Ex Parte Luther et alDownload PDFPatent Trial and Appeal BoardMay 17, 201712754668 (P.T.A.B. May. 17, 2017) Copy Citation 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. 2 Appeal 2015-005686 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) 3 Appeal 2015-005686 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 4 Appeal 2015-005686 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 5 Appeal 2015-005686 Application 12/754,668 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). 6 Appeal 2015-005686 Application 12/754,668 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 7 Appeal 2015-005686 Application 12/754,668 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. 8 Appeal 2015-005686 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, 9 Appeal 2015-005686 Application 12/754,668 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 10 Appeal 2015-005686 Application 12/754,668 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). 11 Appeal 2015-005686 Application 12/754,668 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 12 Copy with citationCopy as parenthetical citation