Ex Parte HAMILTON et al

Patent Trial and Appeal Board

Feb 28, 2019

14303853 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/303,853 06/13/2014 Rick A. HAMILTON II
46583 7590 03/04/2019
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
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.
END920070344US2 4260
EXAMINER
CRANFORD, MICHAEL D
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
docketing@rmsc2.com
lga11augher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICK A. HAMIL TON II,
KONSTANTINOS MAKROPOULOS,
BRYAN J. MARTIN, and JAMES W. SEAMAN
Appeal2017-006085
Application 14/303,853
Technology Center 3600
Before DEBRA K. STEPHENS, MICHAEL J. STRAUSS, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2017-006085
Application 14/303,853
STATEMENT OF THE CASE
Appellants' invention is directed to a method and system for
managing and enabling a vendor-neutral bid process for the same client sales
opportunity. Spec. ,r 1. Claim 1, reproduced below, is representative of the
claimed subject matter:
1. A method implemented in a computer infrastructure having
computer executable code, comprising:
receiving, by one or more computing devices, information in
support of a bid made by a vendor for a product or service provided
by a supplier for eventual resale by the vendor to a target client,
through a web-based interface using one of hypertext transfer protocol
(HTTP), file transfer protocol (FTP), secure shell (SSH), and
extensible markup language (XML) such that each vendor manages
their bid support documents shifting it away from an organization
receiving the bid;
assigning an opportunity number which is submitted with the
bid and stored with bid information upon receipt;
translating inbound webpage content which is received through
the web based interface to a bid certification tool (BCT) server;
determining, by one or more computing devices, that a
threshold amount of predetermined value-add eligibility criteria of a
supplier is met by value-add eligibility documentation received in the
bid from a vendor for a product or service provided by a supplier for
eventual resale by the vendor to a target client, wherein the value-add
eligibility criteria includes services and support required by or
beneficial to the target client;
calculating, by the one or more computing devices, a bid price
based on the bid from the vendor;
inputting a price into the BCT server through an application
programming interface (API) which communicates between an
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organization's existing pricing tool and the BCT server and further
inputs the price into a database;
determining a relative value of the bid from the vendor based
on predefined points stored in a point value table, with points assigned
to different differentiators, activities, and documents associated with a
plurality of vendors;
updating, by the one or more computing devices, a record
indicating the bid price;
communicating with at least one or more computing devices
external to the computer infrastructure via a communications link; and
calculating values based on comparative data between vendors using a
point-value table, which has entries for a points based system, the
point-value table includes information which identifies BVC
comparative criteria including: the differentiators, the activities, and
the documents that are determined to be important.
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
ANALYSIS
35 USC§ 101 Rejections
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "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]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
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The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 55 ("Memorandum").
Under that guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum at 50.
Claim 1
Under the first step of the Alice/Mayo framework, the Examiner
determines the claims are directed to the abstract idea of "processing bid
data information" which is a method of organizing human activity. Ans. 3-
4; Final Act. 13, 17. The Examiner further determines the claims are
directed to "activities which can be performed mentally by a human using
pencil and paper" and to "fundamental economic practices." Id. at 7. The
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Examiner deten11ines the claims "do not make an improvement to any
technical field or to a computer but simply use an underlying technology to
implement the abstract idea." Id. at 15; see also id. at 16. The Examiner
further determines the claims merely amount to instructions to apply the
abstract idea on a computer. J d. at 11.
Appellants argue claim 1 is not directed to a fundamental economic
practice because "[ t ]he one or more computing devices in [the] computer
infrastructure allow [the] information to be shared by the parties through
various mechanisms, such as servers, web-based interfaces and a database"
which "amount[ s] to more than contracts, legal obligations, and business
relations." App. Br. 9--10. Similarly, Appellants argue claim 1 is not
directed to methods of organizing human activity because the "claimed
invention is directed to features that create an environment for various
computing devices to interact with one another so that information from
multiple parties can be shared across the parties." Reply Br. 4. Likewise,
Appellants argue claim 1 "could not be done by a human analog, such as by
hand or by merely thinking," but rather "is performed by a computer
infrastructure having a computer executable code, computing devices
interacting with one another so that information from multiple parties can be
shared across the parties, such as by mechanisms like servers, web-based
interfaces and a database." App. Br. 11-12. Appellants argue "there is
nothing foundational or basic about features such as a computer
infrastructure having a computer executable code so that various computing
devices interact with one another to disseminate information across multiple
parties." Id. at 9.
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Appellants do not persuasively argue why claim 1 is not directed to an
abstract idea. Appellants' Specification describes "a method and system for
managing and enabling a vendor-neutral bid process for the same client sales
opportunity." Spec. ,r 1. In the Background of the Invention, Appellants
discuss certain problems encountered in processing a bid and selecting the
right vendor. Id. ,r,r 2-10. For example, Appellants explain "without a
standardized, well understood, and impartial mechanism for recording and
evaluating vendor eligibility, influence, and preparedness with respect to any
individual sales opportunity, vendor relationships with the organization may
be harmed, where one or more vendors may not feel that an impartial
decision has been made." Id. ,r 8. Appellants further explain "where lack of
a defined evaluation criteria and data exists, it is often not possible for the
organization to determine which vendor should receive favorable pricing or
sales assistance." Id. ,r 9.
Appellants solve these problems through a "computer infrastructure"
that "can perform the processes described [in the Specification]." Id. ,r 23.
In the Detailed Description of the Embodiments of the Invention, Appellants
state "[i]mplementing the invention provides a software architecture, unique
logic elements, and multiple embodiments to automate, enhance, and
improve upon existing bid certification process systems and methods." Id.
,r 22 ( emphasis added). Appellants further state "[b ]y implementing the
invention, the use of time[,] resources, accuracy, and personal neutrality
involved in the bid process are all greatly improved, providing a more
balanced bid environment which results in better relationships between
vendors and the organization, e.g., the company, and also amongst the
vendors themselves." Id.
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In light of Appellants' Specification, we are not persuaded by
Appellants' argument that claim 1 is not directed to an abstract idea. Rather,
we agree with the Examiner that claim 1 is directed to a fundamental
economic practice (e.g., processing bid information) and/or commercial
interaction, which the Office Guidance identifies as certain methods of
organizing human activity. See Memorandum at 52; Ans. 7. We agree that
processing a bid in order to select the correct vendor is "a fundamental
economic practice long prevalent in our system of commerce." Alice, 573
U.S. at 219 (quoting Bilski v. Kappas, 561 U.S. 593, 611 (2010). We further
agree with the Examiner that the claim is directed to the abstract idea of a
mental process. See Memorandum at 52; Ans. 7.
In particular, the method of claim 1 is directed to processing bid
information in that it recites a process for receiving and evaluating bids,
including, inter alia, receiving information in support of a bid, assigning an
opportunity number and storing it with the bid information, determining that
a threshold amount of predetermined value-add eligibility is met by value-
add eligibility documentation received in the bid, calculating a bid price
based on the bid, determining a relative value of the bid based on predefined
points stored in a point value table, updating a record indicating the bid
price, and calculating values based on comparative data between vendors
using a point-value table. See claim 1. We agree these steps are directed to
methods for organizing human activity. In addition, the series of steps
covered by claim 1 can be performed by humans without a computer. Cf
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011 ); see also Mortgage Grader, Inv. v. First Choice Loan Servs., 811 F .3d
1314, 1324 (Fed. Cir. 2015); see also Elec. Power Grp. LLC v. Alstom, 830
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F.3d 1350, 1353-54 (Fed. Cir. 2016) (collecting information and "analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] essentially mental processes within the
abstract-idea category."). The mere mention of certain claimed computer
components (e.g. "computer infrastructure," "web-based interface,"
"server," "computing device") does not impose sufficiently meaningful
limitations on claim scope beyond these mental steps. CyberSource, 654
F.3d at 1372-73, 1375; Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed. Cir. 2016).
In determining whether claim 1 is "directed to" the identified abstract
ideas, we next consider whether claim 1 recites additional elements that
integrate the judicial exception into a practical application. We discern no
additional element ( or combination of elements) recited in claim 1 that
integrates the judicial exception into a practical application. See
Memorandum at 54--55.
Claim 1 does not constitute an improvement to the functioning of a
computer; rather, it merely adapts the abstract idea of processing bid
information, previously performed mentally or manually, to an execution of
steps performed by a computer. See Spec. ,r 21 ("such information is
manually corrected, manually tracked, and manually recorded as part of the
bid certification process") Spec. ,r 31 ("a vendor may submit data in various
document formats, without the BCT vendor interface 80, e.g., either on
paper or electronically, and, e.g., fed or scanned into the BCT server 14
using known methods"); MPEP §§ 2106.05(a), (h); see, e.g. Spec. ,r 22; see
Ans. 7-8. In other words, claim 1 is directed to the use of the computer
merely as a tool to perform an existing process. Appellants' Specification
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expressly states the claimed invention automates existing bid certification
processes and improves "the use of time[,] resources, accuracy, and personal
neutrality involved in the bid process." Spec. ,r 22. These are improvements
to the underlying abstract idea, using the computer merely as a tool.
Appellants' argument that the claimed invention "improves information
sharing between various parties" (Reply Br. 17, 20) merely supports the
view that rather than being an improvement to the functioning of the
computer, the improvement is to the abstract idea of processing bid
information. Relying on a computer to perform routine tasks more quickly
or more accurately is insufficient to render a claim patent eligible. See Alice,
573 U.S. 208 at 2359 ("use of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions" is not an
inventive concept); Bancorp Servs., L.L. C. v. Sun Life Assur. Co. of Can.
(US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a computer "employed only
for its most basic function ... does not impose meaningful limits on the
scope of those claims").
Appellants argue "there is no counterpart in the pre-computer world to
the problem addressed and solved by the claimed invention since [the]
[ computer infrastructure having computer executable code, one or more
computing devices, a web-based interface using one of HTTP, FTP, SSH,
and XML, and an application programming interface (API), among other
features, to share information across multiple parties] [is] rooted in computer
technology." App. Br. 12. According to Appellants, "the features of
Appellants' claimed invention are heavily involved and implemented within
computer technologies and assist in solving problems concerning computer
technologies." Id. at 14. Appellants argue like the claims in DDR Holdings,
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LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), "the current claim
very clearly pertains to a solution (e.g., a method for sharing information)
based only in computer technology to solve a problem, which has no
counterpart outside of computer networks." App. Br. 14--15.
Appellants' arguments are not persuasive. Although Appellants focus
their arguments on the computer technology related elements in the claims,
such as the computer infrastructure, computing devices, web-based interface,
BCT server, and communications link, Appellants do not provide persuasive
argument that these are anything other than generic computer components.
See App. Br. 12-14; Reply Br. 1, 5-19; Spec. ,r,r 23-31, Fig. 1. Appellants'
Specification supports that the technology related elements are merely
generic computer components. For example, Appellants Specification states
"[t]he computing device (or BCT server) 14 can comprise any general
purpose computing article of manufacture capable of executing computer
program code installed thereon (e.g., a personal computer server, handheld
device, etc.)." Spec. ,r 27. Appellants describe HTTP, FTP, SSH, and XML
as "well known data transfer languages and protocol." Spec. ,r 31 ( emphasis
added). Appellants state "[ m Jany techniques for scanning, loading, and
translating data are known in the existing art." Spec. ,r 34. Appellants
describe "[ t ]he communications link can comprise any combination of wired
and/or wireless links." Spec. ,r 28. Appellants do not direct our attention to
anything in the Specification that indicates these claimed computer
components and/or computer infrastructure are anything other than generic.
See Spec. ,r,r 23-31, Fig. 1. "[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
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invention. Stating an abstract idea 'while adding the words "apply it'" is not
enough for patent eligibility." Alice, 573 U.S. 208 at 2358 (citation omitted).
We also are not persuaded by Appellants' arguments that the claims
are rooted in computer technology and have no counterpart outside of
computer networks, like the claims in DDR Holdings. See Ans. 16-17. In
DDR Holdings, the disputed claims solved an Internet-specific problem (i.e.,
third-party merchants luring a host website's visitor traffic away from the
host website in response to clicking on a merchant's advertisement link
displayed on the host site) with an Internet-based solution (i.e., generating a
composite web page displaying product information from the third-party
merchant, but retaining the host website's "look and feel") that was
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." DDR Holdings, 773
F.3d at 1257-1258. That is not the case here. As discussed previously, the
claims merely recite an improvement to the underlying abstract idea of
processing bid information. See Spec. ,r 22 ("[i]mplementing the invention
provides a software architecture, unique logic elements, and multiple
embodiments to automate, enhance, and improve upon existing bid
certification process systems and methods").
Therefore, we are not persuaded of error in the Examiner's
determination that claim 1 is directed to an abstract idea.
Tun1ing to step 2 of the Alice/Af ayo framework, we look to whether
claim 1 (a) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
appends well-understood, routine, conventional activities previously known
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to the industry, specified at a high level of generality, to the judicial
exception. J\1emorandmn at 56.
The Examiner deten11ines
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered
both individually and as an ordered combination do not amount
to significantly more that the abstract idea(s). The claims
require the additional limitations of a computing device, central
processing unit (CPU), computer readable storage device, bid
certification tool (BCT) and servers. These generic computer
components are claimed to perform their basic functions of
storing, retrieving, processing, and displaying that are well-
understood, routine, and conventional activities which amount
to no more than implementing the abstract idea with a
computerized programmed system.
Ans. 8.
Appellants argue "the Examiner has provided an incomplete analysis
and did not meet the required burden" because the "Examiner has not
identified the additional elements in the claim and has not explained why
they do not amount to significantly more than the exception." App. Br. 10;
see also Reply Br. 5-20. According to Appellants, "what the Examiner has
done is state that the additional features are generic computer components,"
but "the Examiner has not explained why these additional features are
generic." App. Br. 10-11. Appellants argue the "additional features allow
for the management of information across multiple parties, and further allow
these parties to manipulate that information using specific computing
functions with a web-based interface." App. Br. 11. Appellants argue "the
processes specifically require using one of hypertext transfer protocol
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(HTTP), file transfer protocol (FTP), secure shell (SSH)[], and extensible
markup language (XML) to manage the information." App. Br. 11.
\Ve are not persuaded by Appellants' arguments and agree with the
Examiner's findings and conclusions. See Ans. 7, 8, 14, 15. As discussed
above, claim 1 is directed to processing bid information. Thus, even when
viewed as a whole, nothing in the claim adds significantly more (i.e., an
inventive concept) to the abstract idea. Similarly, as set fmih above, the
additional elements in the claim amount to no more than mere instructions to
apply the exception using generic computer components, which is
insufficient to provide an inventive concept. Appellants do not direct our
attention to anything in the Specification that indicates the computer
infrastructure and other cmnputer components perform anything other than
well-understood, routine, and conventional functions, such as receiving,
processing, and storing data. See buySAFE, inc. v. Google, inc., 765 F.3d
1350, 1355 (Fed. Cir. 2015) ("That a computer receives and sends
information over a network---with no further specification----is not even
arguably inventive"); In re TL! Communications LLC Patent Litigation, 823
F.3d 607, 614 (Fed. Cir. 2016) (server that receives data, extracts
classification information frorn the received data, and stores the digital
images insufficient to add an inventive concept); Alice, 573 U.S. 208. at
2359----2360 (receiving, storing, sending information over networks
insufficient to add an inventive concept); (_}yberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (use of Internet to
verify credit-card transaction does not add enough to abstract idea of
verifying the transaction).
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Accordingly, Appellants have not adequately explained how the
claims are performed such that they are not routine, conventional functions
of a generic computer. The claims at issue do not require any
nonconventional computer components, or even a "non-conventional and
non-generic arrangement of known, conventional pieces," but merely call for
performance of the claimed information receiving, processing, and storing
"on a set of generic computer components." Bascom Global Internet
Services, Inc. v. AT&T lviobility LLC, 827 F.3d 1341, 1349----52 (Fed. Cir.
2016).
We, therefore, sustain the Examiner's 35 U.S.C. § 101 rejection of
claim 1. Appellants present substantially the same arguments for
independent claims 15 and 19, which recite a system and a computer
program product, respectively. App. Br. 15-26. These clairns are no
different in substance than independent method claim 1. See Alice, 573 U.S.
208 at 2360 ("system claims are no different than method claims").
Appellants do not separately argue dependent claims 2----6, 8, 10, 12, 14, and
20. App. Br. 12, 15, 21, 26. Therefore, for the same reasons, we sustain the
Examiner's 35 U.S.C. § 101 rejection of independent claims 15 and 19 and
dependent claims 2-6, 8, 10, 12, 14, and 20.
Dependent Claims 7, 9, 11, 13, and 16-18
Appellants argue claims 7, 9, 11, 13, and 16-18 include additional
elements that amount to significantly more than the judicial exception, and
"point out that the Examiner did not discuss these remaining features of the
dependent claims." App. Br. 12, 19, 24; Reply Br. 11, 13.
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These dependent claims merely recite further steps relating to
evaluating bid information ( claims 7, 9, 11 ), limitations relating to additional
generic computer components ( claims 16, 17), or the manual process of
creating, maintaining, and deploying the computer infrastructure that
performs the method or system (claims 13, 18). See App. Br. 30-33.
Appellants have not persuasively explained why these additional claim
limitations should amount to significantly more than the abstract idea.
Accordingly, for the same reasons as set forth with respect to independent
claim 1, we sustain the Examiner's 35 U.S.C. § 101 rejection of dependent
claims 7, 9, 11, 13, 16-18.
DECISION
We affirm the Examiner's 35 U.S.C. § 101 rejection of claims 1-20.
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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