EKOTROPE INC.Download PDFPatent Trials and Appeals BoardOct 14, 20212021000655 (P.T.A.B. Oct. 14, 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. 13/678,456 11/15/2012 Edward F. CRAWLEY 380218-991101 4410 26379 7590 10/14/2021 DLA PIPER LLP (US ) 2000 UNIVERSITY AVENUE EAST PALO ALTO, CA 94303-2248 EXAMINER GUILIANO, CHARLES A ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 10/14/2021 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): PatentDocketingUS-PaloAlto@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWARD F. CRAWLEY, CY HOADLEY KILBOURN, ZIV ROZENBLUM, AMOS BENNINGA, NICK SISLER, and BLAKE BISSON Appeal 2021-000655 Application 13/678,456 Technology Center 3600 Before ELENI MANTIS MERCADER, JOHNNY A. KUMAR, and JENNIFER S. BISK, Administrative Patent Judges. BISK, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 37 C.F.R. § 41.52(a), Appellant1 filed a Request for Rehearing on August 2, 2021 (“Req. Reh’g”), seeking reconsideration of our Decision on Appeal mailed June 1, 2021 (“Dec.”). 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 Ekotrope. Appeal Br. 1. Appeal 2021-000655 Application 13/678,456 2 We have jurisdiction under 35 U.S.C. § 6(b). This Decision on Request for Rehearing incorporates the Decision on Appeal, including any abbreviations defined therein for citations to the record, in accordance with 37 C.F.R. § 41.52(a)(1). ANALYSIS In the Decision on Appeal, we affirmed the Examiner’s decision to reject claims 1–21 based on ineligibility under 35 U.S.C. § 101 and obviousness under 35 U.S.C. § 103(a). See Dec. In the Request for Rehearing, Appellant contends that we “overlooked the 2019 PEG” and misapprehended the prior art. Req. Reh’g 2–3. Patent Eligibility For the ineligibility affirmance, Appellant argues that “[u]nder Step 2A, Prong 1,” “the Board alleges that each of the three abstract idea categories are found in claim 1” and “seems to conflate the mathematical determination category with the mental process [sic].” Id. at 2. Appellant adds that it does not admit, as stated by the Board, that “determining the utility score and using the score to find compliant designs are mathematical determin[ations] that can be done by mental processes.” Id. Thus, Appellant argues “there is no support for the conclusion that these mathematical determinations are mental processes as alleged in the decision.” Id. We are not persuaded of error in our ineligibility analysis based on these arguments. First, Appellant does not dispute our finding that claim 1 is directed to organizing human behavior. See Req. Reh’g 2–3. This finding, alone, is sufficient to support the conclusion that claim 1 recites one of the abstract idea groupings in the Revised Guidance. See USP TO, 2019 Appeal 2021-000655 Application 13/678,456 3 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) (“Revised Guidance”). Second, we do not agree with Appellant that there is no support for the finding that claim 1 also recites a mental process—another of the abstract idea groupings. See Dec. 7–9. Regarding the mental process grouping, Appellant argues that the Board overlooks the arguments related to the automatic filling of the building related inputs. Req. Reh’g 2. According to Appellant, the term “automatically” cannot refer to a human subconsciously or spontaneously filling in the missing building inputs because the specification states that “[t]he architect/builder/homeowner can enter data herself or ask the system to ‘fill in’ the gaps using a smart algorithm.” Id. (quoting Spec. 7:11–17). We do not agree that we overlooked this argument as we explicitly addressed it. Dec. 7–8. Moreover, nothing in the quoted portion of the Specification changes our understanding that automatically “may refer to a human subconsciously or spontaneously filling in the missing building inputs.” Id. at 8. Appellant also argues we overlooked “the argument about the interactive display and ignore[d] that limitation in claim 1 for purposes of this analysis that analy[zes] it under Step 2A Prong 2.” Req. Reh’g 3 (citing Dec. 8). However, in reaching our conclusion we did not ignore the interactive display limitation as Appellant contends. Rather, we determined that this additional element is beyond the identified abstract idea that, when considered individually and collectively in combination with the other recited limitations, does not (1) integrate the abstract idea into a practical application, or (2) add significantly more to the abstract idea to render the claimed invention patent eligible when reading the claim as a whole. Dec. Appeal 2021-000655 Application 13/678,456 4 9–15. “[T]he prohibition against patenting abstract ideas cannot be circumvented by adding “insignificant postsolution activity.” Bilski v. Kappos, 130 S. Ct. 3218, 3230 (2010). Third, Appellant argues that “[u]nder Step 2A, Prong Two,” “the Board overlooked the analysis under MPEP 2106 et seq. in Appellant’s Appeal Brief and that analysis explained why any abstract idea was integrated into a practical application.” Req. Reh’g 3. Appellant, however, does not direct us to where these arguments are found in the Appeal Brief or point out with particularity what arguments we misapprehended or overlooked in the Briefs. Id. By regulation, “[t]he request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). Notwithstanding that the Request does not comply with this rule, we are not persuaded that we overlooked or misapprehended any arguments in the Appeal Brief or Reply Brief. Rather, the Decision specifically addressed the arguments regarding this step in Appellant’s Appeal Brief. See Dec. 10–12. Accordingly, we deny Appellant’s Request for Rehearing of our affirmance of the patent eligibility rejection. Obviousness For the obviousness affirmance, Appellant argues that “[t]he claim language should be interpreted according to the Specification and does require missing building related inputs that distinguishes the claim element and the claims from the combination of prior art cited.” Req. Reh’g 3 (quoting Spec. 7:11–17 (“The architect/builder/homeowner can enter the entire data herself or ask the system to ‘fill in’ the gaps using a smart Appeal 2021-000655 Application 13/678,456 5 algorithm . . . .”). We are not persuaded of error in our obviousness analysis based on this argument. Appellant, again, does not direct us to where this claim construction argument is found in the Appeal Brief or point out with particularity what arguments we misapprehended or overlooked in the Briefs. Id. Notwithstanding that the Request does not comply with § 41.52(a)(1), we are not persuaded the quoted potion of the brief leads to a claim construction requiring the term “automatically filling” to require determining missing building related inputs prior to the filling. See Dec. 10–12. Accordingly, we deny Appellant’s Request for Rehearing of our affirmance of the obviousness rejection. CONCLUSION Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Granted Denied 1–21 101 Patent Eligibility 1–21 1–21 103(a) Kennedy, Teller, Krebs 1–21 Final Outcome on Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–21 101 Patent Eligibility 1–21 1–21 103(a) Kennedy, Teller, Krebs 1–21 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). See 37 C.F.R. § 41.50(f). Appeal 2021-000655 Application 13/678,456 6 REQUEST FOR REHEARING DENIED Copy with citationCopy as parenthetical citation