Ex Parte Monahan

Patent Trial and Appeal Board

Mar 27, 2017

14087705 (P.T.A.B. Mar. 27, 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.
14/087,705 11/22/2013 Jay Monahan 2043.383US3 4883
49845 7590 03/29/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
LE, JESSICA N
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
USPTO@SLWIP.COM
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY MONAHAN
Appeal 2016-007655
Application 14/087,7051
Technology Center 2100
Before ERIC S. FRAHM, JOHN D. HAMANN, and
SCOTT E. BAIN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 21, 22, 25—29, 32—35, and 38 40. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
THE CLAIMED INVENTION
Appellant’s claimed invention relates to data communications,
including retrieving search result information and digital content. Spec. 2.
1 According to Appellant, the real party in interest is EBAY INC. App. Br.
2.
Appeal 2016-007655
Application 14/087,705
Claim 21 is illustrative of the subject matter of the appeal and is reproduced
below.
21. A method comprising:
receiving, at a server machine, input information from a
user, the input information including an artist identification,
event type, and purchase limitations, the purchase limitations
including authorization for multiple purchases with total
purchases not to exceed a predetermined amount;
generating metadata information from the input
information to target search results to tastes and preference of
the user;
periodically searching, by the server machine, for events
corresponding to the artist identification and the event type
included in the metadata information to identify ticket
information corresponding to both the artist identification and
the event type;
providing, by the server machine, the ticket information
to the user; and
purchasing tickets, in digital content form, from the ticket
information in accordance with the purchase limitations.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 21, 22, and 25—27 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
(2) The Examiner rejected claims 21, 22, 25—29, 32—35, and 38-40
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Karonis et al. (US 7,584,123 Bl; issued Sept. 1, 2009) (hereinafter
“Karonis”) and Brodzeller (US 2009/0063207 Al; published Mar. 5, 2009).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner erred. In reaching our decision, we consider
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Appeal 2016-007655
Application 14/087,705
all evidence presented and all arguments made by Appellant. We below
address specific findings and arguments.
(1) Statutory subject matter
Appellant argues claim 21 is directed to statutory subject matter,
contrary to the Examiner’s findings. App. Br. 10—12; Reply Br. 3^4. More
specifically, Appellant argues claim 21 comprises a “unique combination of
elements [that] are not discussed in the art, demonstrating that they are not
fundamental.” App. Br. 11. Appellant also asserts that the “unique
collection of claimed features improve the computers used to enable them to
support online interaction.” App. Br. 11.
Additionally, Appellant argues the Examiner (i) does not sufficiently
identify the abstract idea, (ii) provides no evidence of any basis or authority
for the finding, (iii) fails to refute Appellant’s assertion “that the ordered
elements of claim 21 include significantly more than an abstract idea,” and
(iv) fails “to properly consider all claim elements in combination.” See App.
Br. 10—11; Reply Br. 4.
The Examiner finds claim 21 is directed to non-statutory subject
matter (i.e., an abstract idea). Ans. 8. More specifically, the Examiner finds
claim 21 relies on conventional steps for the fundamental economic practice
of online purchasing (i.e., an abstract idea), including receiving user input,
targeting search results based on user parameters (e.g., preferences, input
limitations), and online purchasing. Id. The Examiner also finds the
claimed steps do not amount to significantly more than the abstract idea of
online purchasing, as well as that there is no indication that the combination
of elements improves the particular implementation, or improves any other
technology set forth in the claims. Id.
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Appeal 2016-007655
Application 14/087,705
We are not persuaded by Appellant’s arguments. The Supreme Court
has long held that abstract ideas are not patentable. See Alice Corp. v. CIS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014). Alice provides a two step analysis
for determining patent subject matter eligibility: (i) determining whether a
claim at issue is directed to an abstract idea, and if so, (ii) considering the
elements of the claim “individually and ‘as an ordered combination’” to
determine whether they “‘transform the nature of the claim’ into a patent-
eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other
words, the second step is to decide whether the claim amounts to
“significantly more” than the idea itself. Id.
Turning to Alice's first step, we agree with the Examiner that claim 21
is directed to an abstract concept (e.g., online purchasing) having
conventional steps — Appellant characterizes these steps as “receiving the
input information, performing automated searches, and purchasing tickets
and delivering event information to the user of the present claims.” As to
the second step, we find nothing in claim 21 that adds anything
“significantly more” to transform the abstract concept of online purchasing
into a patent-eligible application. Alice, 134 S. Ct. at 2357.
We are unpersuaded by Appellant’s conclusory attorney argument that
the claimed features “improve the computers used to enable them to support
online interaction.” We also are unpersuaded by Appellant’s attempt to
liken claim 21 to the subject matter at issue in Diamond v. Diehr, 450 U.S.
175 (1981). Diehr instead involved a transformative manufacturing process
involving “constantly determining the temperature of the mold [and]
constantly recalculating the appropriate cure time through the use of the
[mathematical] formula.” See Diehr, 450 U.S. at 187.
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Appeal 2016-007655
Application 14/087,705
Accordingly, we sustain the Examiner’s § 101 rejection of claim 21,
as well as claims 22 and 25—27, which depend therefrom, and for which
Appellant did not provide separate patentability arguments.
(2) Periodically searching
Appellant argues the combination of Karonis and Brodzeller, and
Karonis in particular, fails to teach or disclose “periodically searching, by
the server machine, for events corresponding to the artist identification and
the event type included in the metadata information to identify ticket
information corresponding to both the artist identification and the event
type,” as recited in claims 21 and 28, and similarly recited in claim 35.
Specifically, Appellant argues Karonis instead teaches conducting a one­
time search for tickets. See App. Br. 13 (citing Karonis Figs. 4—5, col. 41,11.
62-67).
The Examiner finds the combination, and Karonis is particular,
discloses the disputed limitation. See Ans. 14; Final Act. 6. Specifically,
the Examiner finds Karonis teaches or suggests “a GUI as shown the artist
and event information, and search per period time set.” Ans. 14 (citing
Karonis Figs. 4—5; col. 11,11. 25—33); Final Act. 6 (citing same).
We are persuaded by Appellant’s arguments. We find the cited
portions of Karonis teach, inter alia, searching for events corresponding to
artist and event type, but fail to teach or suggest that such searching occurs
more than one time — there is no teaching or suggestion that such searching
occurs periodically. See Karonis Figs. 4—5; col. 11,11. 25—33
Accordingly, we do not sustain the Examiner’s § 103 rejection of
claims 21, 28, and 35, nor the remaining claims on appeal, each of which
depend, at least indirectly, from one of these independent claims.
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Appeal 2016-007655
Application 14/087,705
DECISION
We affirm the Examiner’s § 101 rejection of claims 21, 22, and 25—
272 for being directed to non-statutory subject matter.
We reverse the Examiner’s § 103 rejection of claims 21, 22, 25—29,
32-35, and 38-40.
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-IN-PART
2 In the event of further prosecution, we invite the Examiner to consider
whether our findings are relevant to claims 28 and 35 in light of
the Alice decision’s treatment of method and similar system claims having
generic technology. See Alice, 134 S. Ct. at 2360.
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