Ex Parte Tomlinson

Patent Trials and Appeals Board

Jun 5, 2019

13492558 - (D) (P.T.A.B. Jun. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/492,558 06/08/2012 Patricia M. Tomlinson
30621 7590 06/05/2019
JENSEN & PUNTIGAM, P.S.
2033 6th Ave
Suite 990
SEAT1LE, WA 98121
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.
2122-1 3853
EXAMINER
CHAMPAGNE, LUNA
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
06/05/2019 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
Exparte
PATRICIA M. TOMLINSON 1
Appeal2017-010210
Application 13/492,558
Technology Center 3600
Before ERIC S. FRAHM, SCOTT B. HOW ARD, and
MATTHEW J. McNEILL, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-14, which constitute all the claims
pending in this application (App. Br. 6; Final Act. 2-10). We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant Patricia M. Tomlinson is the applicant, and is identified as the
real party in interest (App. Br. 3).
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Application 13/492,558
STATEMENT OF THE CASE
Introduction
Appellant's invention relates to an online membership-based
inventory system for stagers, designers, affiliates and their customers to
facilitate the storage, renting, and filling of staging inventory (Spec. ,r 1 ).
The system includes an online rental pool for stagers to share inventory, an
online resale venue for selling furniture and accessories no longer being
used, and a warehouse distribution center that offers short-term fluctuating
rates for storage (Spec. ,r 16). In one embodiment, the system further
includes credit card processing for all billing services, customized
bookkeeping, inventory management, pickup and delivery services, and
warehouse storage of furniture and accessories which are managed with an
online website (Spec. ,r 16).
Illustrative Claim
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An online membership-based inventory system, enabling
storage, rental and sharing of inventory items therein for a
plurality of members, comprising:
a processor operating with a stored software program;
a membership portion operated by the processor for
receiving and accepting membership applications of stagers and
designers for homes;
a rental pool of inventory, including inventory items of
said stager and designer members;
a warehouse for physically storing all inventory items
available to the stager and designer members[,] wherein said all
inventory items are stored, rented and returned in operation of
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the inventory system, wherein inventory items are physically
transmitted to the warehouse by members for rental and
physically transmitted to members from the warehouse to
satisfy orders provided by members for staging and/ or design
projects, and wherein inventory items in the warehouse are out
of physical control of the members;
a warehouse inventory portion operated by the processor
for storing information concerning inventory items available to
the members from the warehouse and for logging inventory
items into and out of the warehouse;
an order-based communication portion operated by the
processor enabling the staging and designer members to access
the stored inventory information and to select, order and return
items from the warehouse inventory for rental and/or to store
inventory items in the warehouse, wherein a single order by a
member can be for both a single item or a plurality of items
from the warehouse inventory in the same order, wherein the
plurality of items in the single order can be owned both by a
single member or by a plurality of different members; and
an accounting portion operated by the processor for
tracking and providing accounting information to the members
concerning rentals from the warehouse inventory by the
members, and/or storage of inventory items in the warehouse,
including inventory items of the members, wherein the
accounting information includes rental payments made to
members for rental of their inventory items and payments made
by members for completed orders of rental items from
warehouse inventory owned by others, wherein payments are
made under control of the accounting portion to all of the
individual owners of inventory items listed on each order,
respectively, on an order by order basis.
The Examiner's Rejections
(1) Claims 1-14 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter (Final Act. 2).
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(2) Claims 1-7, 10, 11, and 14 stand rejected underpre-AIA 35
U.S.C. I03(a) as being unpatentable over Yoon (US 8,682,804 Bl),
Saltzman et al. (US 7,895,081 Bl) ("Saltzman"), and Bezos et al. (US
2003/0083961 Al) ("Bezos") (Final Act. 3-7).
(3) Claim 8 stands rejected under pre-AIA 35 U.S.C. I03(a) as being
unpatentable over Yoon, Saltzman, Bezos, and Official Notice (Final Act.
7).
(4) Claim 9 stands rejected under pre-AIA 35 U.S.C. I03(a) as being
unpatentable over Yoon, Saltzman, Bezos, and Walker (US 2008/0065489
Al) (Final Act. 7-8).
(5) Claims 12 and 13 stand rejected under pre-AIA 35 U.S.C. I03(a)
as being unpatentable over Yoon, Saltzman, Bezos, and Yu (US
2010/0153277 Al) (Final Act. 8).
Issues on Appeal
Based on Appellant's arguments in the Appeal Brief (App. Br. 6-12),
in light of the Examiner's response to Appellant's arguments in the Appeal
Brief (Ans. 2---6), the following principal issues are presented on appeal:
(1) Did the Examiner err in rejecting claims 1-14 under 35 U.S.C.
§ 101 because the claimed invention is directed to patent-ineligible subject
matter?
(2) Did the Examiner err in rejecting claims 1-14 under 35 U.S.C.
§ I03(a) as being unpatentable over the base combination of Yoon, Saltzman
and Bezos?
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ANALYSIS
Patent Eligibility
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. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77-80 (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, 573 U.S. at
217. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. 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 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, but are not limited to, certain
methods of organizing human activity, such as fundamental economic
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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 (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 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 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). The
Supreme Court continued by qualifying its findings, indicating 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 to a known structure or process may well be deserving
of patent protection.").
If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step of the Alice and Mayo
framework where the elements of the claims are considered "individually
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and 'as an ordered combination' to determine whether the additional
elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78-79).
This second step is described as "a search for an 'inventive concept'-i.e.,
an element or combination of elements that is ' ... significantly more than
... the [ineligible concept] itself."' Id. at 217-218 ( alteration in original)
(quoting Mayo, 566 U.S. at 72-73). "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]."' Alice, 573 U.S.
at 221 ( 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 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
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
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised Guidance").
Under that guidance, after determining that a claim falls within one of the
statutory categories under § 101 (hereinafter "Step 1 "), we look to whether
the claim recites:
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( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes) (hereinafter "Step 2A, prong 1 "); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h))
(hereinafter "Step 2A, prong 2").
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:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 106.05(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. 2
See 2019 Revised Guidance.
With regard to the patent eligibility rejection, we have reviewed the
Examiner's rejection (Final Act. 2) in light of Appellant's contentions in the
Appeal Brief (App. Br. 6-9) that the Examiner has erred, as well as the
Examiner's response to Appellant's arguments in the Appeal Brief (Ans. 2-
3). We disagree with Appellant's arguments in the Appeal Brief (see App.
Br. 6-9). Except as noted below, we adopt as our own: (1) the findings,
conclusions, and reasons set forth by the Examiner in the action from which
this appeal is taken (Final Act. 2), and (2) the reasons set forth by the
Examiner in the Examiner's Answer in response to Appellant's Appeal Brief
(Ans. 2-3). We concur with the conclusions reached by the Examiner, as
2 Items (3) and ( 4) are collectively referred to as "Step 2B" hereinafter and
in the 2019 Revised Guidance.
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well as the Examiner's interpretations of the claim limitations. We highlight
the following additional points.
Revised Guidance Steps 1 and 2A, Prong 1
The Examiner, rejecting the claims as a single group, determines that
the claims are directed to the abstract ideas of (i) "enabling rental of shared
inventory items" by "manipulating data to facilitate rental of items" in a
manner well-known to the industry (Final Act. 2); and (ii) "tracking
inventory and facilitating exchange among members" (Ans. 3), which are
"conventional business practices" (Ans. 3), and therefore an abstract idea.
We agree.
Appellant contends the Examiner erred by "describing [the] claim[ s]
at a high level of abstraction, 'untethered from the language of the claim"'
(App. Br. 6), because "the claimed system is not a broadly defined inventory
rental system where the inventory items are owned by an entity other than
the customers, but rather a system where all of the inventory items are
owned by and are available only to members" (App. Br. 6). Notably, sole
independent claim 1 does not recite "where all of the inventory items are
owned by and are available only to members" as argued by Appellant (see
App. Br. 6). Appellant goes on to argue that the "'brick and mortar' aspect"
of the recited inventory system is "a specific improvement in how an
inventory system comprised of members, with inventory owned by
members, operates" (App. Br. 7), because the recited inventory system
includes a physical warehouse, where "[ t ]he warehouse provides for storage
of physical inventory items" (App. Br. 8).
We are not persuaded of Examiner error. Appellant argues the claims
together as a single group (App. Br. 6 ("Independent claim 1 and dependent
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claims 2-14 stand or fall together relative to 35 USC 101"); see also
generally App. Br. 6-9), and we select independent claim 1 as representative
in our analysis below. See 37 C.F.R. § 4I.37(c)(l)(iv) ("When multiple
claims subject to the same ground of rejection are argued as a group or
subgroup by appellant, the Board may select a single claim from the group
or subgroup and may decide the appeal as to the ground of rejection with
respect to the group or subgroup on the basis of the selected claim alone.").
First, under Step 1, we look to whether claim 1 falls within a statutory
category (i.e., a process, machine, manufacture, or composition of matter).
Claim 1 recites: "An online membership-based inventory system, enabling
storage, rental and sharing of inventory items therein for a plurality of
members, comprising ... a processor ... a membership portion ... a rental
pool of inventory ... a warehouse ... a warehouse inventory portion ... an
order-based communication portion ... and an accounting portion," where
all of the recited portions are "operated by the processor" ( claim 1 ).
Although claim 1 is mainly concerned with the steps of a process, claim 1
recites a system having a processor, physical inventory, and a warehouse.
Accordingly, we determine that claim 1 falls within the "machine" and
"process" categories of§ 101.
Next, under Step 2A, Prong 1, we determine whether claim 1 recites
an abstract idea. Claim 1 recites the following steps:
(i) "receiving and accepting membership applications," "storing
information concerning inventory items,"
(ii) "logging inventory items,"
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(iii) "enabling access" to "stored inventory information" and
"select[ing], order[ing] and retum[ing] items from the
warehouse inventory," and
(iv) "tracking and providing accounting information" including [a]
"rental payments" and "payments made by members for
completed orders" ... "and/or [b] storage of inventory items in
the warehouse, including inventory items of the members."
Claim 1 essentially recites a warehouse inventory system for renting
items to members, which is a business practice and fundamental economic
practice, which are both methods of organizing human activity. And, based
on the above construction, the claim 1 limitations excerpted above also
recite gathering payment information from members and performing at least
part of a payment transaction (see e.g., the functions recited in the
"accounting portion" at the end of claim 1 ). This is analogous to a clerk at a
warehouse managing a rental inventory and taking payments, except that
here, the process is performed by the processor through the World Wide
Web.
The Federal Circuit has found that performing a payment transaction,
including the collecting and storing of transaction data (such as in this case,
inventory and payment information), is a well-known business practice that
is not patent eligible. See, e.g., Smart Sys. Innovations, LLC v. Chicago
Transit Auth., 873 F.3d 1364, 1371-72 (Fed. Cir. 2017) ("Taken together,
the Asserted Claims are directed to the formation of financial transactions in
a particular field ... and data collection related to such transactions," which
is "an abstract idea under Alice step one."); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347
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(Fed. Cir. 2014) (summarizing precedent in which "claims directed to the
performance of certain financial transactions" involve abstract ideas and
holding that claims drawn to the abstract concept of financial transaction-
related "data collection, recognition, and storage is undisputedly well-
known"); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370
(Fed. Cir. 2011) ( finding a method for "verifying the validity of a credit card
transaction over the Internet" to be an abstract idea).
We are not persuaded by Appellant's argument that the Examiner has
oversimplified the claims in determining they are focused on an abstract idea
(see App. Br. 6-7). As discussed above, certain limitations in claim 1
essentially recite the fundamental economic practice of tracking and
providing payment and inventory information. The fact that we or the
Examiner may refer to this practice by the shorthand "enabling rental of
shared inventory items" does not change the outcome of the analysis. See
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An
abstract idea can generally be described at different levels of abstraction ....
The Board's slight revision of its abstract idea analysis does not impact the
patentability analysis.").
Accordingly, we determine that the claim 1 limitations quoted above
recite a fundamental economic practice or business relation between people,
which falls within the category of abstract ideas referred to as certain
methods of organizing human activity under the Revised Guidance.
Revised Guidance Step 2A, Prong 2
Appellant's claim 1 also recites additional elements beyond the
abstract storage and rental system. These additional elements include the
following components: "a processor," "a rental pool of inventory," and "a
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warehouse." Under Step 2A, Prong 2, we evaluate these additional elements
to determine whether the additional elements integrate the abstract payment
transaction into a practical application.
Regarding the "processor," the Specification provides that "[a]ll
services are managed with an on-line website" (Spec. ,r 16), and "[t]he
system is carried out with a computer program control, shown generally at
31, controlling all of the elements of Figure 1" (Spec. ,r 23). Further, "[t]he
inventory system is connected to the bookkeeping system and billing system,
which is automated. The only manual operation is the warehouse team,
which physically moves the furniture, and the person responsible for logging
it into the on-line system" (Spec. ,r 24). Finally, Appellant does not provide
the complete code needed to perform the functions of the invention, because
"original Figures 1-9 and the above description [see Spec. ,r,r 23-32] are
sufficient to enable an ordinary skilled programmer to produce a code to
accomplish the functionality of the overall system" (Spec. ,r 32).
The written description thus describes the processor operating on the
World Wide Web in a manner that indicates the components and the
functions they perform were well known in the art. See Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)
( explaining that "a patent need not teach, and preferably omits, what is well
known in the art"); see also Intellectual Ventures I LLC v. Erie Indem. Co.,
850 F.3d 1315, 1331 (Fed. Cir. 2017) ("The claimed mobile interface is so
lacking in implementation details that it amounts to merely a generic
component ( software, hardware, or firmware) that permits the performance
of the abstract idea, i.e., to retrieve the user-specific resources.").
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In view of the foregoing, a conventional computer can be used to
implement any of the components or steps of claim 1. Accordingly, we
determine that the recited components merely amount to using computers as
tools to implement the abstract payment transaction and inventory tracking,
which does not provide for the integration of the abstract idea into a practical
application. See MPEP § 2106.05(±) ("Use of a computer or other
machinery in its ordinary capacity for economic or other tasks ( e.g., to
receive, store, or transmit data) or simply adding a general purpose computer
or computer components after the fact to an abstract idea ( e.g., a
fundamental economic practice or mathematical equation) does not provide
significantly more.").
The steps of "receiving and accepting membership applications" and
"tracking and providing accounting information" including [a] "rental
payments" and "payments made by members for completed orders" ...
"and/or [b] storage of inventory items in the warehouse, including inventory
items of the members" also amount to using computers as tools to perform
the abstract idea. See MPEP § 2106.05(±). Because Appellant discloses
using an on-line website to manage all services (Spec. ,r 16), and the
processor of the recited invention (see Fig. 1, control 31) runs software to
control the provision of the on-line website, the recited "online membership-
based inventory system" only supplements the recited "rental pool of
inventory" and "warehouse" with the use of "a processor" which runs
software on the World Wide Web. In other words, receiving membership
applications and payments through a Web page, and then generating and
sending successive iterations of the Web page, is part of the normal
operation of the World Wide Web over the Internet. The Federal Circuit has
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found that the recitation of basic Web features does not establish patent
eligibility. See Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1347--48 (Fed. Cir. 2015) (agreeing with the district court's finding
that the claimed ''use of a conventional web browser Back and Forward
navigational functionalities without data loss in an online application
consisting of dynamically generated web pages" was not patent eligible).
With regard to the "rental pool of inventory" and "warehouse," we
evaluate these additional elements to determine whether they integrate the
abstract idea discussed above (the judicial exception) into a practical
application (USPTO's Step 2A, Prong 2). The additional elements of
inventory and a warehouse do not apply the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that it is
more than a drafting effort designed to monopolize the exception. See Alice,
573 U.S. at 221-24 (citing Mayo, 566 U.S. at 78-85). Rather, claim 1
recites a processor and a warehouse containing inventory that are utilized as
tools to perform the judicial exception. Utilizing a computer as a tool to
perform the abstract idea does not impose a meaningful limit on an abstract
idea. See MPEP § 2106.05([); see also Alice, 573 U.S. at 223 ("[I]f [the]
recitation of a computer amounts to a mere instruction to implement an
abstract idea on a computer that addition cannot impart patent eligibility"
( quotations and internal citations omitted)).
Accordingly, we find claim 1 recites a judicial exception, namely, the
combination of the abstract ideas of collecting and storing inventory and
transaction data, and evaluating the inventory and transaction data to identify
a provider of a desired good or service that meets a desired provider
characteristic. See Recognicorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327
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(Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea
( encoding and decoding) does not render the claim non-abstract.").
We are not persuaded by Appellant's argument that the "claimed
combination thus defines a practical improvement" (App. Br. 9). As
discussed above, the fact that claim 1 uses a processor to perform the recited
functions does not add a meaningful limitation because this is part of the
normal operation of warehouses and rental processes, and merely shows the
use of basic technology as a tool to implement the abstract idea.
Accordingly, we conclude that claim 1, and the remaining claims
grouped therewith, are directed to an abstract idea that is not integrated into
a practical application.
Revised Guidance Step 2B
Having concluded claim 1 is directed to an abstract idea under Step
2A, we next evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself). 3 As directed by our reviewing court, we search
for an "'inventive concept' sufficient to 'transform the nature of the claim
into a patent-eligible application."' McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Alice, 573 U.S. at
217). The implementation of the abstract idea involved must be "more than
3 We note the patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (alteration in original) ( quoting Alice, 573 U.S. at 225). The "inventive
concept" "must be significantly more than the abstract idea itself, and cannot
simply be an instruction to implement or apply the abstract idea on a
computer." Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1349 (Fed. Cir. 2016) (citation omitted).
Here, the Examiner determined that claim 1 does not add significantly
more to the abstract idea (Final Act. 2; Ans. 3). Appellant contends the
recitation of a "warehouse containing all of the items of all of the individual
members" add specific limitations other than well-understood, routine, and
conventional activities by "enabl[ing] stagers and designers to have available
to them all of their furniture and accessory requirements on a short term
basis, with a single order" (App. Br. 8), thus provides significantly more
than the abstract idea identified by the Examiner. We are not persuaded of
Examiner error.
As previously discussed, the additional elements in claim 1 that
comprise various components and steps can be implemented using
conventional computers, rental inventory, and a warehouse. That is,
Appellant's Specification itself describes the additional elements as being
well-understood, routine, and conventional. Such conventional computer
components and operations "do not alone transform an otherwise abstract
idea into patent-eligible subject matter." FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d
at 1256). Therefore, we are not persuaded by Appellant's argument that the
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"claimed combination thus defines a practical improvement and provides
'significantly more' than the abstract idea" (App. Br. 9).
Appellant's argument that "the claimed order portion and accounting
portion enables convenient system accommodation for thousands of orders
from hundreds of different members for a large number of items at separate
warehouse locations" is unpersuasive for two reasons. Id. First, claim 1
only recites a single warehouse. Second, "relying on a computer to perform
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible." See OIP Technologies, Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015).
Therefore, under the US PTO' s Revised Patent Eligibility Guidance,
informed by our governing case law concerning 35 U.S.C. § 101, the
Examiner did not err in concluding claim 1 ( and claims 2-14 grouped
therewith) is directed to a judicial exception, i.e., an abstract idea or
combination of abstract ideas, without significantly more, and thus is patent-
ineligible under § 101. In view of the foregoing, we sustain the Examiner's
§ 101 rejection of claims 1-14 as being directed to patent-ineligible subject
matter.
Obviousness
With regard to the obviousness rejections, we have reviewed the
Examiner's rejections (Final Act. 3-10) in light of Appellant's contentions
in the Appeal Brief (App. Br. 9-12) that the Examiner has erred, as well as
the Examiner's response to Appellant's arguments in the Appeal Brief (Ans.
3---6). No Reply Brief has been presented. Therefore, Appellant has not
disputed the Examiner's articulated reasoning and findings found at pages
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3---6 of the Answer, including the new citations to Yoon (see Ans. 4),
Saltzman (see Ans. 4), and Bezos (see Ans. 5---6). We disagree with
Appellant's arguments in the Appeal Brief. Except as noted below, we
adopt as our own: (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken (Final Act. 3-10) and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellant's Appeal Brief (Ans. 3---6). We concur with the conclusions
reached by the Examiner, as well as the Examiner's interpretations of the
claim limitations. We highlight the following additional points.
The Examiner has provided a factual basis and articulated reasoning
with a rational underpinning to support the conclusion of obviousness with
regard to claim 1 (see Final Act. 3-5; Ans. 3---6). See KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with the Examiner that:
Saltzman facilitates item transactions in a marketplace, by
taking physical custody of items being provided from
customers and then providing those items to the customers who
desire to receive them. The marketplace may take various
forms, such as brick-and-mortar. Therefore, Saltzman teaches
taking physical custody of items in a brick and mortar
store/warehouse. (See e.g. col. 4, lines 51-55; col. 12, lines 59-
63).
(Ans. 3--4; see also Final Act. 4 (making a similar finding)).
Specifically, column 12, lines 59 through 63 of Saltzman discloses
"taking physical custody of items being provided from customers and then
providing those items to the customers who desire to receive them" (12:59-
63). Column 4, lines 51-55 of Saltzman supports this disclosure by
describing that "systems such as the new item marketplace 130 and the used
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item marketplace 140 may each take various forms in various embodiments,
such as physical brick-and-mortar stores operated by retailers, physical or
electronic auction sites, etc" (4:51-55) (emphasis added). Thus, contrary to
Appellant's arguments that Saltzman does not teach or suggest, "a brick and
mortar warehouse in which staging items are stored, rented and returned"
(App. Br. 10), Saltzman teaches or suggests a brick and mortar warehouse
for specifically storing items.
Appellant argues, "Bezos involves individual purchasers who are
independent, unrelated to other purchasers, who purchase items from
unrelated sellers, who themselves are unrelated. It is simply a buy/sell
marketplace arrangement" (App. Br. 11) (emphasis added). We find
Appellant's arguments are not commensurate in scope with the express
language of independent claim 1, because claim 1 does not require
individual purchasers be independent and unrelated to other purchasers.
Claim 1 does not require the members to be independent and/ or unrelated to
other members or purchasers. Instead, claim 1 merely recites that purchases
are made by "stager and designer members." As a result, Appellant's
arguments directed to Bezos' purchasers not being individual purchasers
who are independent and unrelated to other purchasers, and/ or who purchase
items from unrelated sellers, are not persuasive since they are not
commensurate with the scope of claim 1. See In re Self, 671 F .2d 1344,
1348 (CCP A 1982) ("[ A Jppellant' s arguments fail from the outset because ...
they are not based on limitations appearing in the claims."); In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) ("The] proffered facts ... are not
commensurate with the claim scope and are therefore unpersuasive.").
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Appellant further argues, "the order system of Bezo [ s] does not teach
or suggest including payments by others for items provided by the
purchaser" (App. Br. 11 ). However, we agree with the Examiner (Ans. 6)
that:
Bezos teaches that purchase histories of the users are
maintained and the system allows them to resell previously
bought items by simply selecting that item from a listing of
his/her purchase history (see e.g. paragraph 0059). Therefore,
since the user in Bezos can be both a buyer and a seller, and the
system handles the accounting process, it clearly anticipates
"including payment by others for items provided by the
purchaser".
(Ans. 6; see also Final Act. 5, citing Bezos ,r,r 83, 109 (making a
similar finding)).
Specifically, paragraph 59 of Bezos discloses "users may also be
permitted to add marketplace listings from their respective purchase
histories ... the marketplace system maintains user purchase histories that
reflect the purchases made by each user of the system" (Bezos ,r 59). And,
paragraph 83 of Bezos discloses "the marketplace system typically handles
the collections process (e.g., charges the buyer's credit card), and deposits
the resulting proceeds (minus a commission) into a bank account of the
seller)" (Bezos ,r 83). Thus, Bezos teaches or suggests including payments
by others for items provided by the purchaser.
In view of the foregoing, we also disagree with Appellant's assertion
that "i[ n] the marketplace system of Bezos one way orders are made and
goods are received by a customer from a selected one of perhaps several
suppliers, independent of the customer and of each other" (App. Br. 11 ).
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With regard to Appellant's arguments (App. Br. 11) concerning a lack
of motivation or reason for one skilled in the art to utilize the teaching of
Bezos relative to a membership-based inventory control system involving a
related plurality of members who share a common accessible inventory, we
find these arguments unpersuasive in view of the Examiner's rationale
articulated from pages 4 through 5 of the Final Rejection (see e.g., Final Act.
5 ("in order to assist buyers in efficiently locating marketplace listings and
provide accuracy and completeness of product information supplied by
sellers (see e.g. paragraphs 0013, 0014)"). Again, Appellant has not filed a
Reply Brief or otherwise shown error with persuasive argument or evidence.
In view of the foregoing, we sustain the Examiner's obviousness
rejection of representative independent claim 1, as well as claims 2-7, 10,
11, and 14 grouped therewith.
For similar reasons, and because Appellant relies on the arguments for
claim 1 as to the patentability of claims 8, 9, 12, and 13 (see App. Br. 11 ),
we also sustain the Examiner's obviousness rejections of claims 8, 9, 12, and
13 over the same base combination of Yoon, Saltzman, and Bezos.
CONCLUSIONS
(1) Appellant has not shown the Examiner erred in rejecting claims 1-
14 under 35 U.S.C. § 101.
(2) Appellant has not shown the Examiner erred in rejecting claims 1-
14 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision to reject claims 1-14.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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