Will Volnak

Patent Trials and Appeals Board

Jul 24, 2020

12422055 - (D) (P.T.A.B. Jul. 24, 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.
12/422,055 04/10/2009 Will Volnak 091113-0011 5825
31824 7590 07/24/2020
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
07/24/2020 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):
mweipdocket@mwe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILL VOLNAK
____________

Appeal 2019-005913
Application 12/422,055
Technology Center 3600
____________

Before ERIC S. FRAHM, NORMAN H. BEAMER, and JASON M.
REPKO, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–18, 20–34, and 36–37. Claims 19 and 35 are
cancelled. We have jurisdiction over the pending rejected claims under 35
U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Copernican Technologies, Inc. as the
real party in interest. (Appeal Br. 3.)
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THE INVENTION
Appellant’s disclosed and claimed invention is directed to an online
library marketplace. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A computer-implemented method for providing an online
library marketplace, comprising:
receiving a first user input from a first user, the first user
input providing for publication of a non-modifiable data object
in a publishing library, wherein the publication of the non-
modifiable data object makes the non-modifiable data object
available to a second user for purchase;
receiving a second user input from the first user, the
second user input providing a first fee for the second user to
pay to access the non-modifiable data object;
granting, by a computer or by a processor, access to the
non-modifiable data object to the second user upon payment of
the first fee;
polling the publishing library to determine whether a new
entry has been created;
synchronizing a second user’s library with the publishing
library when the second user accesses the publishing library;
importing the new entry as a non-modifiable data object
into the second user’s library when it is determined that the new
entry has been created and the second user’s library is
synchronized with the publishing library;
receiving a subscription request from the second user for
a data object source, wherein the subscription request provides
payment information for access to one or more non-modifiable
data objects stored in the data object source; and
providing the non-modifiable data object for storing as an
entry to a journal within a library belonging to the second user
based on the subscription request, wherein the first user
establishes an e-mail relationship with the second user for
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sharing nonmodifiable data objects, the e-mail relationship
including a library identification for the first user, a library
identification for the second user, and a validity identification
created by the first user.
(Appeal Br. 16 (Claims Appendix).)

REJECTION
The Examiner rejected claims 1–18, 20–34, and 36–37 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.2 (Final Act. 2–4.)
ISSUE ON APPEAL
Appellant’s arguments in the Appeal and Reply Briefs presents the
following issue:3
Whether the Examiner erred in finding claims 1–18, 20–34, and 36–
37 are directed to a judicial exception without significantly more. (Appeal
Br. 10–14.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).

2 The rejection also specifies claims 19 and 35 — however, those claims are
cancelled.
3 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed June 3, 2019); the Reply Brief
(filed Aug. 5, 2019); the Final Office Action (mailed Apr. 9, 2019); and the
Examiner’s Answer (mailed July 24, 2019) for the respective details.
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The Examiner concludes the claims are directed to an “online library
marketplace,” a method of organizing human activity and commercial
interaction, including:
receiving a first user input, receiving a second user input,
granting access to data object, polling the publishing library to
determine whether a new entry has been created, synchronizing
a second user’s library, importing the new entry as a data object
into the second user library when it is determined that the new
entry has been created, receiving a subscription request, and
providing the non-modifiable data object for storing as an entry
to a journal within a library belonging to the second user.
(Final Act. 2–3.) The Examiner further concludes the subject matter of the
claims is not integrated into a practical application, and does not include
additional elements that are sufficient to amount to significantly more than
the judicial exception. (Id. at 3–4.)
Appellant argues “the claimed technical features provide a meaningful
improvement to the field of managing, accessing, and distributing publisha-
ble online material between users and are not directed to ‘advertising, mar-
keting or sales activities.’” (Appeal Br. 11.) Appellant further argues “the
claims define an invention which improves computer related technology by
allowing computer performance of a function not previously performable by
a computer, namely, the function of operating a publishing library supported
by a computer network.” (Id. at 11–12.) Appellant asserts:
The claims are directed to technically challenging, non-
conventional steps requiring the use of processors and circuits
such as “synchronizing a second user's library with the
publishing library when the second user accesses the publishing
library” or “polling the publishing library to determine whether
a new entry has been created.”
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(Id. at 12.) Finally, Appellant argues the claims add significantly more than
any alleged abstract idea given limitations that provide for “user input for
publication of a non-modifiable data object in a publishing library”;
“importing [a] new entry as a non-modifiable data object into [a] second
user’s library when it is determined that the new entry has been created and
the second user’s library is synchronized with the publishing library”; and
“[granting] by a computer or by a processor, access to the non-modifiable
data object to the second user upon payment of [a] first fee.” (Id. at 12–13.)
We are not persuaded the Examiner erred. An invention is patent-
eligible if it claims a “new and useful process, machine, manufacture, or
composition of matter.” 35 U.S.C. § 101. Here, independent claim 1 and its
dependent claims relate to a method, independent claim 36 relates to a
system, and independent claim 37 relates to a non-transitory computer
readable medium — i.e., a process, machine, and manufacture, respectively.
However, the Supreme Court has long held that “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice 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, 589–90 (2013)). The “abstract ideas”
category embodies the longstanding rule that an idea, by itself, is not
patentable. Alice, 573 U.S. at 216–17.
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 217. The first step in the analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts,”
such as an abstract idea. Id. Concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity
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such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski v.
Kappos, 561 U.S. 593, 611 (2010); mathematical concepts (Parker v. Flook,
437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. 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, 191 (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 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
If the claims are directed to a patent-ineligible concept, the second
step in the Alice/Mayo analysis is to consider 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.” 573 U.S. at 217 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to “search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.” 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at
72–73.) 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. 573 U.S. at 221. A transformation into a
patent-eligible application requires more than simply stating the abstract idea
while adding the words “apply it.” Id.
Further to the Alice/Mayo analytical framework, and as acknowledged
by Appellant and the Examiner, the USPTO published revised guidance on
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the application of Section 101. See 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Revised
Guidance”). Under the Revised 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 § 2106.05(a)–(c), (e)–(h)).
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 are 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 Revised Guidance.
In evaluating the claims at issue, we consider claim 1 as
representative, consistent with how Appellant and the Examiner analyze the
claims. See 37 C.F.R. § 41.37(c)(1)(iv)(2016). Omitting the portions of the
claim invoking use of generic technology (which are discussed separately
below), the remaining limitations of claim 1 elaborate on a method of
providing a library marketplace, via the steps of:
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(a) receiving a first user input from a first user, the first user
input providing for publication of a non-modifiable data object
[e.g. a book or publication] in a publishing library, wherein the
publication of the non-modifiable data object makes the non-
modifiable data object available to a second user for purchase;
(b) receiving a second user input from the first user, the
second user input providing a first fee for the second user to
pay to access the non-modifiable data object;
(c) granting . . . access to the non-modifiable data object to
the second user upon payment of the first fee;
(d) polling the publishing library to determine whether a new
entry has been created;
(e) synchronizing a second user’s library with the publishing
library when the second user accesses the publishing library;
(f) importing the new entry as a non-modifiable data object
into the second user’s library when it is determined that the new
entry has been created and the second user’s library is
synchronized with the publishing library;
(g) receiving a subscription request from the second user for
a data object source, wherein the subscription request provides
payment information for access to one or more non-modifiable
data objects stored in the data object source; and
(h) providing the non-modifiable data object for storing as an
entry to a journal within a library belonging to the second user
based on the subscription request, wherein the first user
establishes [a] relationship with the second user for sharing
nonmodifiable data objects, the . . . relationship including a
library identification for the first user, a library identification
for the second user, and a validity identification created by the
first user.
(Appeal Br. 16 (Claims Appendix).) Omitted from the above are the generic
references to “computer,” “processor,” and “email,” discussed further below.
Although terms such as “online”, “user input”; “non-modifiable data
object”; “polling”; “synchronizing”; and “importing” are commonly used in
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the context of describing computerized operations, if, as should be the case
here, they are broadly construed, those terms are equally applicable to non-
computerized human interactions in the context of providing, paying for, and
accessing “non-modifiable data objects” — e.g., books or publications — in
a library marketplace. Apart from the use of the aforesaid generic
technology and terminology, each of these limitations describes steps taken
in the course of the human activity of providing a library marketplace.
As stated in the Revised Guidance, “methods of organizing human
activity” considered an abstract idea include “commercial or legal
interactions” including “agreements in the form of contracts,” and
“marketing or sales activities or behaviors.” (Revised Guidance, 84 Fed.
Reg. at 52). The above listed claim 1 limitations relate to commercial
activities (purchasing access to library materials), contractual agreements
(providing a fee, payment of the fee, receiving a subscription request,
establishing a relationship, validity identification), and marketing and sales
activities. See, e.g., Spec. ¶ 6 (“The subscription based nature sets up an
ongoing financial relationship between the user and the provider, allowing
for revolving billing and crediting related to viewing/selling/reselling of
entries.”)
Appellant argues that “the claimed technical features provide a
meaningful improvement to the field of managing, accessing, and
distributing publishable online material between users and are not directed
to ‘advertising, marketing or sales activities.’” (Appeal Br. 11.) However,
as discussed, the claims encompass marketing and sales activities, and in any
event “managing, accessing, and distributing publishable online material”
are themselves part of the abstract idea of providing a library marketplace.
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Therefore, we agree with the Examiner that the subject matter of claim 1
recites an abstract idea, as do the remaining claims.
Further, pursuant to the Revised Guidance, we consider whether there
are additional elements set forth in claim 1 that integrate the judicial
exception into a practical application. Revised Guidance, 84 Fed. Reg. at
54–55. Here, the abstract idea of claim 1 is carried out using a computer or
processor, and email. We agree with the Examiner “the additional
element(s) of the claim(s) such as computer, processor, system, and a non-
transitory computer readable storage medium merely use(s) a computer as a
tool to perform an abstract idea and/or generally link(s) the use of a judicial
exception to a particular technological environment.” (Final Act. 3.)
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 221.
Nor does the subject matter of claim 1 contain additional elements
that implement the judicial exception with a “particular machine,” because
the claims do not specify any details in regard to the system. See MPEP
§ 2106.05(b). Further, the method does not transform matter; at best it
transforms information. See MPEP § 2106.05(c).
Nor does claim 1 have any other meaningful limitations (MPEP
§ 2106.05(e)), or any of the other considerations set forth in the Revised
Guidance regarding a determination of whether additional elements integrate
the judicial exception into a practical application. See Revised Guidance, 84
Fed. Reg. at 55. Accordingly, we conclude that the subject matter of claim 1
(and the remaining claims) is directed to fundamental economic principles or
practices, which are examples of the certain methods of organizing human
activity, and thus an abstract idea, and the additional elements recited therein
do not integrate the abstract idea into a practical application.
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Turning to the second step of the Alice inquiry, we consider 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.” 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 66, 79, 78 (2012)). Again, the Examiner finds, and we
agree, that “the additional element(s) of using a computer, processor,
system, and a non-transitory computer readable storage medium to perform
the steps amounts to no more than using a computer or processor to
automate and/or implement the abstract idea of a library marketplace. (Final
Act. 4.) “[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573
U.S. at 223. These additional elements of claim 1, whether individually or
in combination, fails to add “significantly more” to the basic abstract idea
encompassed by the claim sufficient to transform the claimed abstract idea
into a patent-eligible application. The other features of the claims on which
Appellant relies — such as synchronizing libraries, polling the publishing
library, and addressing security (see Appeal Br. 12–13) — are elaborations
on the basic abstract idea itself, in which a computer or processor, and email,
are used to provide an online library marketplace.
“It is clear from Mayo that the ‘inventive concept’ cannot be the
abstract idea itself.” Aatrix Software, Inc. v. Green Shades Software, Inc.,
890 F.3d 1354, 1359 (Fed. Cir. 2018). Moreover, “[p]atent law does not
protect claims to an ‘asserted advance in the realm of abstract ideas . . . no
matter how groundbreaking the advance.’” Aatrix, 890 F.3d at 1359 (Fed.
Cir. 2018). Nothing regarding any aspect of the “ordered combination” of
the claim elements provide significantly more than the abstract idea that
claim 1 is directed to.
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Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 1. Appellant provides no arguments that would differentiate the
remaining claims from claim 1. (Appeal Br. 13.) Thus, the foregoing
analysis of claim 1 is exemplary of that for dependent claims 2–18, 20–34,
36–37. See 37 C.F.R. § 41.37(c)(1)(iv) (2016). Therefore, we also sustain
the Examiner’s 35 U.S.C. § 101 rejection of those claims.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–18, 20–
34, 36–37
101 Eligibility 1–18, 20–
34, 36–37

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