Ex Parte Blom

Patent Trial and Appeal Board

Feb 16, 2017

13099978 (P.T.A.B. Feb. 16, 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.
13/099,978 05/03/2011 Jan Otto Blom P5146US01 1913
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
EXAMINER
REFAI, SAM M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
02/21/2017 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):
docket@dcpatent.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN OTTO BLOM
Appeal 2014-007181
Application 13/099,978
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Jan Otto Blom (Appellant) seeks review under 35 U.S.C. § 134 of the
Examiner’s Final rejection of claims 1—20, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed December 23, 2013) and Reply Brief (“Reply Br.,” filed June 12,
2014), and the Examiner’s Answer (“Ans.,” mailed April 24, 2014), and
Final Action (“Final Act.,” mailed July 16, 2013).
Appeal 2014-007181
Application 13/099,978
The Appellant invented an approach for proposing social encounters
among users of a social network. Specification para. 3.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising
facilitating a processing of and/or processing, by a
processor, (1) data and/or (2) information and/or (3) at
least one signal,
the (1) data and/or (2) information and/or (3) at least one
signal based, at least in part, on the following:
[1] location information associated with a user and other
location information associated with one or more other
users;
[2] social interest information associated with the user
and other social interest information associated with the
one or more other users;
[3] a processing of the location information, the other
location information, the social interest information, the
other social interest information or combination thereof
to cause, at least in part,
identification of one or more proposed encounters
with respect to the user and the one or more other
users;
[4] a determination of a probability that the user may
attend the one or more proposed encounters;
and
[5] at least one determination to generate a presentation
of the one or more proposed encounters to the user.
The Examiner relies upon the following prior art:
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Appeal 2014-007181
Application 13/099,978
Whalin et al. US 2011/0289433 A1 Nov. 24, 2011
(“Whalin”)
Claims 1—10 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—10 stand rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention.
Claims 1—20 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Whalin.
ISSUES
The issues of statutory subject matter turn primarily on whether the
claims recite more than performing some abstract concept on a generic
processor. The issues of definiteness turn primarily on whether one of
ordinary skill would understand the metes and bounds of the claims. The
issues of obviousness turn primarily on whether a maybe response is within
the scope of some representation of probability.
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Appeal 2014-007181
Application 13/099,978
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Whalin
01. Whalin is directed to organizing a real-world gathering for a
particular topic of interest. Whalin para. 4.
02. Whalin describes a facility for presenting users with a list of
meeting events in their geographic area that are popular, such as
indicated through RSVP counts. RSVP counts may be based on
actual counts of ‘Yes,’ of ‘Yes’ and ‘Maybe’s,’ of a combination
of these and/or other positive indicators that a member may join
the meeting, and the like. Whalin para. 200.
ANALYSIS
Claims 1—10 rejected under 35 U.S.C. § 101 as directed to non-statutory
subject matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us? [] To answer that question,
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Application 13/099,978
[] consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an [“Jinventive 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 Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S.Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case’s claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The preamble to claim 1 does not recite what it is for, but there are no
steps recited and no result from the process is recited. The Specification at
paragraph 4 recites that the invention relates to the treatments recited in
claim 1 to data prior to the start of a process. Thus, all this evidence shows
that claim 1 is directed to generic processing.
It follows from prior Supreme Court cases, and Bilski in particular, that
the claims at issue here are directed to an abstract idea. Like the risk
hedging in Bilski, the concept of generic processing is a fundamental
practice long prevalent in human endeavor. Thus, generic processing, like
hedging, is an “abstract idea” beyond the scope of §101. See Alice Corp.
Pty. Ltd. 134 S.Ct. at 2356.
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Appeal 2014-007181
Application 13/099,978
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of generic
processing at issue here. Both are squarely within the realm of “abstract
ideas” as the Court has used that term. See Alice Corp. Pty. Ltd. 134 S.Ct. at
2357.
The remaining claims merely describe additional data treatments prior to
the start of the claimed processes. We conclude that the claims at issue are
directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. [] Nor is limiting the use of an
abstract idea [“]to a particular technological environment. [”]
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
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“[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 Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to process data amounts to electronic data processing—one of the
most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. In short, as there are no steps, the claims do no more than require a
generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of generic processing as performed by a generic
computer. The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. Instead, the claims at issue amount
to nothing significantly more than an instruction to apply the abstract idea of
generic processing using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd. 134 S.Ct. at 2360.
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Application 13/099,978
Claims 1—10 rejected under 35 U.S.C. § 112, second paragraph, as failing
to particularly point out and distinctly claim the invention
A process claim is defined by the steps recited. Claim 1 recites no steps.
Instead, these claims recite generic facilitating processing or processing,
without reciting anything that occurs during such processing. Instead, the
rest of the claim recites how the data used for such processing was formed
prior to the start of the claimed process. Absent any recited steps, the claims
leave one of ordinary skill unaware of the metes and bounds of the processes
claimed.
Claims 1-20 rejected under 35 U.S.C. § 102(e) as anticipated by Whalin
Unlike claims 1—10, claims 11—20 are directed to apparatuses that can
perform the pre-processing of the data recited in claims 1—10. The only
structural limitation in these claims contested is a processor determining a
probability that the user may attend the one or more proposed encounters.
App. Br. 8—12. The disclosure does not lexicographically define or narrow
the term “probability,” and the claims do not recite or narrow the manner of
implementation for representing such a probability. In particular, the scope
of the recited probability encompasses both quantitative and qualitative
representations of any degree of accuracy and precision.
We are not persuaded by Appellants’ argument that
In contrast to the Examiner's arguments, ‘Maybe’ counts are not
a probability, much less a determination of a probability.
‘Maybe’ means that it is unknown whether or not a member
will attend an event because the member selected the response
‘Maybe’ rather than ‘Yes’ or ‘No.’ While the word, ‘maybe’
may connote some inclination towards attendance, ‘Maybe’ as
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Application 13/099,978
an RSVP count contains no express indication of the likelihood,
possibility, much less the probability of a member's attendance
for a given event. Effectively, 'Maybe' may encompass any
scenario from a member attending an event to a member not
attending an event. Therefore, a 'Maybe' count is actually a
lack of a determination of a probability, rather than the
determination of a probability alleged by the Examiner.
App. Br. 10-11. The issue is whether each of a yes and maybe response
represents a probability. There can be no doubt that a yes response
represents a 100% probability. We agree that a maybe response is broad and
non-numeric, but again the claims do not require quantitative and precise
representations. Conventionally, a maybe response is indicative of a
probability greater than no and less than yes, i.e. between 0 and 100 percent.
Although broad, that does cabin the range of likelihood, and is representative
of such a probability.
As to the argument that Whalin’s determination is not that of “the user”
(App. Br. 11), in structural inventions, such claims must be distinguished
from the prior art in terms of structure rather than function, see, e.g., In re
Schreiber, 128 F.3d 1473, 1477—78 (Fed. Cir. 1997). In order to satisfy the
functional limitations in an apparatus claim, however, the prior art apparatus
as disclosed must be capable of performing the claimed function. Schreiber,
128 F.3d at 1478. When the functional language is associated with
programming or some other structure required to perform the function, that
programming or structure must be present in order to meet the claim
limitation. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380
(Fed. Cir. 2011) (citing Microprocessor Enhancement Corp. v. Texas
Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). The user is not part of
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Application 13/099,978
the structure in the apparatus claims. The structure in Whalin is explicitly
capable of determining the probability of attendance of any user.
As to the method claims, as we find in the prior rejections, these claims
recite no steps, but simply perform generic processing. Whalin does at least
as much. To the extent one might apply weight to the limitation regarding a
determination of a probability prior to the start of the process, our finding as
to the scope of the limitation of probability is equally pertinent. As to the
argument regarding the probability being that of the user, we find that again
accuracy is not narrowed or recited. Thus, Whalin’s RSVP counts provide a
rough, albeit inaccurate probability that the person relying on that count
would also attend. Further, as these pre-processing limitations occur prior to
the start of the process, all users who entered an RSVP answer are within the
scope of the user recited in those limitations.
CONCLUSIONS OF LAW
The rejection of claims 1—10 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
The rejection of claims 1—10 under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the invention is
improper.
The rejection of claims 1—20 under 35 U.S.C. § 102(e) as anticipated by
Whalin is proper.
DECISION
The rejection of claims 1—20 is affirmed.
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Application 13/099,978
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.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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