Ex Parte Tannenbaum

Patent Trial and Appeal Board

Nov 19, 2018

13272826 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/272,826 10/13/2011 David H. Tannenbaum
105758 7590 11/21/2018
Laurence & Phillips IP Law LLP
7327 SW Barnes Road #521
Portland, OR 97225-6119
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.
46816/0322 3010
EXAMINER
JOSEPH, TONY A S
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
11/21/2018 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):
mphillips@lpiplaw.com
docket@lpiplaw.com
mphillips_patlaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID H. TANNENBAUM
Appeal2017-000304 1
Application 13/272,8262
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
1 Our Decision references Appellant's Specification filed October 13, 2011
("Spec."), Appeal Brief filed January 14, 2016 ("Appeal Br."), and Reply
Brief filed October 4, 2016 ("Reply Br."), as well as the Examiner's Answer
mailed August 4, 2016 ("Ans.") and Final Office Action mailed August 14,
2015 ("Final Act."). An oral hearing was held on October 23, 2018, and the
record includes a transcript of the hearing.
2 Appellant identifies Fantod Audio Limited Liability Company, which is
affiliated with Intellectual Ventures Management LLC, as the real party in
interest. Appeal Br. 1.
Appeal2017-000304
Application 13/272,826
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 33-35, 39-45, and 47-50. 3 We have
jurisdiction under§ 6(b). We AFFIRM.
SUBJECT MATTER ON APPEAL
The invention "relates to the delivery of merchandise from a
merchandise provider to a merchandise seeker and more particularly to a
system and method for allowing a merchandise provider to identify
merchandise seekers." Spec. ,r 2. Claims 33 and 43 are the independent
claims on appeal. Independent claim 33, reproduced below, is illustrative of
the claimed subject matter:
33. A system for searching, purchasing, and selling tickets to
a ticketed event, the system comprising:
a server in communication with a search engine, the search
engine configured to receive one or more search queries
associated with the ticketed event and to search one or more
databases for information associated with the ticketed event;
wherein the server is configured to:
instruct the search engine to perform a search of the
one or more databases for one or more desired locations
for the ticketed event, thereby generating a search result;
determine whether a particular desired location in
the search result generated by the search engine matches
any of at least one scheduled location for the ticketed
event; and
in response to no desired location in the search
result matching any of the at least one scheduled location
for the ticketed event, instruct the search engine to
3 The Final Office Action also references claims 36 and 37. Final Act. 1,
3-5, 8. These claims, however, have been canceled (Appeal Br.,
Claims App.), and are not before us on appeal.
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continue searching the one or more databases until a
triggering condition is satisfied.
REFERENCES
The Examiner relies on the following references in rejecting the
claims on appeal:
DeLorme et al. us 5,948,040 Sept. 7, 1999
Bisdikian et al. us 5,974,406 Oct. 26, 1999
Stewart US 2001/0049634 Al Dec. 6, 2001
Keller et al. US 2001/0053989 Al Dec. 20, 2001
REJECTIONS
The Examiner rejects the claims on appeal as follows:
("DeLorme")
("Bisdikian")
("Keller")
I. claims 33-35, 39--45, and 47-50 under 35 U.S.C. § 101 as directed to
non-statutory subject matter;
II. claims 33, 34, 41--44, 47, 49, and 50 under 35 U.S.C. § I03(a) as
unpatentable over Bisdikian and DeLorme;
III. claims 35 and 45 under 35 U.S.C. § I03(a) as unpatentable over
Bisdikian, DeLorme, and Keller;
IV. claims 39 and 48 under 35 U.S.C. § I03(a) as unpatentable over
Bisdikian, DeLorme, and Stewart; and
V. claim 40 under 35 U.S.C. § I03(a) as unpatentable over Bisdikian,
DeLorme, Stewart, and Keller.
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ANALYSIS
Rejection I
An invention is patent eligible if it is 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 an implicit
exception: "[l]aws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014)
(quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
To "distinguish[] patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts," the Supreme Court, in Alice, reaffirmed the
two-step analysis previously set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66 (2012). Alice, 134 S. Ct.
at 2355. The first step of this analysis considers whether a claim is directed
to a patent-ineligible concept, e.g., an abstract idea. Id. (citing Mayo,
566 U.S. at 77). If so, the second step considers whether the claim recites an
inventive concept-an element or combination of elements sufficient to
ensure the claim amounts to significantly more than the abstract idea and
transform the nature of the claim into a patent-eligible application. Id.
(citing Mayo, 566 U.S. at 72-73, 78, 79).
In rejecting the claims under 35 U.S.C. § 101 as directed to
non-statutory subject matter, i.e., subject matter judicially excepted from
statutory subject matter, the Examiner analyzes the claims using this
two-step framework. Final Act. 3--4. Pursuant to the first step, the
Examiner determines the claims are directed to "the abstract idea of
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searching for a triggering condition for a desired location which is (ii) a
method of organizing human activities and (iii) an idea of itself." Id. at 4.
Under the second step, the Examiner determines the claims do not recite
significantly more than the abstract idea because the additional elements of
the claims, alone and in combination, "amount[] to no more than the
recitation of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry." Id.
Appellant argues claims 33-35, 39-45, and 47-50 as a group.
Appeal Br. 4-10; Reply Br. 1-4. \Ve select independent claim 33 as
representative, and the remaining claims of the group stand or fall with
independent claim 33. 37 C.F.R. § 4I.37(c)(l)(iv).
As an initial matter, we are not persuaded of Examiner error by
Appellant's argument that independent claim 3 3 does not preempt all
applications of the abstract idea. Appeal Br. 8-10. Although preemption
may be the concern behind the judicial exceptions to statutory subject
matter, preemption is not the test for eligibility. "The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability. For this reason, questions on preemption are
inherent in and resolved by the§ 101 analysis." Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citation omitted).
Turning to the § 101 analysis prescribed in Alice, Appellant argues the
Examiner errs in determining that independent claim 3 3 is directed to an
abstract idea pursuant to the first step of the analysis. Appeal Br. 4--8;
Reply Br. 1-2. More specifically, Appellant asserts the Examiner's
characterization of the claim ignores limitations and does not reflect the
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claim as a whole. Appeal Br. 4; Reply Br. 1-2. Appellant also alleges the
claim is not directed to an abstract idea, but instead addresses a problem
specifically arising in the realm of search engines and the Internet.
Appeal Br. 7-8; Reply Br. 2. Appellant's arguments are not convincing.
In determining whether a claim is directed to excluded subject matter,
e.g., an abstract idea, the Federal Circuit has explained that "the 'directed to'
inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether 'their character as a whole is directed to
excluded subject matter."' Er1;fish, LLC v. lvficrosqft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). For computer-implemented
inventions in particular, such as the present invention, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Id. at 1335-36.
Here, independent claim 33 recites a system for searching, purchasing,
and selling tickets to a ticketed event. The system comprises a server in
communication with a search engine, and uses these components to perform
the steps of: receiving a search query associated with a ticketed event;
searching a database for information associated with the ticketed event;
searching the database for a desired location for the ticketed event;
determining whether a particular desired location from the search matches a
scheduled location for the ticketed event; and in response to there being no
match, continuing to search the database until a triggering condition is
satisfied. Simply put, independent claim 33 recites a computer system that
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implements a process for searching for a desired location for a ticketed event
that matches a scheduled location for a ticketed event and, in response to
there being no match, continuing to search until a triggering condition is
satisfied. Consequently, the issue is whether the focus of the claim is on a
process for searching for a desired location for a ticketed event or on an
improvement to the computer system.
In this regard, Appellant argues the claimed invention is an
improvement to the computer system because it addresses the problem of a
search engine being able to search only information existing on the Internet
at the time the information is sought. Appeal Br. 7 ( citation omitted).
Indeed, the claimed invention provides the ability to search for a desired
location for a ticketed event that is not yet available by: receiving a search
query associated with a ticketed event, searching for a desired location for
the ticketed event that matches a scheduled location for a ticketed event,
and, when there is no match, continuing to search until a triggering condition
is satisfied. The improvement, however, is to the search methodology, not
to the computer system. Although the claimed invention implements the
improved search methodology via a computer system such that the computer
system can search for a desired location for a ticketed event that is not yet
available, any implementation of the search methodology would be
improved similarly. Accordingly, the claimed invention uses the
components of the computer system as tools to implement an improved
searching process, and the focus of the claimed invention is on a process for
searching for a desired location for a ticketed event for which computers are
invoked merely as a tool, not on an improvement to computer technology.
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Furthermore, we see no meaningful distinction between the concept of
searching for a desired location for a ticketed event and other concepts the
courts have held to be abstract ideas. For example, the concept of searching
for a desired location for a ticketed event is similar to the concept of filtering
content in BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1348 (Fed. Cir. 2016), as both are longstanding, well-known
methods of organizing human behavior.
In view of the foregoing, independent claim 33 is directed to the
abstract idea of searching for a desired location for a ticketed event. Given
that the claim is directed to an abstract idea under the first step of the Alice
analysis, we tum to the second step.
Appellant argues independent claim 33 recites an inventive concept
because the claimed invention is a technical solution to a technical problem.
Reply Br. 3. More specifically, Appellant asserts the claimed invention
addresses the problem of constantly changing information on the Internet by
searching for a desired location for a ticketed event, checking for a match
between a desired location generated by the search and a scheduled location,
and, if there is none, continuing to search until a triggering condition is
satisfied. Id. Appellant's argument is not persuasive of Examiner error.
The fact that the claimed invention recites a computer system, in and
of itself, does not mean the claimed invention addresses a technical problem
or represents a technical solution. Here, the problem of searching through
information that is constantly changing is not a technical problem. Rather,
the problem exists in any realm where information changes, e.g., a search
engine searching the Internet for information or a person manually searching
records that are updated. Moreover, the solution, i.e., the search
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methodology involving the steps of searching for a desired location for a
ticketed event, checking for a match between a desired location generated by
the search and a scheduled location, and, if there is none, continuing to
search until a triggering condition is satisfied, is likewise untechnical, as
performance of these steps does not require a computer.
As we explain above, the second step of the Alice analysis considers
whether the claim "contains an inventive concept sufficient to transform the
claimed abstract idea into a patent-eligible application." Alice, 134 S. Ct.
at 2357 (internal quotations omitted) ( quoting Mayo, 566 U.S. at 72, 80).
Apart from the search methodology, which describes the abstract idea of
searching for a desired location for a ticketed event, independent claim 33
recites a search engine and a server. The Examiner determines, and
Appellant does not refute, that the claimed computer components are generic
computer structure. Final Act. 4; Ans. 3; see also Spec. ,r 34. Although the
computer system may be improved by implementing the recited search
methodology that addresses the problem of searching through information
that is constantly changing, any implementation of the search methodology
would be so improved. Accordingly, the recited computer components are
insufficient to transform the claimed abstract idea into a patent-eligible
application. See Alice, 134 S. Ct. at 2358 ("Given the ubiquity of
computers, wholly generic computer implementation is not generally the sort
of 'additional featur[ e]' that provides any 'practical assurance that the
process is more than a drafting effort designed to monopolize the [ abstract
idea] itself."' ( alteration in original) (internal citation omitted) ( quoting
Mayo, 566 U.S. at 77)).
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In view of the foregoing, Appellant has not persuaded us the
Examiner erred in determining that independent claim 33 is patent ineligible.
We, therefore, sustain the Examiner's rejection of independent claim 33
under 35 U.S.C. § 101, with claims 34, 35, 39-45, and 47-50 falling
therewith.
Rejection II
Each of independent claims 33 and 43 recites "determine whether a
particular desired location in the search result generated by the search engine
matches any of at least one scheduled location for the ticketed event."
Appellant argues the Examiner has not shown that the combined teachings
of Bisdikian and DeLorme would have resulted in this limitation.
Appeal Br. 13; Reply Br. 5. Appellant's argument is persuasive.
In rejecting independent claims 33 and 43, the Examiner relies on
DeLorme for teaching the disputed limitation. Final Act. 5. Namely, the
Examiner acknowledges "Bisdikian does not teach a search query regarding
whether at least one scheduled location for a ticketed event matches the
desired location," and finds "DeLorme teaches searching a particular desired
location for a concert/ticketed event to determine whether there is an event
of interest or concert in the one or more desired locations." Id. (citations
omitted). According to the Examiner, DeLorme's teaching of searching for
events in a particular location discloses this claim limitation because "the
event ticket and the event ticket location are not mutually exclusive."
Ans. 6.
Even if we agree that DeLorme' s teaching of searching for a ticketed
event in a particular location is tantamount to searching for a desired
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location for a ticketed event so as to generate a search result including a
desired location, the Examiner has not shown that DeLorme teaches
comparing the desired location in the search result with a scheduled location
for the ticketed event, as the disputed limitation requires. DeLorme' s
teaching of searching for a ticketed event in a particular location does not
contemplate what is done with the search result, and therefore, does not
teach comparing the desired location in the search result to a scheduled
location.
In view of the foregoing, the Examiner has not shown that the
combined teachings of Bisdikian and DeLorme would have resulted in the
limitation of independent claims 33 and 43 reciting "determine whether a
particular desired location in the search result generated by the search engine
matches any of at least one scheduled location for the ticketed event." We,
therefore, do not sustain the Examiner's rejection under 35 U.S.C. § 103(a)
of independent claims 33 and 43 and claims 34, 41, 42, 44, 47, 49, and 50
depending therefrom.
Rejections 111-V
The Examiner's rejections of claims 35, 39, 40, 45, and 48 suffer from
the same deficiency as the Examiner's rejection of the independent claims.
Final Act. 7-9. Accordingly, we similarly do not sustain the Examiner's
rejections of claims 35, 39, 40, 45, and 48 under 35 U.S.C. § 103(a).
DECISION
The Examiner's decision to reject claims 33-35, 39-45, and 47-50
under 35 U.S.C. § 101 is affirmed.
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The Examiner's decision to reject claims 33-35, 39-45, and 47-50
under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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