Ex Parte Luther et al

Patent Trial and Appeal Board

May 17, 2017

12754668 (P.T.A.B. May. 17, 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.
12/754,668 04/06/2010 Erik B. Luther 6150-27400 7174
35690 7590 05/19/2017
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C.
P.O. BOX 398
AUSTIN, TX 78767-0398
EXAMINER
ALLEN, WILLIAM J
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
05/19/2017 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):
patent_docketing@intprop.com
ptomhkkg @ gmail .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIK B. LUTHER and VINCENT ACCARDI
Appeal 2015-005786
Application 12/754,668
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—3, 5—12, 14—21, 23—29, and 32—363 under
36 U.S.C. § 101. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Feb. 13, 2015), Reply Brief (“Reply Br.,” filed May 19,
2015), and Specification (“Spec.,” filed Apr. 6, 2010), and to the Examiner’s
Answer (“Ans.,” mailed May 8, 2015) and Final Action (“Final Act.,”
mailed Nov. 19, 2014).
2 According to the Appellants, the real party in interest is National
Instruments Corporation. Appeal Br. 2.
3 Although the rejection lists only claims 1—3, 5—12, 14—21, 23—29, and 32
as being rejected, we consider the rejection to apply to claims 33—36 as well.
See Appeal Br. 2.
Appeal 2015-005686
Application 12/754,668
STATEMENT OF THE CASE
The Appellants’ “invention relates to network-based commerce, and
more specifically to a method for providing an online marketplace for
custom circuits.” Spec. 11.
Claims 1,10, and 19 are the independent claims on appeal. Claim 1
(Claims App.) is illustrative of the subject matter on appeal, and is
reproduced below:
1. A network-based method for providing custom circuits
to customers via a website, comprising:
at least one computer performing:
receiving a specification of a custom circuit from at least
one first user over a wide area network, wherein the
specification specifies a design of the custom circuit;
storing the specification of the custom circuit in a
memory of the at least one computer;
providing information regarding the custom circuit on the
website, the information including one or more files for
download by second users over the wide area network, wherein
the one or more files are executable by the custom circuit to
modify functionality of the custom circuit, wherein said
providing is performed over the wide area network, and
wherein one or more of a virtual or physical prototype of the
custom circuit has undergone one or more of verification or
validation to ensure that the custom circuit functions properly;
receiving at least one purchase order of the custom circuit
from at least one second user of the second users over the wide
area network, wherein the at least one purchase order comprises
delivery information for the custom circuit;
storing the at least one purchase order in the memory of
the at least one computer; and
configuring delivery of the custom circuit based on the at
least one purchase order;
wherein the at least one first user receives payment based
on the at least one purchase order.
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Application 12/754,668
ANALYSIS
The Examiner rejects claims 1—3, 5—12, 14—21, 23—29, and 32—36 as
being directed to an abstract idea and, therefore, to non-statutory subject
matter under § 101. Final Act. 4, Ans. 4.
Under 35 U.S.C. § 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. CLSBanklnt’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’nfor
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (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.” Id. If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether the additional elements “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 132
S. Ct. at 1298). 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. (alteration in original)
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Application 12/754,668
(citing Mayo, 132 S. Ct. at 1294). The Court acknowledged in Mayo, that
“all inventions at some level embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293.
We, therefore, look to whether the claims focus on a specific means or
method that improves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery. See Enflsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
Upon careful review of the Appellants’ arguments presented in the
Appeal and Reply Briefs, we are not persuaded that the Examiner erred in
the rejection.
Claims 1-3. 5. 6. 8-12. 15-21. 23. 24. 26-29. and 32
The Appellants argue claims 1—3, 5, 6, 8—12, 15—21, 23, 24, 26—29,
and 32 as a group. See Appeal Br. 6. We consider claim 1 representative.
Claims 2, 3, 5, 6, 8—12, 15—21, 23, 24, 26—29, and 32 stand or fall with
claim 1. See C.F.R. § 41.37(c)(l)(iv).
Turning to the first part of the analysis, we find unpersuasive the
Appellants’ arguments that claim 1 is not directed to an abstract idea. See
Appeal Br. 6—10, Reply Br. 2. The Examiner finds that the claim is directed
to the abstract idea of “offering custom products for sale” (Final Act. 4), and
more particularly to “providing custom circuits to customers via a website”
(Ans. 4). Conversely, the Appellants contend that the technical features of
the claim, i.e., that the information comprising files executable by the circuit
product, place the claim in the technical field of “electronic circuit
customization” and describe “new technical functionality resulting from the
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Application 12/754,668
particular combination of technical features recited in the claim” such that
the claim is not an abstract idea. See Appeal Br. 7—8.
The Specification provides that the “invention relates to network-
based commerce, and more specifically to a method for providing an online
marketplace for custom circuits.” Spec. 11. The Specification further
provides, under the heading “Summary of the Invention,” that “[v]arious
embodiments are presented of a system and method for providing custom
circuits to customers” (id. 14), and
[t]hus, embodiments of the invention may establish a
medium which potentially provides entrepreneurial circuit
designers most (or all) of the services necessary to generate a
customer base, produce circuits, and distribute the circuits to the
customers, and correspondingly potentially provides customers a
website at which a variety of custom circuits from a variety of
different designers may be available. The system and method
may effectively form an online custom circuit marketplace.
Id. 112. Claim 1 is directed to “providing custom circuits to customers via a
website.” Claims App. The steps of the method comprise receiving a
specification/data for a circuit product, storing the specification/data,
providing information including executable files, receiving a purchase order,
storing the purchase order, configuring delivery, and a user receiving
payment. Id. Thus, we find supported the Examiner’s finding (Ans. 4) that
claim 1 is directed to the abstract idea of “providing custom circuits to
customers via a website,” a “commercial interaction” and fundamental
economic practice. Even assuming arguendo that the claim is directed to
“electronic circuit customization” (Appeal Br. 8), the customization is over
the Internet, i.e, electronically, and requires payment, which would still be a
commercial interaction of providing custom circuits via a website. In that
context, the claim is similar to the claims found ineligible by our reviewing
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court in Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d
1363, 1369 (Fed. Cir. 2015) (customizing web page content), Affinity Labs
of Tex., LLCv. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016)
(delivering user-selected media content), and Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (generating menus with certain
features). The Appellants’ argument that the claim is not abstract because it
recites “quite specific technical relationships and points of utility” (Reply
Br. 2) is unpersuasive because the steps of receiving and storing data,
providing information, configuring delivery and receiving payment are not
technical improvements and are all directed to and further elaborate the
abstract idea of providing and selling custom circuits via the Internet.
We further find unpersuasive the Appellants’ argument that the claim
is not directed to an abstract idea because “Appellant's claims are of modest
scope, involve very specific technical features (e.g., providing files that are
executable by a verified or validated custom electronic circuit to modify the
functionality of the circuit), and thus do not threaten to create problems
relating to preemption.” Appeal Br. 10. Even if the claims clearly do not
pre-empt offering custom products for sale (see id.), the lack of pre-emption
does not demonstrate patent eligibility. See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015), cert, denied,
136 S. Ct. 2511 (2016) (“Where a patent’s claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, as they
are in this case, preemption concerns are fully addressed and made moot.”);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir.), cert, denied, 136 S. Ct. 701 (2015).
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Turning to the second part of the analysis, we find unpersuasive the
Appellants’ arguments that claim 1 is significantly more than the abstract
idea. See Appeal Br. 6—8, Reply Br. 3—9. The Examiner finds that, when
considering the limitations individually and in combination, claim 1 does not
amount to significantly more than the abstract idea in that it is not an
improvement to another technology or technical field, it amounts to applying
the abstract idea on a computer, and requires “nothing more than a generic
computer to perform generic computer functions that are well-understood,
routine and conventional activities previously known to the industry.” Final
Act. 4—5.
We find unpersuasive the Appellants’ argument that the technical
nature of the circuit product is an “improvement in the technical field of
electronic circuit customization.” Appeal Br. 7. The Examiner finds that
the custom circuit, although a technical product, is not being improved but,
rather, that the claim is “(at best) an improvement to the business process of
providing custom circuits and dofesl not amount to an improvement to a
technical field.” Ans. 5. The Specification discusses the advantage of
online markets for custom designs on various goods and, due to the
complexity of circuits, the difficulty of developing a model for an online
marketplace for custom circuits. Spec. 13. The Specification describes the
invention as establishing a medium to “provide[] entrepreneurial circuit
designers most (or all) of the services necessary to generate a customer base,
produce circuits, and distribute the circuits to customers.” Spec. 112. At
the same time, the invention provides customers a website at which custom
circuits are available, i.e., “an online custom circuit marketplace.” Id. The
online custom circuit marketplace would “streamline the market for custom
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circuits, providing a better experience for both designer-entrepreneurs and
customers,” by allowing designers to not worry about time, money, and
experience and by reducing search time and cost for customers. Id. The
Specification defines a “circuit” as having “its ordinary and accepted
meaning in the art.” Spec. 27. Claim 1 recites, in relevant part, receiving
a specification of a circuit specifying the design and providing information
regarding the custom circuit (see Appeal Br. 5—6, 13), but does not recite
actually designing or improving the custom circuit. Thus, the Specification
provides that the invention is an improvement to the business of providing
custom circuits by providing an online marketplace, but does not provide
that the invention is an improvement in the technical aspects of custom
circuits. As such, we find supported the Examiner’s finding that the claim is
not directed to an improvement in a technical field. See Ans. 4—5.
We further find unpersuasive the Appellants’ argument that the
limitations amount to significantly more than the abstract idea because “the
technical nature of the provision of one or more executable files that are
executable by the custom circuit to modify the functionality of the custom
circuit (after purchase)” is an “improvement in the technical field of
electronic circuit customization.'1'’ Appeal Br. 7. The Examiner
“acknowledges that modifying the functionality of a circuit through the
downloading of executable files such limitations may aid in overcoming the
rejection under 35 USC 101,” but finds that this limitation is not positively
recited, and thus the limitations of claim 1 are not significantly more than
the abstract idea. Ans. 5. Thus, the issue is whether the claim positively
recites the technical features upon which the Appellants rely. See Ans. 5,
Appeal Br. 6—8, Reply Br. 4—5.
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Application 12/754,668
The limitation at issue recites
providing information regarding the custom circuit on the
website, the information including one or more files for
download by second users over the wide area network, wherein
the one or more files are executable by the custom circuit to
modify functionality of the custom circuit, wherein said
providing is performed over the wide area network, and
wherein one or more of a virtual or physical prototype of the
custom circuit has undergone one or more of verification or
validation to ensure that the custom circuit functions properly
Claims App. (emphasis added). We interpret the claim giving the limitation
its broadest reasonable interpretation consistent with the Specification, and
“in light of the [Specification as it would be interpreted by one of ordinary
skill in the art.” In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted). However, limitations appearing in the
Specification, but not recited in the claim, will not be read into the claim.
See CollegeNet, Inc. v. ApplyYourself Inc., 418 F.3d 1225, 1231 (Fed. Cir.
2005).
The Specification discusses that the provided information regarding
the custom circuit may include the specification, an image, a file, “or any of
various other kinds of information for display for at least one second user,”
such as a list of components, size, price, uses, names, manufacturer, and
delivery time. Spec. Tfl[ 6, 45. The Specification also provides that “the
file(s) provided for download might be executable by the custom circuit,
e.g., in order to expand, modify, or otherwise affect the functionality of the
custom circuit.” Id. 1 6.
Based on the Specification, we agree with the Examiner that claim 1
requires providing information regarding the custom circuit including
downloadable files that are capable of modifying the circuit when executed,
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but does not require that the files are executed or that the circuit’s
functionality is modified. See Ans. 5. As such, we find unpersuasive the
Appellants’ argument that
the specific relationship between the offered custom circuit and
the offered one or more files (executability of the one or more
files by the custom circuit to modify the custom circuit’s
functionality), and the resultant benefit of this relationship
(further (post purchase) customizability of the custom circuit),
are not simply “part of the commercial interaction itself’, nor
“activities a generic computer is to undertake (e.g. providing
information regarding custom circuits, receiving at least one
purchase order, configuring delivery of the custom circuit) in
order to facilitate the performance of abstract idea [sic]”, but
rather are particular technical requirements and technical
benefits, and provide something more than “offering custom
products for sale” or even “providing custom circuits to
customers via a website”.
Reply Br. 5. Rather, we find that the Appellants do not provide adequate
evidence or technical reasoning why providing information including
downloaded files that are capable of being executed to perform a function
such as a modification is not a well-understood, routine, and conventional
activity of a computer. As in Affinity Labs of Texas, LLC v. DIRECTV, LLC,
838 F.3d 1253, 1263 (Fed. Cir. 2016), “[t]he essential advance is not in the
process of downloading applications, but only in the content of this
particular application,” and that is nothing but an intended functionality.
“That description does not cross out of the abstract idea category. There is
no further specification of a particular technology for getting the defined
content displayed.” Id. Further, the claim does not require modification of
the circuit or that such modification would affect the steps of the method.
“Thus, the user-downloadable application does not constitute an inventive
concept sufficient to render the claims patent-eligible.” Id.', Cf. Enfish, LLC
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v. Microsoft Corp., 822 F.3d. 1327, 1336 (Fed. Cir. 2016) (focusing on
whether the claim is “an improvement to the computer functionality itself,
not on economic or other tasks for which a computer is used in its ordinary
capacity.”).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of claim 1, and also of
claims 2, 3, 5, 6, 8—12, 15—21, 23, 24, 26—29, and 32 which fall with claim 1.
Claims 7, 16, 25, and 33—36
We find unpersuasive the Appellants’ argument that claims 7, 16, 25,
and 33—36 recite patent-eligible subject matter because the features of
specifying fabrication based on the purchase order, and configuring and
initiating manufacture of the circuit based on the specification, “[are]
particularly tied to a ‘real world’ technical object, specifically, the custom
circuit of claim 1, and fabrication [and manufacture] thereof, and so [are] not
directed to an abstract idea.” Appeal Br. 10-11. The post-solution activities
of specifying fabrication and configuring and initiating manufacture do not
transform the abstract idea into a patentable process. See Parker v. Flook,
427 U.S. 584, 591 (1978). The claims do not purport to change or improve
the technical or technological process of fabrication or manufacture; how the
customization changes the fabrication or manufacture is not recited. There
is no inventive concept in the application of the abstract idea. See id. at
594—95; cf. Diamond v. Diehr, 450 U.S. 175, 193—94 (1981) (finding patent
eligible under § 101 the process of curing synthetic rubber because it was
drawn to the industrial process of molding rubber products).
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Thus, we are not persuaded of Examiner error in the rejection and
sustain the Examiner’s rejection under 35 U.S.C. § 101 of claims 7, 16, 25,
and 33—36.
DECISION
The Examiner’s rejection of claims 1— 3, 5—12, 15—21, 23—29, and
32-36 under 35 U.S.C. § 101 is AFFIRMED.
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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