Ex Parte Varadarajan et al

Patent Trial and Appeal Board

Oct 20, 2017

14040149 (P.T.A.B. Oct. 20, 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.
14/040,149 09/27/2013 Dilip Varadarajan 2043.776US3 3978
49845 7590 10/24/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
10/24/2017 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):
USPTO@SLWIP.COM
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DILIP VARADARAJAN, NAOKI OGISHI,
BALAJI THALLAM PARTHASARATHY,
BIN GONG, and DANNY CHANG1
Appeal 2016-008219
Application 14/040,149
Technology Center 3600
Before JOHN A. EVANS, KARA L. SZPONDOWSKI, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
1 This paper is captioned by inventor name according to our pre-AIA
convention. The Applicant/Appellant and real party in interest is eBay, Inc.
(See App. Br. 2.)
Appeal 2016-008219
Application 14/040,149
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 2—6, 8—12, and 14—18, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to “a method and system to request
supplemental trust information (STI), from over a network, from a third
party trust provider.” (Abstract.) Claim 2, reproduced below, exemplifies
the subject matter on appeal:
2. A machine-implemented method comprising:
comparing a criterion from an item listing that describes an
item and a corresponding data field from supplemental independ­
ent information, the supplemental independent information pro­
vided by a third party, wherein the item listing is at a network-
based marketplace, wherein the network-based marketplace in­
cludes a listing management application to provide an a [sic] list­
ing authorship service, and wherein a seller is a client of the net-
work-based marketplace that is responsible for the item listing
via the listing management application;
determining that the criterion and the corresponding data field
do not match; and
noting an item misrepresentation for the item listing in re­
sponse to the determination that the criterion and the data field
do not match.
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Appeal 2016-008219
Application 14/040,149
THE REJECTION
Claims 2—6, 8—12, and 14—18 stand rejected under 35 U.S.C. § 101
“because the claimed invention is directed to non-statutory subject matter.”
(Final Act. 4.)
ANALYSIS
The Examiner finds the claims “directed to presenting item
information which is considered to be an abstract idea inasmuch as such
activity is considered both a fundamental economic practice and a method of
organizing human activity.” (Final Act. 4—5.) The Examiner further finds
the claim elements “when taken in combination, together do not offer
substantially more than the sum of the functions of the elements when each
is taken alone.” (Id. at 5.) The Examiner explains that “[t]he claims only
manipulate abstract data elements” and that “[tjaking the elements both
individually and as a combination, the computer components at each step of
the . . . process perform purely generic computer functions.” (Ans. 4.)
Appellant argues (1) “the rejections are impermissibly based on the
Examiner’s opinion” which “is not substantial evidence needed to support
such a rejection, but rather an arbitrary and capricious decision that warrants
reversal” (App. Br. 8); (2) “the Examiner failed to follow the Office’s
guidance in selecting a court case similar to the present claims needed to
maintain such rejections” (id.); (3) “the novelty of the claims precludes the
conclusion that they are directed to a ‘fundamental economic activity,’ and
because the claims “are directed to automatically modifying a work of
authorship, they do not organize human activity” (id. at 9); and (4) “the
Examiner was again conclusory in asserting that the other elements of the
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Appeal 2016-008219
Application 14/040,149
claim do not offer significantly more than the alleged abstract idea” such
that “Appellant has been deprived of a reasoned basis by which to assess the
accuracy of the Examiner’s statements” (id.).
We agree with and adopt the Examiner’s findings and the conclusion
that the claims are directed to unpatentable subject matter.
Claim 1 is directed a method that compares a criterion from an item
listing to corresponding data from “supplemental independent information,”
determin[es] whether the information matches, and, in the case of a non­
match, “not[es] an item misrepresentation.” Essentially, the claimed system
compares information about an item with information from another source to
identify inaccuracies. We agree that this claim is directed to the abstract
concept of “presenting item information,” in particular, errors or
inconsistencies in an item description, and further observe that the abstract
idea is implemented in the claims as a set of data gathering and manipulating
steps of the type that have been deemed abstract by the courts, including in
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. Appx. 950,
954—55 (Fed. Cir. 2014), cited by the Examiner.
Appellant’s argument (1) is not persuasive because the USPTO carries
its procedural burden when its rejection satisfies the requirements of 35
U.S.C. § 132 by notifying the applicant of the reasons for rejection,
“together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application.” In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original, quoting 35
U.S.C. § 132). Here, the Examiner notified Appellant that the claims are
directed to an ineligible abstract idea, specifically, to the idea of “presenting
item information,” and that “[t]he elements of the instant process, when
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Appeal 2016-008219
Application 14/040,149
taken in combination, together do not offer substantially more than the sum
of the functions of the elements when each is taken alone.” (Final Act. 4—5.)
Thus, Appellant has been notified of the reasons for the rejection with such
information “as may be useful in judging of the propriety of continuing the
prosecution of [the] application,” which is all that is required from a
procedural perspective. Appellant does not persuasively explain why the
Examiner’s identification of the idea is incorrect, or why the identified idea
is not abstract.
Appellant’s argument (2) is not sufficient to show Examiner error
because the guidelines are not legal requirements. See 79 Fed. Reg. 74,619
(“This Interim Eligibility Guidance has been developed as a matter of
internal Office management and is not intended to create any right or
benefit, substantive or procedural, enforceable by any party against the
Office. Rejections will continue to be based upon the substantive law, and it
is these rejections that are appealable. Failure of Office personnel to follow
this Interim Eligibility Guidance is not, in itself, a proper basis for either an
appeal or a petition.”); cf In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005)
(“The MPEP and Guidelines are not binding on this court.”).
Appellant’s argument (3) is not persuasive because “a claim for a new
abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Appellant’s assertion that the
claims “are directed to automatically modifying a work of authorship” is
unavailing because such limitations are not found in the claims and because
Appellant fails to explain why, even if the claims were so limited, such a
limitation would make the claims sufficiently concrete.
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Application 14/040,149
Finally, regarding Appellant’s argument (4), we do not agree that the
Examiner’s finding that the claims lack “significantly more” was
conclusory. Aside from the “comparing,” “determining,” and “noting,” the
claims merely identify the source of the supplemental information, place the
listing in a network-based marketplace that includes a listing management
application, and state that the seller is a client of the marketplace. We fail to
see, and Appellant does not explain, how any of those additional claim
recitations, alone or in combination, would amount to an inventive step.
Because Appellant does not persuade us the Examiner erred in
rejecting the claims under Section 101, the rejection is sustained.
DECISION
The rejection of claims 2—6, 8—12, and 14—18 under 35 U.S.C. § 101
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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