Ex Parte Dawson et al

Patent Trial and Appeal Board

Aug 28, 2017

11755782 (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.
11/755,782 05/31/2007 Christopher J. Dawson END920060243US1 9722
46583 7590
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
EXAMINER
CHEN, GEORGE YUNG CHIEH
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):
docketing@rmsc2.com
lgallaugher@rmsc2.com
dbeltran @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. DAWSON, PETER G. FINN,
RICK A. HAMILTON II, and JENNY S. LI
Appeal 2016-005148
Application 11/755,7821
Technology Center 3600
Before JOHNNY A. KUMAR, JOHN P. PINKERTON, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—6 and 8—37. Appellants have canceled claim 7. Amend. 7, filed
December 11, 2014. We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal 2016-005148
Application 11/755,782
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention is directed to “methods
and systems to establish and execute price offerings among the lenders and
borrowers in a bandwidth-sharing ad hoc network for shared bandwidth
usage.” Spec. 12.
Claims 1 and 2 are representative of the subject matter on appeal and
are reproduced below:
1. A method, comprising:
establishing a price offering among a lender and borrower in a
bandwidth-sharing ad hoc network for shared bandwidth usage;
executing the price offering upon acceptance of a lender to the
bandwidth-sharing ad hoc network for shared bandwidth usage; and
perform a download of a file using the bandwidth-sharing ad hoc
network in which the lender lends bandwidth to the borrower to
complete the download,
wherein the price offering is based on a price per unit of time
pricing scheme including a retainer charge imposed to the borrower;
at least one of the establishing and the executing is performed
using a computer device including a processor; and
the bandwidth-sharing ad hoc network is configured for the
borrower communicating with the lender via local wireless
communication protocol and the lender communicating with a remote
location on behalf of the borrower to complete the download.
2. The method of claim 1, wherein the bandwidth-sharing ad hoc
network for shared bandwidth usage is one of a peer-to-peer
environment and a multiplexed environment;
the lender is one of a plurality of lenders in the bandwidth­
sharing ad hoc network; and
the plurality of lenders create a single virtual fat pipe for
transmission of data for the borrower over a network.
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Application 11/755,782
The Examiner’s Rejection
Claims 1—6 and 8—37 stand rejected under 35U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2—3.
Issue on Appeal
Did the Examiner err in finding Appellants’ claimed invention is
directed to an abstract idea and the recited claim limitations do not provide
meaningful limitations to transform the abstract idea into patent-eligible
subject matter?
ANALYSIS2
Claims 1, 3—6, 8—24, and 3 7
Appellants assert the Examiner mischaracterizes the claimed
invention in an attempt to fit the claimed invention into various, recognized
categories of abstract ideas. App. Br. 7—9. In particular, Appellants dispute
the Examiner’s characterization of claim 1 as a collection of the abstract
ideas of (i) creating a contractual relationship; (ii) managing a game of
Bingo; (iii) organizing information through mathematical correlations; and
(iv) updating limits using a formula. App. Br. 8—9; Reply Br. 2—3 see Final
Act. 2—3. Appellants argue the claim language does not recite the language
of the abstract concepts and, therefore, the Examiner has not made a prima
2 Throughout this Decision, we have considered the Appeal Brief, filed
September 8, 2015 (“App. Br.”); the Reply Brief, filed March 30, 2016
(“Reply Br.”); the Examiner’s Answer, mailed February 10, 2016 (“Ans.”);
and the Final Office Action, mailed May 8, 2015 (“Final Act.”), from which
this Appeal is taken.
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Application 11/755,782
facie case that the claim is directed to the identified abstract idea(s). App.
Br. 8-9.
Additionally, Appellants assert, assuming arguendo the claims are
directed to an abstract idea, the claims “recite significantly more than an
abstract idea.” App. Br. 9; Reply Br. 3—6. Appellants allege the claims
recite more than a generic computer structure performing generic activities
that are well-understood, routine, and conventional. App. Br. 9.
Specifically, Appellants argue the Examiner has not demonstrated that
“performing a download of a file . . .” or a bandwidth-sharing ad hoc
network configured to allow wireless communication between a borrower
and lender are well-known. App. Br. 11—12; Reply Br. 4—5. Appellants
contend, under the Interim Guidance, these limitations quality as
“significantly more” because they are used by “a particular machine” (i.e., a
bandwidth-sharing ad hoc network) and perform unconventional steps
(perform a file download and use wireless communication on a network).
App. Br. 11-12.
For the reasons discussed below, Appellants have not persuaded us of
error. The Supreme Court’s two-step framework guides our analysis. Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). If a claim
falls within one of the statutory categories of patent eligibility (i.e., a
process, machine, manufacture or composition of matter) then the first
inquiry is whether the claim is directed to one of the judicially-recognized
exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea).
If so, the second step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception.
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Application 11/755,782
Here, the Examiner has analyzed sufficiently the pending claims using
the two-step framework, in accordance with the Office’s guidance for
determining subject matter eligibility.
On its face, independent claim 1 falls within one of the statutory
categories of patentability—a method (i.e., process). Although broadly
falling within the statutory categories of patent eligibility, the Examiner
finds the claims are directed to one of the judicially-recognized exceptions—
in particular, a collection of abstract ideas. See Final Act. 2—3; Ans. 2-4.
Instead of using a definition of an abstract idea, “the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided.” Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)); accord United States Patent
and Trademark Office, July 2015 Update: Subject Matter Eligibility (July
30, 2015), p. 3, https://www.uspto.gov/sites/default/files/documents/ieg-
july-2015-update.pdf (instructing examiners that “a claimed concept is not
identified as an abstract idea unless it is similar to at least one concept that
the courts have identified as an abstract idea.”). As part of this inquiry, we
must “look at the ‘focus of the claimed advance over the prior art’ to
determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
As the Examiner explains, although the claim language does not recite
the exact language of, for example, creating a contract for bandwidth
sharing, a contract is formed. Ans. 2. Our reviewing court has set forth that
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Application 11/755,782
creating a contractual relationship is “beyond question of ancient lineage.”
BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). See
also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015)
(finding claims directed to price optimization on a generic computer to be an
abstract idea). Here, we agree with the Examiner that claim 1 recites the
essential elements of a contractual relationship (offering shared bandwidth
usage, acceptance of the offer, and access to the shared bandwidth (i.e.,
consideration)).
Similarly, the Examiner explains that although the claim does not
recite the exact language of the abstract ideas identified (i.e., managing a file
download based on a price agreement and using mathematical formulae for
establishing and organizing price information), the claims are directed to
these abstract ideas. Ans. 2—3. We agree.
Here, access by the borrower to the shared bandwidth of the lender is
permitted after agreement on a price offering has been reached. Further,
claim 1 provides the pricing may be determined based on a price per unit of
time pricing scheme including a retainer charge. As the Examiner explains,
this may be represented as:
price_offering = usage_time * price_per_unit_time + retainer.
Ans. 2—3. More recently, our reviewing court has also found providing
restricted access to a resource is an abstract idea. Prism Techs. LLC v. T-
Mobile USA, Inc., Nos. 2016-2031, 2016-2049, 2017 WL 2705338 *2 (Fed.
Cir. June 23, 2017). See also In re TLI Commc ’ns LLC Patent Litig., 823
F.3d 607, 613 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015). Additionally, merely
combining several abstract ideas does not render the combination any less
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Application 11/755,782
abstract. Cf. Shortridge v. Found. Constr. Payroll Serv., LLC, No. 14-CV-
04850-JCS, 2015 WL 1739256, *11 (N.D. Cal. Apr. 14, 2015), affd, No.
2015-1898, 2016 WL 3742816 (Fed. Cir. July 13, 2016). Thus, claim 1 is
directed to the abstract idea of establishing a contractual relationship to
provide access to a restricted resource (i.e., shared bandwidth).
Because the claim is directed to an abstract idea, we analyze the claim
under step two to determine if there are additional limitations that
individually, or as an ordered combination, ensure the claim amounts to
“significantly more” than the abstract idea. Alice, 134 S. Ct. at 2357. The
implementation of the abstract idea involved must be “more than the
performance of ‘well-understood, routine, [and] conventional activities
previously known to the industry.’” Content Extraction & Transmission
LLCv. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347^18 (Fed. Cir. 2014).
Here, we agree with the Examiner that the actions of performing a
download and network configuration are well-understood routine operations.
We are unpersuaded the claim recites anything significantly more than a
generic computer performing well-understood steps of downloading a file
over a network or supporting a wireless protocol to allow parties to
communicate over a network. See BuySAFE, 765 F.3d at 1355 (“[t]hat a
computer receives and sends information over a network ... is not even
arguably inventive”). Further, we are unpersuaded by Appellants’ argument
that the claimed invention is performed by a particular machine. See App.
Br. 11—12. Rather, Appellants’ Specification describes the computer
infrastructure / computing device “can comprise any general purpose
computing article of manufacture” such as a personal computer, server, or a
handheld device. Spec. 120. Additionally, the Specification also describes
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Application 11/755,782
the wireless communication over the network as being “via any known
wireless protocol.” Spec. 128. Also, we agree with the Examiner that
Appellants’ proposed solution could have been implemented “with the
assistance of a general purpose computer applied to facilitate the functions at
a high level of generality or with the assistance of additional elements
performing well-known, conventional functions.” Ans. 4.
Appellants also argue the Examiner “has failed to explain how claim 1
preempts the use of any abstract idea.” Reply Br. 5.
“[Wjhile preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
FairWarning IP, 839 F.3d at 1098 (quoting Ariosa 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), cert,
denied, 136 S. Ct. 701, 193 (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.”). Further, “[wjhere a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa, 788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1 as being directed to non-statutory subject matter. Additionally, we
sustain the Examiner’s rejection of claims 3—6, 8—24, and 37, which depend
therefrom and were not argued separately. See App. Br. 13; see also
37 C.F.R. §41.37(c)(l)(iv).
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Claim 2
Appellants contend the rejection of claim 2 is in error because it
recites “significantly more” than what was recited in claim 1. App. Br. 13;
Reply Br. 6. Specifically, Appellants argue the implementation on either a
peer-to-peer environment or a multiplexed environment constitutes a
particular machine (i.e., environment). App. Br. 13. Additionally,
Appellants argue the Examiner has not established that the creation of a
virtual fat pipe for data transmission is well-understood, routine, and
conventional. App. Br. 13—14.
We agree with the Examiner that the additional elements recited in
claim 2 are directed to describing communication protocols used to form the
network and that the support of these communication protocols “require
nothing more than [a] generic computer performing well-understood
operations.” Ans. 5. Further, contrary to Appellants’ assertions, the creation
of a virtual fat pipe for data transmission, understood in light of the
Specification, does not appear to require anything other than off-the-shelf
computers performing techniques well-known in the art. For example, the
Specification discloses a single virtual fat pipe for transmission of data may
be created by multiple devices (generic wireless devices/computers) using a
variety of service providers. Spec. 117; see also Spec. 18—20, 28.
On this record, Appellants have not shown the additional limitations
of claim 2 individually, or as an ordered combination, amount to
“significantly more” than the abstract idea.
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Application 11/755,782
Claims 25—35
Independent claim 25 recites limitations commensurate in scope with
those of claims 1 and 2. Appellants advance similar arguments as those
presented with respect to claims 1 and 2. App. Br. 14—20. For similar
reasons discussed regarding claims 1 and 2, we are unpersuaded the
Examiner erred in rejecting independent claim 25. Accordingly, we sustain
the Examiner’s rejection of claim 25 as being directed to non-statutory
subject matter. Additionally, we sustain the Examiner’s rejection of claims
26—35, which depend therefrom and were not argued separately. See App.
Br. 20; see also 37 C.F.R. § 41.37(c)(l)(iv).
Claim 36
Independent claim 36 recites limitations commensurate in scope with
those of claim 1. Appellants advance similar arguments as those presented
with respect to claim 1. App. Br. 20—26. For similar reasons discussed
regarding claim 1, we are unpersuaded the Examiner erred in rejecting
independent claim 36. Accordingly, we sustain the Examiner’s rejection of
claim 36 as being directed to non-statutory subject matter.
DECISION
We affirm the Examiner’s decision rejecting claims 1—6 and 8—37.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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