Ex Parte DeLuca et al

Patent Trial and Appeal Board

Jan 31, 2018

13744407 (P.T.A.B. Jan. 31, 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.
13/744,407 01/17/2013 Lisa Seacat DeLuca YOR920120563US1 9346
21254 7590 02/01/2018
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
KIM, DAE Y
ART UNIT PAPER NUMBER
2458
MAIL DATE DELIVERY MODE
02/01/2018 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
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LISA SEACAT DELUCA and BRIAN GOODMAN
Appeal 2017-009680
Application 13/744,4071
Technology Center 2400
Before NATHAN A. ENGELS, JAMES W. DEJMEK, and
MICHAEL M. BARRY, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—15, 17—22, and 25—28. Claims 16, 23, and 24 have been canceled.
Appeal Br. 27, 30. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. Appeal Br. 1.
Appeal 2017-009680
Application 13/744,407
REPRESENTATIVE CLAIM
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A method of informing a first entity of an activity of a second
entity, the method comprising:
tracking, using a processor on a computer, whether any files
related to the activity have been updated, to thereby automatically
monitor the activity of the second entity during a period between a
first time and a second time, the period between the first time and the
second time being between a time of a first meeting and a time of a
second meeting, the activity including a change made by the second
entity that is associated with a task related to the first meeting, the
tracking being performed by the processor, using a contextual
collaborative tool being used by the first and second entities for
accomplishing the task, the contextual collaborative tool
interconnecting various application programs into a unified user
interface to enhance collaboration among users;
calculating, using the processor, a level of progress toward a
milestone related to the activity that is achieved due to the updating of
the files that are tracked; and
informing the first entity of the activity of the second entity and
the achieved level of progress, based on the tracking.
Appeal Br. 24 (Claims App’x).
THE REJECTION
Claims 1—15, 17—22, and 25—28 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2-5.2
2 The Final Rejection additionally states that claim 24 is rejected under 35
U.S.C. § 101. Final Act. 2—5. But, as noted above, claim 24 has been
canceled. Appeal Br. 30. We treat this oversight by the Examiner as
harmless error.
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ANALYSIS
Appellants dispute the Examiner’s conclusion that claims 1—15, 17—
22, and 25—28 are directed to patent-ineligible subject matter under
35 U.S.C. § 101. Appeal Br. 6—23; Reply Br. 1—11. Our analysis below
focuses on whether the Examiner has properly applied the two-step test set
forth by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Banklnt 7, 134 S.
Ct. 2347 (2014).
In Alice, the Supreme Court reiterated the framework set out in Mayo
Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66 (2012), for
“distinguishing patents that claim . . . abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. If
a claim falls within one of the statutory categories of patent eligibility (i.e., a
process, machine, manufacture or composition of matter), then the first step
is to determine whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 134 S. Ct. at 2355. If so, the second step is to
determine whether any element, or combination of elements, amounts to
significantly more than the judicial exception. Alice, 134 S. Ct. at 2355.
The Examiner concludes that although Appellants’ claimed invention
broadly falls within the statutory categories of patent eligibility, the pending
claims are directed to an abstract idea, without reciting significantly more.
Final Act. 2—5. The Examiner characterizes claim 1 as directed to the
abstract idea of “organizing human activities” because its “tracking,”
“calculating,” and “informing” steps “describe the concept of informing an
entity of tracked milestone progress between two meetings, which is similar
to the abstract idea of concepts relating to interpersonal and intrapersonal
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activities, such as managing relationships or transactions between people,
social activities, and human behavior.” Final Act. 2—3.
In addition, the Examiner finds the “processor on a computer” and
“contextual collaborative tool” recited in claim 1 do not amount to
significantly more than the abstract idea. Final Act. 3^4. The Examiner
explains, “[ljooking at the limitations as an ordered combination also adds
nothing that is not already present when looking at the elements taken
individually.” Final Act. 4. The Examiner further explains “[t]here is no
indication that the combination of the elements improves the functioning of
a computer or improves any other technology. Their collective functions
merely provide conventional computer implementation.” Final Act. 4. The
Examiner also finds the additional elements recited in independent claims 9,
17, and 21 and dependent claims 2—8, 10—15, 18—20, 22, and 25—28 do not
render any of these claims patent eligible. Final Act. 4—5; see also Ans. 5—6.
Analysis Under Step 1 of Alice
Appellants argue the pending claims are not directed to an abstract
idea and that the Examiner’s characterization of the independent claims as
“organizing human activities” is inaccurate. Appeal Br. 6—23; Reply Br. 1—
11. Instead, Appellants assert the claims recites a specific application that
solves a new problem and improves technologies in the marketplace.
Appeal Br. 7, 9, 13—15, 21—22; Reply Br. 2, 9-11. More specifically,
Appellants assert:
a) “[T]he rejection currently of record proposes an abstract
idea that is much broader than the claimed invention itself
and . . . does not. . . reflect the literal language of the
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Application 13/744,407
specific method steps defined in the claimed invention”
(Appeal Br. 7 (emphasis omitted); Reply Br. 2);
b) “[T]he claimed invention provides a solution to [a] newly
recognized problem arising with computerized automatic
tracking of progress between meetings such as scrum
meetings used in managing projects” (Appeal Br. 9, see also
id. at 17—18; Reply Br. 10); and
c) Similar to the claims in Bascom,3 the claimed invention
“describes both a specific application and an improvement
to technologies in the marketplace” (Appeal Br. 14
(emphasis omitted), see also id. at 13—15, 21—22; Reply Br.
3,9-11).
We disagree with Appellants and agree with the Examiner that the
claims are directed to an abstract idea. Generally, claim 1 recites the steps
of tracking whether certain activity data has been updated, calculating a
level of progress towards a milestone achieved by the updated data, and
informing an entity of the certain activity and the achieved level of progress
based on the tracking. As further context, Appellants describe their
invention as “making a meeting more efficient, and . . . providing], prior to
the meeting, detailed information to one or more participants of relevant
events prior since any previous meeting.” Spec. 1:10-14.
Contrary to Appellants’ assertion that their invention solves a new
problem, Appellants’ Specification describes the invention as automating a
known manual process that was previously performed by a person who
would “manually track[] everything they have done since the last meeting in
a log,” “manually update the status of each task they are assigned in a timely
3 Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1351 (Fed. Cir. 2016).
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fashion,” and “inform [others] of their progress on a task for a time period
occurring from one meeting to the next.” Spec. 2:12—13, 21—22, 3:3—5. By
automating this known manual process, “entities are not required to
manually track everything they have done since a previous meeting or up to
an initial meeting. As a result each of the entities can become more
productive by focusing on accomplishing their tasks, rather than noting
every little change they make.” Spec. 16:8—12.
Although claim 1 and Appellants’ Specification describe using a
processor on a computer, files, and a contextual collaborative tool to perform
Appellants’ method, we agree with the Examiner that the recited steps of
claim 1 are directed to a method of organizing human activity
(see Final Act. 2—5; Ans. 2—8), and we disagree with Appellants that the
Examiner’s characterization of claim 1 is overly broad. To the contrary, the
Examiner addresses each limitation of claim 1 and explains how, consistent
with Appellants’ Specification, a human could perform each limitation.
See Ans. 4—5.
Courts have similarly determined that various methods of organizing
human activity fall “squarely within the realm of ‘abstract ideas.’”
Alice, 134 S. Ct. at 2357 (discussing methods for risk hedging and
intermediated settlement as non-limiting examples of organizing human
activity). Among others, recent cases from the Federal Circuit also have
“applied the ‘abstract idea’ exception to encompass inventions pertaining to
methods of organizing human activity.” In re TLI Commc ’ns LLC Patent
Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) (finding the claimed method of
classifying and storing images in an organized manner was a
well-established basic concept analogous to methods of organizing human
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activity); see Intellectual Ventures ILLC v. Capital One Bank (USA), 792
F.3d 1363, 1367 (Fed. Cir. 2015) (finding the claim at issue was directed to
the abstract idea of budgeting, which was “not meaningfully different from
the ideas found to be abstract in other cases before the Supreme Court and
our court involving methods of organizing human activity”).4
Similar to Appellants’ claims, the Federal Circuit has said that
abstract ideas include collecting information, analyzing the information by
using a mathematical algorithm, and displaying the results. Elec. Pwr. Grp.,
LLCv. Alstom S.A., 830 F.3d 1350, 1351-54 (Fed. Cir. 2016). The Federal
Circuit also recently affirmed two District Court decisions finding abstract
the ideas of booking, tracing, and tracking shipping containers. Wireless
Media Innovations, LLC v. Maher Terminals, LLC, 100 F. Supp. 3d 405,
415 (D.N.J. 2015), aff’d, 636 F. App’x 1014 (Fed. Cir. 2016); GTNexus,
Inc. v. Inttra, Inc., No. C 11-02145-SBA, 2015 WL 6747142, at *9 (N.D.
Cal. Nov. 5, 2015), affd, 669 F. App’x 562 (Fed. Cir. 2016).
We disagree with Appellants’ characterization of the claimed
invention as a specific application and improvement to technologies in the
marketplace, similar to the claims in Bascom. The claims in Bascom were
directed to a technology-based solution of a specific way to filter content on
the Internet that overcame existing problems with other Internet-filtering
systems and improved the performance of the computer system itself.
Bascom, 827 F.3d at 1351. By contrast, the instant claims are simply the
4 See also, e.g., Content Extraction & Transmission LLC v. Wells Fargo
Bank, Natl Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (finding claims
directed to collecting data, recognizing certain data within the collected data
set, and storing the recognized data drawn to an abstract idea and noting that
“humans have always performed these functions”).
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generic automation of traditional process, implementing a known manual
human activity on a computer for more efficient implementation of the
abstract idea. See Bascom, 827 F.3d at 1351 (distinguishing the patent-
eligible claims at issue from those in OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193
(2015) because the invention in OIP was simply the generic automation of
traditional price-optimization technique)). Merely “[ujsing a computer to
accelerate an ineligible mental process does not make that process
patent-eligible.” Bancorp Services, LLC v. Sun Life Assur. Co. of Canada,
687 F.3d 1266, 1279 (Fed. Cir. 2012); see also CLS Banklnt’l v. Alice Corp.
Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) affd,
134 S. Ct. 2347 (“simply appending generic computer functionality to lend
speed or efficiency to the performance of an otherwise abstract concept does
not meaningfully limit claim scope for purposes of patent eligibility”).
We also disagree with Appellants’ assertion that the recited concepts
of “scrum meetings” (see claims 27, 28) and “group effort” (see claims 9,
27, 28) indicate the claims solve a technological problem or add sufficient
specificity to render the claims non-abstract. To the contrary, the
Specification describes “scrum meetings” and “group effort” as known
teamwork concepts irrespective of technology. See Spec. 1:17—2:6.
Moreover, even if these limitations were novel or nonobvious and added a
degree of particularity to their respective claims, the underlying concept
merely encompasses the abstract idea of tracking data to determine if certain
data has been updated, analyzing the updated data, and providing the results.
See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
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In total, for the reasons stated above, we agree with the Examiner that
claim 1 recites an abstract idea. For the same reasons, we also agree with
the Examiner that independent claims 9, 17, and 21, which recite elements
similar to claim 1, and claims 2—8, 10-15, 18—20, 22, and 25—28, which
depend from independent claims 1, 17, or 21, are directed to an abstract idea.
Analysis Under Step 2 of Alice
We also agree with the Examiner that the claims do not recite
significantly more than an abstract idea. In determining whether a claim
recites significantly more than the abstract idea, “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.” Alice, 134 S. Ct. at 2357.
As identified by the Examiner, the claims recite additional elements—
“‘processor on a computer,’ ‘files,’ the concept of updating files to keep
track of progress of an activity,. . . ‘contextual collaborative tool’. ...” and
“‘memory device.’”5 Ans. 6. But, as the Examiner explains, these elements
are no more than generic and known computer elements or functionalities.
Ans. 5—6. “[T]he use of generic computer elements like a microprocessor or
user interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.” FairWarningIP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, LLCv.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)).
5 Each of the pending claims recites “a processor on a computer” (or
commensurately “a processor of a computer system”), “files,” the concept of
updating files, and “contextual collaborative tool,” whereas claims 9—15 and
26—28 additionally recite a “memory device.”
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In particular, Appellants assert the claims recite significantly more
than an abstract idea because they “describe a specific method of tracking
progress of tasks between meetings, using a contextual collaborative tool.”
Appeal Br. 8 (emphasis omitted), see also id. at 10, 11; Reply Br. 2—10.
But, as the Examiner explains, Appellants’ Specification describes “a
contextual collaborative tool” as nothing more than well-known and
conventional computer software ready for implementation. See Ans. 6
(citing Spec. 9:8—14 (“[A] ‘contextual collaborative tool’ is any of various
tools that implement cooperative software that interconnects relevant
applications such as word processors, instant messaging, calendars,
groupware, etc., into a unified user interface to enhance collaboration. There
are various such contextual collaborative tools currently available from . . .
vend[o]rs.”)); see also Spec. 8:18—20 (“For example, any known contextual
collaborative tool can be used. Some exemplary embodiments of the present
invention use Rational Team Concert by IBM®.”). Accordingly, we also
are unpersuaded by Appellants’ assertions in the Reply Brief that, because
the claims use a “contextual collaborative tool,” they are distinguishable
from the facts of Intellectual Ventures 16 and survive analysis under Ariosa.* 1
See Reply Br. 3—8.
Thus, Appellants have not presented, nor do we find, any persuasive
evidence to support the assertion that the additional elements recited in
independent claim 1 amount to significantly more than an abstract idea. For
the same reasons, Appellants have not persuaded us that independent claims
6 Intellectual Ventures ILLC v. Capital One Fin. Corp., 850 F.3d 1332
(Fed. Cir. 2017).
1 Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015).
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9, 17, and 21, and dependent claims 2—8, 10-15, 18—20, 22, and 25—28,
which were not argued separately with particularity, recite significantly
more than an abstract idea.
Appellants additionally argue “the rejection does not. . . evaluate any
preemptive effects,” and “the claimed invention cannot reasonably be
described as a . . . process . . . that could . . . preempt all possible methods to
achieve automatic tracking of progress between meetings.” Appeal Br. 7
(emphasis omitted), 9, see also id. at 8, 10, 12—13, 19-20; Reply Br. 8—9.
These arguments are unpersuasive. As the Examiner explains (see Ans. 7),
“the absence of complete preemption does not demonstrate patent
eligibility.” FairWarning, 839 F.3d at 1098 (quoting Ariosa, 788 F.3d at
1379). Accordingly, even if Appellants’ claims do not preempt all possible
methods to achieve automatic tracking of progress between meetings, this
“do[es] not make them any less abstract.” OIP, 788 F.3d at 1362—63.
Moreover, “[wjhere a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d
at 1379.
Appellants additionally argue “the Examiner’s withdrawal of the
obviousness rejections and the lack of any 35 USC § 112 issues, are clear
evidence that the claimed invention is not merely reciting an idea in the
abstract.” Appeal Br. 16 (emphasis omitted), see also id. at 15, 22. We
disagree. Subject-matter eligibility under 35 U.S.C. § 101 is a requirement
separate from other patentability inquiries. See Mayo, 566 U.S. at 90
(recognizing that the § 101 inquiry and other patentability inquiries “might
sometimes overlap,” but that “shift[ing] the patent-eligibility inquiry entirely
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to these [other] sections risks creating significantly greater legal uncertainty,
while assuming that those sections can do work that they are not equipped to
do”); Diamond v. Diehr, 450 U.S. 175, 190 (1981) (“The question ... of
whether a particular invention is novel is ‘wholly apart from whether the
invention falls into a category of statutory subject matter.’”).
Accordingly, having considered the Examiner’s rejection in light of
each of Appellants’ arguments and the evidence of record, we agree with the
Examiner that claims 1—15, 17—22, and 25—28 are directed to
patent-ineligible subject matter under 35 U.S.C. § 101.
DECISION
We affirm the Examiner’s decision rejecting claims 1—15, 17—22, and
25-28 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv)(2016).
AFFIRMED
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