Ex Parte CHOU

Patent Trial and Appeal Board

Jan 19, 2018

13158310 (P.T.A.B. Jan. 19, 2018)

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.
13/158,310 06/10/2011 Benjamin CHOU BC-0001 9126
109174 7590
Ledell Ansari, LLP
211 North Union St.
Suite 100
Alexandria, VA 22314
EXAMINER
SHAAWAT, MUSSA A
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
01/23/2018 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@ledellansari.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN CHOU
Appeal 2017-002892
Application 13/158,310
Technology Center 3600
Before MICHAEL J. STRAUSS, AARON W. MOORE, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
I. STATEMENT OF THE CASE
Appellant filed a request for rehearing on November 7, 2017
(hereinafter “Rehearing Request” or “Reh’g Req.”) under 37 C.F.R. § 41.52,
seeking reconsideration of our Decision, mailed September 8, 2017
(hereinafter “Decision” or “Dec.”), which affirmed the Examiner’s final
rejection of claims 1—3, 5—7, 10—14, 21, 22, and 24—28 under 35 U.S.C.
§ 101. We have jurisdiction over the Rehearing Request under 35 U.S.C.
§ 6(b).
Appeal 2017-002892
Application 13/158,310
We have reconsidered our Decision regarding the claims in light of
Appellant’s comments in the Request. Reh’g Req. 2—7. We grant the
Rehearing Request to the extent that we consider Appellant’s arguments
infra, but DENY the request to modify our Decision. We incorporate our
earlier Decision herein by reference. See 37 C.F.R. § 41.52(a)(1).
II. BACKGROUND
As an initial matter, we note that a request for rehearing “must state
with particularity the points believed to have been misapprehended or
overlooked by the [Patent Trial and Appeal Board (the “Board”)].” 37
C.F.R. § 41.52(a). A request for rehearing is not an opportunity to rehash
arguments raised in the briefs. Neither is it an opportunity to merely express
disagreement with a decision without setting forth the points believed to
have been misapprehended or overlooked. Accordingly, the proper course
for an appellant dissatisfied with a Board decision is to seek judicial review,
not to file a request for rehearing to reargue issues that already have been
decided. See 35 U.S.C. §§ 141, 145.
III. ANAFYSIS
Appellant argues that the rationale for affirming the rejection of claim
10 “does not appear to address the actual features of claim 10, nor the
arguments presented in Appellant’s Appeal Brief or Reply Brief.” Reh’g
Req. 2. Specifically, Appellant argues “the features of claim 10 are not
capable of being performed by human thought alone, or by pen and paper.”
Reh’g Req. 4. As evidence, Appellant provides a hypothetical example in
which “a human performing this process would incorrectly recognize one of
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the numbers.” Id. at 5. Appellant further argues “[assuming that it is
reasonable to assert that a human performing this process would incorrectly
recognize one of the numbers, Appellant submits that it is unclear how or
why a human would perform the process” and, thus, “the process recited in
claim 10 could not be ‘performed by human thought alone or by pen and
paper.’” Id.
We are not persuaded that Appellant’s hypothetical example in which
a human may incorrectly recognize one of the numbers demonstrates “the
features of claim 10 are not capable of being performed by human thought
alone, or by pen and paper.” Id. at 4. As noted in the Decision, claim 10
includes the limitation “highlighting, by the computer, a particular area of
the image data, the particular area being associated with a financial
transaction that corresponds to the selected particular cell.” Apart from the
recitation of a generic computer, we determine this limitation is capable of
being performed by human thought alone, or by pen and paper. A method
that can be performed by human thought alone or by pen and paper is merely
an abstract idea and is not patent-eligible under § 101. Versata Development
Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015)
(citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373
(Fed. Cir. 2011). Furthermore, relying on a computer to perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015), cited in Ans. 3. So, even if a computer performs the claimed
method with fewer errors than a human, using a computer to perform the
argued process does not supply an inventive concept.
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Application 13/158,310
Inquiry therefore must turn to any requirements in the claim for how
the desired result is achieved. But in this case the claim’s invocation of a
generic computer does not transform the claimed subject matter into a
patent-eligible application. The claim at issue does not require any
nonconventional computer or display components, or even a “non-
con ventional and non-generic arrangement of known, conventional pieces,”
but merely calls for performance of the claimed information collection,
analysis, and display functions “on a set of generic computer components”
and display devices. Bascom Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016)
Appellant next argues “an analysis under McRo further supports
Appellant’s position that claim 10 is directed to patent-eligible subject
matter” because “[hjere, the automated process in claim 10 (e.g., the
highlighting of a portion of an image when a corresponding data is selected
in a datasheet) is performed differently from any ‘conventional’ practice of
which Appellant is aware.” Reh’g Req. 5. Appellant, thus, concludes that
“the features of claim 10 are not ‘well-understood, routine, and conventional
activities previously known to the pertinent industry.’” Reh’g Req. 6.
We disagree. We see no reason on the record to either accept or
question Appellant’s assertion that the claimed document processing method
is a valuable improvement over known document processing methods.
However, the fact that a claimed concept is “[groundbreaking, innovative,
or even brilliant” does not “itself satisfy the § 101 inquiry.” Ass ’n for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
A claim directed to a unique and advantageous method that can be
performed by human thought alone or by pen and paper nonetheless
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constitutes an abstract idea. “[U]nder the Mayo!Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility.” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); Diamond v. Diehr, 450 U.S.
175, 188-89 (1981).
Furthermore, Appellant’s reliance upon McRO is misplaced. (See
Request 3—4.) In McRO, the Federal Circuit held that “claim 1 is directed to
a patentable, technological improvement over the existing, manual 3-D
animation techniques’’ and “therefore, is not directed to an abstract idea.”
McRO at 1316 (emphasis added). In reaching this determination, the Federal
Circuit expressly distinguished 3-D animation steps from those involved in
“organizing [existing] information into anew form.” Id. at 1315.
Here, claim 10 is directed to organizing existing information into a
new form such as by highlighting a particular area of the image data (see
Decision 11), which immediately sets the claim apart from the claim
considered by the Federal Circuit in McRO. In the Request, Appellant does
not point with particularity to, and we do not see, any feature recited in
claim 10 that carries out a function unrelated to the identified abstract idea.
Rather, we find Appellant’s claim 10 bears a substantial similarity to the
analyzed claim 12 that the Federal Circuit determined was patent ineligible
in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016). Under the first step of Alice, the Federal Circuit in Electric Power
Group stated that
The claims in this case fall into a familiar class of claims
“directed to” a patent-ineligible concept. The focus of the
asserted claims, as illustrated by claim 12 . . . , is on collecting
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information, analyzing it, and displaying certain results of the
collection and analysis. We need not define the outer limits of
“abstract idea,” or at this stage exclude the possibility that any
particular inventive means are to be found somewhere in the
claims, to conclude that these claims focus on an abstract idea—
and hence require stage-two analysis under §101.
Id. at 1353. Similar to claim 12 in Electric Power Group, Appellant’s claim
10 involves collecting data from paper financial documents, analyzing the
data, and displaying results, the claim requiring no more than displaying the
results of abstract processes of collecting and analyzing information which is
abstract as an ancillary part of such collection and analysis. See, e.g.,
Content Extraction & Transmission LLC v. Wells Fargo Bank,
Natl Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014). As such, claim 10 is
“clearly focused on the combination of those abstract-idea processes” and
“[t]he advance [it purports] 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.”
Elec. Power Grp., 830 F.3d at 1354.
Accordingly, we are not persuaded of any basis for modifying the
Decision in light of the Rehearing Request.
REHEARING DECISION
While we have considered the Decision in light of the Request for
Rehearing, we decline to modify it in any respect.
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Pursuant to 37 C.F.R. § 41.52(a)(1), this decision is final for the
purpose of judicial review. A party seeking judicial review must timely
serve notice on the Director of the United States Patent and Trademark
Office. See 37 C.F.R. §§ 90.1 and 1.983.
DENIED
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