Ozan Selcuk et al.

Patent Trials and Appeals Board

Jul 29, 2019

14171174 - (D) (P.T.A.B. Jul. 29, 2019)

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.
14/171,174 02/03/2014 Ozan Selcuk ITAP-002-US 9039
61365 7590 07/29/2019
Overhauser Law Offices, LLC
740 W. Green Meadows Drive
Suite 300
Greenfield, IN 46140
EXAMINER
ZUKANOVICH, BRANDY A
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
07/29/2019 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):
IPNotices@overhauser.com
poverhauser@overhauser.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OZAN SELCUK, MICHAEL T. WILSON,
SHAWN A. MCCOOL, SCOTT W. BEARDSLEY,
MICHAEL C. WARREN AND TIMOTHY J. MORIARITY1
___________

Appeal 2018-004936
Application 14/171174
Technology Center 3600

____________

Before JEAN R. HOMERE, CARL W. WHITEHEAD JR. and
JEFFREY S. SMITH, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 10–13, 16 and
28 under 35 U.S.C. § 134(a). Appeal Brief 3. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 Appellants identify ITAP MENU LLC, as the real party in interest. Appeal
Brief 3.
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Introduction
According to Appellants, the invention “relates to systems used to
present purchase options to purchasers in connection with the sale of
vehicles or other products having multiple optional features.” Specification
¶ 4.
Illustrative Claim
10. A method for sending post-sale electronic
communications to different vehicle purchasers regarding
previously declined optional items, comprising:
providing a computer;
provide an F&I2 database having information regarding
vehicle purchases, and for each such purchase, information
regarding:
electronic contact information regarding the purchaser;
the vehicle purchased;
a plurality of optional items offered to the purchaser at
the time of purchase, and for each of such optional items, an
indicator of whether the purchaser declined the purchase of the
optional item at the time of purchase, and an indicator of,
whether the optional item is available for post sale purchase
according to predetermined criteria;
offering optional items for a vehicle to a vehicle
purchaser;
storing in the F&I database fix each purchased vehicle
the indicator for each optional item indicating whether the
purchaser declined the purchase of the optional item at the time
of purchase;

2 “F&I Menu selling refers to the finance and insurance (F&I) portion of a
vehicle acquisition transaction in which, along with the financing terms
of the transaction (whether sale or lease), the vehicle dealer provides to
the vehicle purchaser/ lessee a number of options-a menu-of additional
products and services that the purchaser can choose to include into the
vehicle purchase transaction.” Specification ¶ 6.
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making available for selection only those purchase
transactions in the F&I database for which the purchaser
rejected the purchase of an optional item that is available for
post sale purchase according to the predetermined criteria;
selecting multiple purchase transactions in the database
from the purchase transactions made available;
simultaneously generating and transmitting using the
computer multiple electronic communications to different
purchasers associated with selected transactions, wherein each
of the electronic communications:
identifies the purchaser and the vehicle purchased; and
comprises a hyperlink to information regarding one or
more of the optional items that the purchaser had declined to
purchase and which is available for post sale purchase
according to predetermine criteria; and
selecting the hyperlink in one of the simultaneously
generated electronic communications;
receiving an electronic communication from the selected
hyperlink;
transmitting in response to the received hyperlink
information regarding at least one optional item that is available
for post sale purchase according to predetermined criteria that
the purchaser declined to purchase.

Rejections on Appeal
Claims 10 and 28 stand provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 15–18 of
copending Application Number 14/334,355. Final Action 4; Answer 3–4.
Claim 28 stands rejected under 35 U.S.C. § 112(b), second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the inventor or a joint inventor, or for pre-AIA the
applicant regards as the invention. Final Action 4; Answer 4–5.
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Claims 10–13, 16 and 28 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent ineligible subject matter.
Final Action 5–10; Answer 5–10.
Claims 10–13 and 16 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Nagelvoort (US Patent Application
Publication2004/0133456 Al; published July 8, 2004) and Breed (US Patent
Application Publication2011/0225047 Al; published September 15, 2011).
Final Action 10–18; Answer 11–18.
Claim 28 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Nagelvoort, Breed, Thibodeau (US Patent Application
Publication2007/0136162, published June 14, 2007) and Baxter (US Patent
Application Publication 2005/0102520 Al; published May 12, 2005). Final
Action 18–26; Answer 18–26.

ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed October 17, 2017), the Reply Brief (filed
April 8, 2018), the Final Action (mailed March 17, 2017) and the Answer
(mailed January 8, 2018), for the respective details.

Double Patenting Rejection
We decline to address the merits of the provisional obviousness-type
double patenting rejection. On appeal, neither Appellants nor the Examiner
address the merits of the pending provisional obviousness-type double
patenting rejection. See Appeal Brief 10; see also Answer 3, 4 and 26.
Under the circumstances, we have not reached the merits of this provisional
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rejection. Ex parte Jerg, 2012 WL 1375142 at *3 (BPAI 2012)
(informative) (“Panels have the flexibility to reach or not reach provisional
obviousness-type double-patenting rejections.”) (citing Ex parte Moncla, 95
USPQ2d 1884 (BPAI 2010) (precedential)). We leave it to the Examiner to
decide in the first instance whether an obviousness-type double patenting
rejection is warranted. See MPEP § 804(I)(B)(1)(b)(iv).

35 U.S.C. § 112(b) Rejection
Appellants do not address the merits of the 35 U.S.C. § 112(b)
rejection of claim 28. See Appeal Brief 9. Subsequently, we summarily
sustain the 35 U.S.C. § 112(b) rejection of claim 28. See Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to
present arguments on a particular issue — or, more broadly, on a particular
rejection — the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection. See, e.g., Hyatt v. Dudas, 551 F.3d
1307, 1313–14 (Fed. Cir. 2008) (“the Board may treat arguments appellant
failed to make for a given ground of rejection as waived”).
It is noted that Appellants argued the 35 U.S.C. § 112(b) rejection of
claim 28 in the Reply Brief. See Reply Brief 9–10. However, the arguments
are not considered because they were not raised in the Appeal Brief and
therefore are considered untimely. “Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner’s answer . . . will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.” 37 C.F.R.
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§ 41.41(b)(2). See Optivus Tech., Inc. v. Ion Beam Applications S.A., 469
F.3d 978, 989 (Fed. Cir. 2006).

35 U.S.C. § 101 Rejection
The Examiner determines, “[c]laims 10–13, 16 and 28 are rejected
under 35 U.S.C. 101 because the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more.” Final Action 5; see Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 573 U.S. 208, 217 (2014) (describing the two-step framework
“for distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.”).
After the mailing of the Answer and the filing of the Briefs in this
case, the USPTO published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (hereinafter “Memorandum”). Under the Memorandum,
the Office first looks to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., (a) mathematical concepts, (b) certain
methods of organizing human activity such as a fundamental
economic principles and practice, commercial or legal
interactions, managing personal behavior, relationships and
interpersonal interactions, (c) mental processes); and

(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2018).
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Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office 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 § 2106.05(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 Memorandum.
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own, and we add the following primarily for emphasis and clarification
with respect to the Memorandum.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong One
“The inventive idea of the present invention is not derived from
implementing an existing concept of human activity. In fact, human activity
in finance and insurance (F&I) systems······such as the environment of the
present invention-are dependent on serial, one-on-one communication
between customer service representatives and customers as disclosed by the
Nagelvoort.” Appeal Brief 11.
Appellants’ arguments are not persuasive. Instead, we agree with the
Examiner’s determination that the claims are directed to an abstract idea.
Final Action 5–10 (“The claims describe the steps of selling a product (i.e. a
previously declined product offered again)”).
The Specification discloses:
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An F&I Menu system is disclosed that provides interactivity
between the finance manager/salesperson and the purchaser.
Directly on a mobile device such as a tablet computer, the finance
manager and the purchaser can adjust the options that are
presented and the options that are selected for inclusion with the
vehicle purchase, how the prices of these options appear (the
total price of the option or the option's impact on the financed
payment), the financing terms (the number of months, the type
of transaction (lease, financing, cash, etc.), and more. Selections
and adjustments can be made in real time by the purchaser, and
the pricing and financing calculations are adjusted by the system
in real time on the screen. When the purchaser makes final
selections, the F&I menu system records the transaction,
captures the signatures, and facilitates printing of a summary of
the selections made.

Specification ¶ 10.
Claim 10 recites a “method for sending post-sale electronic
communications to different vehicle purchasers regarding previously
declined optional items,” “a plurality of optional items offered to the
purchaser at the time of purchase, and for each of such optional items, an
indicator of whether the purchaser declined the purchase of the optional item
at the time of purchase, and an indicator of, whether the optional item is
available for post sale purchase according to predetermined criteria,”
“offering optional items for a vehicle to a vehicle purchaser,” “making
available for selection only those purchase transactions in the F&I database
for which the purchaser rejected the purchase of an optional item that is
available for post sale purchase according to the predetermined criteria”
and “transmitting in response to the received hyperlink information
regarding at least one optional item that is available for post sale purchase
according to predetermined criteria that the purchaser declined to purchase.”
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The claim recites the abstract idea of organizing human activity
wherein fundamental economic principles or practices such as sales
activities or behaviors are employed. See Memorandum, Section I
(Groupings of Abstract Ideas); see also Final Action 6; see also
Specification ¶ 4 (“The present disclosure relates to systems used to present
purchase options to purchasers in connection with the sale of vehicles or
other products having multiple optional features.”).
Therefore, we conclude the claims recite an abstract idea pursuant to
Step 2A, Prong One of the guidance. See Memorandum, Section III(A)(1)
(Prong One: Evaluate Whether the Claim Recites a Judicial Exception).

Step 2A, Prong Two
Under Prong Two of the Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception” it is noted that a “claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Memorandum, Section
III(A)(2).
Appellants argue:
Thus, the claims describe an inventive concept that
transforms a computer system into a special system, with
functionality not achievable by human beings, and the
functionality is separate and apart from mere improvement in
human speed or memory. Thus, the feature of simultaneously
sending electronic communications to a number of previous
purchasers in the environment of the present invention operates
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as something more than the digital implementation of an abstract
business method.

Appeal Brief 12.
Appellants’ Specification discloses:
An F&I Menu system is disclosed that provides interactivity
between the finance manager/ salesperson and the purchaser.
Directly on a mobile device such as a tablet computer, the finance
manager and the purchaser can adjust the options that are
presented and the options that are selected for inclusion with the
vehicle purchase, how the prices of these options appear (the
total price of the option or the option's impact on the financed
payment), the financing terms (the number of months, the type
of transaction (lease, financing, cash, etc.), and more.

Specification ¶ 10.

In one embodiment, a tablet such as an Apple iPad® is used, and
F &I menu items may be selected by touching and dragging them
between the all-options and selected areas. However, a user
interface may also provide for selections to be made using a
mouse, voice command, eyeball tracking, or any form of user
interface.

Specification ¶ 71.
We do not find Appellants’ arguments persuasive. The recited
limitations do not reflect an improvement in the functioning of a computer
or other technology or technical field. See Memorandum, 84 Fed. Reg. at
55; cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1090 (Fed. Cir.
2019) (“This invention makes the trader faster and more efficient, not the
computer. This is not a technical solution to a technical problem.”).
Further, as the Federal Circuit has explained, a “claim for a new abstract idea
is still an abstract idea.” Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d
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1138, 1151 (Fed. Cir. 2016). Even assuming the technique claimed was
“[g]roundbreaking, innovative, or even brilliant,” that would not be enough
for the claimed abstract idea to be patent eligible. See Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Subsequently, we detect no additional element (or combination of
elements) recited in Appellants’ representative claim 10 that integrates the
judicial exception into a practical application. See Memorandum, Section
III(A)(2). For example, Appellants’ claimed additional element (e.g., a
computer) does not: (1) improve the functioning of a computer or other
technology; (2) is not applied with any particular machine (except for a
generic computer); (3) does not effect a transformation of a particular article
to a different state; and (4) is not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)-(c), (e)-(h).
Accordingly, we determine the claim does not integrate the recited
judicial exception into a practical application. See Memorandum, Section
III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate
Whether the Judicial Exception Is Integrated Into a Practical Application).
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
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, 573 U.S. at 217–18 (quoting Mayo,
566 U.S. at 72–73).
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We find the claim does not include a specific limitation or a
combination of elements that amounts to significantly more than the judicial
exception itself. See Memorandum, Section III(B) (Step 2B: If the Claim Is
Directed to a Judicial Exception, Evaluate Whether the Claim Provides an
Inventive Concept); see also Aatrix Software, Inc. v. Green Shades Software,
Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (Moore, J., concurring) (“the
‘inventive concept’ cannot be the abstract idea itself”); see Final Action 7
(“These generic computing elements alone do not amount to significantly
more than the judicial exception. The limitations taken as a whole amount
to nothing more than implementing the concept of selling a product (i.e. a
previously declined product offered again) with routine, conventional
activity specified at a high level of generality in a particular technological
environment.”).
Accordingly, we conclude claims 10–13, 16, and 28 are directed to a
fundamental economic practice, which is one of certain methods of
organizing human activity identified in the Memorandum and thus an
abstract idea, and the claims do not recite limitations that amount to
significantly more than the abstract idea itself. We sustain the Examiner’s
§ 101 rejection of claims 10–13, 16 and 28.

35 U.S.C. §103(a) Rejection
Appellants contend:
[A] fundamental and transformative aspect of the present
invention has not been given due consideration: the simultaneous
computer generation and transmission of multiple electronic
communications to different purchasers/customers. This feature
is neither taught nor suggested by either Nagelvoort or Breed.
Paragraphs 0043, 0046, 0079, and 0080 of the Nagelvoort which
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were cited by the Examiner not teach or suggest a system that
simultaneously transmits multiple communications to multiple
customers. Both Nagelvoort and Breed teach in the direction of
individual, non-simultaneous, communications to customers.

Appeal Brief 13.
The Examiner finds:
Nagelvoort teaches a gateway (i.e. using the computer) selects a
customer of group of customers (i.e. different
purchasers/customers) to contact. Aftermarket products and their
prices are transmitted to the call center for presentation to the
customer (i.e. the computer generation (i.e. presentation) is sent
in the transmission therefore it is simultaneous).

Answer 38.
Appellants argue, “Respectfully, the Answer acknowledges that
Nagelvoort only teaches a single transmission ‘to the call center.’ ‘The call
center’ is a single recipient. Moreover, the call center is not a ‘purchaser,’
but an organization that later communicates with customers.’” Reply Brief
10.
We do not find Appellants’ arguments persuasive. Nagelvoort
discloses in paragraph 79:
Processing continues at 408 where gateway 100 selects a
customer (or a group of customers) to contact. Upon selection
of a customer, information identifying the customer and the
particular vehicle purchased by the customer may be transferred
to a call center and used to initiate a predictive dialer and to
populate a display screen used by a customer service
representative.

Although Nagelvoort discloses that after the selection of a customer or
group of customers, the customers’ information is sent to a customer service
representative, it would have been obvious to employ multiple customer
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service representatives to contact the multiple customers simultaneously.
“As our precedents make clear, however, the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc.,
550 U.S. 398, 418 (2007). Accordingly, we sustain the Examiner
obviousness rejections of claims 10–13, 16 and 28, not argued separately
with distinction. See Appeal Brief 13-14.

DECISION
The Examiner’s 35 U.S.C. § 112(b), second paragraph rejection of
claim 28 is sustained.
The Examiner’s patent ineligible subject matter rejection of claims
10–13, 16 and 28 is sustained.
The Examiner’s 35 U.S.C. § 103(a) rejections of claims 10–13, 16 and
28 are sustained.

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). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED