Ex Parte Cue et al

Patent Trial and Appeal Board

May 26, 2017

13553363 (P.T.A.B. May. 26, 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.
13/553,363 07/19/2012 Eduardo Cue 8802.201.DVUS00_P2512USD1 9051
77970 7590 05/31/2017
Polsinelli — Apple Inc.
c/o Polsinelli PC
Three Embarcadero Center, Suite 2400
San Francisco, CA 94111
EXAMINER
ZURITA, JAMES H
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
05/31/2017 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):
Apple @ Polsinelli. com
cadocket @ Polsinelli. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDUARDO CUE, SHAUN HILTON, GLENN D. EPIS,
JUDY D. HALCHIN, SUSAN PFENDT, and CATHY RIDENOUR
Appeal 2016-0013451
Application 13/553,3632
Technology Center 3600
Before ANTON W. FETTING, MATTHEW S. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
July 2, 2015) and Reply Brief (“Reply Br.,” filed November 11, 2015), the
Examiner’s Answer (“Ans.,” mailed September 21, 2015), and Final Office
Action (“Final Act.,” mailed February 3, 2015).
2 Appellants identify Apple, Inc. as the real party in interest (Appeal Br. 3).
Appeal 2016-001345
Application 13/553,363
CLAIMED INVENTION
Appellants’ claims relate “to electronic commerce sites, especially
electronic commerce sites designed for the use of members of a group”
(Spec. 2,11. 10-11).
Claims 1, 8, 13, and 16 are the independent claims on appeal. Claim
13, reproduced below, with added bracketed notations and paragraphing, is
illustrative of the subject matter on appeal:
13. A method comprising:
[a] storing information in a computer database relating to
products offered by a vendor at an electronic commerce site;
[b] displaying the information relating to the products via
a computer interface, wherein the computer interface is secured
for administration, and wherein the computer interface is
precluded from customer access;
[c] storing via the interface, configuration data in the
database that defines a custom store having at least one of a
restricted set of the products or non-standard pricing for the
products, the non-standard pricing comprising modified prices;
[d] in response to receiving a request for customer access
to the electronic commerce site, determining whether the request
designates a custom store to be generated within the electronic
commerce site; and
[e] in response to the request, generating the custom store
page from the vendor’s electronic commerce site based on the
configuration data.
REJECTION
Claims 1—20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
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ANALYSIS
Appellants argue claims 1—20 as a group based on independent claim
13 (see Appeal Br. 8—14). We select claim 13 as representative. Claims 1—
12 and 14—20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” See, e.g., Alice Corp. PtyLtd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories., Inc., 566 U.S. 66, 82 (2012), “for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of these concepts.” Alice, 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts,” {id. (e.g., to an
abstract idea)). If the claims are not directed to a patent-ineligible concept,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered “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.”
Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78).
The Court acknowledged 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 70. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
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technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
In rejecting independent claim 13, the Examiner finds that claim 13,
considered as a whole, is
directed to allowing customers to shop for and optionally
purchase merchandise which is considered to be an abstract idea
inasmuch as such activity is considered both a fundamental
economic practice and a method of organizing human activity by
providing an opportunity for parties to buy and sell merchandise.
(Final Act. 4; see also Ans. 2—3). In the Answer, the Examiner
acknowledges that “[t]he abstract idea of the challenged claims is not only
the sale of subsets of products/options in general, but also the specific type
of sale/optimization claimed'’'’ (Ans. 4). The Examiner further finds “the
claim, as a whole, does not amount to significantly more than the abstract
idea itself’ because “the claim does not affect an improvement to another
technology or technical field;” “the claim does not amount to an
improvement to the functioning of a computer itself;” and “the claim does
not move beyond a general link of the use of an abstract idea to a particular
technological environment” (Final Act. 5; see also Ans. 3).
Appellants first argue that the rejection is in error because the
Examiner “mischaracterizes claim 13 as being drawn to the abstract idea of
‘allowing customers to shop for and optionally purchase merchandise’”
(Appeal Br. 9). Instead, Appellants argue that “claim 13 is directed to
automatically generating and transmitting a custom webpage representing a
custom store for a user in response to the user’s request” (id.).
We are not persuaded by Appellants’ arguments. To the extent the
Appellants argue that the claims are not broadly directed to the abstract idea
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of “allowing customers to shop,” we disagree. Independent claim 13 is
directed to a method including steps for “storing information . . . relating to
products offered by a vendor,” “displaying the information relating to the
products,” while keeping the displayed information “secured for
administration” and “precluded from customer access,”
“storing . . . configuration data in the database that define[] a custom store,”
“determining whether [a request for customer access] designates a custom
store,” and “generating the custom store page . . . based on the configuration
data.” Further, according to the Specification, Appellants’ invention is
directed to “an improved way of providing a custom store for an electronic
commerce site” (Spec. 3,11. 8—9).
In that context, independent claim 13 is directed to allowing
customers to shop through a customized store.3 Our reviewing courts have
held certain fundamental economic and conventional business practices, like
using advertisement as currency (see Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 713—14 (Fed.Cir.2014)), intermediated settlement (see Alice, 134
3 We note whether to characterize the concept to which the claims are
directed to as “allowing customers to shop for and optionally purchase
merchandise” (Final Act. 4), “the sale of subsets of products/options in
general, but also the specific type of sale/optimization claimed’'' (Ans. 4), or
“[generating and transmitting a custom webpage representing a custom
store for a user in response to the user’s request” (Appeal Br. 9) is simply a
matter of describing the concept at different levels of abstraction. See Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240—1241 (Fed. Cir. 2016) (“An
abstract idea can generally be described at different levels of abstraction. As
the Board has done, the claimed abstract idea could be described as
generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be
described in other ways, including, as indicated in the specification, taking
orders from restaurant customers on a computer.”)
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S. Ct. at 2356—57), and tailoring information presented to a user based on
particular information (see Intellectual Ventures ILLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015); see also Bascom Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir.
2016)) as being abstract ideas. Here, we find allowing customers to shop
through the customized store of exemplary independent claim 13 is similar
to these abstract ideas, and thus, we determine that independent claim 13 is
directed to an abstract idea.
Appellants also argue that independent “[cjlaim 13 is not drawn to an
abstract idea because it is directed to a solution necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks” (Appeal Br. 10). More particularly,
Appellants argue that “claim 13 is directed to automatically generating and
transmitting a custom webpage representing a custom store for a user in
response to the user’s request” (Appeal Br. 9), and like the claims in DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014),
“[generating and transmitting a custom webpage is not an abstract idea
because it is necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer network” (id. at 9—
11; see also Reply Br. 2—3). In this context, Appellants argue that “[cjlaim
13 recites the use of ‘configuration data’ to define ‘a custom store having at
least one of a restricted set of the products or non-standard pricing for the
products, the non-standard pricing comprising modified prices’” (id. at 10-
11). Thus, Appellants maintain that “[cjlaim 13 seeks to overcome the
problem of how to present webpages that contain data specific to the
requesting user. Specifically, claim 13 recites a solution of how to present a
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user with a custom store including a restricted set of products and/or special
pricing for the specific user” (id. at 11).
We are not persuaded by Appellants’ argument. In this regard,
Appellants do not adequately show how the claimed steps are technically
done such that they are not routine, conventional functions of a generic
computer. See Intellectual Ventures, 792 F.3d at 1370 (“Rather, the
‘interactive interface’ simply describes a generic web server with attendant
software, tasked with providing web pages to and communicating with the
user’s computer.”). As such, the present claims are distinguishable from the
claims at issue in DDR Holdings.
In DDR Holdings, the Federal Circuit determined that the claims
addressed the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host’s website after clicking on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
The Federal Circuit, thus, held that the claims were directed to statutory
subject matter because they claim a solution “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Id.
In contrast, there is no indication here that the claimed invention
requires something other than the normal, conventional computer functions
of storing, receiving, retrieving, generating, and transmitting data.
Furthermore, creating a customized store, i.e., “generating and transmitting a
custom webpage representing a custom store for a user in response to the
user’s request” based on “the use of ‘configuration data’ to define ‘a custom
store’” (see Appeal Br. 11) is not a problem unique to computers, but rather
is a ubiquitous issue associated with targeted sales and advertising. See
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Intellectual Ventures, 792 F.3d at 1369 (“There is no dispute that newspaper
inserts had often been tailored based on information known about the
customer—for example, a newspaper might advertise based on the
customer's location. Providing this minimal tailoring—e.g., providing
different newspaper inserts based upon the location of the individual—is an
abstract idea”).
Consequently, when considering the claim limitations individually
and as an ordered combination, the claimed invention is not necessarily
rooted in computer technology to overcome a problem specific to the realm
of computers, but instead embodies the use of generic computer components
in a conventional manner to perform an abstract idea, which, as the court in
DDR Holdings explained, is not patent-eligible. DDR Holdings, 773 F.3d
at 1256 (“[T]hese claims [of prior cases] in substance were directed to
nothing more than the performance of an abstract business practice on the
Internet or using a conventional computer. Such claims are not patent-
eligible.”).
Appellants further argue that “[cjlaim 13 is not drawn to an abstract
idea because claim 13 is not drawn to a method of organizing human
activity” (Appeal Br. 11; see also Reply Br. 3 4) because it “cannot be
performed solely by a human, or in one’s mind, or by pen and paper” nor
can “[a] human storeowner cannot automatically tailor and customize a brick
and mortar store upon the request of an entering customer, while
maintaining its store for its general customer base” (Appeal Br. 11; see also
Reply Br. 3 4). Appellants’ argument is not persuasive. “[T]he fact that the
web site returns the pre-designed ad more quickly than a newspaper could
send the user a location-specific advertisement insert does not confer patent
eligibility.” See Intellectual Ventures, 792 F.3d at 1370 (citing Bancorp
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Servs., LLC v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266,
1278 (Fed. Cir. 2012).
We also are not persuaded by Appellants’ argument that independent
claim 13 includes additional elements that amount to significantly more than
the abstract idea, i.e., the second part of the analysis (see Appeal Br. 12—14;
see also Reply Br. 4—5). In this regard, Appellants argue that
claim 13 recites “storing . . . configuration data . . . that defines a
custom store having ... a restricted set of the products or non­
standard pricing for the products,” and “in response to receiving
a request. . . determining whether the request designates a
custom store to be generated . . . and . . generating the custom
store page . . . based on the configuration data.” These elements
amount to significantly more than just allowing a customer to
shop for and optionally purchase merchandise.
(Appeal Br. 13 (emphasis omitted)). However, we find the steps of storing
configuration data and generating a website based on the configuration data
amount to nothing more than mere instructions to implement the abstract
idea on a computer — none of which add inventiveness because they merely
require the application of conventional, well-known analytical steps. See
Ultramercial, 772 F.3d at 716 (“[T]he claimed sequence of steps comprises
only ‘conventional steps, specified at a high level of generality,’ which is
insufficient to supply an ‘inventive concept.’”) (citing Alice, 134 S. Ct. at
2357). There is no indication in the record that any specialized computer
hardware or other “inventive” computer components are required. In fact,
the Specification merely discloses that its server system “includes a web
server 22, an application server(s) 24, and a database 26” (Spec. 6,11. 4—5).
Thus, each limitation does no more than require a generic computer to
perform generic computer functions.
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And, considered as an ordered combination, the computer components
of Appellants’ independent claim 1 add nothing that is not already present
when the limitations are considered separately. Viewed as a whole,
Appellants’ claims simply recite the concept of allowing customers to shop
through a customized store provided by Appellants’ server system.
Exemplary independent claim 13 does not, for example, purport to improve
the functioning of the server system itself. Nor does it effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than an instruction to apply the
abstract idea of “allowing customers to shop,” i.e., allowing customers to
shop through a customized store, “generating and transmitting a custom
webpage representing a custom store for a user in response to the user’s
request,” which under our precedents, is not enough to transform an abstract
idea into a patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at
2360.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 13, and claims 1—12 and 14—20, which
fall with independent claim 13.
DECISION
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 101 is
sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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