Kevin WangDownload PDFPatent Trials and Appeals BoardDec 17, 20212021000125 (P.T.A.B. Dec. 17, 2021) Copy Citation 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. Appeal 2021-000125 Application 15/717,594 2 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 Appeal 2021-000125 Application 15/717,594 3 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. Appeal 2021-000125 Application 15/717,594 4 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 Appeal 2021-000125 Application 15/717,594 5 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 Appeal 2021-000125 Application 15/717,594 6 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 Appeal 2021-000125 Application 15/717,594 7 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 Copy with citationCopy as parenthetical citation