Ex Parte Yankovich et al

Patent Trial and Appeal Board

Aug 18, 2017

13051476 (P.T.A.B. Aug. 18, 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.
13/051,476 03/18/2011 Steve Yankovich 2043.830US1 4609
49845 7590 08/22/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
HAQ, NAEEM U
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/22/2017 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 STEVE YANKOVICH,
RYAN MELCHER, and GANGA MUTHYALA
Appeal 2016-0020571
Application 13/051,4762
Technology Center 3600
Before CAROLYN D. THOMAS, SHARON FENICK, and
PHILLIP A. BENNETT, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 6—8, 10-12, and 17—25. (Appeal Br. 1.) We have
jurisdiction under 35 U.S.C. § 6(b)(1).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
June 5, 2015) and Reply Brief (“Reply Br.,” filed Dec. 7, 2015), and the
Examiner’s Answer (“Answer,” mailed Oct. 6, 2015), and Final Office
Action (“Final Action,” mailed Feb. 5, 2015).
2 Appellants identify eBay, Inc. as the real party in interest. App. Br. 2.
Appeal 2016-002057
Application 13/051,476
CLAIMED INVENTION
Appellants’ claimed invention relates to providing a histogram based
on an attribute found in the item listings of a list satisfying a request from a
client device. (Spec. Tflf 2, 48—52; Abstract.)
Claims 1,11, and 20 are the independent claims on appeal. Claims 1
and 21, reproduced below, are illustrative of the claimed subject matter:
1. A method comprising:
receiving a request from a client device;
determining, using one or more processors, a list of item
listings satisfying the request;
generating a histogram based on an attribute found in the item
listings of the list;
providing the list and the histogram to the client device, the
histogram including a slider that allows refinement of the
list of item listings based on a position of the slider on
the histogram;
receiving, from the client device, an indication to sell a first
item similar to a second item included in a selected item
listing from the list;
extracting information associated with the selected item listing;
pre-populating a template using the extracted information; and
receiving modified data for modifying the template.
21. The method of claim 1, wherein the attribute is at least
one of item size, item color, item condition, or reputation of
sellers of the item listings.
REJECTIONS
Claims 1, 2, 6—8, 10—12, and 17—25 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
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35U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patent-eligible. See, e.g., Alice Corp. Pty. Ltd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (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 Corp., 134 S. Ct.
at 2355. The first step in that 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. If the claims are not directed to a patent-ineligible concept, the
inquiry ends. Otherwise, the inquiry proceeds to the second step where the
elements of the claims are considered “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.” Alice
Corp., 134 S. Ct. at 2355 (quotingMayo, 132 S. Ct. at 1297).
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, 132 S. Ct. at 1293. Therefore, the Federal Circuit
has instructed that claims are to be considered in their entirety to determine
“whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1346 (Fed. Cir. 2015)).
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A. The Examiner’s Prima Facie Case
We are not persuaded, as an initial matter, by Appellants’ argument
that the Examiner has given only a conclusory statement in support of the
rejection and, thus, failed to establish a prima facie case of patent-
ineligibility. (Appeal Br. 9—15.) Appellants charge that the Examiner’s
Answer presents no required substantial evidence or clearly articulated
reasoning and underlying findings of fact to support the rejection of claim 1.
(Id. at 10.) Additionally, Appellants submit that the Examiner has not
established a prima facie case against the dependent claims, because the
Examiner did not address the additional elements of the dependent claims.
(Id. at 15-17.)
The Federal Circuit has repeatedly noted that “the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the USPTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it
set forth the statutory basis of the rejection, and the reference or references
relied on, in a sufficiently articulate and informative manner as to meet the
notice requirement of § 132. Id.', see also Chester v. Miller, 906 F.2d 1574,
1578 (Fed. Cir. 1990) (Section 132 “is violated when a rejection is so
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uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”).
Here, in rejecting the claims under § 101, the Examiner analyzed the
claims using the Alice!Mayo two-step framework. Specifically, the
Examiner notified Appellants that the claims are directed to a fundamental
economic practice, and therefore, to an abstract idea; and that the additional
claim elements, other than the abstract idea, “do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception.” (Final Action 2.) The Examiner, thus, notified Appellants of
the reasons for the rejection “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. And, in doing so, we find that the
Examiner set forth a prima facie case of unpatentability.
Contrary to Appellants’ assertions, neither the Administrative
Procedure Act, nor precedential decisions of our reviewing courts, nor the
Board’s non-precedential holding in Ex Parte Renald Possion, Appeal No.
2012-011084 (PTAB Feb. 27, 2015)3, stand for the proposition that the
Examiner must provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. There is
no such requirement. Appellants cite the MPEP’s review of the “substantial
evidence” standard. (Appeal Br. 11.) However, this standard is applicable
to findings of fact, and the determination of claim eligibility is a question of
law. See, e.g., para. IV “July 2015 Update: Subject Matter Eligibility” to
3 Available through the Public Patent Application Information Retrieval
system, http://portal.uspto.gov/pair/PublicPair, through reference to US
Patent Application No. 12/427,040.
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2014 Interim Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed.
Reg. 74618 (Dec. 16, 2014) (hereinafter “2014 Interim Guidance”) (“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 question of law. [] Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception, and in most cases
resolve the ultimate legal conclusion on eligibility without making any
factual findings”) (Emphasis added). Further, the Office did not change the
standard in the May 4, 2016 Memorandum, Formulating a Subject Matter
Eligibility Rejection and Evaluating the Applicant’s Response to a Subject
Matter Eligibility Rejection. Thus, we are not persuaded that the Examiner
has failed to meet an applicable standard in establishing a prima facie case
with respect to the independent claims.
With respect to the dependent claims, Appellants advance the same
arguments, and additionally argue that the Examiner has not presented
analysis of the additional claim limitations of these dependent claims.
(Appeal Br. 15—17.) We agree with the Examiner that “[t]he dependent
claims are directed to either further embellishing the abstract idea or adding
limitations that are routine and conventional” (Answer 6) and find that with
respect to these claims, the Examiner has established a prima facie case.
B. Streamlined Analysis
Appellants argue that the claims at issue “qualify for streamlined
analysis” under the 2014 Interim Guidance and do not seek to tie up a
judicial exception so that others cannot practice it, and therefore, should be
patentable under that streamlined analysis. (Appeal Br. 17—19.)
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We are not persuaded by Appellants’ arguments. We first note that the
Guidance does not carry the force of law, Enzo Biochem, Inc. v. Gen-Probe
Inc., 323 F.3d 956, 964 (Fed. Cir. 2002), as we must ensure we follow
binding precedent in evaluating whether the Examiner erred in rejecting the
claims as lacking patent-eligibility. Thus, even if the Examiner’s analysis is
not consistent with the Guidance, that inconsistency is not of itself
dispositive of Examiner error.
Although the Supreme Court has described “the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption,” Alice Corp., 134 S. Ct. at
2354, characterizing pre-emption as a driving concern for patent eligibility is
not the same as characterizing pre-emption as the sole test for patent
eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). Although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” (Id.)
Therefore, we are not persuaded Examiner erred in not finding the
claims patentable under a streamlined eligibility analysis.
C. Whether the Claims are Directed to a Patent-Ineligible Concept
Appellants argue that the claims at issue are not directed to a patent-
ineligible concept. (Appeal Br. 19—24.) Specifically, Appellants argue that
the claims “are directed to a specific set of operations for providing a list of
items and a histogram to a client device, the histogram including a slider that
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allows refinement of the list of item listings based on a position of the slider
on the histogram” which “is not a fundamental economic practice like risk
management or intermediated settlement.” {Id. at 20.) We agree with the
Examiner that the claims are directed to a fundamental economic practice
long prevalent in our system of commerce, namely, to “[determining a price
range for an item before selling a similar item.” (Answer 7.)
We agree with the Examiner’s conclusion that the claims describe the
fundamental economic practice of determining pricing for an item before
selling a similar item, which allows a user to “make [an item] more sellable
by pricing [it] appropriately.” (Spec. 1 15.) This concept is similar to other
fundamental economic concepts found to be abstract ideas by our reviewing
courts. For example, in DIP Technologies, the Federal Circuit found that
claims relating to a method of pricing a product for sale were directed to
“offer-based price optimization” combined with well-understood,
conventional activities related to computers or data-gathering. OIP
Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir.
2015). Similarly, in Versata, claims directed to determining a product price
“using the sorted pricing information” were found to be directed to an
abstract idea. Versata Dev. Group, Inc. v. SAP America, Inc., 793 F.3d
1306, 1312-13, 1333 (Fed. Cir. 2015).
Appellants argue that the claimed slider, which allows refinement of
the item listings based on the position of the slider on the histogram, is not
“long prevalent” in our system of commerce because of its “relative
novelty.” (Appeal Br. 21.) However, we agree with the Examiner that the
claimed histogram does not militate in favor of eligibility. Information
collection and analysis, including when limited to particular content, is
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within the realm of abstract ideas. See, e.g., Elec. Power Grp. LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that “collecting
information, analyzing it, and displaying certain results of the collection and
analysis” are “a familiar class of claims ‘directed to’ a patent-ineligible
concept”).
Appellants argue that the Examiner’s conclusions regarding the
claimed histogram are based on price histograms, and that as such they are
not applicable to the claimed histogram of claims 21 and 22, which specify
that a histogram is based on an attribute which “is at least one of item size,
item color, item condition, or reputation of sellers of the item listings.”
(Appeal Br. 33—34.) However, the Examiner has broadly concluded that “a
histogram is an abstract idea” (Answer 9), regardless of the type of
histogram. We agree with the Examiner that using other item attributes in
order to present item listing information to a user is similarly directed to
determining pricing for similar items (i.e., a reference to sell those items
which are similar with respect to the given attributes). Thus, various
attributes relate to price optimization by the use of one item “as a reference
to sell another similar item” (id at 10), combined with well-understood,
conventional activities related to computers or data-gathering within the
realm of abstract ideas. See OIP, 788 F.3d at 1362.
D. Whether Additional Elements Transform The Idea Into Patent-
Eligible Subject Matter
Turning to the second step of the Alice/Mayo analysis, Appellants
argue that the claims at issue recite a specially-configured computer.
(Appeal Br. 25.) We disagree. Limiting the abstract concepts of the claim
limitations by reciting “‘a client device’ and ‘one or more processors’
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performing particular operations” (id.) does not make the abstract concepts
patent-eligible under 35 U.S.C. § 101. As recognized by the Supreme Court,
“the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice, 134 S. Ct. at
2358; see id. at 2359 (concluding claims “simply instructing] the
practitioner to implement the abstract idea of intermediated settlement on a
generic computer” are not patent eligible); see also Ultramercial, 772 F.3d
at 715—16 (claims merely reciting abstract idea of using advertising as
currency as applied to particular technological environment of the Internet
not patent eligible); Accenture Global Servs., GmbH v. Guidewire Software,
Inc., 728 F.3d 1336, 1344^45 (Fed. Cir. 2013) (claims reciting “generalized
software components arranged to implement an abstract concept [of
generating insurance-policy-related tasks based on rules to be completed
upon the occurrence of an event] on a computer” not patent eligible);
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir. 2012)
(“[s]imply adding a ‘computer aided’ limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible” (internal citation omitted)). Appellants also argue that “it is clear
that the claims recite a specially-configured computer,” (Appeal Br. 25) but
do not cite, nor do we observe, any evidence in the record supporting this
assertion.
Similarly, we are unconvinced by Appellants’ arguments that
“generating a histogram” and “providing the list and the histogram to the
client device” are “not high level recitations directed to some abstract idea.”
(Appeal Br. 26.) We find that the claims are set out at a level of generality
indistinguishable from the underlying abstract idea and at best simply site
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the ineligible concept in a particular technological environment (“providing
. . . to a client device”). See Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1348 (Fed. Cir. 2015).
Appellants argue that the Examiner “provides no evidence why the
claims do not. . . ‘add a specific limitation other than what is well-
understood, routine and conventional in the operation of a generic
computer,’” (Appeal Br. 27) and that the “unique combination of
operations” in the claim are not conventional {id. at 29). Appellants argue,
[e]ven if a generic element of providing a histogram could be
considered a purely conventional function, providing the
histogram based on an attribute found in the item listings of the
list and including a slider that allows refinement of the list of
item listings based on a position of the slider on the histogram[]
is not.
(Id. ) We agree with the Examiner, however, that Appellants have not shown
how the ordered combination presented by the claims adds significantly
more to the abstract idea itself. (Answer 9.) Considered as an ordered
combination, the computer components of Appellants’ independent claim 1
add nothing that is not already present when the limitations are considered
separately. The claim limitations are merely part of the abstract idea itself,
i.e., the fundamental economic practice, combined with the siting of the
practice in a particular technological environment by identifying, receiving,
and displaying data responsive to user requests.
Appellants argue that the claims constitute an improvement to the
technical field. (Appeal Br. 30-31.) Appellants specifically argue that
“there is a technical field of machines that create listings.” (Id. at 30.) Even
accepting Appellants’ argument, there is a fundamental difference between
computer functionality improvements, on the one hand, and uses of existing
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computers as tools to perform a particular task, on the other. The Federal
Circuit applied this distinction in Enfish in rejecting a § 101 challenge at the
step one stage in the Alice analysis, because the claims at issue focused not
on asserted advances in uses to which existing computer capabilities could
be put, but on a specific type of data structure, i.e., a self-referential table for
a computer database, designed to improve the way a computer carries out its
basic functions of storing and retrieving data. Enfish, LLC v. Microsoft
Corp., 822 F.3d. 1327, 1335—36 (Fed. Cir. 2016). We find no parallel here
with the claims in Enfish nor any comparable aspect in the claims which
represents “an improvement to computer functionality.” Id. at 1335.
Similarly, contrary to the Appellants’ arguments (Appeal Br. 32—33) we
conclude none of the claims provides a solution “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014). Regarding Enfish and DDR, we note
the Specification provides no basis to support Appellants’ arguments. See,
e.g., Spec. 1113-14, 17-18, 60-71.
With respect to the Appellants’ preemption argument (Appeal Br. 32),
we refer again to our reviewing court’s guidance that although “preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa, 788 F.3d at
1379.
We are not persuaded that the Examiner erred in rejecting claims 1,2,
6—8, 10-12, and 17—25 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection.
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DECISION
The Examiner’s rejection of claims 1, 2, 6—8, 10—12, and 17—25 under
35 U.S.C. § 101 is affirmed.
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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