Ex Parte Hadar et al

Patent Trial and Appeal Board

Aug 24, 2017

12708879 (P.T.A.B. Aug. 24, 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.
12/708,879 02/19/2010 Ethan Hadar 063170.9355 5421
106095 7590 08/28/2017
Baker Botts LLP/CA Technologies
2001 Ross Avenue
SUITE 700
Dallas, TX 75201
EXAMINER
LEVINE, ADAM L
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
PTOmaill @bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ETHAN HADAR and ALEI GOPAL
Appeal 2016-007918
Application 12/708,8791
Technology Center 3600
Before HUNG H. BUI, JOYCE CRAIG, and AARON W. MOORE,
Administrative Patent Judges.
BUI, 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—22, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the real party in interest is Computer Associates
Think, Inc. App. Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief filed December 21, 2015
(“App. Br.”); Reply Brief filed August 11, 2016 (“Reply Br.”); Examiner’s
Answer mailed June 13, 2016 (“Ans.”); Final Office Action mailed July 17,
2015 (“Final Act.”); and original Specification filed February 19, 2010
(“Spec.”).
Appeal 2016-007918
Application 12/708,879
STATEMENT OF THE CASE
Appellants’ invention relates to “[a] system and method for IT
services e-commerce arena for cloud computing environments.” Abstract.
Claims 1, 8, and 15 are independent claims. Claim 1 illustrates
Appellants’ invention, as reproduced below:
1. A method comprising:
receiving, from each of a plurality of service clients, a
respective request for processing time on a processor;
aggregating, at a brokerage server, the respective requests
of two or more service clients from among the plurality of service
clients such that the processing time requested by the two or
more service clients is greater than a predetermined minimum
amount of processing time required from at least one of a
plurality of service providers, wherein each of the plurality of
service providers provides processing time on a processor for
processing times greater than or equal to the predetermined
minimum amount and neither of the respective requests of the
two or more service clients is greater than the predetermined
minimum amount of processing time alone;
sending the aggregated respective requests of the two or
more service clients to the plurality of service providers;
selecting a service provider from among the plurality of
service providers to provide processing time to the two or more
service clients; and
initiating a transaction between each of the two or more
service clients and the selected service provider.
App. Br. 34 (Claims App.).
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Application 12/708,879
Examiner’s Rejection3 and References
Claims 1—22 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final Act. 10—
12.
ANALYSIS
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Supreme Court reiterates an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289 (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 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. 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 that “‘transform the nature of the claim’ into a
patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at 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
3 Claims 1—22 were rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ferris (US 2010/0131624 Al, published May 27, 2010) and Sanders
(US 2005/0049937 Al; published Mar. 3, 2005). App. Br. 12-19.
However, the rejection of these claims has been withdrawn by the Examiner
and is no longer pending on appeal. Ans. 6.
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Application 12/708,879
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. (citing Mayo, 132 S. Ct. at 1294).
In rejecting independent claims 1,8, and 15 and dependent claims 2—
7, 9-14, and 16—22 under 35 U.S.C. § 101, the Examiner finds these claims
are directed to an abstract idea of “[cjomparing values to a threshold and
combining them until they meet a threshold of minimum requirements
before performing a [brokerage] service,” i.e., a “fundamental economic
practice.” Final Act. 11—12. The Examiner also finds
the claims as a whole do not amount to significantly more than
the abstract idea itself. This is because the claims do not amount
to an improvement to another technology or technical field, do
not amount to an improvement to the functioning of a computer
itself, do not move beyond a general link of the use of an abstract
idea to a particular technological environment, and merely
amount to the application or instructions to apply the abstract
idea on a computer. The system claims amount to nothing more
than a recitation of generic computer structure (to the extent they
recite such structure at all) that serves to perform generic
computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent
industry.
Id. at 11—12.
As to the first step of the Alice inquiry, Appellants contend
independent claims 1,8, and 15 are not directed to “a fundamental economic
practice,” i.e., an abstract idea. App. Br. 15—16. Instead, Appellants argue
these claims are directed to “a particular method for using an application
stored on a mobile computing device to selecting a service provider from
among a plurality of service providers to provide processing time to two or
more requesting service clients.” Id. at 16. In the Reply, Appellants further
argue the “claims do in fact improve computer functionality” “by improving
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Application 12/708,879
how processors are selected for the fulfillment of processing requests that
would otherwise go unfilled.” Reply Br. 3^4.
We are not persuaded by Appellants’ arguments. As correctly
recognized by the Examiner, (1) Appellants’ claims 1,8, and 15, when
considered in light of Appellants’ Specification, recite commercial trading in
the context of a brokerage system and “initiating a transaction between each
of the two or more service clients and the selected service provider” in a
cloud computing environment based on “processing capacity needs” and (2)
“initiating a transaction between each of the two or more service clients and
the selected service provider” in a cloud computing environment is nothing
more than a “fundamental economic practice” identified as an “abstract
idea” by the Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218 (2010).
Final Act. 11.
Contrary to Appellants’ arguments, none of the steps recited in claims
1, 8, and 15 seeks to improve computer functionality. “[Selecting a service
provider from among the plurality of service providers to provide
processing time to the two or more service clients” is not the same as
improving the computer functionality as Appellants argue. Reply Br. 3^4.
In fact, none of the steps recited in claims 1, 8, and 15 provides: (1) a
“solution . . . necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,”
as explained by the Federal Circuit in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); “a specific improvement to the
way computers operate,” as explained in Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1336 (Fed. Cir. 2016); or (3) an “unconventional technology
solution ... to a technological problem” that “improve[s] the performance of
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the system itself,” as explained in Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1302 (Fed. Cir. 2016).
As to the second step of the Alice inquiry, Appellants argue “the
recited features of Claim 1 amount to ‘significantly more’ than a mere
abstract idea.” App. Br. 19. According to Appellants,
Claim 1 recites a specific way to match service clients with
service providers by aggregating requests of two or more
service clients that do not meet a predetermined minimum by
themselves so as to select a service provider form [sic] among a
plurality of service providers that would not service the clients
otherwise
and, as such, “amount to significantly more than interactive retirement
planning.” Id. at 20.
We remain unpersuaded by Appellants’ arguments. In particular, we
find nothing in Appellants’ claims 1,8, and 15 that adds anything
“significantly more” to transform the abstract concept of delivering “an
electronic loyalty reward certificate” to a user into a patent-eligible
application. Alice, 134 S. Ct. at 2357. As described by the Supreme Court,
the second step of the Alice inquiry 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. (citing Mayo, 132 S. Ct. at 1294).
Appellants do not argue any of the elements of claims 1,8, and 15 is
individually inventive. Nor do Appellants argue the ordered combination of
these elements is inventive. App. Br. 19—21. Limiting such an abstract
concept to generic components such as “a processor” and “a brokerage
server” for operation in the manner recited in Appellants’ claims 1,8, and 15
does not make the abstract concept patent-eligible under 35 U.S.C. § 101.
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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, 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., 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) (“Simply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible.”).
Because Appellants’ claims 1—22 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 under 35 U.S.C. § 101.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1—22 under 35 U.S.C.
§101.
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DECISION
As such, we affirm the Examiner’s final rejection of claims 1—22.
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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