Ex Parte Nuzzi et al

Patent Trial and Appeal BoardJan 25, 2019

14063786 (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/063,786 10/25/2013 Frank Anthony Nuzzi 132906 7590 01/29/2019 Haynes & Boone, LLP (70481) 2323 Victory Ave. #700 Dallas, TX 75219 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. 70481.1101 (Pl436US2) 3582 EXAMINER CHANG, EDWARD ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 01/29/2019 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): ipdocketing@haynesboone.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK ANTHONY NUZZI and JAMES BRETT SOWDER Appeal2017-008580 Application 14/063,786 1 Technology Center 3600 Before JOHN A. JEFFERY, JUSTIN BUSCH, and CARLL. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection2 of claims 1-20, which constitute all pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 The real party in interest is identified as PA YP AL, INC. App. Br. 1. 2 Herein, we refer to the Specification, ("Spec."), filed Oct. 25, 2013; Final Office Action, ("Final Act."), mailed Jan. 4, 2016; Appeal Brief, ("App. Br.") filed July 1, 2016; and the Examiner's Answer, ("Ans.") mailed Nov. 23, 2016. No Reply Brief has been filed. Appeal2017-008580 Application 14/063,786 STATEMENT OF THE CASE The invention relates to providing contingent payments. Abstract; Spec. ,r,r 29, 36, 39, 43, Figs. 1, 6, 7. Claim 1, reproduced below, is exemplary of the subject matter on appeal ( emphasis added): 1. A contingent purchasing system, comprising: a non-transitory memory storing a first user account associated with a first user; one or more hardware processors coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to cause a system to perform operations comprising: providing at least one contingent purchase graphical user interface (GUI) over a network for display on a first user device of the user; receiving a contingent payment request through the network via a selection provided in the at least one contingent purchase GUI from the first user device that identifies a first product and a second product that is different than the first product and includes an instruction to automatically purchase the second product that is identified in the contingent payment request in direct response to determining that the first product has been purchased; storing the contingent payment request in the non- transitory memory in association with the first user account; communicating with a first account provider device over the network to monitor the first user account of the first user subsequent to storing the contingent payment request in the non-transitory memory and, in response, determining that the first product in the contingent payment request has been purchased by the first user using the first user account; and automatically sending an instruction to the first account provider device through the network to transfer funds associated with the first user account to a merchant account in order to purchase the second product that is identified in the 2 Appeal2017-008580 Application 14/063,786 contingent payment request for the first user in direct response to determining that the first product in the contingent payment request has been purchased by the first user. App. Br. 18, Claims Appendix. THE REJECTION Claims 1-20 are rejected under 35 U.S.C. Â§ 101 because the claimed invention is directed to patent ineligible subject matter. Final Act. 2-5. PRINCIPLES OF LAW Patent-eligible subject matter is defined in 35 U.S.C. Â§ 101 of the Patent Act, which recites: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. There are, however, three judicially created exceptions to the broad categories of patent-eligible subject matter in 35 U.S.C. Â§ 101: "[l]aws of nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). 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 3 Appeal2017-008580 Application 14/063,786 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, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 ( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1854))); 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 191-192 ("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 4 Appeal2017-008580 Application 14/063,786 to a known structure or process may well be deserving of patent protection."). 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 (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 monopolize the [abstract idea]."' Id. (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 Â§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 ("Memorandum"). Under that guidance, we first determine whether the claim recites: ( 1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.05(a}-(c), (e}-(h)). 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: 5 Appeal2017-008580 Application 14/063,786 (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.0S(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 Memorandum. ANALYSIS Appellants argue the Examiner errs in finding the claims are directed to abstract ideas of fundamental economic practice or organizing human activity, and, assuming the claims are directed to an abstract idea, the Examiner errs in finding the claims do not amount to significantly more than the abstract idea. App. Br. 6-16. In the Final Action, the Examiner finds the claims are directed to a fundamental economic practice and a method of organizing human activities, and the additional elements in the claims other than the abstract idea per se amount to no more than mere instructions to implement the idea on a computer and recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Final Act. 2-3. The Examiner determines that the additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Id. at 3. The Examiner finds: [ a ]11 the steps in the claims are directed to a series of behavioral activities including e.g., providing contingent purchase choices, 6 Appeal2017-008580 Application 14/063,786 Id. Id. receiving a selection, storing the contingent request in the memory, monitoring the user account, and transferring funds, which, when viewed individually and in combination, constitute an abstract idea of certain methods of organizing human activity. The Examiner finds: these behavioral activities are "interpersonal activities" of "managing relationships or transactions between people, social activities, or behaviors," "satisfying or avoiding a legal obligation," and "advertising, marketing, and sales activities or behaviors," which are subcategories of activities that the precedential courts have found to be abstract ideas under "certain methods of organizing human activity." The Examiner finds: "contingent purchasing as viewed in combination of all elements" is a "fundamental economic practice"; as stated in the July 2015 Update, " ... phrase 'fundamental economic practices' is used to describe concepts relating to the economy and commerce such as agreements between people in the form of contracts, legal obligations, and business relations ... " Id. at 3--4. The Examiner finds: all the claims require no more than adding insignificant extra-solution activity to the judicial exception, e.g., mere collecting data ("receiving ... a selection provided ... ") and performing of generic computer functions (e.g. providing selections by GUI, storing data, transferring funds, and transmitting/communicating information via network) that are well-understood, routine and conventional activities previously known to the industry. None of these foregoing functions are distinguishable from what the courts have recognized as well- understood, routine, and conventional generic computer functions; rather, each of these particular functions fall under at least one of the following computer functions that the courts already recognized as "merely generic": performing repetitive calculations, receiving, 7 Appeal2017-008580 Application 14/063,786 processing, and storing data, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data. The elements of the claims, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. That is, the elements involved in the recited process undertake their roles in performance of their activities according to their generic functionalities which are well-understood, routine and conventional. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities which are well-understood, routine and conventional activities previously known to the industry. Id. at 4--5. Appellants argue the Examiner errs in finding the claims are directed to fundamental economic practices or methods of organizing human activity under the then applicable guidelines (2015 IEG Update3; May 2016 SME Update. 4). App. Br. 5-9. Appellants argue, even if the claims are directed to abstract ideas, the Examiner errs in failing to identify the additional elements and provides only conclusory statements that the "elements" do not amount to significantly more than the supposed abstract idea when viewed in combination. Id. at 10-12. Appellants argue the additional elements do add significantly more to any abstract idea presented in the claims. Id. at 11-16 (citing DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245, 1248 (Fed. Cir. 2014)). Appellants additionally argue dependent claim 3 recites how 3 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july- 2015-update.pdf 4 Available at https://www.uspto.gov/sites/default/files/documents/ieg-may- 2016-memo. pdf 8 Appeal2017-008580 Application 14/063,786 the system operates and dependent claim 4 is illustrative of "unconventional actions the system may perform." Id. at 15. In the Answer, the Examiner cites additional cases to support the finding of the abstract idea and refers to the Final Action as explaining why the additional elements, including the processing components viewed as a whole were well-understood, routine, and conventional activities and not "significantly more." Ans. 3--4 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, No. 2010-1544 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); DDR Holdings, 773 F.3d 1245; Bilski, 561 U.S. 593; Wildtangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014)). As discussed below, we are not persuaded by Appellants' arguments. Applying the current Guidelines (Memorandum), we agree with the Examiner's findings and we agree claim 1 recites a "fundamental economic practice." See Final Act 2-3; Ans. 3--4; 84 Fed. Reg. 50 at I(a), III. In particular, we refer to the claim limitations that recite a system with one or more processors configured to read instructions from memory to cause the system to perform the following operations comprising: receiving a contingent payment request that identifies a first product and a second product that is different than the first product and includes an instruction to automatically purchase the second product in response to determining that the first product has been purchased; determining that the first product has been purchased; send an instruction to transfer funds to purchase the second product in response to determining that the first product in the contingent payment request has been purchased. These limitations recite contingent purchase of a second item (e.g., nails) after purchase of a first item (e.g., 9 Appeal2017-008580 Application 14/063,786 hammer). See, e.g., Spec. ,r 29, Fig. 6. Thus, claim 1 recites a fundamental economic concept and constitutes a judicial exception. Next, we consider whether the claim includes additional elements that integrate the judicial exception into a practical application. Here, although the claim does include additional elements, such as non-transitory memory, a graphical user interface, and a network, these are insufficient to constitute integration into a practical application because these elements are recited at high level of generality and the claim simply applies the judicial exception using computer components. In particular, the additional elements do not constitute a particular machine, but instead use a generically-recited computer (i.e., generic computer components) to perform the abstract idea. See 84 Fed. Reg. 50 at III A(2); MPEP Â§ 2106.05(b); Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 64---65 (1923); MPEP Â§ 2106.05([); Alice, 573 U.S. at 222-26; Benson, 409 U.S. 63; Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (Fed. Cir. 2017). Therefore, under the Memorandum, claim 1 is directed to an abstract idea, and we proceed to analyze the claims under Alice, step 2. As discussed above, in the Alice, step 2 inquiry, we determine whether there is an inventive concept that renders the abstract idea patent eligible. We note the introduction of a "processor of a computer system" into the claims to implement an abstract idea is not a patentable application of the abstract idea. Alice, 134 S. Ct. at 2357-58. The computer implementation here is purely conventional and performs basic functions. See id. at 2359- 60. Appellants do not adequately show how the claimed steps are done technically such that they cannot be done manually or that they are not routine and conventional functions of a generic computer. See Versata Dev. 10 Appeal2017-008580 Application 14/063,786 Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) ("the limitations of claim 17 involve arranging a hierarchy of organizational and product groups, storing pricing information, retrieving applicable pricing information, sorting pricing information, eliminating less restrictive pricing information, and determining the price. All of these limitations are well- understood, routine, conventional activities previously known to the industry."). See Spec. ,r,r 53---63, Figs. 9, 10. We find no element or combination of elements recited in Appellants' claim 1 that contains any "inventive concept" or adds anything "significantly more" to transform the abstract concept into a patent-eligible application. Alice, 134 S. Ct. at 2357. As discussed supra, we are not persuaded the added computer elements transform the abstract idea into a patent eligible invention. As our reviewing court has observed, "after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible." DDR, 773 F.3d at 1256 ( citing Alice, 134 S. Ct. at 2358). Appellants' reliance on DDR is misplaced as the recited claims do not improve the computer or underlying technology. In DDR, the claims at issue involved, inter alia, "web page[] displays [with] at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants" ( claim 1 of US 7,818,399). The Federal Circuit found the claims in DDR to be patent-eligible under step two of the Mayol Alice test because "the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." DDR Holdings, 773 F.3d at 1257. Specifically, the Federal Circuit found the claims addressed the "challenge 11 Appeal2017-008580 Application 14/063,786 of retaining control over the attention of the customer in the context of the Internet." Id. at 1258. To the contrary, Appellants' claims merely use the internet to automate a process that would otherwise be performed manually. The rejected claims are dissimilar to DDR's web page with an active link, and the Specification does not support the view that the computer related claim elements are unconventional. See Spec. ,r,r 53---63, Figs. 9, 10. In view of the above, we sustain the rejection of claim 1, independent claims 8 and 15 as these claims recite similar limitations to claim 1 and are not argued separately, and dependent claims 2, 5-7, 9-14, and 16-20 as these claims are not argued separately. Regarding dependent claims 3 and 4, although the Examiner does not specifically address these claims in the Final Action or Answer, we are not persuaded by Appellants' arguments. The claim 3 limitation of "communicating with a second account provider device over the network to monitor a second user account of the first user in order to determine whether the first product in the contingent payment request has been purchased by the first user using the second user account" (see App. Br., Claims Appendix, 19) does not constitute additional elements that integrate the judicial exception into a practical application for the same reasons as discussed for claim 1, supra. Additionally, this limitation, individually and in combination, does not constitute significantly more than the abstract idea itself for the same reasons as discussed for claim 1, supra. Claim 4 recites: The contingent purchasing system of claim 1, wherein the contingent payment request identifies a desired price below which the first product should be purchased, and the one or more hardware 12 Appeal2017-008580 Application 14/063,786 processors are configured to read instructions from the memory to cause the system to perform operations comprising: providing a contingent payment intent through the network to a social network provider device for display on a user profile of a social network that is associated with the first user, wherein the contingent payment intent identifies the first product and an intent to purchase the first product below the desired price, and wherein the providing the contingent payment intent for display on the user profile results in the contingent payment intent being displayed to a plurality of other users of the social network. ( emphasis added). Id. The additional elements (identifies a desired price below which the first product be purchased, providing intent to purchase to a social network associated with a user and displaying intent to other users) do not constitute additional elements that integrate the judicial exception into a practical application for the same reasons as discussed for claim 1, supra. Additionally, the additional elements, individually and in combination, do not constitute significantly more than the abstract idea itself as discussed for claim 1, supra. In view of the above, we sustain the rejection of claims 3 and 4. DECISION We affirm the Examiner's decision rejecting claims 1-20 under 35 U.S.C. Â§ 101. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). See 37 C.F.R. Â§ 4I.50(f). AFFIRMED 13