Ex Parte Zhao

Patent Trial and Appeal Board

Jun 14, 2018

13477811 (P.T.A.B. Jun. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/477,811 05/22/2012 LucyM. Zhao
132906 7590 06/18/2018
Haynes & Boone, LLP (70481)
2323 Victory Ave. #700
Dallas, TX 75219
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.
70481.563 (Pl518US1) 1099
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/18/2018 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCY M. ZHAO
Appeal2017-003102
Application 13/4 77,811
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-21. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is PayPal, Inc. (App.
Br. 2).
Appeal2017-003102
Application 13/477,811
STATEMENT OF THE CASE
Appellant's disclosure describes a method and system for providing a
user with a previous shopping list that was used at a location where the user
is presently shopping. Spec. 1:9--10. Exemplary claim 8 under appeal reads
as follows:
8. A method comprising:
storing, in a memory, account information for a user, the
account information including a list of shopping locations for the
user and a list of products previously purchased at each of the
shopping locations;
receiving a request from the user launching a mobile app
from a user device;
detecting, electronically by a Global Positioning System
(GPS) device included with the user device of the user, a location
of the user device of the user;
determining, electronically by one or more processor(s), a
present shopping location of the user based on the location of the
user device of the user;
receiving, electronically by the processor(s) from the user
device via an electronic communication network, a
communication from the user including a request for a list of
products previously purchased related to the present shopping
location;
accessing, electronically by the processor(s), the account
information of the user;
finding, electronically by the processor(s), the present
shopping location from the list of shopping locations;
retrieving, electronically by the processor( s ), the list of
products previously purchased at the present shopping location;
retrieving, electronically by the processors( s ), prices of a
list of products previously purchased at another shopping
location different from the present shopping location; and
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communicating, electronically by the processor( s) via the
electronic communication network, the list of products
previously purchased related to the present shopping location
along with the prices of the list of products previously purchased
at the another shopping location to the user device of the user to
be displayed at the user device.
REJECTION
Claims 1-21 stand rejected under 35 U.S.C. § 101 as not being
directed to patent-eligible subject matter. See Final Act. 5---6.
PRINCIPLES OF LAW
The Supreme Court has 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." Alice
Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). According to this framework, a determination is made to consider
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas). See id. If so, a further
determination must be made to 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. Id.
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Application 13/477,811
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments (Appeal Brief) that the Examiner has erred. We are unpersuaded
by Appellant's contentions and concur with the findings and conclusions
reached by the Examiner as explained below.
Independent claims 1, 8, and 15 recite a system, a method, and a
computer program product for location-based shopping, and are, therefore,
directed to one of the four statutory categories of patentability enumerated
by 35 U.S.C. § 101 (process, machine, manufacture, or composition of
matter). See Final Act. 5. Applying the first part of the Alice analysis, the
Examiner finds the claims are directed to the abstract idea of location-based
shopping ("a method of organizing human activities involving mathematical
correlations"). See id.; see also Ans. 3--4. Applying the second part of the
Alice analysis, the Examiner finds the additional elements or combination of
elements in the claim other than the abstract idea itself amount to no more
than the application of the abstract idea on a generic computer. See Final
Act. 6; see also Ans. 4--5. The Examiner made similar findings regarding
dependent claims 2-7, 9-14, and 16-21. See Final Act. 5---6; see also
Ans. 4--5.
According to the first step of the Alice analysis, we must determine
"whether the claims at issue are directed to one of those patent-ineligible
concepts," including abstract ideas. Alice, 134 S. Ct. at 2355. In performing
this determination, we ask whether the focus of the claims is on a 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
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tool. Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2358-59).
Appellant argues the Final Office Action provides no evidence or
reasons to support the conclusion that the claims correspond to an abstract
idea and simply makes the conclusory statement that the claims are "directed
to the abstract idea of location-based shopping which is a method of
organizing human activities involving mathematical correlations." See App.
Br. 9-11 ( citing Final Act. 5). Appellant additionally argues the claims are
not directed to an abstract idea because the claimed system is not merely a
generic computer that performs conventional steps of a mathematical
correlation. See App. Br. 11. Instead, Appellant argues that the claimed
system is specifically configured to perform specific operations, including
determining a present location of a user and communicating, to the user, a
list of products previously purchased and related to the present location and
prices of the products at another location. See id. Appellant further argues
the claims are directed to a solution necessarily rooted in computer
technology to overcome a problem specifically arising in the realm of
computer networks, similar to the claims at issue in DDR Holdings, LLC v.
Hotels.com, 773 F.3d 1245, 1257 (Fed. Cir. 2014), which were also held to
be patent-eligible. See App. Br. 12.
We are not persuaded by Appellant's arguments. Considering the
recited elements of the claims in light of Appellants' Specification, we agree
with the Examiner's finding that the claims are directed to an abstract idea of
location-based shopping. See Final Act. 5---6; see also Ans. 3--4. In
particular, we find the claim elements recite steps for storing, accessing,
communicating, and displaying location-based shopping information (i.e.,
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list of products previously purchased at the present shopping location and
prices of a list of products previously purchased at another shopping location
different from the present shopping location). Based on the recited
elements, the claims are directed to storing, analyzing, communicating, and
displaying location-based shopping information, which is an idea of itself
and which is similar to abstract ideas previously identified by the courts.
See e.g., Elec. Power Grp LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016) (holding that claims involving collecting and analyzing
information and displaying results of the collection and analysis are drawn to
an unpatentable abstract idea). Further, the recited claim elements could
occur outside the context of computer technology ( e.g., the storing,
analyzing, communicating and displaying of the location-based shopping
information can be implemented using pen and paper), and thus, constitute a
mental process, which is another form of an abstract idea. See Ans. 4.
Appellant's argument that the Examiner provided no evidentiary
support that the claims are directed to an abstract idea is unpersuasive. As
discussed above, the Examiner has shown that the claims are similar to
claims that the courts have previously identified as being directed to abstract
ideas. Thus, the Examiner did not err in finding the claims are directed to an
abstract idea.
We also disagree with Appellant's argument that the claims are
similar to the claims in DDR because the claims are necessarily rooted in
computer technology to overcome a problem specifically arising in the realm
of computer networks. Appellant characterizes the problem to be solved as
comparison shopping and the related solution in the form of presenting to a
user at a shopping location, through a computer network, products at the
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shopping location and prices of the products offered at another shopping
location. See App. Br. 12. Appellant further characterizes the solution as
allowing a user to virtually be present at two different locations at the same
time, which overcomes the problem that it is impossible for the user to
physically be at two different locations at the same time. Id. However,
Appellant's characterization of the claimed solution is not commensurate
with the scope of the claims, as the claims recites that "prices of a list of
products previously purchased at another shopping location different from
the present shopping location," and thus, the prices are limited to prices of
products previously purchased by the user at the other shopping location.
Claim 1. Thus, the claimed solution is merely a computer-implementation
of a manual process. For example, using a pen and paper, the user could
write down the prices of products previously purchased at the other location
and analyze the written-down prices at the current location. Thus, consistent
with the Examiner's findings, the claims attempt to overcome a problem that
arises in a business context, rather than an Internet-centric context, using a
generic computer, and therefore, the claims are not necessarily rooted in
computer technology. See Ans. 6.
Because we conclude that the claims are directed to an abstract idea,
we tum to the next step of the Alice analysis. In step two, as previously
discussed, we consider the elements of the claims "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, 566 U.S. at 78).
Here, Appellant argues the Final Office Action has failed to satisfy the
burden for a prima facie case that the claims do not recite substantially more
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than an abstract idea. See App. Br. 14. Appellant further argues, even
assuming arguendo that the claims are directed to an abstract idea, the
claims recite computer components that, in combination, perform non-
generic functions that amount to significantly more than an abstract idea.
See App. Br. 14--15. Appellant additionally argues the claims amount to
significantly more than an abstract idea when all claims features are
considered, either individually or in an ordered combination, as evidenced
by the fact that the claims recite limitations not seen in the cited prior art.
See App. Br. 15-16. Furthermore, Appellant argues the claims are
analogous to patent-eligible claims as indicated by various subject-matter
eligibility guidelines issued by the Patent and Trademark Office ("Office"),
and as indicated by the Patent Trial and Appeal Board ("Board") in Ex Parte
Scott, Appeal 2012-009834 (March 12, 2015). See App. Br. 16-19.
We are not persuaded that the Examiner erred. Considering the
recited elements of the claims in light of Appellant's Specification, we agree
with the Examiner's findings that the claims merely recite a generic system
( e.g., a system comprising a memory and processors, a user device for
launching a mobile app, a Global Positioning System (GPS) for detecting a
location of a user, and an electronic communication network for receiving
and communicating information) for carrying out the abstract idea (i.e.,
location-based shopping). See Ans. 4--5. We further agree with the
Examiner's findings that, taking the elements of the claims both individually
and as a combination, the computer components of the generic system
perform purely generic computer functions. See id. Therefore, considering
the elements of the claims both individually and in combination, we
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conclude there are no additional elements that transform the nature of the
claims into a patent-eligible application. See Alice, 134 S. Ct. at 2355.
We have considered Appellant's arguments, but we conclude
Appellant has not provided persuasive evidence or arguments that the claim
elements, either individually or as a combination, improve the functionality
of a computer or any other technology, or otherwise recite an inventive
concept that transforms the nature of the claims into something significantly
more than the aforementioned abstract idea. In particular, Appellant alleges
the claim features facilitate electronic transactions between a user and a
merchant which reduces transaction overhead, but this alleged improvement
is merely an improvement to a manual process via the implementation of the
process on a generic computer system. Further, Appellant's argument that
the claims recite limitations not seen in the cited prior art is not persuasive,
as the argument conflates the novelty and non-obviousness tests under
35 U.S.C. §§ 102, 103 with the patent-eligibility test under 35 U.S.C. § 101.
See Ans. 7.
Regarding Appellant's argument that the claims are similar to the
claims in Example 4 of the Office's 2014 Interim Guidance on Subject
Matter Eligibility ("2014 Guidance"), the 2014 Guidance is not binding on
this panel. But even assuming arguendo that the 2014 Guidance is binding,
the claims in Example 4 of the 2014 Guidance are different than the claims
at issue in the present appeal. In Example 4 of the 2014 Guidance, the
claims were directed to a mathematical algorithm utilized by a GPS device
to improve the global positioning service provided by the GPS device. See
2014 Guidance, Examples: Abstract Ideas at 12-13. In the present claims,
the abstract idea of location-based shopping (i.e., the storing, analyzing,
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communicating, and displaying of location-based shopping information)
does not improve the global positioning service provided by the recited GPS
device, or otherwise improve the recited GPS device. Instead, the process
recited in the claim merely utilizes the conventional functionality of the GPS
device to determine user location information.
With respect to Appellant's argument that the claims are similar to the
claims in Example 21 of the Office's July 2015 Update on the Interim
Eligibility Guidance ("2015 Guidance Update"), once again, the 2015
Guidance Update is not binding on this panel. But even assuming arguendo
that the 2015 Guidance Update is binding, the claims in Example 21 of the
2015 Guidance Update are also different than the present claims. In
Example 21 of the 2015 Guidance Update, the claimed invention addressed
an Internet-centric challenge of alerting a subscriber with time sensitive
information when a subscriber's computer is offline by transmitting an alert
over a wireless communication channel to activate a stock view application,
which in tum causes an alert to display and enables a connection of a remote
subscriber computer to a data source over the Internet when the remote
subscriber computer comes online. See 2015 Guidance Update Appendix 1:
Examples at 3-5. Thus, the claims in that example solve an Internet-centric
problem with a claimed solution that is necessarily rooted in computer
technology. In contrast, the present claims are merely directed to an attempt
to overcome a problem (i.e., providing a location-based shopping list of
products) that arises in a business context and does not necessarily involve
computer-related technology.
Regarding Appellant's argument that the claims are similar to the
claims in Ex Parte Scott, this decision has not been identified as a
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precedential decision by the Board and thus, is not binding on the panel.
However, even assuming arguendo that the decision is binding, the claims in
in Ex Parte Scott are different from the present claims. In Ex Parte Scott,
the panel determined the claims amount to more than an abstract idea
because the claims recited a specific way of displaying information (i.e.,
receiving a first user input and a second user input simultaneously on a
surface of a user interface, processing the first user input and the second user
input to determine a change in a trend of operational data, and displaying a
graphical representation of the trend in the user interface). See Ex Parte
Scott at 6. In contrast, the present claims fail to recite a specific way of
displaying a list of products and prices retrieved from account information
stored in a memory.
Appellant additionally argues the claims do not tie up patent-ineligible
subject matter. See App. Br. 13. This argument is not persuasive either, as
the Federal Circuit has made clear that "the absence of complete preemption
does not demonstrate patent eligibility" of a claim. Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also Ans. 7.
Appellant also argues the Examiner's rejection in the Final Office
Action failed to present a prima facie case that the dependent claims are not
patent-eligible or to provide sufficient analysis with respect to the additional
claim elements recited in the dependent claims. See App. Br. 20. We are
not persuaded by this argument either. The Examiner's findings that the
claimed invention is directed to an abstract idea and does not amount to
significantly more than the abstract idea, applies to all of the claims
including the dependent claims. See Final Act. 5---6.
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Therefore, we are not persuaded the Examiner erred in finding claims
1-21 recite patent-ineligible subject matter. Accordingly, we sustain the
rejection of claims 1-21 under 35 U.S.C. 101.
DECISION
We affirm the Examiner's rejection of claims 1-21 under
35 U.S.C. § 101.
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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