Ex Parte Cazeaux et al

Patent Trial and Appeal Board

Aug 28, 2017

13281731 (P.T.A.B. Aug. 28, 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.
13/281,731 10/26/2011 Olivier Cazeaux PT1087US00 7850
132326 7590
Thompson Hine LLP
10050 Innovation Drive
Suite 400
Dayton, OH 45342-4934
EXAMINER
JOSEPH, TONYA S
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
ipdocket @ thompsonhine. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVIER CAZEAUX, CYRIL BOYADJI,
BERTRAND TRAN, AURELIEN PIOGER,
and PATRICE AMBOLET
Appeal 2016-008313
Application 13/281,731
Technology Center 3600
Before HUNG H. BUI, JOYCE CRAIG, and AARON W. MOORE,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—11 and 13—25, which are all of the claims
pending in this application.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Amadeus S.A.S.
(Biot, France). App. Br. 3.
Appeal 2016-008313
Application 13/281,731
INVENTION
Appellants’ invention relates to global maximization of time limit
revenues by a travel provider. Abstract. Claim 1 below is illustrative of the
subject matter on appeal and reads as follows:
1. A method to generate travel booking option related data,
comprising:
calculating, with at least one processor, a time limit value
for an option to reserve a travel reservation for a period of time,
without making a payment to issue a ticket; and
calculating, with the at least one processor, a fee amount
for the option,
wherein the time limit value and the fee amount are jointly
calculated to maximize a revenue gain of a travel provider, and
wherein, calculating the time limit value for the option to
reserve the travel reservation comprises estimating a time-to-
ticket willingness based on historical data for each of at least two
consecutive periods.
REJECTION
Claims 1—11 and 13—25 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter. Final Act.
3.
ANALYSIS
We agree with and adopt as our own the Examiner’s findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We have considered Appellants’ arguments, but do not
find them persuasive of error. We provide the following explanation for
emphasis.
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Application 13/281,731
The Examiner found that independent method claim 1, and similarly,
product claim 25, are directed to an abstract idea of “calculating a time limit
value to make a reservation,” which the Examiner found “is in the categories
of (iii) an idea of itself and (iv) a mathematical relationship or formula.”
Final Act. 4. In particular, the Examiner found Appellants’ claims are
directed to “[cjomparing new and stored information and using rules to
identity options” and “[collecting data, recognizing certain data within the
collected data set, and storing that recognized data in a memory.” Ans. 2—3.
The Examiner also found additional elements recited in these claims do not
amount to significantly more than the abstract idea itself. Final Act. 4.
According to the Examiner, viewed as a whole, the additional claim
elements “do not provide meaningful limitations to transform the abstract
idea into a patent eligible application of the abstract idea such that the claim
amounts to significantly 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.” Id.
Appellants present several arguments against the § 101 rejection.
First, Appellants argue the Examiner “has failed to establish through
documentary evidence that the claims are directed to an abstract idea, or a
concept similar to those ‘identified by the courts by way of example,
including fundamental economic practices, certain methods of organizing
human activities, an idea ‘of itself,’ and mathematical
relationships/formulas’ that would be properly considered to be a
fundamental building block.” App. Br. 6.
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Application 13/281,731
Second, Appellants argue that the claims “include additional elements
that are sufficient to amount to significantly more than the judicial
exception.” Id. at 7. In particular, Appellants argue that “the claims recite
elements that recite jointly calculating the time limit value and the fee
amount in order to maximize revenue generated by the travel provider.” Id.
at 8—9.
Third, Appellants argue that “because the claims were not rejected
under 35 U.S.C. 102 or 103, the Examiner has found that the present claims
do not pre-empt use of the abstract idea identified by the Examiner.” Id. at
9.
Fourth, Appellants argue that the Examiner erred in concluding that
the claims do not amount to significantly more than the alleged abstract idea
because the Examiner grouped all of the claims together. Id.
We are not persuaded by Appellants’ arguments. In Alice, the
Supreme Court sets forth an analytical “framework for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp. Pty.
Ltd. v. CLSBankInt’l, 134 S.Ct. 2347, 2355 (2014). The first step in the
analysis is to “determine whether the claims at issue are directed to one of
those patent-ineligible concepts,” such as an abstract idea. Id. If the claims
are directed to a patent-ineligible concept, the second step in the analysis is
to consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct.
1289, 1297 (2012). In other words, the second step is to “search for an
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Application 13/281,731
‘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. (quoting Mayo, 132
S.Ct. at 1294).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that claim 12 is directed to a patent-ineligible abstract concept of
“comparing new and stored information and using rules to identify options.”
See Ans. 2; see also SmartGene, Inc. v. Advanced Biological Labs., SA, 555
F. App’x 950, 955 (Fed. Cir. 2014). The “calculating” steps recited in claim
1 are abstract processes of collecting, storing, and analyzing information of a
specific content prior to granting access to the content. See Ans. 2. Claim 1
recites these limitations in the context of “at least one processor.” App. Br.
12. Information as such is intangible. See Microsoft Corp. v. AT & T Corp.,
550 U.S. 437, 451, n. 12 (2007). Information collection and analysis,
including when limited to particular content, is within the realm of abstract
ideas. See, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
Turning to the second step of the Alice inquiry, we find nothing in
claim 1 that adds anything “significantly more” to transform the abstract
concept of “comparing of new and stored information and using rules to
identify options” into a patent-eligible application. Alice, 134 S.Ct. at 2357.
2 Appellants argue all rejected claims as a group, and we choose claim 1 as
representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv).
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None of Appellants’ arguments persuade us that some inventive concept
arises from the ordered combination of these steps, which are ordinary steps
in data analysis and are recited in an ordinary order. See App. Br. 7—9.
Claim 1 simply incorporates a generic computer “processor” to perform the
abstract concept of comparing new and stored information and using rules to
identify options, i.e., collecting, storing, and analyzing information.
Limiting an abstract concept of “comparing new and stored
information and using rules to identify options” to a general purpose
computer having generic components such as the “processor” recited in
Appellants’ claim 1 does not make the abstract concept patent-eligible under
35 U.S.C. § 101. Ans. 3. As recognized by the Supreme Court, “the mere
recitation of a generic computer cannot transform a patent ineligible abstract
idea into a patent-eligible invention.” See Alice, 134 S.Ct. at 2359
(concluding claims “simply instructing] the practitioner to implement the
abstract idea of intermediated settlement on a generic computer” not patent
eligible); see also Ultramercial, Inc. v. Hulu LLC, 772 F.3d 709, 715—16
(Fed. Cir. 2014) (claims merely reciting abstract idea of using advertising as
currency as applied to particular technological environment of the Internet
not patent eligible); Accenture Global Servs., GmbH v. Guidewire Software,
Inc., 728 F.3d 1336, 1344^45 (Fed. Cir. 2013) (claims reciting “generalized
software components arranged to implement an abstract concept [of
generating insurance-policy-related tasks based on rules to be completed
upon the occurrence of an event] on a computer” not patent eligible); and
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir. 2012)
(“[s]imply adding a ‘computer aided’ limitation to a claim covering an
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Application 13/281,731
abstract concept, without more, is insufficient to render [a] claim patent
eligible” (citation omitted)).
In contrast to recent decisions in which the Federal Circuit held that
claims directed to specific improvements in computer capabilities are patent-
eligible subject matter, claim 1 neither is rooted in computer technology nor
seeks to improve any type of computer capabilities. See, e.g., DDR
Holdings v. Hotels.com, 113 F.3d 1245 (Fed. Cir. 2014); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Instead, Appellants’ claim
1 simply recites an abstract concept of comparing new and stored
information and using rules to identify options, i.e., collecting, storing, and
analyzing information.
Contrary to Appellants’ arguments, the Examiner is not required to
present evidence that claims are directed to an abstract idea. See App. Br. 6.
Whether a claim is patent-eligible is a question of law. Evidence may be
helpful in certain situations where, for instance, facts are in dispute, but that
is not the case here. Moreover, Appellants improperly conflate the
requirements for eligible subject matter (§ 101) with the independent
requirements of novelty (§ 102) and non-obviousness (§ 103). See id. at 9.
“The ‘novelty’ of any element or steps in a process, or even of the process
itself, is of no relevance in determining whether the subject matter of a claim
falls within the § 101 categories of possibly patentable subject matter.”
Diamond v. Diehr, 450 U.S. 175, 188—89 (1981); see also Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). Questions on
preemption are inherent in and resolved by the Alice analysis. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 134 S.Ct. at 2354).
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Application 13/281,731
Because Appellants’ claim 1 is directed to a patent-ineligible abstract
concept and does not recite something “significantly more” under the second
prong of the Alice analysis, we sustain the Examiner’s 35 U.S.C. § 101
rejection of representative claim 1, as well as the 35 U.S.C. § 101 rejection
of grouped independent claim 25 and dependent claims 2—11 and 13—24, not
argued separately. See App. Br. 10.
DECISION
The decision of the Examiner to reject claims 1—11 and 13—25 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)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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