Ex Parte Gharabally et al

Patent Trial and Appeal Board

Jun 8, 2017

12286075 (P.T.A.B. Jun. 8, 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.
12/286,075 09/26/2008 Sam Gharabally 8802.347,NPUS00_P6784US 1 3375
47743 7590 06/12/2017
DOWNEY RR AND T T P
EXAMINER
Attn: IP Docketing
P.O. BOX 569
HAQ, NAEEM U
Cupertino, CA 95015 ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/12/2017 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):
IPDocketing @ Downey Brand, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAM GHARABALLY, YOON SUB HWANG,
MARK MILLER, and ANDREW WADYCKI
Appeal 2016-001747
Application 12/286,0751
Technology Center 3600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 2—5, 23, 26—30, 37, 38, and 40-42, which are all of the claims
pending in the application. App. Br. 3. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to an “online product distribution site [that]
can present potential purchasers with product information and/or developer
information prior to any purchase.” Spec. Abstract.
1 According to Appellants, the real party in interest is Apple Inc. App. Br. 3.
Appeal 2016-001747
Application 12/286,075
Claim 42 is illustrative and reproduced below:
42. A computer-implemented method for locating information
on a digital product that is made available for distribution at an
online repository, said method comprising:
receiving, using a network interface, an electronic
submission of product information and distribution information
pertaining to the digital product;
receiving, using the network interface, an electronic
submission of developer information pertaining to a developer of
the digital product;
rendering, using a processor, the digital product available
for distribution from an online store in accordance with the
distribution information;
assisting the user to the online store in accessing at least a
portion of the developer information by creating a developer
page utilizing the developer information and causing the
developer page to be presented to the user while accessing the
online store;
assisting a user to the online store in locating at least a
portion of the product information pertaining to the digital
product by causing a product page to be presented to the user
while accessing the online store, the product page including
information regarding device compatibility and whether the user
has previously installed the product and that an update is
available for the product, and
wherein the developer page includes a hyperlink to the
product page, and wherein the product page includes a hyperlink
to the developer page.
Rejection
Claims 2—5, 23, 26—30, 37, 38, and 40-42 stand rejected under 35
U.S.C. § 101 as being directed to ineligible subject matter. Final Act. 3.
ISSUE
Did the Examiner err in concluding claim 42 was directed to ineligible
subject matter under 35 U.S.C. § 101?
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Appeal 2016-001747
Application 12/286,075
ANALYSIS
Section 101 defines patentable subject matter: “Whoever 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 Supreme Court, however, has “long held that
this provision contains an important implicit exception” that “[ljaws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). “Issues of patent-eligible subject matter are questions
of law and are reviewed without deference.” CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1369 (Fed. Cir. 2011). To determine
patentable subject matter, the Supreme Court has set forth a two-part test.
“Distinguishing between claims that recite a patent-eligible invention
and claims that add too little to a patent-ineligible abstract concept can be
difficult, as the line separating the two is not always clear.” DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014). Often,
“there is considerable overlap between step one and step two.” Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
“[T]he decisional mechanism courts now apply is to examine earlier cases in
which a similar or parallel descriptive nature can be seen.” Id.
Step One
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS BankInt’l, 134 S. Ct. 2347, 2355 (2014).
A court must be cognizant that “all inventions at some level embody, use,
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Application 12/286,075
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas” {Mayo, 566 U.S. at 71), and “describing the claims at... a high level
of abstraction and untethered from the language of the claims all but ensures
that the exceptions to § 101 swallow the rule.” Enflsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “the claims are
considered in their entirety to ascertain whether their character as a whole is
directed to excluded subject matter.” Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
The Examiner finds the claims are “directed to locating information
on a product, which is an abstract idea because locating information on a
product is similar to the fundamental economic activity at issue in Alice
Corp. and BilskiC Ans. 2. Appellants contend “the present claims . . .
result[] in new digital content and address problems specifically arising in
the realm of computer technology.” App. Br. 12.
We are not persuaded by Appellants’ arguments. For example,
Appellants contend an interface “especially tailored for users” is not
abstract. App. Br. 12. “This court, however, has held that customizing
information based on information known about the user is an abstract idea.”
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed.
Cir. 2016) (quotation omitted). Thus, in Affinity Labs, the Federal Circuit
held “the concept of delivering user-selected media content to portable
devices is an abstract idea,” despite the claims requiring “a customized user
interface.” Id. at 1268—69. The same is true here where delivering product
and developer information is an abstract idea, regardless of whether the
information is filtered or customized. “[Tjailoring of content based on
information about the user ... is an abstract idea that is as old as providing
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Application 12/286,075
different newspaper inserts for different neighborhoods.” Id. (citing
Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015)). Thus, Appellants have not persuaded us the
Examiner erred in determining the claims were directed to an abstract idea.
Step Two
In the second step, we “consider the elements of each 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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78). The
Supreme Court has “described step two of this analysis as a 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. (quotation omitted).
Appellants contend “the claims require that user interface is restricted
to specific information relevant to the user’s device and what is installed on
the device. This alone amounts to significantly more than merely locating
information on a product.” App. Br. 13. As discussed above, however,
“customizing information based on information known about the user is an
abstract ideaAffinity Labs, 838 F.3d at 1271 (quotation omitted), and
therefore such customizing is not significantly more than the abstract idea.
For computer-related technology, the Federal Circuit has held that a
claim may pass the second step if “the claimed solution is necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer [technology].” DDR Holdings, 773 F.3d at 1257.
For example, the patent in DDR Holdings solved “a challenge particular to
the Internet,” specifically the problem of “retaining website visitors” that
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click an ad on a webpage. Id. Here, Appellants contend “the claimed
technology ‘is necessarily rooted in computer technology’ since a need for
a[n] interface to address users in a distributed computing environment
specifically arises in the realm of computer networks.” App. Br. 13. Yet the
Federal Circuit in DDR Holdings “caution[ed], however, that not all claims
purporting to address Internet-centric challenges are eligible for patent.”
773 F.3d at 1258. This is because “the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.” Alice, 134 S. Ct. at 2358. The claimed components here—such
as a network interface and a processor—are all generic, and under our
precedent, “generic computer components such as an ‘interface’ [and]
‘network’ .... do not satisfy the inventive concept requirement.” Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324—25 (Fed.
Cir. 2016); see also Ans. 5 (finding the UI features in claim 23 “routine and
conventional”). For example, “receiving transmitted data over a network
and displaying it to a user merely implicates purely conventional activities
that are the ‘most basic functions of a computer.’” Intellectual Ventures I
LLCv. Erie Indemnity Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (quoting
Alice, 134 S. Ct. at 2359). Similarly, although the claims are directed to an
online store, “[t]he Supreme Court and this court have repeatedly made clear
merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract.”
Affinity Labs of Texas, LLCv. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016); Alice, 134 S. Ct. at 2358.
We also agree with the Examiner that the claims “do not provide an
improvement to the functioning of the computer itself.” Final Act. 3; Alice,
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134 S. Ct. at 2359—60. Other than generic computer components (e.g., a
processor, a network interface, and hyperlinks on pages), substantially the
same problem and solution would apply to a vendor sending customized
product information to a customer via postal mail, such as a car dealer
sending mail to a customer with information about the dealer (e.g., contact
information) as well as information about accessories or services specific to
the car model purchased by the customer. Thus, unlike DDR Holdings,
neither the problem nor the solution are specific to computers.
Contrary to Appellants’ argument (Reply Br. 5), we agree with the
Examiner that “examination under 35 U.S.C. 101 is separate and distinct
from the examination under 35 U.S.C. 102 and 103.” Final Act. 5. “The
‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.” Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981).
Accordingly, we sustain the Examiner’s rejection of claim 42, and
claims 2—5, 23, 26—30, 37, 38, 40, and 41, which Appellants argue are
patentable for similar reasons. See App. Br. 11—14.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 2—5, 23, 26—30, 37, 38, and 40-42.
No time for taking 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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