Ex Parte Dunn

Patent Trial and Appeal Board

Sep 25, 2018

13226288 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/226,288
58139 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
09/06/2011
09/27/2018
FIRST NAMED INVENTOR
Tim Dunn
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.
GB920100032US1 3351
EXAMINER
ANY AN, BARBARA BURGESS
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIM DUNN
Appeal 2018-004134
Application 13/226,288
Technology Center 2400
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
NORMAN H. BEAMER, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
2--4, 7-9 and 12-14. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as International Business
Machines Corporation. App. Br. 1.
Appeal 2018-004134
Application 13/226,288
CLAIMED SUBJECT MATTER
The claims are directed to adaptive content-based publish/subscribe
messagmg. Claim 2, reproduced below, is illustrative of the claimed subject
matter:
2. A method for publish/subscribe messaging, comprising:
initiating a subscription comprising designating a
subscription queue to which published messages relating to the
subscription are to be put; and
defining, by a processor, multiple content-based filtering
expressions for the subscription, each of the filtering expressions
being defined for a given utilization of the subscription queue;
wherein the multiple filtering expressions are increasingly
restrictive filters defined for increasing utilization of the
subscription queue.
THE REJECTION
Claims 2--4, 7-9 and 12-14 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more.
OPINION
The Examiner finds that the concept of filtering content associated
subscription-based published messages and defining content-based filtering
expressions for a given utilization subscription queue associated with a
subscription corresponds to concepts that have been identified as abstract
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Application 13/226,288
ideas by the courts, such as Classen. 2 Non-Final 2. The Examiner further
finds that the generic computers performing generic computer functions,
without an inventive concept, do not amount to significantly more than the
abstract idea. Id.
Appellant responds that, "With respect to the Examiner's citing of
'Classen,' Appellant believes that the Examiner is relying upon Classen [ ]
in support of the assertion that Appellant's claimed invention is directed to
an abstract idea, namely, collecting and comparing known information."
App. Br. 9--10 (citation omitted). Appellant contends that. "In Classen, the
Federal Circuit held that the claim for the method of 'determining whether
an immunization schedule affects the incidence or severity of a chronic
immune-mediated disorder' is not directed to patent-eligible subject matter
under 35 U.S.C. § 101 since the claim does not require using information
gleaned from such review for immunization purposes." App. Br. 10 citing
Classen, 100 U.S.P.Q.2d 1492, 1500 (Fed. Cir. 2011). "Methods that simply
collect and compare data without applying the data in a step of the overall
method may fail to traverse the§ 101 filter. Id." App. Br. 10. Appellant
argues that the "claimed invention is not simply directed to collecting and
comparing data and neither is Appellant's claimed invention simply directed
to collecting and comparing data without using or applying the data." Id.
Appellant then cites to sections of the Specification to support that the
invention is drawn to also applying data. See App. Br. 10-21.
Appellant further argues that the invention amounts to significantly
more because "[t]he subscribing application will in effect still continue to
see new published messages for much longer as the queue full condition will
2 Classen Immunotherapies Inc. v. Biogen IDEC, 100 U.S.P.Q.2d 1492 (Fed.
Cir. 2011)
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Appeal 2018-004134
Application 13/226,288
have been averted for much longer by reducing the rate at which new
published messages are accepted onto the subscription queue." App. Br. 26.
The Supreme Court's two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. v. CLS Bankint'l,
134 S. Ct. 2347, 2355 (2014). 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 inquiry is 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.
With respect to the first step in Alice, our reviewing court concluded
"receiving e-mail ( and other data file) identifiers, characterizing e-mail
based on the identifiers, and communicating the characterization-in other
words, filtering files/e-mail-is an abstract idea." Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016). Additionally
the court concluded claims related to "receiving, screening, and distributing
e-mail" were not patent eligible under§ 101. Intellectual Ventures, 838 F.3d
at 1316.
Our reviewing court has also concluded that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection,
storage, and recognition of data are directed to an abstract idea").
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Appeal 2018-004134
Application 13/226,288
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F .3d
1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another
abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016) ( determining the pending claims were directed to a combination of
abstract ideas).
Here Appellant's claims directed to "multiple filtering expressions" to
increasing utilization of the subscription queue amounts to filtering data
similar to filtering e-mail determined to be an abstract idea. See Intellectual
Ventures, 838 F.3d at 1316. Furthermore, while Appellants cite to the
Specification to support that the invention is drawn to also using and
applying the data, rather than mere manipulation of data, we note that such
application of data lacks from the claims. See App. Br. 10-21.
Therefore, we conclude that claim 2 is "directed to" a patent-ineligible
abstract idea, and we now consider the elements of the claim-both
individually and as an ordered combination-to assess whether the
additional elements transform the nature of the claim into a patent-eligible
application of the abstract idea as required by step two of Alice. Alice,
134 S. Ct. at 2355. This is a search for an "inventive concept"-an element
or combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. "[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. We conclude that they do not.
When considering claims purportedly directed to an improvement of
computer functionality, the inquiry becomes "whether the focus of the
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Application 13/226,288
claims is on the specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36 (Fed. Cir. 2016). In the instant claim 2, the
computer implemented method is merely used as a tool to execute multiple
filtering expressions.
Accordingly, we affirm the Examiner's rejection of claim 2 and for
the same reasons the rejections of claims 3--4, 7-9 and 12-14 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter.
DECISION
The Examiner's rejection of claims 2--4, 7-9 and 12-14 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).
AFFIRMED
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