Ex Parte Bowman et al

Patent Trials and Appeals Board

Jun 20, 2019

12211732 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/211,732 09/16/2008
26379 7590 06/24/2019
DLA PIPER LLP (US )
2000 UNIVERSITY A VENUE
EAST PALO ALTO, CA 94303-2248
FIRST NAMED INVENTOR
Brian Bowman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
353952-991120 9029
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
PatentDocketing US-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
Appeal2018-001466
Application 12/211,732 1
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is One Planet Ops
(Appeal Br. 1 ).
Appeal2018-001466
Application 12/211,732
STATEMENT OF THE CASE2
Brian Bowman and Brian Kanaga (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1, 2, 4--11, and 13-39, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b ).
The Appellants invented a click marketplace system and method that
may be used for various different types of Internet user traffic originating
from various sources. Specification 1:2-3.
An understanding of the invention can be derived from a reading of
exemplary claim 22, which is reproduced below (bracketed matter and some
paragraphing added).
22. A computer implemented click marketplace method
that stores a plurality of Enhanced Click Traffic
wherein each Enhanced Click consists of electronic
transactional information that represents an Internet user,
the method comprising:
[ 1] storing,
in a storage system,
one or more selling campaigns for one or more Click
Sellers,
each selling campaign associating one or more Click
Traffic to be sold in the click marketplace system;
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed June 21, 2017) and Reply Brief ("Reply Br.," filed November 21,
2017), and the Examiner's Answer ("Ans.," mailed September 21, 2017),
and Final Action ("Final Act.," mailed May 19, 2016).
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[2] storing,
in the storage system,
one or more buying campaigns for one or more Click
Buyers,
each buying campaign including one or more parameters
specifying the characteristics of Click Traffic to be
bought by the Click Buyer associated with the buying
campaign;
[3] performing,
on a computer,
an auction for each click for sale by a Click Seller to a
plurality of Click Buyers;
[4] using,
and
by the auction manager,
a click type field to set an amount of sharing that is
permitted for a particular click;
[5] indicating,
by the auction manager,
a group of Click Buyers who bid the highest price
win the auction
for the particular click that is shared by the group of
Click Buyers.
The Examiner relies upon the following prior art:
Kostic US 2002/0128959 Al
Flake US 2008/0255921 Al
Sept. 12, 2002
Oct. 16, 2008
Claims 1, 2, 4--11, and 13-39 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1, 2, 4--11, and 13-39 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Kostic and Flake.
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ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
The issues of obviousness tum primarily on whether the references
describe the limitations recited, or otherwise show them to be predictable.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Kostic
01. Kostic is directed to commercializing the click-through traffic
of visitors to Internet web sites, and more particularly, to
facilitating the buying and selling of click-through traffic between
the web sites of interested buyers and sellers. Kostic para. 2.
02. Kostic describes conducting a bidding process after the trial
period is concluded, in which buyers can bid a price each is
willing to pay for the click-through traffic from the seller's web
site. Kostic para. 10.
03. Kostic describes providing buyers and sellers with an online,
interactive exchange or auction facility even without using the
trial process. It enables buyers and sellers to engage in bidding for
click-through traffic, and then to activate and monitor the
performance of the click-through traffic sold in a sale transaction.
Kostic para. 118.
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Flake
04. Flake is directed to sale of market share or percentage for an
online advertising system. Flake para. 7.
05. Flake describes an exemplary division of impressions or
occurrences of an advertisement. Here, advertiser A has elected a
twenty percent market share, advertiser B has elected ten percent
of the market and the remaining 70% of the total market is
available for any remaining advertisers. This simple division of
occurrences can be effected by a determination at each advertising
opportunity based upon relative requested market shares.
Advertisements can be selected for display based upon a generated
number. For example, for the division illustrated in FIG. 2, when
an advertising opportunity arises, a random number can be
generated and compared to thresholds selected such that there is a
twenty percent chance that Advertiser A's ad will be shown, a ten
percent chance that advertiser B's ad will be shown and a seventy
percent chance that an advertisement from the remainder of the
market will be shown. Flake paras. 38-39.
06. Flake describes a user interface that can provide advertisers
and/or advertising system managers with the ability to add,
monitor, edit and delete market share requests. In particular, a
graphic user interface (GUI) can be used to manage requests from
multiple advertisers. Advertisers can utilize a web-based interface
to monitor and adjust their market share requests to achieve their
marketing goals. Flake para. 41.
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ANALYSIS
Claims 1, 2, 4-11, and 13-39 rejected under 35 U.S.C. § 1 OJ as directed to
a judicial exception without significantly more
STEP 12
Claim 22, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[w]hat else
is there in the claims before us? To answer that question, ...
consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a 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."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217-18 (2014)
( citations omitted) ( citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions ( a law of nature, a
3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019).
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natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims "apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." 2019 Guidance at 54. If the
claims are directed to a judicial exception, then finally determining whether
the claims provide an inventive concept, because the additional elements
recited in the claims provide significantly more than the recited judicial
exception.
STEP 2A Prong 1
Method claim 22 recites storing data representing selling and buying
campaigns, performing an online auction, setting a field value and indicating
data representing a win by a group of buyers. Performing an online auction
is a process of receiving and analyzing bid data. Setting a field value is
modifying data, and indicating data is displaying data. Thus, claim 22
recites receiving, analyzing, modifying, and displaying data. None of the
limitations recite technological implementation details for any of these steps,
but instead recite only results desired by any and all possible means.
From this we see that claim 22 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
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include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes 6. Among those certain methods
of organizing human activity listed in the Revised Guidance are fundamental
economic principles or practices. Like those concepts, claim 22 recites the
concept of an auction. Specifically, claim 22 recites operations that would
ordinarily take place in advising one to perform an auction based on
campaign data and allowing sharing and results display. The advice to
perform an auction based on campaign data and allow sharing and results
display involves an auction, which is a fundamental economic act which is
an act ordinarily performed in commerce. For example, claim 22 recites
"performing ... an auction," which is an activity that would take place
whenever one is performing an auction. Similarly, claim 1 recites
"indicating ... who bid the highest price," which are also characteristics of
an auction.
The Examiner determines the claims to be directed to "providing an
auction marketplace in which buyers and sellers can be matched for click
traffic allocation, which is considered an abstract idea using a fundamental
4 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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economic practice and certain methods of organizing human activity." Final
Act. 3.
The preamble to claim 22 recites that it is a computer implemented click
marketplace method that stores a plurality of Enhanced Click Traffic. The
steps in claim 22 result in indicating a group of Click Buyers who bid the
highest price as being those who win the auction absent any technological
mechanism other than a conventional computer for doing so.
As to the specific limitations, limitations 1 and 2 recite basic data
gathering. Limitation 3 recites a generic online auction, which is itself a
conventional combination of data gathering and analysis absent any
technological details. Limitations 4 and 5 recite modifying and displaying
of bid data, which advise one to apply generic functions to get to these
results. The limitations thus recite advice for performing an auction based
on campaign data and allowing sharing and results display. To advocate
performing an auction based on campaign data and allowing sharing and
results display is conceptual advice for results desired and not technological
operations.
The Specification at 1 :2-3 describes the invention as relating to a click
marketplace system and method that may be used for various different types
of Internet user traffic originating from various sources. Thus, all this
intrinsic evidence shows that claim 22 is directed to modifying and
displaying the results of an online auction, i.e. an auction. This is consistent
with the Examiner's determination.
This in tum is an example of fundamental economic principles or
practices as a certain method of organizing human activity, because auctions
are fundamental business practices for setting price. The concept of an
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auction as advised to be done by performing an auction based on campaign
data and allowing sharing and results display is simply setting input and
output parameters for the auction. The steps recited in claim 22 are part of
setting those parameters.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. In re Schrader, 22 F.3d 290 (Fed
Cir. 1994) (novel auction process).
Alternately, this is an example of 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. See In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 22, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, analysis,
modification, and display and does not recite an improvement to a particular
computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract
because they "focused on a specific asserted improvement in computer
animation"). As such, claim 22 is directed to receiving, analyzing,
modifying, and displaying data, and not a technological implementation or
application of that idea.
From this we conclude that at least to this degree, claim 22 is directed
to an auction by performing an auction based on campaign data and allowing
sharing and results display.
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STEP 2A Prong 2
The next issue is whether claim 22 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application. 7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, "all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. "[A]pplication[s]" of such
concepts "'to a new and useful end,'" we have said, remain
eligible for patent protection. Accordingly, in applying the
§ 101 exception, we must distinguish between patents that
claim the "'buildin[g] block[ s] "' of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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ubiquity of computers, wholly genenc computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 (citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1 and 2 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Steps 4
and 5 are insignificant post solution activity, such as storing, transmitting, or
displaying the results. Step 3 recites generic computer processing expressed
in terms of results desired by any and all possible means and so present no
more than conceptual advice. All purported inventive aspects reside in how
the data is interpreted and the results desired, and not in how the process
physically enforces such a data interpretation or in how the processing
technologically achieves those results.
Viewed as a whole, Appellants' claim 22 simply recites the concept of an
auction by performing an auction based on campaign data and allowing
sharing and results display as performed by a generic computer. This is no
more than conceptual advice on the parameters for this concept and the
generic computer processes necessary to process those parameters, and do
not recite any particular implementation.
Claim 22 does not, for example, purport to improve the functioning of the
computer itself. Nor does it effect an improvement in any other technology
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or technical field. The 27 pages of specification spell out different generic
equipment8 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of an auction by performing an auction based on campaign data and
allowing sharing and results display under different scenarios. They do not
describe any particular improvement in the manner a computer functions.
Instead, claim 22 at issue amounts to nothing significantly more than an
instruction to apply an auction by performing an auction based on campaign
data and allowing sharing and results display using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 22 is directed to achieving the result of an
auction by advising one to performing an auction based on campaign data
8 The Specification describes server computers that execute computer code.
Spec. para. 8: 18-30.
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and allowing sharing and results display as distinguished from a
technological improvement for achieving or applying that result. This
amounts to fundamental economic principles or practices, which fall within
certain methods of organizing human activity that constitute abstract ideas.
The claim does not integrate the judicial exception into a practical
app li cation.
STEP 2B
The next issue is whether claim 22 provides an inventive concept because
the additional elements recited in the claim provide significantly more than
the recited judicial exception. Taking the claim elements separately, the
function performed by the computer at each step of the process is purely
conventional. Using a computer for receiving, analyzing, modifying, and
displaying data amounts to electronic data query and retrieval----one of the
most basic functions of a computer. All of these computer functions are
generic, routine, conventional computer activities that are performed only
for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ..
. those functions can be achieved by any general purpose computer without
special programming"). None of these activities are used in some
unconventional manner nor do any produce some unexpected result.
Appellants do not contend they invented any of these activities. In short,
each step does no more than require a generic computer to perform generic
computer functions. Auctions are among the oldest and most fundamental
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practices for setting prices for transactions. 9 As to the data operated upon,
"even if a process of collecting and analyzing information is 'limited to
particular content' or a particular 'source,' that limitation does not make the
collection and analysis other than abstract." SAP America, Inc. v. InvestPic
LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' claim 22 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification-display is equally generic and conventional. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of
receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of
data retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and
monitoring). The ordering of the steps is, therefore, ordinary and
conventional.
We conclude that claim 22 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
9 See, e.g., Remarks Upon The Auction System As Practiced In New York,
1828,
https://books.google.com/books?id=uh4PAQAAMAAJ&pg=PA19&dq=auc
tion&hl=en&sa=X&ved=OahUKEwi7h9yx853gAhUMPN8KHQOOAhEQ6
AEIKjAA#v=onepage&q=auction&f=false
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REMAINING CLAIMS
Claim 22 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art. '
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by an auction by
performing an auction based on campaign data and allowing sharing and
results display, without significantly more.
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APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 3---6 and Answer 2-11 and
reach similar legal conclusions. We now tum to the Reply Brief.
Appellants argue that the asserted claims are akin to the claims
found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245 (Fed. Cir. 2014). Reply Br. 2-3. In DDR Holdings, the Court
evaluated the eligibility of claims "address[ing] the problem of retaining
website visitors that, if adhering to the routine, conventional functioning
of Internet hyperlink protocol, would be instantly transported away from
a host's website after 'clicking' on an advertisement and activating a
hyperlink." Id. at 1257. There, the Court found that the claims were
patent eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no "pre-Internet
analog." Id. at 1258. The Court cautioned, however, "that not all claims
purporting to address Internet-centric challenges are eligible for patent."
Id. For example, in DDR Holdings the Court distinguished the patent-
eligible claims at issue from claims found patent-ineligible in
Ultramercial. See id. at 1258-59 (citing Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715-16 (Fed. Cir. 2014)). As noted there, the
Ultramercial claims were "directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before." Id. at 1258 (quoting Ultramercial, 772 F.3d at
715-16). Nevertheless, those claims were patent ineligible because they
"merely recite[d] the abstract idea of 'offering media content in exchange
for viewing an advertisement,' along with 'routine additional steps such as
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updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.'" Id.
Appellants' asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website;" "restricting general public access to said
media product;" "receiving from the consumer a request to view [a]
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellants' asserted claims recite
receiving, analyzing, modifying, and displaying data. This is precisely the
type of Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellants' argument that
[ t ]he elements of Claim 1 clearly relate to computer operations,
which include the various processes and elements, including the
auction manager set forth above. These are absolutely
dependent on computer systems and a technology that did not
exist before the time of computers. As a result, the features of
Claim 1 are not directed to an abstract idea and do not recite
generic computer functions that are well-understood, routine,
and conventional as asserted by the Office.
Reply Br. 3. Claim 1, as a structural claim, recites the structural elements of
a computer having a processor and a database server beyond the steps
recited in method claim 22. These are conventional generic computers. The
steps depend on a computer only because the steps are drafted in that
manner. The only technology recited that did not exist before computers
was the existence of computers. "The Supreme Court and this court have
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repeatedly made clear that merely limiting the field of use of the abstract
idea to a particular existing technological environment does not render the
claims any less abstract." Affinity Labs of Texas, LLC v. DIRECTV, LLC,
838 F.3d 1253, 1259 (Fed. Cir. 2016).
We are not persuaded by Appellants' argument that "a human mind
would not be able to act as the auction manager and perform the claimed
operations." Reply Br. 3. Limitation 3 reciting the step of an auction recites
only performing an auction. Auctions have been performed for centuries
( see footnote 9 supra) and so predate computers. To the extent Appellants
rely on the content that is auctioned, that does not affect the basic step of
performing an auction, absent any recital of technological implementation
details.
Appellants' arguments as to the ordered combination of the steps
(Reply Br. 4) repeats the prior arguments and does not explain why the
particular order as recited is inventive.
Claims 1, 2, 4-11, and 13-39rejectedunder35 U.S.C. § 103(a) as
unpatentable over Kostic and Flake
We adopt the Examiner's determinations and analysis from Final
Action 6-25 and Answer 12-16 and reach similar legal conclusions. We
now tum to the Reply Brief.
We are not persuaded by Appellants' argument that Kostic fails to
show plural buyers and sharing. Reply Br. 5-7. The Examiner applies
Flake for this. We are not persuaded by Appellants' argument that Flake
fails to describe a field with an amount of sharing so that plural buyers can
win the auction. Reply Br. 7. Flake describes sharing click results by such
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Appeal2018-001466
Application 12/211,732
plural buyers and a data field for entering the desired share amount. Thus,
Flake shows that one of ordinary skill would have considered applying
Flake's allowance of plural buyers to Kostic's auction system, because of
Flake's showing of the desirability of sharing such results.
CONCLUSIONS OF LAW
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.
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
The rejection of claims 1, 2, 4--11, and 13-39 is 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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