Ex Parte Kumar

Patent Trial and Appeal Board

Mar 1, 2019

12711565 (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/711,565
149109 7590
EGL/Excalibur
P.O. Box 10395
Chicago, IL 60610
FILING DATE FIRST NAMED INVENTOR
02/24/2010 Abhishek Kumar
03/01/2019
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.
12729-645 (Y06080USOO) 1988
EXAMINER
CHOI, PETER H
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
03/01/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABHISHEK KUMAR
Appeal2017-010383
Application 12/711,565
Technology Center 3600
Before ERIC S. FRAHM, JASON J. CHUNG, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 22--42, which are all of the claims pending in this
application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is YAHOO! INC. App.
Br. 2.
2 Claims 1-21 have been canceled. See App. Br. 14 (Claims App'x).
Appeal2017-010383
Application 12/711,565
INVENTION
Appellant's invention relates to serving localized advertisements.
Abstract. Claim 22 is illustrative and reads as follows:
22. A method, comprising:
generating, by a web server, browser code executable by a
browser to cause the browser to perform operations including:
displaying a web page including search results, the search
results including a sponsored search result that includes a
graphical element that indicates an interactive user interface;
communicating a user selection of the graphical element
to the web server;
in response to the selection of the graphical element,
displaying the interactive user interface in a pop-up window that
overlaps at least part of the search results;
the interactive user interface displaying a form for
reserving a service of a service provider, the form including a
user input field to receive a desired time period of the service;
the interactive user interface communicating at least a
request to reserve the service and the desired time period to a
database associated with service provider; and
the interactive user interface displaying verification of the
reservation and the desired time period, the verification received
from the database via the web server.
REJECTIONS
Claims 22--42 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception, without significantly
more. Final Act. 3---6.
Claims 22--42 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Heyraud et al. (US 2008/0319803 A 1;
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Application 12/711,565
published Dec. 25, 2008) ("Heyraud") and Greene et al. (US 2007/0192186
Al; published Aug. 16, 2007) ("Greene"). Final Act. 7-13.
ANALYSIS
Rejection of Claims 22-42 under 35 US.C. § 101
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).
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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
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such as "molding ... rubber products" (Diamond v. Diehr, 450 U.S. 175,
193 (1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent protection."
( emphasis omitted)).
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 (internal 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
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Application 12/711,565
monopolize the [abstract idea]."' Id. (alterations in original)(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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Guidance"). 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)) (9th ed.
2018).
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 2019 Guidance. Patent eligibility under 35 U.S.C. § 101 is a question of
law that is reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333 (Fed. Cir. 2012).
Here, the Examiner concluded the claims are abstract because the
claims are directed to abstract idea of "providing an interactive user interface
in a pop up window." Final Act. 3 ( emphasis omitted).
Appellant contends the Examiner erred because "[t]he claims as a
whole recite more than the oversimplification provided by the Final Office
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Action" and "overcome technical problems related to computer and network
specific ways of displaying information in a graphical user interface." Id. at
5.
Alice Step One - Judicial Exception
In Step One of the Alice analysis, according to the 2019 Guidance, we
first evaluate whether the claim recites a judicial exception. For abstract
ideas, we determine whether claims recite mathematical concepts, certain
methods of organizing human activity, or mental processes.
Claim 22 recites:
[ the interactive user interface] displaying a form for
reserving a service of a service provider, the form including a
user input field to receive a desired time period of the service;
[ the interactive user interface] communicating at least a
request to reserve the service and the desired time period to a
database associated with service provider; and
[ the interactive user interface] displaying verification of
the reservation and the desired time period, the verification
received from the database via the web server.
We conclude that these limitations recite a method of organizing human
activity. In particular, claim 22 is directed to the commercial interaction of
processing reservations ("reserving the services of a service provider" for "a
desired time period").
Because we conclude the independent claims recite an abstract idea,
we proceed to Prong Two to determine whether the claims are "directed to"
the judicial exception.
Step 2A, Prong Two -- Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
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exception by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception( s ); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 22 recites the additional elements of:
generating, by a web server, browser code executable by
a browser to cause the browser to perform operations including:
displaying a web page including search results, the search
results including a sponsored search result that includes a
graphical element that indicates an interactive user interface;
communicating a user selection of the graphical element
to the web server;
in response to the selection of the graphical element,
displaying the interactive user interface in a pop-up window
that overlaps at least part of the search results;
Although the claimed browser is used to facilitate reservations, its
functions go beyond those of a general purpose computer for merely
organizing, storing, and transmitting information.
Considering claims 22, 29, and 36 as a whole, the additional elements
apply or use the abstract idea in a meaningful way such that the claims as a
whole are more than a drafting effort designed to monopolize the exception.
For example, claim 22 recites that, in response to the selection of a graphical
element, the interactive user interface is displayed in a pop-up window that
overlaps at least part of the search results.
Claims 29 and 36 recite similar limitations. Claim 29 recites:
in response to user selection of the graphical element, communicating,
by the web server,
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data defining the interactive user interface, the interactive user
interface located in a pop-up window that overlaps at least part
of the search results, the interactive user interface including
multiple tabs, including a first tab for selecting displaying of an
image of an aspect of the service within the interactive user
interface and a second tab for selecting displaying of a form for
reserving the service within the interactive user interface, and
the form including a user input field to receive a desired time
period of the service;
Claim 3 6 recites:
in response to the user selection of the link, communicate
data defining the interactive user interface to the web browser;
and
a pop-up window executable by the web server, the pop-
up window configured to:
render the interactive user interface within the pop-up
window;
overlap at least part of the search results; and
display multiple tabs, the multiple tabs including a first
tab for selecting displaying graphical information on the service
within the pop-up window and a second tab for selecting
displaying of a form for reserving the service within the pop-up
window, the form including a user input field configured to
receive a desired time period of the service and the form also
including, in response to receiving the desired time period and
the desired time period being verified, an output field
configured to display verification of the reservation at the
desired time period.
Because claims 22, 29, and 3 6 integrate the recited judicial exception
into a practical application, the claims are not "directed to" a judicial
exception and, therefore, our inquiry ends. Stated another way, we need not
discuss whether the present claims are significantly more than any abstract
idea under step 2B.
For these reasons, under the 2019 Guidance, we are persuaded that the
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Examiner erred in concluding claims 22, 29, and 36 are judicially-excepted
from patentability, and we reverse the Examiner's § 101 rejection of
independent claims 22, 29, and 36.
Accordingly, we do not sustain the Examiner's§ 101 rejection of
independent claims 22, 29, and 36, or of dependent claims 23-28, 30-35,
and 37--42, which stand with the claims from which they depend.
Rejection of Claims 22-42 under 35 US.C § 103(a)
We have reviewed the§ 103(a) rejection of claims 22--42 in light of
Appellant's arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments Appellant could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant's arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer and in the Action from which this appeal was taken. We
provide the following explanation for emphasis.
Claims 22-28
With respect to independent claim 22, Appellant contends the cited
portions of Heyraud do not teach or suggest the limitation "in response to the
selection of the graphical element, displaying the interactive user interface in
a pop-up window that overlaps at least part of the search results." App. Br.
9. Appellant argues that Figure 1 of Heyraud "illustrates a pop-up window
on a map, but does not illustrate, describe or suggest that the window
overlaps the search results as claimed." Id.
We are not persuaded that the Examiner erred. The Examiner
interpreted "displaying the interactive user interface in a pop-up window that
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overlaps at least part of the search results" as broad enough to encompass
displaying the pop up user interface "on top of the page that the search
results are on." Ans. 7-8. Appellant has not persuasively rebutted the
Examiner's interpretation. In the Reply Brief, Appellant argues "[t]he
Answer is attempting to rewrite the claims in view of the specification," but
nowhere does Appellant argue the Examiner's interpretation is overly broad,
unreasonable, or inconsistent with the Specification. 3
Appellant next contends the cited portions of Greene and Heyraud fail
to teach or suggest the limitation
[t]he interactive user interface communicating at least a request
to reserve the service and the desired time period to a database
associated with service provider; and the interactive user
interface displaying verification of the reservation and the
desired time period, the verification received from the database
via the web server.
App. Br. 9. Appellant argues "the confirmation of Greene is not a 'pop up
interactive user interface' as claimed, but is clearly an entire web page." Id.
at 10. Appellant further argues "the combination fails to disclose that the
user interface is interactive as claimed." Id.
We are not persuaded that the Examiner erred. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant attacks
Greene individually, even though the Examiner relied on the combination of
Heyraud and Greene in rejecting claim 22. In re Mouttet, 686 F .3d 1322,
1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413,425 (CCPA 1981))
3 We give the claim its broadest reasonable interpretation consistent with
the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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("The test for obviousness is what the combined teachings of the references
would have suggested to those having ordinary skill in the art.").
Here, the Examiner found Heyraud teaches the "interactive user
interface" in Figure 1. Ans. 8-9. We agree with the Examiner's finding that
Greene's reservation confirmation (see Greene Fig. 21 ), when combined
with the cited teachings of Heyraud, teaches or suggests the disputed
limitation.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Heyraud and Greene teaches or suggests the
disputed limitations of claim 22. Accordingly, we sustain the Examiner's
§ 103(a) rejection of independent claim 22. We also sustain the Examiner's
§ 103(a) rejection of dependent claims 23, 24, 27, and 28, not argued
separately with particularity.
Appellant argues the combination of Heyraud and Greene fails to
teach or suggest "[a first] tab[] for selecting displaying of the video on the
service and a second tab for selecting displaying of the form," as recited in
dependent claim 25. App. Br. 10. Appellant further argues the cited prior
art fails to teach or suggest "a third tab for selecting providing of general
information on the service provider," as recited in claim 26. Id. In addition
to the arguments made for claim 22, discussed above, Appellant argues that,
to the extent Greene teaches multiple tabs, they are tabs on a web page as
opposed to a "pop up window interface." Id.
Appellant's arguments are not persuasive. Appellant again attacks
Greene individually, even though the Examiner relied on the combined
teachings of Heyraud and Greene in rejecting claims 25 and 26. See
Mouttet, 686 F.3d at 1332.
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For these reasons, we sustain the Examiner's§ 103(a) rejection of
dependent claims 25 and 26.
Claims 29--42
Appellant makes similar arguments for claims 29--42 (App. Br. 11-
12), which we find unpersuasive for the reasons discussed above for claims
22-29.
Accordingly, we sustain the Examiner's§ 103(a) rejection of
independent claims 29 and 36, as well as dependent claims 30-35 and 37-
42.
DECISION
We reverse the Examiner's decision rejecting claims 22--42 under
35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 22--42 under
35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 22--42 is
affirmed. See 37 C.F.R. § 4I.50(a)(l).
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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