THUMBTACK, INC.Download PDFPatent Trials and Appeals BoardMay 3, 20212020004953 (P.T.A.B. May. 3, 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. 15/594,513 05/12/2017 Xiaoyu S. Fei 8682P005 5321 130093 7590 05/03/2021 Nicholson De Vos Webster & Elliott LLP 99 Almaden Boulevard Suite 710 San Jose, CA 95113 EXAMINER BYRD, UCHE SOWANDE ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 05/03/2021 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): eofficeaction@appcoll.com ndwe_docketing@cardinal-ip.com patent@ndwe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte XIAOYU S. FEI, GARIMA SINHA, ALLISON SHAW, and TIMOTHY CARTER _____________ Appeal 2020-004953 Application 15/594,513 Technology Center 3600 ____________ Before NORMAN H. BEAMER, ADAM J. PYONIN, and GARTH D. BAER, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies THUMBTACK, INC. as the real party in interest. Appeal Br. 2. Appeal 2020-004953 Application 15/594,513 2 STATEMENT OF THE CASE Introduction The application is directed to “enabling the scheduling of a meeting activity between a service professional and a customer.” Abstract. Claims 1–14 are pending; claims 1 and 8 are independent. Appeal Br. 26–30. Claim 1 is reproduced below for reference (with bracketed identifiers added): 1. A method for enabling scheduling of a meeting activity between a service professional and a potential customer of a service, the method comprising: [a] receiving a request for service from a potential customer, the request for service including a plurality of parameters; [b] automatically parsing the request for service to identify the plurality of parameters, wherein the plurality of parameters at least include a category of service wanted; [c] automatically performing a matching operation to determine a subset of two or more service professionals from a plurality of service professionals that is best suited to do the job; [d] automatically transmitting the request for service to the subset of service professionals, wherein the request includes at least the category of service wanted; [e] for a service professional of the subset of service professionals, performing the following: [f] automatically prompting the service professional to select a quote for responding to the request; [g] automatically selecting based upon the category of service wanted, a set of meeting activity types; [h] automatically prompting the service professional to select a type of meeting activity from the set of meeting activity types; [i] receiving a first input indicating a type of a meeting activity desired, wherein the meeting activity is to be performed by the service professional and the potential customer prior to the Appeal 2020-004953 Application 15/594,513 3 potential customer hiring the service professional to perform the service; [j] automatically prompting the service professional to enter structured information associated with the meeting activity; [k] receiving, in response to the prompting the services professional, the structured information entered by the service professional; [l] automatically transmitting to the potential customer a notification message including the selected quote and the structured information associated with the meeting activity, wherein the meeting activity is a next step recommended by the service professional to be taken by both the service professional and the potential customer in the quoting process; [m] automatically transmitting a confirmation notification message to the service professional indicating that the selected quote and the structured information associated with the meeting activity were sent to the potential customer; [n] receiving from the potential customer a response to the notification message including at least one of a confirmation of the meeting activity and updated information for the meeting activity; and [o] automatically transmitting a message to the service professional including at least one of the confirmation for the meeting activity and the updated information for the meeting activity. The Examiner’s Rejections Claims 1–14 stand rejected under 35 U.S.C. § 101 because the claims are directed to a judicial exception without significantly more. Final Act. 3. Claims 1–14 stand rejected under 35 U.S.C. § 103 as being unpatentable over Mori (US 8,620,712 B1; Dec. 31, 2013), Ford (US 2004/0059618 A1; Mar. 25, 2004), and Phillips (US 2014/0180715 A1; June 26, 2014). Final Act. 7. Appeal 2020-004953 Application 15/594,513 4 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments. Arguments Appellant could have made but chose not to make are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Patent Eligibility In January 2019, the U.S. Patent and Trademark Office (USPTO) promulgated revised guidance on the application of § 101 (“Guidance”).2 The Manual of Patent Examining Procedure (“MPEP”) now incorporates this revised guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).3 Under MPEP § 2106, 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 a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (“Step 2A, Prong Two”). MPEP § 2106.04(a), (d). 2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 RPSMEG”). In response to received public comments, the USPTO issued further guidance on October 17, 2019, clarifying the Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1. 3 All references to the MPEP are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. Appeal 2020-004953 Application 15/594,513 5 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional activity” in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. MPEP § 2106.05(d). We agree with, and adopt as our own, the Examiner’s eligibility analysis. We add the following primarily for emphasis and clarification with respect to the Guidance. A. Step 2A, Prong One Claim 1 recites a “method for enabling scheduling of a meeting activity between a service professional and a potential customer of a service.” Pursuant to Step 2A, Prong One of the Guidance, we agree with the Examiner that claim 1 recites a judicial exception. See Final Act. 3–5, Ans. 4–6. Particularly, claim 1’s steps [a]–[o] guide the scheduling process, commencing with receipt of a request from a “potential customer” (step [a]), the determination of the type of request and identification of appropriate service professionals (steps [b]–[c]), transmitting the request to the appropriate service professionals and guiding the service professionals to determine a quote and structured meeting information (steps [d]–[k]), confirmation transmitted to the service professional that quote and structured meeting information were sent to the potential customer (step [m]), culminating with receipt of a response from the potential customer and Appeal 2020-004953 Application 15/594,513 6 confirmation transmitted to the service provider (steps [n]–[o]). The steps replicate the actions taken by a service professional (possibly in conjunction with a scheduler for a service professional) and a potential customer in the ordinary course of business in “the booking and transaction of services.” Spec. ¶ 4. The claim steps recite “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” See Ans. 5; 2019 RPSMEG, 84 Fed. Reg. at 52. Therefore, the claim recites the abstract concept of “certain methods of organizing human activity” (see 2019 RPSMEG, 84 Fed. Reg. at 52), which is a “judicial exception.” Id. at 54. Appellant’s argument that claim 1’s “limitations do not meet” the category of “certain methods of organizing human activity” (Appeal Br. 7) because the limitations do not recite “relationships or interactions between people” (Appeal Br. 8), is unpersuasive, as the claim steps orchestrate the meeting of one or more service professionals with a potential customer, as the parties “attempt to schedule an activity related to a service to be offered.” Spec. ¶ 4. We agree with the Examiner that these limitations recite a judicial exception. See Final Act. 3. B. Step 2A, Prong Two Appellant argues the claim 1 is patent eligible pursuant to Step 2A, Prong Two of the Guidance, as claim 1 “includes additional elements that integrate any alleged abstract idea into a practical application of that alleged abstract idea.” Appeal Br. 8. Particularly, Appellant identifies claim 1’s steps [j], [k], [l], [m], [n], and [o] as additional elements that “are beyond the alleged judicial exception of a certain method of organizing human activity.” Appeal Br. 10. Appellant further argues that these additional elements, Appeal 2020-004953 Application 15/594,513 7 when looked at alone or in combination, “integrate the alleged abstract idea (a certain method of organizing human activity) into a practical application,” as the elements “improve the managing and scheduling of a meeting activity between a service professional and a potential customer.” Appeal Br. 11. Particularly, Appellant contends that the additional elements “render[] the process of scheduling a meeting activity for both the service professional and the potential customer more efficient and streamlined” and “enable[] the service professionals and customers to avoid receiving unstructured formation spread across several messages.” Appeal Br. 12, citing Spec. ¶¶ 45, 93, 04, 78. We are not persuaded the Examiner errs pursuant to Prong Two of Step 2A of the Guidance. See Ans. 6–9; October Update at 12, 13. Appellant’s arguments focus on the automation performed in several limitations and the creation of “structured information.” Regarding the benefits of automation, it is the individuals engaged in the prospective meeting activities that potentially act more efficiently, but that in itself provides no technical solution; see Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1090 (Fed. Cir. 2019) (“This invention makes the trader faster and more efficient, not the computer. This is not a technical solution to a technical problem.”). Regarding the benefits of the creation of structured information, claim 1 does not describe (a) the structured information, or (b) a change in the underlying or other technology, and “[i]n the absence of specific technological means for achieving the desired results, we have described the mere collection, analysis, and display of information as falling within the realm of abstract ideas.” Packet Intelligence LLC v. NetScout Sys., Inc., 965 F.3d 1299, 1318 (Fed. Cir. 2020). We additionally note that while claim 1 Appeal 2020-004953 Application 15/594,513 8 recites many automated steps, no type of computer hardware or software is described as performing those steps. We agree with the Examiner that “the claims recite mere instructions to implement the abstract idea on a computer and uses the computer as a tool to perform the abstract idea without reciting any improvements to a technology, technological process or computer-related technology.” Ans. 6. Accordingly, we determine claim 1 does not integrate the judicial exception into a practical application. See 2019 RPSMEG, 84 Fed. Reg. at 54. As the claim recites a judicial exception and fails to integrate the exception into a practical application, the claims are “directed to the . . . judicial exception.” Id. at 54. C. Step 2B We are not persuaded the Examiner errs in determining that in claim 1, “taken individually or as a whole the additional elements of claim 1 do not provide an inventive concept (i.e. they do not amount to ‘significantly more’ than the exception itself)” and that “[e]ven considered as an ordered combination (as a whole), the additional elements of claim 1 do not add anything further than when they are considered individually.” Final Act. 6. However, we disagree with the Examiner’s finding that “representative claim 1 does recite additional elements [such as an] electronic device, [a] computer readable storage medium [, and a] graphical user interface” (Final Act. 5), because as noted above, claim 1 includes no hardware or software elements that might serve to provide an inventive concept. Appellant argues that claim 1’s steps [j], [k], [l], [m], [n], and [o] each are “not-well understood, routine, or conventional” because “conventional Appeal 2020-004953 Application 15/594,513 9 solutions” do not perform each step. Appeal Br. 16–18. For example, Appellant argues that [t]he limitation “automatically prompting the service professional to enter structured information associated with the meeting activity” is not well-understood, routine, or conventional because conventional solutions do not automatically prompt the service professional to enter structured information associated with a meeting activity. For instance, as described in the specification, in conventional online marketplaces, when a service professional and a customer attempt to schedule a meeting activity related to a service to be offered, they need to exchange several messages in order to obtain necessary information about the activity, which results in each one of the customer and the service professional obtaining an unstructured set of information. See Specification, paragraph [0004]. Appeal Br. 16–17. Appellant’s arguments focus on limitations reciting the judicial exception, as discussed above; however, limitations reciting a judicial exception cannot supply an inventive concept. See Mayo, 566 U.S. at 72–73 (requiring “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself” (emphasis added)); BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”) Appeal 2020-004953 Application 15/594,513 10 Thus, we conclude the elements of independent claim 1, individually and as an ordered combination, do not provide significantly more than the recited judicial exception. Accordingly, we agree with the Examiner that independent claim 1 is patent ineligible, as well as independent claim 8, and all claims dependent therefrom. See Appeal Br. 19. Obviousness Appellant argues that claim 1 specifies that the “meeting activity is a next step recommended by the service professional to be taken by both the service professional and the potential customer in the quoting process.” As opposed to Phillips, where the question is asked by the customer, the meeting activity of claim 1 is recommended by the service professional. Appeal Br. 23 (emphasis in original). Appellant contends that “the cited ‘question’ in Phillips is different from ‘a meeting activity’ as required by the claim. In Phillips the cited ‘question’ is not a meeting activity” but rather is “an asynchronous ‘yes or no’ question that is electronically transmitted to the professional that allows the professional to respond, asynchronously, with ‘yes’ or ‘no’ without a meeting activity with the customer.” Appeal Br. 22, citing Phillips Fig. 6, ¶¶ 82–88. We agree. The Examiner finds, and we agree, that Phillips “describes potential customers providing [a] question to a service provider before booking the service provider, the Examiner is interpreting this as disclosing a virtual meeting before hiring a professional” in which “[t]his interaction is a meeting activity PRIOR to the customer and service professional going into business together.” Ans. 14, citing Phillips ¶ 85 (emphasis in original). Appeal 2020-004953 Application 15/594,513 11 However, in Phillips, the question posed by the customer using the “Send A Free Note” option (Phillips ¶ 85) can only be replied with a “yes” or a “no” by the professional, and is used “to assist the client in determining if the professional is the appropriate professional for consulting with the client regarding the client’s problems.” Phillips ¶ 90. The example question posed by the potential customer in Phillips is “Are you able to help me determine if I need surgery on my eyes?” Phillips ¶ 90; see also Fig. 8. Questions of this type do not result in the claimed “next step recommended by the service professional to be taken by both the service professional and the potential customer in the quoting process,” as this type of question concerns initial qualifications and is a prerequisite to any quoting process, as a prospective customer would not seek a quote from an unqualified professional. See, for example, Phillips Fig. 8 (“this question allows a ‘yes’ or ‘no’ response only. It is only to assess whether this is an appropriate doctor to speak with for your condition, not to get medical advice via email”). Additionally, Philip’s “Send A Free Note” option resembles Mori’s “professional information” (Mori 4:54–55) regarding “if the professional(s) [] is qualified to provide” (Mori 4:57) the services sought, such as “tax related services” (Mori 4:58), in distinction to Mori’s “meeting information” (Mori 5:9–10) applied in the rejection. See Final Act. 9. We agree with Appellant that the combination of Mori, Ford, and Phillips fails to teach or suggest the claimed “meeting activity.” Accordingly, we are constrained by the record to reverse the Examiner’s obviousness rejection of independent claim 1, as well as independent claim 8 commensurate in scope, and all dependent claims. Appeal 2020-004953 Application 15/594,513 12 DECISION SUMMARY The Examiner’s decision is affirmed because we have affirmed at least one ground of rejection with respect to each claim on appeal. See 37 C.F.R. § 41.50(a)(1). TIME PERIOD FOR RESPONSE 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 Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–14 101 Eligibility 1–14 1–14 103 Mori, Ford, Phillips 1–14 OVERALL OUTCOME 1–14 Copy with citationCopy as parenthetical citation