]] 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) Ltd., 841 F.3d 1288 at n.2.]
See also Robert W. Bahr, Deputy Comm’r for Patent
Examination Policy, USPTO, Recent Subject Matter Eligibility
Decisions (Enfish, LLC v. Microsoft Corp. and TLI Commc ’ns
LLC v. A. V. Automotive, LLC) (2016) at 2: “In summary, when
performing an analysis of whether a claim is directed to an
abstract idea (Step 2A), examiners are to continue to determine
if the claim recites (i.e., sets forth or describes) a concept that is
similar to concepts previously found abstract by the courts.
In that regard, a business rule involving the concept of “managing an
auction” (see Ans. 3) to which the claim has been found directed to is similar
to, for example, “[performing a sales transaction over the Internet, or in
conjunction with an auction and a competitive activity" (Priceplay.com, Inc.
v. AOL Advert., Inc., 83 F. Supp. 3d 577, 581 (D. Del. 2015), affd, 627 F.
App'x 925 (Fed. Cir. 2016)) which has been found to be an abstract idea.
Third, the Appellant (App. Br. 13—14) argues that Examiner has
acknowledged that, in light of the prior art, the claim “embrace[s] alternative
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ways for implementing business schemes.” In other words, the Appellant is
arguing that claim 1 provides for a novel way of implementing a business
scheme. But “[t]he ‘novelty’ of any element or steps in a process, or even of
the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter.” Diamond v. Diehr, 450 U.S. 175, 188—89 (1981).
Step two is “a 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.’” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)).
The Appellant argues that “The Claims Recite Significantly More
than the Purported Abstract Idea” (App. Br. 14) because “The Claims
Improve Technical Problems Relating to Computer Networks” (App. Br.
15—16) and “The Claims Involve an Inventive Concept” (App. Br. 16—17).
First, the Appellant argues that
the claims recite systems and processes for, in some aspects,
improving bandwidth allocation among multiple networks and
simulating the effects of such allocations. In certain
embodiments, these allocations are based in part on technical
aspects of the networks such as network types, data speeds,
historical data, coverage elements, and the like, The claims do
not encompass a generalized problem and merely carry out the
process over the internet in a routine fashion. Instead, the present
application solves problems inherent in the fabric of computer
networks themselves.
App. Br. 15.
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Application 14/173,410
However, the scope of claim 1 is not so limited; that is, claim 1 does
not require that that any allocation be performed. Claim 1 describes
determining network capacities “associated” with two wireless networks,
receiving a bid for some of a first network capacity (associated with the first
wireless network), “assigning” some of said first network capacity to a
purchaser system associated with a second wireless network, “receiving data
representative of an effect associated with the assigning of at least some of
the network capacity associated with the first wireless network to the
purchaser system associated with the second wireless network”; and
receiving an adjusted bid for some of said first network capacity based on
said received data. Finally, “the effect associated with the assigning of at
least some of the network capacity associated with the first wireless network
to the purchaser system associated with the second wireless network” is
displayed. Claim 1 does not describe a “claimed system [that] allocates
bandwidth to different networks and simulates the effects of that allocation
for improving efficiency” as the Appellant argues. App. Br. 16. Claim 1 is
not limited so as to direct it to a technical problem related to computer
networks.
Second, the Appellant argues that “[i]n addition to solving technical
problems related to computer networks, the claims are allowable under
§101 because they embrace an inventive concept.” App. Br. 16. In that
regard, the Appellant points out that “[t]he Final Office Action does not
reject the claims under the novelty or nonobvious provisions of 35 U.S.C.
Moreover, the Examiner withdrew §§102 and 103 rejections in response to
Appellant's Amendment filed June 13, 2014.” App. Br. 16. This is
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Application 14/173,410
unpersuasive. See the discussion above citing Diamond v. Diehr, 450 U.S.
175, 188-89 (1981).
The Reply Brief makes similar arguments. But the Appellant also
adds for the first time that
[t]he dependent claims recite additional elements sufficient to
ensure that the combination of elements amounts to significantly
more than an abstract idea. In this case, dependent claims 2-5, 8-
10, 12-15, 18-20, 22-25, and 28-30 each recites unique elements
that amount to significantly more than the abstract idea of
managing an auction process. For example, claims 3,13, and 23
recite that determining the network capacity associated with the
first wireless network comprises analyzing past user experiences
of data speeds associated with the first wireless network. Claims
8, 18, and 28 recite that assigning the network capacity is further
based on one or more of: past experiences associated with the
purchaser system associated with the second wireless network,
past experiences associated with a selling system associated with
the first wireless network, legal obligations associated with the
purchaser system associated with the second wireless network,
or legal obligations associated with the selling system associated
with the first wireless network.
Reply Br. 5.
Nevertheless, we do not see and the Appellant does not adequately
explain how, for example, assigning a network capacity based on past
experiences adds anything significant to patentably transform the abstract
idea of a business rule involving the concept of “managing an auction” (see
Ans. 3). It is simply an effort to identify certain desired information. It does
not solve a technological problem. Cf. LendingTree, LLC v. Zillow, Inc., 656
F. Appx. 991, 997 (Fed. Cir. 2016) (“The claims here, however, are not
designed to solve a technological problem. Rather, they merely provide a
generic, technological environment (i.e., computers and the Internet) in
which to carry out the abstract idea of coordinating loans.”)
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Application 14/173,410
The remaining arguments are unpersuasive.
For the foregoing reasons, we are unpersuaded as to error in the
rejection.
DECISION
The decision of the Examiner to reject claims 1—5, 8—15, 18—25, and
28—30 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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