Michael A. ZivinDownload PDFPatent Trials and Appeals BoardAug 12, 201911729030 - (D) (P.T.A.B. Aug. 12, 2019) 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. 11/729,030 03/27/2007 Michael A. Zivin 77483 5422 23432 7590 08/12/2019 COOPER & DUNHAM, LLP 30 Rockefeller Plaza 20th Floor NEW YORK, NY 10112 EXAMINER ZUKANOVICH, BRANDY A ART UNIT PAPER NUMBER 3684 MAIL DATE DELIVERY MODE 08/12/2019 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 ____________________ Ex parte MICHAEL A. ZIVIN ____________________ Appeal 2017-011302 Application 11/729,0301 Technology Center 3600 ____________________ Before MICHAEL W. KIM, NINA L. MEDLOCK, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s rejection of claims 1, 15–21, and 24–52. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. According to Appellant, the invention “relates to a method and system for purchasing services over a general access computer network and, in particular, to a system and method that incorporates geography and location 1 “Michael A. Zivin is the real party in interest.” Appeal Br. 5. Appeal 2017-011302 Application 11/729,030 2 into purchasing decisions.” Spec. 1, ll. 7–9. Claims 1, 33, 43, 51, and 52 are the independent claims on appeal. Below, we reproduce claim 1 as illustrative of the appealed claims. 1. A method for facilitating a services purchase transaction, comprising: storing vendor information, service availability, service attributes, and service prices for a plurality of vendors in a database that is a part of a general access computer network; receiving, over the general access computer network, a search query for services obtained by at least one user; performing a search in the database that is part of the general access computer network for the services obtained by the at least one user; displaying search results comprising information regarding the services obtained by the at least one user on at least one screen of an electronic device visible to the at least one user, wherein the at least one electronic device is connected to the general access computer network; permitting the at least one user to transmit, over the general access computer network, information regarding the services obtained by the at least one user; updating, in the database that is a part of the general access computer network, at least the service prices based upon the information regarding the services obtained by the at least one user; receiving, over the general access computer network, a search query for services desired by a customer; performing a search for the desired services in the database that is a part of the general access computer network; displaying search results with price information on a screen of an electronic device visible to the customer, wherein the search results with price information are based upon the service prices which have been updated based upon the information regarding the services obtained by the at least one Appeal 2017-011302 Application 11/729,030 3 user, and wherein the electronic device is connected to the general access computer network; receiving confirmation, over the general access computer network, from the customer as to which of the services the customer wants to use; and permitting customers to select vendors from whom they would like to purchase the services. REJECTION The Examiner rejects claims 1, 15–21, and 24–52 as claiming solely patent in-eligible subject matter. PRINCIPLES OF LAW CONCERNING 35 U.S.C. § 101 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 has long interpreted 35 U.S.C. § 101 to include implicit exceptions, however: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (citation omitted). In determining whether a claim falls within an excluded category, the Supreme Court’s two-step framework, described in Mayo and Alice, guides us. See id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” Id. 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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ Appeal 2017-011302 Application 11/729,030 4 application explain the basic concept of hedging, or protecting against risk.”). Concepts that the courts determined to be abstract ideas—and, thus, patent ineligible—include certain methods of organizing human activity, such as fundamental economic 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 (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts that the courts 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. (15 How.) 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, although the claim at issue recited a mathematical formula, 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 187; 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.”). Nonetheless, the Supreme Court also indicated 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 Appeal 2017-011302 Application 11/729,030 5 to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “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].’” Id. (alterations in original) (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. 2019 Revised Patent Subject Matter Eligibility Guidance The U.S. Patent and Trademark Office recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as i) a fundamental economic practice, or ii) managing personal behavior or relationships or interactions between people, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed., Rev. 08.2017, Jan. 2018)). A practical application “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such Appeal 2017-011302 Application 11/729,030 6 that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 54. 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 either: (3) adds a specific limitation beyond the judicial exception which is not “well-understood, routine, [or] conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See generally Guidance. ANALYSIS We have carefully reviewed Appellant’s arguments, in the Appeal Brief and Reply Brief, regarding eligibility for patenting of claims 1, 15–21, and 24–52. Nonetheless, based on our application of the 2019 Revised Patent Subject Matter Eligibility Guidance, for the following reasons, we sustain the Examiner’s rejection of the claims as encompassing solely patent in-eligible subject matter. Beginning with independent claim 1, as discussed below, we determine that in accordance with point (1) of the Guidance referenced above, claim 1 recites at least one judicial exception, including an abstract idea. More specifically, as described in further detail, the abstract idea includes certain methods of organizing human activity, such as a fundamental economic practice. As set forth above, independent claim 1 recites the following: (A) “[a] method for facilitating a services purchase transaction, comprising”: (B) “storing vendor information, service availability, service attributes, and Appeal 2017-011302 Application 11/729,030 7 service prices for a plurality of vendors . . .”; (C) “receiving . . . a search query for services obtained by at least one user”; (D) “performing a search . . . for the services obtained by the at least one user”;; (E) “permitting the at least one user to transmit . . . information regarding the services obtained by the at least one user”; (F) “updating . . . at least the service prices based upon the information regarding the services obtained by the at least one user”; (G) “receiving . . . a search query for services desired by a customer”; (H) “performing a search for the desired services . . .”; (I) “receiving confirmation . . . from the customer as to which of the services the customer wants to use”; and (J) “permitting customers to select vendors from whom they would like to purchase the services.” In accordance with Appellant’s Specification, the claimed services include automobile repair, plumbing, gardening, dry cleaning (Spec. 3, ll. 4–6), security monitoring, pizza delivery (id. at 4, ll. 8–10), legal services (id. at 4, l. 23–5, l. 1), and yard care and maintenance (id. at 8, ll. 7–8). Claim 1’s preamble (A) and each of the claim body’s recitations (B)–(J), as set forth above, involve facilitating purchase of such services. For example, the preamble at (A) is the literal recitation of facilitating purchase of such services. In another example, step (C) reads “receiving . . . a search query for services obtained by at least one user.” In order to facilitate purchasing of such services, there first must be a query about purchasing those services. In another example, step (D) recites “performing a search . . . for the services obtained by the at least one user.” In order to facilitate a purchase of such services, information for the queried services much be searched for. And purchasing services such as those listed above is a fundamental economic practice, and, thus, an abstract idea. See MPEP § 2106.04(a)(2)(I)(A); Alice, 573 U.S. Appeal 2017-011302 Application 11/729,030 8 at 219–20 (“intermediated settlement” is a fundamental economic practice, and, thus, an abstract idea); Bilski, 561 U.S. at 611 (“hedging” is a fundamental economic practice, which is an abstract idea). In accordance with point (2) of the Guidance referenced above, claim 1 does not recite any additional element that integrates the judicial exception into a practical application—i.e., something that “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 54. Specifically, claim 1 only generically recites the use of certain hardware—“a database that is a part of a general access computer network,” and a “screen of an electronic device”—and, thus, within the claim itself the recited hardware does not limit the claim in a meaningful way. Further, we cannot discern anything in the Specification which describes the hardware as non-generic, indicating that it is not an improvement to computer technology, as detailed further below. We also are unable to identify anything that could be considered a particular machine or a particular transformation. Therefore, based on the foregoing, we determine that claim 1 does not integrate the judicial exception into a practical application, and, thus, is directed to the abstract idea. In accordance with points (3) and (4) of the Guidance referenced above, independent claim 1 fails to recite a specific limitation beyond the judicial exception which is not well understood, routine, and conventional in the field, but instead simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high Appeal 2017-011302 Application 11/729,030 9 level of generality, to the judicial exception. Taking the claim elements separately, the claimed hardware, as well as the functions performed by the claimed hardware, are purely conventional. Specifically, claim 1 uses known, generic components, recited at only a high level of generality, to perform their known, basic functions—e.g., storing information in, performing a search in, and updating a database; transmitting information over a general access computer network; and displaying information on an electronic device’s screen. Thus, the claim recites only well-understood, routine, and conventional functions. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see also In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming.”). Considered as an ordered combination, claim 1’s hardware does not add anything that is not already present when we consider the steps separately. Appellant compares claim 1 to the claims in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). See Appeal Br. 33–39. Unlike the claims in McRO, however, as discussed above, Appellant’s claim 1 recites the use of only generic hardware. Appellant argues that Appellant’s “[c]laim 1, as in B[ASCOM], involves particularly claimed computer-component relationships including a user-remote component. Claim 1’s relationships represent inventive choices and tradeoffs (which have not been shown to be conventional, generic, obvious or anything other than an inventive concept).” Appeal Br. 42 (emphasis omitted). In BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the court acknowledged that “an Appeal 2017-011302 Application 11/729,030 10 inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” BASCOM, 827 F.3d at 1350. Specifically, in BASCOM, “[t]he inventive concept described and claimed in the ’606 patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” Id. Unlike BASCOM’s claims, Appellant’s claim 1 does not provide a solution to a technological problem. For example, claim 1 does not recite any improvement in the database, the network, the screen, or the electronic device. As stated above, the claim recites “a database that is a part of a general access computer network,” and a “screen of an electronic device,” which are known, generic components. Further, Appellant’s claim 1 does not effect an improvement in any other technology or technical field—instead, claim 1 recites a method of facilitating the purchase of services, which is itself an abstract idea. Thus, Appellant’s claim 1 amounts to nothing significantly more than instructions to apply the abstract idea with generic hardware, and does not improve the database, network, screen, or electronic device. Accordingly, the claim recitations are insufficient to transform the abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. Therefore, based on the foregoing, we sustain the Examiner’s § 101 rejection of independent claim 1. Appellant separately argues the patent- eligibility of each of remaining claims 15–21 and 24–52. Appeal Br. 43–89. Our analysis is equally applicable to each of these claims, however. For these reasons, we also sustain the Examiner’s rejection of these claims as ineligible for patenting. Appeal 2017-011302 Application 11/729,030 11 DECISION We AFFIRM the Examiner’s rejection of claims 1, 15–21, and 24–52 as ineligible for patenting. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation