Ex Parte Cunningham et al

Patent Trial and Appeal Board

Mar 13, 2018

14012997 (P.T.A.B. Mar. 13, 2018)

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.
14/012,997 08/28/2013 Christopher J. Cunningham 35901-701.301 9908
21971 7590 03/15/2018
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
WEISBERGER, RICHARD C
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/15/2018 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):
patentdocket @ wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. CUNNINGHAM and
MATTHEW D. KOJIS
Appeal 2016-0067231
Application 14/012,997
Technology Center 3600
Before CARL W. WHITEHEAD JR., AARON W. MOORE, and
DAVID J. CUTITTAII, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge CUTITTA.
Opinion Dissenting filed by Administrative Patent Judge MOORE.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1—4, 9—17, and 22—26, which are
all the claims pending in the application.2 Appellants indicate this appeal is
related to an appeal (2016-007751) for co-pending application 14/012,986.
See Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants name Leadfusion Incorporated as the real party in interest. See
Appeal Br. 3.
2 Claims 5—8, 18—21, and 27—30 are cancelled. See Appeal Br. 26, 28.
Appeal 2016-006723
Application 14/012,997
STATEMENT OF THE CASE
Invention
Appellants’ invention as claimed relates to providing a web site
configured to receive and store data from a user in a first mode or a
second mode. The user is provided with an alphanumeric code to access
the stored data. The user may access the stored data using the code
without authentication. See Spec 17.3
Exemplary Claim
Claims 1 and 14 are independent. Claim 1 is exemplary of
Appellants’ invention and is reproduced below:
1. Non-transitory computer-readable storage media
encoded with a computer program including instructions
executable by a processor to create an application comprising:
a. a software module configured to provide a web site
wherein the web site is configured to receive data entered by a
user in a first mode or a second mode and use the data to generate
output, the output displayed on an interface;
b. a software module configured to receive a request from
the user to generate a unique code;
c. a software module configured to generate the unique
code in response to the request, the unique code comprising an
alphanumeric code, a linear bar code, a two-dimensional bar
code, or a combination thereof;
d. a software module configured to provide the unique
code to the user;
3 This Decision refers to: (1) Appellants’ Specification filed August 28,
2013 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed May 6,
2015; (3) the Appeal Brief (“Appeal Br.”) filed October 5, 2015; (4) the
Examiner’s Answer (“Ans.”) mailed April 27, 2016; and (5) the Reply Brief
(“Reply Br.”) filed June 27, 2016.
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Application 14/012,997
e. a software module configured to maintain persistence of
state information and user-entered data between the first mode
and the second mode of the web site across locations and
interfaces without authentication;
f. a software module configured to store a copy of the
unique code and link the copy of the unique code to the persistent
state information and user-entered data; and
g. a software module configured to accept the unique code,
match the unique code with the stored copy of the unique code,
retrieve the persistent state information and user-entered data
according to the link between the stored copy of the unique code
and the persistent state information and user-entered data, and
configure the web site according to the retrieved persistent state
information and the user-entered data, wherein the persistent
state information and user-entered data are from either the first
mode or the second mode of a first web session and are used to
configure the web site in a subsequent web session in either
mode.
Appeal Br. 25.
REJECTION
Claims 1—4, 9—17, and 22—26 stand rejected under 35 U.S.C. § 101 as
directed to non-patentable subject matter. Final Act. 2.
ANALYSIS
Appellants argue the claims as a group. See Appeal Br. 10. We select
independent claim 1 as representative of Appellants’ arguments for claims
2-A, 9-17, and 22-26. 37 C.F.R. § 41.37(c)(l)(iv).
With respect to independent claim 1, the Examiner finds the claim is
directed to a judicial exception, the abstract idea of “compiling research that
is persistent and portable.” Ans. 2. The Examiner also finds the claim does
“not include additional elements that are sufficient to amount to significantly
more than the judicial exception.” Id.
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Appellants present several arguments against the § 101 rejection. We
do not find Appellants’ arguments persuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellants’ arguments
supported by a preponderance of evidence. See Ans. 2—6. As such, we
adopt the Examiner’s findings and explanations. Final Act. 2-4; Ans. 2—6.
Section 101 provides that “[wjhoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title.” 35 U.S.C. § 101. The
provision, however, “contains an important implicit exception: . . . [ljaws
of nature, natural phenomena, and abstract ideas are not patentable.” Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting
Assoc, for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107,
2116 (2013)). The “abstract ideas” category embodies the longstanding rule
that an idea, by itself, is not patentable. Alice, 134 S. Ct. at 2355 (quoting
Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
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.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 77—78 (2012)). 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
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nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). 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. (brackets in original)
(quoting Mayo, 566 U.S. at 73). The prohibition against patenting an
abstract idea “‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or adding ‘insignificant
postsolution activity’.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010).
Here, turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants’ claim 1 is directed to an abstract idea because in
the claim “[t]hese steps can be performed mentally, and are similar to the
concepts identified as abstract ideas by the courts (e.g., using categories to
organize and store information for transmission (Cyberfone) or comparing
new and stored information and using rules to identity options in
(SmartGene)).” Ans. 3 (citing Cyberfone Sys., LLC v. CNN Interactive Grp.,
558 Fed. Appx. 988 (Fed. Cir. 2014) and SmartGene, Inc. v. Advanced
Biological Laboratories, SA, 555 Fed. Appx. 950 (Fed. Cir. 2014), cert,
denied, 135 S. Ct. 58 (2014)). We need not define the outer limits of
“abstract idea,” or at this stage exclude the possibility that any particular
inventive means are to be found somewhere in the claims, to conclude that
these claims focus on an abstract idea—and hence require stage-two analysis
under § 101.
Information as such is an intangible. Bayer AG v. Housey Pharm.,
Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003). Accordingly, our reviewing
court has treated storing or collecting information as within the realm of
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abstract ideas. See, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). Similarly, our
reviewing court has treated activities that could be performed by a human,
e.g., mentally, using pen and paper, and/or manually, without the use of a
computer or any other machine, as essentially mental processes within the
abstract-idea category. See CyberSource, 654 F.3d at 1372—73; see also
Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012). In addition, merely providing or
displaying the results of abstract processes of storing or analyzing
information, without more, is abstract as an ancillary part of such collection
or analysis. See, e.g., Content Extraction and Transmission LLC v. Wells
Fargo Bank, Nat. Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
Here, at the first step of the Alice analysis, we determine claim 1 is
directed to the abstract idea of configuring a website, using stored data, for
display to a user, without authentication, when a code entered by the user
matches a stored code. Namely, claim 1 relates to storing data entered by a
user in either a first mode or a second mode of a first web session and
configuring a website in a subsequent web session in either mode. Claim 1,
therefore, is focused on the combination of the abstract-idea processes of
storing data, analyzing the data, and configuring certain stored data for
display according to the analyzing. That is, the advancement Appellants
purport to make is merely a process of storing and analyzing information of
a specified content and then configuring the results for display, without any
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particular inventive technology for performing those functions. Claim 1
does not recite a particular way of programming or designing the software to
create the website that displays the content, but instead merely claims the
result. Essentially, the claim is directed to certain functionality—here, the
ability to configure certain stored data for display in response to entry of a
code by the user. The claim is, therefore, directed to an abstract idea.
Appellants contend the Examiner has misapprehended the Court’s
Alice analysis requirement in step 1 to consider the elements of the claim as
a whole because the Examiner’s characterization of the claims in step one of
the Alice analysis “specifically ignore [s] most of the positively recited
limitations in the claim as well as the consistent context provided in the
specification.” Appeal Br. 11.
We are unpersuaded. Contrary to Appellants’ argument, the
Examiner properly considered the claim elements of claim 1 as a whole
under the two-step Alice analysis when the Examiner considered all claim
elements, both individually and in combination, under step 2 of the analysis.
See Ans. 3. Appellants do not contend the Examiner failed to consider all
claim elements of claim 1 as a whole under step 2 of the Alice analysis.
To the extent Appellants argue the claim’s character as a whole
(considered in light of the consistent context of the Specification) is not
directed to an abstract idea (Appeal Br. 11), we remain unpersuaded.
Contrary to Appellants’ argument, Appellants’ Specification states in the
Background section that “[currently available technology fails to allow
consumers of financial products and services to compile research that is
persistent and portable across locations” and that advantages of the claimed
invention include “offering guided selling dialogs to consumers of financial
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products and services that include scripted questions based on best
practices.” Spec. Tflf 4, 6. We conclude there is more than sufficient basis to
conclude under step 1 of the Alice analysis that claim 1 is directed to an
abstract idea of “compiling research that is persistent and portable.” Ans. 2.
Although the Examiner describes claim 1 at a different level of abstraction
than our characterization supra, this does not make the claim any less
abstract. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir.
2016) (“An abstract idea can generally be described at different levels of
abstraction. . . . The Board’s slight revision of its abstract idea analysis does
not impact the patentability analysis.”).
Appellants next argue that the appealed “claims do not preempt all
applications of a graphical display” (Appeal Br. 13) and “the Answer does
not address the question of preemption in this case or offer any evidence that
the claimed subject matter ‘ties-up’ and preempts all applications of any
abstract idea across all fields” (Reply Br. 9). We find Appellants’ argument
unpersuasive because we agree with the Examiner that “the absence of
complete preemption does not guarantee that a claim is eligible.” Ans. 4;
seeAriosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015) (“[wjhile preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent
eligibility”). Furthermore, the fact that the claims do not preempt does not
make them any less abstract. See, e.g., OIP Technologies, 788 F.3d at 1363
(finding that the claims do not become “any less abstract” due to lack of
preemption); Fairwarning IP LLC v. Iatric Systems, Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016). “Where a patent’s claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, as they
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are in this case, preemption concerns are fully addressed and made moot.”
Ariosa, 788 F.3d at 1379.
Turning to the second step of the Alice inquiry, we find nothing in
Appellants’ claim 1 that adds “significantly more,” sufficient to transform
the abstract concept of storing and displaying information into a patent-
eligible application. Alice, 134 S. Ct. at 2357. We agree with the Examiner
that in the instant claim, “the applicant has merely implemented routine
computer protocols to implement routine offline activities” (Ans. 6), i.e.,
activities that could have been performed by hand or mentally. Merely
storing information for display at a later time does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
exclusion from § 101 underpins the information-based category of abstract
ideas. Claim 1 does not require a new source or type of information, or a
new technique for analyzing it. Moreover, the providing of stored data upon
receipt of a unique alphanumeric code without authentication is no different
than retrieving any stored computer file upon entry of the file name or
retrieving any website data that corresponds to a specific URL. See claim 1.
Consequently, claim 1 does not require an arguably inventive set of
components or methods, such as measurement devices or techniques, that
would generate new data or provide a new way of analyzing that data. Still
further, the claim does not invoke any assertedly inventive programming.
Merely manipulating stored data for display by itself does not transform the
otherwise-abstract processes of information collection and analysis.
Appellants argue claim 1 recites significantly more than an abstract
idea because the claim: (i) “recite[s] specific limitations other than what is
well-understood, routine, and conventional in the field;” (ii) “recite[s]
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improvements to a technical field;” and (iii) “recite[s] unconventional steps
that confine the claim to a particular useful application.” See Appeal Br. 16—
20 (emphases omitted).
We are unpersuaded. In the argument set forth in section (c)(i),
Appellants fail to persuasively indicate any specific limitations that are other
than well-understood, routine, and conventional in the field. See Appeal
Br. 16-17.
In section (c)(ii), Appellants argue claim 1 recites improvements to a
technical field because “the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” Appeal Br. 18 (citing DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (finding
inventive concept in modification of conventional mechanics behind website
display to produce dual-source integrated hybrid display)). Appellants
further argue, “[similar to DDR Holdings, the pending claims recite a
specific technological solution that addresses a specific technological
problem in the field of cross-channel product education, research, and
recommendation and collaboration tools for both consumers and sales
representatives.” Appeal Br. 23.
We disagree. The solution offered by Appellants’ claim is not rooted
in any new computer technology. Rather, it offers portable storage of user
research and “guided selling dialogs to consumers of financial products and
services that include scripted questions based on best practices.” Spec. 1 6.
The solution Appellants offer is “an entrepreneurial, rather than a
technological, one.” DDR, 773 F.3d at 1265 (Mayer, J., dissenting). Claim
1 does not require an arguably inventive device or technique for displaying
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information, unlike the claims at issue in DDR Holdings. Nothing in claim
1, understood in light of the Specification, requires anything other than an
off-the-shelf computer, and display technology for extracting and presenting
the desired data. Our reviewing court has 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. buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353,
(Fed. Cir. 2014); see, e.g., Intellectual Ventures ILLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015).
In section (c)(iii), Appellants argue claim 1 is confined “to a specific
ordered way of accomplishing a particular useful application for systems
which to allow consumers to move between two operating modes, breaking
and reengaging from the process at will, without losing any of their work.”
Appeal Br. 19-20.
We are not persuaded. Under the second step of the Alice analysis,
we evaluate whether additional elements of the claim — both individually
and as an ordered combination — transform the nature of the claim into a
patent-eligible application of the abstract idea. Here, the claim essentially
recites storing data entered by a user in either a first mode or a second mode,
generating a unique code in response to a request and providing the code to
the user, retrieving the stored data at a later time without authentication in
response to receiving the unique code, and configuring a web site according
to the retrieved data. See claim 1. Such steps constitute no more than
gathering existing data, manipulating the existing data to generate additional
data, and generating the data for display on a website. These activities are
routine, if not necessary, for the creation of a website. We, therefore,
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determine these steps represent insignificant pre-solution or post-solution
activity. Appellants argue the “elements of the pending claims confine the
invention to a specific ordered way of accomplishing the inventive process.”
Appeal Br. 19. Regardless, the claimed arrangement is merely an improved
abstract idea, i.e., an improved way of displaying data. As discussed above,
this is insufficient to transform the abstract idea into patent-eligible subject
matter.
Viewed as a whole, claim 1 does not provide additional meaningful
limitations sufficient to transform the claimed abstract idea into a patent
eligible application of the abstract idea such that the claims amount to
significantly more than the abstract idea itself. Because claim 1 is directed
to a patent-ineligible abstract concept and does not recite “significantly
more” under the second prong of the Alice analysis, we sustain the
Examiner’s rejection of this claim under 35U.S.C. § 101 as being directed
to non-statutory subject matter in light of Alice and its progeny.
We also sustain the Examiner’s rejection under 35 U.S.C. § 101 of the other
disputed claims, which are not argued separately.
DECISION
We affirm the Examiner’s rejection of claims 1—4, 9—17, and 22—26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1) (iv).
AFFIRMED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. CUNNINGHAM and
MATTHEW D. KOJIS
Appeal 2016-006723
Application 14/012,997
Technology Center 3600
Before CARL W. WHITEHEAD JR., AARON W. MOORE, and
DAVID J. CUTITTAII, Administrative Patent Judges.
MOORE, Administrative Patent Judge, DISSENTING.
DISSENTING OPINION
Appellants describe and claim a system for maintaining persistence of
state information and user-entered data between a first mode and a second
mode of a web site across locations and interfaces without authentication.
The Specification states that the invention solves a problem in that
“[cjurrently available technology fails to allow consumers of financial
products and services to compile research that is persistent and portable
across locations and channels.” (Spec. 14.)
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Application 14/012,997
Viewing the claims as a whole and in light of the Specification, I find
them similar, from a patent eligibility perspective, to the claims approved in
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
The DDR claims were held eligible because they did “not merely recite the
performance of some business practice known from the pre-Internet world
along with the requirement to perform it on the Internet,” but instead recited
a “solution . . . necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
773 F.3d 1257. My view is that Appellants’ invention similarly is not
simply relocation of a pre-Internet business practice to the Internet, but
instead provides a new way to overcome a problem (the inability to compile
research that is persistent and portable across locations and channels)
specifically arising in the realm of computer networks. While it is true that
Appellants’ invention is implemented by storing, retrieving, and displaying
data, I would find that fact not disqualifying, just as it was not in DDR,
because the claims as a whole are directed to an apparently new system for
overcoming a specific problem.
For these reasons, I would find the claims patent eligible and,
therefore, respectfully dissent from the Majority’s opinion affirming the
rejection under 35 U.S.C. § 101.
2