Ex Parte BARLOW et al

Patent Trials and Appeals Board

Mar 29, 2019

13724104 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/724,104 12/21/2012 W. CALEB BARLOW
52021 7590 04/02/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CAM92012007 4US l_ 8150-0299 9701
EXAMINER
HOANG, HAU HAI
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte W. CALEB BARLOW, JAMES E. CHRISTENSEN, DAVID S.
MARSHAK, ANDREW L. SCHIRMER, and TRACEE L. WOLF
Appeal2018-006756
Application 13/724, 104
Technology Center 2100
Before ST. JOHN COURTENAY III, JOHN A. EV ANS, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 26-39, which are all of the pending
claims. App. Br. 36-39 (Claims Appendix). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM. 2
1 The Appeal Brief identifies International Business Machines Corporation,
as the real party in interest. App. Br. 4.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed January 17, 2018, "App. Br."), the Reply
Brief (filed June 18, 2018, "Reply Br."), the Examiner's Answer (mailed
April 18, 2018, "Ans."), the Final Action (mailed August 17, 2017, "Final
Appeal 2018-006756
Application 13/724, 104
STATEMENT OF THE CASE
The claims relate to systems and methods for the management of data
items representing intended future conversations. See Abstract.
INVENTION
Claims 26 and 33 are independent. The claims have not been argued
separately and, therefore, stand or fall together. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv).
An understanding of the invention can be derived from a reading of
representative claim 26 (see App. Br. 36), which is reproduced below with
some formatting added:
26. A system comprising:
a processor programmed to initiate executable operations
compnsmg:
receiving a plurality of first inputs from a first user, each
first input being related to a respective intended future
conversation, each first input creating at least one data item
representing the respective intended future conversation;
receiving at least one attribute for each of the plurality of
intended future conversations associated with each first input,
the at least one attribute indicating a certain equipment required
for a corresponding intended future conversation;
responsive to receiving at least one attribute for each of
the plurality of the intended future conversations associated
with each first input, a conversation module executed by the
processor automatically ranking the plurality of intended future
conversations associated with each first input in a particular
order based on at least one of the received attributes indicating
the certain equipment required for the corresponding intended
future conversation; and
Act."), and the Specification (filed December 21, 2012, "Spec.") for their
respective details.
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Application 13/724, 104
generating a listing of the intended future conversations
that is based on the ranking.
Rejections3
1. Claims 26-39 stand rejected under 35 U.S.C. § 112 (pre-AIA),
1st paragraph, as failing to comply with the written-description
requirement. Final Act. 2-11.
2. Claims 26-39 stand rejected under 35 U.S.C. § 101, as directed
to a judicial exception. Final Act. 12-16.
ANALYSIS
We have reviewed the rejections of claims 26-39 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments which Appellants could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). Upon
consideration of the arguments presented in the Appeal Brief and Reply
Brief, we agree with the Examiner that all the pending claims are
unpatentable under 35 U.S.C. § 101. However, we agree with Appellants
that the Specification provides ample written-description support for the
claims. We adopt as our own the findings and reasons set forth in the
rejection from which this appeal is taken and in the Examiner's Answer. We
provide the following explanation to highlight and address specific
3 The present Application is being examined under the pre-AIA first to
invent provisions.
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Application 13/724, 104
arguments and findings primarily for emphasis. We consider Appellants'
arguments seriatim, as they are presented in the Appeal Brief, pages 7-35.
CLAIMS 26-39: WRITTEN DESCRIPTION.
The Examiner finds the phrases "at least one attribute" and "at least
one attribute indicating a certain equipment" are not supported with written
description. Final Act. 2-11 (emphasis omitted).
Appellants contend support for the subject limitations may be found at
least in paragraphs 3 .1, 31, 3 6, and 42 of the Specification as amended
January 3, 2017. App. Br. 11. Appellants further contend the Examiner has
not objected to the January 3, 2017 amendments. Id.
The Examiner finds "[ [Jailing to reject or object to the amendment to
Specification of this present application is a simple mistake." Ans. 4. The
Examiner finds the "[E]xaminer rejected paragraph [0003.1 ]" in Application
14/022,3204 "which is the same/similar paragraph [0003 .1] of the present
Application." Id.
On April 3, 2017, the Examiner issued a non-final rejection in
response to Appellants' amendment filed January 3, 2017. There is no
indication either that the amendment was refused entry or was objected to.
It is not "a simple mistake," or harmless error, for the Examiner to fail to
reject or object to an amendment. A rejection/objection entered in a second
(child) Application does not carry over into a first (parent) Application. Nor
should the Board, in analyzing the merits of the present Application, be
obliged to excavate the prosecution of related applications. 5 Moreover, the
4 Application 14/022,320 is a child of the present Application. Ans. 4.
5 "A brief must make all arguments accessible to the judges, rather than ask
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Answer acknowledges the Specification, as amended, was neither rejected,
nor objected to, but the Answer continues to fail to specifically reject, or
object to, the January 3, 2017 amendment.
The original Specification (filed December 21, 2012) discloses:
Responsive to receiving each first input, the conversation
module 150 can be configured to receive one or more attributes
related to the particular intended future conversation associated
with the first input. "Attribute" is defined as any property,
characteristic, requirement or information associated with an
intended future conversation that provides context for the
conversation.
Spec. ,r 31. The Specification further discloses:
One example of an attribute is the identity of one or more
participants of the intended future conversation [ and] ...
[ a ]nother attribute may be the importance, relevance and/ or
relationship ( e.g., work, colleague, vendor, boss, subordinate,
certain function units within an organization, etc.) of a
participant to the originating user or to some other reference
point.
Id. ,r 32. Other exemplary attributes are disclosed in paragraphs 33-38,
including "certain equipment [that] is required during the conversation,"
such as "a two-way video feed, projector, etc." Id. ,r 36.
We find the Specification provides written-description support for the
claims.
them to play archaeologist with the record." Corning Inc. v. Danjou 's DSM
IP Assets B. V., Case No. IPR2013-00043, slip op. at 13 (PTAB May 1,
2014) (Paper 95) (quoting DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th
Cir. 1999)).
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CLAIMS 26-39: INELIGIBLE SUBJECT MATTER.
Appellants argue all claims as a group in view of the limitations of
claim 26. See App. Br. 33-34. Therefore, we decide the appeal of the
§ 101 rejections with reference to claim 26, and refer to the rejected claims
collectively herein as "the claims." See 37 C.F.R. § 4I.37(c)(l)(iv); In re
King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Preemption
Appellants contend the claims do not seek to preempt or monopolize
an abstract idea. Reply Br. 10.
Preemption may denote patent ineligibility, but its absence does not
demonstrate patent eligibility. See FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-
ineligible concept, preemption concerns "are fully addressed and made
moot" by an analysis under the Mayo/Alice framework. Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We conduct
such an analysis below. In response to Supreme Court and Federal Circuit
opinions, the USPTO has issued updated guidance. We review this appeal
within the framework of the Revised Guidance6 which specifies and
particularizes the Mayo/Alice framework.
35 us.c. § 101
Section 101 provides that a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes "' [l]aws of nature,
6 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4)
Fed. Reg. 50-57 (January 7, 2019) ("Revised Guidance").
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natural phenomena, and abstract ideas"' from the realm of patent-eligible
subject matter, as monopolization of these "basic tools of scientific and
technological work" would stifle the very innovation that the patent system
aims to promote. Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014)
( quoting Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)); see also Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 72-78 (2012); Diamond v. Diehr, 450 U.S. 175, 185
(1981).
Under the mandatory Revised Guidance, we reconsider whether
Appellants' claims recite:
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), and
2. additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then reach the
issue of whether the claim:
3. adds a specific limitation beyond the judicial exception that is
not "well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); 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.
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a) Judicial Exceptions.
The Revised Guidance extracts and synthesizes key concepts
identified by the courts that when recited as such ( or per se) in a claim
limitation are held to be a judicial exception.
Claim 26 recites, inter alia, "receiving a plurality of first inputs from a
first user," which the Examiner finds relates to collecting data from a social
networking site. Final Act. 12. Claim 26 further recites "ranking the
plurality of intended future conversations associated with each first input in
a particular order based on at least one of the received attributes," which the
Examiner finds is merely analyzing and sorting data. Id. And claim 26
further recites "generating a listing of the intended future conversations that
is based on the ranking," which the Examiner finds is merely displaying
data. Id. The Examiner finds such data manipulation steps are abstract ideas
as decided in, e.g., Electric Power Group. 7
Under the Revised Guidance, we consider the "generating" and
"ranking" limitations to be mental processes 8 ----concepts performed in the
human mind (including observation, evaluation, judgment, opinion). 9 For
7 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
8 If a claim, under its broadest reasonable interpretation, covers performance
in the mind but for the recitation of generic computer components, then it is
still in the mental-processes category unless the claim cannot practically be
performed in the mind. See Revised Guidance 52 n.14; see Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
("[W]ith the exception of generic computer-implemented steps, there is
nothing in the claims themselves that foreclose them from being performed
by a human, mentally or with pen and paper.").
9 Mayo, 566 U.S. at 71 ("'[M]ental processes[] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work"' ( quoting Gottschalk v. Benson, 409 U.S. 63, 67
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example, "ranking" and "generating" are routinely performed by people
when asked to list their "top three" movie-stars, sports figures, or ice cream
flavors. Thus, we find the claims recite a judicial exception.
b) Integration of the judicial exception into a practical application.
Where, as here, we determine the claims recite a judicial exception,
we look to determine the presence of additional elements that integrate the
judicial exception into a practical application. The Revised Guidance is
"designed to more accurately and consistently identify claims that recite a
practical application of a judicial exception [] and thus are not 'directed to' a
judicial exception." Revised Guidance 53. The Revised Guidance explains
that claims may integrate a judicial exception into a practical application
where an additional element reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field. Id. at
55.
Appellants contend the limitations of claim 26 recite a technological
progress, and thus, under Enfzsh, 10 qualify as eligible subject matter. App.
Br. 21. As evidence of a technological improvement, Appellants cite,
generally, the same limitations as does the Examiner. See id. at 22.
For the reasons which follow, we conclude that Appellants' claims do
not integrate the judicial exception into a practical application. See MPEP
(1972)).).
10 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016)
("Much of the advancement made in computer technology consists of
improvements to software that, by their very nature, may not be defined by
particular physical features but rather by logical structures and processes.
We do not see in Bilski or Alice, or our cases, an exclusion to patenting this
large field of technological progress.").
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§§ 2106.05(a}-(c) and (e}-(h). We address these "practical application"
MPEP sections seriatim:
1) MPEP § 2106.05(a) "Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field."
"In determining patent eligibility, examiners should consider whether
the claim 'purport(s) to improve the functioning of the computer itself" or
"'any other technology or technical field."' MPEP § 2106.05(a).
With respect to technological improvements, Appellants contend:
the claimed invention facilitates the planning of future intended
conversations by taking into account the special attributes of
conversation, using such special attributes to help the user see
information and patterns to better organize and plan, and
capitalize on changing opportunities for collaboration.
App. Br. 25 ( citing Spec. ,r 20).
We do not understand Appellants' contentions to implicate an
improvement to the functioning of a computer. Appellants argue the claims
enhance meeting planning, which we do not understand as a technological
field.
2) MPEP § 2106.05(b) Particular Machine.
At the outset, we note that the Bilski machine-or-transformation test is
only applicable to the method (process) claims on appeal. This section of
the MPEP guides: "When determining whether a claim recites significantly
more than a judicial exception, examiners should consider whether the
judicial exception is applied with, or by use of, a particular machine." See
Bilski v. Kappas, 561 U.S. 593, 604 (2010) ("[T]he machine-or-
transformation test is a useful and important clue, an investigative tool" for
determining whether a claim is patent eligible under § 101. ); MPEP
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§ 2106.05(b).
MPEP § 2106.05(b) provides further guidance regarding what
constitutes a particular machine:
[A]s described in MPEP § 2106.05([), additional elements that
invoke computers or other machinery merely as a tool to
perform an existing process will generally not amount to
significantly more than a judicial exception. See, e.g., Versata
Development Group v. SAP America, 793 F.3d 1306, 1335 ...
(Fed. Cir. 2015) (explaining that in order for a machine to add
significantly more, it must "play a significant part in permitting
the claimed method to be performed, rather than function solely
as an obvious mechanism for permitting a solution to be
achieved more quickly").
We find the claims on appeal are silent regarding specific limitations
directed to an improved computer system, processor, memory, network,
database, or Internet, nor do Appellants direct our attention to such specific
limitations. "[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Alice, 573
U.S. at 223; see also Bascom Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract idea on 'an
Internet computer network' or on a generic computer is still an abstract
idea."). Applying this reasoning here, we conclude Appellants' claims are
not directed to a particular machine, but rather merely implement an abstract
idea using generic computer components. Thus, we conclude Appellants'
method claims fail to satisfy the "tied to a particular machine" prong of the
Bilski machine-or-transformation test.
3) MPEP § 2106.05(c) Particular Transformation.
This section of the MPEP guides: "Another consideration when
determining whether a claim recites significantly more is whether the claim
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effects a transformation or reduction of a particular article to a different state
or thing." "[T]ransfonnation and reduction of an article 'to a different state
or thing' is the clue to patentability of a process claim that does not include
particular machines." Bilski, 561 U.S. at 658 (quoting Benson, 409 U.S.
at 70).
The claims operate to select and analyze certain electronic data, i.e.,
social media posts. The selection of electronic data is not a "transformation
or reduction of an article into a different state or thing constituting patent-
eligible subject matter[.]" See In re Bilski, 545 F.3d 943, 962 (Fed. Cir.
2008) (en bane), aff'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010); see
also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed.
Cir. 2011) ("The mere manipulation or reorganization of data ... does not
satisfy the transformation prong."). Applying this guidance here, we
conclude Appellants' method claims fail to satisfy the transformation prong
of the Bilski machine-or-transformation test.
4) MPEP § 2106.05(e) Other Meaningful Limitations.
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment.
450 U.S. 175, ... (1981). In Diehr, the claim was directed to
the use of the Arrhenius equation ( an abstract idea or law of
nature) in an automated process for operating a rubber-molding
press. 450 U.S. at 177-78 .... The Court evaluated additional
elements such as the steps of installing rubber in a press,
closing the mold, constantly measuring the temperature in the
mold, and automatically opening the press at the proper time,
and found them to be meaningful because they sufficiently
limited the use of the mathematical equation to the practical
application of molding rubber products. 450 U.S. at 184 ....
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In contrast, the claims in Alice Corp. v. CLS Bank International
did not meaningfully limit the abstract idea of mitigating
settlement risk. 573 U.S._ .... In particular, the Court
concluded that the additional elements such as the data
processing system and communications controllers recited in
the system claims did not meaningfully limit the abstract idea
because they merely linked the use of the abstract idea to a
particular technological environment (i.e., "implementation via
computers") or were well-understood, routine, conventional
activity.
MPEP § 2106.05(e).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice, 573 U.S. at 225. Similarly as for Alice, we find
that "[t]aking the claim elements separately, the function performed by the
computer at each step of the process is '[p ]urely conventional."' Id. "In
short, each step does no more than require a generic computer to perform
generic computer functions." Id.
Appellants are not persuasive that their claims do any more than to
merely invoke generic computer components merely as a tool in which the
computer instructions apply the judicial exception.
5) MPEP § 2106.05(g) Insignificant Extra-Solution Activity.
The claims operate to rank "intended future conversations" based on
attributes indicating required equipment. App. Br. 36 (Claims Appendix)
(Claim 26). Following the ranking step, there is "extra-solution activity,"
i.e., "generating a listing of the intended future conversations that is based
on the ranking." We find "generating a listing" of data to be a classic
example of insignificant extra-solution activity. See, e.g., Bilski, 545 F .3d at
963.
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6) MPEP § 2106.05(h) Field of Use and Technological
Environment.
[T]he Supreme Court has stated that, even if a claim does not
wholly pre-empt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or
post-solution activity-such as identifying a relevant audience,
a category of use, field of use, or technological environment.
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013). We
find the "processor" limitation is simply a field of use that attempts to limit
the abstract idea to a particular technological environment.
We do not find Appellants' argument to be persuasive because "[ t ]he
courts have also identified examples in which a judicial exception has not
been integrated into a practical application." Revised Guidance 55. The
claims fail to recite a practical application where the additional element does
no more than generally link the use of a judicial exception to a particular
technological environment or field of use. Id. The mere application of an
abstract idea in a particular field is not sufficient to integrate the judicial
exception into a practical application. See id. at 55 n.32. In view of the
foregoing, we conclude the claims are "directed to" a judicial exception.
c) Well-understood, routine, conventional.
Because the claims recite a judicial exception and do not integrate that
exception into a practical application, we must then reach the issue of
whether the claims add a specific limitation beyond the judicial exception
that is not "well-understood, routine, conventional" in the field. Revised
Guidance 55.
The Examiner finds the claims do not recite non-conventional or non-
generic arrangements because collecting and analyzing data and displaying
the results of such analysis are all conventional activities. Ans. 30 ( citing
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Elect. Power Grp.). The Examiner finds Appellants fail to disclose any
algorithm for ranking conversations and, thus, the Examiner finds the
claimed "conversation module" acts analogously to an algorithm that
executes "an SQL statement with ORDER BY to rank or sort the
conversations." Id. at 26.
Appellants contend the Examiner's example wherein a spreadsheet
table is sorted by "name_id" and "lastname" is not equivalent to the claimed
conversation module where a rank is determined by an attribute. Reply
Br. 9.
Appellants are not persuasive that the claimed "ranking" is other than
a sort. Nor are Appellants persuasive that where the sort field is an attribute,
the sort function performs any differently than it would where the sort field
is "name_id." We find such "well-understood, routine, [and] conventional"
limitations fail to indicate the presence of an inventive concept.
d) Specified at a high level of generality.
It is indicative of the absence of an inventive concept where the
claims simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Revised Guidance 55.
However, the claims fail to recite any specific steps for the claimed
"ranking" algorithm, nor do Appellants cite Specification disclosure for the
required specificity.
We find the "ranking" limitation is specified at such a high level of
generality consistent with the absence of an inventive concept. Therefore,
we conclude that the claim limitations, viewed "both individually and as an
ordered combination," do not amount to significantly more than the judicial
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exception in order to sufficiently transform the nature of the claims into
patent-eligible subject matter. See Alice, 573 U.S. at 217 (internal
quotations omitted) (quoting Mayo, 566 U.S. at 79).
In view of the foregoing, we sustain the rejection of claims 26-39
under 35 U.S.C. § 101.
DECISION
The rejection of claims 26-39 under 35 U.S.C. § 101 is AFFIRMED.
The rejection of claims 26-39 under 35 U.S.C. § 112 is REVERSED.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 37
C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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