Ex Parte Doss et al

Patent Trial and Appeal Board

Jan 19, 2018

11926059 (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.
11/926,059 10/28/2007 J. Smith Doss RSW920020074US2 3939
43168 7590 01/23/2018
LAW OFFICE OF MARCIA L. DOUBET, P. L.
PO BOX 1087
Lake Placid, EL 33862
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
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):
mid @ mindspring, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. SMITH DOSS,
RENEE M. KOVALES,
DIANE P. POZEFSKY,
and ROBERT J. SUNDSTROM
Appeal 2016-002974
Application 11/926,059
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
J. Smith Doss, Renee M. Kovales, Diane P. Pozefsky, and Robert J.
Sundstrom (Appellants) seek review under 35 U.S.C. § 134 of a final
rejection of claims 1—9, the only claims pending in the application on appeal.
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 7, 2015) and Reply Brief (“Reply Br.,” filed January 27,
2016), and the Examiner’s Answer (“Ans.,” mailed December 4, 2015), and
Final Action (“Final Act.,” mailed April 7, 2015).
Appeal 2016-002974
Application 11/926,059
This is the second time this application has been appealed. We reversed the
Examiner’s anticipation rejection in the prior appeal.2 We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of keeping working hours and calendar
entries up-to-date. Specification para. 25.
An understanding of the invention can be derived from a reading of
exemplary claim 7, which is reproduced below (bracketed matter and some
paragraphing added).
7. A computer-implemented method of keeping scheduled
working hours up-to-date for a user’s electronic calendar,
comprising:
[1] defining, for a calendar user, a plurality of profiles,
wherein each profile specifies a set of working hours for
the user's electronic calendar;
[2] applying a first one of the profiles to a first future day or
days for the user’s electronic calendar,
responsive to selection of the first one by the user,
thereby associating the set of scheduled working hours
from the first profile with the first future day or days;
[3] applying a second one of the profiles to a second future day
or days for the user’s electronic calendar,
responsive to selection of the second one by the user,
thereby associating the set of scheduled working hours
from the second profile with the second future day or
days,
wherein:
2 Decision mailed October 20, 2014.
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the first future day or days does not overlap the
second future day or days;
and
at least one difference exists between the set of
scheduled working hours from the first profile and
the set of scheduled working hours from the
second profile;
and
[4] simultaneously using, by the electronic calendar,
the set of scheduled working hours from the first profile
as the user’s scheduled working hours on the first future
day or days
and
the set of scheduled working hours from the second
profile as the user’s scheduled working hours on the
second future day or days.
Claims 1—9 stand rejected under 35U.S.C. § 101 as directed to non-
statutory subject matter.
ISSUES
The issues of eligible subject matter turn primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
ANALYSIS
Method claim 7 creating and applying profile data to associate two sets
of days with two schedules, and using the two sets of days in the two
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schedules simultaneously. Thus, claim 7 recites creating and analyzing data.
None of the limitations recite implementation details for any of these steps,
but instead recite functional results to be achieved by any and all possible
means. Data reception and analysis are generic, conventional data
processing operations to the point they are themselves concepts awaiting
implementation details. The sequence of data reception-analysis is equally
generic and conventional. The ordering of the steps is therefore ordinary
and conventional. The remaining claims merely describe parameters that
may be entered and fields for such entry, with no implementation details.
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,
[] 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 “‘inventive 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., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
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directed to defining user profiles and updating an electronic calendar
accordingly. Final Act. 2—3.
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 7 recites that it is a method of keeping scheduled
working hours up-to-date for a user’s electronic calendar. The steps in
claim 7 result in using plural different sets of working hours in a calendar.
The Specification at paragraph 25 recites that the invention relates to
keeping working hours and calendar entries up-to-date. Thus, all this
evidence shows that claim 7 is directed to keeping scheduled working hours
up-to-date, i.e., scheduling.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappos,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of scheduling
is a fundamental business practice long prevalent in our system of
commerce. The use of scheduling is also a building block of all planning.
Thus, scheduling, like hedging, is an “abstract idea” beyond the scope of
§ 101. See Alice, 134 S. Ct, at 2356.
As in Alice, 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 scheduling at issue here. Both are
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squarely within the realm of “abstract ideas” as the Court has used that term.
See Alice, 134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent-ineligible concept”); see also In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 7, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data creation, analysis, and storage
and does not recite an improvement to a particular computer technology.
See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314—15 (Fed. Cir. 2016) (finding claims not abstract because they “focused
on a specific asserted improvement in computer animation”). As such, claim
7 is directed to the abstract idea of creating, analyzing, and storing data.
The remaining claims merely describe the parameters used for such
scheduling. 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 if” is
not enough for patent eligibility. Nor is limiting the use of an
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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, 134 S. Ct. at 2358 (citations omitted).
“[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, 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 define, apply, and use data amounts to electronic data query and
retrieval—one of the most basic functions of a computer. The limitation of
the wherein clause is not a step, but a recitation of how the data is presumed
to be, which is aspirational rather than functional. All of these computer
functions are well-understood, routine, conventional activities previously
known to the industry. In short, each step does 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
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are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of scheduling as performed by a generic computer.
To be sure, the claims recite doing so by advising one to use plural sets of
working day parameters and schedule accordingly. But this is no more than
abstract conceptual advice on the parameters for such scheduling and the
generic computer processes necessary to process those parameters, and do
not recite any particular implementation.
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. The Specification spells out
different generic equipment and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of scheduling under different scenarios. They do not
describe any particular improvement in the manner a computer functions.
Instead, the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of scheduling using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
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Alice, 134 S. Ct. at 2360.
We are not persuaded by Appellants’ argument that the claims do not
meet the Alice test. App. Br. 11—17. We apply the Alice test supra and find
the claims do not meet that test.
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the Court evaluated
the eligibility of claims “address[ing] the problem of retaining website
visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host’s website after ‘clicking’ on an advertisement and activating a
hyperlink.” Id. at 1257. There, the Court found that the claims were patent-
eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no “pre-Internet
analog.” Id. at 1258. The Court cautioned, however, “that not all claims
purporting to address Internet-centric challenges are eligible for patent.”
Id. For example, in DDR Holdings the Court distinguished the patent-
eligible claims at issue from claims found patent-ineligible in
Ultramercial. See id. at 1258—59 (citing Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 714—16 (Fed. Cir. 2014)). As noted there, the
Ultramercial claims were “directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at
714—16). Nevertheless, those claims were patent-ineligible because they
“merely recite[d] the abstract idea of ‘offering media content in exchange
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for viewing an advertisement,’ along with ‘routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.’” Id.
Appellants’ asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website”; “restricting general public access to said
media product”; “receiving from the consumer a request to view [a]
sponsor message”; and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” 772 F.3d at 712. Similarly, Appellants’ asserted claims recite
generating, applying, and storing data. This is precisely the type of
Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellants’ argument that the claims are
clearly directed to a new and useful end. App. Br. 19. “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.
Ct. 2107, 2117 (2013). “[A] claim for a new abstract idea is still an abstract
idea. The search for a § 101 inventive concept is thus distinct from
demonstrating § 102 novelty.” Synopsys, Inc. v. Mentor Graphics
Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016).
We are not persuaded by Appellants’ argument that these claims seek
only to pre-empt others from use of the claimed invention as a whole. App.
Br. 21. The claimed invention as a whole advises one to use plural sets of
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working day parameters and schedule accordingly, albeit in a computer
context. This is abstract conceptual advice devoid of technical
implementation details. Abstract conceptual advice may be extremely
useful, such as the aphorisms “a stitch in time ...” and “an ounce of
prevention . . .” that form the heart of today’s preventative maintenance
industry. But abstract conceptual advice is still abstract.
That the claims do not preempt all forms of the abstraction or may be
limited to the abstract idea in the e-commerce setting do not make them any
less abstract. See OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1360-1361 (Fed. Cir. 2015). Beyond the abstract idea of advertising
distribution, the claims merely recite well-understood, routine conventional
activities, either by requiring conventional computer activities or routine
data-gathering steps. “Considered individually or taken together as an
ordered combination, the claim elements fail ‘to ‘transform’ the claimed
abstract idea into a patent eligible application.’” Id. at 1363. Because the
claims are directed to an abstract idea, the claims must include an “inventive
concept” in order to be patent-eligible. No such inventive concept is present
here. Instead, the claims “add” only generic computer components such as a
“system,” “network,” and “server.” These generic computer components do
not satisfy the inventive concept requirement. See Mortgage Grader, Inc. v.
First Choice Loan Services Inc., 811 F.3d 1314, 1324—1325 (Fed. Cir.
2016).
We are not persuaded by Appellants’ argument that factual evidence does
not support the findings under Alice. App. Br. 22. We find the intrinsic
record provides sufficient factual evidence supra.
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We are not persuaded by Appellants’ argument that the claims recite
claim elements corresponding to functions that are not well-understood,
routine, or conventional activities and that these functions were not
previously known to the pertinent industry. App. Br. 24. Appellants do not
provide any evidence, but instead make this assertion in a conclusory
manner. The steps recited are those of data generation, analysis, and
storage. It is untenable to assert these steps are not well-understood, routine,
or conventional activities. Appellants apparently mean to argue that the
particular data operated upon is novel. But data per se is the height of
abstraction, being binary digit strings of arbitrary sequence dependent upon
an encoding scheme. What the data stands for is perceptible only to the
human mind, which is afforded no patentable weight. In re Bernhart, 417
F.2d 1395, 1399 (CCPA 1969).
We are not persuaded by Appellants’ argument that the Office fails to
explain why the elements do not add significantly more to the asserted
judicial exception. App. Br. 25. We make such findings supra. Again, the
claims recite what a computer is to provide without providing some
technically beneficial implementation, but instead only recite routing data
generation, analysis, and storage. At bottom, the claims take two sets of
abstract ideas — two sets of working hours — and apply them to another
abstract idea — a schedule. The hours and schedule are perceptible only in
the human mind.
Appellants’ remaining arguments repeat those supra.
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CONCLUSIONS OF LAW
The rejection of claims 1—9 under 35 U.S.C. § 101 as directed to non—
statutory subject matter is proper.
DECISION
The rejection of claims 1—9 is affirmed.
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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