Ex Parte Grooms

Patent Trial and Appeal Board

Aug 18, 2017

12941989 (P.T.A.B. Aug. 18, 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.
12/941,989 12/07/2010 John Grooms GROOM 01CP 1854
7590
Thomas W. Humphrey
Wood, Herron & Evans, LLP
2700 Carew Tower
441 Vine Street
Cincinnati, OH 45202-2917
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
08/18/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN GROOMS
Appeal 2015-0014091
Application 12/941,989
Technology Center 3600
Before ANTON W. FETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant filed a Motion for Rehearing (“Req. Reh’g.”), pursuant to
37 C.F.R. § 41.52, on June 5, 2017, seeking reconsideration of our Decision
on Appeal mailed April 4, 2017 (“Decision”), in which we affirmed the
Examiner’s rejection of claims 1—11 under 35 U.S.C. § 101 as directed to
non-statutory subject matter.2 We have jurisdiction over the Request under
35 U.S.C. § 6(b).
1 Our decision references Appellant’s Reply Brief (“Reply Br.,” filed
November 10, 2014) and the Examiner’s Answer (“Ans.,” mailed
September 10, 2014).
2 We also affirmed the Examiner’s rejection of claims 5 and 9 under
35 U.S.C. § 112, second paragraph, and reversed the rejection of claims 1-11
under 35 U.S.C. § 103(a). Appellant seeks reconsideration only of the
affirmed rejection under § 101. See Req. Reh’g. 1.
Appeal 2015-001409
Application 12/941,989
DISCUSSION
We note at the outset that a request for rehearing “must state with
particularity the points believed to have been misapprehended or overlooked
by the [Patent Trial and Appeal Board (the “Board”)].” 37 C.F.R.
§ 41.52(a). A request for rehearing is not an opportunity to rehash
arguments raised in the briefs. Neither is it an opportunity to merely express
disagreement with a decision without setting forth the points believed to
have been misapprehended or overlooked. Arguments not raised in the
briefs before the Board and evidence not previously relied on in the briefs
also are not permitted except in the limited circumstances set forth in
§§ 41.52(a)(2) though (a)(4).3
Turning now more particularly to the Request, Appellant charges that,
in applying the two-step analysis of Alice Corp. Proprietary Ltd. v. CLS
Bank International, 134 S. Ct. 2347, 2354 (2014), the Examiner
overgeneralized the claims as directed to a “platform release of content,”
and, thus, erred in finding that the claims are directed to an abstract idea
(Req. Reh’g. 2). This argument was not presented previously; therefore, it
could not have been overlooked or misapprehended by the Board. And we
are not persuaded that it is based on a recent decision of either the Board or a
federal court different from those previously considered.
The Examiner entered the rejection of claims 1—11 under § 101 as a
new ground of rejection in the Answer. Applying the Alice two-step
3 Appellant may present a new argument based on a recent relevant decision
of either the Board or a federal court; new arguments responding to a new
ground of rejection designated as such under § 41.50(b) and new arguments
that the Board decision contains an undesignated new ground of rejection
also are permitted.
2
Appeal 2015-001409
Application 12/941,989
analysis, the Examiner found that claims 1—11 are directed to the abstract
idea of a “platform release of content”; that the additional claim elements or
combination of elements, other than the abstract idea, amount to no more
than storing and delivering content, i.e., generic computer functions; and that
these additional claim elements do not provide meaningful limitations to
transform the abstract idea into a patent-eligible application of the abstract
idea (Ans. 10). Ostensibly referencing the rejection as set forth in the Final
Office Action,4 Appellant argued in the Reply Brief that the Examiner erred
in finding that the claimed method is not tied to a particular machine or
apparatus, i.e., that the claims do not satisfy the Bilski machine-or-
transformation test (Reply Br. 1). But Appellant never argued that the
Examiner overgeneralized the claims as directed to a “platform release of
content” or that the Examiner otherwise erred in finding that claims 1—11 are
directed to an abstract idea.
Appellant asserts that the “two-part analytical structure” set forth in
Alice has been “developed in recent cases well after the briefing of this
appeal” (Req. Reh’g. 2). But there is no question that Alice (which is the
basis for the two-part analysis applied by the Examiner) was decided in
June 2014 — before the Examiner’s Answer was mailed in this case, and
before Appellant’s Reply Brief was filed. Appellant is not entitled, in these
circumstances, to raise new arguments under § 41.52(a)(2) on the ground
that the arguments are based on a “recent relevant decision” of the Federal
Circuit, i.e., Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
4 In the Final Office Action, the Examiner rejected claims 1—11 under § 101
on the ground that the claims failed to satisfy the machine-or-transformation
test, citing Bilski v. Kappos, 95 USPQ2d 1001 (2010) (see Ans. 2—3).
3
Appeal 2015-001409
Application 12/941,989
But even were that not so, we are not persuaded by Appellant’s arguments
that the Examiner’s rejection of claims 1—11 under 35 U.S.C. § 101 is
improper.
In rejecting the claims under § 101, the Examiner characterizes the
claims as directed to “a platform release of content,” and explains that “the
concept of ‘a platform release’ includes the steps of delivering content to a
group of users, identifying a sales generating entity, crediting the sales entity
with a purchase and delivering content to a second group of users”
(Ans. 10). Appellant argues that the claimed invention is not about having a
generic, blanket, undifferentiated release of content, but rather, “providing
controlling access to content to a particular server, and only to purchasers in
a ‘first group’, and only after a sales threshold is met, then permitting
content to be released to a ‘second group’ of purchases via other sources”
(Req. Reh’g 2).
Appellant describes the claimed invention at a different, i.e., lower,
level of abstraction than does the Examiner. Yet that the claims include
more words than the phrase the Examiner chose in articulating the abstract
idea is alone insufficient basis for finding that the claims are not directed to
an abstract idea. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016) (“An abstract idea can generally be described at different
levels of abstraction. As the Board has done, the claimed abstract idea could
be described as generating menus on a computer, or generating a second
menu from a first menu and sending the second menu to another location. It
could be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.”).
4
Appeal 2015-001409
Application 12/941,989
It also is immaterial that the Board reversed the Examiner’s rejection
of claims 1—11 as obvious over the prior art. A finding of novelty or non­
obviousness does not necessarily lead to the conclusion that subject matter is
patent-eligible. See, e.g., Ass ’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013) (“Groundbreaking, innovative,
or even brilliant discovery does not by itself satisfy the § 101 inquiry.”).
A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1304 (2012)).
Appellant cites the Federal Circuit decision in Enfish as “directly on
point,” ostensibly based on the court’s caution against describing a claim “at
such a high level of abstraction as to be untethered from the actual language
of the claim, so as to lose the focus of the actually claimed invention” (Req.
Reh’g 2).5 Yet aside from charging the Examiner with overgeneralization,
Appellant presents no persuasive argument or technical reasoning to rebut
the Examiner’s finding that the claims are directed to an abstract idea.
Instead, Appellant merely summarily asserts that “a proper analysis of the
claim language would find there is no abstract idea embraced within the
current claim language” (id.).
5 We note that the court in Enfish rejected a § 101 challenge because the
claims at issue focused on a specific type of data structure, i.e., a self-
referential table for a computer database, designed to improve the way a
computer carries out its basic functions of storing and retrieving data.
Enfish, 822 F.3d. at 1335—36. We find no parallel here between the pending
claims and the claims in Enfish nor any comparable aspect in the pending
claims that represents “an improvement to computer functionality.”
5
Appeal 2015-001409
Application 12/941,989
We are not persuaded that the Examiner erred in rejecting claims 1—11
under 35 U.S.C. § 101. Therefore, we decline to modify our original
decision.
DECISION
Appellant’s Request for Rehearing has been granted to the extent that
we have reconsidered our Decision in light of Appellant’s Request, but is
denied in all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a).
DENIED
6