Ex Parte Ansel et alDownload PDFPatent Trial and Appeal BoardMay 15, 201710775757 (P.T.A.B. May. 15, 2017) Copy Citation 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. 10/775,757 02/09/2004 Duane Allen Ansel 53313/1 8726 3528 7590 05/17/2017 STOFT RTVF.S TIP- PDNT EXAMINER 760 SW 9TH AVENUE NGUYEN, THUY-VI THI SUITE 3000 PORTLAND, OR 97205 ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 05/17/2017 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): PATLAW@STOEL.COM slcpatent@ stoel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DUANE ALLEN ANSEL and AMY KATHLEEN ANSEL Appeal 2015-000299 Application 10/775,757 Technology Center 3600 Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and AMEE A. SHAH, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’ final decision rejecting claims 1, 3—13, and 16—31. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-000299 Application 10/775,757 BACKGROUND Appellants’ invention is directed to a method for trading event sponsorship opportunities for certain assets, services or compensation useful in putting on an event. (Spec. 1). Claim 1 is illustrative: 1. A method, comprising: recording a request for at least one service or tangible, non-monetary asset for use in an event from an event owner, the request having a fulfillment cost related to the event, wherein the request is received using a computing device; notifying a plurality of providers of the request for the at least one service or tangible, non-monetary asset for use in the event using the computing device, wherein notifications pertaining to the request sent to one or more of the plurality of providers, including a first one of the providers, indicates sponsorship availability for the one or more providers; responsive to notifying the plurality of providers of the request, receiving at the computing device one or more provider offers, including a provider offer from the first provider, the provider offer comprising a sponsorship offer, comprising: a plurality of marketing opportunities to be given to the first provider, and an indication of a portion of the fulfillment cost of the requested service or tangible, non-monetary asset to be defrayed by the plurality of marketing opportunities; receiving, at the computing device, an acceptance of a sponsorship exchange offer with a selected one of the plurality of providers responsive to notifying the plurality of providers of the request; and assembling a contract comprising one or more clauses corresponding to the plurality of marketing opportunities of the accepted sponsorship exchange offer responsive to receiving the acceptance. 2 Appeal 2015-000299 Application 10/775,757 relies on the following priorThe Examiner of unpatentability: Walker ’207 Walker’153 Yoshida Delgado Peyser US 5,794,207 US 6,484,153 B1 US 2003/0093361 A1 US 7,162,429 B1 US 7,729,944 B1 art references as evidence Aug. 11, 1998 Nov. 19, 2002 May 15,2003 Jan. 9, 2007 June 1, 2010 Appellants appeal the following rejections: Claims 1, 3—13, and 16—31 are rejected under 35 U.S.C. § 101 as non- statutory subject matter. Claims 1, 3—7, 13, and 31 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshida in view of Delgado. Claims 8, 29, and 30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshida in view of Delgado and further in view of Peyser. Claims 9—12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshida in view of Delgado and further in view of Walker ’207. Claims 16, 17, and 25—28 under 35 U.S.C. § 103(a) as unpatentable over Yoshida in view of Delgado and further in view of Walker ’153. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshida in view of Delgado and Walker ’153 and further in view of Peyser. Claims 19—24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshida in view of Delgado, Walker ’153 and further in view of Walker ’207. 3 Appeal 2015-000299 Application 10/775,757 ISSUES Did the Examiner err in rejecting the claims under 35U.S.C. § 101 because it is unclear what fault the Examiner actually found with the claims and because the claims do not preempt a building block of the economy? Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a) because Delgado does not disclose assembling a contract? Did the Examiner err in rejecting claim 16 under 35 U.S.C. § 103(a) because Walker ’153 does not disclose a provider agent configured to construct a provider offer within a scope of agency of the provider agent and based on a directive of the first provider? Did the Examiner err in rejecting claim 29 under 35 U.S.C. § 103(a) because the prior art does not disclose transmitting a notification to a second one of the providers which indicates that sponsorship is not available to the second provider? FACTUAL FINDINGS We adopt the Examiner’s findings as our own. Final Office Act. 2—6, 8—13, 18—23. Additional findings of fact may appear in the Analysis that follows. ANALYSIS Rejection under 35 U.S.C. §101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include implicit 4 Appeal 2015-000299 Application 10/775,757 exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLSBanklnt’l, 134 S.Ct. 2347, 2354 (2014). In determining whether a claim falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court’s two- step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). In accordance with that framework, we first determine whether the claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356 (“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 risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing respondents’ claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter.”); Parker v. Flook, 437 U.S. 584, 594—95 (1978) (“Respondent’s application simply provides a new and presumably better method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S. 63, 64 (1972) (“They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals.”). The patent-ineligible end of the spectrum includes fundamental economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611; mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of scientific and technological work, Benson, 409 U.S. at 69. On the patent- 5 Appeal 2015-000299 Application 10/775,757 eligible side of the spectrum are physical and chemical processes, such as curing rubber, Diehr, 450 U.S. at 184 n.7, “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for manufacturing flour, Benson, 409 U.S. at 69. If the claim is “directed to” a patent-ineligible abstract idea, we then consider the elements of the claim—both individually and as an ordered combination—to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Alice, 134 S. Ct. at 2355. This is a search for an “inventive concept”—an element or combination of elements sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. Id. We are not persuaded of error on the part of the Examiner by Appellants argument that it is unclear what fault the Examiner actually found with the claims. (Reply Br. 4.) The law is well-established that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 IJ.S.C. § 1.32 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” See In re Jung, 637 t\3d 1356, 1362 (Fed. Cir. 2011). The Examiner explains in the rejection that independent claim 1 is directed to the abstract idea of a fundamental economic practice and/or a method of organizing human activities (Ans. 29). Appellants’ Specification states that the present invention relates to trading event sponsorship opportunities for certain assets, services or compensation useful in putting on such an event (Spec. 1). Claim 1 recites that a plurality of providers are 6 Appeal 2015-000299 Application 10/775,757 notified of a sponsorship opportunity and one such provider is selected from the plurality of providers and a contract is assembled with the selected one of the providers which corresponds to a marketing opportunity. By stating that the claims are directed to a fundamental economic practice or a method of organizing human activities, the Examiner notifies the Appellants that the trading of event sponsorship opportunities for certain assets, services or compensation by selecting a provider from a plurality of providers, and assembling a contract that corresponds to a marketing opportunity of the accepted sponsorship is considered to be a fundamental economic practice and/or a method of organizing human activities. The Examiner, thus, notified Appellants of the reasons for the rejection “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. We note that Appellants present no argument related to the holding of the Examiner that the claims are directed to a fundamental economic practice and/or a method of organizing human activities. We are not persuaded of error on the part of the Examiner by Appellants’ argument that the claims do not preempt a building block of the economy. (Reply Br. 5.) Although preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v, Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015), cert, denied, 136 S.Ct. 701, 193 (2015) (“[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”). And, “[wjhere a patent's claims are deemed only to 7 Appeal 2015-000299 Application 10/775,757 disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” We are not persuaded of error on the part of the Examiner by Appellants’ argument that the claims include substantially more than just applying an abstract idea because the claims include several steps which include detail about what information is being exchanged in each step. (Reply Br. 5.)The steps that Appellants refer to about the information that is exchanged, i.e., notifying a plurality of providers, receiving provider offers etc., {id.) are part of the abstract idea itself of trading of event sponsorship opportunities for certain assets, services or compensation by selecting a provider from a plurality of providers and assembling a contract that corresponds to a marketing opportunity. In view of the foregoing, we will sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 101. We will also sustain this rejection as it is directed to the remaining claims because the Appellants do not address the separate patent eligibility of these claims. Rejection under 35 U.S.C. § 103(a) Claims 1, 3—7, 13, and 31 We are not persuaded of error on the part of the Examiner by Appellants’ argument that Delgado does not disclose assembling a contract. Appellants argue that Delgado discloses no relationship between the formal written agreement disclosed in lines 61—67 of column 1 and the acceptance of terms and conditions, much less acceptance of terms and conditions of the 8 Appeal 2015-000299 Application 10/775,757 formal written agreement (Brief 11). Part of Appellants’ argument is that the agreement depicted in Figure 4D, which the Examiner relies on for teaching this subject matter, does not relate to the formal written agreement. We agree with the Examiner that the trademark use agreement depicted in Figure 4D is a contract as broadly claimed and that it comprises one or more clauses corresponding to the marketing opportunities (trademark use). Although it may be true that Delgado also discloses a formal written agreement or master agreement, the trademark use agreement is also an agreement, and this agreement, which is depicted in Figure 4D, is with clauses corresponding to marketing opportunities as recited in claim 1. In addition, Figure 4D clearly depicts an agree button and thus does disclose acceptance of the trademark use agreement. In view of the foregoing, we will sustain the Examiner’s rejection of claim 1. We will also sustain the rejection as it is directed to claims 3—7, 13, and 31 because the Appellants have not argued the separate patentability of these claims. Claims 9—12 The Appellants have not separately addressed the rejection of these claims therefore the rejection of these claims is sustained. Claims 16, 17, and 25—28 We are persuaded of error on the part of the Examiner in rejecting claim 16 under 35 U.S.C. § 103(a) by Appellants’ argument that Walker ’153 does not disclose a provider agent configured to construct a 9 Appeal 2015-000299 Application 10/775,757 provider offer within a scope of agency of the provider agent and based on a directive of the first provider. The Examiner relies on Walker ’153 at column 3 line 65 to column 4 line 8, column 8, lines 9—16 and column 10, lines 4—25 for teaching constructing a provider offer within the scope of agency of the provider agent. The Examiner finds, with reference to the above-noted portions of Walker ’153, that the teaching of determining whether the offer signal and the informational signal satisfy seller defined restriction of any rule relates to determining whether the offer is within the scope of agency. (Final Act. 21, Ans. 35.) However, we agree with the Appellants that this determination is made after an offer has already been constructed and been transmitted (col. 1,11. 57—59). The offer is not constructed by determining that a request for offers is within the scope of agency of the provider agent. In view of the foregoing, we will not sustain the rejection as it is directed to claim 16 and claims 17 and 25—28 dependent therefrom. Claim 18—24 We will not sustain the rejection of these claims for the same reasons discussed above in regard to the rejection of claim 16 from which claims 18— 24 depend. Claims 8, 29, and 30 Claim 8 and claim 29, from which claim 30 depends, recite that the notification sent to the second one of the plurality of providers indicates that sponsorship is not available for the second provider. We are not persuaded 10 Appeal 2015-000299 Application 10/775,757 of error on the part of the Examiner by Appellants’ argument that the prior art does not disclose this subject matter. We agree with the Examiner that the recitation regarding what is in the notification sent to the second provider relates to the contents of data that is transmitted to the second provider. The contents of the data are not functionally related to the method performed by the computer readable medium or to the computer readable medium itself. In other words, the method of claim 8 is not affected by what the notification to the second provider includes. Therefore, the contents of the data thus represent non functional descriptive material, which “does not lend patentability to an otherwise unpatentable computer-implemented product or process.” Y c. v.. QQ I TOIT/T'"! d 1 Ov7■S, oh Ubl:\VO ibd.V 84 PCPd l?7? 889 (BPA1 V-* ' 2008) (precedential). See 2005) (informative) (Fed. Cir, Appeal No. 2006-1003), qff’d, (Rule 36) (June 12, 2006) (“wellness- related” data in databases and communicated on distributed network did not functionally change either the data storage system or the communication system used in the claimed method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed, Cir, 2004); Nehh\ 88 USPQ2d at 1887—90 (discussing non functional descriptive material). Moreover, we are not persuaded of error on the part of the Examiner by Appellants’ argument that Peyser fails to disclose notification to sellers regarding sponsorship but rather the notification in Peyser relates to whether or not the buyer will order from the seller. (Brief 16). This argument is not persuasive because it is related to the teachings of Peyser alone when the rejection is based on the combined teachings of Yoshida, Delgado, and 11 Appeal 2015-000299 Application 10/775,757 Peyser. We note that Yoshida and Delgado relate to selection of sellers for sponsorships. In view of the foregoing, we will sustain the rejection of the claims 8 and 29. We will also sustain this rejection as it is directed to claim 30 which depends from claim 29 because the Appellants rely on the arguments advanced in regard to claim 29 in addressing the patentability of claim 30 (Brief 16). DECISION We affirm the Examiner’s § 101 rejection of the claims on appeal. We affirm the Examiner’s § 103(a) rejections of claims 1, 3—13, and 29-31. We do not affirm the Examiner’s § 103 rejections of claims 16—28. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1) (2009). AFFIRMED 12 Copy with citationCopy as parenthetical citation