Go Daddy Operating Company, LLC

Patent Trials and Appeals Board

Feb 12, 2020

14522435 - (D) (P.T.A.B. Feb. 12, 2020)

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.
14/522,435 10/23/2014 Sarah Ptalis 173560-010401/US 3282
67395 7590 02/12/2020
GREENBERG TRAURIG (NJ)
500 CAMPUS DRIVE, SUITE 400
P.O. BOX 677
FLORHAM PARK, NJ 07932
EXAMINER
ZUKANOVICH, BRANDY A
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
02/12/2020 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):
cadanoc@gtlaw.com
clairt@gtlaw.com
gtipmail@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SARAH PTALIS, MARK HASELTINE, and PAUL NICKS
____________

Appeal 2019-002856
Application 14/522,435
Technology Center 3600
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

FENICK, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 7–13, 17–21, 23, 27, and 28,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b)(1).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Go Daddy Operating Company, LLC
as the real party in interest. Appeal Br. 1.
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BACKGROUND
Appellant’s invention relates to “transferring a domain name
registered to a Seller, but purchased from the Seller by a Buyer, from a
Seller controlled account at a Losing Registrar to a Buyer controlled account
at a Gaining Registrar and transferring funds from the Buyer to the Seller.”
Spec. ¶ 1.
Claims
Claims 1, 11, and 21 are independent. Claim 1, reproduced below, is
exemplary:
1. A method, comprising the steps of:
registering by a Losing Registrar comprising one or more
servers a domain name to a Seller;
verifying by the Losing Registrar an identity of the Seller,
wherein the verification of the identity of the Seller comprises a
biometric authentication of the Seller;
verifying by the Losing Registrar that the domain name is
registered to the Seller, wherein the verification of the domain
name being registered to the Seller comprises comparing a Seller
contact information with a domain name registrant contact
information stored in a WHOIS database;
calculating by the Losing Registrar a suggested value of
the domain name;
displaying by the Losing Registrar the suggested value of
the domain name to the Seller;
upon determining a difference between the suggested
value of the domain name and a purchase price entered by the
Seller is within a predetermined amount or a predetermined
percentage, accepting by the Losing Registrar the purchase price
from the Seller for the domain name;
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managing by the Losing Registrar the domain name in a
Seller controlled account, wherein the Seller has executed an
agreement that permits the domain name to be transferred, only
after a Buyer has agreed to purchase the domain name and
without further action from the Seller, from the Seller controlled
account of the Losing Registrar to a Buyer controlled account of
a Gaining Registrar, wherein the agreement is executed prior to
making the domain name available to the Buyer for purchase;
receiving by the Losing Registrar a communication from
an Aftermarket Platform or a Gaining Registrar that a Buyer has
purchased the domain name from the Seller;
facilitating by the Losing Registrar in the transfer of the
domain name from the Seller controlled account of the Losing
Registrar to the Buyer controlled account of the Gaining
Registrar; and
facilitating by the Losing Registrar the disbursement of
funds to the Seller.
Appeal Br. 12–13 (Claim App.).
Rejection
The Examiner rejects claims 1–3, 7–13, 17–21, 23, 27, and 28 under
35 U.S.C. § 101 as being directed to non-statutory subject matter. Final
Act. 10–15.
ANALYSIS
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter, or [a] new and useful
improvement thereof.” 35 U.S.C. § 101. However, the Supreme Court has
long interpreted § 101 to “contain[] an important implicit exception: Laws of
nature, natural phenomena, and abstract ideas are not patentable.” Alice
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Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, the Supreme Court reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012) “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The first
step in this analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts,” e.g., to an abstract idea. Id.
Concepts determined to be abstract ideas include certain methods of
organizing human activity, such as fundamental economic practices (id. at
219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical formulas
(Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes
(Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). If it is determined that the
claims are directed to a patent-ineligible concept, the second step of the
analysis requires consideration of the elements of the claims “individually
and ‘as an ordered combination’” to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). In
other words, the claims must contain an “inventive concept,” or some
element or combination of elements “sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [abstract idea]
itself.” Id. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
In January 2019, the PTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
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Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). Under that
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 fundamental economic
practices, or mental processes) (“Step 2A, Prong 1”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong 2”).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then (“Step 2B”) look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, and conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Guidance, 84 Fed. Reg. at 52–56.
Examiner’s Determinations and Appellant’s Arguments
The Examiner determines that all pending claims “are directed to an
abstract idea of buying and selling items,” which, according to the
Examiner, is a “method of organizing human activity and a fundamental
economic practice in that it is focused on commerce such as encouraging a
transaction and sales activities and behaviors between people.” Final
Act. 10. The Examiner further determines that the claim elements,
considered both individually and in combination, do not include additional
elements that are sufficient to amount to significantly more than the abstract
idea. Id. at 12, 14–15. The Examiner finds that the additional elements are
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recited at a high level of generality, i.e., as generic computer components
that generally link the abstract idea to a particular technological environment
and perform well-understood, routine and conventional functions such as
“automating mental tasks.” Id. at 12–15; see also Ans. 5–6.
Appellant argues that the Examiner overgeneralizes in characterizing
the claims as being directed to “buying and selling items,” and that the
claims are “actually limited to registering and transferring domain names.”
Appeal Br. 6. According to Appellant, the claims are not directed to an
abstract idea because “registering and transferring domain names require
concrete particular machines []and cannot be done in one’s head or merely
on paper.” Id. at 7; see id. at 8. Appellant further argues that the claims are
patent-eligible because they are necessarily rooted in computer technology,
are directed towards an asserted improvement in computer capabilities, and
effect a transformation of the domain name from one state to another state.
Id. at 9.
Step 2A, Prong 1
Under Step 2A, Prong 1 of the 2019 Guidance, we agree with the
Examiner that the claims recite a judicial exception, i.e., an abstract idea.
See Final Act. 10. Specifically, we agree with the Examiner that the claims
recite at least one of the certain methods of organizing human activity
identified as a judicial exception, in particular commercial interactions in the
form of sales activities or behaviors. See id. Additionally, we agree with the
Examiner that the claims describe “automating mental tasks,” and thus that
the claims recite mental processes. See id. at 14.
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For example, independent claim 1 recites:
verifying by the Losing Registrar that the domain name is
registered to the Seller, wherein the verification of the domain
name being registered to the Seller comprises comparing a Seller
contact information with a domain name registrant contact
information stored in a WHOIS database;
calculating by the Losing Registrar a suggested value of
the domain name;
Under their broadest reasonable interpretation, these “verifying” and
“calculating” limitations cover performance of the limitations in the mind
(as do corresponding limitations in independent claims 11 and 21), but for
the recitation of the verification and calculation being performed by a
“Losing Registrar” (discussed supra under Step 2A, Prong 2). That is, other
than the “Losing Registrar” recited as performing the recited steps, nothing
in the claims precludes those steps from being performed in the human
mind. For example, but for the recitation of the “Losing Registrar,” the
claims encompass mentally verifying that the domain name is registered to
the Seller by mentally comparing a Seller contact information with a domain
name registrant contact information stored in a WHOIS database, and
mentally calculating a suggested value of the domain name. Thus, although
Appellant argues that registering and transferring domain names cannot be
performed mentally, orally, or on paper, the above limitations recite mental
processes, and thus an abstract idea. See Appeal Br. 6–7.
Claim 1 further recites:
upon determining a difference between the suggested
value of the domain name and a purchase price entered by the
Seller is within a predetermined amount or a predetermined
percentage, accepting by the Losing Registrar the purchase price
from the Seller for the domain name;
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managing by the Losing Registrar the domain name in a
Seller controlled account, wherein the Seller has executed an
agreement that permits the domain name to be transferred, only
after a Buyer has agreed to purchase the domain name and
without further action from the Seller, from the Seller controlled
account of the Losing Registrar to a Buyer controlled account of
a Gaining Registrar, wherein the agreement is executed prior to
making the domain name available to the Buyer for purchase;
. . .
facilitating by the Losing Registrar in the transfer of the
domain name from the Seller controlled account of the Losing
Registrar to the Buyer controlled account of the Gaining
Registrar; and
facilitating by the Losing Registrar the disbursement of
funds to the Seller.
In reciting “accepting . . . the purchase price from the Seller for the
domain name” upon determining that a certain condition is met,
“managing . . . the domain name in a Seller controlled account” according to
a Seller-executed agreement regarding the purchase and transfer of the
domain name, “facilitating . . . in the transfer of the domain name from the
Seller controlled account . . . to the Buyer controlled account,” and
“facilitating . . . the disbursement of funds to the Seller,” the claim recites
commercial interactions in the form of sales activities or behaviors (as do
independent claims 11 and 21 with corresponding limitations). Thus, these
limitations recite one of the identified certain methods of organizing human
activity, and thus an abstract idea. Indeed, claims 1, 11, and 21 as a whole
recite a method of organizing human activity in that the claimed invention is
a method of transferring a domain name that is purchased by a buyer from a
seller, from a seller-controlled account to a buyer-controlled account, and
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transferring funds from the buyer to the seller, which are commercial
interactions in the form of sales activities and behaviors. See Spec. ¶ 1.
Additionally, the limitation “determining a difference between the
suggested value of the domain name and a purchase price entered by the
Seller is within a predetermined amount or a predetermined percentage,”
under its broadest reasonable interpretation, covers performance of the
limitation in the mind (as do corresponding limitations in independent
claims 11 and 21). That is, nothing in the claims precludes that step from
being performed in the human mind; the claims encompass mentally
determining that a difference between the suggested value of the domain
name and a purchase price entered by the seller is within a predetermined
amount or a predetermined percentage. Thus, this limitation also recites a
mental process, and thus an abstract idea.
Accordingly, the claims recite mental processes and methods of
organizing human activity as identified in the 2019 Guidance and, thus, an
abstract idea.
Step 2A, Prong 2
Under Step 2A, Prong 2 of the 2019 Guidance, we next look to
whether the claims recite additional elements that integrate the abstract idea
into a practical application. We determine that they do not. For example,
claim 1 additionally recites:
registering by a Losing Registrar comprising one or more
servers a domain name to a Seller;
verifying by the Losing Registrar an identity of the Seller,
. . .
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displaying by the Losing Registrar the suggested value of
the domain name to the Seller;
. . .
receiving by the Losing Registrar a communication from
an Aftermarket Platform or a Gaining Registrar that a Buyer has
purchased the domain name from the Seller;
These “registering,” “verifying,” “displaying,” and “receiving” steps are
recited at a high level of generality (i.e., as general means of registering or
recording, verifying, displaying, and receiving information regarding the
purchase and transfer of the domain name) and amount to insignificant
extra-solution activity. See 2019 Guidance, 84 Fed. Reg. at 55; MPEP
§ 2106.05(g); see also Final Act. 14.
Independent claims 1, 11, and 21 recite a “Losing Registrar” performs
the recited steps. Appellant argues that the “Losing Registrar,” as well as
the recited “Gaining Registrar” and “WHOIS database,” are “particular
machines,” rendering the claims patent-eligible. Appeal Br. 7–8 (citing
Bilski v. Kappos, 561 U.S. 593, 604 (2010)). We are unpersuaded. As an
initial matter, even if the claims included a particular machine, that would
not be determinative of patent-eligibility. See Bilski, 561 U.S. at 604
(stating that “the machine-or-transformation test is a useful and important
clue, an investigative tool” but “not the sole test” for patent-eligibility);
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[I]n Mayo, the Supreme Court emphasized that satisfying the
machine-or-transformation test, by itself, is not sufficient to render a claim
patent-eligible, as not all transformations or machine implementations infuse
an otherwise ineligible claim with an ‘inventive concept.’”)). We note that
an additional element that does no more than link the use of a judicial
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exception to a particular technological environment (such as commercial
interactions involving domain name registrars) or field of use does not
integrate an abstract idea into a practical application. See 2019 Guidance,
84 Fed. Reg. at 55 n.32.
Moreover, although Appellant argues that “a losing registrar
comprises a highly sophisticated computer network” and “is far more
specific as to its functions and abilities than a general purpose computer,”
Appellant has not recited any of the “Losing Register,” “Gaining Registrar,”
or “WHOIS database” limitations with sufficient particularity or shown that
they are integral to the claims. See id. at 55 & n.32; MPEP § 2106.05(b).
For example, the claims recite that the “Losing Registrar compris[es] one or
more servers.” See, e.g., claim 1. The Specification further indicates that
the Losing and Gaining Registrars comprise servers, electrical
communication equipment, and software, which are generic computer
components. Spec. ¶¶ 56–57. We agree with the Examiner that the claims
recite the additional elements, including the “Losing Registrar comprising
one or more servers,” “Gaining Registrar,” and “WHOIS database,” at a
high level of generality, merely applying the abstract idea using generic
computer components (i.e., servers, database, etc.) and indicating a
technological environment (i.e., computer networks and the Internet) for the
sales activities. See Final Act. 12–15; 2019 Guidance, 84 Fed. Reg. at 55;
MPEP § 2106.05(f), (h); see also Appeal Br. 7 (Appellant indicating that the
claims are tied to “computer networks, or more specifically the Internet”).
Appellant further argues that the claims are patent-eligible because
“registering a domain name and transferring the domain name transforms the
domain name from one state (non-registered/registered at the Losing
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Registrar) to another state (registered/registered at the Gaining Registrar).”
Appeal Br. 9 (citing Diamond v. Diehr, 450 U.S. 175, 184 (1981);
Gottschalk v. Benson, 409 U.S. 63, 70 (1972)). As discussed above, the
machine-or-transformation test does not, on its own, determine patent-
eligibility. Besides, we are unpersuaded that the registration and transfer of
a domain name is comparable to the transformation in Diehr, which was a
physical transformation of an article (rubber) to a different state or thing.
See Diehr, 450 U.S. at 184. We agree with the Examiner that a domain
name “is still a domain name” regardless of its registration status, and that
changing the status of a domain name is not the type of “[t]ransformation
and reduction of an article to a different state or thing” that favors
patentability. Benson, 409 U.S. at 70 (internal quotations omitted); see Ans.
8.
Appellant argues that the claims are “tied and rooted in computer
technology to solve a problem (registering and transferring domain names
between Registrars in a secure manner) specifically arising in the realm of
computer networks” and “directed towards an improved (faster and more
secure) method of transferring the domain name between accounts at
different Registrars.” Appeal Br. 9 (citing DDR Holdings, 773 F.3d 1245;
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). We
disagree that the registration, purchase/sale, and transfer of domain names is
uniquely limited to computer technology or that the claims reflect an
improvement in a technical field. As the Examiner points out, the
registration, purchase/sale, and transfer of domain names is a commercial
challenge and may be performed manually, and using a computer to perform
such manual tasks more efficiently does not confer patent-eligibility. See
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Ans. 10; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) (finding that “relying on a computer to perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible”). Notwithstanding Appellant’s argument that “the claims are
directed towards . . . a faster and more secure method of transferring a
domain name between accounts of Registrars,” the claims “do not require an
arguably inventive set of components or methods, such as measurement
devices or techniques, that would generate new data. They do not invoke
any assertedly inventive programming.” Appeal Br. 10; Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). We agree with
the Examiner that the claim limitations do not reflect an improvement in
computer functionality itself, or to any other technology or technical field.
See Final Act. 6–7; Ans. 9–12; 2019 Guidance, 84 Fed. Reg. at 55; MPEP
§ 2106.05(a). That is, the claims do not recite a technological improvement
in addition to the abstract idea.
Thus, even in combination, these additional limitations do not
integrate the abstract idea into a practical application because they do not
impose any meaningful limits on practicing the abstract idea.
Accordingly, we agree with the Examiner that the claims are directed
to an abstract idea.
Step 2B
Under Step 2B of the 2019 Guidance, we agree with the Examiner
that there are no specific limitations beyond the judicial exception, i.e., the
abstract idea, that are not well-understood, routine, and conventional in the
field. See Final Act. 12–15; Ans. 13–14. For example, claim 1 additionally
recites “wherein the verification of the identity of the Seller comprises a
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biometric authentication of the Seller.” This “biometric authentication”
limitation simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the abstract idea. See, e.g., Spec. ¶ 62 (stating that Seller’s identity “is
confirmed by any known or later developed methods of confirming the
identity of a person on the Internet” and listing biometric authentication
among several examples of identity confirmation methods).
Reevaluating the extra-solution activity recited in the “registering,”
“verifying . . . an identity of the Seller,” “displaying,” and “receiving” steps
(see 2019 Guidance, 84 Fed. Reg. at 56 (stating that a conclusion under
Step 2A that an additional element is insignificant extra-solution activity
should be reevaluated in Step 2B)), we find nothing unconventional in these
steps of registering or recording, verifying, displaying, and receiving
information regarding the purchase and transfer of the domain name. We
agree with the Examiner that these extra-solution steps require no more than
generic computer components performing generic functions (i.e., computer
processing, storing, displaying, and communicating) that are well-
understood, routine, and conventional activities previously known to the
industry. See Final Act. 13–14. As discussed above under Step 2A,
Prong 2, the recited “Losing Registrar comprising one or more servers” and
“Gaining Registrar” in claim 1 amount to no more than mere instructions to
apply the abstract idea using generic computer components. Mere
instructions to apply an abstract idea on a generic computer do not provide
an inventive concept. Alice, 573 U.S. at 223–24.
Appellant has not shown that the claims on appeal add any specific
limitation beyond the judicial exception that is not “well-understood,
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routine, and conventional” in the field. See MPEP § 2106.05(d). Appellant
also provides no evidence of how the ordered combination is unconventional
or amounts to significantly more than an abstract idea.
Accordingly, considering the claim elements individually and as an
ordered combination, we agree with the Examiner that there are no
meaningful claim limitations that represent sufficiently inventive concepts to
transform the nature of the claims into a patent-eligible application of the
abstract idea.
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, as well as independent claims 11
and 21 having commensurate limitations and dependent claims 2, 3, 7–10,
12, 13, and 17–20, which are not separately argued.
CONCLUSION
The Examiner’s rejection of claims 1–3, 7–13, 17–21, 23, 27, and 28
under 35 U.S.C. § 101 is affirmed.

DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 7–13, 17–
21, 23, 27, 28
101 Eligibility 1–3, 7–13, 17–
21, 23, 27, 28

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TIME PERIOD FOR RESPONSE
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