Ex Parte Ansel et al

Patent Trial and Appeal Board

May 15, 2017

10775757 (P.T.A.B. May. 15, 2017)

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.
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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.
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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
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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-
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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
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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
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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
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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
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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
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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
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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
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