Ex Parte MacDonald Korth et al

Patent Trial and Appeal BoardJan 26, 2018

13903819 (P.T.A.B. Jan. 26, 2018)

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. 13/903,819 05/28/2013 Holly C. MacDonald Korth T11900.B.2.A 3594 20450 7590 01/29/2018 ALAN J. HOWARTH P.O. BOX 1909 SANDY, UT 84091-1909 EXAMINER CAMPEN, KELLY SCAGGS ART UNIT PAPER NUMBER 3691 MAIL DATE DELIVERY MODE 01/29/2018 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 HOLLY C. MACDONALD KORTH and SAMUEL JACOB PETERSON ____________________ Appeal 2016-0037161 Application 13/903,8192 Technology Center 3600 ____________________ Before HUBERT C. LORIN, ANTON W. FETTING, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1–9, 11–16, and 18. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 Our Decision references Appellants’ Appeal Brief (“App. Br.,” filed Aug. 31, 2015), Reply Brief (“Reply Br.,” filed Feb. 22, 2016), and published Specification (US 2014/0164168 A1, June 12, 2014); and the Examiner’s Answer (“Ans.,” mailed Dec. 22, 2015), and Final Office Action (“Final Act.,” mailed Mar. 31, 2015). 2 Appellants identify “Overstock.com, Inc.” as the real party in interest. App. Br. 2. Appeal 2016-003716 Application 13/903,819 2 CLAIMED INVENTION Appellants’ present invention relates “electronic commerce through communication networks that utilize online image handling to provide users with images of products during online activities.” Spec. ¶ 4. Claims 1, 6, 12, and 15 are the independent claims on appeal. Claim 15, reproduced below, is illustrative of the subject matter on appeal. 15. A computer readable medium that is readable by a computer to facilitate electronic commerce over a computer network between a seller user computer and a potential buyer computer, the computer readable medium comprising a set of instructions that, when executed by the computer, cause the computer to perform the following operations: receiving an original item image file of an item for sale through a computer network; forming a set of at least two item image files from the original item image file to provide image size variations of an item image of the item for sale to thereby represent the item for sale, the set of at least two item image files including a first item image file providing a first image and a second item image file providing a second image sized substantially larger than the first image; randomly sizing the first image based on a first preselected size range; randomly sizing the second image based on a second preselected size range; and storing the first and the second item image files for use on an e-commerce website. REJECTIONS I. Claims 1–9, 11–16, and 18 are rejected on the ground of non- statutory obviousness-type double patenting as unpatentable over claims 1 and 2 of Korth (US 7,979,340 B2, iss. July 12, 2011). Appeal 2016-003716 Application 13/903,819 3 II. Claims 1–9, 11–16, and 18 are provisionally rejected on the ground of non-statutory obviousness-type double patenting as unpatentable over claims 1–37 of co-pending Application 11/210,230, and over claims 12, 13, and 15 of co-pending Application No. 13/181,016. III. Claims 1–9, 11–16, and 18 are rejected under 35 U.S.C. § 101 as reciting only ineligible subject matter in the form of an abstract idea. ANALYSIS Rejections I and II Appellants do not provide any response to Rejections I and II. Therefore, the Examiner’s rejections are summarily sustained. Rejection III Appellants present the same set of arguments for claims 1–19, 11–16, and 18. See App. Br. 17–27; see also Reply Br. 4–10. Therefore, we select claim 15 as the representative claim for this group, and the remaining claims stand or fall with claim 15. See 37 C.F.R. § 41.37(c)(1)(iv). The Supreme Court in Alice reiterated a two-step framework, set forth previously in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice Corp. Pty. Ltd. v. CLS Bank lnt’l, 134 S. Ct. 2347, 2355 (2014). 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 they are, the second step is to analyze whether the claim elements, either individually or as an ordered combination, contain an Appeal 2016-003716 Application 13/903,819 4 “‘inventive concept’” that “‘transform[s] the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 72–73, 78). 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, 566 U.S. at 71. We, therefore, look to “whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016). Here, the Background section of Appellants’ Specification describes that the invention relates “in general to electronic commerce” and, more particularly, to “electronic commerce through communication networks that utilize online image handling to provide users with images of products during online activities.” Spec. ¶ 4. One method of facilitating electronic commerce in an online marketplace involves a seller completing a product registration form and providing a digital image of the item. Id. ¶ 8. The item is added to an existing selling webpage where a miniature copy of the digital image and an item description are displayed. Id. In a typical online market transaction, a potential buyer wishing to learn more about an item, clicks on the miniature image or title to access a larger image of the item and further description. Id. ¶ 9. The larger image is the same as the original digital image supplied by the seller. Id. An even larger image can be accessed by clicking on the original sized image. Id. Thus, the Background describes that it is a well-known economic practice to facilitate economic practice by receiving a digital image from a seller, and providing the image in various sizes to potential consumers. Although the Background does not Appeal 2016-003716 Application 13/903,819 5 identify the problem the invention seeks to address, it asserts that the invention seeks to address and overcome the shortcomings of most current marketplace websites, which “collectively represent impediments to the conduct of e-commerce.” Id. ¶ 11. Independent claim 15, for example, recites a computer readable medium for facilitating electronic commerce over a computer network between a seller user computer and a potential buyer computer. The computer readable medium includes instructions that cause a computer to perform the following operations: (1) receive an original item image file of an item for sale through a computer network, (2) form a set of at least two item image files from the original item file to provide image size variations of an item image of the item for sale to thereby represent the item for sale, the set of at least two item image files including a first item image file providing a first image and a second item image file providing a second image sized substantially larger than the first image, (3) randomly size the first image based on a first preselected size range, (4) randomly size the second image based on a second preselected size range, and (5) storing the first and the second item image files for use on an e-commerce website. The intrinsic evidence, thus, shows that claim 15 is directed to facilitating electronic commerce by receiving an original item image file, forming a set of at least two item image files from the original file, randomly sizing the first image, randomly sizing the second image, and storing the first and second image files for use on an e-commerce website. Stated more simply, claim 15 facilitates electronic commerce by receiving information, i.e., an image (e.g., step 1), processing the information (e.g., steps 2–4), and storing the results (e.g., step 5). Facilitating electronic commerce is a Appeal 2016-003716 Application 13/903,819 6 fundamental economic practice, i.e., an abstract idea. See Final Act. 9 (claims are directed to “the abstract idea of facilitating commerce in a marketplace”); see also App. Br. 18 (acknowledging that “each of the claims is directed to facilitating electronic commerce on an online marketplace or over a computer network”). Moreover, the Federal Circuit has held that claims directed to “gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions” are abstract. Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). As such, we are not persuaded that the Examiner erred in determining the claims are directed to an abstract idea, or that there is no evidence on the record to support such determination. See, e.g., App. Br. 20. Appellants argue that the Examiner erred in determining that the claims are directed to an abstract idea because the claims are analogous to those at issue in DDR Holdings in that they are “rooted in computer technology” and “overcome a specific problem arising from computer networks.” App. Br. 18; see also Reply Br. 4–6. Specifically, Appellants assert: (1) “each of the claims is directed to facilitating electronic commerce [in] an online marketplace or over a computer network” (App. Br. 18); (2) the Specification provides examples “of an online marketplace as an online auction website or product sale website” (id. (citing Spec. ¶¶ 13, 58)) and (3) the Specification “identifies specific computer technology problems that are overcome by the claimed invention, namely, that the claimed invention enhances the quality of images provided in e-commerce type transactions, can enhance transaction presentation or launch speeds in e- commerce transactions, and can enhance images to be displayed to potential Appeal 2016-003716 Application 13/903,819 7 buyers” (id. citing Spec. ¶ 12)). Appellants’ argument does not apprise us of us of error. Appellants’ first two assertions, for example, support the Examiner’s determination that the claims are directed to the abstract idea of facilitating commerce in a marketplace. Limiting the abstract idea of “facilitating commerce in a marketplace” to a particular environment (e.g., a marketplace that is provided online, over a computer network, as an online auction website, and/or as a product sale website) makes the claims no less abstract for the step one analysis. In re TLI Comms. LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) (citing OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)). With respect to the third assertion, paragraph 12 of Appellants’ Specification touts alleged enhancements that could be provided by the invention for facilitating electronic commerce over a network. But claim 15 does not recite particular features to yield these purported advantages. Moreover, there is no indication that obtaining such advantages are the focus of the claimed invention or relate to any problem rooted in technology that the invention overcomes. See, e.g., Spec. ¶ 76 (describing applying known attribute variations of the images). Although Appellants contend that the claims solve a problem arising from computer networks, that the claims may utilize a computer network, computer programs, servers, and/or websites, does not make the claims rooted in computer networks or otherwise constitute an improvement to technology. See Reply Br. 5; see also App. Br. 18–19. Here, Appellants offer no persuasive argument or technical reasoning to support the position that the claims at issue are “necessarily rooted in computer technology in Appeal 2016-003716 Application 13/903,819 8 order to overcome a problem specifically arising in the realm of computer networks,” akin the claims in DDR Holdings. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Appellants argue that the claims include particular claim limitations that remove the claims from being a mere abstract idea under step one of the Alice test, and/or transform the abstract idea into a patent-eligible application under step two. App. Br. 21–24; Reply Br. 7–9. In this regard, Appellants quote the following limitation from claim 1, which is similar to language recited in the remaining independent claims: forming from each of the original item image files a set of at least two item image files to provide image size variations of the item image of each respective marketplace item to thereby represent each respective marketplace item, the set of at least two item image files including a first item image file providing a first image sized randomly based on a first preselected size range and a second item image file providing a second image sized randomly based on a second preselected size range, the second image being substantially larger than the first image[.] App. Br. 22–23; see also Reply Br. 8. Then, Appellants assert that “Appellants’ claims act to narrow, confine, and otherwise tie down the claim so as not to cover the general abstract idea of a fundamental economic practice.” Id. at 24. Yet, that an abstract idea may be described in greater detail does make the idea any less abstract. Here, the limitation recites the desired results to be achieved, but no particular way of achieving them. There is no particular assertedly inventive technology for performing these functions. Moreover, Appellants provide no persuasive argument or technical reasoning to support the conclusory assertion that the limitation removes the claim from being an Appeal 2016-003716 Application 13/903,819 9 abstract idea under step one, or that it transforms the abstract idea under step two. Appellants argue that the claims provide an inventive concept because the claims are novel and non-obvious over the prior art. Id. at 24–25; see also Reply Br. 6–7. Appellants’ argument is not persuasive, at least because novelty or non-obviousness does not automatically render the claimed subject matter patent-eligible. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within . . . categories of possibly patentable subject matter.”). Appellants argue that the claims are patent-eligible because they do not preempt the broad field of electronic commerce. App. Br. 25–26. Appellants’ argument is not persuasive, because preemption is not the test for patent-eligibility. Although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Where, as here, the claims are deemed only to recite patent ineligible subject matter under the two-step Alice test, “preemption concerns are fully addressed and made moot.” Id. We have considered all of the Appellants’ remaining arguments both in the Appeal and Reply Briefs and have found them unpersuasive. Appellants have not persuaded us that the Examiner incorrectly determines at step one that the claims are directed to an abstract idea, or at step two that the elements and combination of elements do not recite significantly more Appeal 2016-003716 Application 13/903,819 10 than the abstract idea. Therefore, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of independent claim 15, and the remaining claims. DECISION We AFFIRM the rejection of claims 1–9, 11–16, and 18 under 35 U.S.C. § 101. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED