Ex Parte Beresford-Wood et al

Patent Trial and Appeal Board

Mar 27, 2017

13543564 (P.T.A.B. Mar. 27, 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.
13/543,564 07/06/2012 Bret Beresford-Wood AC/4010-237 7029
23117 7590 03/29/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
COUPE, ANITA YVONNE
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRET BERESFORD-WOOD and AMANDA GROSSE
Appeal 2015-007002
Application 13/543,564
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the decision
to reject claims 1—21. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
Appeal 2015-007002
Application 13/543,564
THE INVENTION
Claim 9, reproduced below with bracketed numerals added, is
illustrative of the subject matter on appeal.
9. A method of providing information to a group of users
conducting due diligence through a virtual data room system,
the virtual data room system including at least one processor,
the method comprising:
[1] storing a plurality of files on a storage medium system that
is associated with the virtual data room system;
[2] managing a plurality of folders, each one of the plurality of
managed folders associated, directly or indirectly, with at least
one of the plurality of stored files, the plurality of folders
including a first folder that is associated with a first group of
stored files out of the plurality of stored files;
[3] storing, on the storage medium system, at least one due
diligence status value for each one of the plurality of stored
files;
[4] tracking user interaction with a stored file in the first group
of stored files;
[5] updating the at least one due diligence status value that is
associated with the stored file based on the tracked user
interaction with the stored file;
[6] calculating, via the at least one processor, a display
characteristic associated with the first folder based on each one
of the due diligence status values associated with the first group
of stored files in the first folder; and
[7] outputting data that represents a visual indication of the
first folder that is to be displayed on a display device to a user,
the visual indication based on the calculated display
characteristic.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Rhodes et al. US 2004/0201622 A1 Oct. 14, 2004
(“Rhodes”)
Goodwin et al. US 2002/0059131 Al May 16, 2002
(“Goodwin”)
The following rejections are before us for review:
1. Claims 1—21 stand rejected under 35U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 1—3, 5, 6, and 8—21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rhodes and Goodwin.
ISSUES
Did the Examiner err in rejecting claims 1—21 under 35 U.S.C. § 101
as being directed to non-statutory subject matter; and claims 1—3, 5, 6, and
8—21 under 35 U.S.C. § 103(a) as being unpatentable over Rhodes and
Goodwin?
ANALYSIS
The rejection of claims 1—21 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
The Appellants’ challenge to the rejection fails to show error in the
rejection.
The Examiner analyzed the claims in accordance with the two-step
framework for determining whether claimed subject matter is judicially-
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excepted from patent eligibility under § 101 as articulated in Alice Corp.
Pty. Ltd. v. CLS Bank Inti, 134 S.Ct. 2347 (2014). Ans. 2-5.
In accordance therewith, the Examiner found that (1) “the claims are
directed to the abstract idea of a virtual data room for conducting due
diligence on a plurality of documents, a fundamental economic principal,
a method of organizing human activity, and an idea of itself’ (Ans. 4) and
(2) the additional elements in the claims amount to “no more than a general
purpose computer to perform generic functions that are well-understood,
routine, and conventional activities previously known in the industry.” Id. at
5. The Examiner also found that the claims do not overcome a problem
specifically arising in the realm of computer networks. Id. From this, the
Examiner determined that the claimed subject matter runs afoul of 35 U.S.C.
§101.
The Appellants argue that a virtual data room is not a fundamental
economic principle, a method of organizing human activity, or an idea of
itself. Reply Br. 6—10. According to the Appellants, the claims are directed
to “automatically updating a visual indicator for a folder based on the status
values associated with each of the documents within that same folder” and
therefore not “directed to” a judicial exception. Id. at 9—10.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S.Ct. at 2355 (emphasis added).
The “directed to” inquiry, [] cannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every routinely
patent-eligible claim involving physical products and actions involves
a law of nature and/or natural phenomenon—after all, they take place
in the physical world. See Mayo, 132 S.Ct. at 1293 (“For all
inventions at some level embody, use, reflect, rest upon, or apply laws
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of nature, natural phenomena, or abstract ideas.”) Rather, the
“directed to” inquiry applies a stage-one filter to claims, considered in
light of the [Specification, based on whether “their character as a
whole is directed to excluded subject matter.” Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see
Genetic Techs. Ltd. v. Merial L.L.C., 2016 WL 1393573, at *5 (Fed.
Cir. 2016) (inquiring into “the focus of the claimed advance over the
prior art”).
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
The record supports finding the focus of the invention — that is, when
reading the claims as a whole in light of the Specification — is gathering
information about the status of a due diligence project.
According to the Specification, the invention is directed to “providing
users with visual indications of the status of a given due diligence project
that is associated with documents stored in the virtual data room.” Spec,
para. 1. As described in the Specification, “manually keeping track of the
due diligence progress of teams of users can be difficult and unreliable.”
Spec. para. 5. The inventors have addressed this problem by providing
“visual indications through a graphical user interface of a computer system
on a measure of the completeness of a task associated with the performance
of due diligence.” Spec. para. 9.
We take claim 9 as representative of the claims on appeal. Although
method claim 9 on its face is directed to the “process” category of patent-
eligible subject matter in Section 101, we conclude that claim 9 is
nonetheless nonstatutory because it is directed to judicially-excepted
ineligible subject matter.
Claim 9 is directed to a “method of providing information to a group
of users” and recites seven steps: (a) storing files; (b) managing folders; (c)
storing values; (d) tracking user interaction; (e) updating values; (f)
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calculating a display characteristic; and (g) outputting data. Each of these
steps involve information. Information is stored in files and folders. User
interaction with a file is tracked to update the due diligence status of the file.
A characteristic of a folder is calculated and finally data is output. This is
the essence of information gathering. Claim 9 as a whole is directed to that:
the concept of information gathering. Information gathering is a
fundamental building block of research, not to mention fundamental to
human behavior to, among many goals, attain knowledge. We naturally
constantly take in information and associate it with other information. The
abstract idea category of judicially-excepted subject matter broadly covers
building blocks of human ingenuity, like methods of organizing human
activity (see Alice). Information gathering is such a building block and thus
properly categorized as an abstract idea. Thus, we agree with the Examiner
that claim 9 is directed to an abstract idea.
We find the Examiner properly and reasonably found that claim 9 is
directed to “a virtual data room for conducting due diligence on a plurality
of documents” (Ans. 4) and that that is an abstract idea. We have described
it as “information gathering” (see above) but that is simply a higher level of
abstraction than the Examiner’s articulation of it. Cf. Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (“An abstract idea
can generally be described at different levels of abstraction. As the Board
has done, the claimed abstract idea could be described as generating menus
on a computer, or generating a second menu from a first menu and sending
the second menu to another location. It could be described in other ways,
including, as indicated in the specification, taking orders from restaurant
customers on a computer.”). Cf. Accenture Glob. Servs., GmbHv.
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Guidewire Software, Inc., 728 F.3d 1336, 1338 (Fed. Cir. 2013) (“system for
generating tasks to be performed in an insurance organization” is an abstract
idea.).
The Appellants argue that “the scope of the claimed subject matter is
sufficiently specific that the preemption concern that ‘undergirds’ 35 U.S.C.
§101 jurisprudence is not an issue” and that “[t]he claims do not cover any
and every general purpose computer that implements ‘virtual data room’”
and do not “do not monopolize the alleged abstract idea.” Reply Br. 11
(citing Alice 134 S. Ct. at 2360).
This argument does not apprise us of error in the rejection. While pre­
emption “might tend to impede innovation more than it would tend to
promote it, ‘thereby thwarting the primary object of the patent laws’” {Alice,
134 S. Ct. at 2354 (quoting Mayo, 132 S. Ct. 1289, 1293), “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.), cert, denied, 136 S. Ct. 701, 193 (2015) (“[Tjhatthe 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.”).
The second step of the Alice framework is “a search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice, 134 S. Ct. at 2355 (alteration in
original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
S. Ct. 1289, 1294 (2012)). We have considered the elements of claim 9 both
individually and as an ordered combination, in light of the Appellants’
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discussion, to determine whether the additional elements transform the
nature of the claim into a patent-eligible application. We are unpersuaded
that the Examiner erred in finding that they do not. See Ans. 5 (citing
Specification paras. 13, 14, and 79).
We note the Appellants’ argument that the claims recite “physical
elements” and “implementation of ideas on those physical elements (such as
a virtual data room implemented on a computer)” Reply Br. 7. However,
“relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc.,
788 F.3d at 1363 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701 (2015) (citing
Alice, 134 S. Ct. at 2359 (“use of a computer to create electronic records,
track multiple transactions, and issue simultaneous instructions” is not an
inventive concept)).
Claim 9 recites conventional elements of a generic “processor,”
“storage medium,” and “display device” employed for their inherent
functions to perform as expected. The Specification supports that view.
See, e.g., Spec. para. 68 (“request may be provided to remote terminals such
as network computers that process the document on a remote server, may be
provided to a user’s personal computer, or may be provided to a mobile
device (e.g., a smart phone or tablet computer”); para. 75 (“storage 908 can
be magnetic, flash based, solid state, or other storage technology”); para. 76
(“processing system 900 may implement functionality of a client system,”
“processing system 900 may implement the server system and the external
systems may include client systems,” “storage system for storing and
maintaining information”); para. 78 (“actions that can be performed by, for
example, elements of a programmable computer system”). Here, as in Alice,
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the claims “do not, for example, purport to improve the functioning of the
computer itself or effect an improvement in any other technology or
technical field.” Alice, 134 S. Ct. at 2351.
Thus, “the claims at issue amount to ‘nothing significantly more’ than
an instruction to apply the abstract idea . . . using some unspecified, generic
computer.” Alice, 134 S. Ct. at 2360 (citing Mayo, 132 S. Ct. at 1298). The
Appellants’ arguments regarding independent claims 1 and 16 are
unpersuasive for similar reasons. Accordingly, we reach the same
conclusion as to system claim 1 and storage medium claim 16. As in Alice,
“[t]he method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea.” Id. The Appellants
have not separately argued the eligibility of any of the dependent claims,
which are similarly directed to various information gathering schemes.
We have fully considered the Appellants’ arguments. For the
foregoing reasons, they are unpersuasive as to error in the rejection. The
rejection is sustained.
The rejection of claims 1—3, 5, 6, and 8—21 under 35 U.S.C. § 103(a) as
being unpatentable over Rhodes and Goodwin.
Independent claim 1 includes the limitation: “[9] determine a
displayable characteristic of the first folder based on the at least one due
diligence status value associated with each one of the documents in the first
set of documents.” App. Br. 24, Claims Appendix.
The Examiner finds this limitation in Rhodes at paragraphs 74—76
(Final Act. 4) and at paragraphs 59—61 and 72—86 and Figures 4—7. Ans. 6.
In particular, the Examiner finds the claimed “first folder” in folders 412,
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414, 416 shown in Figure 4 and finds the claimed “displayable
characteristic” in recipient information area 606 shown in Figure 6.
According to the Examiner, “[w]hen a signature action is taken by one of the
reviewers, the action is reflected in the name area (606), the case where a
reviewer has only one document for review/signature, the state of the
document (signed) is reflective of the folder.” Id. In other words, the
Examiner’s position is that a recipient (e.g., Alice) may have only one
document assigned to a folder (e.g., Alice’s folder 412), in which case the
recipient information area 606 meets the claimed “displayable characteristic
of the first folder.”
The Appellants dispute this finding. Appeal Br. 11—17; see also
Reply Br. 2—A.
We agree with the Appellants that the cited passages of Rhodes do not
disclose the above limitation. Paragraph 72 of Rhodes discloses that
recipient information area 606 is a table that graphically indicates the routing
progress of a document to each recipient in a route. Shading and/or color
conventions can be adopted to indicate the actions recipients have taken with
respect to the document. Thus, recipient information area 606 displays
characteristics of a document, namely the document’s progress through a
route. Although routing a document involves copying the document to
various folders associated with the various recipients in the route as shown
in Figure 4, the recipient information area 606 is not a characteristic of any
particular recipient’s folder. In other words, a document’s route through a
group of folders is a characteristic of the document, not a characteristic of a
folder. This is true even if a folder contains only one document. Therefore,
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the Examiner’s finding that recipient information area 606 meets the claimed
“characteristic of the first folder” is not supported.
Independent claims 9 and 16 contain similar limitations and the
rejection of those claims is based on the same deficient finding as claim 1.
See Ans. 5.
A prima facie case of obviousness has not been made out in the first
instance by a preponderance of the evidence. Accordingly, the rejection is
not sustained.
CONCLUSIONS
The Appellants have not shown that the Examiner erred in rejecting
claims 1—21 under 35U.S.C. § 101 as being directed to non-statutory subject
matter.
The Appellants have shown that the Examiner erred in rejecting
claims 1—3, 5, 6, and 8—21 under 35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1—21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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