Ex Parte Engel et al

Patent Trial and Appeal Board

May 10, 2018

11865593 (P.T.A.B. May. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/865,593 10/01/2007
83579 7590 05/14/2018
LEVEL 3 COMMUNICATIONS, LLC
Attn: Patent Docketing
1025 Eldorado Blvd.
Broomfield, CO 80021
FIRST NAMED INVENTOR
Dean Engel
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.
0084-US-Ul 5583
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
05/14/2018 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):
patent.docketing@level3.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEAN ENGEL, PHIL BENZ, SUDHIR PONDUGULA,
SUSAN PRUETT, and CHAD HARTMAN
Appeal2017-000416 1
Application 11/865,593 2
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-8 and 10-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed
December 7, 2015) and the Examiner's Answer ("Ans.," mailed July 29,
2016) and Final Office Action ("Final Act.," mailed May 4, 2015).
2 Appellants identify Level 3 Communications, LLC as the real party in
interest. Br. 2.
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Application 11/865,593
CLAIMED INVENTION
Appellants' claimed invention "generally relate[ s] to validating
customer-entered addresses," and more specifically, "to providing location-
based services based on customer-entered addresses" (Spec. i-f 2).
Claims 1, 12, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method for providing a
location-based service, the method comprising:
receiving address data identifying a customer entered civic
address of a customer requesting telecommunication services;
validating the received address data to determine if the
identified address is an actual address;
determining a location corresponding to the identified
civic address based on the address data;
generating a location key using a processor to form the
location key based on the location, wherein generating the
location key comprises forming the location key by combining a
rate center associated with the identified address and one or more
area criteria associated with the identified address; and
determining whether one or more services are available at
the identified civic address based on the-generated location key.
REJECTIONS
Claims 2, 3, and 12-20 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter that Appellants regard as the invention.
Claims 1-8 and 10-20 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
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Claims 1, 4--8, and 12-15 are rejected under 35 U.S.C. § 102(b) as
anticipated by Coughlin, Jr. et al. (US 2005/0169449 Al, pub. Aug. 4, 2005)
(hereinafter "Coughlin"). 3
Claims 2, 3, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Coughlin and Searight et al. (US 7,668,651 B2,
iss. Feb. 23, 2010).
Claims 16-18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Coughlin and Mihm et al. (US 5,387,783, iss. Feb. 7, 1995) (hereinafter
"Mihm").
Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Coughlin, Mihm, and Miller et al. (US 2003/0225725 Al,
pub. Dec. 4, 2003).
ANALYSIS
Indefiniteness
Dependent Claims 2 and 3
Appellants do not provide any response to the Examiner's rejection of
claims 2 and 3 under 35 U.S.C. § 112, second paragraph. Therefore, the
Examiner's rejection is summarily sustained.
Independent Claim 12 and Dependent Claims 13-15
Independent claim 12 is directed to a system for identifying one or
more location-based services available at an address, and recites that the
system comprises an "address validation and resolution module"; a "location
3 We treat the Examiner's reference to canceled claim 9 (Final Act. 13) as a
typographical error.
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key generator"; and an "available services determination module."
Claims 13-15 depend from claim 12.
In rejecting independent claim 12 under 35 U.S.C. § 112, second
paragraph, the Examiner finds that the terms "address validation and
resolution module"; "location key generator"; and "available services
determination module" are "generic placeholders" rather than specific
structural elements, and the Examiner concludes that Appellants, by the use
of these terms, intended to invoke 35 U.S.C. § 112, sixth paragraph (Final
Act. 4--6). The Examiner further finds that the corresponding structure for
these means-plus-function elements is a processor, and that claim 12 is
indefinite because the Specification does not disclose an algorithm for
performing the claimed functions (Final Act. 7-8).
Appellants ostensibly maintain that claim 12 does not invoke the
application of 35 U.S.C. § 112, sixth paragraph, because the claim recites
sufficient structure, i.e., the "Specification clearly defines a module as 'a
self-contained functional component'" (Br. 5). But, we find no indication in
the record that a person of ordinary skill in the art, on reading the
Specification, would understand the terms "address validation and resolution
module," "location key generator," and "available services determination
module" to connote specific structure, nor any indication that these terms are
used in common parlance or by persons of skill in the art to designate
particular structure. See, e.g., Advanced Ground Info. Sys., Inc. v. Life3 60,
Inc., 830 F.3d 1341, 1347--48 (Fed. Cir. 2016) ("'The standard is whether
the words of the claim are understood by persons of ordinary skill in the art
to have a sufficiently definite meaning as the name for structure."') (quoting
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)).
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Instead, we find that the term "module," as used here, is simply a nonce
word substitute for the phrase "means for," and that "address validation and
resolution" and "available services determination" are merely adjectives that
describe the claimed modules. Therefore, we agree with the Examiner that
the "address validation and resolution module," "location key generator,"
and "available services determination module" limitations should properly
be regarded as "means plus function" limitations.
The Specification indicates, as Appellants also acknowledge (Br. 5-
6), that "[a] module may be implemented in hardware, software, firmware,
or any combination thereof' (Spec. i-f 38). Thus, the "modules" are broad
enough to encompass only software, as the Examiner concludes (Final
Act. 7). And implementation as software requires the disclosure of an
algorithm.
Appellants do not dispute the Examiner's finding that the
Specification fails to disclose an algorithm for performing the claimed
functions; nor do Appellants otherwise identify where an algorithm can be
found in the Specification. Therefore, we sustain the Examiner's rejection
of independent claim 12 under 35 U.S.C. § 112, second paragraph. See
Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013)
(holding that a computer-implemented means-plus-function limitation is
indefinite because the specification failed to disclose the specific algorithm
used by the computer to perform the recited function). For the same reasons,
we also sustain the rejection of dependent claims 13-15.4
4 Dependent 13 recites that "the address validation and resolution module is
further operable to validate the civic address by querying one or more of
customer supplied data stores, a geospatial data store and a postal service."
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Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
The Examiner rejects claim 13 as indefinite under§ 112, second paragraph,
on the further ground that it is unclear "as to how the querying is performed"
(Final Act. 9). Appellants do not provide any response. Therefore, the
rejection of claim 13 on this additional basis is summarily sustained.
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or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting claims 1-8 and 10-20 under 35 U.S.C. § 101, the
Examiner determined that the claims are directed to "information validation
or, alternatively, provisioning of services based on location, specifically,
validating a customer's address in order to determine what services are
available at the customer's address," which the Examiner concluded is "a
fundamental economic practice, a method of organizing human activities, an
idea of itself, or a mathematical relationship or formula," and, therefore, an
abstract idea (Final Act. 10). The Examiner also determined that the claims
do not include additional elements or a combination of elements that
provides meaningful limitations to transform the abstract idea into a
patent-eligible application of the abstract idea such that the claims amount to
significantly more than the abstract idea itself (id. at 10-11). 5
Appellants argue that the§ 101 rejection cannot be sustained because
the Examiner has failed to establish a prima facie case of patent-ineligibility
(Br. 6). Appellants assert that the Examiner merely states that the claimed
invention is an abstract idea and lists all four categories, but "has not
5 The Examiner also concluded that claims 12-17 are directed to software
per se and, therefore, to non-statutory subject matter (Br. 11 ), and that
claims 18-20 similarly encompass non-statutory subject matter, i.e.,
transitory signals (id. at 12). Appellants do not address these
determinations.
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provided any reason why 'validating a customer's address in order to
determine what services are available at the customer's address' is an
abstract idea" (id.).
There is no dispute that additional explanation is always helpful. But
we cannot agree that the Examiner's rejection is insufficient to put
Appellants on notice of the basis for the rejection; nor do we agree that the
Examiner has otherwise failed to set forth a prima facie case of patent-
ineligibility. 6
The Federal Circuit has repeatedly observed that "the prima facie case
is merely a procedural device that enables an appropriate shift of the burden
of production." Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007)
(citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has,
thus, held that the USPTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for the rejection, "together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." See In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original). Thus, all that
is required of the Office is that it sets forth the statutory basis of the rejection
in a sufficiently articulate and informative manner as to meet the notice
requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990) ("Section 132 is violated when a rejection is so
6 We also note for the record that Examiner provided an expanded
discussion of the§ 101 rejection in the Examiner's Answer (Ans. 3-24).
Appellants did not file a Reply Brief or otherwise offer any response to this
expanded discussion.
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uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.").
Here, the Examiner set forth the basis for the § 101 rejection in a
sufficiently articulate and informative manner as to meet the notice
requirement of§ 132. And, we find that, in doing so, the Examiner set forth
a proper rejection under§ 101 such that the burden shifted to Appellants to
demonstrate that the claims are patent-eligible.
We also are not persuaded of Examiner error by Appellants' further
argument that the claims are patent-eligible because the claims satisfy the
transformation prong of the Bilski7 machine-or-transformation test (Br. 6-7).
Appellants note that claim 1, for example, recites "generating a location key
... by combining a rate center associated with the identified address and one
or more area criteria associated with the identified address" (id. at 6). And
Appellants argue that "[t]he combination of the rate center with one or more
area criteria results in transformation of electronic data" (id.). But, this
alleged "transformation" is, at best, merely a manipulation of data, which is
not sufficient to meet the transformation prong under 35 U.S.C. § 101.
See Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972) (holding that a
computer based algorithm that merely transforms data from one form to
another is not patent-eligible).
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1-8 and 10-20 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection.
7 Bilski v. Kappas, 561 U.S. 593 (2010).
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Anticipation
Independent Claim 1 and Dependent Claims 4-8
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claim 1under35 U.S.C. § 102(b) at least because Coughlin does
not disclose "generating a location key ... by combining a rate center
associated with the identified address and one or more area criteria
associated with the identified address," as recited in claim 1 (Br. 7-8).
The Examiner cites paragraphs 38, 41, 43, 78, 92, 106, 120, and 121
of Coughlin as disclosing the argued limitation (Final Act. 13-14). And the
Examiner explains that although Coughlin does not explicitly use the term
"location key," this is "nothing more than a label that has been assigned to
the customer's order" (id. at 17). The Examiner, thus, takes the position that
the claimed "location key" is nothing more than "information that is used by
the service provider to describe the specific services that are going to be
provided at a specific (and valid) address"; that Coughlin discloses that
information about the order includes valid address information, the services
available at the valid address, and criteria"; and that "although Coughlin
does not use the same terminology as that of the claimed invention, ... the
concept is still taught" (id.).
We have carefully reviewed the portions of Coughlin on which the
Examiner relies. But, we find no disclosure in the cited paragraphs that an
order record, which the Examiner equates to the claimed "location key," is
generated (based on a validated address) by combining a rate center and one
or more area criteria associated with the identified address, as claim 1
requires. Instead, the best that Coughlin discloses is that an order entry
module receives a customer order; confirms/validates the address of the
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customer that is provided in the service order; and assigns the customer
order to a rate center for fulfillment of the customer order.
In view of the foregoing, we do not sustain the Examiner's rejection
ofclaim 1under35 U.S.C. § 102(b). For the same reasons, we also do not
sustain the Examiner's rejection of dependent claims 4--8.
Independent Claim 12 and Dependent Claims 13-15
Independent claim 12 includes language substantially similar to the
language of claim 1. Therefore, we do not sustain the Examiner's rejection
under 35 U.S.C. § 102(b) of claim 12, and claims 13-15, which depend
therefrom, for the same reasons set forth above with respect to claim 1.
Obviousness
Independent claim 18 includes language substantially similar to the
language of claim 1. The Examiner's rejections of independent claim 18 and
dependent claims 2, 3, 10, 11, 16, 17, 19, and 20 are based on the same
rationale with respect to Coughlin applied in rejecting claims 1 and 12 under
35 U.S.C. § 102(b). Therefore, we do not sustain the Examiner's rejections
of independent claim 18 and dependent claims 2, 3, 10, 11, 16, 1 7, 19, and
20 for substantially the same reasons set forth above with respect to claims 1
and 12.
DECISION
The Examiner's rejection of claims 2, 3, and 12-20 under 35 U.S.C.
§ 112, second paragraph, is affirmed.
The Examiner's rejection of claims 1-8 and 10-20 under 35 U.S.C.
§ 101 is affirmed.
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The Examiner's rejection of claims 1, 4--8, and 12-15 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner's rejections of claims 2, 3, 10, 11, and 16-20 under
35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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