Ex Parte Hakim et al

Patent Trial and Appeal Board

May 29, 2018

10890462 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/890,462 07/12/2004
87864 7590 05/30/2018
Omar Besim Hakim
9600 Escarpment Blvd., Suite 745-60
Austin, TX 78749
FIRST NAMED INVENTOR
Omar B. Hakim
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.
29811-002 6567
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
MAILDATE DELIVERY MODE
05/30/2018 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 OMAR B. HAKIM and GEORGE POLETES
Appeal2017-002674
Application 10/890,462
Technology Center 3600
Before MICHAEL J. STRAUSS, BETH Z. SHAW, and
AMBER HAGY, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 88-127, which constitute all the claims
pending in this application. Claims 1-87 are canceled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Throughout this Decision we have considered the Appeal Brief filed March
3, 2017 ("App. Br."), the Specification filed July 12, 2004 ("Spec."), the
Examiner's Answer mailed October 25, 2016 ("Ans.") and the Final
Rejection mailed October 7, 2015 ("Final Act.").
2 Appellants identify the real party in interest as Defensive Patent Pools,
LLC. App. Br. 3.
Appeal2017-002674
Application 10/890,462
INVENTION
Appellants' invention is directed to "a method for creating value from
intangible assets and in particular to a method for producing revenue from
underutilized intellectual property, for example, patents, trademarks or
copyrights." Spec. i-f 3.
Claim 88 is illustrative of the claims at issue and reproduced below:
88. A computer-implemented method of pooling patents
for reducing, at least one of, litigation exposure and freedom to
operate costs, comprising:
executing commands by one or more processor to perform
steps including:
obtaining a right in at least one first patent owned by a first
entity;
pooling said obtained right in at least one first patent with
at least one right obtained in at least a second patent owned by a
second entity to form a pool of patents in a related field;
displaying an indication of said pool of patents;
calculating a license fee corresponding to said pool of
patents based upon a fixed fee and further based on at least one
technology area to be licensed in said pool of patents, wherein
said license fee includes no per use based royalty;
storing said license fee on a storage device; and
determining a first royalty payment to the first entity based
a first number of patents licensed in the pool of patents; and
determining a second royalty payment to the second entity
based a second number of patents in the pool of patents.
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REJECTIONS 3
The Examiner rejected claims 88-127 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description rejection. Final
Act. 2--4.
The Examiner rejected claims 88-127 under 35 U.S.C. § 101. Final
Act. 4--8.
ANALYSIS
We have reviewed Appellants' arguments in the Brief, the Examiner's
rejections, and the Examiner's response to the Appellants' arguments.
Appellants do not proffer sufficient argument or evidence for us to find error
in the Examiner's findings. See Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential). We agree with and adopt the Examiner's
findings and conclusions in the Final Action and Answer.
\Ve select independent claim 88 as representative. The remaining
claims of the group stand or fall with independent claim 88. 37 C.F.R.
§ 41.37(c)(l)(iv).
Written Description
We are not persuaded that the Examiner erred in rejecting claims 88-
127 under 35 U.S.C. § 112, first paragraph for failing to comply with the
written description requirement.
The Examiner contends that the Specification does not support the
claim limitations of "determining a first royalty payment to the first entity
based a first number of patents licensed in the pool of patents; and
determining a second royalty payment to the second entity based a second
3 In the Answer, the Examiner withdrew the rejection of claims 88-127
under 35 U.S.C. § 103. Ans. 2.
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Application 10/890,462
number of patents in the pool of patents." Final Act. 3. According to the
Examiner, the Specification is deficient because it (i) does not reasonably
convey to one skilled in the relevant art that the inventors had possession of
the invention including the added limitations, and (ii) "lacks detail regarding
the procedure or steps taken to perform the claimed function." Id., Ans. 3--4.
"[C]ompliance with the written description requirement is a question
of fact." Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (citing Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)).
A written "description must 'clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed."' Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane) (alteration in original) (quoting Vas-Cath, 935 F.2d at 1563). "In
other words, the test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Id. (citing Vas-Cath, 935 F.2d at 1563). "Although [the applicant] does not
have to describe exactly the subject matter claimed, ... the description must
clearly allow persons of ordinary skill in the art to recognize that [he or she]
invented what is claimed." Vas-Cath, 935 F.2d at 1563 (alteration in
original) (quoting In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). Put
another way, "the applicant must ... convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention." Vas-Cath, 935 F.2d at 1563-64.
Appellants argue that the Specification, including paragraphs 46 and
4 7, supports this limitation because the royalty payments "could be
determined." Br. 14--15. The Examiner responds that whether the royalty
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payment "could be determined" is not persuasive because the written
description requirement is that one of ordinary skill in the art can reasonably
conclude that the inventor had possession of the claimed invention. Ans. 4.
We agree with the Examiner. While paragraph 46 of the Specification
generally mentions a "quantity and quality of the patent rights," the question
"is 'not a question of whether one skilled in the art might be able to construct
the patentee's device from the teachings of the disclosure . . . . Rather, it is a
question whether the application necessarily discloses that particular
device."' Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)).
See also Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336,
1352 (Fed. Cir. 2010) ("[W]e have repeatedly stated that actual 'possession'
or reduction to practice outside of the specification is not enough. Rather,
. . . it is the specification itself that must demonstrate possession."). "A
description which renders obvious the invention for which an earlier filing
date is sought is not sufficient." Lockwood, 107 F.3d at 1572.
Appellants disclose evaluating the quantity and quality of patent rights
based on, for example, the "remaining term of patent and breadth of claim
coverage." Spec. i-f 46. Notably, this reference in the Specification to
quantity is with respect to patent rights, with the quantity and quality of the
patent rights based on patent term and claim coverage, and no mention of
numbers of patents in respective pools. Furthermore, Appellants do not
address the Examiner's finding that there is a lack of disclosure concerning
how to perform the steps of the disputed limitation. Therefore, given the
record before us, and absent persuasive rebuttal, we agree with the Examiner
that the Specification does not support "determining a first royalty payment
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to the first entity based a first number of patents licensed in the pool of
patents; and determining a second royalty payment to the second entity
based a second number of patents in the pool of patents."
Accordingly, we sustain the rejection of claims 88-127 under
35 U.S.C. § 112, first paragraph for failing to comply with the written
description requirement.
Section 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 implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not
patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). To "distinguish[] patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts," the Supreme Court, in
Alice, reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), which, in the first step, considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea, and, if so, considers, in the
second step, whether the claim recites an inventive concept-an element or
combination of elements sufficient to ensure the claim amounts to
significantly more than the abstract idea and transform the nature of the
claim into a patent-eligible application. Alice, 134 S. Ct. at 2355 (citing
Mayo, 132 S. Ct. at 1294, 1296-98).
In rejecting claim 88 under 35 U.S.C. § 101 as non-statutory subject
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matter, i.e., subject matter judicially excepted from statutory subject matter,
the Examiner analyzes the claim using this two-step framework.
Final Act. 4--8; Ans. 5-11. Pursuant to the first step, the Examiner
determines the claim is directed to the abstract idea of pooling patents by
obtaining rights in them and calculating a fee to derive revenue in the form
of determined royalties. Ans. 5. The Examiner further determines the
concept of pooling patents is similar to other concepts the courts have held
to be abstract ideas, such as creating a contractual relationship and hedging.
Id. at 5. The Examiner finds the idea encompassed by the claims includes
concepts relating to agreements between people, the performance of
financial transactions, and creation of contractual relationships similar to the
concepts found to be abstract in buySAFE, Inc. v. Google, Inc., 765 F.3d
1350 (Fed. Cir. 2014) and Bilski v. Kappas, 130 S. Ct. 3218 (2010).
Under the second step, the Examiner determines the claim does not
recite significantly more than the abstract idea because the additional
elements, alone or in combination, amount to no more than mere instructions
to implement the abstract idea on a computer and/or the recitation of generic
computer structure that serves to perform generic computer functions that
are well-understood, routine, and conventional activities previously known
in the industry. Id. at 6-11. The Examiner further determines the claim
does not recite an improvement to a technical field or to the underlying
apparatus. Id. at 8.
As a preliminary matter, we are unpersuaded of error by Appellants'
argument that claim 8 8 would not tie up the abstract idea of patent pooling
such that others cannot practice it. Br. 21-22. Even if we were to agree
with Appellants that claim 88 recites specific limitations and does not
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preempt all uses of the abstract idea, preemption is not the test for
determining whether a claim is judicially-excepted from statutory subject
matter. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) ("The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability. For this
reason, questions on preemption are inherent in and resolved by the § 101
analysis." (citation omitted)). Accordingly, we consider Appellants'
arguments under the two-step patent-eligibility analysis.
Pursuant to the first step of the analysis, Appellants argue the
Examiner does not refer to case law. Br. 21. Appellants' arguments do not
persaude us of error.
In determining whether a claim is directed to excluded subject matter,
e.g., an abstract idea, under the first step of the patent-eligibility analysis, the
Federal Circuit has explained that "the 'directed to' inquiry applies a stage-
one filter to claims, considered in light of the specification, based on
whether 'their character as a whole is directed to excluded subject matter."'
Er!fish, LLC v. Aficroso.ft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Netvvork. Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)). For computer-implemented inventions in particular, such
as the present invention, "the first step in the Alice inquiry ... asks whether
the focus of the claims is on the specific asse1i.ed improvement in computer
capabilities ... or, instead, on a process that qualifies as an 'abstract idea'
for which computers are invoked merely as a tool.'' Id. at 1335-36.
Here, claim 88 recites a computer implemented method of pooling
patents. The Specification does not describe an improvement to the
computer infrastructure, but instead describes a computer system with a
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processor "known to those skilled in the art and which are commonly
available." Spec. i-fi-139, 40. The claimed invention uses the recited
computer infrastructure to perform the steps that provide for pooling patents.
The focus of the claimed invention is not on an improvement in computer
capabilities, but rather on enhanced patent pooling. Appellants, therefore,
do not persuade us of error in the Examiner's determination that the
character of claim 88, as a whole, is directed to the abstract idea of pooling
patents.
Seeing no error in the Examiner's determination that claim 88 is
directed to an abstract idea under the first step of the patent-eligibility
analysis, we tum to Appellants' arguments under the second step.
Appellants contend claim 88 recites significantly more than the abstract idea
because it specifically recites additional elements that are not conventional,
i.e., calculating a license fee and royalty payment. Br. 23. We disagree. As
set forth above, the Specification does not describe an improvement to the
computer infrastructure. In other words, claim 88 recites an improved patent
pooling method implemented via computers, but does not recite an
improvement to the computer infrastructure that implements the
methodology.
Although the second step of the patent-eligibility analysis is termed a
search for an "inventive concept," the analysis is not an evaluation of
novelty or nonobviousness, but rather, a search for "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"' Alice, 134 S. Ct. at 2355 (quoting 1'1ayo, 132 S. Ct. at
1294). The question in the second step is not whether the claimed invention
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is novel, but rather whether the implementation of the abstract idea involves
"more than performance of '\vell-understood, routine~ [and] conventional
activities previously known to the industry.'" Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347-48
(Fed. Cir. 2014) (quoting Alice, 134 S, Ct at 2359). Even if novel and
nonobvious, a claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct at 1303----04. Consequently, even if we were
to agree with Appellants that the claim recites a unique patent pooling
methodology, the Examiner determines, and Appellants do not refute, that
the computer implementation of the claimed methodology requires only
computer functions that are well-understood, routine, and conventional.
Ans. 6-8.
As set forth above, the computer systems and components are generic.
Spec. i-fi-139, 40. As the Supreme Court explained in Alice, "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358; see also
DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1256 (Fed. Cir. 2014)
("[T]hese claims [of prior cases] in substance were directed to nothing more
than the performance of an abstract business practice on the Internet or using
a conventional computer. Such claims are not patent-eligible.").
In view of the foregoing, Appellants do not persuade us of error in the
Examiner's determination that independent claim 88 is patent-ineligible, i.e.,
judicially excepted from statutory subject matter. Accordingly, we sustain
the rejection of claims 88-127 under 35 U.S.C. § 101.
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DECISION
The decision of the Examiner to reject claims 88-127 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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