Ex Parte Gu et al

Patent Trial and Appeal Board

Aug 14, 2017

12061448 (P.T.A.B. Aug. 14, 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.
12/061,448 04/02/2008 Huaping Gu 2043.572US1 8511
49845 7590 08/16/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
PALAVECINO, KATHLEEN GAGE
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
USPTO@SLWIP.COM
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUAPING GU and NEELAKANTAN SANDARESAN
Appeal 2016-003740
Application 12/061,448
Technology Center 3600
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
AMBER L. HAGY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1, 3—18, 20—23, and 25, all the pending
claims in the present application. Claims 2, 19, and 24 are canceled. See
Spec., Claim Appendix. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to sharing searches. See
Abstract.
Appeal 2016-003740
Application 12/061,448
Claim 1 is illustrative:
1. A method comprising:
storing one or more search terms of a search request;
associating the storing of the one or more search terms
with an originating user;
receiving a sharing request for the search request, the
sharing request associated with a requesting user, the originating user
and the requesting user being different users;
associating the search request with the requesting user;
processing, by one or more processors, the search
request;
providing a result of the processing of the search request
to the requesting user; and
providing the originating user with one or more credits
based on actions associated with the search request, the one or more
credits including a bid credit provided in response to processing a bid
by the requesting user for an item for sale associated with the search
request.
Appellants appeal the following rejection:
Claims 1, 3—18, 20-23, and 25 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Rejection under §101
Issue: Did the Examiner err in finding that the claims are directed to
non-statutory subject matter?
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Application 12/061,448
With respect to independent method claims 1 and 13, and similarly,
machine-readable medium claims 18 and 21, and system claim 23, the
Examiner finds that these claims are directed to an abstract idea of “sharing
searches (organized human activity) and processing a bid (a fundamental
economic practice)” (Final Act. 2). The Examiner further finds that “[tjhese
steps merely represent the performance of business related steps, and do not
amount to more than automating the commercial interaction on a general
purpose computer” {id.).
We find that the Examiner has provided a sufficient response
supported by a preponderance of evidence {id., see also Ans. 3—7). As such,
we refer to, rely on, and adopt the Examiner’s findings and conclusions set
forth in the Answer. Our discussions here will be limited to the following
points of emphasis.
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35U.S.C. § 101. The Supreme Court has 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.
CLSBankInt'l, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work.”). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, the application
of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94
(2012). In Mayo, the Court stated that “to transform an unpatentable law of
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nature into a patent eligible application of such a law, one must do more
than simply state the law of nature while adding the words ‘apply it.”’ Id. at
1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then 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 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. (brackets in original) (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 post-solution
activity.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (citation and
internal quotation marks omitted). The Court in Alice noted that ‘“[s]imply
appending conventional steps, specified at a high level of generality,’ was
not ‘enough’ [inMayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct.
at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
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Appeal 2016-003740
Application 12/061,448
Step one: Are the claims at issue directed to a patent-ineligible concept?
Claim 1 recites seven steps: (a) storing search terms; (b) associating
search terms with an originating user; (c) receiving a request; (d) associating
the request with requesting user; (e) processing the search request; (f)
providing a result; and (g) providing credits. Each of these steps involves
information. A first type of information is stored and associated with an
originating user. A second type of information is received and associated
with a requesting user. The first type of information is also associated with
the requesting user. The first type of information is processed and a result is
provided to the requesting user. The originating user is provided with
credits based on actions associated with the first type of data. This is the
essence of the information processing and providing credits.
Appellants contend that “not only has the Examiner provided no
evidence, the Examiner has not even attempted to compare what the
Examiner asserts is an abstract idea to the examples provided in case law”
(App. Br. 15). Appellants also contend that “the Examiner has, for the most
part, relied on the rejection of the independent claims as a basis for rejecting
th[e] dependent claims and has thus failed to establish a prima facie case”
for the dependent claims {id. at 15).
In response, the Examiner “more clearly set forth the deficiencies
under 35 [U.S.C. §] 101” (Ans. 3). Specifically, the Examiner finds that the
concepts in the claimed invention, i.e., storing, associating, receiving,
processing, and providing, merely “seek to organize, store[,] and transmit
information” (id. at 4, citing Cyberfone Systems, LLC v. CNN Interactive
Group, Inc., 2014 WL 718153, 558 Fed. Appx 988 (Fed. Cir. 2014)). The
Examiner further finds that “the claims recite concepts similar to those found
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Application 12/061,448
to be abstract in SmartGene, Inc. v. Advanced Biological Labs., [555 Fed.
Appx 950] (Fed. Cir. 2014)” {id.), “the claims are comparable to
Cybersource Corp. v. Retail Decision, Inc., [654 F.3d 1366] (Fed. Cir. 2011)
in that they act to obtain and compare intangible data” {id.), and “the claims
at issue are directed to the organization of human activity” (id. ).
We agree with the Examiner that Appellants’ claims are directed to an
abstract idea of “sharing searches (organized human activity) and processing
a bid (a fundamental economic practice)” (Final Act. 2), i.e., organizing,
storing, and transmitting information. Nevertheless, information as such is
intangible. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 451 n.12
(2007). Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(holding that “collecting information, analyzing it, and displaying certain
results of the collection and analysis” are “a familiar class of claims
‘directed to’ a patent-ineligible concept”); FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 2016); Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech
Image Techs., LLCv. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014); CyberSource, 654 F.3d at 1370.
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
To establish a prima facie case, the Examiner must next identify all of
the additional elements in each claim and explain why these elements,
individually or collectively, do not add significantly more than the abstract
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Application 12/061,448
idea. Here, the Examiner finds that although some of the claimed limitations
are tied to machinery (e.g., a processor and/or memory), “these limitations
represent extra[-] solution activity” or that “the functions performed by the
machinery are well-understood, routine, and conventional. . . and are silent
as to any detail or property that would transform the otherwise generic
machinery into a specialized or special purpose machine” (Ans. 4—5). We
agree with the Examiner.
“A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].”’ Alice, 134 S. Ct. at 2357 (brackets in
original) (quoting Mayo, 132 S. Ct. at 1297). 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 post-solution activity.” Bilski, 561 U.S. at 610-11 (citation and
internal quotation marks omitted). The recitations in claim 1 pertaining to
one or more processors are analogous to the recitation of a conventional
“computer” discussed in Alice.
Here, Appellants improperly rely upon the fact that the Examiner has
not made any rejections under §§ 102 or 103 and contend “the Examiner has
not maintained a rejection of the claims at issue under either 35 U.S.C. § 102
or 35 U.S.C. § 103 . . . [Therefore,] [i]t is not clear how an activity . . . can
be found to constitute a fundamental economic practice long prevalent in our
system of commerce” (App. Br. 18).
However, this is not the test for determining patent-eligible subject
matter under § 101, as the Supreme Court has set forth in Alice the proper
two-step framework for distinguishing patents that claim abstract ideas.
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Application 12/061,448
Appellants’ contention supra that the Examiner has found the invention
novel and non-obvious, i.e., has found no prior art references that
teach/suggest all of the claimed features, does not apprise us of error in the
rejection under 35U.S.C. § 101. An abstract idea does not transform into an
inventive concept just because the prior art does not disclose or suggest it.1
Additionally, as recognized by the Federal Circuit in Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski’s “machine-or-
transformation” (MoT) test can also provide a ‘“useful clue’” in the second
step of the Alice framework. See Bilski, 561 U.S. at 611. Under Bilski’s
MoT test, a claimed process can be considered patent-eligible under § 101 if:
(1) “it is tied to a particular machine or apparatus”; or (2) “it transforms a
particular article into a different state or thing.” In re Bilski, 545 F.3d 943,
954 (Fed. Cir. 2008) (citing Gottschalk, 409 U.S. at 70).
Claim 1 does not specify any particular entity that performs the
recited “storing,” “associating,” “receiving,” and “providing” steps; thus,
such steps could be practiced mentally. Adding a mental step cannot
patentably transform an otherwise abstract idea into an inventive concept. In
re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“mental processes —or
processes of human thinking-standing alone are not patentable even if they
have practical application”). As for the processing step, we agree with the
Examiner that claim 1 simply incorporates a generic component, i.e., a
processor, into the method/system to perform the abstract concept of
processing the search request.
1 Alice also confirmed that if a patent’s systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the Alice patent’s media claims. Id.
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Application 12/061,448
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 2358—59 (concluding claims
“simply instructing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer” not patent eligible); see
also Ultramercial, 772 F.3d at 715—16 (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.,
GmbHv. 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) (“[s]imply adding a ‘computer aided’ limitation to
a claim covering an abstract concept, without more, is insufficient to render
[a] claim patent eligible” (internal citation omitted)).
Limiting such an abstract concept of “sharing searches and processing
a bid” to generic components, such as a processor, does not make the
abstract concept patent-eligible under 35 U.S.C. § 101. Because Appellants’
claims 1, 13, 18, 21, and 23 are directed to a patent-ineligible abstract
concept and do not recite something “significantly more” under the second
prong of the Alice analysis, we sustain the Examiner’s rejection of these
claims, as well as respective dependent claims 3—12, 14—17, 20, 22, and 25,
under 35 U.S.C. § 101 as being directed to non-statutory subject matter in
light of Alice and its progeny.
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For the foregoing reasons, Appellants’ contentions are unpersuasive
as to error in the rejection under 35U.S.C. § 101.
DECISION
We affirm the Examiner’s § 101 rejection of claims 1, 3—18, 20—23,
and 25.
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).
AFFIRMED
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