Ex Parte Benjamin et al

Patent Trial and Appeal Board

Sep 29, 2017

12545576 (P.T.A.B. Sep. 29, 2017)

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.
F-6544-2 1642
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
12/545,576 08/21/2009
112722 7590
Becker Patent Law, LLC
5800 Broad Street
Greendale, WI 53129
Grant Benjamin
10/02/2017 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 GRANT BENJAMIN, ALFONS CONLEY, ART MARSHALL,
DALE MEIXELSPERGER, DOUG NEWLIN, URMI DESAI,
REBECCA LAUSENG, and JONATHAN PRENDERGAST
Appeal 2016-007003
Application 12/545,576
Technology Center 3600
Before ROBERT E. NAPPI, JOHN P. PINKERTON, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Pursuant to Appellants’ Request for Rehearing (“Request” or “Req.
Reh’g”) under 37 C.F.R. § 41.52(a)(1), Appellants request a rehearing of our
Decision of June 6, 2017 (“Decision” or “Dec.”) in which we (1) affirmed
the Examiner’s rejection of claims 1,2, 4—23, and 26—30 under 35 U.S.C
§ 101 and (2) reversed the Examiner’s rejection of claims 1, 2, 4—23, and
26-30 under 35 U.S.C. § 102 (b) and (e).
Appeal 2016-007003
Application 12/545,576
INTRODUCTION
In the Request, Appellants present three contentions. First, Appellants
contend their argument that the Examiner has not explained how the claims
are “directed to” an abstract idea, which was first asserted in the Reply Brief,
should not have been deemed waived. Req. Reh’g 2—3. Second, Appellants
contend that in finding the claims are “directed to” an abstract idea, neither
the Examiner, nor the Decision, made the required comparison of
Appellants’ claims to claims found by courts to be ineligible and eligible.
Id. at 3—5 (citing Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016)). Third, Appellants contend, although the
Decision acknowledges Appellants’ arguments that the independent claims
provide improvements over existing technology, the Decision fails to
address Appellants’ arguments “with articulated reasoning” and “provides
no explanation with reference to decisions of a court or otherwise as to why
these improvements in functionality are insufficient as a matter of law.” Id.
at 5—6.
ANALYSIS
A 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). Here, Appellants have done neither, but merely
rehash arguments already made and rejected. A Request for Rehearing is
not an opportunity to rehash arguments made in the Briefs or to express
disagreement with the Decision, which is all Appellants have done in this
instance. The proper course for Appellants dissatisfied with a Board
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decision is to seek judicial review, not to file a request for rehearing to
reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145.
Regarding Appellants’ first contention, Appellants assert the
argument “that the Examiner has not explained how the claims are ‘directed
to’ an abstract idea,” which was first raised in the Reply Brief, should not
have been deemed waived because there was good cause for the argument as
it is grounded in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), which was not decided until after the Appeal Brief was filed. Req.
Reh’g 2. According to Appellants, the Appeal Brief was filed November 2,
2015, Enfish was decided May 12, 2016, and “the Reply Brief then
incorporated guidance from Enfish in the Reply Brief filed July 5, 2016.”
Id. We are not persuaded by Appellants’ argument.
First, Appellants have not shown good cause for their Reply Brief
argument “that the Examiner has not explained how the claims are ‘directed
to’ an abstract idea” because the argument could have been made in the
Appeal Brief, but Appellants did not do so. Appellants’ acknowledge in the
Appeal Brief that “[t]he Final Office Action states the claims are directed to:
the abstract idea of ‘monitoring blood component collection activities,
presenting a graphical depiction on a display of data, communicating with a
remote information system, and proving [sic] operator-specific prompts
based on the tracking information and monitored blood production collection
activities.” App. Br. 17 (citing Final Act. paragraph 9, page 10). Based on
the first step of the Mayo/Alice1 analysis—determining whether the claims at
issue are “directed to” an abstract idea—Appellants could have argued in the
1 Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66
(2012); Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014).
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Appeal Brief that the Examiner failed to specifically explain how the claims
are “directed to” an abstract idea, but did not to do so and, instead, made the
argument for the first time in the Reply Brief.
Second, Appellants’ argument that good cause exists because Enfish
was not decided until after the filing of the Appeal Brief is not persuasive
because Appellants’ argument “incorporating] guidance from Enfish in the
Reply Brief’ is focused on the Examiner’s finding in the Advisory Action
dated August 13, 2015. Reply Br. 8; Req. Reh’g 2. In particular, Appellants
argue the Examiner’s finding in the Advisory Action that the concept of
comparing new and stored information is “described by the steps of’
Appellants’ claims is insufficient because Enfish made it “clear that the
claims must do more than simply ‘describe’ or ‘involve’ an abstract idea to
meet Step 2A of the Alice/Mayo test.” Id. Thus, contrary to Appellants’
argument, Appellants did not rely on guidance from Enfish in arguing
deficiencies in the Examiner’s findings in the Final Action that the claims
are directed to an abstract idea, but instead attacked the Examiner’s findings
in the Advisory Action based on Enfish. Accordingly, we are not persuaded
Appellants’ have shown good cause for their Reply Brief argument, which
we properly determined was waived. See Dec. 7, fn 3.
Even assuming arguendo that Appellants’ argument was not waived,
we are not persuaded the Examiner erred. Appellants argue in the Reply
Brief that because the Examiner has not explained how the claims are
“directed to” an abstract idea, the Examiner has failed to present a prima
facie case of subject matter ineligibility. Reply Br. 8—9. As discussed in the
Decision, the Examiner analyzed the claims under the Alice two-step
framework. See Dec. 5 (citing Final Act. 10). Although the Examiner’s
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analysis was short, we find it satisfied the requirements of 35 U.S.C. § 132
by notifying Appellants of the reasons for the rejection under § 101. See In
re Jung, 637 F.3d 1356, 1362—63 (Fed. Cir. 2011). Accordingly, the
Examiner set forth a prima facie case of unpatentability such that the burden
shifted to Appellants to demonstrate that the claims are patent-eligible. See
id.
Regarding Appellants’ second contention that the Decision fails to
make the required comparison of Appellants’ claims to claims found by
courts be ineligible and eligible, Appellants assert the only possible basis for
the Decision complying with the flexible approach of Amdocs “is the one
sentence reference to Electric Power Group, LLC v. Alstom SA., 830 F.3d
1350 (Fed. Cir. 2016).” Req. Reh’g 4 (citing Dec. 9). Appellants argue,
however, that “this sentence is not a comparison of present claims to the
claims in Electric Power Group,” but “at best, compares concepts at a high
level of abstraction and untethered from the language of the claims, which
the Federal Circuit cautioned against in EnfishC Id. at 4—5. Appellants also
argue they have distinguished the SmartGene2 3and Gy b erf one2 claims (see
App. Br. 18—32) and explained how the present claims are similar in
eligibility to those in Enfish (see Reply Br. 9-13). Id. at 5.
We are not persuaded by Appellants’ arguments. Contrary to
Appellants’ assertions, the analysis of Appellants’ claims in comparison to
those in Electric Power was not “one sentence” or “untethered” from the
language of Appellants’ claims. See Dec. 7—10. Instead, we discussed the
2 SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950 (Fed.
Cir. 2014).
3 Cyberfone Sys., LLC v. CNN Interactive Group, Inc., 558 F. App’x 988
(Fed. Cir. 2014).
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limitations of each of the independent claims—claims 1,16, and 23—and
then concluded they are directed to an abstract idea because, as the Federal
Circuit held in Electric Power, “[t]he advance they purport to make is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions.” Id. at 9 (citing Electric Power, 830 F.3d at
1354). Thus, we meaningfully compared Appellants’ claims to those in
Electric Power, which we conclude are the most similar or parallel claims
from prior § 101 decisions to Appellants’ claims. In that regard, the
Examiner finds claim 1 is directed to ‘“monitoring blood component
collection activities, presenting a graphical depiction on a display of data,
communicating with a remote information system, and provi[d]ing operator-
specific prompts based on the tracking information and monitored blood
production collection activities.’” See Final Act. 10. Similarly, the method
claims in Electric Power were directed to performing real-time performance
monitoring of an electric power grid by collecting data from multiple data
sources, analyzing the data, and displaying the results. See Electric Power,
830 F.3d at 1351—52. Moreover, by comparing Appellants’ claims to those
in Electric Power, we complied with the Amdocs' approach because we
compared the most relevant claims from previously decided § 101 cases to
Appellants’ claims. See Amdocs, 841 F.3d at 1295 (stating that “discussing
in an opinion only the most relevant prior opinions, rather than every prior
opinion in an actively-litigated field, is a necessary discipline”). Although
Appellants argue their claims are unlike those found ineligible in Smart Gene
and Cyberfone, Appellants have not argued, much less established, that their
claims are not similar or parallel to the claims in Electric Power.
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We are also not persuaded by Appellants’ argument that they
explained in the Reply Brief how the present claims are similar in eligibility
to those in Enfish. With respect to claim 1, for example, Appellants argue
the claim recites “a system computer linked to an administrative level
computer,” “a plurality of input devices,” “the system computer
communicates with a remote information system,” and “the administrative
level computing device provides operator-specific prompts.” See Reply Br.
10. Notably, these arguments are untethered from the reality of Appellants’
Specification. We find nothing in the Specification, and Appellants’ do not
point to anything in the Specification, indicating that any improvements
resulting from the claims are the result of technical changes or advances to
the claimed computing devices or to any monitoring or display devices.
Instead, the Specification describes in detail how the claimed invention can
be implemented using “any suitable processor, processing unit, or
microprocessor” coupled to a chipset that “typically provides I/O and
memory management functions,” “system memory [that] can include “any
desired type,” and other generic devices. See Spec. ]ff[ 89-94. Moreover, the
claims here are not like those in Enfish that were “specifically directed to a
self-referential table for a computer database.” See Enfish, 822 F.3d at
1337. The claims in Enfish were, therefore, “directed to a specific
improvement to the way computers operate,” rather than an abstract idea
implemented on a computer. Id. at 1336. The claims here, in contrast, are
not directed to an improvement in the way computers operate. As stated in
the Decision, here, as in Electric Power, “the focus of the claims is not on
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... an improvement in computers as tools, but on certain independently
abstract ideas that use computers as tools.” Dec. 9—10 (citing Electric
Power, 830 F.3d at 1354).
Regarding Appellants’ third contention that the Decision fails to
address Appellants’ arguments directed to how the claims improve computer
functionality with articulated reasoning, Appellants argue they “explained
with specificity how each of the present independent claims delivered
improvements over existing technology in the Reply Brief at pp. 11—12,” but
the Decision does not specifically explain why these improvements are
insufficient. Req. Reh’g 5—6. We disagree. In the Decision, we stated that
“Appellants’ have not provided persuasive evidence or arguments that any
specialized computer hardware or other ‘inventive’ computer components
are required.” Dec. 10. This is still the case, as Appellants have also failed
in their Request to present any arguments or references to the Specification
detailing any technical advances or improvements to the computers or other
components in the claims. In addition, we stated in the Decision, “as the
Examiner finds, the Specification explicitly discloses that the claimed
invention is implemented using conventional firmware, software, discrete
logic and/or hardware performing ‘generic computer functions that are well-
understood, routine and conventional activities previously known to the
pertinent industry.’” See id. (citing Final Act. 10 (citing Spec. ]Hf 90—98,
102; see also 99-101). Lastly, we quoted the Examiner’s finding that the
claims do not include additional elements that are significantly more than the
judicial exception, and the reasons therefor, and in agreeing with those
findings, stated the following:
Although the claims recite multiple computer operations, they do
not go beyond conventional computer operations or methods of
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gathering, processing, and displaying know types of information.
In other words, we are not persuaded that the operations in
the claims are an improvement to any technology as opposed to an
improvement to an abstract idea.
Dec. 11 (see also Intellectual Ventures ILLC v. Capital One Fin. Corp., 850
F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that “[o]ur law demands more”
than claim language that “provides only a result-oriented solution, with
insufficient detail for how a computer accomplishes it”).
Thus, contrary to Appellants third contention, we satisfactorily
explained why the improvements discussed by Appellants in the Reply Brief
are insufficient to show improvements attributable to technological
advances.
DECISION
Accordingly, upon granting the Request to the extent we have
reconsidered the Decision in view of the arguments presented in the
Request, we deny the Request and make no changes to the Decision.
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
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