Ex Parte Fraser et al

Patent Trial and Appeal Board

Aug 25, 2017

13836549 (P.T.A.B. Aug. 25, 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.
13/836,549 03/15/2013 Alexander Harley Fraser 26454-0088 1725
101373 7590 08/29/2017
Eversheds Sutherland (US) LLP / CEI
999 Peachtree Street
Suite 2300
Atlanta, GA 30309
EXAMINER
MISIASZEK, MICHAEL
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
patentdocket @ eversheds-Sutherland, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER HARLEY FRASER,
JOHN BLOBNER, LANCE RIGDON,
KRISTA GAYLE WRIGHT, VERONICA YUNG SU TAI,
RICHARD NEIL MACCONNELL,
and AMY ANDREWS MILLS
Appeal 2016-008318
Application 13/836,549
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 29-34, 36-45, and 47, 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, Manheim Investments, Inc. is the real party in
interest. App. Br. 1.
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Application 13/836,549
INVENTION
Appellants’ invention relates to systems and methods for live
auctioneer led sales. Abstract. Claim 29 is illustrative of the subject matter
on appeal and reads as follows:
29. A method, comprising:
receiving, by one or more computers comprising one or
more processors, information associated with a vehicle for sale
by auction, wherein the information comprises a run order;
receiving, by at least one of the one or more computers, a
signal indicative of a live auctioneer conducting a sale of the
vehicle by auction from an auctioneer computing device,
wherein the signal indicative of the live auctioneer conducting
the sale of the vehicle by auction comprises a real-time audio
signal of the live auctioneer conducting the sale of the vehicle by
auction;
providing, by at least one of the one or more computers,
the signal indicative of the live auctioneer conducting the sale of
the vehicle by auction to one or more buyer computing devices,
wherein the auctioneer computing device, at least one of the one
or more buyer computing devices, and the vehicle are remotely
located from one another;
providing, by at least one of the one or more computers,
an interface to facilitate communication between the one of the
one or more buyer computing devices and a seller before, during,
and after a sale;
receiving, by at least one of the one or more computers and
based at least in part on the signal indicative of the live auctioneer
conducting the sale of the vehicle by auction, one or more if/then
proxy bids for the vehicle from the one or more buyer computing
devices; and
providing, by at least one of the one or more computers, a
dynamic guarantee acquisition fee to the one or more buyer
computing devices, wherein the guarantee acquisition fee
comprises an additional cost, to a buyer, to purchase a no-
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questions-asked, money-back, vehicle-return guarantee from an
operator of the auction.
REJECTIONS
Claims 29—34, 36-45, and 47 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more. Final Act. 2—3.
Claims 29—34, 36-45, and 47 stand rejected under 35 U.S.C. § 103(a)
in view of various combinations of prior art.2 Id. at 4—11.
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 Final 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.
Appellants submit arguments only in support of reversing the
rejection of claims 29-34, 36-45, and 47 under 35 U.S.C. § 101. Arguments
not made are waived. Thus, we sustain the rejections of claims 29-34, 36—
45, and 47 under 35 U.S.C. § 103(a) pro forma.
With regard to the § 101 rejection, the Examiner concluded claims
29-34, 36-45, and 47 are directed to unpatentable subject matter because
2 The Examiner erroneously identifies non-pending claim 35 in the heading
of the 35 U.S.C. § 103(a) rejection over Schoen et al., Bhogal, Kelly et al.,
and Sullivan et al., but does not reference claim 35 in the body of the
rejection. Final Act. 4—6. We understand the Examiner to have meant to
reject claims 29, 30, 32, 34, 36—38, 40-44, and 47 on this ground.
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Application 13/836,549
they are drawn to providing and receiving signals indicative of an auctioneer
conducting a sale of a vehicle by way of bids, which is a method of
organizing human activity and, thus, an abstract idea. Final Act. 2. The
Examiner also found the claims do not include additional elements sufficient
to amount to significantly more than the abstract idea. Id. at 2—3.
Appellants present several arguments directed to the Examiner’s
rejection of the claims under § 101. App. Br. 5—11. First, Appellants argue
that the Examiner failed to provide any evidentiary support for the allegation
that the claims are directed to an abstract idea. App. Br. 5.
Second, Appellants argue that, similar to the claims found patentable
in DDR Holdings, LLC v. Hotds.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
the claims are not directed to an abstract idea, but instead are necessarily
rooted in computer technology and solve a problem specifically arising in
the realm of computer networks. Id. at 6.
Third, Appellants argue that the claims are directed to patent-eligible
subject matter because the solution presented by the claims is tethered to the
technology that created the problem that is solved. Id. at 7.
Fourth, Appellants argue that the claims are directed to patent-eligible
subject matter because there is no analog equivalent to the problem
addressed by the claims of the present application. Id. at 8 (citing Trading
Techs. Int’l, Inc. v. CQG, Inc., No. 05-CV-4811, 2015 WL 774655 (N.D. 111.
Feb. 24, 2015), aff’d, 675 F. App’x 1001 (Fed. Cir. 2017)).
Fifth, Appellants argue that, even if the claims are directed to the
alleged abstract idea, they include an inventive concept that amounts to
significantly more than the abstract idea. App. Br. 9. In particular,
Appellants argue that the “inventive concept of facilitating a live auction
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between remote parties in an online auction by providing a real-time audio
signal of the live auctioneer, by providing the buyer with the option to
purchase a return guarantee with the auction operator at the time of the
auction, and by facilitating communication between the buyers and sellers
before, during, and after a sale” amounts to significantly more than the
alleged abstract idea. Id.
Sixth, Appellants argue that, even assuming arguendo that the claims
are directed to an abstract idea, they do not preempt all practical applications
of the idea, and thus, are patent-eligible. Id. at 10.
We do not find Appellants’ arguments persuasive. The Supreme
Court has long held that “[l]aws of nature, natural phenomena, and abstract
ideas are not patentable.” Alice Corp. 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 Corp.,
134 S. Ct. at 2355 (quoting Gottschalkv. 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., 132 S. Ct. 1289, 1296—97 (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. at 2355. 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
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that ‘“transform the nature of the claim’ into a patent-eligible application.”
Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). 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.
(quoting Mayo, 132 S. Ct. at 1294). 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)
(citation omitted).
Applying the first step of the Alice framework, we agree with the
Examiner that claim 293 is directed to an abstract idea of organizing human
activity. See Ans. 2. In particular, the steps recited in claim 29—including,
for example, the method steps of “receiving . . . information associated with
a vehicle for sale by auction,” “receiving ... a signal indicative of a live
auctioneer conducting a sale,” “providing ... the signal indicative of the live
auctioneer conducting the sale,” “providing ... an interface,” “receiving . . .
one or more if/then proxy bids,” and “providing ... a dynamic guarantee
acquisition fee”—are directed to providing and receiving information and
signals indicative of an auctioneer conducting a sale of a vehicle via bids.
Claim 29 describes concepts relating to interpersonal activities, sales
activities, and managing auction-related relationships or transactions
between people. Specifically, claim 29 is directed to the relationship and
transactions between a seller and a potential customer. Contrary to
3 Appellants argue all rejected claims as a group, and we choose claim 29 as
representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv).
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Appellants’ position (App. Br. 6), we conclude that sales activities related to
an auction amount to a fundamental economic principle similar to the
intermediated settlement in Alice, or the risk hedging in Bilski. Thus, we
agree with the Examiner that Appellant’s claim is directed to a fundamental
economic principle and, in particular, the abstract idea of organizing human
activity. See Final Act. 2—3.
We also agree with the Examiner that claim 29 merely amounts to the
application or instructions to apply the abstract idea of organizing human
activity on a computer. Id. 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.);
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir. 2012)
(“Simply adding a ‘computer aided’ limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible.” (citation omitted)).
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Appellants’ argument that the Examiner failed to provide any
evidentiary support for the allegation that the claims are directed to an
abstract idea is not persuasive. App. Br. 5. We are aware of no controlling
precedent that requires the Office to provide factual evidence to support a
finding that a claim is directed to an abstract idea.
Moreover, in contrast to the claims in DDR Holdings and Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), which the Federal
Circuit held were directed to specific improvements in computer capabilities
and thus were patent-eligible subject matter, claim 29 neither is rooted in
computer technology nor seeks to improve any type of computer
capabilities. Appellants also have not persuaded us that “the solution
presented by the claims is tethered to the technology that created the
problem that is solved.” See App. Br. 7. Nor have Appellants persuaded us
that claim 29 addresses a “network-centric problem specific to computers,
and which does not occur in traditional analog environments.” See id. at 8.
Appellants present no persuasive evidence or technical reasoning to support
those positions. For example, Appellants identify no portion of the
Specification, and we find none, that ascribes any particular technical
improvement in computerized interfaces to the claimed invention. Instead,
Appellants’ claim 29 simply recites an abstract concept of organizing human
behavior using generic computer processes.
Turning to the second step of the Alice analysis, we find nothing in
claim 29 that adds anything “significantly more” to transform the abstract
concept of organizing human behavior into a patent-eligible application.
Alice, 134 S. Ct. at 2357. None of Appellants’ arguments persuade us that
some inventive concept arises from the ordered combination of these steps,
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which are ordinary steps in data processing and are recited in an ordinary
order. See App. Br. 8—11. Claim 29 simply incorporates a general-purpose
computer and generic components such as processors to perform generic
computer functions, i.e., receiving and providing information and signals,
which is not enough to transform an abstract idea into a patent-eligible
invention. Claim 29 does not purport to improve the functioning of the
computer system itself. Nor does it effect an improvement in any other
technology or technical field. Instead, claim 29 amounts to nothing
significantly more than using generic processors and components to carry
out a transaction between a seller and a buyer.
We find no meaningful distinction between independent method claim
29 and independent system claim 42, independent media claim 43, or
independent method claim 44. The claims are all directed to the same
underlying invention, and Appellants do not argue then separately. Because
we find that dependent claims 30—34, 36-41, 45, and 47 lack additional
elements that would render the claims patent-eligible, we also sustain the
35 U.S.C. § 101 rejection of those dependent claims on the same basis as the
independent claims from which they depend.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
representative claim 29, as well as the 35 U.S.C. § 101 rejection of grouped
claims, 30—34, 36-45, and 47, not argued separately. See App. Br. 5; see
also 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
The decision of the Examiner to reject claims 29—34, 36-45, and 47 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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