Ex Parte Chakra et al

Patent Trial and Appeal Board

Mar 15, 2016

13169998 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/169,998 06/27/2011
46321 7590 03/17/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
AlChakra
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.
CAM920110021US1 (275) 2920
EXAMINER
WALLACE, JOHN R
ART UNIT PAPER NUMBER
2673
NOTIFICATION DATE DELIVERY MODE
03/17/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AL CHAKRA, LIAM HARPUR,
MARK KELLY, and JOHN RICE
Appeal2014-003025
Application 13/169,998
Technology Center 2600
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
LINZY T. McCARTNEY, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The claimed invention on appeal "relates to workgroup printer
management and more particularly to restricting workgroup printing for
categorized print jobs." (Spec. i-f 2.)
Appeal2014-003025
Application 13/169,998
Representative Claim
1. A method for workgroup management of categorized
print jobs, the method comprising:
receiving from an end user a print job designated for
printing in a workgroup printer;
categorizing the print job as work related or non-work
related;
[L 1] determining a remaznzng allocation of printer
resources established for the end user;
[L2] determining whether or not printing the print job on
behalf of the end user encroaches within a threshold value of the
remaining allocation of printing resources established for the
end user; and,
[L3] restricting further processing of the print job when it
is determined both that the print job is non-work related and also
that the printing of the print job on behalf of the end user
encroaches within the threshold value of the remaining
allocation of printing resources established for the end user.
(Bracketing and emphasis added regarding the contested limitations, labeled
as Ll-L3 respectively).
Rejections
A. Claims 1-6 and 13-18 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
B. Claims 1, 3-7, 9-13, and 15-18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings and
suggestions of Dance et al. (US 2008/0068641 Al, pub. Mar. 20,
2008) ("Dance"), in view of Bartley et al. (US 2002/0175208 Al,
pub. Nov. 28, 2002) ("Bartley").
2
Appeal2014-003025
Application 13/169,998
C. Claims 2, 8, and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and
suggestions of Dance, Bartley, and Munetomo et al. (US
2010/0014110 Al, pub. Jan. 21, 2010) ("Munetomo").
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of all claims
rejected under § 103 rejection B on the basis of representative claim 1. See
37 C.F.R. § 41.37(c)(l)(iv). We address rejections A and C separately,
infra.
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We address Appellants' arguments seriatim.
Rejection A of Claims 1-6 under§ 101
In the statement of rejection (copied in the Answer), the Examiner
concludes claims 1---6 "neither transform[] underlying subject matter nor
[are] positively tied to another statutory category that accomplishes the
claimed method steps, and therefore [do] not qualify as a statutory process."
(Ans. 2). The Examiner further interprets the scope of claims 1---6 as broadly
covering "a series of steps completely performed mentally or without a
machine (manually)." Id.
Appellants contend, inter alia:
Appellants' method claims are not based upon an abstract idea,
but are tethered to a real world application-workgroup
management of categorized print jobs for a workgroup printer
communicatively coupled to different computers. As Appellants'
method claims are not based upon an abstract idea and clearly
3
Appeal2014-003025
Application 13/169,998
claim an invention that fits within one of the four statutory
classes-a process-Appellants respectfully solicit the withdrawal
of the imposed rejections of claims 1 through 6 under 35 U.S.C.
§ 101.
(App. Br. 6).
The Examiner disagrees:
the claim language itself is sufficiently broad to read on a
human manager receiving a paper copy of a print job from a
user, the manager deciding if a particular item is a work
related or non-work related item through personal
judgment, determining if the person requesting a print has
printed more than a certain amount (encroaches on
threshold), and preventing the person from printing if so by
telling them they are not allowed to use the copier/printer.
(Ans. 3).
The machine-or-transformation test asks whether a claimed process is:
(1) tied to a particular machine or apparatus, or (2), transforms a particular
article into a different state or thing. See Bilski v. Kappas, 130 S. Ct. 3218,
3225 (2010). In Bilski, the Supreme Court clarified that the machine-or-
transformation test "is not the sole test for deciding whether an invention is a
patent-eligible 'process' under§ 101"; however, it remains a "useful and
important clue or investigative tool." Bilski, 130 S. Ct. at 3221; see also
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296
(2012).
Abstract ideas have been identified by the courts by way of example,
as including fundamental economic practices, certain methods of organizing
human activities, an idea of itself, and mathematical relationships and/ or
formulas. See Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347,
2355-56 (2014). Under the two-part test articulated by the Supreme Court
4
Appeal2014-003025
Application 13/169,998
in Alice, "[ 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. Secondly, "we must examine the elements of the claim to determine
whether it contains an inventive concept sufficient to transform the claimed
abstract idea into a patent-eligible application." (Id. at 2357, internal
quotations omitted).
Regarding part one of the two-part test, we agree with the Examiner
(Ans. 3) that claims 1---6 on appeal broadly encompass abstract methods of
organizing human activities, where information (e.g., a print job) can be
received, categorized, and conditionally processed as a mental activity if the
recited predicate condition is satisfied. 1 Although "a workgroup printer" is
nominally recited in the claims, we find a person would also be capable of
performing the recited steps or acts as mental steps, or with the aid of pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson."). Regarding method claims
generally, our reviewing court guides: "a method that can be performed by
1 See claim 1 (predicate condition): "when it is determined both that the
print job is non-work related and also that the printing of the print job on
behalf of the end user encroaches within the threshold value of the
remaining allocation of printing resources established for the end user."
(Emphasis added). We conclude both prongs of the recited "when"
predicate condition of claim 1 may be performed as purely mental steps,
under a broad but reasonable interpretation. See CyberSource, 654 F .3d at
1373.
5
Appeal2014-003025
Application 13/169,998
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
Here, we conclude claim 1 is directed to an abstract idea because we
conclude the steps of claim 1 can be performed by human thought alone.
For example, the recited step of "receiving from an end user a print job
designated for printing in a workgroup printer" could be performed by
merely viewing and mentally evaluating a photo provided by an end user,
where the photo is designated for printing (i.e., a "print job" intended to be
printed- method claim 1 does not positively recite any requirement to
actually print anything).
Regarding part two of the two-part test, we find merely appending
purely conventional steps to an abstract idea (such as "categorizing" a print
job and "determining" whether or not to print the print job based on a set of
specified conditions - claim 1) does not supply a sufficiently inventive
concept. See Alice Corp. 134 S. Ct. at 2357-58.
For these reasons, we sustain the Examiner's rejection of claims 1---6
under § 101, as being directed to non-statutory subject matter.
Re} ection A of Claims 13-18 under§ 101
Appellants contend, inter alia: "claim 13 recites a 'computer readable
storage medium,' not a 'computer readable medium. (App. Br. 6).
Appellants urge:
in contrast to Ex parte Mewherter, in the instant Application, as
indicated herein, Appellants' originally filed specification does
specifically describe the nature of a "computer readable storage
medium." As such, Ex parte Mewherter can be distinguished
from the instant Application: in the instant Application, no
reliance upon extrinsic evidence is required to define a
6
Appeal2014-003025
Application 13/169,998
"computer readable storage medium" based upon the exemplary
description of a "computer readable storage medium" within
Appellants' specification.
(App. Br. 9).
We find Appellants describe a "computer readable storage medium"
in their Specification (i-f 23) using non-limiting, exemplary language that
includes signals:
A computer readable storage medium may be, for example, but
not limited to, an electronic, magnetic, optical, electromagnetic,
infrared, or semiconductor system, apparatus, or device, or any
suitable combination of the foregoing. (Emphasis added).
Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013)
(precedential) held the scope of a "computer readable storage medium"
encompassed transitory media such as signals or carrier waves, where, as
here, the Specification does not expressly disclaim transitory forms. 2 We
find Mewherter is directly on point regarding the "computer readable storage
medium" recited in independent claim 13.
Accordingly, we apply the holding of Mewherter to Appellants'
recited "computer readable storage medium" (claim 13), and we sustain the
2 Absent a clear definition or unambiguous disclaimer in the Specification,
our reviewing court has repeatedly warned against confining the claims to
the preferred embodiments described in the Specification, because "claims
may embrace different subject matter than is illustrated in the specific
embodiments in the specification." Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en bane) (internal citations and internal quotation
marks omitted).
7
Appeal2014-003025
Application 13/169,998
Examiner's rejection of claims of claims 13-18 under § l 01, as being
directed to non-statutory subject matter.
Rejection B of Representative Claim 1 under§ 103 (a)
Regarding contested limitations LI, L2, and L3, the Examiner finds:
determining a remaining allocation of printer resources
established for the end user (paragraphs [0011] and [0044 ],
{Interpretation: The card has a balance. If the balance is too low,
the printing will be denied. Therefore, there must be a
determination of what level of funds constitutes being "too low".
This level of funds would constitute such a "threshold".})
determining whether or not printing the print job on behalf
of the end user encroaches within a threshold value of the
remaining allocation of printing resources established for the end
user (paragraphs [0011] and [0044 ], {Interpretation: The card
has a balance. If the balance is too low, the printing will be
denied. Therefore, there must be a determination of the balance
being too low.}); and,
restricting further processing of the print job when it is
determined that the printing of the print job on behalf of the end
user encroaches within the threshold value of the remaining
allocation of printing resources established for the end user
(paragraphs [0011] and [0044], {Interpretation: The card has a
balance. If the balance is too low, the printing will be denied.})
(Ans. 5---6, statement of rejection).
Appellants contend: "Bartley suggests calculating the cost of the job
so as to be able to determine if the balance is too low, not a 'threshold value'
as Examiner contends." (App. Br. 14). In support, Appellants proffer a
hypothetical example:
To further illustrate the different between Bartley and
Appellants' claimed invention, consider for example, a threshold
value of $0.60, a remaining allocation of printer resources of
$1.00, and a cost to process a print job of$0.50.
8
Appeal2014-003025
Application 13/169,998
Accordingly, in tlartley, the print job would be completed.
However, as indicated by Appellants' claim language, the print
job would be further restricted (for example, denied) because the
print job encroaches within the threshold value, even though
there is enough of a balance to process the print job (assuming of
course, the print job was also detennined to be non-work related).
(App. Br. 14 (emphasis added)).
However, we conclude the scope of the recited "threshold value" is
not limited to any particular value, under a broad but reasonable
interpretation. (Claim 1). 3 Moreover, we find Appellants' hypothetical
example fails to address the Examiner's specific findings (Ans. 5---6). The
Examiner reads "the remaining allocation of printing resources established
for the end user" on the remaining account balance. (Id., claim 1). The
Examiner reads "encroach[ ing] within the threshold value" (claim 1) on
when the remaining account balance would be too low, i.e., when the
threshold encroaches (i.e., approaches or reaches) a value where the account
balance is too low. See Bartley (i-f 11 ): "The delivery of this product would
be denied if the account balance is too low." Emphasis added.
Thus, within the meaning of claim 1 (L 1 )" "a remaining allocation of
printer resources established for the end user" would be too low at a
3 "During prosecution ... the PTO gives claims their 'broadest reasonable
interpretation."' In re Bigio, 381F.3d1320, 1324 (Fed. Cir. 2004) (quoting
In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000)). Because "applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee." In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (internal
citation omitted).
9
Appeal2014-003025
Application 13/169,998
particular level according to some threshold value (i.e., "encroach[ing]
within the threshold value of the remaining allocation of printing resources
established/or the end user." (Claim 1, limitation L3 (emphasis added)).
See the Answer at pages 5---6:
( { .... The card has a balance. If the balance is too low, the
printing will be denied. Therefore, there must be a determination
of what level of funds constitutes being "too low". This level of
funds would constitute such a "threshold".})
Moreover, "'the question under 35 [U.S.C. §] 103 is not merely what
the references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made."' Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807---08 (Fed. Cir. 1989) (quoting
In re Lamberti, 545 F .2d 7 4 7, 7 50 ( CCP A 197 6)) (Emphasis added).
This reasoning is applicable here. Given the absence of any limiting
definitions described in the Specification (and argued) for the contested
claim terms "remaining allocation of printer resources" and "threshold value
of the remaining allocation of printing resources," on this record, we are not
persuaded the Examiner's broader reading of contested limitations LI, L2,
and L3 is overly broad or unreasonable. 4 (Claim 1 ).
4 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description").
10
Appeal2014-003025
Application 13/169,998
Therefore, on this record, and by a preponderance of the evidence, we
are not persuaded of error regarding the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness.
Accordingly, we sustain the Examiner's§ 103 rejection B of
representative independent claim 1. The remaining claims rejected under
rejection B (not argued separately) fall with claim 1. See "Grouping of
Claims" supra.
Rejection C of Claims 2, 8, and 14 rejected under§ 103
Claims 2, 8, and 14 depend from independent claims 1, 7, and 13,
respectively. Appellants advance no further substantive arguments
regarding these claims beyond those discussed above in the context of claim
1. (App. Br. 15). Accordingly, we sustain the Examiner's§ 103 rejection C
of dependent claims 2, 8, and 14, for the reasons discussed above regarding
claim 1.
DECISION
We affirm the Examiner's rejection of claims 1-6 and 13-18 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
We affirm the Examiner's rejections of claims 1-18 under 35 U.S.C.
§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
11