Ex Parte Zimmerman et al

Patent Trial and Appeal Board

Feb 22, 2019

14146407 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/146,407 01/02/2014 Keren Zimmerman
122066 7590 02/26/2019
M&B IP Analysts, LLC
500 Headquarters Plaza
Morristown, NJ 07960-7070
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.
NETOP0242 9659
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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):
pair@mb-ip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEREN ZIMMERMAN and NOAM JA VITS
Appeal2017-010823
Application 14/146,407 1
Technology Center 3600
Before JEREMY J. CURCURI, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-32, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 NETOTIATE, INC. ("Appellant") is the applicant, as provided for under
37 C.F.R. § 1.46, and is also identified in the Brief as the real party in
interest. See Appeal Br. 3.
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Application 14/146,407
STATEMENT OF THE CASE
Invention
Appellant's invention relates to "providing an effective way for a
consumer and a supplier to negotiate." Spec. ,r 6. 2 Appellant's invention
remedies inefficiencies in the prior art by automatically analyzing an
offer received from a consumer using at least one first preconfigured rule
received from the merchant and automatically generating a merchant
response to the offer based on the analysis of the offer when the offer is
determined to be a valid offer. See Appeal Br. 36, claim 1.
Exemplary Claim
Claims 1 and 17 are independent. Claims 1 and 11 are exemplary and
are reproduced below with bracketed material added to claim 1.
1. A method performed by a mediatorial server for
facilitating a real-time consumer-to-merchant electronic
negotiation, comprising:
[a] electronically receiving a time-limited initial binding
offer from a consumer device for purchasing at least one product
of choice from at least one merchant of choice responsive to the
at least one product being displayed on the consumer device and
being offered for sale, wherein the initial binding offer includes
at least an offered price for the product of choice, the product of
choice, and the at least one merchant of choice, wherein the
initial offer expires after a predefined timeframe;
2 Our Decision refers to: (1) Appellant's Specification filed January 2, 2014
("Spec."); (2) the Final Rejection mailed July 13, 2016 ("Final Act."); (3)
the Appeal Brief filed March 9, 2017 ("Appeal Br."); (4) the Examiner's
Answer mailed June 21, 2017 ("Ans."); and (5) the Reply Brief filed August
17, 2017 ("Reply Br.").
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[b] automatically determining whether the initial binding
offer received from the consumer device is a valid offer for the
product of choice;
[ c] automatically analyzing the initial binding offer using
at least one first preconfigured rule received from the merchant
device; and
[ d] automatically generating a merchant response in real-
time responsive to the initial binding offer based on the analysis
of the initial binding offer when the initial binding offer is
determined to be a valid offer.
11. The method of claim 10, further comprising:
creating a personal score card for each merchant and
consumer;
ranking the consumer and the merchant based on their past
activities and a feedback received from each merchant device
and consumer device with respect to the interaction between the
consumer and the merchant; and
presenting the rank of the consumer and the merchant in
both the consumer personal score card and the merchant personal
score card.
Appeal Br. 36, 38.
REFERENCES
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Widjojo et al., ("Widjojo")
Jordan et al., ("Jordan")
Ong et al., ("Ong")
Torrenegra
Horvitz et al., ("Horvitz")
US 2005/0192958 Al
US 2007 /0255663 Al
US 2008/0215493 Al
US 2009/0287596 Al
US 2013/0006794 Al
3
Sept. 1, 2005
Nov. 1, 2007
Sept. 4. 2008
Nov. 19, 2009
Jan.3,2013
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REJECTIONS
Claims 1-32 are rejected under 35 U.S.C. § 101 as being directed to
non-patent-eligible subject matter. See Final Act. 2--4.
Claims 11 and 12 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. See Final Act. 4--8.
Claims 1-9, 13, 15-26, 30, and 32 are rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Ong and Horvitz. See Final
Act. 8-16.
Claims 10 and 27 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Ong, Horvitz, and Jordan. See Final
Act. 16-18.
Claims 11, 12, 28, and 29 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Ong, Horvitz, Jordan, Widjojo, and
Torrenegra. See Final Act. 18-22.
Claims 14 and 31 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Ong, Horvitz, and Official Notice. See
Final Act. 22-23.
Our review in this appeal is limited to the above rejections and the
issues raised by Appellant. Arguments not made are waived. See
37 C.F.R. § 4I.37(c)(1)(iv)(2016).
DISCUSSION
Re; ection Under § 101
Issue: Whether the Examiner properly rejects the claims under
35 U.S.C. § 101 as being directed to non-patentable subject matter.
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Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "' [l]aws of nature, natural phenomena, and abstract
ideas"' are not patentable. E.g., Alice Corp. v. CLS Bankint'l, 573 U.S.
208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 193
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim
at issue recited a mathematical formula, but the Supreme Court held that "[a]
claim drawn to subject matter otherwise statutory does not become
nonstatutory simply because it uses a mathematical formula." Diehr, 450
U.S. at 176; see also id. at 187 ("We view respondents' claims as nothing
more than a process for molding rubber products and not as an attempt to
patent a mathematical formula."). Having said that, the Supreme Court also
indicated that a claim "seeking patent protection for that formula in the
abstract ... is not accorded the protection of our patent laws, ... and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment." Id. ( citing Benson and
Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "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." Alice, 573 U.S. at 221 ( quotation marks omitted). "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]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
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USPTO January 7, 2019 Revised Section 1 OJ Memorandum
The USPTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019 ("Memorandum")). Under the Memorandum
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
Contentions and Analysis
Appellant argues the claims as a group. See Appeal Br. 7. We select
independent claim 1 as exemplary of Appellant's arguments for the group.
See 37 C.F.R. § 4I.37(c)(1)(iv)(2016).
The Examiner determines claim 1 "falls under the abstract idea of
organizing human activities and/or fundamental economics and/or an idea
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itself as they are related to product negotiation between a consumer and
merchant or creating the contractual relationship." Final Act. 2; see
Ans. 24--30. The Examiner also determines the claim "does not include
additional element[ s] that are sufficient to amount to significantly more than
the judicial exception because the claim recited generically computer
elements ( e.g., a mediator server, a merchant device, a consumer device)
which do not add a meaningful limitation to the abstract idea." Final Act. 3;
see Ans. 30-31.
Appellant presents several arguments against the § 101 rejection. See
Appeal Br. 7-22; Reply Br. 2-14. We do not find Appellant's arguments
persuasive, as discussed in greater detail below. The Examiner has provided
a comprehensive response to Appellant's arguments supported by a
preponderance of evidence. See Ans. 24--31. Thus, we adopt the
Examiner's findings and conclusions. See Final Act. 2--4; Ans. 24--31. We
analyze claim 1 under the 2019 Revised § 101 Guidance and adopt the
nomenclature for the steps used in the Memorandum.
STEP 1
Section 101 provides that "[ w ]hoever 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. Initially, the
Examiner determines and we agree that independent claim 1 recites a
method. See Final Act. 3. As such, claim 1 is directed to a statutory class of
invention within 35 U.S.C. § 101, i.e., a process.
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STEP 2A Prong 1
Under Step 2A, Prong 1 of the Memorandum, we must determine
whether claim 1, being directed to a statutory class of invention, nonetheless
falls within a judicial exception.
The Examiner determines claim 1 is directed to "'receiving a time
limited initial binding offer ... ; determining whether the initial offer made
by the consumer is valid; notifying the at least one merchant of choice ... ;
generating on behalf the merchant of choice . . . ; processing the generated
time limited response ... ' which falls under the abstract idea of organizing
human activities and/or fundamental economics." Final Act. 2 (italics
omitted).
Appellant argues the claim is not abstract because: (1) if the claim is
directed to 3 abstract ideas, it cannot be directed to a single abstract idea; (2)
the claim is "being done automatically by the computer" and (3) "the claim
is narrow and does not preempt any abstract idea." Appeal Br. 7, 10, 14.
We find Appellant's arguments unpersuasive of error. The preamble
of claim 1 recites that it is a method "for facilitating a real-time consumer-
to-merchant electronic negotiation." Appeal Br. 36. Claim 1 further recites
the steps of: (a) "electronically receiving a time-limited initial binding
offer"; (b) "automatically determining whether the initial binding offer
received from the consumer device is a valid offer for the product of
choice"; ( c) "automatically analyzing the initial binding offer using at least
one first preconfigured rule received from the merchant device"; and
( d) "automatically generating a merchant response in real-time responsive to
the initial binding offer based on the analysis of the initial binding offer
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when the initial binding offer is determined to be a valid offer." Appeal
Br. 36.
The Specification, likewise, describes that Appellant's invention
"relates to a computerized negotiation platform for electronic commerce (E-
commerce) websites." Spec. ,r 2. The claimed invention is seemingly
intended to address the disadvantage that "the consumer does not know the
particulars of the vendor or service provider" when purchasing goods or
services from prior art websites such as Priceline.com®. Id. at ,r 5.
Considered in light of the Specification, the purported advance over
the prior art is, as reflected in the claim, the facilitating of real-time
consumer-to-merchant electronic negotiation by allowing electronic receipt
of an offer from a consumer and automatically generating an acceptance of
the off er by a merchant based on a rule and when the offer is determined to
be valid. See Spec. Fig. 4, Appeal Br. 3--4. In that context, claim 1 is
essentially directed to: (1) receiving an offer from a consumer to purchase a
product from a merchant (step (a)); (2) determining whether the offer is a
valid offer; (step (b)); (3) analyzing the offer using a preconfigured rule; and
( 4) generating a merchant response to the offer when the off er is determined
to be a valid offer - in other words, to forming a contract, which is a
fundamental economic practice and, therefore, a method of organizing
human activity. See buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 1355
(Fed. Cir. 2014) (holding that concept of "creating a contractual relationship
- a 'transaction performance guaranty"' is an abstract idea).
Additionally, we agree with the Examiner that claim 1 recites "an idea
itself." Final Act. 2. That is, claim 1 is an example of concepts performed
in the human mind as mental processes because "the steps of receiving an
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offer, determining whether the offer is valid, analyzing the offer using a
preconfigured rule, and generating a merchant response, i.e., the steps of
receiving, analyzing, and providing data, mimic human thought processes,
perhaps with paper and pencil. See Bancorp Services, L.L. C. v. Sun Life
Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012), cert.
denied, 134 S.Ct. 2870 (2014) ("Using a computer to accelerate an ineligible
mental process does not make that process patent-eligible."); see also
Memorandum n.14 (citing Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016) ("[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.")). Thus, Appellant's argument that the claim is non-abstract because
"all the operations in Appellants' claims are being done automatically by the
computer," is unpersuasive. Appeal Br. 6. Furthermore, Appellant's fail to
provide persuasive legal authority in support of the argument that "if their
claims are directed to a collection of abstract ideas, e.g., the above identified
alleged 3 ideas, their claim cannot be directed to or preempt an abstract
idea." Appeal Br. 7. We do not agree with Appellant's premise that Alice
requires that a claim recite only a single abstract idea to be determined as
patent ineligible. See Appeal Br. 7; see also RecogniCorp, LLC v. Nintendo
Co. Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea
(math) to another abstract idea ... does not render the claim non-abstract.");
see also Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016) (determining the pending claims were directed to a
combination of abstract ideas).
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From this we conclude that claim 1 recites either a method of
organizing human activity or a mental process, or both, as provided for in
the Memorandum.
STEP 2A Prong 2
Next, we determine whether the claim is directed to the abstract
concept itself or whether it is instead directed to some technological
implementation or application of, or improvement to, this concept, i.e.,
integrated into a practical application. See, e.g., Alice, 573 U.S. at 223,
discussing Diehr, 450 U.S. at 175.
Applying step 2 of the Alice/Mayo analysis, the Examiner determines
that even though claim 1 recites "a mediator server, a merchant device, [and]
a consumer device" to "perform the abstract idea of organizing human
activities ( e.g. receiving, determining, analyzing, generating)" the recited
generic hardware "do not add a meaningful limitation to the abstract idea
because they would be routine in any computer implementation." Ans. 2;
Final Act. 3.
Appellant argues claim 1 is not directed to an abstract idea because,
like the claims in Enfish, claim 1 is "directed to a specific implementation of
a solution to a problem in the art." Appeal Br. 18 (citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)); see also Reply Br. 3-5.
This argument is unpersuasive because Appellant's claim 1 is unlike the
claims in Enfish. In Enfish, our reviewing court relied on the distinction
made in Alice between computer-functionality improvements and uses of
existing computers as tools in aid of processes focused on "abstract ideas"
(in Alice, as in so many other § 101 cases, the abstract ideas being the
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creation and manipulation of legal obligations such as contracts involved in
fundamental economic practices). Enfish, 822 F.3d at 1335-36; see also
Alice, 134 S. Ct. at 2358-59. In Enfish, the§ 101 challenge was found
persuasive because the claims at issue focused, not on asserted advances in
uses to which existing computer capabilities could be put, but on a specific
improvement-a particular database technique-in how computers could
carry out one of their basic functions of storage and retrieval of data. Enfish,
822 F.3d at 1335-36.
Here, Appellant's claim 1 does not purport to improve the functioning
of the computer itself. Nor does claim 1 effect an improvement in any other
technology or technical field. The mere introduction of a computer or
generic computer technology into the claim need not alter the abstract idea
analysis. See Alice, 573 U.S. at 223-24. "[T]he relevant question is whether
the claims here do more than simply instruct the practitioner to implement
the abstract idea[] on a generic computer." Alice, 573 U.S. at 225. We
determine claim 1 does not. Viewed as a whole, Appellant's method claim
simply recites the abstract idea of forming a contract. To be sure, the claims
recite doing so using a mediatorial server, a merchant device, and a
consumer device to exchange specific data (i.e., "a time-limited initial
binding offer") and using specific rules (the "offer expires after a predefined
timeframe"). But this is no more than extra-solution activity for forming the
contract and the generic computer activities necessary to process those
activities. Stated differently, claim 1 simply recites an abstract idea
executed using generic computer technology, such as a "mediatorial server,"
"a merchant device," and "a consumer device." Appeal Br. 36.
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Moreover, because claim 1 fails to recite a specific algorithm for
"automatically determining whether the initial binding offer received from
the consumer device is a valid offer," the broadly recited determining can be
interpreted as being accomplished based merely on a subjective judgement
by a person, rather than on specific technological implementation details.
To determine whether an offer is valid based on subjective judgement is not
a technological operation. Thus, in view of Appellant's Specification, and
consistent with the Examiner's determinations, we conclude that claim 1
does not integrate the judicial exception into a practical application. See
MPEP §§ 2106.0S(a}-(c), (e}-(h). We, thus, agree with the Examiner that
claim 1 is directed to a judicial exception. See Final Act. 2.
Appellant argues claim 1 is not abstract because "this invention as
claimed does not preempt an abstract idea." Appeal Br. 14.
Appellant's preemption arguments do not alter our§ 101 analysis.
Rather than preemption, the Federal Circuit instructs that the Alice two-step
analysis is the test for whether claims are statutory. "While preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "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." Id.
Claim 1 is not directed to a specific asserted improvement in
computer technological implementation or otherwise integrated into a
practical application and thus is directed to a judicial exception.
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STEP 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 134 S. Ct. at 2355 (quoting Mayo,
566 U.S. at 72-73).
The Examiner determines the claim "does not include additional
element[ s] that are sufficient to amount to significantly more than the
judicial exception because the claim recited generically computer elements
(e.g[.,] a mediator server, a merchant device, a consumer device) which do
not add a meaningful limitation to the abstract idea." Final Act. 3.
Appellant argues claim 1 recites significantly more than the alleged
abstract idea because "taken as an ordered combination" the claimed
limitations are "directed to a specific application of a technology in the
market place." Appeal Br. 20 (citing Bascom Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016)). Appellant
also argues the claim recites a "concrete, specific, technical method
performed by a physical device to solve the technical problem with Internet
shopping and negotiation." Id. (citing Diehr 450 U.S. at 175).
We agree with the Examiner that claim 1 does not include additional
elements that provide significantly more than the recited judicial exception.
Final Act. 3; see Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 72-
73). Rather, claim 1 merely implements an abstract idea on a generic
computer (mediatorial server), which is not eligible under Alice. See
Bascom, 827 F.3d at 1349-52. That is, claim 1 recites the mediatorial server
in the preamble, presumably, although not expressly claimed in the body of
claim 1, for executing logic to perform steps (a)-(d). Appeal Br. 36. As
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discussed above with respect to Step 2A of the Memorandum, steps (a)- (d)
are directed to an abstract idea. Appellant's Specification discloses
mediatorial "server 130 typically comprises a processing unit such as a
processor 140 that is coupled to a memory 145." Spec. ,r 18. The claim
recites receiving data from the consumer and merchant devices and these
devices are also described in the Specification as generic devices. See
Spec. ,r,r 14, 15. Generic computer components performing generic
computer functions, without an inventive concept, do not amount to
significantly more than the abstract idea. See Alice, 134 S. Ct. at 2359.
Appellant's argument that "taken as an ordered combination the
claims are directed to an inventive concept because they are directed to a
specific application of a technology in the market place," (Appeal Br. 20) is
unpersuasive because Appellant provides only unsupported assertions
without evidence. See Appeal Br. 20-22; Reply Br. 11-13. It is well settled
that mere attorney arguments and conclusory statements, which are
unsupported by factual evidence, are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Moreover, Appellant's
improvement of "providing an effective way for a consumer and a supplier
to negotiate" via the internet (Spec. ,r 6) is a solution to a business problem,
not a technical problem. We determine, therefore, that considered as an
ordered combination, the computer components of Appellant's claim 1 add
nothing that is not already present when the steps are considered separately.
We, thus, conclude that the claim does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
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Because Appellant's representative claim 1 is directed to a patent-
ineligible abstract concept and does not recite something "significantly
more" under the Alice analysis, we sustain the Examiner's rejection of this
claim under 35 U.S.C. § 101 as being directed to non-patentable subject
matter in light of Alice and its progeny. The rejection of claims 2-32, which
are not argued separately, is sustained for the same reasons.
Re;ection Under§ l l 2(a)
Issue: Whether the Examiner properly rejects claim 11 under
35 U.S.C. § 112(a) as lacking written support in the originally filed
Specification for the limitation "creating a personal score card for each
merchant and consumer; ranking the consumer and the merchant based on
their past activities and a feedback received from each merchant device and
consumer device with respect to the interaction between the consumer and
the merchant."
The Examiner determines that Appellant's Specification does not
support this limitation because it "does not explain how the score and
ranking are being computed or generated and what algorithm[ s] are being
used in the computing 'score and ranking' for each potential merchant and
the consumer in order to come up with the result of 'matching between the
merchant and consumer."' Final Act. 6 ( citing Spec. ,r 26).
Appellant argues that "score and rankings are well known and that the
particular algorithm used is at the discretion of the implementor, with such
algorithms being well known." Appeal Br. 23 (citing Spec. ,r 27).
We agree with the Examiner. To satisfy the written description
requirement, the specification must describe the claimed invention in
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sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991). Specifically, to have
"possession," the specification must describe the claimed invention in a
manner understandable to a person of ordinary skill in the art and show that
the inventor actually invented the claimed invention. Id.; Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
Original claims may fail to satisfy the written description requirement when
the invention is claimed and described in functional language but the
specification does not sufficiently identify how the invention achieves the
claimed function. Id. For software, this can occur when the algorithm or
steps for performing the computer function are not explained at all or are not
explained in sufficient detail. It is not enough that one skilled in the art
could write a program to achieve the claimed function because the
specification must explain how the inventor intends to achieve the claimed
function to satisfy the written description requirement. See, e.g., Vasudevan
Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681---683 (Fed. Cir.
2015); MPEP 2161.01(1).
In response to Appellant's argument that "[s]uch techniques are well
known to those of ordinary skill in the art and need not be specifically
provided in the specification," the Examiner correctly points out that "even
if one skilled in the art would know how to program the computer to do the
functions ( scoring and rankings merchants and consumers based on the
feedback), this does not mean that the specification shows that applicant was
in possession of that knowledge." Appeal Br. 23; Ans. 32 (emphasis added;
italics omitted). Likewise, although we acknowledge that one of ordinary
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skill in the art could, most likely, program a computer to perform a "ranking
[ofJ the consumer and the merchant" (Appeal Br. 38), it is not enough that a
skilled artisan could write a program to achieve the claimed function
because the Specification must explain how the inventor intends to achieve
the claimed function to satisfy the written description requirement. See, e.g.,
Vasudevan, 782 F.3d at 681-83; see also MPEP 2161.01(1) ("For computer-
implemented inventions, the determination of the sufficiency of disclosure
will require an inquiry into the sufficiency of both the disclosed hardware
and the disclosed software due to the interrelationship and interdependence
of computer hardware and software.").
Appellant's argument that the claimed software functions "need not
be specifically provided in the specification, in the same manner that it is
not required to detail how to build a server, or a microprocessor, or a
transistor used in such microprocessor" (Appeal Br. 23) is not persuasive,
because purely functional language implemented by software is treated
differently than structural limitations, such as microprocessor, in our
controlling precedent. See, e.g., Vasudevan, 782 F.3d at 681-83.
Accordingly, we sustain the Examiner's rejection of claim 11 under
35 U.S.C. § 112(a). We also sustain the Examiner's 35 U.S.C. § 112(a)
rejection of claim 12, which depends from claim 11, for similar reasons.
Reiections Under § 103
Issue: Whether the combination of Ong and Horvitz teaches or
suggests "automatically determining whether the initial binding offer
received from the consumer device is a valid offer for the product of
choice," as recited in claim 1.
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The Examiner finds Ong' s discussion of determining whether a
"buyer's offer is within an acceptable criterion range selected by the seller,
such as a range including a minimum value" teaches determining whether an
offer is valid, as claimed. See Final Act. 9 ( citing Ong ,r,r 44, 45); Ans. 33-
35.
Appellant argues the Examiner's interpretation of the claim term
"valid" is unreasonably broad in view of the Specification. Specifically,
Appellant argues the Specification defines a valid offer as "an offer that was
checked for consistency, was not provided to the server 130 within a
forbidden timeframe, or was otherwise provided within an allowed
timeframe .... " Appeal Br. 25 ( citing Spec. ,r 17). Appellant argues that
because "in Appellant's claims, the validity of an offer is not based on
price" Ong's discussion of determining whether a "buyer's offer is within an
acceptable criterion range selected by the seller" cannot reasonably be relied
upon to teach determining whether an offer is valid, as claimed. Appeal
Br. 25.
First, we must construe the term "valid," as recited in claim 1. See In
re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974) ("Before considering the
rejections ... , we must first [ determine the scope ofJ the claims"). In this
regard, as asserted by Appellant, the Specification discloses:
In one embodiment, the mediatorial server 130 checks the offer
made by the consumer and validates that it is in fact a valid
offer. A valid offer is an offer that was checked for consistency,
was not provided to the server 130 within a forbidden
timeframe, or was otherwise provided within an allowed
timeframe where for example, the consumer is identified as
having a valid form of payment that is consistent with the offer
made, and so on and so forth.
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Spec. ,r 17.
During examination of a patent application, a claim is given its
broadest reasonable construction "in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal
quotation marks omitted). "The correct inquiry in giving a claim term its
broadest reasonable interpretation in light of the specification is not ...
simply an interpretation that is not inconsistent with the specification." In re
Smith Int'! Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017). "It is an
interpretation that corresponds with what and how the inventor describes his
invention in the specification, i.e., an interpretation that is 'consistent with
the specification."' Id. at 1383 (quoting In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997)). The presumption that a term is given its ordinary and
customary meaning may be rebutted by Appellant clearly setting forth a
different definition of the term in the specification. Morris, 127 F.3d
at 1054.
We, therefore, agree with Appellant's argument that "valid" should be
construed as clearly set forth in the Specification "to mean to an offer that
was checked for consistency, was not provided to the server 130 within a
forbidden timeframe, or was otherwise provided within an allowed
timeframe .... " Reply Br. 14 ( citing Spec. ,r 17).
In view of Appellant's proposed construction of "valid," we do not
agree with the Examiner's finding that Ong's discussion of determining
whether a "buyer's offer is within an acceptable criterion range selected by
the seller, such as a range including a minimum value" teaches determining
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whether an offer is valid, as claimed. See Final Act. 9 ( citing Ong ,r,r 44,
45); Ans. 33-35.
The Examiner's rejection of claim 1 in view of Ong is, therefore,
unsustainable. The Examiner does not rely on any of the other cited
references to teach the disputed limitation. See Final Act. 9; Ans. 33-35.
Accordingly, on this record, the Examiner has not shown how Ong alone or
in combination with Horvitz, Jordan, Widjojo, or Torrenegra, teaches or
suggests "automatically determining whether the initial binding offer
received from the consumer device is a valid offer for the product of
choice," within the meaning of claim 1. Because we agree with at least one
of the dispositive arguments advanced by Appellant for claim 1, we need not
reach the merits of Appellant's other contentions.
Accordingly, on this record, we do not sustain the Examiner's 35
U.S.C. § 103 rejection of claim 1. We also do not sustain the rejection of
independent claim 1 7, which recites limitations commensurate in scope to
claim 1. See Appeal Br. 39 ("determine whether the initial binding offer is a
valid offer for the product of choice."). We further do not sustain the
rejections of dependent claims 2-16 and 18-32, which stand with their
respective independent claims.
DECISION
We sustain the rejection of claims 1-32 under 35 U.S.C. § 101.
We sustain the rejection of claims 11 and 12 under
35 U.S.C. § 112(a).
We do not sustain the rejections of claims 1-32 under
35 U.S.C. § 103.
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Because we sustain at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject all of the
pending claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1) (iv).
AFFIRMED
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