Ex Parte Skutta

Patent Trial and Appeal Board

Sep 19, 2017

13972087 (P.T.A.B. Sep. 19, 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.
13/972,087 08/21/2013 Brian Edward Skutta 26454-0106 9964
101373 7590 09/21/2017
Eversheds Sutherland (US) LLP / CEI
999 Peachtree Street
Suite 2300
Atlanta, GA 30309
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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):
patentdocket @ eversheds-Sutherland, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN EDWARD SKUTTA
Appeal 2016-007561
Application 13/972,087
Technology Center 3600
Before MAHSHID D. SAADAT, CATHERINE SHIANG, and
CARL L. SILVERMAN, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—5 and 7—21, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b)
We affirm.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
consumer to business exchange auctions. See generally Spec. 1. Claim 1
exemplary:
1. A system, comprising:
Appeal 2016-007561
Application 13/972,087
at least one memory that stores computer-executable
instructions;
at least one processor configured to access the at least one
memory, wherein the at least one processor is configured to
execute the computer-executable instructions to:
receive a request to offer a vehicle in an auction;
calculate a base trade-in value for the vehicle based at least
in part on market information associated with the vehicle;
provide, to a seller of the vehicle, underwriting based at
least in part on the base trade-in value;
provide, to one or more vehicle resellers, auction
information associated with the vehicle;
receive an exchange bid for the vehicle, wherein the
exchange bid is at least equal to or greater than the calculated
base trade-in value;
determine a final exchange value of the vehicle based at
least in part on the received exchange bid for the vehicle;
provide the final exchange value of the vehicle to the seller
of the vehicle; and receive, from the seller of the vehicle, an
indication of acceptance or rejection of the final exchange value
of the vehicle.
Rejection
Claims 1—5 and 7—21 stand rejected under 35U.S.C. § 101 because
they are directed to patent-ineligible subject matter.
ANALYSIS
We disagree with Appellant’s arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
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appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.1
The Examiner rejects the claims under 35U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 2—5; Ans. 3—
5. In particular, the Examiner finds the claims are directed to the abstract
idea of conducting auctions, such as receiving, determining (analyzing), and
providing information. See Final Act. 4; Ans. 3—5. The Examiner further
finds the claims use generic computer components to perform generic
computer functions. See Final Act. 2, 4—5; Ans. 4—5. The Examiner also
finds the rejected claims are similar to the claims of Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass ’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014), and are materially different from the claims of DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
See Ans. 4—5. Appellant argues the Examiner erred. See Revised Appeal
Brief dated December 11, 2015 (“App. Br.”) 3—8; Reply Br. 2—5.
Appellant has not persuaded us of error. Section 101 of the Patent Act
provides “[wjhoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title.” 35 U.S.C. § 101. That provision‘“contains
an important implicit exception: Taws of nature, natural phenomena, and
abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v. CLSBanklnt’l,
134 S. Ct. 2347, 2354 (2014) (quoting Assn for Molecular Pathology v.
1 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).
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Application 13/972,087
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts. First,
we determine whether the claims at issue are directed to one of
those patent-ineligible concepts. ... If so, we then ask, “[w]hat
else is there in the claims before us?” .... To answer that
question, 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. . . . We have described
step two of this analysis as 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 Corp., 134 S. Ct. at 2355 (internal citation omitted).
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has “treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348-49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction, 776 F.3d at 1347. “In a similar
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Application 13/972,087
vein, we have treated analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.” Elec. Power, 830 F.3d
at 1354 (emphasis added); see also In re TLI Commc ’ns LLCPatent Litig.,
823 F.3d 607, 613 (Fed. Cir. 2016). “And we have recognized that merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.”
Elec. Power, 830 F.3d at 1354 (emphasis added); see also Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 714—15 (Fed. Cir. 2014).
The rejected claims “fall into a familiar class of claims ‘directed to’ a
patent-ineligible concept.” Elec. Power, 830 F.3d at 1353. Contrary to
Appellant’s arguments (App. Br. 5—7; Reply Br. 2—3), the claims are similar
to the claims of Electric Power, and are focused on the combination of
abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354;
Ans. 4. For example, claim 1 is directed to collecting information (“receive
a request. . . ; receive an exchange bid . . . ; receive ... an indication . . .”),
analyzing information (“calculate a base trade-in value . . . determine a final
exchange value . . .”), and presenting the results of abstract processes of
collecting and analyzing information (“provide . . . underwriting . . . ;
provide . . . auction information . . . ; provide the final exchange value . . .”).
See Ans. 4. Similarly, claim 7 is directed to collecting information
(“receiving ... a request. . . ; receiving a bid . . . ; receiving ... an
indication . . .”), analyzing information (“determining ... a base value . . .
determining a final value . . .”), and presenting the results of abstract
processes of collecting and analyzing information (“providing . . . auction
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information . . . providing the final value . . See Ans. 4. Claim 18 is
directed to similar processes. See claim 18; Ans. 4. The dependent claims
are directed to similar functions or processes, and Appellant has not shown
such claims are directed to other non-abstract functions or processes. See
claims 2—5, 8—17, and 19-21.
Appellant’s assertion regarding pre-emption (App. Br. 4—8) is
unpersuasive, because Appellant mischaracterizes Bilski. Bilski states
“[allowing petitioners to patent risk hedging would pre-empt use of this
approach in all fields,” but does not require all patent-ineligible ideas to
“pre-empt use of this approach in all fields,” as Appellant argues (App. Br.
6). Bilski v. Kappos, 561 U.S. 593, 611—12 (2010). Contrary to Appellant’s
assertion, “[w]hile preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility .
. . . Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP, 788 F.3d at 1362—63 (“that 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”); Ans. 4.
Appellant’s argument that the claims axe novel and non-obvious over
prior art (App. Br. 4-7) is unpersuasive, as it is directed to a separate
statutory requirement under 35 U.S.C. § 103.
Regarding Alice step two, contrary to Appellant’s assertion (App.
Br. 5—8; Reply Br. 3—5), Appellant has not shown the claims in this case
require an arguably inventive set of components or methods, or invoke any
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Application 13/972,087
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355.
Contrary to Appellant’s arguments (App. Br. 5—8; Reply Br. 3—5), the
claims are similar to the claims of Electric Power, because they do not
require any nonconventional computer, network, or display components, or
even a “non-conventional and non-generic arrangement of known,
conventional pieces,” but merely call for performance of the claimed
information collection, analysis, and display functions on generic computer
components and display devices. See Elec. Power, 830 F.3d at 1355; see
also claim 1 (reciting “[a] system, comprising: at least one memory that
stores computer-executable instructions; at least one processor configured to
access the at least one memory, wherein the at least one processor is
configured to execute the computer-executable instructions to . . .”)
(emphases added). Claim 7 recites:
receiving, by at least one network interface, a request to
offer an item in an auction;
determining, by one or more processors configured to
execute computer-executable instructions, a base value for the
item based at least in part on market information associated with
the item; [and]
providing, to an item reseller by the at least one network
interface, auction information associated with the item ....
(Emphases added). Claim 18 recites “[o]ne or more computer-readable
media storing computer-executable instructions that, when executed by at
least one processor, configure the at least one processor to perform
operations comprising ...” (emphases added). Appellant has not shown any
of the above claimed memory, processor, or network interface is non­
conventional. As to dependent claims, they call for similar generic
components and devices, and Appellant has not shown such claims require
any non-conventional components or devices. See claims 2—5, 8—17, and
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Application 13/972,087
19-21.
In short, Appellant has not shown the claims, read in light of the
Specification, require anything other than conventional computer and
network technology for collecting, analyzing, and presenting the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
computers and networks that are not even arguably inventive are
“insufficient to pass the test of an inventive concept in the application” of an
abstract idea. See Elec. Power, 830 F.3d at 1355.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claims 1—5 and 7—21.
DECISION
We affirm the Examiner’s decision rejecting claims 1—5 and 7—21.
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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