Ex Parte Finn et al

Patent Trial and Appeal Board

Aug 11, 2017

14179649 (P.T.A.B. Aug. 11, 2017)

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.
14/179,649 02/13/2014 Peter G. Finn END920070058US2 6844
45092 7590 08/15/2017
HOFFMAN WARNTOK T T C EXAMINER
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3629
NOTIFICATION DATE DELIVERY MODE
08/15/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER G. FINN, RICK A. HAMILTON II,
NEIL A. KATZ, and JAMES W. SEAMAN
(INTERNATIONAL BUSINESS MACHINES CORPORATION)
Appeal 2015-008327
Application 14/179,649
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1, 3—11, 13—19, and 21—25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed May 11, 2015), Reply Brief (“Reply Br.,” filed Sept. 22,
2015), and Specification (“Spec.,” filed Feb. 13, 2014), and to the
Examiner’s Answer (“Ans.,” mailed July 22, 2015) and Final Office Action
(“Final Act.,” mailed Jan. 15, 2015).
2 According to the Appellants, the real party in interest is International
Business Machines Corporation. Appeal Br. 2.
Appeal 2015-008327
Application 14/179,649
STATEMENT OF THE CASE
The Appellants’ invention “relates generally to virtual universes, and
more specifically to personal customer services within a virtual universe.”
Spec. 12.
Claims 1, 11, 19, and 25 are the independent claims on appeal.
Claim 1 (Appeal Br. 14 (Claims App.)) is illustrative of the subject matter on
appeal, and is reproduced below:
1. A method for rendering personal service assistance in a
virtual universe, comprising:
providing access, using at least one computing device, to
a personal customer service representative (PCSR) avatar,
wherein the PCSR avatar interacts with a customer avatar (CA);
defining, using the at least one computing device, a request
for customer service from the CA via the PCSR avatar, wherein
the defining includes establishing, using the at least one
computing device, a simplified determinative logic for
interpreting input in communication from the CA with the PCSR
avatar;
determining, using the at least one computing device, a
business based upon the request for customer service from the
CA utilizing the simplified determinative logic established by the
at least one computing device;
connecting, using the at least one computing device, the
PCSR avatar to the business;
facilitating, using the at least one computing device, an
interaction between a representative of the business and the CA
via the PCSR avatar, wherein, in response to connecting the
PCSR avatar to the business, the representative of the business
automatically takes temporary control of the PCSR avatar.
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Application 14/179,649
REJECTIONS
Claims 1, 3—11, 13—19, and 21—25 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
Final Act. 2—3.
Claims 1, 3—11, 13—19, and 21—25 stand rejected under
35 U.S.C. § 101 on the basis of non-statutory double patenting over
US 8,655,674 B2. Id. at 4.
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)). The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (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, 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. (citing
Mayo, 132 S. Ct. at 1296—97) (emphasis added). If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
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combination”’ to determine whether the additional elements ‘“transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
132 S. Ct. at 1297-98).
In other words, the second step is to “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.’” Id. (alteration in original) (quoting
Mayo, 132 S. Ct. at 1294). The Court acknowledged in Mayo, that “all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293.
We, therefore, look to whether the claims focus on a specific means or
method that improves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea, and merely invoke generic
processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
We find unpersuasive the Appellants’ argument that the Examiner
“has failed to establish aprima facie rejection” because the Examiner does
not provide a sufficient analysis as outlined in the “US Patent and
Trademark Office issued [ ] memorandum on preliminary examination
instructions (the ‘Memorandum’).”3 Appeal Br. 7. We note that the
guidelines are not legal requirements. Cf. In re Fisher, 421 F.3d 1365, 1372
(Fed. Cir. 2005) (“The MPEP and Guidelines ‘are not binding on this
3 It is not apparent to which Memorandum the Appellants refer. For
purposes of this Appeal, we consider that the Appellants are referring to the
USPTO’s “2014 Interim Guidance on Patent Subject Matter Eligibility,”
79 Fed. Reg. 74618 (Dec. 16, 2014) (“2014 Interim Guidance”).
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court.’”) (citations omitted); andMPEP, Foreword (“The Manual does not
have the force of law or the force of the rules in Title 37 of the Code of
Federal Regulations.”).
Here, the Examiner clearly articulates the reasons why the claims are
not patent-eligible under § 101. See Final Act. 2—3. The Examiner follows
the framework set forth by the Court in Alice, and analyzes the claims in
accordance with the guidance set forth in the USPTO’s “2014 Interim
Guidance.” See Final Act. 3; Ans. 4—5; see also Alice, 134 S. Ct. at 2355.
Specifically, the Examiner notifies the Appellants that the claims
(independent and dependent) are directed to the abstract idea of “rendering
personal service assistance in a virtual universe,” i.e., a method of
organizing human activities. Final Act. 3; Ans. 4. The Examiner further
finds that the claims do not amount to significantly more than the abstract
idea because they:
do not recite an improvement to another technology or technical
field, an improvement to the functioning of the computer itself,
or meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. The
steps recited include generic computer elements performing the
functions, namely, defining a request, determining a business by
establishing communication using logic, connecting and
facilitating steps are performed by at least one processor, and
these elements do not add a meaningful limitation to the abstract
idea of rendering personal service (customer service) in a virtual
universe because they would be routine in any computer
implementation. The claim(s) does/do not include additional
elements that are sufficient to amount to significantly more than
the judicial exception because the claims are merely steps of
gathering data (defining a request for customer) and making
comparisons of those data points against specified business rule
(determining a business based upon request).
Ans. 4 (citing Spec. 130, Fig. 3 for a general purpose computer).
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Against this background, we turn to the first step of the Alice analysis,
whether the claims are directed to an abstract idea. We find supported the
Examiner’s finding that the claims are directed to “rendering personal
service assistance in a virtual universe,” i.e., a method of organizing human
activities. Final Act. 3; Ans. 4. The Appellants admit that the claims are
directed toward this idea. Appeal Br. 9. The steps and functions of
independent claims 1, 11, 19, and 25 are directed to providing a customer
avatar with access to a PCSR avatar, defining a request for customer service
including establishing a simplified determinative logic for interpreting input
from the customer avatar to the PCSR avatar, determining a business based
upon the request, connecting the PCSR avatar to the business, and
facilitating an interaction between a representative of the business and the
customer avatar via the PCSR avatar. Appeal Br. 14—20 (Claims App.). The
Specification provides that the invention is directed to providing customer
service in a virtual environment. Spec. 1 6; see also id. 12. The
Specification further discusses that virtual universes are common in online
games. Id. 1 3. One problem in these universes is that shopping via the
avatars of the universes is not user friendly in that “consumer avatars may
find it time consuming to search for an appropriate item or service that is
suitable for their needs.” Id. 14. An avatar may desire assistance and more
information to save time and make a more informed purchase. Id. Thus, the
problem with which the invention is concerned is facilitating shopping by
providing better customer service (see id. 22—24), a problem existing
before virtual gaming and not rooted in technology. Rendering personal
service assistance is a method of organizing human activity long prevalent in
commerce. The claims “merely appl[y] a well-known idea using generic
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computers ‘to the particular technological environment of the Internet,’” in
particular to a virtual environment. Intellectual Ventures ILLC v. Symantec
Corp., 838 F.3d 1307, 1314 (Fed. Cir. 2016) (quoting DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014). In this way, the
claims resemble similar abstract ideas our reviewing courts have deemed
ineligible. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1367, 1369 (Fed. Cir. 2015) (customizing web page content and
budgeting using a communication medium), Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1348 (Fed.Cir.2015) (“retaining information in the
navigation of online forms”); Alice, 134 S. Ct. at 2356—57 (intermediated
settlement).
We find unpersuasive the Appellants’ argument that because the
claims “establish[] logic for communicating with the PCSR[,] . . . the recited
claim language is not directed toward an abstract idea.” Appeal Br. 9; see
also Reply Br. 3. The establishing of a simplified logic for interpreting input
further defines the method of rendering assistance, but does not alter that the
claims are directed to rendering assistance. Further, limiting the method to a
particular technological environment or field of use of virtual reality does
not make the concept patentable. Bilski v. Kappos, 561 U.S. 593, 611—12
(2010). We also find unpersuasive the Appellants’ argument that the
claimed invention is not directed to an abstract idea because it is “directed to
a novel and nonobvious approach to providing access to a PCSR avatar and
a novel and nonobvious approach to communication with the PCSR.”
Appeal Br. 9-10; see also Reply Br. 3. A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 132 S. Ct. at 1304.
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We further find unpersuasive the Appellants’ argument that the
claimed invention is not directed to an abstract idea because “it does not
seek a monopolization of the concept of rendering personal service
assistance in a virtual universe.” Appeal Br. 10. Although monopolization,
i.e., preemption, “might tend to impede innovation more than it would tend
to promote it, ‘thereby thwarting the primary object of the patent laws’”
{Alice, 134 S. Ct. at 2354 (quoting Mayo, 132 S. Ct. at 1293)), “the absence
of complete preemption does not demonstrate patent eligibility” (Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 2511 (2016); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir.), cert, denied, 136
S. Ct. 701 (2015) (“[T]hat the claims do not preempt all price optimization
or may be limited to price optimization in the e-commerce setting do not
make them any less abstract.”)).
Turning to the second step of the Alice framework, the Appellants
assert that the claims are nonetheless directed to patent-eligible subject
matter because the “claimed invention recites an element, or combination of
elements, in the claims that are [sic] sufficient to ensure that the claims
amount to significantly more than the abstract idea itself.” Appeal Br. 10—
11. We disagree.
We find unpersuasive the Appellants’ argument that the claims are
significantly more than the abstract idea because they “offer an improvement
to those conventional personal service rendering systems that do not have
the ability to establish simplified determinative logic and utilize said logic in
determining a business based upon a request.” Appeal Br. 11. The
Appellants argue that the claims improve “upon the technology or technical
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field of rendering personal service assistance.” Id. However, providing
personal assistance is not a technical or technological field.
Moreover, as the Examiner notes, the steps of providing access to a
PCSR avatar, defining a request using logic, determining a business based
on the request, connecting the PCSR avatar to the business, and facilitating
interaction between a representative of the business and the customer are all
steps that are well-understood, routine, and conventional functions of a
general purpose computer. And the Appellants do not provide adequate
evidence to the contrary. See Content Extraction and Transmission LLC v.
Wells Fargo Bank, Nat. Ass n, 776 F.3d 1343, 1347—49 (Fed. Cir. 2014)
(“The concept of data collection, recognition, and storage is undisputedly
well-known.”).
The Specification supports this view at paragraphs 28 through 35 in
discussing “using currently known or later developed communication
techniques” for gaining access and passing control to the PCSR avatar,
defining a request with simplified determinative logic by parsing text, and
searching a database for relevant businesses using search logic. The
Specification further provides that the computing environment for the
method comprises a “general-purpose computing device.” Spec. 142; see
also id. 39-41. There is no further specification of particular technology
for performing the steps.
Given that an improvement to personal assistance is not an
improvement to a technical field and that claimed “simplified determinative
logic” appears to be based on known parsing techniques, the Appellants do
not provide adequate details, evidence, or reasoning to support their
argument that the “simplified determinative logic” is a technological
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improvement that amounts to “significantly more” than the abstract idea
itself. Reply Br. 2—3. See Affinity Labs, of Texas, 838 F.3d 1253, 1263
(Fed. Cir. 2016); see also Enfish, 822 F.3d. at 1336 (focusing on whether the
claim is “an improvement to the computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity”); Content Extraction, 776 F.3d at 1348 (the use of existing
processing technology to recognize data is well known); DDR Holdings, 773
F.3d at 1256 (“[AJfter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”) (citing Alice, 134 S. Ct. at 2358).
Based on the foregoing, we are not persuaded that the Examiner erred
in rejecting the claims as being directed to non-statutory subject matter.
Thus, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of claims
1,3-11, 13-19, and 21-25.4
Double Patenting
The Appellants provided no argument against the Examiner’s non-
statutory double patenting rejection of the claims. Appeal Br. 12.
Thus, we summarily sustain this rejection.
4 The Appellants did not provide separate arguments against the rejection of
the dependent claims in their Appeal Brief. See, e.g., Appeal Br. 7, 11.
And, as the Appellants note (Reply Br. 3), the Examiner made no further
findings in the Answer. Thus, the Appellants’ argument regarding the
dependent claims in the Reply Brief, page 3, will not be considered by the
Board because it is untimely and not responsive to an argument raised in the
Answer. 37 C.F.R. § 41.41(b)(2).
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DECISION
The Examiner’s rejections of claims 1, 3—11, 13—19, and 21—25 under
35 U.S.C. § 101 are 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)(l)(iv).
AFFIRMED
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