Ex Parte Ovick et al

Patent Trial and Appeal Board

Aug 21, 2017

14511869 (P.T.A.B. Aug. 21, 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.
14/511,869 10/10/2014 Joseph Bjorn OVICK 46582-701.201 6975
21971 7590 08/23/2017
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
GART, MATTHEW S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
patentdocket @ wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH BJORN OVICK, MONICA MARIS S A OVICK, and
MICHAEL HOGAN
Appeal 2016-004583
Application 14/511,8691
Technology Center 3600
Before JOHNNY A. KUMAR, CATHERINE SHIANG,
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1—13 and 15—23, which are all claims
pending. Claim 14 is cancelled. We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Staffly, Incorporated, as the real party in interest.
(App. Br. 3.)
Appeal 2016-004583
Application 14/511,869
THE INVENTION
Appellants’ disclosed and claimed invention is directed to an on-
demand temporary staffing exchange. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. An electronic temporary staffing platform comprising:
a. a processor configured to provide an individual
staff application comprising:
i. a database comprising a plurality of staff
profiles, each staff profile associated with an
individual and comprising work experience,
picture, video, qualifications, billing rate,
availability, and ratings by previous
employers;
ii. a software module configured to provide an
interface allowing the individual to rate
employers who have previously hired them
for temporary staffing assignments;
iii. a software module configured to provide a
notification to the individual when they have
been selected for a temporary staffing
assignment;
b. a processor configured to provide an employer
application comprising:
i. a database comprising a plurality of
employer profiles, each employer profile
comprising one or more descriptions of
temporary staffing assignments, type of
business, url, address, phone number, dress
code for assignment, number of employees,
owner name, supervisor, and ratings by
individual staff previously employed;
ii. a software module configured to provide an
interface allowing the employer to perform a
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Application 14/511,869
targeted search for individuals suitable for a
current temporary staffing assignment;
iii. a software module configured to
automatically match one or more individuals
to the current temporary staffing assignment
based on experience, qualifications, billing
rate, availability, ratings of the individual by
previous employers, and ratings of previous
employers by the individual;
iv. a software module configured to provide an
interface allowing the employer to
immediately book a matched individual, the
booking generating a notification to the
individual.
REJECTION
The Examiner rejected claims 1—13 and 15—23 under 35 U.S.C. § 101
as directed to unpatentable subject matter. (Non-Final Act. 7—11.)
ISSUE ON APPEAL
Appellants’ arguments in the Appeal Brief present the following
issue2:
Whether the pending claims are directed to unpatentable subject
matter. (App. Br. 11—20.)
2 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed Oct. 21, 2015); the Reply Brief
(filed Mar. 28, 2016); the Non-Final Office Action (mailed July 22, 2015);
and the Examiner’s Answer (mailed Feb. 8, 2016) for the respective details.
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Application 14/511,869
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner erred. We disagree with Appellants’ arguments,
and we adopt as our own (1) the pertinent findings and reasons set forth by
the Examiner in the Non-Final Office Action from which this appeal is taken
(Non-Final Act. 7—11) and (2) the corresponding findings and reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellants’
Appeal Brief (Ans. 3—10). We concur with the applicable conclusions
reached by the Examiner, and emphasize the following.
The Examiner concludes the pending claims are invalid under
35U.S.C. § 101:
Here, the claims are directed booking temporary staffing
assignments, a concept involving human activity relating to
commercial practices. The steps of automatically match one or
more individuals to the current temporary staffing assigning
and conduct an audio or videos interview all describe the
abstract idea.
(Non-Final Act. 9.) In addition, the Examiner concludes:
Turning to the second step outlined in Alice, i.e., one
must determine whether the recitations in claim 1 such as
“electronic staffing platform”, “processor” and “software
module” relate to an inventive concept that is significantly more
than the abstract idea of temporary staffing. The recitations of a
computer amount to little more than reciting that the computer
applies the abstract idea of temporary staffing.
(Id.)
Appellants rely on DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014), arguing:
[T]he claimed subject matter is directed to technical tools that
solves the problem of how to meet significant and unpredictable
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Application 14/511,869
temporary staffing needs ... by providing a staffing platform or
system that is efficient and convenient to use during the entire
hiring process and specifically tailored to satisfy temporary
staffing needs (e.g. needs that are commonly urgent and hard to
predict which is different from traditional full time hiring
processes).
(App. Br. 12.) Appellants further argue the claims do not preempt all
applications of booking temporary staffing assignments across all fields.
(Id.) Appellants also argue the claims amount to significantly more than the
alleged judicial exception, because they “define a highly technical subject
matter that was not well-understood, routine, conventional, or previously
engaged in by those in the field,” and “confine the invention to a particular
useful application of booking temporary staffing assignments.” (App. Br.
18—19.) In addition, Appellants argue the claims recite improvements to a
technical field of online staffing. (App. Br. 19—20.)
We do not find Appellants’ arguments persuasive. We adopt the
Examiner’s conclusions provided in the Non-Final Office Action and
Answer. (Non-Final Act. 7—11; Ans. 3—10.) The Supreme Court has long
held that “[ljaws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014) (quoting Assoc, for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). The “abstract ideas” category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134
S. Ct. at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355. The first step in the analysis is to “determine
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Application 14/511,869
whether the claims at issue are directed to one of those patent-ineligible
concepts,” such as an abstract idea. Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims “individually and ‘as an ordered combination’” to determine
whether there are additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). 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. (brackets in original) (quoting Mayo, 566
U.S. at 73.) The prohibition against patenting an abstract idea “‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.’”
Bilski v. Kappos, 561 U.S. 593, 610—11 (2010) (internal citation omitted.)
Appellants’ arguments focus on claim 1 — accordingly we select
claim 1 as representative in evaluating whether the claims are patent-eligible
under Section 101. See 37 C.F.R. § 41.37(c)(l)(iv). Turning to the first step
of the Alice inquiry, we agree with the Examiner that Appellants’ claim 1 is
reasonably characterized as directed to an abstract idea of “booking
temporary staffing assignments.” (Non-Final Act. 9.) All the components
recited in claim 1, including: (i) a data base containing staff profiles
including ratings; (ii) a software interface to rate employers; (iii) a software
notification module to notify selected individuals; (iv) a database containing
employer profiles including ratings and assignments; (v) a software search
interface; (vi) a software interface to match individuals to assignments; (vii)
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a software booking module; and (viii) a software audio or video interview
module, are consistent with the Examiner’s correct characterization of the
“booking temporary staffing assignments” abstract idea that is the subject of
the claims — which is a fundamental conventional business practice.
There is no definitive rule to determine what constitutes an “abstract
idea.” Rather, the Federal Circuit has explained that “both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous cases.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016); see
also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016) (explaining that, in determining whether claims are patent-
eligible under § 101, “the decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen—what prior cases were about, and which way they were decided”).
The Federal Circuit also noted that “examiners are to continue to determine
if the claim recites (i.e., sets forth or describes) a concept that is similar to
concepts previously found abstract by the courts.” Amdocs, 841 F.3d at
1294 n.2 (internal citation omitted.)
We are not persuaded DDR Holdings, involving subject matter which
changed how interactions operated on the Internet, is applicable to the
pending claims. DDR Holdings, 773 F.3d at 1257. The steps recited in the
claims involve routine personnel data gathering of characteristics and ratings
of employees, employers, and staffing assignments, searching and matching
data, followed by notifications and live interviews. The subject matter of the
claims can be performed either mentally or with . . pencil and paper.’”
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir.
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Application 14/511,869
2011) (internal citation omitted.) “[A] method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101.” 654 F.3d at 1373. In this regard, the claims are similar to the
claims that the Federal Circuit determined are patent ineligible in Elec.
Power Grp., LLC v. Alstom, 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)
(collecting information and “analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, [are]
essentially mental processes within the abstract-idea category”). The
Federal Circuit has also held similar data manipulation claims to be directed
to patent-ineligible abstract idea — see OIP Tech., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (offer-based price optimization);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (tailoring information presented to a user based on
particular information); Digitech Image Techs., LLC v. Elecs. For Imaging,
Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014 (employing mathematical
algorithms to manipulate existing information); Accenture Global Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1346 (Fed. Cir. 2013)
(generating tasks in an insurance organization); and Versata Dev. Grp. v.
SAP Am., 793 F.3d 1306, 1333—34 (Fed. Cir. 2015) (price-determination
method involving arranging organizational and product group hierarchies).
Moreover, such “insignificant postsolution activity” as issuing
notifications and conducting live interviews after data collection and
analysis does not circumvent the prohibition against patenting an abstract
idea. Parker v. Flook, 437 U.S. 584, 590 (1978); Bilski v. Kappos, 561 U.S.
593,610-11 (2010).
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In addition, we are unpersuaded by Appellants’ argument that the
claims do not threaten to create problems relating to preemption. (App. Br.
12.) Lack of complete preemption does not make the claims any less
abstract. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014); Accenture, 728 F.3d at 1345; Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility”).
Turning to the second step of the Alice inquiry, we find nothing in the
claims that adds anything “significantly more” to transform the abstract
concept of task monitoring. Alice, 134 S. Ct. at 2357. Beyond that abstract
idea, the claims merely recite “‘well-understood, routine, conventional
activities],’” either by requiring conventional computer activities or routine
data-gathering steps. Alice, 134 S. Ct. at 2359 (quoting Mayo, 566 U.S. at
73.) Considered individually or taken together as an ordered combination,
the claim elements fail “to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Id. at 2357 (quoting Mayo, 566 U.S. at 72—73,
78.) For example, claim 1 recites processors, databases, and software
modules. This is similar to the circumstances of Alice, where “such
computer functions are ‘well-understood, routine, conventional activities],’
previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo,
566 U.S. at 73); see also buySAFE, 765 F.3d at 1355 (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”); Bancorp Servs., L.L.C. v.
Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a
computer “employed only for its most basic function . . . does not impose
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meaningful limits on the scope of those claims”). The broadly recited
computer implementation limitations of the claims do little to limit their
scope. Indeed, the Specification makes clear that the components are
standard computer devices and techniques — for example, the claimed
“software modules are created by techniques known to those of skill in the
art using machines, software, and languages known to the art.” (Spec. 1
113.)
Because Appellants’ claims are directed to a patent-ineligible abstract
concept and do not recite something “significantly more” under the second
prong of the Alice analysis, we sustain the Examiner’s 35 U.S.C. § 101
rejection of the pending claims.
DECISION
We affirm the Examiner’s decision rejecting claims 1—13 and 15—23.
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). See C.F.R.
§ 41.50(f).
AFFIRMED
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