Ex Parte Hastman

Patent Trials and Appeals Board

Jun 21, 2019

13841209 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/841,209 03/15/2013
83579 7590 06/25/2019
LEVEL 3 COMMUNICATIONS, LLC
Attn: Patent Docketing
1025 Eldorado Blvd.
Broomfield, CO 80021
FIRST NAMED INVENTOR
James Hastman
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.
0451-US-Ol 8579
EXAMINER
FADOK,MARKA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/25/2019 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 JAMES HASTMAN
Appeal2018-003264
Application 13/841,209
Technology Center 3600
Before ALLEN R. MacDONALD, JEREMY J. CURCURI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-5, 7, 9, 10, 13, 14, 16, and 19-21. Appellant has cancelled
claims 2, 6, 8, 11, 12, 15, 17, and 18. App. Br. 29-33. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellant indicates the real party in interest is Level 3 Communications,
LLC. App. Br. 3.
Appeal2018-003264
Application 13/841,209
Illustrative Claim
Illustrative claim 7 under appeal reads as follows ( emphasis,
formatting, and bracketed material added): 2
7. A method for quoting and ordering products
compnsmg:
[A.] using at least one processor,
[B.] defining at least one question corresponding to at
least one first telecommunication product of a
plurality of telecommunication products defined in
a product catalog, the at least one first question for
providing at least one geographic attribute of the at
least one telecommunication product;
[C.] access[ing] a product catalog defining an association
component that associates the at least one
telecommunication product with at least one
second telecommunication product, the product
catalog further including at least one geographical
limitation for deploying the at least one first
telecommunication product and the least one
associated second telecommunication product;
[D.] generating a first user interface for ordering the at
least one first product and the associated at least
one second product from the product catalog, the
first user-interface displaying[:]
[i.] the at least one first telecommunication
product,
[ii.] the at least one associated second
telecommunication product and
[iii.] the at least one question;
2 For purposes of this appeal, we read grammatically incorrect steps C and H
of claim 7 as active steps requiring "accessing" and "providing,"
respectively.
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Lema
[E.] receiving a first input for the at least one product and
a second input for the at least one first question,
the second input defining the at least one
geographic attribute;
[F.] comparing the geographic attribute with the
geographical limitation; and
[G.] generating a second user-interface including one or
more data fields selectively populated based on the
at least one geographic attribute; and
[H.] when the geographic attribute satisfies the
geographic limitation, provid[ing] for provisioning
the at least one first telecommunication product
and the at least one second telecommunication
product.
References3
US 2002/0065721 Al May 30, 2002
Borelli US 2006/0020525 Al Jan.26,2006
Borders US 2007/0112647 Al May 17, 2007
Yao US 2011/0258192 Al Oct. 20, 2011
Rejections4
A. 35 U.S.C. § 101
The Examiner rejects claims 1, 3-5, 7, 9, 10, 13, 14, 16, and 19-21
under 35 U.S.C. § 101 "because the claimed invention is directed to a
judicial exception (i.e., an abstract idea) without significantly more," i.e.,
3 All citations herein to these references are by reference to the first named
inventor only.
4 All citations to the "Final Action" are to the Final Action mailed on
June 15, 2017.
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because the claimed invention is directed to patent-ineligible subject matter.
Final Act. 3-6.
We select claim 7 as representative. Appellant does not separately
argue claims 1, 3-5, 9, 10, 13, 14, 16, and 19-21. Except for our ultimate
decision, we do not discuss the§ 101 rejection of claims 1, 3-5, 9, 10, 13,
14, 16, and 19-21 further herein.
B. 35 U.S.C. § 103 5
B.i.
The Examiner rejects claims 1, 4, 5, 7, 10, 13, 14, and 16 under
35 U.S.C. § 103 as being unpatentable over the combination of Lema and
Borelli. Final Act. 7-15.
We select claim 7 as representative. Appellant does not present
separately arguments for claims 1, 4, 5, 10, 13, 14, and 16. Except for our
ultimate decision, we do not discuss the § 103 rejection of claims 1, 4, 5, 10,
13, 14, and 16 further herein.
B.ii.
The Examiner rejects claims 3 and 9 under 35 U.S.C. § 103 as being
unpatentable over the combination of Lema, Borelli, and Yao; and rejects
claims 19-21 under 35 U.S.C. § 103 as being unpatentable over the
combination of Lema, Borelli, and Borders. Final Act. 15-18.
Appellant does not present arguments for claims 3, 9, and 19-21.
Thus, the rejection of these claims turns on our decision as to claim 7.
Except for our ultimate decision, we do not address the § 103 rejection of
claims 3, 9, and 19-21 further herein.
5 For simplicity, we label any rejections under 35 U.S.C. § 103(a), as
rejections under§ 103.
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Issues on Appeal
Did the Examiner err in rejecting claim 7 as being directed to
patent-ineligible subject matter?
Did the Examiner err in rejecting claim 7 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
Appeal Brief arguments that the Examiner has erred. We disagree with
Appellant. We concur with the conclusions reached by the Examiner.
A. 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.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment."
Id. ( citation omitted) ( citing Benson and Flook); see, e.g., id. at 187 ("It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.").
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If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted).
"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
B. USPTO § 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of§ 101. USPTO's January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 ("2019 Memorandum"). Under that guidance,
we first look to whether the claim recites:
( 1) (see 2019 Memorandum Step 2A - Prong One) any judicial
exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental
processes); and
(2) (see 2019 Memorandum Step 2A - Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP §§ 2106.05(a}-(c), (e}-(h)). 6
6 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of 2019 Memorandum). Solely
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.0S(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Memorandum Step 2B.
C. Examiner's§ 1 OJ Rejection - Alice/Mayo - Steps 1 and 2
C.1. 2019 Memorandum Step 2A - Prong One
Applying the Alice/Mayo analysis, the Examiner determines claim 7
recites an abstract idea. Particularly, the Examiner determines:
The pending claims are directed to system and methods that
recite a series of steps to provide a product recommendation
based on user input to questions and provide means to order a
configured product, which, based upon the claim language, recite
abstract ideas of organizing human activity for commercial
practices and an idea of itself.
Final Act. 5 ( emphasis added).
The claims are [] directed to or describe a "certain method of
organizing human activity" in that they seek to engage a human
user in marketing and sales activities . . . . Similar to the
marketing activities found to be abstract in Ultramercial, Inc. v.
Hulu, LLC[, 772 F.3d 709] (Fed. Cir. 2014), representative claim
1 describes the steps to be undertaken in an effort to recommend
suitable items to a user based on intangible item data and a
for purposes of maintaining consistent treatment within the Office, we
evaluate it under Step 1 of Alice (Step 2A of 2019 Memorandum). See 2019
Memorandum.
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recommendation information request message . . . . Additional
precedential courts have found abstract examples of organizing
human activity to include Dealertrack[, Inc. v. Huber, 674 F.3d
1315 (Fed. Cir. 2012),] which compares collected data and
submits it to suppliers for creation of an offer.
Lastly the claims are directed to or describe a fundamental
economic practice. One example, Lending Tree[, LLCJ v. Zillow,
[Inc., 656 F. App'x 991 (Fed. Cir. 2016),] is comparative in that
like [the] representative claim[], information data is received
from a buyer and used to compare products in a catalog and
present matches for consideration and procurement.
Ans. 8 ( emphasis added). The Examiner also determines:
[T]he abstract idea is found within the language of the claim:
defining at least one question corresponding to at least one first
telecommunication product of a plurality of
telecommunication products defined in a product catalog;
and
accessing a product catalog defining at least one association
component/identifier that associates the one
telecommunication product with at least one second
telecommunication product in the product catalog; the
product catalog further including a geographic limitation
for deploying the at least one first telecommunication
product and the least one associated second
telecommunication product;
generating an output based the at least on geographic attribute,
and
when the attribute satisfies the geographic limitation, provid[ing]
for provisioning the at least one first telecommunication
product and the at least one second telecommunication
product.
Final Act. 3--4 ( emphasis, formatting, and bracketed material added).
The Examiner further determines:
Providing a price quote for a product and the idea of
customized pricing has a long history in the US economy, see
[non-patent literature] NPL Phillips, "Customized Pricing." This
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concept is similar to the concepts that have been found by the
courts to be abstract ideas, for instance, collecting, displaying
and manipulating data, see Int[ellectual] Ventures [I LLCJ v.
Cap[ital] One [Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015)].
Additionally, as in Ultramercial[, Inc. v. Hulu, LLC, 772 F.3d
709 (Fed. Cir. 2014),] the claims are directed to an abstraction of
steps to displaying/outputting information. While the type of
product discussed ( a telecommunications product) is linked to a
telecommunications environment, the steps themselves could be
performed mentally with aid of pen and paper as would be
possible with a catalog and the steps of provisioning the product
by comparing the received data against stored information does
not rely on a telecommunications environment.
Final Act. 4 ( emphasis and bracketed material added).
C.2. 2019 Memorandum Step 2A - Prong Two
Further applying the Alice/Mayo analysis, the Examiner determines
claim 7 is directed to an abstract idea.
Even when assessing the additional limitations of the claim,
including generating user-interfaces for input and ordering of the
product, in whole with the limitations directed to the abstract
idea, it is clear that the claim as a whole is not directed to a
technical solution or innovation inextricably tied to a computing
or technological environment; thus the analysis is further carried
out at step 2B.
Final Act. 4--5.
Considered as an ordered combination, the claims add nothing
that is not already present when the steps are considered
separately. The claims do not, for example, purport to improve
the functioning of the computer itself, or effect an improvement
in any other technology or technical field or apply the judicial
exception with, or by use of, a particular machine, or effecting a
transformation or reduction of a particular article to a different
state or thing, ... , or other meaningful limitations beyond
generally linking the use of the judicial exception to a particular
technological environment.
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Final Act. 6 ( emphasis omitted).
C.3. 2019 Memorandum Step 2B
Applying the Alice/Mayo analysis, the Examiner determines:
Although [ claim 7] recites features, including a processor,
generation of user interfaces for ordering the product and
displaying information, these features are all specified at such a
generic level that none of these features serve to perform more
than generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry. Inventions directed to abstract ideas that
merely involve routine functions being implemented on a generic
computer comprising retrieving data from stored data based upon
certain rules/conditions have been deemed as patent-ineligible in
numerous cases[.]
Final Act. 5.
D. Appellant's§ 1 OJ Arguments & Panel's Analysis
D.1. 2019 Memorandum Step 2A, Prong 1
The Examiner correctly determines that claim 7 recites the following
limitations:
defining at least one question corresponding to at least one first
telecommunication product of a plurality of
telecommunication products defined in a product catalog;
and
accessing a product catalog defining at least one association
component/identifier that associates the one
telecommunication product with at least one second
telecommunication product in the product catalog; the
product catalog further including a geographic limitation
for deploying the at least one first telecommunication
product and the least one associated second
telecommunication product;
generating an output based the at least on geographic attribute,
and
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when the attribute satisfies the geographic limitation, provid[ing]
for provisioning the at least one first telecommunication
product and the at least one second telecommunication
product.
Final Act. 3--4 (formatting and bracketed material added). In short, the
Examiner correctly determines that claim 7 recites a method of product
recommendation, i.e., a marketing and sales activity (Final Act. 5; Ans. 8);
and marketing and sales activity is one of certain methods of organizing
human activity identified in the 2019 Memorandum, and thus an abstract
idea. 84 Fed. Reg. at 52.
D.2. 2019 Memorandum Step 2A, Prong 2
D.2.a.
Having determined that claim 7 recites an abstract idea, we now tum
to whether claim 7 is directed to that abstract idea. Appellant contends:
The detailed elements of the claims regarding the specific
process for configuring and provisioning products is firmly
rooted in solving issues that are fundamental to order
management systems. These elements can hardly be considered
abstract ideas.
App. Br. 16 ( emphasis added). Appellant particularly contends:
Here, the claims are directed to solving a technical
problem related to enhancing the accessibility, modifiability, and
extensibility of order management systems with respect to
communication products and providers. Previously, as
described in the Specification, conventional communication
providers were required to overcome various hurdles to process
customer orders and maintain products and services ...
To address these hurdles, aspects of the present disclosure
provide a system for automatically configuring and
provisioning products in real-time. The claimed configuration
and provisioning system provide an order configuration engine
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comprising ( or having access to) data, such as "product data,
product request data, user data, interface data, and/ or any other
data relating to generating interfaces for ordering and
configuring products." [Spec.], para. [0017].
App. Br. 16-17 ( emphasis added).
Appellant also contends:
Here, as in DDR Holdings and Enfish, the claims in the
present case improve upon an existing technological process.
As described above, the claims are directed to an interactive
process for electronic order entry that uses product catalog
associations between different products ( e.g., product A can be
bundled with product B) and associations between product
attributes ( e.g., geographical limitations associated with one or
more of the products) to assess product availability and to
dynamically generate of one or more order entry interfaces
specifically optimized for a user's request, such as based on a
user location (see, e.g., [Specification] paragraph [0019]) and
further based on the availability or non-availability of two or
more products for joint purchase at the location. For example,
paragraph [0019] explains that product offerings may be limited
to certain geographic locations and that some products may be
priced differently based on location.
Previous solutions to these types of bundling constraints
included, for example, hiring "developers to add functionality to
the ordering system or modify existing functionality."
Specification, para, [0003]. For example, a user attempting to
purchase a product bundle may be directed to a first HTML page
if the request comes from a region A, a second HTML page if the
request comes from a region B, a third HTML page if the request
comes from a region C, and so on. Consequently, implementing
an update to a product price or product location offering could
entail numerous manual data updates to numerous data files.
The recited inventions improve upon this by utilizing
structured catalog components and associations between
components to provide the user with "interactive interfaces ...
to increase both the accuracy of implementing the new and/or
recently modified existing products, and the efficiency in which
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customer orders for such communications products are
processed." Specification, para. [0014]. For example, rather
than providing a different ordering interface ( e.g., HTML page)
for each product bundle at each different geographical customer
location, the recited claims provide for dynamic population of an
ordering interface based on user input and defined logical
associations between different products and associated product
components and product attributes. See, e.g., Id., paras [0019]-
[0020].
The above-described "technical improvement" is clearly
embodied in the recited claim language.
App. Br. 19-20 (emphasis added).
D.2.b.
We disagree with Appellant's foundational premise that the claims
include "detailed elements ... regarding the specific process for configuring
and provisioning products." App. Br. 16. Rather, claim 7 merely requires
"provid[ ing] for provisioning" of the products. Appellant's Specification
states:
[T]he order configuration engine 212 may transmit the order to
a provisioning system 228 that may process the order and
subsequently prepare, equip, provision, initialize, the various
hardware and/or software components required to provide the
product and/ or service to users. In the event that the product
and/or service require manual configurations, the provisioning
system 228 may communicate with various workflow systems
capable of scheduling such procedures.
Spec. ,r 32 (emphasis added). By Appellant's own terms, we determine that
"provid[ing] for provisioning" of the products merely requires that an order
be transmitted. We further determine this is insignificant extra-solution
activity. The prohibition against patenting an abstract idea "'cannot be
circumvented by ... adding 'insignificant postsolution activity."' Bilski,
561 U.S. at 610-11.
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Further, we do not find recited in claim 7 the particular limitations
Appellant now argues. Appellant's argument is based on the claim having
specific limitations such as "configuring," "structured catalog components
and associations," and "defined logical associations" ( emphasis added). Our
review does not find this particular terminology used in claim 7. Rather, we
determine that claim 7 recites "an association component" without
specifying any structural or logical requirement other than having
information indicating a first product is associated to a second product.
D.2.c.
We agree with Appellant that improving a technological process may
result in integrating the judicial exception into a practical application. This
consideration has also been referred to as the search for a technological
solution to a technological problem. See Amdocs (Isr.) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016) ("[T]his claim entails
an unconventional technological solution ... to a technological problem.").
However, as discussed supra, we conclude the Examiner correctly
determines that Appellant's claimed process is a method of product
recommendation, i.e., a marketing and sales activity which is a business
problem and not a technological problem. We do not agree with Appellant
that "providing for provisioning," i.e., "order management," is either a
"technological field" or a "technological problem" or a "technological
solution." Rather, we determine that this is directed to the field of marketing
and sales activity and its problems and solutions. See In re Ferguson, 558
F.3d 1359, 1364 (Fed Cir. 2009) (holding methods "directed to organizing
business or legal relationships in the structuring of a sales force ( or
marketing company)" to be ineligible); Credit Acceptance Corp. v. Westlake
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Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) ("The Board determined that
the claims are directed to the abstract idea of 'processing an application for
financing a purchase.' ... We agree."). Appellant's argument is not
persuasive.
D.2.d.
We agree with the Examiner that as to the steps of claim 7, there is no
indication that the combination of elements improves the functioning of a
computer or improves any other technology. Final Act. 6. In view of
Appellant's Specification, and consistent with the Examiner's
determinations, we conclude that claim 7 does not integrate the judicial
exception into a practical application. We determine claim 7 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a}-(c), (e}-(h). We agree with the Examiner that
claim 7 is directed to a judicial exception.
D.3. 2019 Memorandum Step 2B
The Examiner points out:
[A] processor, generation of user interfaces for ordering the
product and displaying information, ... are all specified at such
a generic level that none of these features serve to perform more
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than generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry.
Final Act. 5.
We agree with the Examiner that these features are well-understood,
routine, and conventional. This is evidenced by the references cited during
examination. See Lema ,r,r 55, 119, claim 19; Borrelli ,r,r 32-34. Although
claim 7 recites "more" under step two of the Alice/Mayo analysis, we
conclude the "more" is not patentably significant. Rather, the record shows
this "more" to be the epitome of a well-understood, routine, conventional
element/combination previously known in the industry.
Because claim 7, in addition to the abstract idea, recites only a well-
understood, routine, conventional element/combination previously known in
the industry, we conclude the case law shows there is no genuine issue of
material fact regarding step two of the Examiner's Alice/Mayo analysis. In
view of Appellant's Specification, and consistent with the Examiner's
determinations, we determine the claims do not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity m the field or
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
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E. Appellant's § 103 Arguments
E.1.
Appellant contends that the Examiner erred in rejecting claim 7 under
35 U.S.C. § 103 because:
Lema fails to teach at least "access[ing] a product catalog
defining an association component that associates the at least one
telecommunication product with at least one second
telecommunication product, the product catalog further
including at least one geographical limitation for deploying the
at least one telecommunication product and the least one
associated second telecommunication[.]"
App. Br. 23 ( emphasis added).
Borelli also fails to teach "access[ing] a product catalog
defining an association component that associates the at least
one telecommunication product with at least one second
telecommunication product, the product catalog further
including at least one geographical limitation for deploying the
at least one telecommunication product and the least one
associated second telecommunication[.]"
App. Br. 24 ( emphasis added).
Appellant's arguments are unpersuasive. Appellant's arguments do
not rebut the Examiner's findings regarding the combined teachings of Lema
and Borelli. Final Act. 7-15. The Examiner does not cite Lema for the
argued "the product catalog further including at least one geographical
limitation for deploying the at least one telecommunication product and the
least one associated second telecommunication" limitation. Rather, the
Examiner cites Borelli. Final Act. 13. Equally, the Examiner does not cite
Borelli for the argued "access[ing] a product catalog defining an association
component that associates the at least one telecommunication product with
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at least one second telecommunication product" limitation. Rather, the
Examiner cites Lema. Final Act. 8.
Thus, Appellant does not address the actual reasoning of the
Examiner's rejection. Instead, Appellant attacks each of the Lema and
Borelli references singly for lacking a teaching that the Examiner relied on a
combination of references to show. It is well-established that one cannot
show non-obviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413,425 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). References must be read, not in isolation, but for what they
fairly teach in combination with the prior art as a whole. Merck, 800 F .2d at
1097.
E.2.
Appellant also contends that the Examiner erred in rejecting claim 7
under 35 U.S.C. § 103 because:
[Borelli' s] open access broker provides two separate approaches
for processing qualification query messages ( e.g., qualification
analysis by a user and qualification analysis using Qualification
Module 22). When the Qualification Module is invoked, the
Qualification Module determines the availability of
products/services for a user by 1) evaluating a service provider
database of locations capable of receiving the products/services,
or 2) executing a service provider supplied algorithm for
identifying locations capable of receiving the products/services.
Notably, neither of these approaches (nor any other approach
taught by Borelli) includes acquiring locations capable of
receiving the products/services ( e.g., geographic limitation
information) from product catalog 30. Nor would such an
approach by taught by Borelli, as product catalog 30 does not
comprise such geographic limitation information. Any claim to
the contrary presents a scenario that obviates the necessity of the
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Application 13/841,209
Qualification Module, which Borelli presents as integral to the
system. As such, Borelli does not teach at least the above-recited
limitations.
App. Br. 26 ( emphasis modified).
As to Appellant's above contention, we are not persuaded because
essentially Appellant's argument is premised on a "physical" or "bodily"
incorporation of Borelli' s Qualification Module into Lema' s system. This is
not the standard. "The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference .... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d at 425; see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983) ("[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review."); In re
Nievelt, 482 F .2d 965, 968 (CCP A 1973) ("Combining the teachings of
references does not involve an ability to combine their specific structures."
( emphasis omitted)).
The Examiner did not suggest Qualification Module should be bodily
incorporated into Lema's. Rather, the Examiner relied on Borelli to show it
is known in the prior art to provide telecommunication product offerings
based upon availability of offerings at a specified location. Final Act. 13.
Appellant goes beyond this to incorporate limitations from Borelli which
were not relied upon by the Examiner. Appellant then argues the limitations
the Examiner did not rely upon. We are unpersuaded by this form of
argument.
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Application 13/841,209
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 3-5, 7, 9, 10,
13, 14, 16, and 19-21 under 35 U.S.C. § 101, as being directed to patent-
ineligible subject matter.
(2) The Examiner has not erred in rejecting claims 1, 3-5, 7, 9, 10,
13, 14, 16, and 19-21 as being unpatentable under 35 U.S.C. § 103.
(3) Claims 1, 3-5, 7, 9, 10, 13, 14, 16, and 19-21 are not patentable.
DECISION
The Examiner's rejection of claims 1, 3-5, 7, 9, 10, 13, 14, 16, and
19-21 under 35 U.S.C. § 101, as being directed to patent-ineligible subject
matter, is affirmed.
The Examiner's rejections of claims 1, 3-5, 7, 9, 10, 13, 14, 16, and
19-21 as being unpatentable under 35 U.S.C. § 103 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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