1B3Y, LLCDownload PDFPatent Trials and Appeals BoardJan 28, 20212019000503 (P.T.A.B. Jan. 28, 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. 13/781,744 02/28/2013 Keith Rinzler 4I05-1-010 5901 35725 7590 01/28/2021 MEHRMAN LAW OFFICE, P.C. P.O. Box 420797 ATLANTA, GA 30342 EXAMINER LOFTIS, JOHNNA RONEE ART UNIT PAPER NUMBER 3683 MAIL DATE DELIVERY MODE 01/28/2021 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 KEITH RINZLER ____________ Appeal 2019-000503 Application 13/781,744 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and MATTHEW S. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant1 filed a Request for Rehearing (“Req. Reh’g”), pursuant to 37 C.F.R. § 41.52, on June 12, 2020, seeking reconsideration of our Decision on Appeal mailed May 12, 2020 (“Decision” or “Dec.”), in which we affirmed the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed June 5, 2018) and Reply Brief (“Reply Br.,” filed October 16, 2018), and the Examiner’s Answer (“Ans.,” mailed September 5, 2018) and Final Office Action (“Final Act.,” mailed November 14, 2017). Appeal 2019-000503 Application 13/781,744 2 as directed to a judicial exception without significantly more. We have jurisdiction over the Request under 35 U.S.C. § 6(b). DISCUSSION Appellant first asserts that the Board misapprehended the subject matter of exemplary independent claim 1 by characterizing the claim as reciting “a form of marketing.” Req. Reh’g 4–5 (citing Decision 12). Instead, Appellant argues that claim 1 is directed to “a ‘market polling and research system’ which is a tool for conducting market research rather than a ‘form of marketing.’” Id. (emphasis omitted). We disagree with Appellant that the Board may have overgeneralized or oversimplified the subject matter of exemplary independent claim 1 in characterizing it as reciting “a form of marketing.” Dec. 12. Rather, in applying Step 2A, Prong One of the 2019 Revised Guidance, the Board determined that the limitations of claim 12 (see id. at 9–12), when given their broadest reasonable interpretation, recite a system for directing market polling surveys using functionality operative [to] receive information (e.g., authorization data, location data, target demographic data), identify information (e.g., target demographic), send information (i.e., direct information), receive additional information (e.g., location data, survey information), and analyze data via polling algorithm. Cf. Ans. 13–14. Dec. 12. Appellant does not identify any point of fact or law that the Board misapprehended or overlooked in determining that the limitations of claim 1, 2 Appellant argued independent claims 1, 13, and 18 as a group. Appeal Br. 7; Reply Br. 2–14. We selected independent claim 1 as representative, such that the remaining independent claims would stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-000503 Application 13/781,744 3 when given their broadest reasonable interpretation, recite “a system for directing market polling surveys using functionality operative [to] receive information . . . , identify information . . . , send information . . . , receive additional information . . . , and analyze data via [a] polling algorithm,” i.e., “a form of marketing,” which is a method of organizing human activity and, therefore, an abstract idea. See id. (citing 2019 Revised Guidance, 84 Fed. Reg. at 52). Appellant is, thus, reminded that a request for rehearing is not an opportunity to merely express disagreement with a decision without setting forth the points believed to have been misapprehended or overlooked. Appellant next asserts that the Board misapprehended or overlooked “the facts of the case” with respect to the claimed “dynamic polling algorithm” in determining whether claim 1 includes additional elements that integrate the judicial exception into a practical application. Req. Reh’g 5–6 (citing Dec. 14). However, Appellant’s assertion does not specifically identify any points that were misapprehended or overlooked by the Decision that resulted in error. Nonetheless, Appellant asserts that “the dynamic polling algorithm is inventive (also referred to as innovative) programming producing a non- conventional improvement rendering the claimed invention eligible” simply because “[t]he Application from end-to-end describes the dynamic polling algorithm as Applicant’s own invention” and lacks a prior art rejection. Id.; see also id. at 5, FN 4. The difficulty with Appellant’s position, however, is that Appellant’s arguments still fail to persuade us that “the dynamic polling algorithm” integrates the abstract idea into a “practical application,” as that Appeal 2019-000503 Application 13/781,744 4 phrase is used in the 2019 Revised Guidance.3 Instead, as stated in the Decision, we maintain that there is no such improvement to technology or a technological process. The Appellant does not assert an improvement in the technical or technological aspects operative to receive information (e.g., authorization data, location data, target demographic data), identify information (e.g., target demographic), send information (i.e., direct information), receive additional information (e.g., location data, survey information), and analyze data via polling algorithm. Dec. 18. And, we also maintain, to the extent the claimed invention provides an improvement, that improvement does not concern an improvement to computer capabilities, but instead relates to an alleged improvement in the application of the dynamic polling algorithm — a process in which a computer is used as a tool in its ordinary capacity. Id. at 19 (citing Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)). Appellant further asserts that the Board misapprehended or overlooked the fact that Appellant’s claimed invention does not “tie up the abstract idea” because “the claimed invention is directed to the dynamic polling algorithm as a specific improvement to solve a specific problem, rather an attempt to tie up an abstract idea.” Req. Reh’g 6–7. Appellant’s argument is not persuasive. 3 The 2019 Revised Guidance references MPEP §§ 2106.05(a)–(c) and (e) in describing the considerations that are indicative that an additional element or combination of elements integrates the judicial exception, e.g., the abstract idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55. If the recited judicial exception is integrated into a practical application, as determined under one or more of these MPEP sections, the claim is not “directed to” the judicial exception. Appeal 2019-000503 Application 13/781,744 5 “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362– 63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”). And, “[w]here a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d at 1379. Appellant still further asserts that the Board misapprehended or overlooked “the facts of the case by incorrectly determining that the claimed invention is ‘well-understood, routine, or conventional.’” Req. Reh’g 7 (emphasis omitted) (citing Dec. 20). More particularly, Appellant argues that “[t]he Application itself conveys that the inventor considered the claimed ‘dynamic polling algorithm’ to be his own invention, rather than ‘well-understood, routine, or conventional.’” Id. at 7. According to Appellant, the Decision fails to point to any statement “in the Application itself,” “in the cited references,” “court decision, publication, or official notice,” “as allegedly supporting the contention that the dynamic polling algorithm was ‘well-understood, routine, or conventional.’” Id. at 7–8. We disagree. Initially, we note that the question in step two of the Alice framework is not whether an additional feature is novel, but whether the implementation of the abstract idea involves “more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’” Appeal 2019-000503 Application 13/781,744 6 Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) (alteration in original) (quoting Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 225 (2014)). In this regard, we note that the Decision stated that there is nothing in the Specification to indicate that the steps recited in claim 1 require any specialized hardware or inventive computer components or that the claimed invention is implemented using anything other than generic computer components to perform generic computer functions, e.g., receive information, identify information, send information, and analyze data. Dec. 20–21. Appellant’s Request fails to address this portion of the Decision. The Decision also noted that the Examiner determined that the computer functions involved in the claims include receiving or transmitting data over a network (directing electronic surveys, receive authoriziation [sic], receive location data, receive survey request), performing repetitive calculations (apply the polling algorithm to the data to adjust the number and the demographic distribution of the members participating in the survey), storing and retrieving information in memory. Each of these computer functions have been deemed conventional by the courts, thus satisfying the requirement set forth in the Berkheimer memo. Id. at 20 (citing Ans. 13–14). In response, Appellant argues that the Board improperly relied on the Examiner’s determination because it is “unsupported by an actual citation to a real court decision as required by the Berkheimer decision and Memorandum.” Req. Reh’g 10. Appellant’s argument is not persuasive. Appellant does not provide any supported reasoning or explanation that the functions of receiving information, identifying information, sending information, and analyzing via dynamic polling algorithm data are not well- Appeal 2019-000503 Application 13/781,744 7 understood, routine, and conventional. Cf. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369–71 (Fed. Cir. 2015) (holding that “the entry of data into a computer database, the breakdown and organization of that entered data according to some criteria, . . . and the transmission of information derived from that entered data to a computer user, all through the use of conventional computer components, such as a database and processors, operating in a conventional manner” did not transform a patent-ineligible process into something more); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (gathering, sending, monitoring, analyzing, selecting, and presenting information does not transform the abstract process into a patent-eligible invention); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (generating a rule related to accessing information, applying the rule, and storing and announcing the result did not transform the abstract idea into a patent-eligible invention). Appellant last asserts that the Board misapprehended or overlooked the requirement to consider the “claim as a whole.” Req. Reh’g 10. More particularly, Appellant argues that the Board improperly dissects “the dynamic polling algorithm into individual computer functions, which are then considered individually to determine that they are ‘well-understood, routine, or conventional’ notwithstanding the non-conventional improvement achieved by the dynamic polling algorithm as a whole.” Id. However, “the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Instead, the question under step two of the Mayo/Alice framework is whether the claim includes additional Appeal 2019-000503 Application 13/781,744 8 elements, i.e., elements other than the abstract idea itself, that “‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78–79 (2012)). In summary, Appellant’s Request is denied in all substantive respects. Accordingly, we decline to modify our original Decision. CONCLUSION Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1–20 101 Eligibility 1–20 Final Outcome of Appeal After Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 DENIED Copy with citationCopy as parenthetical citation