Ex Parte Fischer et al

Patent Trial and Appeal Board

Jun 8, 2018

13773015 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131773,015 02/21/2013
107456 7590 06/12/2018
Artegis Law Group, LLP
John Carey
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
FIRST NAMED INVENTOR
Brandon Fischer
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.
PRSM/0006US 5599
EXAMINER
TOKUTA, SHEAN S
ART UNIT PAPER NUMBER
2446
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
algdocketing@artegislaw.com
kcruz@artegislaw.com
rs mi th @artegislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRANDON FISCHER and ADAM CUZZORT
Appeal2018-001012
Application 13/773,015
Technology Center 2400
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C § 134(a) of the
Examiner's Final Rejection of claims 2---6, 22, and 30-35, constituting all
claims currently pending in the application. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
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Application 13/773,015
STATEMENT OF THE CASE
Appellants' invention is directed to "a system, method, and computer-
readable medium for interactive collaboration." Spec. 1: 19-20. Claim 30,
reproduced below with the disputed limitations in italics, is representative of
the claimed subject matter:
30. A system for providing simultaneous communications
among client devices, the system comprising:
a first touch screen client device that stores m a first
database via a first processor:
first user interaction detection information that comprises
first user-based manipulations of electronic project data
received via the first touch screen client device, wherein the first
user-based manipulations resize at least a portion of the
electronic project data, and
first project data updates;
a second touch screen client device that stores in a second
database via a second processor:
second user interaction detection information that
comprises second user-based manipulations of electronic project
data received via the second touch screen client device, wherein
the second user-based manipulations also resize at least a portion
of the electronic project data, and
second project data updates; and
a distribution network server machine having a processor
that is configured to:
obtain the first user interaction detection information and
first project data updates from the first touch screen client device;
obtain the second user interaction detection information
and second project data updates from the second touch screen
client device;
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generate modified project data based on the first project
data updates and
the second project data updates;
transmit the modified project data to both the first touch
screen client device and the second touch screen client device;
and
transmit in real-time or near real-time the second user
interaction detection information to the first touch screen client
device and the first user interaction detection information to the
second touch screen client device.
REJECTIONS
Claims 2---6, 22, and 30-35 stand rejected under 35 U.S.C. § 101 as
being directed to non-patent eligible subject matter. Final Act. 2.
Claims 2---6 and 22 stand rejected under 35 U.S.C. § 112, fourth
paragraph, as being of improper dependent form for failing to reference a
claim previously set forth. Final Act. 3.
Claims 2, 3, 22, and 30-35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Abt Jr. et al. (US 8,407 ,290 B2; issued Mar. 26,
2013) ("Abt") and Pabla et al. (US 7,908,325 Bl; issued Mar. 15, 2011)
("Pabla"). Final Act. 5.
Claims 4---6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abt, Pabla, and Tse et al. (US 2013/0198653 Al;
published Aug. 1, 2013) ("Tse"). Final Act. 10.
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ANALYSIS
35 U.S.C. § 101 Rejection
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially excepted from patent eligibility under 35 U.S.C. § 101.
In the first step, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355.
The Examiner determines the claims are directed to
"transmitting/receiving interaction information and interaction details,
storing said information and details based on interaction and transmitting
stored information and details in response to the receipt of said information
and details," which is the abstract idea of utilizing "categories to organize,
store and transmit information." Final Act. 2-3.
Appellants argue that each of the independent claims goes beyond
merely storing and transmitting data according to categorization because the
modified project data is based on first and second project data updates
transmitted from the first and second touch screen, respectively. App. Br.
11.
We are not persuaded by Appellants' arguments and agree with the
Examiner's determination that the claims are directed to the abstract idea of
using categories to organize and store information (e.g., obtaining
interaction detection information and project data updates from client
devices, and generating modified project data based on these updates), and
transmitting the categorized information (e.g., transmitting the modified
project data and the interaction information in real-time or near real-time to
the devices). See Final Act. 2-3; see also Cyberfone Sys., LLC v. CNN
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Interactive Grp., Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014) (A method of
"using categories to organize, store, and transmit information is well-
estab lished ... the idea of collecting information in classified form, then
separating and transmitting that information according to its classification, is
an abstract idea that is not patent-eligible.").
In the second step of Alice, we "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." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)). 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, 566 U.S. at 72-
73).
The Examiner determines the claim does not have elements that
amount to significantly more than the judicial exception. Final Act. 3.
Specifically, the Examiner determines the additional steps (e.g., "generating
modified project data" and "transmitting in real-time or near real-time") are
recited at a high level of generality and perform generic computer functions
(e.g., using generic data manipulations to combine or compile data through
unspecified computations, transmitting data) routinely used in computer
applications. Ans. 9-10, 13.
Appellants argue the claimed additional elements (e.g., generating the
modified project data from project data updates obtained from touch screen
client devices) transform the claimed invention into a patent-eligible
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application. App. Br. 11. Specifically, Appellants argue the claims provide
a "useful and necessary step to provide coordinated updates and
modifications to the project data being shared across different devices in a
collaboration session." App. Br. 11 (emphasis added). Citing to DDR
Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014), Appellants
also argue the claims solve the technical problem of "how to allow users to
update data on their end-point machines and share those updates with other
users in a distributed collaboration session" (App. Br. 11 ), as well as the
technical problem of "how to allow a user to see immediately the
interactions with project data being performed by other users in a distributed
collaboration session" (App. Br. 12). See also Reply Br 3--4.
We are not persuaded by Appellants' argument and agree with the
Examiner's findings and conclusions. See Final Act. 3; Ans. 9-13.
Appellants have not adequately explained how or provided persuasive
evidence to show why the claims add meaningful limits to practicing the
abstract idea.
We agree with the Examiner that the claimed elements are stated at a
high level of generality, and do not impose meaningful limitations beyond
generally linking use of an abstract idea to unspecified computations and
generic computer functions routinely used in computer applications. Ans. 9,
10, 13. Rather than reciting additional elements that amount to
"significantly more" than the abstract idea, the pending claims, at best, add
only generic computers, including touch screen client devices, databases,
processors, displays and input components. See Spec. 8-10. These generic
computers do not satisfy the inventive concept. See, e.g., DDR Holdings,
773 F.3d at 1256 ("[A]fter Alice, there can remain no doubt: recitation of
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generic computer limitations does not make an otherwise ineligible claim
patent-eligible. The bare fact that a computer exists in the physical rather
than purely conceptual realm is beside the point." (citation and internal
quotation marks omitted)).
Appellants further contend the claims are "directed towards improving
the operation of the distributed computer network in allowing users to
project data updates across all machines in that distributed network," which
"cannot be considered abstract." App. Br. 12 (citing Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)). According to
Appellants, similar to Enfzsh, the claims are also directed "towards
improving the operation of distributed computer network by enabling user
manipulations of project data to be viewed by other participants of a
collaboration session immediately, without latencies, which enhances the
overall usefulness of the distributed computer network and the user
experience when participating in a collaboration session." Reply Br. 4.
Appellants further argue the claims provide the "useful result of providing
real-time or near real-time interactions with project data across different
machines in a distributed collaboration environment, thereby improving the
operation of a distributed computer network," which "cannot be considered
abstract." App. Br. 12 (citing AfcRO, Inc. v. Bandai Namco Ciarnes America,
inc., 837 F.3d 1299 (Fed. Cir. 2016).
We are not persuaded by Appellants' arguments. For example, in
Enfzsh, the patent was "directed to a specific improvement to computer
functionality," embodied in a self-referential database table that improved
how computers could carry out basic functions of storage and retrieval of
data. Enfish, 822 F.3d at 1338. In McRO, the claimed improvement
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"allow[ed] computers to produce 'accurate and realistic lip synchronization
and facial expressions in animated characters' that previously could only be
produced by human animators ... through 'the use of rules, rather than
artists, to set the morph weights and transitions between phonemes."' 837
F.3d at 1313. Further, in McRO, the claims were defined in a specific way
to solve the problem, automating tasks that previously were not automated,
because they were driven by subjective determinations, rather than specific
mathematical rules. Id. at 1314. The existing technological process was
improved by the incorporation of the claimed rules to allow automation of
further tasks. Id.
Here, by contrast, Appellants' claims are not defined in a specific way
to solve the problem; rather, the claims essentially perform steps and actions
(e.g., storing, obtaining, generating, and transmitting information) that were
previously performed in conventional methods. Moreover, in both Enfzsh
and McRO, there existed substantial argument and support from the
Specification concerning the "inventive concept." Here, Appellants offer
little more than attorney argument and conclusory statements. For example,
despite Appellants' contention that the claims are directed to an
improvement of operating distributed computer networks by enabling real-
time or near real-time (immediate) interactions and updates, neither
Appellants' Specification nor the claims provide any details regarding such
real-time or near real-time synchronization in a way that indicates an
improvement in computer capabilities has been made. See Spec. 5, 11. 2-8
("Stations may be updated with the distribution network 110 in real-time or
near real-time after the database(s) of the distribution network 110 is
updated with interactions and/or project data" and "synchronization of
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interactions and/or project data among Stations and the distribution network
110 may occur in real-time, near real-time, at various predetermined time
intervals .... "). As such, Appellants' claims provide no details for any
technical solution (e.g., synchronizing updates in real-time or near real-time
interactions) for any technical problem.
The claims, when viewed as a whole, perform conventional
processing functions (transmitting/receiving data, storing data, analyzing and
organizing data, transmitting/receiving data based on analysis) that courts
have routinely found insignificant to transform an abstract idea into a patent-
eligible invention. As such, the claims amount to nothing significantly more
than an instruction to implement the abstract idea on a generic computer -
which is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 134 S. Ct. at 2360.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 2---6, 22, and 30-35.
35 U.S.C. § 112 Rejection
The Examiner finds claims 2---6 and 22 are of "improper dependent
form" because the claims, which currently depend on claim 30, "do not
contain a reference to a previous claim in the same application." Final Act.
3--4; Ans. 3--4, 14.
Appellants argue the claims "are renumbered by the Office once the
claims have been allowed and the claims are set to issue," and it is currently
"premature" to renumber the claims in numerical order. App. Br. 13; see
Reply Br. 9.
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We are persuaded by Appellants' arguments. In accordance with 37
C.F.R. § 1.126:
The original number of the claims must be preserved throughout
the prosecution. When claims are canceled the remaining claims
must not be renumbered. When claims are added, they must be
numbered by the applicant consecutively beginning with the
number next following the highest numbered claim previously
presented (whether entered or not). When the application is
ready for allowance, the examiner, if necessary, will renumber
the claims consecutively in the order in which they appear or in
such order as may have been requested by applicant.
37 C.F .R. § 1.126 (1997) (emphasis added). Furthermore, guidance from the
Manual of Patent Examining Procedure (MPEP) provides that "[d]uring
prosecution, the order of claims may change and be in conflict with the
requirement that dependent claims refer to a preceding claim" and "the
numbering of dependent claims and the numbers of preceding claims
referred to in dependent claims should be carefully checked when claims are
renumbered upon allowance" accordingly. MPEP 608.0l(n)(IV)
Appellants' contention that the claims should be properly renumbered upon
allowance is in accordance with the regulations and guidance set forth in 37
C.F.R. § 1.126 and the MPEP.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 112,
fourth paragraph, rejection of claims 2---6 and 22.
35 U.S.C. § 103 Rejections
Issue: Did the Examiner err in finding that the combination of Abt
and Pabla teaches or suggests "[first/second] user interaction detection
information that comprises [first/second] user-based manipulations of
electronic project data received via the [first/second] touch screen client
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device, wherein the [first/second] user-based manipulations resize at least a
portion of the electronic project data, and [first/second] project data
updates," as recited in independent claim 30, with commensurate limitations
in independent claims 32 and 34?
Appellants argue the claims were amended to be directed towards
multiple different types of collaboration data that are not taught by Abt. See
App. Br. 13-14; Reply Br. 7-8. Specifically, Appellants argue the claim
terms for the different types of collaboration data (e.g., "project data
updates" and "user interaction detection information") must be given
separate and distinct meaning. App. Br. 14--15 (citing Applied Med. Res.
Corp. v. US Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006)).
Appellants argue Abt teaches content modifications and sharing these
content modifications with other users in a collaboration session, but does
not mention any other type of data (other than the content or content
modification). App. Br. 14. Appellants further argue Abt's data that teaches
the claimed electronic project data and project data updates cannot also be
equated to the user interaction detection information. App. Br. 15.
The Examiner finds the claimed "user interaction detection
information" indicates "interaction information associated with user
manipulation of project data using a touch device," thereby including
modifications to project data, and the claimed "project data updates" are
project/workspace data including data related to a project/workspace. Ans.
15-16. Specifically, the Examiner finds the claimed "user interaction
detection information" and "project data updates" are "two instances or
occurrences of identical features," namely, manipulations to project data and
updates to project data. Ans. 16 (citing Abt. Col. 10, 11. 34--57); see Ans. 21.
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We note the claim language recites "first/second user interaction detection
information that comprises first user-based manipulations of electronic
project data ... and first/second project data updates."
We are not persuaded of Examiner error by Appellants' arguments.
Appellants' Specification provides broad examples of user interactions that
"may include manipulations of electronic documentation" (Spec. 6, 11. 19-
23), such as "notes, drawings, annotations, and the like" (Spec. 4, 11. 14--15),
and project data that "may include electronic documents, files, programs, or
other computerized information" (Spec. 4, 11. 17-18). Appellants'
Specification provides further examples for synchronization that allows a
network's ability to update "with user interactions and/or project data."
Spec. 4, 11. 10-11. Appellants' Specification does not provide any limiting
definition to distinguish the claimed user interaction detection information
from the claimed project data updates. The claimed "user interaction
detection information," in light of Appellants' Specification and the claim
language, includes information associated with manipulations (e.g., changes
and updates) to electronic documentation, and the claimed "project data
updates," in light of Appellants' Specification, include updates to electronic
documents.
As cited by the Examiner (Final Act. 5---6), Abt describes
"modifications made to the shared content," including "when the user
modifies a spreadsheet presented on a web page by a browser" and "the user
modifies text presented on a web page by the browser." Abt col. 4, 11. 59-
67. In other words, Abt teaches modifying a spreadsheet and modifying text
presented on a webpage.
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Appellants have not provided persuasive evidence or argument that
the claimed "user interaction detection information" and "project data
updates," both encompassing modifications (e.g., changes and updates)
made to electronic documentation, precludes Abt's modification of a
spreadsheet or text presented on a web page.
Appellants further contend the claim further requires that the user
interaction detection information comprises user-based manipulations of the
content that cause the content to be resized, but Abt does not teach this.
App. Br. 14.
Appellants' argument against Abt separately from Pabla does not
persuasively rebut the combination made by the Examiner. One cannot
show non-obviousness by attacking references individually, where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Specifically, we agree with the Examiner's finding that Abt teaches
detecting modifications made to shared content, and Pabla teaches a first
feature (user-based manipulation) being a resize action. Final Act. 8 (citing
Pabla col. 9, 11. 1-28); see Ans. 17-20.
For example, in addition to Abt teaching modifying text on a web
page (see Abt col. 4, 11. 64---67), Pabla discloses the "collaboration
framework 120a may send resizing and/or moving related events for
application 170a to other collaboration frameworks." Pabla col. 9, 11. 17-20.
In other words, Abt teaches modifying text on a web page and Pabla teaches
a resizing command.
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Appellants do not provide persuasive evidence or argument that Abt' s
modifying text and Pabla's resizing command do not teach "the
[first/second] user-based manipulations resize at least a portion of the
electronic project data," as recited in claim 30.
For at least the above reasons we sustain the Examiner's§ 103
rejection of independent claim 30. For the same reasons, we sustain the
Examiner's § 103 rejections of commensurate independent claims 32 and 34,
as well as dependent claims 2-6, 22, 31, 33, and 35, not argued separately.
See App. Br. 16.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 2---6, 22, and 30-
3 5 is affirmed.
The Examiner's 35 U.S.C. § 112, fourth paragraph, of claims 2---6 and
22 is reversed.
The Examiner's 35 U.S.C. § 103 rejections of claims 2---6, 22, and 30-
35 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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