Ex Parte Bakshi et alDownload PDFPatent Trial and Appeal BoardMay 12, 201612339650 (P.T.A.B. May. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/339,650 12/19/2008 83719 7590 05/13/2016 AT & T Legal Department - FKM AT & T LEGAL DEPARTMENT, ATTN: PATENT DOCKETING ROOM 2A-207 BEDMINSTER, NJ 07921 FIRST NAMED INVENTOR YuryBAKSHI 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2008-1061 (40147/10301) 7605 EXAMINER BOKHARI, SYED M ART UNIT PAPER NUMBER 2473 MAILDATE DELIVERY MODE 05/13/2016 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 YURY BAKSHI, CAROLYN ROCHE JOHNSON, and HERBERT SHULMAN Appeal2014-002508 Application 12/339,650 Technology Center 2400 Before BRUCE R. WINSOR, HUNG H. BUI, and AMBER L. HAGY, Administrative Patent Judges. HAGY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING In papers filed May 4, 2016, Appellants request rehearing (hereinafter "Request") under 37 C.F.R. § 41.52 from our Decision on Appeal mailed March 4, 2016 (hereinafter "Decision"). 1 In the Decision, we reversed the Examiner's 35 U.S.C. § 103(a) rejection of claims 1-20, but entered a New Ground of Rejection of claims 1-20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 1 "The 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)(l). Appeal2014-002508 Application 12/339,650 We have reconsidered our Decision in light of Appellants' Request for Rehearing, but we decline to change the Decision. We find Appellants' arguments unpersuasive for the reasons given in our prior Decision. As stated therein, we conclude independent claims 1 and 11 recite an abstract idea and do not amount to significantly more than the recited abstract idea; therefore, they are not patent eligible. (Decision 6-8.) We further find dependent claims 2-10 and 12-20 do not add anything to render their scope significantly more than the patent-ineligible concept recited in independent claims 1 and 11. (Decision 8-9.) We highlight the following for emphasis. Appellants contend: 1. "[T]he Board failed to meet the appropriate burden" for rejecting the claims under § 101 because the "Board has failed to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract." (Request 3.) 2. The claimed invention is "not directed to an abstract idea" for "at least the same reasons the Patent Office determined that claim 1 in Example 23 of the July 2015 Update on Subject Matter Eligibility was not directed to an abstract idea." (Request 4.) 3. The claimed "invention solves a problem necessarily rooted in computer technology, to improve network performance in evaluating telecommunication network survivability under damage/outage scenarios," and thus "solves a problem that arises from the technology itself, and that did not exist before this type of technology was developed." (Request 6.) 4. "[T]he claimed invention is directed to 'significantly more' than an abstract idea for at least the reason that the claims solve a problem 2 Appeal2014-002508 Application 12/339,650 necessarily rooted in computer technology, in a similar way to the claims of DDR Holdings .... " (Request 7.) 5. "[T]he claims at issue here are also similar to claims found eligible in the July 2015 Update on Subject Matter Eligibility," for example "claim 2 of Example 21 .... " Similar to the claims found eligible there, "the claimed invention in the present application is directed to ... [a] computer-centric and Internet-centric problem that uses unconventional steps to achieve the desired result." (Request 9.) As explained herein, we conclude that none of Appellants' contentions show any matter that was misapprehended or overlooked by the Board in rendering the Decision. With regard to Appellants' first contention, we disagree that we failed to meet our burden by not expressly citing caselaw holding similar subject matter to be patent ineligible. The abstract nature of Appellants' claims is apparent from the face of the claims, which recite only steps of "assigning" identifiers to nodes and components in a network and "evaluating" whether components share identifiers-steps that, at least in a simple network, could all be done mentally or with the aid of pen and paper. Although Appellants emphasize the value of their claimed invention in a complex network involving the analysis of many different combinations (Request 4--5), no particular network complexity is recited in the claims. We further note Appellants' claimed invention is similar to claims found patent ineligible in In re Meyer, 688 F.2d 789, 792 (CCPA 1982). In that case, the claims were directed to a "process for indentifying [sic] locations of probable malfunction in a complex system, said process comprising" steps of "selecting a plurality of elements ... ," "initializing a 3 Appeal2014-002508 Application 12/339,650 factor associated with each of said elements," "testing the complex system for a response ... ,""determining whether said response ... was at least partially effective ... ,"and "modifYing the factor associated with at least some of said elements ... in accordance with the effectiveness of the response." Id. (emphases added). The Board affirmed the rejection of the claims under 35 U.S.C. § 101 as "drawn to a technique of statistical analysis" that included only "data-gathering" steps and application of a "mathematical algorithm." Id. at 794. The Board's decision was affirmed by the CCP A. Id. at 796. Similarly, here, Appellants' claims are directed only to "assigning" "identifiers" to nodes and network components, and "evaluating" connectivity by "determining whether they share one of the unique identifiers." Like the claims found to be patent ineligible in Meyer, Appellants' claims recite only data-gathering and manipulation ("assigning" identifiers and then "determining" whether identifiers are shared) and application of a mathematical algorithm ("evaluating" connectivity based on whether identifiers are shared). With regard to their second contention, Appellants argue their claims are similar to claims found patent eligible in "Example 23 of the July 2015 Update on Subject Matter Eligibility."2 (Request 4.) We disagree, and note instead that Appellants' claims are in fact similar to claims from that same example that were found to be patent ineligible. Claims from Example 23 that were found to be patent ineligible include claim 2, which is directed to a "method of resizing textual information within a window displaying in a graphical user interface," the steps comprising "generating" data and 2 Available for download at http://www.uspto.gov/sites/default/files /documents/ieg-july-2015-update.pdf (hereafter "July 2015 Update"). 4 Appeal2014-002508 Application 12/339,650 "calculating a scaling factor" that is "proportional" to the generated data. (July 2015 Update Appendix 1at8.) The analysis of claim 2 in Example 23 explains that the steps do not recite more than an abstract idea of data- gathering and analysis. (Id. at 10.) In contrast, the claims deemed in Example 23 to be patent eligible recite steps that use the calculated data to manipulate scaled textual information in windows so that the text will be "viewable on the computer screen by the user." The claims including such steps are deemed to recite more than abstract idea because the method recited is "necessarily rooted in computer technology to overcome a problem specifically arising in graphical user interfaces." (Id. at 9.) Appellants' attempts to analogize their claims to the claims found patent eligible in Example 23 are unavailing, however, as Appellants' claims do not recite any steps that involve manipulation of anything other than data. We, thus, also disagree with Appellants' third contention, which asserts that the claims are, as in Example 23, "necessarily rooted in computer technology." As our reviewing court cautioned in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014), "not all claims purporting to address Internet-centric challenges are eligible for patent protection" (emphasis added). In DDR Holdings, the claims recited "an e-commerce outsourcing system" for visitors clicking on an advertisement directing them to a third-party website from a host website that, inter alia, "directs the visitor to an automatically-generated hybrid page that combines visual 'look and feel' elements from the host website and product information from the third-party merchant's web site related to the clicked advertisement." Id. at 1257. The Federal Circuit concluded that these claims did not "broadly and generically claim 'use of the Internet,"' 5 Appeal2014-002508 Application 12/339,650 but instead "specit1ied] how interactions with the Internet are manipulated to yield a desired result-a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." Id. at 1258 (emphasis added). Similarly, here, simply because claimed invention may be useful in the context of computer technology does not make the claims, as written, patent eligible. Example 23 is illustrative of this concept. As noted, all of the claims in Example 23, per their preambles, involve "textual information" that is "displayed in a graphical user interface." (July 2015 Update Appendix 1 at 8-9.) However, that fact, alone, does not render any of the claims patent eligible. Rather, as noted above, the claims in Example 23 deemed patent eligible involve manipulation of something other than data- for example, "displaying" windows and "automatically relocating textual information." In contrast, claims found to be patent ineligible involve only "generating" data and applying an algorithm to that data. As also noted above, we conclude that Appellants' claims are analogous to the claims found patent ineligible in Example 23 and, therefore, are not persuaded by Appellants' third contention that our decision requires modification. We also disagree with Appellants' fourth contention, which argues Appellants' claims amount to "significantly more" than an abstract idea- again arguing that the claims are "necessarily rooted in technology." (Request 8.) As noted above, we disagree. Although the "purpose" of the claimed invention is, according to Appellants, to "overcome the computational speed problems specifically arising in the realm of telecommunication networks" (id.), the requirements for patentability are aimed not at the "purpose" of the claims, but rather at the language of the 6 Appeal2014-002508 Application 12/339,650 claims-that is, what the claims actually recite. Here, Appellants' claims do not recite any manipulation of network components, for example, but instead recite only steps of "assigning" identifiers to network nodes and components and then "evaluating" whether nodes and components share assigned identifiers. The flaws in Appellants' analysis are further illustrated by Appellants' reliance on Example 21 of the July 2015 Update. (Request 9.) In particular, as stated in their fifth contention, Appellants argue their claimed invention is similar to claim 2 of Example 21, which is deemed to be patent eligible. (Id.) We disagree. Instead, we conclude Appellants' claims are similar to claim 1 of that same example, which is deemed to be patent ineligible. Claim 1 of Example 21 recites steps of "receiving" stock quotes, and then "filter[ing]" the quotes by "compar[ing]" them to other values, "generat[ing]" alerts and "format[ing]" the alerts, and finally "transmit[ting]" the alerts. (July 2015 Update Appendix 1 at 2.) This claim is deemed to be patent ineligible as directed only to "comparing and formatting information for transmission." (Id. at 3.) In contrast, the claim found in Example 21 to be patent eligible (claim 2) recites the same steps but recites an additional step of "activat[ing] the stock viewer application to cause the stock quote alert to display on the remote subscriber computer and to enable connection via the URL to the data store over the Internet when the wireless device is locally connected to the remote subscriber computer .... " (Id. (emphasis added)) This additional step of, inter alia, enabling a specific type of Internet connection is deemed to render the claim as a whole as amounting to "substantially more" than an abstract idea because the claim solves "an Internet-centric problem with a claimed 7 Appeal2014-002508 Application 12/339,650 solution that is necessarily rooted in computer technology, similar to the additional elements in DDR Holdings." (Id. at 4.) In other words, although both claims addressed in Example 21 are directed, per their preambles, to the same purpose of "distributing stock quotes over a network to a remote subscriber computer," they are not both patent eligible. Rather, only the claim in Example 21 that involves more than "comparing and formatting information"---e.g., enabling a connection over the Internet to a data source, thereby "alerting a subscriber with time sensitive information when the subscriber's computer is offline"-is deemed to be patent eligible. (Id.) Here, however, Appellants' claims do not involve "substantially more" than the abstract idea of assigning and comparing identifiers. In attempting to argue this point, Appellants rely only on attorney's argument describing benefits that may purportedly be achieved by the claimed invention in a complex network (Request 7-9), but do not point to any claimed limitations that actually "specify how interactions with the computer are manipulated to yield a desired result." (Request 9.) Finally, we caution that Appellants have overstated our reversal of the Examiner's rejection as a "determination that the claims contain novel subject matter." (Request 8.) In concluding that the Examiner's 35 U.S.C. § 103(a) rejection over a particular combination of prior art references was based on erroneous findings and, therefore, cannot be sustained (Decision 4-- 5), we did not necessarily determine that the claims "contain novel subject matter." We are primarily a reviewing body, and, with regard to novelty, we have reviewed only the Examiner's findings of record. Our conclusion that the Examiner's findings of record are not sufficient to sustain a rejection 8 Appeal2014-002508 Application 12/339,650 under 35 U.S.C. § 103(a) does not, as Appellants contend, amount to a demonstration of "[t ]he unconventional nature of the claims." (Id.) CONCLUSION In view of the foregoing discussion, we grant Appellants' Request for Rehearing to the extent of reconsidering our decision, but we deny Appellants' request with respect to making any change thereto. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). REHEARING DENIED 9 Copy with citationCopy as parenthetical citation