Ex Parte VonBergen et al

Patent Trial and Appeal Board

Oct 31, 2017

13396481 (P.T.A.B. Oct. 31, 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.
13/396,481 02/14/2012 Renee Gentry VonBergen 2043.018US2 9427
49845 7590 11/02/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
GARG, YOGESH C
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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 RENEE GENTRY VONBERGEN, ERIK RANNALS,
GEORGE LIANG, MAURA K. RANDALL, DAVID RACCAH, and
JENNIFER KOZENSKI
Appeal 2016-0075721
Application 13/396,481
Technology Center 3600
Before JOHN A. EVANS, SCOTT E. BAIN, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—18, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Ebay Inc. (App.
Br. 3.) We note that Appellants’ Appeal Brief is not paginated. We will
refer to pages in the brief starting from the cover page of the brief.
Appeal 2016-007572
Application 13/396,481
STATEMENT OF THE CASE
Introduction
Appellants’ Specification states that the “present application relates
generally to network-based commerce, more particularly to network-based
commerce facility offer management methods and systems.” (Feb. 14, 2012
Specification (“Spec.”) 13.) Claim 1 is illustrative and is reproduced below:
1. A network-based commerce system including:
at least one processor;
at least one network interface device;
a presentation module executable by the at least one
processor to present a listing of an item for sale to a buying-user
via the at least one network interface device from the network-
based commerce system, the listing being to solicit an offer from
the user for the item for sale;
an offer module executable by the at least one processor to
receive, via the at least one network interface device, an offer
submitted by the buying-user as a pending offer with regard to
the item for sale; and
the presentation module being to communicate the
pending offer via a user interface of the network-based
commerce system to a selling-user, and to present, via the user
interface, a plurality of pending offers received by the offer
module from a plurality of buying-users to the selling-user, the
user interface adapted to receive, within a single view of the user
interface, input from the selling-user with regard to each of the
plurality of pending offers including an option to accept or reject
the received individual offers.
Rejection on Appeal
Claims 1—18 stand rejected under 35 U.S.C. § 101 because the claims
are not directed to patent eligible subject matter. (See Final Office Action
(mailed April 29, 2015) (“Final Act.”) 2-13.)
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We are not persuaded that the
Examiner erred in rejecting claims 1—18 under 35 U.S.C. § 101. We agree,
and adopt as our own, the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and in the Answer (Ans. 7-13;
Final Act. 2-13). We highlight and address specific arguments and findings
for emphasis as follows.
The Examiner rejects claims 1-18 under 35 U.S.C. § 101 because the
claims are not directed to patent eligible subject matter. (Final Act. 2—13.)
According to the Examiner:
Per step 2a, part 1 Mayo test,. . . [t]he practice of selling
and buying items is a part of fundamental economic practice.
Further, these steps of receiving, communicating, presenting
offers with option to accept or reject can be performed by a
human being using pen and paper and therefore the concept of
claim 1 is similar to the concepts involving a human activity
relating to commercial practices (for example, hedging in
Bilski) that have been found by the courts to be abstract idea.
The limitations that narrow the idea that is presenting the
plurality of offers to a seller in a single view with the option to
accept or reject or ignore, do not make the concept less
abstract. . . .
Per Step 2B, part 2, Mayo test,... the function performed
by the computer at each step of the process is purely
conventional. Using a computer to . . . are basic functions of a
computer, which are well-understood, routine, conventional
activities previously known to the industry, . . . The claim . . .
does not, for example, purport to improve the functioning of the
computer itself, or effect an improvement in any other
technology or technical field .... Instead, the claims at issue
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amount to nothing significantly more than an instruction to
apply the abstract idea of listing items for sale, receiving offers
from buyers, presenting those offers to seller who can either
accept or reject or ignore the buyer offers and related solutions
as part of a commercial transaction performed by a generic
computer and/or server. This is not enough to transform an
abstract idea into a patent-eligible invention.
{Id. at 4—8, original emphasis omitted.) Appellants contend that the
Examiner has not established a prima facie case, the claims are not directed
to an abstract idea, and even if they were, the claims include limitations that
are “significantly more” than the abstract idea. (App. Br. 11—27.)
Appellants, however, have not persuaded us that the Examiner erred.
Whether an invention is patent-eligible is an issue of law, which we
review de novo. An invention is patent-eligible if it claims a “new and
useful process, machine, manufacture, or composition of matter.” 35 U.S.C.
§101. The Supreme Court, however, has long interpreted § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134
S. Ct. 2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, IS—79 (2012)).
In accordance with that framework, we first determine whether the claim is
“directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
(“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.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
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petitioners’ application explain the basic concept of hedging, or protecting
against risk . . . Diamond v. Diehr, 450 U.S. 175, 184 (1981)
(“Analyzing respondents’ claims according to the above statements from our
cases, we think that a physical and chemical process for molding precision
synthetic rubber products falls within the § 101 categories of possibly
patentable subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 67. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.8, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an “inventive concept”—an element
or combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
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Prima Facie Case
As discussed above, the Examiner rejects claims 1—18 under
35U.S.C. § 101 because the claims are not directed to patent eligible subject
matter. (Final Act. 2-13.) Appellants contend that the Examiner has failed
to establish “a prima facie case that the claims are not directed to patent-
eligible subject matter.” (App. Br. 11—17.) Appellants, however, have not
persuaded us that the Examiner erred. In patent prosecution, the Examiner
carries the initial burden of establishing a prima facie case of unpatentability
“by adequately explaining] the shortcomings it perceives so that the
applicant is properly notified and able to respond.” Id. The statement of the
prima facie case, however, “need not be a full exposition on every
conceivable deficiency of a claim. Rather, its purpose is simply to provide
sufficient notice to the applicant to facilitate his effective submission of
information.” Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)
(citation omitted). Here, the Examiner performed the two-part Alice test by
identifying the abstract idea (i.e., “[t]he practice of selling and buying items
is a part of fundamental economic practice”) and determining whether the
claims amount to significantly more that than abstract idea itself (i.e., “the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of listing items for sale, receiving offers from buyers,
presenting those offers to seller who can either accept or reject or ignore the
buyer offers and related solutions as part of a commercial transaction
performed by a generic computer and/or server”). (Final Act. 4—8.) For
these reasons, we find that the Examiner has established a prima facie case.
Appellants also contend that “the Examiner has chosen not to base the
§ 101 rejection on substantial evidence . . . there is no evidence on the record
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that the invention, as defined by the particular claim limitations, is simply
some abstract idea of selling and buying items.” (App. Br. 15; Reply 4—5.)
According to Appellants, the Examiner failed to provide “substantial
evidence” to support his/her findings. (App. Br. 13—15.) There is, however,
no requirement that examiners must provide evidentiary support in every
case before a conclusion can be made that a claim is directed to an abstract
idea. See, e.g., para. IV “July 2015 Update: Subject Matter Eligibility” to
2014 Interim Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed.
Reg. 74618 (Dec. 16, 2014) (“The courts consider the determination of
whether a claim is eligible (which involves identifying whether an exception
such as an abstract idea is being claimed) to be a q uestion of law.
dy, courts do not rely on evidence that a claimed concept is a
exception, and in most cases resolve the ultimate legal conclusion on
eligibility without making any factual findings.” (emphasis added) (footnote
omitted)).2 Evidence may be helpful in certain situations where, for
instance, facts are in dispute, but it is not always necessary. Here,
Appellants do not, and cannot credibly, argue that the claims are not directed
to the “practice of selling and buying items,” as the Examiner finds, but
rather argue that the Examiner has not provided substantial evidence. (App.
Br. 11—15.) However, a plain reading of the claims supports the Examiner’s
findings that the claims are directed to the “practice of selling and buying
items.” (Final Act. 4.)
Appellants also contend that the Examiner has not “performed] any
actual comparison of the alleged abstract idea to any specific concept from
2 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update.pdf.
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any specific court decision.” (App. Br. 16; Reply 5—7.) This contention is
not persuasive because, even assuming arguendo that there is such a
requirement, the Final Action contains numerous citations and discussions of
various cases. (Final Act. 4—6, 9—10.) For example, the Examiner notes
that:
these steps of receiving, communicating, presenting offers with
option to accept or reject can be performed by a human being
using pen and paper and therefore the concept of claim 1 is
similar to the concepts involving a human activity relating to
commercial practices (for example, hedging in Bilski) that have
been found by the courts to be abstract idea.
{Id. at 4.) Therefore, Appellants’ contention that the “several cases [cited in
the Examiner’s Answer] were not listed in the Examiner’s final rejection[,
specifically, the Examiner cites Alice, Bilski,” is not credible. (Reply 6.)
Appellants’ further argument in its Reply (regarding theprima facie issue)
that “none of the Examiner cited cases (Alice, Bilski, Ultramercial, OIP
Tech, and buySafe) have claims directed towards a user interface at all,
much less a user interface that is specifically configured to allow a user to
simultaneously review and respond to multiple offers” is a new argument
that is raised in reply and is deemed waived. See In re Hyatt, 211 F.3d 1367,
1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to
the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834,
1837 (BPAI 2010) (explaining that arguments and evidence not timely
presented in the principal Brief, will not be considered when filed in a Reply
Brief, absent a showing of good cause explaining why the argument could
not have been presented in the Principal Brief); Ex parte Borden, 93
USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the
Rules do not require the Board to take up a belated argument that has not
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been addressed by the Examiner, absent a showing of good cause.”).
Moreover, as discussed below, providing a seller with a user interface to
review offers “to allow [the seller] to simultaneously review and respond to
multiple offers” (Reply 6) is simply using a computer to implement an
abstract idea (i.e., selling and buying items and presenting the plurality of
offers to a seller in a single view with the option to accept or reject or
ignore.)
We are similarly not persuaded by Appellants’ contention that “the
Examiner has not established a prima facie case against the dependent
claims for substantially the same reasons as enumerated above.” (App. Br.
16—17; Reply 7.) The Federal Circuit in Jung notes that
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notifying] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
35 U.S.C. § 132.
637 F.3d at 1362 (alterations in original). Here, the Examiner finds that
because “there is no meaningful distinction between the method, system and
manufacture claims or between the independent and dependent claims,
[therefore,] the same analysis will be applicable to all the claims as being
presented below considering claim 1 as the representative claim.” (Final
Act. 4, citation omitted; see also Ans. 11—13 (further explaining the rejection
of the dependent claims).) For the forgoing reasons, Appellants have not
have not persuaded us that the Examiner erred.
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Abstract Idea
With regard to the first step of Alice, the Examiner finds that the
claims are directed to the “practice of selling and buying items[, which] is a
part of fundamental economic practice.” (Final Act. 4.) The Examiner
further finds that the “limitations that narrow the idea that is presenting the
plurality of offers to a seller in a single view with the option to accept or
reject or ignore, do not make the concept less abstract.” (Id.; see also id. at
5, 8—10.) Appellants contend that the claims are not abstract because “[t]he
claims at issue are not directed to a fundamental practice long prevalent in
our system of commerce.” (App. Br. 18—20; Reply 8.) Specifically,
according to Appellants, the claims “do not define some fundamental
economic practice long prevalent in our system of commerce because user
interfaces, like the one required by the claims, are unique to electronic
devices and did not exist prior to the widespread use of computer and
internet technology” and “this is not just the computerization of some long
standing practice, but something that is necessarily ‘rooted in computer
technology’ like DDR Holdings.” (App. Br. 19—20.) We are not persuaded
by Appellants’ contention and we agree with the Examiner that the claims,
“as a whole amount[] to nothing more than generic computer functions
merely used to implement an abstract idea, such as an idea that could be
done by a human analog (i.e., by hand or by merely thinking).” (Ans. 6;
Final Act. 4—5.) Even assuming arguendo that “user interfaces, like the one
required by the claims, are unique to electronic devices [that] did not exist
prior to the widespread use of computer and internet technology,” that alone
(i.e., implementing an abstract idea using a general purpose computer) does
not make the underlying idea any less abstract. Alice, 134 S. Ct. at 2352
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(“[Mjerely requiring generic computer implementation fails to transform
[an] abstract idea into a patent-eligible invention.”).
We are similarly not persuaded by Appellants’ contention that it “is
not clear how an activity[,] which cannot be shown ever to have been
performed before[,] can be found to constitute a fundamental economic
practice” because “no [prior] art is cited” to show that it is either
“‘foundational’ or ‘well-known.’” (App. Br. 20; Reply 8.) The “practice of
selling and buying items [and] presenting . . . plurality of offers to a seller in
a single view with the option to accept[,] reject[,] or ignore” is such a basic
economic practice that one of ordinary skill in the art would understand.
Appellants further contend:
Like the claims of Enfish, the claims of the present case
have specific asserted improvement in computer capabilities and
they do not simply invoke the computer as a tool. The claims
recite an improvement to user interfaces, which is both an
improvement to the functioning of the computer itself since it
allows the computer to more efficiently display information and
receive input from a user in a wider variety of situations, not
merely just act as a tool in a commercial transaction.
(Reply 9—10, emphasis added.) Appellants’ contention is not persuasive
because the alleged improvement is mere attorney argument and a
conclusory statement, which is unsupported by factual evidence, and, thus is
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Inventive Concept
Regarding step two of Alice, Appellants argue that the claims of the
present application are directed toward eligible subject matter because they
include limitations that are significantly more than an abstract idea. (App.
Br. 20—27; Reply 12—17.) According to Appellants, the claims are “rooted in
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computer technology and solve a problem arising in the realm of computer
interfaces”:
As described above, the claims at issue are rooted in
technology [because] the claims require a “user interface of [a]
network-based commerce system” that is able to dynamically
update to display pending offers. Such a user interface is not
only rooted in computer technology, it essentially does not exist
outside of the context of computer systems.
Furthermore, the claims solve a technological problem
arising in the realm of computer interfaces. Specifically,
complicated user interfaces, especially user interfaces that
containing multiple different offers in different tabs or views, can
be difficult to use and result in user frustration and the potential
of users making non-optimal commerce decisions due to
inability to easily compare competing offers. This problems is
solved by the current claims by allowing a dynamic list of current
offers to be displayed “within a single view of the user interface”
and including an option to “accept or reject the received
individual offers.” Thus, the current claims are both rooted in
computer technology and solve a problem arising in the realm of
computer interfaces.
(App. Br. 26, emphases added.) Appellants, however, do not provide
persuasive evidence that the claim amounts to “significantly more” than the
abstract idea itself and we agree with the Examiner’s finding that nothing in
the claims adds an inventive concept that transforms the nature of the claim
into a patent-eligible application of the abstract idea. (Final Act. 6—8, 10—
12; Ans. 5—11.) As discussed above, just because “the claims [may] require
a ‘user interface of [a] network-based commerce system’ that is able to
[allegedly] dynamically update to display pending offers” (App. Br. 27) does
not mean necessary that the claims are “rooted in technology.” In other
words, as discussed above, just because the claims make use of a computer
to perform the steps of the claims does not mean that the claims are “rooted
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in technology.” Appellants have not provided evidence, rather than attorney
arguments, that the claims add an inventive concept that transforms the
nature of the claims into a patent-eligible application of the abstract idea.
We agree with the Examiner’s finding that “the computer acts as the
intermediary [and] do no more than implement the abstract idea of an
intermediary enabling a seller listing items for sale and allowing the seller
the option to either accept or reject the received offers” via a user interface.
(Ans. 7.) Moreover, the alleged “problem arising in the realm of computer
interfaces” (see, e.g., App. Br. 22—23, 27) is mere attorney argument and a
conclusory statement, which is unsupported by factual evidence, and, thus is
entitled to little probative value. In re Geisler, 116 F.3d at 1470.
Preemption
We are also not persuaded by Appellants’ contention that the “claims
at issue do not preempt the making, using, and selling of basic tools
scientific and technological work.” (App. Br. 27.) 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); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015)
(“[T]hat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
abstract.”), cert, denied, 136 S. Ct. 701 (2015). And, “[w]here a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.” Ariosa, 788 F.3d at 1379.
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For the foregoing reasons, because claims 1—18 are directed to an
abstract idea and nothing in the claims adds an inventive concept that
transforms the nature of the claim into a patent-eligible application of the
abstract idea, the claims are not patent-eligible under § 101. Therefore, we
sustain the 35 U.S.C. § 101 rejection of claims 1—18.
DECISION
We affirm the decision of the Examiner to reject claims 1—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)(l)(iv).
AFFIRMED
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