Kevin Wang

Patent Trials and Appeals Board

Dec 17, 2021

2021000125 (P.T.A.B. Dec. 17, 2021)

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.
15/717,594 09/27/2017 Kevin Sunlin Wang 10235-3-CIP 7732
22442 7590 12/17/2021
Sheridan Ross PC
1560 Broadway
Suite 1200
Denver, CO 80202
EXAMINER
FADOK, MARK A
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
12/17/2021 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):
e-docket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEVIN SUNLIN WANG
____________

Appeal 2021-000125
Application 15/717,594
Technology Center 3600
____________

Before BIBHU R. MOHANTY, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Kevin S. Wang (“Appellant”)1 filed a Request for Rehearing on April
26, 2021 (“Request”) pursuant to 37 C.F.R. § 41.52 for reconsideration of
our Decision on Appeal, mailed February 26, 2021 (“Decision”). The
Decision affirmed the Examiner’s rejection of claims 1–4, 7–13, 15, and 40–
57 under 35 U.S.C. § 101 as being directed to an abstract idea without
significantly more. See Decision 18. We have jurisdiction over the Request
under 35 U.S.C. § 6(b).
We note at the outset that a Request for Rehearing “must state with

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Bynfor
Inc.” Appeal Br. 2.
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particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 C.F.R. § 41.52(a)(1). A Request for Rehearing is not an
opportunity to rehash arguments raised in the briefs. Neither is it an
opportunity to merely express disagreement with a decision without setting
forth points believed to have been misapprehended or overlooked.
Arguments not raised in the briefs before the Board and evidence not
previously relied on in the briefs also are not permitted except in the limited
circumstances set forth in § 41.52 (a)(2) though (a)(4). Id.
ANALYSIS
Turning to the Request, Appellant initially contends:
The BOARD acknowledged that the Appellant argues all
claims as a group and appeals from the decision rejecting claims
1—4, 7—13, 15, and 40—57, which constitute all pending
claims for review, but held that Claim 43 is representative of the
subject matter on appeal. (see DECISION, pg.5-6). The
Appellant respectfully disagrees that Claim 43 is representative.
Appellant maintained that limitations of dependent claims bear
also on patent eligibility and never agreed to make claim 43 as
the sole representative since all of the dependent claims are
properly preserved on appeal. Claims 8 and 48 are separately
argued on page 20 of Appellant’s Brief On Appeal. There is no
rationale that justifies treating claim 43 as the sole representative
while ignoring the remainder of the dependent claims without
adjudication and explanation for why they are not patent eligible.
Request 2. Appellant is incorrect.
As cited on page 5 of our Decision, 37 C.F.R. § 41.37(c)(1)(iv)
provides:
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. . . . [T]he
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failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument
that the Board must consider the patentability of any grouped
claim separately. Under each heading identifying the ground of
rejection being contested, any claim(s) argued separately or as a
subgroup shall be argued under a separate subheading that
identifies the claim(s) by number. A statement which merely
points out what a claim recites will not be considered an
argument for separate patentability of the claim.

37 C.F.R. § 41.37(c)(1)(iv) (emphases added). Because Appellant argued all
the rejected claims as a group, we properly selected claim 43 from the group
and decided the appeal as to the section 101 ground of rejection on the basis
of that selected claim.
Appellant’s single sentence on page 20 of the Appeal Brief, which
states: “In addition, some of steps must be performed by a computer, such as
verifying/validating the bid amount in a sealed bid reverse auction such as
recited in claims 8 and 48,” was not argued under a separate subheading and
is therefore not considered an argument for separate patentability of claims 8
and 48. Regardless, we have reviewed claims 8 and 48, but we are not
persuaded that these claims are patent-eligible under 35 U.S.C. § 101.
Claims 8 and 48 recite processing bid data according to a preset rule to store
accepted bid data on the server. Although these claims may limit the scope
of the abstract idea their character remains unchanged, especially given that
they provide no insight to improvements in computer functionality beyond
what one would expect from using a generic computer as a tool in
performing the functions claimed. We also deny Appellant’s request to
review “all dependent claims” because, as discussed, Appellant’s failure to
separately argue those claims constitutes a waiver.
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Appellant contends our “DECISION failed to adjudicate whether the
claimed invention provides a technological solution to one or more
technological problems, such as shills, fake ID and bid e-snipping, in the
online auction industry for being patent eligible under Prong one of Step
2A.” Request 2 (citing article by Parsons). Appellant’s contention is
unavailing.
The proper analysis under Prong One of Step 2A is to “evaluate
whether the claim recites a judicial exception.” 2019 Revised Guidance,
84 Fed. Reg. 54. To determine whether a claim recites an abstract idea in
Prong One, we identified the specific limitations in the claim under
examination (individually or in combination) that recite an abstract idea and
determined whether the identified limitations fall within the subject matter
groupings of abstract ideas enumerated in Section I of the 2019 Revised
Guidance. See Decision 5–12. We did not overlook this argument in our
analysis under Prong One of Step 2A. As noted in our Decision, we
“considered Appellant’s remaining arguments, but . . . f[ound] them
unpersuasive” of error as part of the Examiner’s Prong One analysis.
Decision 17; see MPEP 2106.05(a) (“an examiner should evaluate whether a
claim contains an improvement to the functioning of a computer or to any
other technology or technical field at Step 2A Prong Two and Step 2B”).
On pages 4–9 of the Request, Appellant expresses disagreement with
various aspects of our Decision. As discussed, a Request for Rehearing is
not an opportunity to rehash arguments raised in the briefs or an opportunity
to express disagreement with a decision. The proper course for an appellant
dissatisfied with a Board decision is to seek judicial review, not to file a
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Request for Rehearing to reargue issues that already have been decided. See
35 U.S.C. §§ 141, 145.
Under Prong Two of Step 2A, Appellant contends:
The commitment, recalculation and allocation are included in
one claim, and there is no reason and legal basis to separate three
features while in one claim and to not adjudicate in one Prong,
but instead in a different step. . . . Therefore, the DECISION did
not recognize the claim as an ordered combination when it
separated three features in one claim without a legal basis. This
is clearly violating legal precedent and USPTO guideline.
Request 10. We disagree.
Our Decision distinguished the “commitment” and “recalculation”
features from the “allocation” feature consistent with Appellant’s
Specification. See Decision 12, 14. We considered claim 43 as a whole
under Prong Two of Step 2A (Decision 15), and under Step 2B found that
“[a]s an ordered combination, the additional elements provide no more than
when they are considered individually” . . . because “[t]hey are used as tools
to implement the judicial exception.” Decision 17. Appellant’s additional
arguments on pages 10–12 of the Request express disagreement with our
opinion without setting forth points believed to have been misapprehended
or overlooked.
Under Step 2B, Appellant contends: “Nowhere did the DECISION
analyze or even mention that any of the three features discussed above are
well-known, routine or conventional.” Request 13. We disagree because
our Decision identified that “[t]he ‘commitment’ and ‘allocation’ features of
‘receiving, by the auction server, one or more sets of commitment data’ and
‘transferring for display, on the one or more remote computing devices’ are
each described in the Specification as being performed by generic and
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conventional computing components.” Decision 16 (citing Spec. ¶¶ 45–49,
114–120, Figs. 1A, 1B, 4). Our Decision also identified “[t]he ‘re-
calculation’ feature of processing data and carrying out mathematical
calculations, as demonstrated in the examples from the Specification” as the
“‘invocation of already-available computers that are not themselves
plausibly asserted to be an advance, for use in carrying out improved
mathematical calculations, amounts to a recitation of what is ‘well-
understood, routine, [and] conventional.’” Decision 16–17 (citing SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018)). Appellant’s
disagreement with those findings, argued on pages 13 and 14 of the Request,
is unavailing in a Request for Rehearing.
Regarding Appellant’s contention of novelty due to the lack of prior
art rejection on the merits of the claims (Request 13), we note that (1) “the
concept of inventiveness is distinct from that of novelty;” and (2) “[t]he
inventiveness inquiry of [section] 101 should therefore not be confused with
the separate novelty inquiry of [section] 102 or the obviousness inquiry
of § 103.” Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1311
(Fed. Cir. 2016). Even assuming that the auction techniques claimed are
“[g]roundbreaking, innovative, or even brilliant,” that is not enough for
eligibility. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that
claimed techniques be novel and nonobvious in light of prior art, passing
muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012); Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a
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new abstract idea is still an abstract idea. The search for a [section] 101
inventive concept is thus distinct from demonstrating [section] 102
novelty.”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1315 (Fed. Cir. 2016) (same for obviousness).
CONCLUSION
Appellant’s Request is denied.
Outcome of Decision on Rehearing:
Claim(s) 35 U.S.C § Reference(s)/Basis Denied Granted
1–4, 7–13,
15, 40–57
101 Eligibility 1–4, 7–13,
15, 40–57

Final Outcome of Appeal after Rehearing:
Claim(s) 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7–13,
15, 40–57
101 Eligibility 1–4, 7–13,
15, 40–57

DENIED