Ex Parte BUSS

Patent Trial and Appeal Board

Jun 22, 2018

12257797 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/257,797 10/24/2008
47699 7590 06/26/2018
HA YNES AND BOONE, LLP (26530)
IP Section
2323 Victory A venue
Suite 700
Dallas, TX 75219
FIRST NAMED INVENTOR
Duane Fredrick BUSS
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.
26530.143 I IDR-1274 7746
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUANE FREDRICK BUSS
Appeal2016-004103
Application 12/257,797
Technology Center 3600
Before ALLEN R. MacDONALD, IRVINE. BRANCH, and
CHARLES J. BOUDREAU, Administrative Patent Judges.
BOUDREAU, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4--10, 12-15, 18-20, and 22-26. App. Br. 5-6. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Novell, Inc. as the real party in interest. App. Br. 1.
2 This Decision refers to the Final Office Action mailed February 9, 2015
("Final Act."); Appellant's Appeal Brief filed July 15, 2015 ("App. Br.");
the Examiner's Answer mailed December 16, 2015 ("Ans."); and
Appellant's Specification filed October 24, 2008 ("Spec.").
Appeal2016-004103
Application 12/257,797
STATEMENT OF THE CASE
The Claimed Invention
Appellant's application relates to a "[s]ystem and method for
monitoring reputation changes." Abstract. In general, the described
embodiments provide a "user policy controlled application or service
capable of maintaining baseline reputation information in connection with a
reputation of interest; actively and/or passively gathering incremental
reputation updates; applying evaluation functions to the baseline reputation
information and the reputation updates; and providing notifications based on
results of the applied evaluation functions." Spec. i-f 8.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method comprising:
receiving, at a computer, an interest list from a primary
entity, the interest list identifying a reputation of interest,
evaluation rules, and notification rules established for the
reputation of interest, the reputation of interest being associated
with a secondary entity, wherein the interest list includes a
reputation identifier and one or more baseline indicators, the
reputation identifier and the one or more baseline indicators
being associated with the reputation of interest;
receiving, at the computer, updated reputation information
regarding the reputation of interest from a reputation
information provider;
evaluating, by the computer, the received updated reputation
information in accordance with the evaluation rules established
for the reputation of interest, the evaluating including
comparing the updated reputation information regarding the
reputation of interest with the one or more baseline indicators
thereby detecting a change in the reputation of interest;
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in response to the detected change, generating, by the
computer, a message in accordance with the notification rules
established for the reputation of interest, the message including
the detected change and remediation options, the remediation
options defining potential actions taken by the primary entity
with respect to the secondary entity; and
transmitting the generated message including the detected
change and the remediation options to the primary entity.
References and Rejections
The Examiner relies on the following references as evidence of
unpatentability:
Harms et al. US 2003/0078981 Al Apr. 24, 2003
("Harms")
Oliver et al. US 2005/0052998 Al Mar. 10, 2005
("Oliver")
Bandhole et al. US 2007 /0208688 Al Sept. 6, 2007
("Bandhole")
Lester et al. US 2009/0265198 Al Oct. 22, 2009
("Lester")
Claims 1, 4--10, 12-15, 18-20, and 22-26 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter. Final
Act. 2-3. 3,4
3 The Examiner additionally includes claim 17 as being subject to rejection
under 35 U.S.C. §§ 101and103(a) (Final Act. 2-3, 6, 21), but Appellant
indicates that claim 17 has been cancelled (App. Brief. 23 (Claims App'x)).
We omit that claim here for clarity.
4 We note that claims 4 and 12 purport to depend from cancelled claims 3
and 11, respectively (App. Br. 20, 22 (Claims App'x)), and, therefore, fail to
comply with the requirement of 35 U.S.C. § 112, fourth paragraph, that "a
claim in dependent form shall contain a reference to a claim previously set
forth" (emphasis added). For purposes of this Decision, we have assumed
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Claims 9, 10, 12-15, 18-20, 23, and 25 stand rejected under 35 U.S.C.
§ 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite.
Id. at 4---6.
Claims 1, 4--10, 12-15, 18-20, 24, and 26 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Oliver and Lester. Id. at 6-
11.
Claims 9, 10, 12, 13, 23, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Oliver, Lester, and Harms. Id. at 11-17.
Claims 14, 15, 18-20, and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Oliver, Lester, and Bandhole. Id. at 17-22. 5
ANALYSIS
Rejection under 35 U.S.C. § 101
In determining whether the claims set forth patent-eligible subject
matter under 35 U.S.C. § 101, we first must determine whether the claims at
issue are directed to laws of nature, natural phenomena, or abstract ideas.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014).
Section 101 provides that a patent may be obtained for "any new and useful
process, machine, manufacture, or composition of matter, or any new and
that claims 4 and 12 should instead depend from claims 1 and 9,
respectively, from which cancelled claims 3 and 11 previously depended.
Because we affirm the rejection of all pending claims on other grounds, we
do not enter a new ground of rejection with respect to this defect.
5 Although omitted from the heading of the rejection over Oliver, Lester, and
Bandhole (Final Act. 17), claim 20 is addressed in the discussion of that
rejection in the Final Office Action (id. at 22). We determine that the
omission was harmless and include claim 20 here for completeness.
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useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
long held, however, that "[l]aws of nature, natural phenomena, and abstract
ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)); see also Gottschalkv. Benson,
409 U.S. 63, 67 (1972) ("Phenomena of nature, ... mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.").
In Alice, the Supreme Court reiterated a two-step framework,
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75-77 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. (citing
Mayo, 132 S. Ct. at 1296-97). If so, the second step requires consideration
of 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. (quoting Mayo, 566 U.S. at 78,
79). In other words, the second step is to "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."' Id. (alteration in original) (quoting
Mayo, 566 U.S. at 72-73).
Applying the analytical framework set forth by the Supreme Court in
Alice, the Examiner finds that claims 1, 4--10, 12-15, 18-20, and 22-26 are
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"directed to the abstract idea of a fundamental economic practice and/or
organizing human activities"; that "[ t ]he additional element( s) or
combination of elements in the claim( s) other than the abstract idea per se
amount[] to no more than (i) ... mere instructions to implement the idea on
a computer, and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry"; and that
"[v]iewed as a whole, these additional claim element(s) do not provide
meaningful limitation( s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claims[] amount[] to
significantly more than the abstract idea itself." Final Act. 2-3.
In the Appeal Brief, Appellant contends that, whereas the Examiner
has the burden in the first part of the Alice analysis to prove that the claims
are directed to a "judicial exception," the Examiner "provides no evidence or
reasons and simply makes the conclusory statement that claims 1, 9 and 14
are 'directed to the abstract idea of a fundamental economic practice and/ or
organizing human activities.'" App. Br. 6-7 (citing 2014 Interim Guidance
on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618, 74622 (Dec. 16,
2014); MPEP § 2106(III); Final Act. 2). According to Appellant, "[t]his
conclusory statement is insufficient to present a prima facie case of
unpatentability." Id. at 7. Appellant further contends that the independent
claims on appeal satisfy Section 101. Id. For example, according to
Appellant, independent claim 1 "recites a particular structure ('an interest
list') that is 'received, at a computer,"' where the interest list "has particular
characteristics that are recited in the claim elements," and "[ f]urther,
particular computer processing is described corresponding to the interest
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list." Id. Appellant contends claim 1 "recites claim elements that are
narrowly focused such that they do not 'tie up ... excepted subject
matter,[']" and "by providing detailed recitations of features of the interest
list and computer processing that is performed corresponding to the interest
list, the claims are not directed to an abstract idea, but rather to a statutory
process." Id. at 8. Further, according to Appellant, "[c]laims 9 and 14 recite
similar elements (corresponding to a 'computer pro gram product' and
'system,' respectively) and are likewise not directed to an abstract idea." Id.
Appellant contends that the Examiner has failed to present a prima
facie case with respect to the second part of the Alice analysis as well, and
that, "[ c ]ontrary to the Examiner's unsupported assertion, the claims recite
numerous elements that provide meaningful limitation to the claims." Id. at
8-9. Citing independent claim 14, for example, Appellant contends, "the
claim elements define a particular novel structure that is received by a
computer" and "identify particular processing mechanisms performed on the
particular structure." Id. at 9-10. According to Appellant, "[t]he computer
functions and structures recited in the claims are particular, not generic," and
"the Examiner has combined no fewer than three references to (defectively)
argue that the above elements are obvious, which is illustrative that the
above structures and functions [referring to elements of claim 14] are not
well-understood, routine and/or conventional activities." Id. at 10. Lastly,
Appellant contends that the Examiner has provided no analysis with respect
to the additional claim elements recited in the dependent claims and also
"therefore has not met the burden to 'present[] a prim a facie case of
unpatentability' with respect to these claims," which Appellant contends
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"are also directed to statutory subject matter merely by virtue of their
dependency from independent claims 1, 9 and 14." Id. at 11.
In Response to Appellant's contentions, the Examiner repeats that all
of the claims are directed to the abstract idea of a fundamental economic
practice and/or organizing human activities such as:
receiving the interest list ... ; receiving updated reputation ... ;
evaluating the received updated reputation information .. .
including comparing updated reputation information ... ;
generating a message in accordance with the notification
rules ... ; transmitting the generated message .... (claim 1 );
receive an interest list ... ; detect a transaction ... ; add a
reputation ... ; receiving updated reputation .... evaluate the
updated reputation information ... ; compare the updated
reputation ... ; generating notification ... ; transmitting the
generated message .... (claim 9); receive an interest list ... ;
discover an ontologically similar reputation ... ; receive the
reputation information ... ; evaluate the received reputation
information ... ; comparing the reputation information ... ;
generate a notification .... (claim 14 ).
Ans. 23-24 (alterations in original). The Examiner finds, "the abstract
idea[ s] of reputation and remediation as recited are directly related to
economics, e.g. sales may be lost or gained based on reputation," and "[t]his
represents a risk, which relates to the risk that has been held to be abstract in
Alice." Id. at 24. Further, the Examiner finds, "the claimed limitations are
also directed to abstract idea of human organizing activities as they are
related to managing relationship between people that has been held to be
abstract in [buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)]."
Id.
Regarding Appellant's argument that claim 1 recites a "particular
structure" that is "received, at a computer" and has "particular
characteristics" (App. Br. 7), the Examiner responds that these are merely
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details of the abstract idea and points out that "any novelty in
implementation of the idea is a factor to be considered only in the second
step of the Alice analysis." Ans. 24--25 (quoting Ultramercial, 772 F.3d
at 715). Regarding Appellant's argument that the recited claim elements do
not "tie up ... ex[cep]ted subject matter" (App. Br. 8), the Examiner
responds that "[questions of] preemption are inherent in the part-two
framework from Alice Corp[] and Mayo ... and are resolved by using this
framework to distinguish between preemptive claims[] and those that
integrate the building blocks into something more." Ans. 25 (quoting
July 2015 Update: Subject Matter Eligibility 8 (2015),
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf ("July 2015 Update")).
With respect to Appellant's arguments regarding the second step of
the Alice analysis, the Examiner reiterates that the additional elements or
combination of elements in the claims, other than the abstract idea per se,
amount to no more than mere instructions to implement the idea on a
computer or recitation of generic computer structure that serves to perform
generic computer functions and do not provide meaningful limitations to
transform the abstract idea into a patent-eligible application of the abstract
idea. Id. at 26-27. Regarding the recited "reputation computation engine"
in claim 14, for example, the Examiner finds "[t]he claim does not describe
any unconventional [features] ... other than the abstract idea." Id. at 27.
Pointing to the description of that claim element in the Application, the
Examiner finds "the reputation computation engine as recited is merely a
generic computer which does not add a meaningful limitation to the abstract
idea because they would be routine in any computer implementation." Id.
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(citing Spec. i-f 18, Fig. 1 ). Similarly with respect to other claim elements
Appellant alleges to define a particular novel structure, the Examiner finds
such elements "effectively ... are the details of the abstract idea." Id.
We have considered Appellant's arguments, but do not find them
persuasive of error. In considering whether a claim is directed to an abstract
idea, we acknowledge, as did the Court in Mayo, that "all inventions at some
level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look
to whether the claims "focus on a specific means or method that improves
the relevant technology or are instead directed to a result or effect that itself
is the abstract idea and merely invoke generic processes and machinery."
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed.
Cir. 2016); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016). In other words, if the claims are directed to an abstract idea, we
then must consider whether the claim contains an element or a combination
of elements that is sufficient to transform the nature of the claim into a
patent-eligible application. Alice, 134 S. Ct. at 2347; Ultramercial, 772 F.3d
at 714.
In applying step two of the Alice analysis, we must
"determine whether the claims do significantly more than
simply describe [the] abstract method" and thus transform the
abstract idea into patentable subject matter . . . . We look to see
whether there are any "additional features" in the claims that
constitute an "inventive concept," thereby rendering the claims
eligible for patenting even if they are directed to an abstract
idea. . . . Those "additional features" must be more than
"well-understood, routine, conventional activity."
Intellectual Ventures I LLCv. Erieindem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017) (citations omitted).
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In view of these principles, we agree with the Examiner that claims 1,
4--10, 12-15, 18-20, and 22-26 are directed to patent-ineligible subject
matter. First, we agree with the Examiner that the claims are directed to an
abstract idea, and more specifically, a fundamental economic practice or a
method of organizing human activity. "The term 'fundamental' [in the
phrase 'fundamental economic practices'] is used in the sense of being
foundational or basic, and not in the sense of necessarily being 'old' or
well-known."' July 2015 Update, at 4. We agree with the Examiner that the
claims are essentially directed to the abstract ideas of managing relationships
between transacting parties and mitigating risks in a transactional context
(see Ans. 24), particularly monitoring the reputations of secondary entities in
which a primary entity has an interest, and providing notifications of
changes in such reputations or remediation options, such as by notifying a
consumer whose personal information is retained and stored by a company
of changes in the company's ownership or control, hacking activity, or other
scenarios in which the customer's information could be jeopardized, so that
the consumer may be kept aware of potential risks (see, e.g., Spec. i-fi-12-3).
Neither the identification in the claims of an "interest list," nor the
specification and use of "evaluation rules," "notification rules," and
"baseline indicators," nor the recitation of a "reputation information
provider" as the source of updated reputation information alters the basic
and fundamental nature of the process. Nor does the fact that independent
claim 14 and its dependent claims implement this process using a computer
"including reputation computation engine" and "including at least one
notification mechanism operable to generate a notification," as well as "a
device of a primary entity operable to receive the notification ... [and] to
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allow the primary entity to take action based on [a] received detected change
and ... remediation options," alter the basic and fundamental nature of the
process.
Indeed, the claims on appeal are analogous to those found to be
patent-ineligible in Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016). In that case, the Federal Circuit explained,
The claims in this case fall into a familiar class of claims
"directed to" a patent-ineligible concept. The focus of the
asserted claims ... is on collecting information, analyzing it,
and displaying certain results of the collection and analysis ....
Information as such is an intangible. Accordingly, we
have treated collecting information, including when limited to
particular content ... as within the realm of abstract ideas. In a
similar vein, we have treated analyzing information by steps
people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes
within the abstract-idea category. And we have recognized that
merely presenting the results of abstract processes of collecting
and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part
of such collection and analysis.
Id. at 1353-54 (citations omitted). As in Electric Power Group, the claims
in this case
are clearly focused on the combination of those abstract-idea
processes. The advance they purport to make is a process of
gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly
inventive technology for performing those functions. They are
therefore directed to an abstract idea.
Id. at 1354.
Further, we agree with the Examiner that the additional elements or
combination of elements in the claims other than the abstract idea per se
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amounts to no more than: "(i) ... mere instructions to implement the idea on
a computer, and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry." Final
Act. 3. "Viewed as a whole, these additional claim element( s) do not
provide meaningful limitation(s) to transform the abstract idea into a patent
eligible application of the abstract idea." Id. In contrast with precedential
cases in which the Federal Circuit has found claims directed to
computer-implemented methods to be patent-eligible under the Alice
framework, the instant claims do not provide, for example, (1) a
"solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks"
(see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
Cir. 2014)); (2) "a specific improvement to the way computers operate"
(Enfish, 822 F.3d at 1336; see also McRO, 837 F.3d at 1303; Visual Memory
LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017)); or (3) an
"unconventional technological solution ... to a technological problem" that
"improve[ s] the performance of the system itself' (Amdocs (Israel) Ltd. v.
Openet Telecom, Inc. 841F.3d1288, 1302, 1306 (Fed. Cir. 2016); see also
Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1352 (Fed. Cir. 2016); Thales Visionix Inc. v. United States, 850 F.3d 1343,
1347, 1349 (Fed. Cir. 2017).
As the Federal Circuit explained in buySAFE, "[t]he claims'
invocation of computers adds no inventive concept." 765 F.3d at 1355; see
also Alice, 134 S. Ct. at 2357 ("[C]laims [that] merely require generic
computer implementation[] fail to transform [an] abstract idea into a
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patent-eligible invention."). Here, the generic recitation in claim 1 (and
similarly in claim 9) of the steps of "receiving ... an interest list from a
primary entity, the interest list identifying a reputation of interest, evaluation
rules, and notification rules ... "; "receiving ... updated reputation
information regarding the reputation of interest from a reputation
information provider"; "evaluating ... the received updated reputation
information in accordance with the evaluation rules ... , the evaluating
including comparing the updated reputation information ... with ... one or
more baseline indicators thereby detecting a change ... "; "generating ... a
message in accordance with the notification rules ... "; and "transmitting the
generated message ... to the primary entity" does not provide any greater
specificity than the steps recited in the claims at issue in buySAFE. Nor do
we find that the recitation of a "reputation computation engine," a
"notification mechanism operable to generate a notification," or "a
device ... operable to receive the notification" provides any meaningfully
greater specificity than the "safe transaction service provider computer"
recited in buySAFE. See 765 F.3d at 1352. Appellant provides no evidence
in support of their assertions that "the claim elements define a particular
novel structure," that "particular processing mechanisms [are] performed
on ... particular structure," and that "[t]he computer functions and
structures recited in the claims are particular, not generic" such that a person
of ordinary skill in the art would understand those processes or structures to
have any specific meaning other than those carried out by or included in a
general purpose computer with routine programming. App. Br. 9-10; see In
re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (attorney argument cannot
take the place of evidence).
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As in Electric Power Group, we find "[n]othing in the claims,
understood in light of the specification, requires anything other than
off-the-shelf, conventional computer, network, and display technology .... "
830 F.3d at 1355. As the court explained in that case, "[w]e have repeatedly
held that such invocations of computers and networks that are not even
arguably inventive are 'insufficient to pass the test of an inventive concept in
the application' of an abstract idea." Id. (quoting buySAFE, 765 F.3d
at 1353, 1355; citing Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,
811F.3d1314, 1324--25 (Fed. Cir. 2016); Intellectual Ventures I LLCv.
Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015); Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348--49 (Fed.
Cir. 2015); Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347--48 (Fed. Cir. 2014)).
We also are not persuaded by Appellant's argument that the recited
claim elements "do not 'tie up ... excepted subject matter.[']" App. Br. 8
(citation omitted). As the Federal Circuit explained in Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016), "[a]
narrow claim directed to an abstract idea ... is not necessarily patent-
eligible, for ' [ w ]hile preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent
eligibility."' Id. at 1321 (quotingAriosa 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)
("[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.").
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Lastly, regarding Appellant's contention that the Examiner's
combination of "no fewer than three references" in the rejection of certain
claims under 35 U.S.C. § 103(a) "is illustrative that the above structures and
functions are not well understood, routine and/or conventional" (App.
Br. 10), we note that Appellant has not provided any authority for the
contention that the number of prior art references used in a rejection under
35 U.S.C. § 103(a) is probative with respect to the analysis under Section
101, and we agree with the Examiner that the fact that the abstract idea to
which the invention is directed may be narrow does not change the fact that
the invention is still directed toward an abstract idea (Ans. 28 (citing
buySAFE; July 2015 Update)).
For the foregoing reasons, we discern no error in the Examiner's
rejection of claims 1, 4--10, 12-15, 18-20, and 22-26 under 35 U.S.C.
§ 101, and we sustain the rejection.
Re} ection under 3 5 U.S. C. § 112
Independent claim 9 recites instructions stored on a
computer-readable medium for causing a computer to, inter alia, "detect a
transaction between [a] primary entity and a detected entity; [and] add a
reputation associated with the detected entity to [an] interest list."
Dependent claims 23 and 25 recite similar limitations. Independent claim 14
recites, inter alia, a "reputation computation engine operable to receive from
a primary entity an interest list identifying a reputation of interest ... ,
wherein the interest list includes a reputation identifier and one or more
baseline indicators ... associated with the reputation of interest," and
"wherein the reputation computation engine is adapted to discover an
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ontologically similar reputation related to the reputation of interest and add
the ontologically similar reputation to the interest list."
The Examiner determined that the quoted limitations are vague as
they are "inconsistent meaning [sic] with the specification." Final Act. 4--5.
In particular, with regard to claim 9, the Examiner points to disclosure in the
Specification that "a user interface of the primary entity 102 may detect a
transaction between the primary entity and a secondary entity and prompt
the primary entity to add a reputation identifier for the secondary entity ...
to the interest list," and concludes, "[t]hus, Applicant's specification
appear[s] to show 'add the reputation identifier', but not the 'add a
reputation' associated with the detected entity." Id. at 4 (quoting
paragraph 24 of Appellant's published application, corresponding to
Spec. i-f 20). With regard to claim 14, the Examiner quotes paragraphs 11
and 27 of Appellant's published application (corresponding to paragraphs 11
and 23, respectively, of the Specification), which disclose that "[t]he
reputation identifier may refer to a single reputation or set of reputations, a
particular reputation engine evaluation output, given a specific set of inputs
('baseline indicators'), a set of ontologically similar reputations, or rules for
finding ontologically similar reputations" and "[s]imilarly, there may also
exist ontologically similar reputations of interest for an entity that a user
might want to monitor via the interest list and reputation computation
engine," which "may be accomplished by specifying certain types or
elements of ontologically similar reputations the user would like to
monitor .... " Id. at 5. The Examiner finds paragraph 11 "appears to
indicate the reputation identifier may refer to e.g. a set of ontologically
similar to reputations" and paragraph 27 "appears to show the user specifies
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the type or element ontological similar reputation that the user would like to
monitor," but that "[t]here is no indication of the reputation computation
engine is adapted to discover an ontologically similar to reputation of
interest and the reputation engine also add the ontological similar reputation
to the interest list." Id. at 5-6.
In the Appeal Brief, Appellant responds that "[t]he test for
definiteness under the second paragraph of 35 U.S.C. § 112 is whether
'those skilled in the art would understand what is claimed when the claim is
read in light of the specification."' App. Br. 11 (quoting MPEP § 2173.02).
With respect to claim 9, Appellant points out that the Specification discloses
at paragraph 24 the "addition of reputations of interest to the interest list"
and at paragraph 26 "discovering reputations with a specified degree of
separation from a reputation identified in the interest list and adding those
reputations to the interest list," and contends that one of ordinary skill in the
art "would understand from these teachings that a reputation would be added
to an interest list, for example when reputations are discovered that are
within a specified degree of separation from a reputation identified in an
interest list." Id. at 12. With respect to claim 14, Appellant contends that
the Specification "discloses at least in par. 0018 a 'reputation computation
engine 108 to perform the functions' that include 'rules for finding
ontologically similar reputations' (par. 0011) and 'discovering reputations
with a specified degree of separation from a reputation identified in the
interest list and adding those reputations to the interest list' (par. 16)." Id.
at 13. Thus, according to Appellant, "[t]he specification clearly describes
and supports the claim elements such that one of ordinary skill in the art
would understand what is claimed in light of the specification." Id.
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In the Answer, the Examiner responds to Appellant's arguments
regarding claim 9 by stating that paragraph 24 of Appellant's published
application "does not show the 'adding reputation in the interest list', but
only show 'adding reputation identifier in the interest list,'" which, the
Examiner finds, is consistent with disclosure in paragraphs 9 and 10 of the
published application. Ans. 29. The Examiner concludes, "[i]n ... other
words, the reputation of interest list includes 'reputation of interest,
reputation identifier, and base line indicator', but not the reputation." Id.
Regarding claim 24, the Examiner responds that "par. 0011 (or par. 0018,
Application publication) discloses the 'reputation computation engine 108 to
perform the functions', but does not specifically describe that 'functions'
also encompasses the 'discovering/finding ontologically similar reputation,"'
and otherwise repeats the findings from the Final Office Action. Ans. 30-
31.
We are persuaded by Appellant's arguments. In this regard, we note
that Appellant relies on the disclosure of paragraphs 24 and 26 of the
Specification in support of claim 9, whereas the Examiner's findings relate
to paragraph 24 of the published application (which corresponds to
paragraph 20 of the Specification). Compare App. Br. 12, with Ans. 29.
Although paragraph 24 of the published application does not appear to
disclose adding a "reputation," paragraph 24 of the Specification does
include such disclosure. With respect to claim 14, we are persuaded that a
person of ordinary skill in the art would understand "the functions described
herein," as that phrase is used in paragraph 18 of the Specification ("In one
embodiment, the reputation computation engine 108 comprises a computer
that includes a computer-readable medium (such as, for example, a hard disk
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drive or a CD-ROM) having stored thereon computer-executable
instructions for causing the reputation computation engine 108 to perform
the functions described herein."), to include "finding ontologically similar
reputations," as recited in paragraph 11 of the Specification. As quoted
above, claim 14 recites that the reputation computation engine is "operable
to receive ... an interest list ... , wherein the interest list includes a
reputation identifier," and paragraph 11 of the Specification specifically
discloses that "[t]he reputation identifier may refer to ... rules for finding
ontologically similar reputations." Accordingly, we agree with Appellant
that the Examiner's rejection of claim 14 as indefinite also was in error.
For the foregoing reasons, we reverse the Examiner's rejection of
claims 9, 14, 23, and 25, as well as claims 10 and 13, dependent from
claim 9, claim 12, which we assume for purposes of this Decision to depend
from claim 9, 6 and claims 15 and 18-2 0, dependent from claim 14, under
35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph.
Rejections under 35 U.S. C. § 103 (a)
The Examiner finds Oliver discloses all elements of claim 1, with the
exception of any explicit disclosure of "receiving at a computer an interest
list from a primary entity, the interest list identifying a reputation of interest,
evaluation rules, and notification rules ... wherein the interest list includes a
reputation identifier and one or more baseline indicators." Final Act. 6-8.
The Examiner finds that that step would nonetheless have been obvious over
the teachings of Oliver and Lester. Id. at 8-10. The Examiner finds Oliver
6 See supra note 4.
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discloses, among other things, collecting reputation data for a particular
target computer entity/node from a plurality of computer entities, evaluating
the collected reputation data by comparing the collected data with a
predefined value threshold (which the Examiner maps to the recited
"baseline indicator(s)"), and generating a message in response to detecting a
change, in order to determine an action to be taken with respect to the target
computer entity, as well as the reputation of interest being associated with a
secondary entity, evaluation rules, and notification rules. Id. at 8-9. The
Examiner finds, further, that Lester explicitly discloses that a user/entity can
request to receive the reputation information for a particular entity that the
user is interested in, and concludes that it would have been obvious to one of
ordinary skill in the art to include in combination with the teachings of
Oliver the ability to receive the request for the reputation of interest
associated with an entity, as taught by Lester. Id. at 9-10. The Examiner
makes similar findings with respect to independent claims 9 and 14,
additionally relying on Harms and Bandhole, respectively, for certain other
elements of those claims. 7
7 Although the Examiner included claims 9, 10, 12-15, and 18-20 in the
heading of the rejection over Oliver and Lester (Final Act. 6), we note that
those claims are not addressed in the discussion of that rejection. Indeed, the
Examiner finds that the combination of Oliver and Lester alone does not
explicitly disclose "detect[ing] a transaction between the primary entity and
a detected entity [and] add[ing] a reputation [identifier] associated with the
detected entity to the interest list," as recited in claim 9, or
"specifying/adding the type or elements of ontologically similar reputation
that the primary entity would like to monitor for the secondary entity," as
recited in claim 14 (id. at 15, 20); and claims 9, 10, 12-15, and 18-20 are
instead addressed only in the discussion of the rejections over Oliver, Lester,
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In the Appeal Brief, Appellant contends that the prior art
combinations cited by the Examiner fail to establish a prima facie case
of obviousness with respect to independent claims 1, 9, and 14. App.
Br. 14--18. In particular, Appellant asserts,
the Examiner has failed to show that the references teach or
suggest at least the following elements recited in claim 1:
receiving, at a computer, an interest list from a
primary entity, the interest list identi(ying a
reputation ofinterest, evaluation rules, and
notification rules established for the reputation of
interest, the reputation of interest being associated
with a secondary entity,
wherein the interest list includes a reputation
identifier and one or more baseline indicators, the
reputation identifier and the one or more baseline
indicators being associated with the reputation of
interest.
Id. at 14. Appellant further contends that, "despite admitting that Oliver is
silent regarding these claim elements, without citation to any particular
paragraphs of Oliver, [the Examiner] goes on to reject the claim elements
over the Oliver reference." Id. at 15 (citing Final Act. 8-9). Appellant
contends "the Examiner relies on Oliver but fails to clearly explain the
pertinence of the reference by designating the particular parts relied upon
and providing clear explanation supporting the rejection," and "[a]s a matter
of fundamental fairness, Appellant respectfully submits that the Examiner
has not designated the particular part relied on as nearly as practicable and
and Harms (id. at 11-17) and over Oliver, Lester, and Bandhole (id.
at 17-22). We accordingly reverse, without further discussion, the rejection
of claims 9, 10, 12-15, and 18-20 as unpatentable over Oliver and Lester
alone.
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clearly explained the pertinence of the Oliver reference." Id. Appellant
additionally contends that "any characterization of [the identified
elements] ... as being inherent is improper, because the claim elements do
not necessarily flow from the Oliver reference, and the Examiner has not
provided citations and a clear explanation regarding the Oliver reference that
would support a rejection of the claim elements as inherent." Id. at 16.
Lastly with respect to claim 1, Appellant contends, "Lester does not
overcome the deficiencies of Oliver." Id. Appellant professes to have
"reviewed the cited paragraphs in detail and [to] ha[ ve] not found any
teaching or suggestion in any of the paragraphs that cure the deficiencies of
Lester with regard to the claim elements at issue." Id. Appellant argues
that, "[a]t best, Lester is alleged by the Examiner to show 'receiv[ing]
reputation information.'" Id. According to Appellant,
[t]here is no citation or analysis provided by the Examiner
regarding any teachings of Lester regarding "receiving, at a
computer, an interest list," let alone "the interest list identifying
a reputation of interest, evaluation rules, and notification rules .
. . wherein the interest list includes a reputation identifier and
one or more baseline indicators" as recited in the claim.
Id. (alterations in original).
Appellant relies on the same arguments with respect to independent
claims 9 and 14 as for claim 1, which "include features similar to those of
claim 1," adding that "[t]he additional references relied upon for claim 9
and 14, Harms and Bandhole, do not appear to be cited to by the Examiner
as curing any of the deficiencies noted above with respect to the rejection of
claim 1 under Oliver and Lester," and further contesting the Examiner's
reliance on Bandhole with respect to claim 14. Id. at 17. Regarding the
latter point, Appellant contends that the Final Office Action "does not
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provide any rationale for why 'ranking and rating of vendor reputation,' as
the Examiner relies upon from Bandhole, teaches 'discover[ing] an
ontologically similar reputation related to the reputation of interest and
add[ing] the ontologically similar reputation to the interest list,"' as recited
in claim 14. Id. at 18. According to Appellant, "even assuming for the sake
of argument that the 'ranking and rating of vendor reputation' teaches a
'reputation,' the Examiner has provided no explanation for how Bandhole
teaches 'discover[ing] an ontologically similar reputation related to the
reputation of interest' as recited in the claim," and "[t]he Examiner has ...
failed to provide a prima facie case that Bandhole teaches all of the claim
elements." Id.
We have reviewed the Examiner's rejections under 35 U.S.C. § 103(a)
in light of Appellant's arguments that the Examiner erred. We disagree with
Appellant that the Examiner erred and adopt as our own the findings and
conclusions set forth in the Final Office Action and in the Examiner's
Answer. We highlight and address specific findings and arguments for
emphasis as follows.
First, we disagree with Appellant's contentions that the Examiner has
not designated the particular parts of Oliver relied upon in the rejection. See
App. Br. 14--15. The Examiner points, for example, to paragraphs 75, 76,
83-85, and Figures 1--4 of Oliver as disclosing "receiving at a computer,
updated reputation information regarding a reputation of interest from a
reputation information provider" (Final Act. 7 (emphasis added));
paragraphs 39--42, 64, 75, 76, 81-85, 95-97, 101, and Figures 4--7 of Oliver
as disclosing "evaluating ... the received updated reputation information in
accordance with evaluation rules established for the reputation of interest,
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the evaluating including comparing the updated reputation information ...
with base line reputation information of the reputation of interest ... " (id.
(emphasis added)); and paragraphs 95-97, 101, and Figures 7 and 8 of
Oliver as disclosing "in response to the detected change, generating, by the
computer, a message in accordance with the notification rules established
for the reputation of interest ... (id. at 7-8 (emphasis added)). The
Examiner then refers back to those findings in the discussion of the
challenged step of "receiving, at a computer, an interest list from a primary
entity, the interest list identifying a reputation of interest, evaluation rules,
and notification rules ... , wherein the interest list includes a reputation
identifier and one or more baseline indicators." Id. at 8 (" ... OLIVER also
discloses the reputation of interest being associated with a secondary entity
(a target computer entity), evaluation rules and notification rules as
indicated above." (emphasis added)). We have reviewed the portions of
Oliver cited by the Examiner and agree that they teach the claim elements
for which they are cited.
Further, one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Accordingly, because the Examiner's
rejection of each of the claims is based on the combination of at least Oliver
and Lester, we are not persuaded by Appellant's arguments that the
references individually do not teach or suggest the challenged limitations.
For example, whereas Appellant contends
[t]here is no citation or analysis provided by the Examiner
regarding any teachings of Lester regarding "receiving, at a
computer, an interest list," let alone "the interest list identifying
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a reputation of interest, evaluation rules, and notification
rules ... wherein the interest list includes a reputation identifier
and one or more baseline indicators" as recited in the claim
(App. Br. 16 (modifications in original)), the Examiner relies on Oliver for
the interest list, reputation of interest, evaluation rules, notification rules,
reputation identifier, and baseline indicators (Final Act. 7-8), and
Appellant's argument that Lester does not separately teach those elements is
unpersuasive. Likewise, because the Examiner relies on Lester for its
disclosure that a user (i.e., a "primary entity," in the parlance of the claims)
may provide a request for a reputation of interest, such that such a request
would be "receiv[ed], at a computer," we are not persuaded by Appellant's
argument that the Examiner has not established that such receipt is
"inherent" in Oliver (App. Br. 16).
Finally, we are not persuaded of error in the Examiner's rejection of
claim 14 over the combination of Oliver, Lester, and Bandhole. Claim 14
recites, "wherein the reputation computation engine is adapted to discover an
ontologically similar reputation related to the reputation of interest and add
the ontologically similar reputation to the interest list." We agree with the
Examiner's interpretation of the recited "ontologically similar reputation" in
light of the Specification to include Bandhole' s rating or ranking reputation
for a particular entity. See Ans. 38 (citing paragraph 27 of Appellant's
published application, corresponding to Spec. i-f 23; Bandhole i-fi-166, 80, 84).
Indeed, paragraph 23 of the Specification explicitly provides "a star rating
system" and "a ranking with respect to peers" as examples of reputation
forming information that provide for monitoring of ontologically similar
reputations of interest. As found by the Examiner, Bandhole likewise
discloses, for example, "rating and ranking lookup of vendor reputation"
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(see Bandhole i-f 80), which, when combined with the teachings of Oliver
and Lester, we agree would have taught or suggested the disputed limitation.
For the foregoing reasons, we sustain the Examiner's rejections of
claims 1, 4--8, 24, and 26 as unpatentable over the combination of Oliver and
Lester; 8 claims 9, 10, 12, 13, 23, and 25 as unpatentable over the
combination of Oliver, Lester, and Harms; and claims 14, 15, 18-20, and 22
over the combination of Oliver, Lester, and Bandhole.
DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's rejection of claims 1, 4--10,
12-15, 18-20, and 22-26 is affirmed. See 37 C.F.R. § 41.50(a)(l).
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
8 See supra note 7 regarding claims 9, 10, 12-15, and 18-20.
27