Ex Parte Green et al

Patent Trial and Appeal BoardSep 27, 2018

14137149 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/137,149 12/20/2013 Kris Green 919 7590 10/01/2018 PITNEY BOWES INC. INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT. 37 EXECUTIVE DRIVE MSC 01-152 DANBURY, CT 06810 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 ATTORNEY DOCKET NO. CONFIRMATION NO. G-654 6983 EXAMINER SHUI,MING ART UNIT PAPER NUMBER 3684 NOTIFICATION DATE DELIVERY MODE 10/01/2018 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): iptl@pb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KRIS GREEN, AMIR-REZA DORAFSHAR, and BRIAN DHATT Appeal2017-008270 Application 14/13 7, 149 1 Technology Center 3600 Before ST. JOHN COURTENAY III, MARC S. HOFF, and DENISE M. POTHIER, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a Final Rejection of claims 1-5, 7, and 9-20. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Appellants' invention is a system and method for online shopping in which an intelligent agent renders and updates domestic information relevant to a first geographical location on a webpage, such that the updated information is displayed on the display device as non-domestic information relevant to a second geographical location. See Abstract. 1 The real party in interest is Borderfree, Inc. Br. 2. 2 Claims 6 and 8 have been cancelled. Appeal2017-008270 Application 14/137,149 Claim 1 is exemplary of the claims on appeal: A system for transforming information relevant to a first geographical location that is displayed in a W ebpage into information relevant to a second geographical location, the system comprising: a data storage device for storing information that includes computer- executable instructions for transforming information relevant to a first geographical location that is displayed in a W ebpage into information relevant to a second geographical location display device; and a processing device for executing the computer-executable instructions, the processing device including: memory for storing information, a user browser that is adapted to enable a user to search for products and pricing information about products offered by at least one vendor server, the vendor server adapted to operate a Website having a plurality of deliverable W ebpages, at least one of the plurality of W ebpages having a first primary coding and a second coding different from the first primary coding, the second coding indicating information relevant to a first geographical location, the user browser further adapted to detect the second coding incorporated into the at least one of the plurality of deliverable Webpages,and an intelligent agent that is adapted to update the information relevant to the first geographical location provided on the at least one of the plurality of deliverable Webpages in response to detection of the second coding such that the updated information is displayed on the display device as information relevant to a second geographical location. Claims 1-5, 7, and 9-20 stand rejected under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. Claims 1-5, 7, and 9-20 stand rejected under 35 U.S.C. Â§ I02(a)(l) as being anticipated by Lam et al., (US 2002/0120527 Al, published August 29, 2002) (hereinafter "Lam"). Throughout this decision, we make reference to the Appeal Brief ("Br.," filed November 21, 2016) and the Examiner's Answer ("Ans.," mailed December 27, 2016) for their respective details. 2 Appeal2017-008270 Application 14/137,149 ISSUES 1. Is the claimed invention directed to a judicial exception, specifically an abstract idea, without reciting significantly more that would transform the invention into a patent-eligible application of the abstract idea? 2. Does Lam teach "an intelligent agent that is adapted to update the information relevant to the first geographical location provided on the at least one of the plurality of deliverable Webpages in response to detection of the second coding such that the updated information is displayed as information relevant to a second geographical location"? PRINCIPLES OF LAW Under 35 U.S.C. Â§ 101, a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Supreme Court in Alice reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent- eligible applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in that analysis is to determine whether the claims at issue are directed to one of those patent-ineligible concepts, such as an abstract idea. Abstract ideas may include, but are not limited to, 3 Appeal2017-008270 Application 14/137,149 fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If the claims are not directed to a patent-ineligible concept, the inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed. Cir. 2017). Otherwise, the inquiry proceeds to the second step in which the elements of the claims are considered "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 79, 78). ANALYSIS SECTION 101 REJECTION ALICE STEP 2A-ABSTRACT IDEA While the Examiner's statement of the abstract idea recited in the claims as a "product search" is somewhat under-inclusive, the Examiner correctly states what Appellants' Abstract admits. Final Act. 4. The invention is directed to a system and method for online shopping (i.e., searching for a product and obtaining pricing for a product) in which information relevant to a first geographical location (i.e., prices in a first currency) is detected and the updated to information relevant to a second geographical location (i.e., prices in a second currency). Abstract. Contrary to Appellants' argument, we agree with the Examiner that the claims are directed to the fundamental economic practices of currency exchange and identifying a price for an item in a local currency. Ans. 3. We 4 Appeal2017-008270 Application 14/137,149 agree with the Examiner's finding that these practices are well-known business practices from the pre-Internet world. Id. ALICE STEP 2B- INVENTIVE CONCEPT We are not persuaded by Appellants' argument that the claims address a business challenge that is particular to the Internet. Br. 5. We agree with the Examiner that the updating of pricing on a web page to a different currency is merely a longstanding business challenge adapted to the Internet. See Ans. 3. We are not persuaded by Appellants' analogy of the claims under appeal to the claims in DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245 (Fed. Cir. 2014). Br. 5. The invention in DDR Holdings concerned retaining a website visitor when the visitor clicked on a third-party merchant's advertisement on the host website. Instead of taking the visitor to the third-party merchant's website (and thus losing the visitor to the third- party merchant), DDR 's claimed system generated a hybrid web page that: (1) displayed product information from the third-party merchant, but also, (2) retained the host website's "'look and feel."' DDR Holdings, 773 F.3d at 1248-1249. The Federal Circuit found that the invention was "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." Id. at 1257. In contrast to the invention claimed in DDR Holdings, the invention under appeal simply adapts the problem of currency exchange, and of presenting prices in a second currency, to an Internet environment. The fact that an "intelligent agent" performs the mathematics of currency conversion on behalf of the user does not create an invention necessarily rooted in computer technology, and the problem of "updat[ing] information ... [to] 5 Appeal2017-008270 Application 14/137,149 information relevant to a second geographical location," i.e. to prices in the currency of the second geographical location, is not a problem specifically arising in the realm of computers or networks. Because we find that the claimed invention recites an abstract idea without significantly more, we sustain the Examiner'sÂ§ 101 rejection of claims 1-5, 7, and 9-20. SECTION 102 REJECTION Independent claim 1 recites, inter alia, an intelligent agent that is adapted to update the information relevant to the first geographical location provided on the at least one of the plurality of deliverable Webpages in response to detection of the second coding such that the updated information is displayed on the display device as information relevant to a second geographical location. Independent claim 13 recites an analogous method, including an analogous limitation. The Examiner finds that Lam teaches the claimed intelligent agent. Final Act. 7. The Examiner cites disclosure in Lam to the effect that when a customer has finished adding products to his basket, "a price quote request is sent to the basket ... from the customer computer 20. An indication of the basket's ... contents is generated and forwarded to the request sorter .... [T]he request is received by the international shopping system 12 where a quote is determined and sent back to the customer computer 20." Id., citing Lam ,r 21. In Lam, then, the updating of information relevant to the first geographical location (prices in a first currency) to information relevant to the second geographical location (prices in a second currency) takes place in 6 Appeal2017-008270 Application 14/137,149 response to a customer request for such updating. When a customer has finished adding products to a basket for purchase, the customer triggers the desired currency conversion process. We find that Lam fails to teach updating, using an intelligent agent, information relevant to a geographical location in response to detection of second coding (as interpreted by the Examiner, the HTML content of web pages in Lam that is directed to price information), as the claims require. We note a software agent is an established term of art, as would have been understood by programmers of ordinary skill in the art at the time of the invention. The Examiner has not fully developed the record to show that any express or inherent disclosure of an agent is necessarily present in Lam, as required to show anticipation. Consequently, we find that Lam fails to teach all the limitations of independent claims 1 and 13. We do not sustain the Examiner'sÂ§ 102(a)(l) rejection. CONCLUSIONS 1. The claimed invention is directed to a judicial exception, specifically an abstract idea, without reciting significantly more that would transform the invention into a patent-eligible application of the abstract idea. 2. Lam does not teach an intelligent agent that is adapted to update the information relevant to the first geographical location provided on the at least one of the plurality of deliverable webpages in response to detection of the second coding such that the updated information is displayed as information relevant to a second geographical location. 7 Appeal2017-008270 Application 14/137,149 ORDER The Examiner's decision to reject claims 1-5, 7, and 9-20 under 35 U.S.C. Â§ 101 is affirmed. The Examiner's decision to reject claims 1-5, 7, and 9-20 under 35 U.S.C. Â§ 102(a)(l) is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 8