Ex Parte Becker

Patent Trial and Appeal Board

Sep 25, 2017

12688133 (P.T.A.B. Sep. 25, 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.
12/688,133 01/15/2010 Ian S. Becker Becker-UP-1 2939
33873 7590 09/27/2017
Eric Hanscom / InterContinental IP
7040 Avenida Encinas, Suite 104-358
CARLSBAD, CA 92011
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
eric @icipLaw.com
info @ iciplaw .com
ryanp@hanalexmcd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN S. BECKER
Appeal 2016-005442
Application 12/688,133
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—21. We affirm.
1 The Appellants identify the inventor, Ian Saul Becker, as the real party
interest. (Br. 3).
Appeal 2016-005442
Application 12/688,133
THE CLAIMED INVENTION
Appellant’s claims are generally directed to “booking transportation
that enables passengers to equally share the cost of the transportation by
consolidating their itineraries.” (Spec. para. 1). Claim 6 is illustrative of the
claimed subject matter:
6. A computer-implemented method for booking transportation
over the internet comprising
receiving, by one or more computer systems, search
criteria from a passenger, where the passenger sends the search
criteria through a web browser;
sending, by one or more computer systems, open flight
listings to the passenger, where the passenger can view the open
flight listings through a web browser;
joining the passenger to a flight listing;
joining additional passengers to the flight listing; and
notifying the passengers upon the occurrence of a limiting
event, where the passengers are notified of the cost per passenger
of traveling the flight listing, where the passengers are allowed
to accept or reject the flight listing;
where the flight listing has a total cost, where the cost per
passenger is the total cost divided by the number of passengers
that have joined the flight listing.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nelson US 6,496,568 Dec. 17,2002
Stener US 8,244,549 B1 Aug. 14,2012
Eagle US 2009/0198624 A1 Aug. 6, 2009
“Check Into Safety, Costs and Convenience When Considering Commercial
Airline Alternatives”, Arkansas Business, Dec. 27, 1999 (hereinafter
“Arkansas Business”).
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Application 12/688,133
REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 1—21 under 35 U.S.C. § 101 as reciting
ineligible subject matter in the form of an abstract idea.
Claims 1, 2, 5—11, 13, 14, 16—18, 20, and 21 are rejected under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Eagle, Arkansas Business, and
Stener.
Claims 3, 4, 12, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Eagle, Arkansas Business, Stener, and Official Notice.
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Eagle, Arkansas Business, Stener, and Nelson.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Specification describes that the “Internet can be any form of
interactive medium that facilitates rapid interactive exchange of data
between a plurality of individuals or systems . . . .” (Spec. para. 64).
2. Eagle discloses “. . . an Internet-based reservation system, that allows
charter jet operators to fill empty legs of charter flights by selling seats
on these legs directly to travelers.” (Eagle para. 9).
3. Eagle discloses charging customers a fee based on prices offered from
among several operators. {Id. at para. 36).
4. Arkansas Business discloses determining a passenger’s cost by dividing
“the cost of a chartered airplane by the number of passengers on board.”
(Arkansas Business p. 2).
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5. Stener discloses sharing the cost of a charter flight amongst fractional
owners of the aircraft who choose to fly on it at the reserved flight.
(Stener Fig. 8).
6. Stener discloses “[i]f a determination at step 810 is made that there are
more than five owners thinking of flying at a close time, then the
reconfirmation of interests in the times, cities, etc., is made at step 816
by the fractional operator 102.” (Stener col. 22 11. 25—28).
ANALYSIS
Rejection under 35 U.S.C. § 101
Initially, we note that Appellant argues claims 1—21 together as a
group. (Br. 13). Correspondingly, we select independent method claim 6 as
representative to decide the appeal of these claims, with remaining
independent method claims 17 and 21 standing or falling with claim 6.
Appellant does not provide a substantive argument as to the separate
eligibility of claims 7—16, and 18—20 that depend from claims 6 and 17.
Thus, claims 7—21 stand or fall with claim 6. See 37 C.F.R.
§ 41.37(c)(l)(vii)).
Appellant argues the claims do not represent abstract ideas, because
“the claims address a technological challenge of consolidating multiple
unique requests for booking transportation from remote parties that is
necessarily rooted in the Internet.” (Br. 13). Appellant also argues the
claims are more than fundamental economic practices and methods of
organizing human behavior, as asserted by the Examiner, in that claims 1—5
are “a system that consolidates requests made by users over the Internet,”
and in claims 6—21 “[ujsers are joined and removed from the flight listing,
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and notified upon the occurrence of limiting events.” (Br. 14). Appellant
additionally argues the claims are “Internet rooted,” “concrete and tangible,”
and “do not preempt the field of ‘coordinating travel plans.’” (Br. 15—16).
The patent statute provides that a patent may be obtained for “any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof.” 35 U.S.C. § 101. Yet the Supreme
Court has “long held that this provision contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLSBankInt'l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 133
S. Ct. 2107, 2116 (2013)). The Court has, thus, made clear that
“[phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67
(1972).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first
step in that analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Id. If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether the additional elements “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 132
S. Ct. at 1291, 1297). In other words, the second step is to “search for an
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‘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.’” Id. (citingMayo, 132 S.
Ct. at 1294).
In rejecting claims 1—21 under 35 U.S.C. § 101, the Examiner finds
that the claimed method steps, as recited in independent claims 1, 6, 17, and
21, “are directed to the abstract idea of coordinating travel plans, which is a
method of organizing human activities.” (Final Act. 4).
We agree.
Independent claim 6 recites steps for providing information about a
shared flight listing to users, where the cost of the flight is divided equally
between users, and where a user is permitted to join or leave the common
flight listing.
The invention is, thus, a version of the well-known practice of seeing
who wants to share the cost of a common purchase. Sharing the cost of a
purchase is a long-standing practice that predates the use of computers to
determine the cost parameters and keep track of who is in the group. The
claim is, thus, directed to a fundamental economic practice of arranging to
share the cost of a purchase. The claimed method also is merely a way to
arrange an order of steps to be performed so people can receive information
to decide if they will participate in a shared group purchase, and, thus,
organize the behavior of people interested in sharing a purchase.
In addition, the claim recites methods that could be performed entirely
through mental thought. The claim requires only sending and receiving
information about potential common purchases (e.g., “who wants to share
the cost of a pizza or some nachos?”), keeping track of who is in a group has
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joined a “flight listing” and what the average cost is as users join or leave the
listing, and notifying users of a “limiting event.” All of these steps can be
done by thought, speaking, or the use of pen and paper to communicate.
The Federal Circuit has held that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under § 101.”). Additionally, mental processes, e.g.,
sending information to a user, as recited in claim 6, or joining users to a list,
as recited in claim 17, remain unpatentable even when automated to reduce
the burden on the user of what once could have been done with pen and
paper. Id. at 1375 (“That purely mental processes can be unpatentable, even
when performed by a computer, was precisely the holding of the Supreme
Court in Gottschalkv. Benson, [409 U.S. 63 (1972)].”).
Independent method claims 6, 17, and 21 are, thus, directed to abstract
ideas.
Turning to the second step of the Alice analysis, because we find that
claims 6, 17, and 21 are directed to abstract ideas, the claims must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself.
Claim 6 recites that a computer receives requests and responds with
information, where the information “can” be viewed with a browser. Claim
6 does not provide for additional steps performed by a user, and does not
require that a computer determine the response to the request. There is
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nothing recited in the claim, or described in the Specification, that requires
special programming to a generic computer to permit communicating
information between a user and a computer, nor keeping a list. In fact, the
recited steps performed by the computer are basic computer functions
performed by general purpose computers. In addition, other forms of
communication, such as by telephone, are described as being within the
scope of the invention. (FF 1).
“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. The bare fact that a computer exists in the physical rather than
purely conceptual realm is beside the point.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted).
Nothing in claims 6—21 purports to improve computer functioning or
“effect an improvement in any other technology or technical field.” Alice,
134 S. Ct. at 2359. Nor do claims solve a problem unique to the Internet,
because having an interest in sharing the cost of a common purchase does
not require that the Internet be involved. See DDR Holdings, 773 F.3d at
1257. The claims also are not adequately tied to “a particular machine or
apparatus,” because no special programming is required for the steps
required to be performed by a computer. Bilski v. Kappos, 561 U.S. 593,
601 (2010).
Because claims 6—21 are directed to an abstract idea, and nothing in
the claims amounts to significantly more than the abstract idea itself, the
claims are not patent-eligible under § 101. Therefore, we affirm the
Examiner’s rejection of claims 6—21 under 35 U.S.C. § 101.
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We find no meaningful distinction between independent method claim
6 and independent system claim 1. The claims all are directed to the same
underlying invention. Claim 1 additionally requires a computer to store
data, calculate a price, and add and remove a user from a list, but these are
basic computer functions not requiring special programming. Therefore, we
affirm the Examiner’s rejection of independent claim 1 under § 101. As the
Federal Circuit has made clear “the basic character of a process claim drawn
to an abstract idea is not changed by claiming only its performance by
computers, or by claiming the process embodied in program instructions on
a computer readable medium.” See CyberSource, 654 F.3d at 1375-76
(citing In reAbele, 684 F.2d 902 (CCPA 1982)).
Because we find that dependent claims 2—5 lack additional elements
that would render the claims patent-eligible, we also affirm the Examiner’s
rejection under § 101 of these dependent claims on the same basis as the
independent claim from which they depend.
§ 103(a) Rejection of Claims 1, 2, 5—11, 13, 14, 16—18, 20, and 21
Initially, we note that Appellant apparently argues independent claims
1,6, 17, and 21 together as a group. (Br. 17). Correspondingly, we select
representative claim 6 to decide the appeal of these claims, with remaining
claims 1,17, and 21 standing or falling with claim 6. Appellant does not
provide a substantive argument as to the separate patentability of claims 2, 5,
7—11, 13, 14, 16, 18, 20, and 21 that depend from claims 1, 6, and 17. Thus
claims 1, 2, 5, 7—11, 13, 14, 16—18, 20, and 21 stand or fall with claim 6.
See 37 C.F.R. § 41.37(c)(l)(vii).
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Appellant argues “none of the cited prior art teach the limitation of the
cost per passenger as total cost of providing the flight listing divided by the
passengers joined to an open flight listing.” (Br. 17). Appellant additionally
argues that, unlike Arkansas Business, the claimed invention “is based on
the number of passengers joined to a flight listing, not on board the aircraft.”
(Br. 18).
We are not persuaded by Appellant’s arguments. Eagle discloses a
charter airplane reservation system to sell open seats on a charter flight.
(FF 2). Eagle reports the price of each seat as reported by each flight
operator upon an inquiry. (FF 3). The Examiner then finds that “Arkansas
Business discloses cost per passenger by dividing the total cost of the
chartered airplane by the number of passengers [who] joined to the flight
listing (page 2, para. 1). (Final Act. 5). Although Arkansas Business uses
the term “on board” (FF 4), we are unpersuaded that the ordinary artisan
would have restricted its meaning to only those passengers physically on
board the aircraft at the time of take-off. Instead, the ordinary artisan would
have more broadly interpreted this phrase as the cost of the flight, if the
flight were divided by that number of passengers who may choose to fly.
See KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making the
obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”) In
addition, “a person of ordinary skill is also a person of ordinary creativity,
not an automaton.” Id. at 421. As asserted by the Examiner, the ordinary
artisan was aware of passengers “thinking of flying” and “reconfirmation” of
that interest (FF5, 6), indicating that consideration of changes based on
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variability of passengers, of which cost would be one, was within the
abilities of the ordinary artisan. Ans. 6.
Appellant argues the “cost per passenger on board a chartered airplane
cannot change - Arkansas Business simply provides that each passenger's
pro rata share of the total cost of the chartered flight is the total cost divided
by the number of passengers that fly the chartered aircraft.” (Br. 17).
Appellant further argues neither Stener nor Eagle discloses “recalculating
that same cost again; rather, they just teach making a cost calculation at
different times” {Id. 18), “there is no motivation to recalculate the cost per
passenger,” and “the combination of references would teach away from
recalculating the cost per passenger since the number of passengers on board
an aircraft couldn't change and thus the cost per passenger couldn't change.”
{Id.).
We are not persuaded by the arguments, because Stener, which is
directed to sharing charter airplane flying costs (FF 5), discloses if there are
“more than five owners thinking of flying at a close time, then the
reconfirmation of interests in the times, cities, etc., is made.” (FF 6). The
ordinary artisan would understand that cost would vary until the number of
passengers sharing the costs is fixed, and that communicating those varying
costs would be a relevant item of information upon which to require
“reconfirmation,” thus, meeting the claim language.
§ 103(a) Rejection of Claims 3,4, 12, 15, and 19
We affirm the rejections of claims 3, 4, 12, 15, and 19, which are not
argued separately.
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CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1—21 under 35 U.S.C.
§101.
The Examiner did not err in rejecting claims 1—21 under 35 U.S.C.
§ 103(a).
DECISION
For the above reasons, the Examiner’s rejection of claims 1—21 are
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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