Ex Parte Brydon et al

Patent Trials and Appeals Board

Jun 11, 2013

11193015 - (R) (P.T.A.B. Jun. 11, 2013)

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.
11/193,015 07/28/2005 Antony Brydon 384.8760USU 6237
27623 7590 08/20/2013
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
EXAMINER
SENSENIG, SHAUN D
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
08/20/2013 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 1
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BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
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Ex parte ANTONY BRYDON and JEFF PATTERSON 7
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Appeal 2011-004396 10
Application 11/193,015 11
Technology Center 3600 12
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16
MICHAEL W. KIM, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON REQUEST FOR REHEARING 19
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STATEMENT OF THE CASE 1
This is a decision on rehearing in Appeal No. 2011-004396. We have 2
jurisdiction under 35 U.S.C. § 6(b). 3
Requests for Rehearing are limited to matters misapprehended or 4
overlooked by the Board in rendering the original decision. 37 C.F.R. 5
§ 41.52. 6
ISSUES ON REHEARING 7
Appellants raise two issues in the Request for Rehearing. The first issue 8
relates to whether the subject matter of claims 20, 21, 23, 25, 28-32, 34, 39, 9
and 40 are ineligible as abstract ideas. The second issue relates to whether 10
claims 20, 31, and 32 are obvious. 11
ANALYSIS 12
We found in our decision that claims 20, 21, 23, 25, 28-32, 34, 39, and 13
40 under 35 U.S.C. § 101 were directed to non-statutory subject matter. 14
Decision 9. 15
The Appellants argue that none of the steps are abstract ideas. 16
Request 4. The Appellants contend that the Board erred by glossing over the 17
concrete, palpable, tangible limitations of the claims as a whole. Request 5. 18
The Appellants argue further that 19
The method of the present application is performed by a 20
computer. The claim is written to an application of the method 21
tied to a machine, a computer. The method is tied to a 22
particular machine that, as claimed, is tangible and concrete, 23
i.e., a computer. The claim is not written to the abstract idea 24
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itself. The Board erred by equivocating the physical computer 1
of Claim 20 with the abstract idea of computer technology. 2
Decision at p. 6 1. 4. The claims as a whole cannot be read to 3
cover embodiments other than those involving a computer. 4
Therefore, the claims would not preempt the use of the method 5
in all fields. Further, the method, as claimed, because it is 6
performed by a computer, cannot possibly be performed solely 7
in the mind of a human without the claimed computer. 8
Request 5-6. (emphasis deleted). The difficulty Appellants face with 9
this argument is that the claim recites what the computer is to provide, and 10
not how the computer is to provide it. No structural implementation or set of 11
algorithmic programming steps are recited in the claim. Thus, all 12
implementations are pre-empted, and as a computer is the only reasonable 13
vehicle for performing the process on large scales, the claims effectively 14
preempt all implementations. It is nevertheless true that very small scale 15
implementations could be performed with paper and pencil. 16
Again, the steps in claim 20 are simply receiving a communication; 17
selecting an individual; communicating with the individual; personalizing 18
the communication; and transmitting the personalized communication. 19
Appellants argue that each of these steps are performed by a computer. But 20
such performance is simply for speed of calculation and transmission. 21
In Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 22
F.3d 1266, 1278, (Fed Cir, 2012), the court found that “the 23
interchangeability of certain mental processes and basic digital computation 24
. . . help[s] explain why the use of a computer in an otherwise patent-25
ineligible process for no more than its most basic function—making 26
calculations or computations—fails to circumvent the prohibition against 27
patenting abstract ideas and mental processes,” holding that using a 28
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computer to accelerate an ineligible mental process does not make that 1
process patent-eligible, but to salvage an otherwise patent-ineligible process, 2
a computer must be integral to the claimed invention, facilitating the process 3
in a way that a person making calculations or computations could not. The 4
court provided a bottom line analysis that when the insignificant computer-5
based limitations are set aside from those claims that contain such 6
limitations, the question under § 101 reduces to an analysis of what 7
additional features remain in the claims. 8
The court also found that where the only difference between the claims 9
is the form in which they were drafted, the district court correctly treated the 10
system and method claims at issue in this case as equivalent for purposes of 11
patent eligibility under § 101. 12
More recently, and as Appellants argue, the court found some indicia of 13
eligible subject matter in such cases in Ultramercial LLC v Hulu LLC, _ 14
F3d_ (Fed Cir 2013). However, even there, the context was litigation of an 15
issued patent, where the court construed claim limitations as computerized 16
embodiments based on the Specification and relied on the presumption of 17
validity. Here, we construe claim according to their broadest reasonable 18
interpretation and there is no presumption of validity. 19
The court held that the relevant inquiry is whether a claim, as a whole, 20
includes meaningful limitations restricting it to an application, rather than 21
merely an abstract idea. A claim is meaningfully limited if it requires a 22
particular machine implementing a process or a particular transformation of 23
matter. A claim also will be limited meaningfully when, in addition to the 24
abstract idea, the claim recites added limitations which are essential to the 25
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invention. Id. Here the claim as a whole does not include meaningful 1
limitations beyond the abstract idea of transmitting a personalized 2
communication. No particular machine or transformation is recited. None 3
of the added limitations regarding communicating and transmitting via a 4
computer network are essential to the invention, as they simply use a general 5
purpose computer to perform its general transmission function, as a faster 6
form of transmission. Nothing in the claim recites that the social network is 7
a computer network or that the individual selection and communication 8
personalization is performed on a computer. The preamble does not specify 9
that all of the steps are performed on a computer, only that the method is at 10
least to some extent performed by a computer. 11
While Appellants argue that the claim requires all of the steps to be 12
performed on a computer, Appellants do not cite those portions that would 13
so require such performance. Again, selection and personalizing might be 14
done off-line and typed in. As typing text into a computer is simply the 15
operation of a general purpose computer, typing alone is insufficient activity 16
to show eligibility. 17
As to the arguments based on legal precedent, Appellants argue that 18
Claim 20 recites using a computer network in a defined way, i.e., to 19
communicat[e] with the individual and to transmit the personalized 20
communication to the entity. Request 7. Such communication is simply 21
what a general purpose computer, as contrasted with a specific machine, 22
does. 23
Appellants argue that 24
The term “computer aided” implies that the steps can be 25
performed without the aid of a computer. In the present case, 26
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the steps of communicating with the individual and transmitting 1
the personalized communication to the entity are not “computer 2
aided.” Instead, they are “performed by” the computer. 3
Request 8. Again, such communication is simply what a general 4
purpose computer, as contrasted with a specific machine, does. 5
We entered in our decision a new ground of rejection pursuant to 6
37 C.F.R. § 41.50(b). Claims 20, 31, and 32 were rejected under 35 U.S.C. 7
§ 103(a) as unpatentable over Yuster. Decision 9. 8
The Appellants argue that 9
the Board is referring to an aspect of Yuster that is not relevant 10
because it is not a claimed limitation in the present application. 11
The claims of the present application do not recite the limitation 12
relied upon by the Board in reaching its decision that the 13
pending claims are unpatentable under 35 USC § 103(a), i.e., 14
having an intermediary perform the requested activities. It 15
appears that the Board misunderstood or mischaracterized the 16
claims by basing the entirety of its 103 rejection on a feature or 17
limitation that does not exist in the present claims. The claimed 18
intermediary of the present application does not transmit an 19
introduction as the Board alleges 20
Request 9. The Appellants contend that 21
the present claims clearly recite that it is the computer that 22
communicates with the “individual” who’s permission is being 23
sought, and it is the computer, not the individual, who ”sends” 24
the personalized communication… 25
Yuster neither describes nor suggests that a computer performs 26
any of the actions of: communicating to obtain permission to 27
transmit the communication to the entity; personalizing; and 28
transmitting. 29
Request 9-10. (emphasis deleted). First, Appellants simply allege that 30
the claim requires the computer perform obtaining permission and 31
personalizing. The preamble limitation is a “method performed by a 32
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computer.” This neither requires that all the steps be performed by a 1
computer nor even specifies how the computer is used in the performance. 2
A person using a computer as a typewriter and an input and output sink and 3
source would be within the scope of this limitation. The only steps that 4
recite the use of a computer are [3] communicating via a computer network 5
and [5] transmitting via the computer network. 6
Second, the issue behind the Examiner’s rejection was that Yuster fails 7
to describe claim 20 limitation [5] of transmitting a communication to the 8
entity that is separate from the individual in limitation [3], whose permission 9
is sought in limitation [3] for transmitting the communication to the entity. 10
Decision 7. The issue was the target, not the intermediary. But the claimed 11
target requires an intermediary. The panel did not equate the intermediary 12
with a physical person, as Appellants’ argument suggests. Yuster describes 13
using a computer, so the intermediary required would likely be a person 14
using a computer. The computer so used would meet Appellants’ argument, 15
although this would not be required to be within the scope of the claim. 16
CONCLUSION 17
Nothing in Appellants’ request has convinced us that we have 18
overlooked or misapprehended the nature of the subject matter or how the 19
claim operates as argued by Appellants. Accordingly, we DENY the 20
Request. 21
DECISION 22
To summarize, our decision is as follows: 23
 We have considered the REQUEST FOR REHEARING 24
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 We DENY the request that we reverse the Examiner as to claims 20, 1
21, 23, 25, 28-32, 34, 39, and 40. 2
 We maintain the new ground of rejection entered pursuant to 3
37 C.F.R. § 41.50(b). Claims 20, 31, and 32 remain rejected under 35 4
U.S.C. § 103(a) as unpatentable over Yuster. 5
REHEARING DENIED 6
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JRG 8
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