Bowman, Brian et al.

Patent Trials and Appeals Board

Sep 9, 2019

12211732 - (R) (P.T.A.B. Sep. 9, 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.
12/211,732 09/16/2008 Brian Bowman 353952-991120 9029
26379 7590 09/09/2019
DLA PIPER LLP (US )
2000 UNIVERSITY AVENUE
EAST PALO ALTO, CA 94303-2248
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/09/2019 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):
PatentDocketingUS-PaloAlto@dlapiper.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte BRIAN BOWMAN and BRIAN KANAGA
____________

Appeal 2018-001466
Application 12/211,7321
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 According to Appellants, the real party in interest is One Planet Ops (Appeal Br.
1).

Appeal 2018-001466
Application 12/211,732

2

STATEMENT OF CASE
This is a decision on rehearing in Appeal No. 2018-001466. We have
jurisdiction under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to matters misapprehended or overlooked
by the Board in rendering the original decision, or to responses to a new ground of
rejection designated pursuant to § 41.50(b). 37 C.F.R. § 41.52.
ISSUES ON REHEARING
Appellants raise the issue of whether the Panel applied the 2019 Guidance2 in
the Decision.
ANALYSIS
We found in our decision that the rejection of claims 1, 2, 4–11, and 13–39
under 35 U.S.C. § 101 as directed to a judicial exception without significantly
more is proper. We also found that the rejection of claims 1, 2, 4–11, and 13–39
under 35 U.S.C. § 103(a) as unpatentable over Kostic and Flake is proper.
Decision 20. Appellants do not contest the Decision as to the rejection under 35
U.S.C. § 103(a). As a result, all claims remain rejected irrespective of Appellants’
arguments.
The Appellants argue that the Panel failed to follow the 2019 Guidance as to
Step 2, Prongs 1 and 2. Request 2–3.

2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019).
Appeal 2018-001466
Application 12/211,732

3

The Appellants contend that relying on a comparison of the claims to case law
was expressly removed from the analysis by the 2019 Revised Guidance. Request
2. The 2019 Guidance states that it
aims to clarify the analysis. In accordance with judicial precedent and
in an effort to improve consistency and predictability, the 2019
Revised Patent Subject Matter Eligibility Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to
explain that the abstract idea exception includes the following
groupings of subject matter, when recited as such in a claim
limitation(s).
Id. at 52. Thus, comparison of the claims to case law was analytically made easier,
but was not expressly removed from the analysis by the 2019 Revised Guidance.
We are not persuaded by Appellants’ argument that the “conclusion does not
explain how the claims are directed to either a mathematical concept (no math or
equation in the claims) or a mental process (since the claims cannot be performed
in the human mind.)” Request 2–3. The Decision makes no such conclusion as to
a mathematical concept. The Decision supports the alternate conclusion that the
claims are also directed to concepts performed in the human mind as mental
processes because the steps of receiving, analyzing, modifying, and displaying data
mimic human thought processes of observation, evaluation, judgment, and opinion,
perhaps with paper and pencil, where the data interpretation is perceptible only in
the human mind. Decision 10. Appellants do not meaningfully contend that the
steps of receiving, analyzing, modifying, and displaying data do not mimic human
thought processes of observation, evaluation, judgment, and opinion, perhaps with
paper and pencil, where the data interpretation is perceptible only in the human
mind. That they do so mimic is apparent on the face of such basic data processing
functions.
Appeal 2018-001466
Application 12/211,732

4

We are not persuaded by Appellants’ argument that
while an example of the certain methods of organizing human
behavior is a fundamental economic principle of practice (which the
Board equates to the auction), the claims are in fact directed to the
click marketplace that has an auction aspect, but also has ‘a click type
field to set an amount of sharing’ (not a fundamental economic
principle) and indicating a highest price bid for the click that is shared
by the click buyers (based on the click type field) that is not a
fundamental economic principle, but rather an improvement to known
marketplace systems.
Request 3. Appellants conflate the two prongs of Step 2A. The first prong
examines generally whether a claim recites an abstract idea. The second prong
examines how the idea is applied and implemented. The argument regarding a
click type field is directed to implementation of the idea, and thus to the second
prong of Step 2A. An improvement to known marketplace systems is still no more
than an improvement to a marketplace system, which is itself a conceptual idea.
Appellants do not contend the improvement is to the technological implementation
of a marketplace system, but only to the marketplace system itself, which is a
conceptual idea for a marketplace. Improving an ineligible idea does not confer
eligibility. “A claim for a new abstract idea is still an abstract idea. The search for
a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016).
As to a click type field, this is the equivalent of writing the field content on
paper. The claims do nothing technological with the click type field content.
Instead, the content is recited as being “an amount of sharing that is permitted for a
particular click.” Claim 1, limitation 4. The next limitation recites indicating
buyers win an auction for the particular click that is shared by the group. No nexus
between the limitation regarding the field and that regarding the indicating is
Appeal 2018-001466
Application 12/211,732

5

recited. Therefore no technological use of the field is recited. As a result, the click
field Appellants cite is no more than a notation substrate. This is insufficient to
render the claim eligible under Step 2, Prong 2.
We are not persuaded by Appellants’ argument that
the claims are integrated into a practical application because the
claims improve an existing technology of computer implemented
auctions. Unlike the existing auction systems, the claims recite the
click type field to set an amount of sharing for the click and
indicating a highest price bid for the click that is shared by the click
buyers (based on the click type field) that are both improvements to
computer implemented auctions that provide: 1) a better way to
perform an auction with a click that can be shared; 2) a technique (the
click type field) that allows the clicks to be shared among a group that
does not occur in a routine auction system that may be selling an
automobile and the like; and 3) using the sharing information, can
determine a winning bid for the shared click that again is an
improvement over known and well understood auction systems.
Request 3. This is largely a repetition of the previous argument. As to the three
alleged improvements cited, an auction is itself a conceptual idea. And as
determined supra, improving a conceptual idea does not confer eligibility. No
technological implementation details behind the idea are recited in the claims. A
field that allows a notation as to an amount of information sharing is just that, a
notational field, akin to a paper pad. The claim does not recite doing anything
technological with the field content. Claim 1 recites no determination of a winning
bid based on the field content, only indicating that a group win who share a click.
Even if the claim further recited a nexus between the field content and the sharing,
this would be no more than the automated equivalent of reading an instruction
from a paper pad in deciding an auction result.
Appeal 2018-001466
Application 12/211,732

6

CONCLUSION
Nothing in Appellants’ request has convinced us that we have overlooked or
misapprehended the law and guidance as to rejections under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more as argued by Appellants.
Again, Appellants do not contest the Decision as to the rejection under 35 U.S.C.
§ 103(a). As a result, all claims remain rejected irrespective of Appellants’
arguments. Accordingly, we DENY the Request.
DECISION
To summarize, our decision is as follows:
• We have considered the REQUEST FOR REHEARING
• We DENY the request that we reverse the Examiner as to claims 1, 2, 4–11,
and 13–39.

REHEARING DENIED