Schultz, Roger Stephen.

Patent Trials and Appeals Board

Aug 27, 2019

13945099 - (D) (P.T.A.B. Aug. 27, 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.
13/945,099 07/18/2013 Roger Stephen Schultz CHPTH.1136.1001.US12 8310
143183 7590 08/27/2019
Michael L. Wach
4425 Mariners Ridge
Alpharetta, GA 30005
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
08/27/2019 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):
docketing@pacificpatentgroup.com
eofficeaction@appcoll.com
mikewachsr@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROGER STEPHEN SCHULTZ1
__________

Appeal 2018-007711
Application 13/945,099
Technology Center 3600
__________

Before ERIC B. GRIMES, TAWEN CHANG, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims related to
automatically registering an electronically purchased product, which have
been rejected as being directed to patent-ineligible subject matter. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
“The present invention relates . . . to the issuance of electronic
transaction receipts to buyers and product information to third parties.”

1 Appellant identifies the Real Party in Interest as Chapterhouse LLC. Br. 2.
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Spec.2 1:19–21. In one embodiment, “a product or service can be purchased
by a buyer from a seller. Product information 342 . . . is electronically
collected directly from [the] product.” Id. at 35:21 to 36:1. An electronic
receipt is generated and stored in a database. Id. at 36:3–4. Product
information 342 can also be stored in a database. Id. at 36:7–8.
“A request for transmission of stored product information 342 can be
received . . . and in response . . . product information 342 can be retrieved
. . . and transmitted.” Id. at 36:9–11. “[P]roduct information 342 can be
transmitted to computing device 376 . . . operated by a third party.” Id. at
36:19–22. “For example, a third party can register the product . . . to provide
a service to the buyer or seller. A third party can, for example, provide or
record a product warranty registration.” Id. at 37:1–3.
Claims 21–39 are on appeal. Claim 30 is illustrative and reads as
follows:
30. A process for automatically registering a product purchased
electronically by a buyer from a seller, comprising the steps of:
storing a plurality of electronic sales transaction receipts between a
plurality of buyers and a plurality of sellers, wherein at least one
electronic sales transaction receipts includes product information
associated with a product;
receiving a registration request signal corresponding to the product;
retrieving the product information associated with the product in the at
least one sales transaction from the database; and
transmitting the product information to a device for registration of the
product.

2 Substitute Specification filed January 5, 2014.
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Claims 21 and 39 are the other independent claims. Claim 21 is
directed to a system that comprises a database and a processor that together
carry out the steps of claim 30. Claim 39 is directed to a computer program
comprising executable portions that carry out the steps of claim 30.
DISCUSSION
The Examiner has rejected claims 21–39 under 35 U.S.C. § 101, on
the basis that “the claimed invention is directed to non-statutory Subject
matter.” Non-Final Action3 2. The Examiner reasons that all of the steps of
the process recited in claim 304 are similar to concepts that have previously
been held to be abstract ideas, and the overall process of “registering a
product purchased by a buyer from a seller is a combination of the abstract-
idea processes identified” by the courts. Id. at 3–4. “Hence the steps of the
claim, taken individually or as an ordered combination, are directed to [an]
abstract idea.” Id. at 4.
The Examiner acknowledges that “[t]he steps of the claim are
performed by a system comprising a database and a processor suitably
programmed to execute the claimed steps.” Id. The Examiner finds, however,
that “the elements involved in the recited process undertake their roles in
performance of their activities according to their generic functionalities
which are well-understood, routine and conventional.” Id. at 5. The Examiner

3 Office Action mailed March 20, 2017.
4 The Examiner focuses on method claim 30 but states that “[s]imilar
reasoning and rationale applies to the system claim 21 and the computer
program product claim 39 also.” Non-Final Action 5.
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concludes that “[t]he claims as a whole, do not amount to significantly more
than the abstract idea itself.” Id. at 7.
Appellant argues that “the claimed invention is eligible under § 101 at
least because each of the claims improves a technology or technical field or
the functioning of a computer-based system.” Br. 7. Appellant argues that
“electronic sales transactions represent a highly technical field” and “the
claimed invention provides automatic registration of a product purchased
electronically by a buyer from a seller, thereby achieving a technical
improvement.” Id. at 8–9.
Appellant also argues that the claims “define a very particular
technical solution to a technical problem,” and “do not preempt other
solutions.” Id. at 16. Appellant argues that “defining a particular technical
solution to a technical problem and avoiding preemption are indicators of
101 eligibility.” Id. at 17.
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 concluded that “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable under 35 U.S.C. § 101.
See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
To determine if a claim falls into an excluded category, we apply a
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)). We first determine what 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
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risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging.”).
Patent-ineligible abstract ideas 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 (Gottschalk v. Benson,
409 U.S. 63, 69 (1972)). In contrast, patent-eligible inventions include
physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
(quoting Corning v. Burden, 56 U.S. 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 claimed method employed 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 192 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). The
Supreme Court noted, however, 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
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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 turn to the second
step of the Alice and Mayo framework, and “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 (alterations in original)). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (January 7, 2019) (“Revised Guidance”). Under that guidance, we
first determine 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 § 2106.05(a)–(c), (e)–(h)).
See 84 Fed. Reg. at 54–55. Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical application, do we then
determine whether the claim:
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(3) adds a specific limitation beyond the judicial exception that is not
a “well-understood, routine, conventional activity” 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 84 Fed. Reg. at 56.
Revised Guidance Step 2(A), Prong 1
Following the Revised Guidance, we first consider whether the claims
recite a judicial exception. Claim 30 recites, among other steps, “retrieving
the [stored] product information associated with the product in the at least
one sales transaction from the database.” This step can be performed
mentally, for example by a person reading a product’s serial number
(product information) from a written list (a database).
In addition, we agree with the Examiner that “[a]ll the steps of the
claim, collectively as an ordered combination, are directed to registering a
product purchased by a buyer from a seller which is considered to be an
abstract idea similar to the concepts that have been identified by the courts
such as creating and fulfilling contractual relationships (See buySAFE, Inc.
v. Google, Inc.[, 765 F.3d 1350 (Fed. Cir. 2014)]).” Non-Final Action 4.
In buySAFE, the claims were directed to “methods and machine-
readable media encoded to perform steps for guaranteeing a party’s
performance of its online transaction.” 765 F.3d at 1351. The court held that
“[t]he relevant Supreme Court cases are those which find an abstract idea in
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certain arrangements involving contractual relations, which are intangible
entities.” Id. at 1353, citing Bilski and Alice.
Claim 30 on appeal is similar to the claims at issue in Bilski and Alice,
in that it is directed to a computer-implemented method for carrying out a
process that was widespread long before computers, the Internet, and
e-commerce: the process of filling out and mailing a warranty registration
card after purchasing a product. The steps of claim 30 correspond to the
electronic versions of storing a receipt in a file folder (“storing . . . receipts
. . .”), receiving a warranty registration card with the product (“receiving a
registration request signal”), reading the model number of the product from
the receipt or the owner’s manual (“retrieving the product information”), and
mailing the completed warranty registration card (“transmitting the product
information . . . for registration”).
Thus, we agree with the Examiner that claim 30 recites an abstract
idea: both the mental step of “retrieving the product information” and the
process as a whole, which is among the “methods of organizing human
activity”—specifically, “commercial interactions” such as “sales activities”
—that have been recognized as abstract ideas. See 84 Fed. Reg. at 52.
Revised Guidance Step 2(A), Prong 2
Although claim 30 recites an abstract idea, it would still be patent-
eligible if “the claim as a whole integrates the recited judicial exception into
a practical application of the exception”; i.e., whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception.” 84 Fed. Reg. at 54. This analysis
includes “[i]dentifying whether there are any additional elements recited in
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the claim beyond the judicial exception(s)” and “evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” Id. at 54–55.
One of the “examples in which a judicial exception has not been
integrated into a practical application” is when “[a]n additional element . . .
merely includes instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea.” Id. at 55. See
also buySAFE, 765 F.3d at 1353: “The Court in Alice made clear that a claim
directed to an abstract idea does not move into section 101 eligibility territory
by ‘merely requir[ing] generic computer implementation.’” (alteration in
original).
Here, we agree with the Examiner that claim 30 does not integrate the
recited abstract idea into a practical application, because “the functions such
as ‘storing receipts; receiving a registration request; retrieving information
related to the receipts; transmitting the information’ are conventional
functions of a computer.” Non-Final Action 4.
Claim 30 itself does not require any specific hardware or software
configuration to carry out the recited functions. Consistent with claim 30, the
Specification does not describe the claimed method as requiring any
unconventional computer functionality. See, e.g., Spec. 32–36. Thus, the
claimed method does not use the recited abstract idea in conjunction with a
particular machine or manufacture, nor does it reflect a technical
improvement to the recited computer functions: storing data in a database,
receiving a communication, retrieving data from a database, and transmitting
data.
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In summary, claim 30 recites an abstract idea and does not integrate
the abstract idea into a practical application. Therefore, claim 30 is directed
to an abstract idea.
Revised Guidance Step 2(B)
Finally, the Revised Guidance directs us to consider whether claim 30
includes “additional elements . . . [that] provide[] ‘significantly more’ than
the recited judicial exception.” 84 Fed. Reg. at 56. The Revised Guidance
states that an additional element that “simply appends well-understood,
routine, conventional activities previously known in the industry, specified
at a high level of generality, to the judicial exception, . . . is indicative that
an inventive concept may not be present.” Id.
Here, the only elements recited in claim 30, other than the abstract
idea itself, are electronic receipts and a database. The Specification makes
clear that no unconventional technology is required for the electronic
receipts: “[R]eceipt 26 is an electronically created document instantiated by
encoding the information included therein into a standardized format such as
that known as Extensible Markup Language (XML). Tools for performing
such coding are well known in the art.” Spec. 7:6–9. In the context of the
claimed method, the Specification states that “electronic receipt 375 is
generated . . . [and] stored in a database recorded in storage device 364.” Id.
at 36:3–4. The Specification does not provide details about the database that
stores electronic receipts.
Thus, the Specification does not describe any unconventional features
of either the electronic receipts or the database. And, as discussed above,
claim 30 does not recite, and the Specification does not describe, any
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unconventional computer hardware or software as being needed for the
claimed method. Therefore, claim 30 requires using only a generic computer
system, and “the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573
U.S. at 223. The combination of elements recited in the method of claim 30
does not amount to significantly more than the judicial exception itself, and
under 35 U.S.C. § 101 the claimed method is ineligible for patenting.
Appellant’s Arguments
Appellant argues that “electronic sales transactions represent a highly
technical field with the potential . . . for handling data files having different
protocols or structures . . . [and] for managing and tracking relationships
among all the relevant data,” among other things. Br. 8–9. Appellant argues
that “the claimed invention provides automatic registration of a product
purchased electronically by a buyer from a seller, thereby achieving a
technical improvement.” Id. at 9.
Appellant argues that “product registration represents a perennial
problem effectively known to and felt by all.” Id. at 11. “[T]he claimed
invention solves this problem.” Id. at 12.
Appellant also argues that, in the claimed system,
the database stores plural receipts between plural buyers and
plural sellers, and at least one of the electronic sales transaction
receipts includes the product information. Accordingly,
retrieving the product information from the database as claimed
constitutes a technical undertaking supported by the
unconventional technical solution provided in the specification
Id. at 13. Similarly, Appellant argues that “[t]he processor is further for
‘transmitting the product information to a device for registration of the
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product.’ The claim recitation constitutes a technical undertaking and further
defines architecture of the claimed system. For example, the information
transmitted to the device would transmit over a communication path.” Id. at
14. Appellant argues that, “[i]n view of the Federal Circuit’s finding [in
McRO, Inc. v. Bandai Namco Games Amer., Inc., 837 F.3d 1299 (Fed. Cir.
2016)] that a lip-syncing innovation is eligible as an improvement to a
technology or technical field, the present improvement in a highly technical
field involving electronic sales transactions certainly qualifies as an eligible
improvement.” Id. at 15.
These arguments are not persuasive. As the Examiner stated:
The alleged advantages that Appellants tout do not concern an
improvement in computer capabilities but instead relate to an
alleged improvement in the business process of storing receipts,
receiving a registration request; retrieving information related
to the receipts, and transmitting the information in the context
of registering a product purchased by a buyer from a seller, for
which a computer is used as a tool in its ordinary capacity.
Ans. 6–7. See also id. at 9: “The claimed features of Appellants’
invention may, at best, be considered to be a business solution, using
computers, to a problem rooted in an abstract idea. . . . The computer
is merely a platform on which the abstract idea is implemented.”
In other words, the claimed method does not provide any
improvement in the function of a computer, but merely uses conventional
computer functions to store, retrieve, and transmit certain data. The claimed
method represents at most an improvement in the process of providing
information to register a product, not in the technology used to do so.
Appellant argues that “the claims under appeal define a very particular
technical solution” and “do not preempt other solutions.” Br. 16. “The plain
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language of claim 30 thus does not preempt others from automatically
registering products with a different process that does not practice all three
of the recited steps or that otherwise avoids the claim.” Id. at 16–17.
Appellant argues that “claims 21 and 39 are also avoidable and leave ample
room for other[s] to practice alternative solutions.” Id. at 17.
These arguments are not persuasive. “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 F3d 1371, 1379 (Fed. Cir. 2015). Where “claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, . . .
preemption concerns are fully addressed and made moot.” Id. Here, for the
reasons discussed above, we conclude that the claims on appeal are directed
only to patent-ineligible subject matter under the Mayo framework.
Preemption concerns in this case are fully addressed by that conclusion.
Finally, Appellant takes issue with the Examiner’s statement that
“‘[C]ourts (and the USPTO) do not rely on evidence (e.g. prior art) that a
claimed concept is an abstract idea and in most cases resolve the ultimate
legal conclusion on eligibility without factual findings.” Br. 19 (quoting
Office Action mailed June 23, 2016). Appellant argues that this position
conflicts with recent decisions by the Federal Circuit. Id. at 20.
Regardless of whether the Examiner’s statement accurately reflects
the role of evidence in the eligibility analysis, we conclude that the rejection
is supported by a preponderance of the evidence in the record. In particular,
the Examiner’s finding that claim 30 requires no more than well-understood,
routine, and conventional functions of a computer (Non-Final Action 4–5) is
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supported by the evidence in Appellant’s Specification itself, which does not
describe any new or unconventional computer technology needed to carry
out the claimed method.
SUMMARY
We affirm the rejection of claim 30 under 35 U.S.C. § 101. Claims
21–29 and 31–39 fall with claim 30 because they were not argued
separately. 37 C.F.R. § 41.37(c)(1)(iv).
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