Ex Parte Faherty et al

Patent Trial and Appeal BoardOct 3, 2017

10990875 (P.T.A.B. Oct. 3, 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. 10/990,875 11/17/2004 Robert J. Faherty 0010 us 5914 23410 7590 Vista IP Law Group LLP 100 Spectrum Center Drive Suite 900 IRVINE, CA 92618 EXAMINER VIG, NARESH ART UNIT PAPER NUMBER 3622 MAIL DATE DELIVERY MODE 10/04/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT J. FAHERTY, KEVIN M. FAHERTY, and WILLIAM C. FAHERTY, Appeal 2015-006393 Application 10/990,875 Technology Center 3600 Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and NINA L. MEDLOCK, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 44, 45, 47—57, 59-62, 64—69, 71—80, and 169-174, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. Appeal 2015-006393 Application 10/990,875 THE INVENTION The Appellants’ claimed invention is directed to systems and methods for the home showing aspect of a real estate transaction process (Spec. para. 1). Claim 44, reproduced below, is representative of the subject matter on appeal. 44. A centralized method of facilitating the return of occupants to homes for sale from which they are currently absent, the occupants carrying handheld communications devices, comprising: receiving home identifiers; correlating the home identifiers with the handheld communications devices; contacting the occupants via the respective handheld communications device in accordance with the correlated home identifiers; and sending notification messages related to the showings of the respective homes to the occupants via the respective handheld communications devices. THE REJECTION The following rejection is before us for review:1 Claims 44, 45, 47—57, 59-62, 64—69, 71—80, and 169-174 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. 1 The rejection made under 35 U.S.C. § 103(a) has been withdrawn (Supp. Answer 2). 2 Appeal 2015-006393 Application 10/990,875 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.2 ANALYSIS The Appellants argue that the rejection of claim 44 under 35 U.S.C. § 101 is improper because the claim is not directed to an abstract idea and, even it is was, that the claim includes additional limitations that amount to “significantly more” than the abstract idea itself (App. Br. 4—8, Reply Br. 1— 5). In contrast, the Examiner has determined that the rejection is proper (Supp. Ans. 2—6). The Examiner has determined that the claim is directed to the abstract concept of contacting a customer when his or her task or work is completed and that the claim does not include limitations sufficient to amount to “significantly more” than the judicial exception (Supp. Ans. 4). We agree with the Examiner. Although our previous Decision mailed April 29, 2014 held claim 44 to not be directed to an abstract idea, this was rendered before the Supreme Court case, Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), was decided on June 19, 2014, which set forth an analysis for claimed subject matter under 35 U.S.C. § 101. As acknowledged by the Appellants at page 5 of the Appeal Brief, Alice now represents a new interpretation of 35 U.S.C. § 101 to be used in the analysis since the previous Decision on Appeal in this case was rendered. 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal 2015-006393 Application 10/990,875 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: “laws of nature, natural phenomena, and abstract ideas” are not patentable. See Alice, 134 S. Ct. at 2354. In judging whether claim 44 falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court’s two- step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). In accordance with that framework, we first determine whether the claim is “directed to” a patent-ineligible abstract idea. If so, we then consider the elements of the claim both individually and as “an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application of the abstract idea. Id. This is a search for an “inventive concept,” an element or combination of elements sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. Id. The Court also stated that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Id. at 2358. Here, we determine that claim 44 is directed to the concept of notifying a seller when a buyer is inspecting an item for sale, which in this case is a home. This is a method of organizing human activities and also a fundamental economic practice long prevalent in our system of commerce, and is an abstract idea beyond the scope of § 101. We next consider whether additional elements of the claim, both individually and as an ordered combination, transform the nature of the 4 Appeal 2015-006393 Application 10/990,875 claim into a patent-eligible application of the abstract idea, e.g., whether the claim does more than simply instruct the practitioner to implement the abstract idea using generic computer components. We conclude that it does not. Considering each of the claimed elements in turn, the function performed by the computer-driven communication devices at each step of the process is purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. For these reasons, the rejection of claim 44, and its dependent claims, which have not been separately argued in the Appeal Brief, is sustained. We reach the same conclusion as to independent system claims 61 and 73 for which similar arguments have been presented. Here, as in Alice, “the system claims are no different in substance from the method claims. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.” Alice, 134 S. Ct. at 2351. “[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea ‘while adding the words ‘apply if is not enough for patent eligibility.” Id. at 2358 (quoting Mayo, 132 S. Ct. at 1294). CONCLUSIONS OF LAW We conclude that Appellants have not shown that the Examiner erred in rejecting the claims under 35U.S.C. § 101. 5 Appeal 2015-006393 Application 10/990,875 DECISION The Examiner’s rejection of claims 44, 45, 47—57, 59-62, 64—69, 71— 80, and 169-174 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). AFFIRMED 6