Ex Parte Tarinelli et al

Patent Trial and Appeal Board

Jun 29, 2018

11187310 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111187,310 0712212005
20995 7590 07/03/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Gillian Jetson Tarinelli
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.
EXIN.106A 8990
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GILLIAN JET SON T ARINELLI, PHILLIP LLOYD DUNHAM,
SUNIL SITAULA, and ALDEN ALMAGRO
Appeal2017-001433
Application 11/187,310 1
Technology Center 3600
Before JOSEPH L. DIXON, SCOTT E. BAIN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 8-10, and 52-56, and 59---65, which constitute
all claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify Orbitz, LLC as the real party in interest. App. Br. 2.
Appeal2017-001433
Application 11/187 ,310
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to online purchase of travel-related
products. Spec. i-fi-f l, 4. According to the Specification, consumers may
find the "requirement of creating a registration account" when making
online travel purchases to be "time-consuming and undesirable," and
therefore consumers may abandon the purchase before it is completed. Id.
i1 4. Appellants' invention is an "improved guest registration" process and
system for the online purchase of travel products. Id. i-fi-f l, 4. Claims 1 and
65 are independent. Claim 1 is representative of the invention and the
subject matter of the appeal, and reads as follows:
1. A method, implemented on a purchase application server,
compnsmg:
receiving user identifying information from a user during
an on-line purchasing process;
utilizing the user identifj;ing information to determine
whether or not the user has made prior product purchases via
the host website;
establishing a new member registration account, on the
purchase application server, if the user has not made prior
purchases via the host website and storing the user identifying
information in the new member registration account;
identifying an existing member registration account
associated with the user if the user has made prior product
purchases via the host website;
completing a product purchase; and
storing information regarding the new product purchase
in one of the existing member registration account and the new
registration account without the user having authenticated.
App. Br. 19 (Claims App'x) (emphases added).
2
Appeal2017-001433
Application 11/187 ,310
The Rejections on Appeal
Claims 1, 8-10, and 52-56, and 59-65 are rejected under 35 U.S.C.
§ 101 as directed to ineligible subject matter. Final Act. 3-5; Ans. 3.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Brief are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are not persuaded
the Examiner erred. We adopt as our own the findings and reasons set forth
in the rejection from which the appeal is taken and in the Examiner's
Answer, and provide the following discussion for highlighting and emphasis.
Rejection Under 35 USC§ 101
The Examiner rejects the claims as being directed to the abstract idea
of using prior purchase information in an online purchasing process, which
is both a "fundamental economic practice" and "method of organizing
human activity." Final Act. 3--4; Ans. 3. Appellants argue the Examiner
erred because, even if the claims encompass an abstract idea, they "contain
significantly more than the alleged abstract idea."2 App. Br. 12. We,
however, are not persuaded of error.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
2 Appellants argue the claims as a single group, and we choose claim 1 as
representative of the group. 37 C.F.R. § 41.37(c)(iv).
3
Appeal2017-001433
Application 11/187 ,310
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court has long held that this
provision contains an implicit exception: "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589-590 (2013)). The
Court has set forth a two-part inquiry to determine whether this exception
applies. First, we must "determine whether the claims at issue are directed
to one of those patent-ineligible concepts." Alice, 134 S. Ct. at 2355
(citation omitted). Second, ifthe claims are directed to one of those patent-
ineligible concepts, 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, 77-78 (2012)). Put differently, we
must search the claims for an "inventive concept," that is, "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 (quoting Mayo, 566 U.S. at 72-
73).
Regarding step one of the Alice analysis, Appellants offer no
arguments. App. Br. 12. Although Appellants contend they do not
"conced[ e ]" the "accuracy" of the Examiner's analysis regarding step one,
Appellants do not identify any error in the Examiner's determination that the
claims are directed to an abstract idea, and we discern none on the record
4
Appeal2017-001433
Application 11/187 ,310
before us. Id.; Final Act. 3--4. Accordingly, we proceed to step two of
Alice.
In the second step of our analysis under Alice,
we must examine the elements of the claim to determine whether
it contains an "inventive concept" sufficient to "transform" the
claimed abstract idea into a patent-eligible application. A claim
that recites an abstract idea must include "additional features" to
ensure "that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."
Alice, 134 S. Ct. at 2357 (internal citations omitted). Appellants argue the
steps in claim 1 of "utilizing the user identifying information," "establishing
a new member registration account" under certain conditions, "identifying
an existing member registration account" under certain conditions, and
"storing information regarding the new product purchase" are "not routine or
conventional to the on-line purchasing process" and therefore add something
more to the abstract idea. App. Br. 13-14. Further, Appellants argue there
is "no pre-Internet analog" for the process recited in the claims. Id. at 14.
As the Examiner finds (Ans. 3--4), however, Appellants' claimed
methods are carried out by "generic computer components." Spec. i-fi-115-17
(describing generic, conventional computing elements). The use of generic
computer components "do not alone transform an otherwise abstract idea
into patent-eligible subject matter." FairWarning IP, LLC, v. Iatric Sys.,
Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, LLC, v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)); see also 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 [ ] on a computer" not patent eligible).
5
Appeal2017-001433
Application 11/187 ,310
Moreover, we, like the Examiner, do not find the claims add
improvements of a technical nature, such as those found to be patent eligible
in DDR Holdings. Ans. 4--5; Reply Br. 3-5. We further agree with the
Examiner's finding that (absent the conventional "on-line" elements), the
claimed methods could be carried out without "technology" at all, because
elements such as "account," "storing," "purchase," and "registration" simply
describe basic sales transaction techniques. Ans. 4 (citing Spec. i-f 25).
Thus, contrary to Appellants' argument, the claims are not directed to a
problem that arises specifically in the context of computer networks. Id.
We are also unpersuaded by Appellants' argument that the claims do
not preempt the alleged abstract idea of "on-line purchasing." App. Br. 15-
16. Although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
FairWarning IP, 839 F.3d at 1098 (quotingAriosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat
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."). Where, as here, "a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework ... preemption
concerns are fully addressed and made moot." Ariosa Diagnostics, 788 F.3d
at 1379.
Finally, in the Reply Brief, Appellants argue that the claims are
similar to those found not to constitute an abstract idea in Enfzsh and McRO.
Reply Br. 2-3 (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
6
Appeal2017-001433
Application 11/187 ,310
1299, 1312 (Fed. Cir. 2016)). Appellants, however, do not describe any
advance in hardware or software that allows a computer to operate faster or
more efficiently, as in Enfzsh. See Enfzsh, 822 F.3d at 1330-33, 1336
(claims "directed to a specific improvement to the way computers operate,
embodied in the self-referential table"). Nor do Appellants identify any
improvement in a technological process, as in McRO. McRO, 837 F.3d at
1299 (claims directed to a particular "technological improvement over the
existing, manual 3-D animation techniques"). Appellants' claims, in
contrast, relate essentially to data gathering. See, e.g., Elec. Power Grp.
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that
"collecting information, analyzing it, and displaying certain results of the
collection and analysis" are "a familiar class of claims 'directed to' a patent-
ineligible concept"); see also In re TL! Commc 'ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016). 3
Accordingly, for the foregoing reasons, we sustain the rejection of
claims 1, 8-10, 52-56, and 59-65 as directed to ineligible subject matter.
DECISION
We affirm the Examiner's decision rejecting claims 1, 8-10, and 52-
56, and 59-65.
3 Appellants also briefly assert that "automatically generating a password,"
as recited in dependent claim 9, further adds something more to the abstract
idea, but this argument is unpersuasive for the same reasons discussed as to
claim 1.
7
Appeal2017-001433
Application 11/187 ,310
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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
8