Ex Parte Holt

Patent Trials and Appeals Board

Apr 9, 2019

11487526 - (D) (P.T.A.B. Apr. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/487,526 07/14/2006
146524 7590
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
04/10/2019
FIRST NAMED INVENTOR
Christopher Holt
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.
31547-357 I LEN0081PA 5805
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
04/10/2019 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 ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER HOLT
Appeal2017-005999
Application 11/487,526 1
Technology Center 3600
Before HUBERT C. LORIN, JOSEPHA. FISCHETTI, and
BIB HUR. MO HANTY, Administrative Pa tent Judges
LORIN, Administrative Patent Judge
DECISION ON APPEAL
An Oral hearing was held on March 14, 2019.
STATEMENT OF THE CASE
Christopher Holt (Appellant) seeks our review under 3 5 U.S. C.
§ 134(a) of the Examiner's Final Rejection of claims 10-14 and21-30. We
have jurisdiction under 3 5 U.S. C. § 6(b ).
We AFFIRM.
1 The Appellant identifies Reed Technology and Information Services, Inc.,
as the real party in interest. App. Br. 2.
Appeal2017-005999
Application 11/487,526
THE INVENTION
Claim 10, reproduced below, is illustrative of the subject matter on
appeal.
10. A method of accessing data in a database of patent
related writings, using a computing device having a
computer processor, the method comprising:
receiving, at the computer processor, a search request
that includes an examiner identifier identifying a patent
examiner, an assignee identifier identifying an assignee and
also includes an indication of a rejection basis, the
indication including a specifically identified statutory
provision of a patent law;
utilizing the computer processor to identify a patent
related writing in the database that includes an examiner
asserted denial of patent issuance based on a rejection noted
as being under the statutory provision, that is part of a file
history of an application assigned to the identified assignee
and that was written by the identified patent examiner as
part of the prosecution of the patent application;
wherein identifying further comprises using the
computer processor to reference an indication of which
patent related writing was written by which examiner and
referencing which patent related writing is associated with
the file history of an application assigned to the identified
assignee, and wherein identifying comprises accessing, with
the computer processor, the database such that a combined
set of patent related writings that were written by the
identified patent examiner and that are part of the file
histories of patent applications that are assigned to the
assignee are checked for the rejection basis; and
presenting the identified patent related writing for
review by the user.
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Application 11/487,526
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Grainger
Rivette et al.
("Rivette")
Brudzet al.
("Brudz")
Slovak et al.
(''Slovak")
US 2002/0093528 Al
US 2003/0046307 Al
US 2004/0044688 Al
US 2006/0129593 Al
July 18, 2002
Mar. 6, 2003
Mar. 4, 2004
June15,2006
Iain Cockburn, et al., "Are All Patent Examiners Equal? The Impact
of Characteristics On Patent Statistics and Litigation Outcomes,"
NBER Working Paper Series, Working Paper 8980, National Bureau
of Economic Research, June 2002 ("Cockburn").
United States Patent and Trademark Office, "USPTO Should Reassess
How Examiner Goals, Performance Appraisal Plans, and the Award
System Stimulate and Reward Examiner Production," Public Report
Sept. 2004 ("USPTO").
The following rejections are before us for review:
Claims 10-14 and 21-30 are rejected under 35 U.S.C. § 101 for
claiming patent-ineligible subjectmatter. Final Act. 15-22.
Claims 10, 11, 14, 21, 23, 25, and 26 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Rivette, Cockburn, and Slovak. Final
Act. 22--40.
Claims 12, 13, and 27-29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rivette, Cockburn, Slovak, and Grainger. Final
Act. 40--46.
Claims 22 and24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rivette, Cockburn, Slovak, and Brudz. Final Act. 46--49.
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Application 11/487,526
Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Rivette, Cockburn, Slovak, and USPTO. FinalAct. 49-51.
ISSUES
Did the Examiner err in rejecting claims 10-14 and 21-30under 35
U.S.C. §101 for claiming patent-ineligible subject matter?
Did the Examiner err in rejecting claims 10, 11, 14, 21, 23, 25, and 26
are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rivette,
Cockburn, and Slovak?
Did the Examiner err in rejecting claims 12, 13, and 27-29 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Rivette,
Cockburn, Slovak, and Grainger?
Did the Examiner err in rejecting claims 22 and 24 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Rivette, Cockburn, Slovak,
andBrudz?
Did the Examiner err in rejecting claim 30 is rejected under 35 U.S. C.
§ 103(a) as being unpatentable over Rivette, Cockburn, Slovak, and
USPTO?
ANALYSIS
The rejection of claims 10-14 and 21-30 under 35 U.S. C. §101/orclaiming
patent-ineligible subject matter.
The Appellant argued these claims as a group. See App. Br. 8-18.
Consistent with the Appellants' discussion, we select claim 10 as the
representative claim for this group, and the remaining claims 11-14 and 21-
30 stand or fall with claim 10. 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 11/487,526
Preliminary comment
The Appellant refers to "recent USP TO guidance on patent eligible
subject matter" that was effective at the time the Appeal Brief ( filed Nov.
16, 2016 "App. Br.") as well as the "Deputy Commissioner's Memo from
November 2, 2016 entitled 'Recent Subject Matter Eligibility Decisions.'"
See App. Br. 8; see also Reply Br. 3.
That guidance and memo have been superseded by, the 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019),
(hereinafter "2019 Revised 101 Guidance"). See 2019 Revised 101
Guidance 51 ("Eligibility-related guidance issued prior to the Ninth Edition,
R---08.2017, of the MPEP (published Jan. 2018) should not be relied upon.")
Accordingly, our analysis will not address the sufficiency of the
Examiner's rejection against said guidance and memo.
Rather, our analysis will comport with the 2019 Revised 101
Guidance.
Introduction
35 U.S.C. § 101 provides that"[w]hoeverinvents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor."
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In that regard, claim 10 covers a "process" and is thus statutory
subject matter for which a patent may be obtained. 2 This is not in dispute.
However, the section 101 provision "contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. Pty. Ltd. v. CLSBanklnt'l, 573 U.S. 208,216
(2014) (citing Ass 'nfor Molecular Pathologyv. Myriad Genetics, Inc., 569
U.S. 576,589 (2013)).
In that regard, notwithstanding claim 10 covers statutory subject
matter, the Examiner has raised a question of patent-eligibility on the
ground that claim 10 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Id. at 21 7.
Alice step one- the "directed to" inquiry
According to Alice step one, "[ w ]e must frrst determine whether the
claims at issue are directed to a patent-ineligible concept." Alice573 U.S. at
218 ( emphasis added).
The Examiner determined that "claim 10 recites a method for
identifying patent writings stored in a database based on a search request."
Final Act. 16. The Examiner construed the claim and determined that claim
2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether "a claim is to a statutory category." 2019
Revised 101 Guidance, 53. See also sentence bridging pages 53 and 54
("[C]onsider[] whether the claimed subject matter falls within the four
statutory categories of patentable subject matter identified by 35 U.S. C.
101 []. ").
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103 "does no more [than] compare stored data with input data to identify
writings based on the comparison." Final Act. 17.
The Appellant contends that claim 10 is
directed to specific applications of computer-implemented
patent data accessing systems and computer-implemented
methods of providing information to new and useful ends.
Such computer-implemented systems and methods are
inextricably tied to computer technology and distinct from
the types of concepts typically found as abstract.
App. Br. 9. The Appellant further argues that
[ s ]imilar to the claims at issue in Enfish, which are
directed to steps of configuring a computer memory in
accordance with a self-referential table, the claims of the
present application are not claims "where a general-purpose
computer components are added post-hoc to a fundamental
economic or mathematical equation." Id. Particularly, the
claims of the present application solve a problem in the
software arts ( existing programs do not provide a user with
an ability to gather information on an examiner-specific
basis ( see present application at page 1 line 1 - page 3 line
6) that affect a real world result (users' inability to have
information regarding an examiner with whom they are
interacting (see id. at page 2 line 26 - page 3 line 6)). As
such, the claims are patent eligible as were the claims held
patent eligible in Enfish.
App. Br. 10.
Accordingly, there is a dispute over what claim 10 is directed to. Is it
directed to "compar[ing] stored data with input data" (Final Act. 17) or
"solv[ing] a problem in the software arts" (App. Br. 10)?
3 The Examiner inadvertently refers to claim "1 ". Final Act. 17.
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Application 11/487,526
Claim Construction4
We consider the claim as a whole 5 giving it the broadest reasonable
construction 6 as one of ordinary skill in the art would have interpreted it in
light of the specification 7 at the time of filing.
According to claim 10, a "computing device having a computer
processor" "access[ es] data in a database."
4 "[T]he important inquiry for a [section] 101 analysis is to look to the
claim." Accenture Glob. Services, GmbHv. GuidewireSoftware, Inc., 728
F.3d 1336, 1345 (Fed. Cir. 2013). "In []Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court
observed that 'claim construction is not an inviolable prerequisite to a
validity determination under [section] 101.' However, the threshold of
[section] 101 must be crossed; an event often dependent on the scope and
meaning of the claims." Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1347--48 (Fed. Cir. 2015).
5 "In determining the eligibility of respondents' claimed process for patent
protection under [section] 101, their claims must be considered as a whole."
Diamondv.Diehr,450U.S. l75, 188(1981).
6 2019 Revised 101 Guidance, page 53, footnote 14 (If a claim, "under its
broadest reasonable interpretation.") ( emphasis added.)
7 "First, it is always important to look at the actual language of the claims ..
. . Second, in considering the roles played by individual limitations, it is
important to read the claims 'in light of the [S]pecification. "' Smart Systems
Innovations, LLCv. Chicago Transit Authority, 873 F.3d 1364, 1387 (Fed.
Cir. 2017) (J. Linn, dissenting in part and concurring in part), (citing Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among
others).
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Application 11/487,526
Specifically, first, the claim calls upon the processor to "receiv[e] ...
a search request." The search request includes four items:
1) "an examiner identifier identifying a patent examiner,"
2) "an assignee identifier identifying an assignee and also
includes"
3) "an indication of a rejection basis, the indication including"
4) "a specifically identified statutory provision of a patent
law".
Second, the claim calls upon the processor to be "utiliz[ ed] to identify
a patent related writing in the database." See App. Br. 5. The database
includes:
Id.
Id.
an examiner asserted denial of patent issuance based on a
rejection noted as being under the statutory provision, that is
part of a file history of an application assigned to the identified
assignee and that was written by the identified patent examiner
as part of the prosecution of the patent application.
The "identify[ ing]" ...
comprises using the computer processor to reference an
indication ... of which patent related writing was written by
which examiner ... and referencing . .. which patent related
writing is associated with the file history of an application
assigned to the identified assignee[], and wherein identifying
comprises accessing, with the computer processor, the
database ... such that a combined set of patent related
writings that were written by the identified patent examiner
and that are part of the file histories of patent applications
that are assigned to the assignee are checked for the rejection
basis.
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Application 11/487,526
Lastly, claim 10 calls for "presenting the identified patent related
writing for review by the user." As claimed, this step need not be
performed by the processor.
We reasonably broadly construe claim 10 as being directed to a data-
gathering scheme comprising receiving a particular search request, filtering
content to identify certain information, and presenting the identified
information for review, implemented on a generic computer system
comprising a generic database.
The Abstract Idea 8
We reproduce claim 10, identifying in italics the limitations we
believe recite an abstract idea. 9
10. A method of accessing data in a database of patent
related writings, using a computing device having a computer
processor, the method comprising:
receiving, at the computer processor, a search request
that includes an examiner identifier identifying a patent
examiner, an assignee identifier identifying an assignee and
also includes an indication of a rejection basis, the indication
including a specifically identified statutory provision of a
patent law;
utilizing the computer processor to identify a patent
related writing in the database that includes an examiner
8 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines "whether a claim is 'directed to' a judicial exception," such as an
abstract idea. Step 2A is two prong inquiry.
9 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. "To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the claim
under examination (individually or in combination) that the Examiner
believes recites an abstract idea." Id. at 54.
10
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Application 11/487,526
asserted denial of patent issuance based on a rejection noted
as being under the statutory provision, that is part of a file
history of an application assigned to the identified assignee
and that was written by the identified patent examiner as part
of the prosecution of the patent application;
wherein i dentifyingfurther comprises using the
computer processor to reference an indication of which patent
related writing was written by which examiner and
referencing which patent related writing is associated with the
file history of an application assigned to the identified
assignee, and wherein identifying comprises accessing, with
the computer processor, the database such that a combined set
of patent related writings that were written by the identified
patent examiner and that are part of the fl le histories of patent
applications that are assigned to the assignee are checked for
the rejection basis; and
pres en ting the identified patent related wri tingfor
review by the user.
The limitations identified above in italics recite a data-gathering
scheme comprising receiving a particular search request, filtering content to
identify certain information, and presenting the identified information for
review, collectively a data gathering scheme. 10
10 See In re Downing, 2018 WL 6436437 *4 (Fed. Cir. 2018)
( nonprecedential).
This court has consistently treated inventions directed to
collecting, analyzing, and displaying information as abstract
ideas. See, e.g., Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) ("The advance [the claims]
purport to make is a process of gathering and analyzing
information of a specified content, then displaying the
results, and not any particular assertedly inventive
technology for performing those functions. They are
therefore directed to an abstract idea.").
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Application 11/487,526
The receiving and filtering steps describe mental processes. Receiving
information and filtering it are operations that can be performed in the mind.
The "identifying" step involves "referencing" certain information and
"accessing" content (in a generic database) to obtain information related to
said certain information.
The Specification does not defme "referencing." However, the term is
used to mean referring to. See Spec. 8 :23-26 ("Most information is instead
made available primarily by reference to an application serial number, a
patent number, or the like, but not based on a link to a particular [P] a tent
[E]xaminer. "). This is consistent with its ordinary and customary meaning.
See Webster's New World Dictionary 1127, (3rd Ed. 1988) (Entry for
"reference" "to refer to; mention."). Given this broad meaning,
"referencing" information as claimed is an abstract mental process; that is, it
can be performed mentally. To the extent that the "referencing" more
narrowly requires first knowing what to refer to and then comparing the
information residing in the database until the existence of the information to
be referred to is determined, that, too, can be characterized as a mental
process. Comparing information to determine the existence of a particular
content can be performed in the mind. See footnote 15 of the 2019 Revised
101 Guidance (citing In re BRCAJ & BRCA2-BasedHereditary Cancer Test
PatentLitig., 774 F.3d 755, 763 (Fed. Cir. 2014) (Concluding that the
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Application 11/487,526
concept of'" comparing BRCA sequences and determining the existence of
alterations' is an 'abstract mental process."') 11
The "presenting" step is a mental process. The step is not attached to
any device and can performed in the mind.
The receiving, filtering, identifying, and presenting steps are concepts
that are akin to making observations and evaluations that can be performed
in the human mind and thus are matters that fall within the "Mental
11 See also Intellectual Ventures I LLCv. Erie Indemnity Company, 850 F.3d
at 1327.
We have previously held other patent claims ineligible for
reciting similar abstract concepts that merely collect, classify,
or otherwise filter data. For example, in In re TL!
Communications LLC Patent Litigation, we concluded that
the concept of classifying data ( an image) and storing it
based on its classification is abstract under step one. 823
F.3d 607,611 (Fed. Cir. 2016). In Content Extraction, we
similarly held that the concept of data collection, recognition,
and storage abstract as well. 776 F.3d at 1347. More
recently, in Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, we held that a claim to a "content filtering
system for filtering content retrieved from an Internet
computer network" was directed to an abstract idea. 827 F.3d
1341, 1348--49 (Fed. Cir. 2016). Here, the claimed creation
of an index used to search and retrieve information stored in
a database is similarly abstract.
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processes" enumerated grouping of abstract ideas, both as to each claim
limitation and the claim as a whole. 12
Improvement In the Functioning of a Computer 13 (Appellants'
Argument)
The Examiner's characterization of what the claim is directed to is
similar to our own. Presumably, the Appellant would challenge our
characterization in a way similar to that the Appellant's challenge of the
Examiner's characterization set forth in the briefs.
12 This corresponds to Prong One ("Evalutate Whether the Claim Recites a
Judicial Exception") (b) of Step 2A of the 2019 Revised 101 Guidance. "To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: ... (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance]." 2019 Revised 101 Guidance 54. This case
implicates subject matter grouping "( c ):"
( c) Mental processes - concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
2019 Revised 101 Guidance 52.
13 This corresponds to Prong Two ("If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application") of Step 2A of the 2019 Revised 101 Guidance. "A
claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception." 2019
Revised 101 Guidance 54. One consideration, implicated here, that is
"indicative that an additional element ( or combination of elements) may
have integrated the exception into a practical application" (id., at 55) is if
"[ a ]n additional element reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field" (id.).
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We have reviewed the record and are unpersuaded as to error in our or
the Examiner's characterization of what claim 10 is directed to.
The Appellants argues claim 10 is
directed to specific applications of computer-implemented
patent data accessing systems and computer-implemented
methods of providing information to new and useful ends.
Such computer-implemented systems and methods are
inextricably tied to computer technology and distinct from
the types of concepts typically found as abstract.
App. Br. 9 (citing Enfish, LLCv. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016). The Appellant argues that "claims directed to a specific
implementation of a solution to a problem in the software arts are not
directed to an abstract idea." App. Br. 9.
Similar to the claims at issue in Enfish, which are
directed to steps of configuring a computer memory in
accordance with a self-referential table, the claims of the
present application are not claims "where a general-purpose
computer components are added post-hoc to a fundamental
economic or mathematical equation." Id. Particularly, the
claims of the present application solve a problem in the
software arts ( existing programs do not provide a user with
an ability to gather information on an examiner-specific basis
( see present application at page 1 line 1 - page 3 line 6) that
affect a real world result (users' inability to have information
regarding an examiner with whom they are interacting ( see
id. at page 2 line 26 - page 3 line 6) ). As such, the claims are
patent eligible as were the claims held patent eligible in
Enfish.
App. Br. 10.
We are unpersuaded that claim 10 is directed to solving a problem in
the software arts. To the extent that the Appellant means to argue that the
"processor" and/or "database" functionality is improved by implementing
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the recited data-gathering scheme, it is true that specific asserted
improvements in computer capabilities, when claimed, can render claimed
subject matter not directed to an abstract idea. Cf McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) ("When
looked at as a whole, claim 1 is directed to a patentable, technological
improvement over the existing, manual 3-D animation techniques."). But
there is insufficient evidence in the record before us that the claimed subject
matter reflects any specific asserted improvement in computer capabilities.
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter."' Affinity Labs
of Texas v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); see also Enfish, 822 F.3d at 1335. See also Ancora Techns., 908 F.3d
at 1347:
We examine the patent's "'claimed advance' to
determine whether the claims are directed to an abstract
idea." Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d 1299,
1303 (Fed. Cir. 2018). "In cases involving software
innovations, this inquiry often turns on whether the claims
focus on 'the specific asserted 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. (quoting Enfish, 822 F.3d at 1335-36); see
BSG Tech LLCv. Buyseasons, Inc., 899 F.3d 1281, 1285-
86 (Fed. Cir. 2018). Computers are improved not only
through changes in hardware; "[ s ]oftware can make non-
abstract improvements to computer technology[]" Enfish,
822 F.3d at 1335; see Finjan, 879 F.3d at 1304. We have
several times held claims to pass muster under Alice step
one when sufficiently focused on such improvements.
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The Specification's description of the problem and solution shows the
advance over the prior art by the claimed invention is not on any
improvement in computer functionality but gathering certain information
from available resources.
The Specification states that "[i]t is natural for a person who is tasked
with influencing a decision-maker to be curious about the decision-maker's
background." Spec. 1:5-8.
Under the circumstances, it is natural for a person who
is tasked with interacting with a [P]atent [E]xaminerto be
curious about the examiner's background and/ or previous
decisions. Unfortunately, at least in the United States, there
is currently no convenient way to efficiently gather
information on an [E]xaminer-specific basis. In fact, it is not
uncommon for an inventor or an advocate to know very little
about the examiner with whom they are interacting during
the process of moving a patent application through the
patenting process.
Spec. 2 :26-3 :6. To overcome this lack of information about a patent
examiner's decision-making process, a system is provided which includes a
"data search component .... configured, in response to [a] data request, to
retrieve patent-related writings generated by the patent examiner in
prosecuting a plurality of different patent applications." Spec. 3: 14--18. The
Specification discloses various sources from which to obtain said examiner-
specific information, including the USPTO database. Spec 7:3-15. "Thus, it
may technically be possible for a user[ ]to obtain some level of information
about a particular patent examiner from [ the USP TO' s] data collection[].
However, in many cases, there is no efficient means for[] to navigate
through [the USPTO's] data collection[ Jon an examiner-specific basis."
Spec 8: 10-15. Accordingly, a database is provided from which such
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information can be retrieved. Figure 4, reproduced below, depicts the
database:
USEKACCOUNT
lNFOR~V,TION
l:XAMINLR DATA
SHEETS
rnff 01' EJ•c'e\1fNERS
FOR WHlCll A DATA
Sfll£T ES AVAILABLE
FIG. 4
COLLECTION Of
EXAMINER
DOCl:Ml'NTS
412
Fig. 4 is a diagrammatic illustration demonstrating contents of a database
used in the invention.
"As is shown in Fig. 4, database 116 also includes examiner data sheets 404.
An [E]xaminer data sheet is illustratively a compilation of information about
a particular [E]xaminer. Upon a valid log-in, user 102 is able to search for
and access an [E]xaminer data sheet for a particular [E]xaminer." Spec.
16:28-17:3.
Accordingly, the heart of the invention is in the data-gathering
scheme for obtaining certain Patent Examiner-specific information via the
steps recited in claim 10, not the "processor" or "database" which are plainly
generic. Cf Intellectual Ventures, 850 F.3d at 1328 ("[T]he heart of the
claimed invention lies in creating and using an index to search for and
retrieve data ... an abstract concept.")
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We have carefully reviewed the Specification but can find no
disclosure of an improvement to the processor or database. There is no
indication of an implementation of a solution to a problem in the software
arts as the Appellant has argued.
Computing devices having computer processors were well known at
the time the application was filed. 14 The Specification indicates as much in
disclosing "a client computing device" as applicable for performing the
claimed method. Spec., 4: 14--15.
Similarly, databases were well known at the time the application was
filed. See Intellectual Ventures I LLCv. Erie Indemnity Company, 850 F.3d
1315 (Fed. Cir. 2101 7) ( claims to searching a database using an index; US
6,510,434,filedDec. 29, 1999).
The claim provides no additional structural details that would
distinguish either the claimed "computing device having a computer
14 Cf Intellectual Ventures I LLCv. Capital One Financial Corporation,
850 F.3d 1332, 1341 (Fed. Cir. 2017) ("[T]he claims recite [] a generic
computer element-a processor.");Planet Bingo, LLCv. VKGSLLC, 576
Fed. Appx. 1005, 1008 (Fed. Cir. 2014) (nonprecedential) ("[T]he claims at
issue[ ]require 'a computer with a central processing unit,' 'a memory,' 'an
input and output terminal,' 'a printer,' in some cases 'a video screen,' and 'a
program ... enabling' the steps of managing a game of bingo ... the claims
recite a generic computer implementation of the covered abstract idea.");
and SmartflashLLCv. Apple Inc., 680 Fed. Appx. 977,984 (Fed. Cir. 2017)
(nonprecedential) ("[W]e fmd here that 'interfaces,' 'program stores,' and
'processors' are all generic computer components.")
19
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processor" or the "database" from those that were well known at the time the
application was filed. 15
Rather, claim 10 describes the "processor" and "database"
functionally; that is, the processor (a) receives a search request and (b)
identifies a "patent related writing" of a patent Examiner involving
accessing certain information in a database.
Claim 10 calls upon the processor to perform two functions - i.e.,
"receiving" and "identifying." Neither function is described in any detail
that would structurally distinguish it from those that were well known at the
time the application was filed.
The "receiving" involves receiving a search request, albeit one
tailored to obtain certain types of information. But search requests per se
were known and processors were commonly known to be capable of
receiving search requests. See Intellectual Ventures, 850 F.3d at 1326
("[T]he system receives a search request."). As far as said four items in the
search request are concerned, they specify the type of information sought to
gathered, presumably, from the database, although the claim does not say.
In fact, the claim does not call for performing a search at all. The claim
simply calls for receiving a search request specifying certain information
intended to be gathered, nothing more. That alone is conventional. Id.; see
also Bascom Global Internet Services, Inc. v. AT&T MobilUy LLC, 827 F.3d
15 Cf Move, Inc. v. Real Estate Alliance Ltd., 721 Fed. Appx. 950,954 (Fed.
Cir. 2018) (nonprecedential). "Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court."
20
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1341, 1350 (Fed. Cir. 2016) ("[F]iltering content on the Internet was already
a known concept.").
The "identifying" involves "utilizing the computer processor to
identify patent related writing in the database" ( claim 10), which database
contains the following information:
an [E]xaminer asserted denial of patent issuance based on a
rejection noted as being under the statutory provision, that is
part of a file history of an application assigned to the identified
assignee and that was written by the identified patent examiner
as part of the prosecution of the patent application
App. Br. 39, Claims App. The "identifying" comprises
Id.
using the computer processor to reference an indication of
which patent related writing was written by which examiner
and referencing which patent related writing is associated with
the file history of an application assigned to the identified
assignee, and wherein identifying comprises accessing, with
the computer processor, the database such that a combined set
of patent related writings that were written by the identified
patent examiner and that are part of the file histories of patent
applications that are assigned to the assignee are checked for
the rejection basis.
As we understand it, by "referencing" certain information contained in
the database and "accessing" said database, patent related writings written
by a particular patent examiner that is part of the file histories of patent
applications assigned to a particular assignee based on a rejection basis are
"identified." The claim provides no additional detail as how the processor is
to "reference" certain information in the database and "access" the database
to thereby "identify" the desired "patent related writing in the database" (see
claim 10). Given no additional detail, the "identifying" as claimed (via
21
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"referencing" and "accessing") is reasonably broadly construed as requiring
no more than to filter the information in the database to obtain the desired
"patent related writing" ( claim 10). But filtering information per se was
known and processors were commonly known to be capable of filtering
information in a database. Id.
The Specification attributes no special meaning to "receiving" or
"identifying." In our view, consistent with the Specification, these are
common processing functions one of ordinary skill in the art at the time of
the invention would have associated with generic processors. Cf GIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015):
Beyond the abstract idea of offer-based price optimization,
the claims merely recite "well-understood, routine
conventional activit[ ies]," either by requiring conventional
computer activities or routine data-gathering steps. Alice,
134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)
(alterations in original) .... For example, claim 1 recites
"sending a frrst set of electronic messages over a network to
devices," the devices being "programmed to communicate,"
storing test results in a "machine-readable medium," and
"using a computerized system ... to automatically
determine" an estimated outcome and setting a price. Just as
in Alice, "all of these computer functions are 'well-
understood, routine, conventional activit[ ies]' previously
known to the industry." Alice, 134 S.Ct. at2359 (quoting
Mayo, 132 S.Ct. at 1294) (alterations in original); see also
buySAFE[, Inc. v. Google, Inc.], 765 F.3d [1350,] 1355
[(Fed. Cir. 2014)] ("That a computer receives and sends the
information over a network-with no further
[S]pecification-is not even arguably inventive.").
At best, the claimed processor distinguishes over other generic
processors in the different types of content in the information it "receives"
and "identifies". Similarly, the claimed database distinguishes from other
22
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known databases because it contains different types informational content,
albeit the content itself is in fact not new. See e.g., Spec. 7:8-12 ("Much of
this data is freely available through their website (www.uspto.gov) either
through database querying, FTP downloads, requests for non-electronic
copies, requests for data on an electronic storage means, or some other
means."). But that difference alone is not patentably consequential. This is
so because"[ c ]laim limitations directed to the content of information and
lacking a requisite functional relationship are not entitled to patentable
weight because such information is not patent eligible subject matter under
35 U.S. C. § 101." Praxair Distribution, Inc. v. Mallinckrodt Hospital
Products IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018).
Claim 10 describes a method whereby a generic processor "receives"
a particular search request, identifies ( via "referencing" and "accessing" a
database) certain information, and "present[ s ]" said certain information (i.e.,
"the identified patent related writing") "for review by the user." As we
stated, claim 10 is directed to a data-gathering scheme comprising receiving
a particular search request, filtering content in a database to identify certain
information, and presenting the identified information for review.
The recited data-gathering scheme does not ask the "processor" and
"database" to go beyond its common functions. While instructions a
computer must follow to invoke the performance of certain steps can be
patentably significant (see Enfish, LLCv. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016); see also Ancora Technologies, Inc. v. HTC America, Inc.,
908 F.3d 1343 (Fed. Cir. 2018)), here the instant record does not sufficiently
support the view that the recited steps are caused to be performed by
computer-executable instructions having a non-conventional effect on the
23
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"processor" and/ or "database." To the contrary, the record supports viewing
the "processor" and "database" as themselves amounting to a mere
instruction to implement the recited "data-gathering" scheme on a generic
computer. Cf Alice573 U.S. at225-26 ("Instead, the claims at issue
amount to 'nothing significantly more' than an instruction to apply the
abstract idea of intermediated settlement using some unspecified, generic
computer.")
Rather than being directed to any improvement in computer
capabilities, the record supports the view that the claimed subject matter is
directed to a data-gathering scheme comprising receiving a particular search
request, filtering content in a database to identify certain information, and
presenting the identified information for review, using a generic processor
and database as tools. 16
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we fmd there is no integration into a practical application.
We have considered all the Appellants' arguments challenging the
Examiner's determination under step one of the Alice framework and fmd
16 See the 2019 Revised 101 Guidance at 55:
The courts have also identified examples in which a judicial exception
has not been integrated into a practical application:
1) An additional element merely recites the words
"apply it" ( or an equivalent) with the judicial
exception, or merely includes instructions to
implement an abstract idea on a computer, or merely
uses a computer as a tool to perform an abstract idea;
24
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them unpersuasive. For the foregoing reasons, the record supports the
Examiner's determination that claim 10 is directed to an abstract idea.
Alice step two -Does the Claim Provide an Inventive Concept? 17
Step two is "a 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."' Alice, 573 U.S. at221 (quotingMayo CollaborativeServs.
v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined that:
Claim 1 recites a method for "using a computer processor" to
access the data in a database, the "computer processor"
receiving a search request, "utilizing the computer processor"
to identify a patent writing in a database and "using the
computer processor" to reference indications and accessing,
"with the computer processor" the database such that the
writings are checked for a rejection basis. The broadest
reasonable interpretation of a computer processor is a general
purpose computer. The claim limitations when considered
separately recite data gathering functions that are well-
understood, routine and conventional in the art. For
example, the functions of receiving a search request,
accessing a database, referencing indications, checking
17 This corresponds to Step 2B of the 2019 Revised 101 Guidance (seep.
56).
[I]f a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then
evaluate the additional elements individually and in
combination under Step 2B to determine whether they
provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception
itself).
25
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documents/writings for information based on a search
request, identifying writings in a database based on a search
request, and presenting documents to a user are routine
functions of a generic search engine that searches and
accesses documents based on a search request. The functions
are capable ofbeing performed by any general purpose
computer. The claim, when considered as a whole, amounts
to nothing more than applying an abstract idea to a general
purpose computing environment. As such, there is no
"inventive concept" in Appellant's use of a generic computer
to perform well-understood, routine, and conventional
activities commonly used in the industry.
Final Act. 18.
We addressed the Appellant's argument as to purported specific
asserted improvements in computer capabilities under step one of the Alice
framework. This is consistent with the case law. See Ancora Technologies,
Inc. v. HTC America, Inc., 908 F.3d 1343, 1347 ("We have several times
held claims to pass muster under Alice step one when sufficiently focused on
such improvements.") Such an argument can also challenge a determination
under step two of the Alice framework-as the Appellants have done here
(see App. Br. 10-12, and Reply Br. 2). See buySAFE, 765 F.3dat 1354--55.
"[R ]ecent Federal Circuit jurisprudence has indicated that eligible subject
matter can often be identified either at the first or the second step of the
Alice/Mayo [framework]." 2019 Revised 101 Guidance 53, n. 17.
Be that as it may, we are unpersuaded that claim 10 presents an
element or combination of elements indicative of a specific asserted
improvement in computer capabilities, thereby rendering the claimed subject
matter sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the data-gathering scheme itself.
26
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We have reviewed the Specification and, as explained above, we can
fmd no suggestion of any improvements to the system as a result of
performing the recited steps. The Specification is focused on obtaining
certain patent examiner-related information, not on the processor or
database. Rather than focusing on the processor and/or database, the
Specification focuses on the information to be retrieved, the processor and
database acting merely as conduits for its retrieval. Cf In re TL!
Communications LLC Patent Litigation, 823 F.3d 607,612 (Fed. Cir. 2016)
("Put differently, the telephone unit itself is merely a conduit for the abstract
idea of classifying an image and storing the image based on its classification.
Indeed, the specification notes that it 'is known' that 'cellular telephones
may be utilized for image transmission,' [U.S. Patent 6,038,295,] col. 111.
31-34, and existing telephone systems could transmit pictures, audio, and
motion pictures and also had 'graphical annotation capability,' id. at col. 1 11.
52-59.")
The Appellants cite DDR as matching this case. App. Br. 15. We
disagree. There "the claims at issue[] specify how interactions with the
Internet are manipulated to yield a desired result-a result that overrides the
routine and conventi anal sequence of events ordinarily triggered by the click
of a hyperlink." DDR, 773 F.3d at 1258. Unlike in that decision, here no
improvement in computer functionality over what is conventional has been
shown.
We are unpersuaded that the record supports interpreting the steps
recited in the claim as resulting in an improved software as the Appellants
have argued. As discussed above, the Specification evidences the
conventionality of the claim element "processor" and databases were
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notoriously well-known, and the recited "receiving" and "identifying" steps
ask nothing more of them than to use them for their commonly-associated
information-processing functions. Much like the "data storage unit" and
"computer, coupled to said storage unit" in the claims of Alice (U.S. Patent
7,149,720, claim 1 ), "the claims here do [ not do] more than simply instruct
the practitioner to implement the abstract idea [ ... ] on a generic computer."
Alice, 573 U.S. at 225.
For the reasons discussed above, we are unpersuaded that the record
supports interpreting the steps recited in the claim as yielding any
improvement in technology.
We cited the Specification in our discussion as intrinsic evidence that
the claimed element "processor" is conventional. In doing so, we have
followed "Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimerv. HP
Inc.[, 881 F.3d 1360(Fed. Cir. 2018)],"USPTOMemorandum,RobertW.
Bahr, Deputy Commissioner For Patent Examination Policy, April 19, 2018
( the "Berkheimer Memo")).
The court in Berkheimer held that "[t]he patent eligibility inquiry may
contain underlying issues of fact." Berkheimer, 881 F.3dat 1365 (quoting
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016) ("The [section] 101 inquiry 'may contain underlying
factual issues."')). But the court also held that "[ w ]hen there is no genuine
issue of materialfactregarding whether the claim element or claimed
combination is well-understood, routine, [and] conventional to a skilled
artisan in the relevant field, this issue can be decided on summary judgment
28
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as a matter of law." Id. at 1368 (emphasis added). This qualification has
been subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires
that summary judgment be denied. In Berkheimer, there was
such a genuine dispute for claims 4--7, but not for claims 1-3
and 9 .... [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
Berkheimerv. HP Inc., 890 F.3d 1369, 1371-73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en bane, May 31, 2018); see also Aatrix Software, Inc.
v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018) ("A
factual allegation or dispute should not automatically take the determination
out of the court's hands; rather, there needs to be justification for why
additional evidence must be considered-the default being a legal
determination."). Here, the Specification indisputably shows the claimed
"processor" was conventional at the time of filing. Accordingly, no genuine
issue of material fact exists as to the well-understood, routine, or
conventional nature of the claimed element "processor" as claimed.
Finally, as to the question of preemption, the Appellants argue that
"the claims of the present application do not unduly monopolize the basic
tools of scientific and technological work further weighs in favor of the
patent eligibility of the pending claims." App. Br. 10.
With respect to the pre-emption concern, "[ w ]hat matters is whether a
claim threatens to subsume the full scope of a fundamental concept, and
when those concerns arise, we must look for meaningful limitations that
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prevent the claim as a whole from covering the concept's every practical
application." CLS Bank Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269,
1281 (Fed. Cir. 2013) (Lourie, J., concurring). Pre-emption is not a separate
test.
To be clear, the proper focus is not preemption per se, for
some measure of preemption is intrinsic in the statutory right
granted with every patent to exclude competitors, for a
limited time, from practicing the claimed invention. See 3 5
U.S. C. § 154. Rather, the animating concern is that claims
should not be coextensive with a natural law, natural
phenomenon, or abstract idea; a patent-eligible claim must
include one or more substantive limitations that, in the words
of the Supreme Court, add "significantly more" to the basic
principle, with the result that the claim covers significantly
less. See Mayo 132 S.Ct. at 1294. Thus, broad claims do not
necessarily raise § 101 preemption concerns, and seemingly
narrower claims are not necessarily exempt.
Id. SeealsoAriosaDiagnostics,Inc. v. Sequenom,Inc., 788F.3d 1371,
1379 (Fed. Cir. 2015) ("While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."). Because we fmd the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. "Where a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, [] preemption concerns
are fully addressedandmademoot." AriosaDiagnostics, 788 F.3dat 1379.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 10 does not include an element or combination of elements
circumscribing the patent-ineligible data-gathering concept it is directed to
so as to transform the concept into an inventive application.
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We have considered all of the Appellants' remaining arguments
(including those made in the Reply Brief) and fmd them unpersuasive.
We note the Appellant's discussion of independent claim 21. App.
Br. 17-18. However, the discussion simply repeats what claim 21 recites
and argues for its patent-eligibility for the same reasons used to argue for
the patent-eligibility of claim 10. Claim 21 parallels claim 10. The
arguments relative claim 21 are unpersuasive for the reasons discussed
relative claim 10.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 10, and claims 11-14 and 21-30
which stand or fall with claim 10, are directed to an abstract idea and do not
present an "inventive concept," we sustain the Examiner's conclusion that
they are directed to patent-ineligible subject matter for being judicially-
excepted from 35 U.S.C. § 101. Cf LendingTree, LLCv. Zillow, Inc., 656
Fed. Appx. 991, 997 (Fed. Cir. 2016) ("We have considered all of
LendingTree's remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an 'inventive concept,' we hold that they
are directed to ineligible subject matter under 35 U.S. C. § 101. "); see, e.g.,
GIP Techs., 788 F.3dat l364;FairWarningIP, LLCv. IatricSys., Inc., 839
F.3d 1089, 1098 (Fed. Cir. 2016).
The rejection of claims 10, 11, 14, 21, 23, 25, and 26 under 35 US. C. §
103(a) as beingunpatentableover Rivette, Cockburn, and Slovak.
Independent claim 10 requires identifying a patent related writing in a
database,
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wherein identifying further comprises using the computer
processor to reference an indication of which patent related
writing was written by which examiner and referencing
which patent related writing is associated with the file history
of an application assigned to the identified assignee, and
wherein identifying comprises accessing, with the computer
processor, the database such that a combined set of patent
related writings that were written by the identified patent
examiner and that are part of the file histories of patent
applications that are assigned to the assignee are checked for
the rejection basis.
The Examiner found said "identifying" limitation disclosed in
paragraphs 319, 390-392, 397, 400-401, and408 ofRivette. Final Act. 23-
24.
The Appellant disagrees.
The Examiner cites paragraphs [0390]-[0392],
[0397], [0797], [0400]-[0402], [0408], and [0264] of
Rivette as allegedly disclosing referencing/indicating
certain attributes/information of documents in order to
create a smaller more targeted set of document and
subsequently searching the set of keywords. (Final Office
Action, pages 23-24). However, the cited paragraphs of
Rivette do not teach or fairly suggest "identifying further
comprises using the computer processor to reference an
indication of which patent related writing was written by
which examiner and referencing which patent related
writing is associated with the file history of an application
assigned to the identified assignee, and wherein identifying
comprises accessing, with the computer processor, the
database such that a combined set of patent related writings
that were written by the identified [P]atent [E]xaminer and
that are part of the file histories of patent applications that
are assigned to the assignee are checked for the rejection
basis" as recited in claim 10.
App. Br. 22.
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We have reviewed the relied-upon Rivette passages but do not fmd
that they disclose the "identifying" limitation as claimed.
The cited passages is that they are directed to "fields of search"
(Rivette para. 319), indexing data to enhance database searching (paras.
Rivette 390-392), defming a search (Rivette para. 397), specifying a search
(paras. 400-401 ), and search fields on a GUI (Rivette para. 408). As we
have explained above in deciding the question of patent-eligibility,
"identifying" is reasonably broadly construed to cover a combination of a
mental process ("referencing") and a routine "accessing" of a database to
gather certain desired information. Accordingly, to render obvious the
"identifying" limitation as claimed, the Rivette passages must disclose or
lead one of ordinary skill in the art to perform the "referencing" and routine
"accessing" of a database to gather certain desired information as claimed.
The difficulty here is that there is insufficient explanation as to how one can
reach what is claimed given the cited search-related disclosures.
Notwithstanding claim 10 does not limit the "identifying" to performing a
search, disclosure of searching a database may nevertheless meet the claim
limitation. But that alone is not enough. The point is that citing disclosure
to searchingper se, as done here, does not sufficiently satisfy the burden of
establishing that the "identifying" limitation as claimed is disclosed in the
prior art.
Regarding the other independent claim, claim 21, it similarly recites
"identifying a subset comprises referencing the examiner index as necessary
to avoid searching patent related writings in the data store not written by an
examiner consistent with the target examiner name." The Examiner
determined as follows:
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a data search component responding to receipt of
the target [E]xaminer name by identifying a subset of
the patent related writings consistent with the target
[E]xaminer name and the second search parameter, and
wherein identifying a subset comprises referencing the
[E]xaminer index as necessary to avoid searching patent
related writings in the data store not consistent with the
target [E]xaminer name at [0400-401 ], [0319] (receiving
search parameters from a user that can include [E]xaminer
name) and [0390-392] ("the data in the databases 316 is
indexed to facilitate and enhance searching by the search
engine 424. For example, each field in each table of the
patent bibliographic databases 604 is preferably indexed
and searchable" and the search module "conduct[s] a search
to identify documents that satisfy a client-supplied search
parameter[,]" where the [E]xaminer asserts that the
searching of an indexed database to identify documents that
are indexed with bibliographic fields, and the bibliographic
field and search parameter includes patent [E]xaminers is
disclosing searching for patents consistent with the target
[E]xaminer name).
Final Act. 32-33. Searching of an indexed database to identify documents
may require "referencing" the information in the index so that the documents
can be identified. However, that has not been clearly established. The
bigger difficulty is that the claim calls for "referencing the[] index as
necessary to avoid searching" for certain information. Even if a good
argument can be made that searching an indexed database necessarily
includes referencing the information to be found, the effect of the claimed
"referencing" is to avoid searching for certain information rather than to find
it. Citing disclosure to searching per se, as done here, does not sufficiently
satisfy the burden of establishing that the "identifying" limitation as claimed
is disclosed in the prior art.
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The rejection of the independent claims is not sustained.
We reach the same conclusion for the rejection of dependent claims
11, 14, 23, 25, and 26. See In re Fine, 837 F.2d 1071, 1075 (Fed. Cir.
1988):
Claims 62, 68, 69, 79, 85 and 86 relate to the oxygen-
rich flame conversion means of the claimed invention. These
"flame" claims depend from either apparatus claim 60 or
method claim 77. Dependent claims are nonobvious under
section 103 if the independent claims from which they
depend are nonobvious. Hartness Int'l, Inc. v. Simplimatic
Eng'gCo., 819F.2d 1100, 1108,2 USPQ2d 1826, 1831
(Fed. Cir. 1987);In re Abele, 684 F.2d 902,910,214 USPQ
682,689 (CCPA 1982); see also In re Sernaker, 702 F.2d
989,991,217 USPQ 1, 3 (Fed. Cir. 1983). In view of our
conclusion that claims 60 and 77 are nonobvious, the
dependent "flame" claims are also patentable.
The rejection of claims 12, 13, and 27-29 under 35 US. C. § 103(a) as being
unpatentable over Rivette, Cockburn, Slovak, and Grainger.
The rejection of claims 22 and 24 under 35 US. C. § 103(a) as being
unpatentable over Rivette, Cockburn, Slovak, and Brudz.
The rejection of claim 30 under 35 US. C. § 103(a) as beingunpatentable
over Rivette, Cockburn, Slovak, and USPTO.
These rejections are directed to claims dependent on claims 10 and 21,
whose rejection we have reversed above. For the same reasons, we will not
sustain the rejections of claims 12, 13, 22, 24, and 27-30 over the cited prior
art. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent
claims are nonobvious if the independent claims from which they depend are
nonobvious. ").
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CONCLUSIONS
The rejection of claims 10-14and21-30under35 U.S.C. §101 for
claiming patent-ineligible subject matter is affirmed.
The rejection of claims 10, 11, 14, 21, 23, 25, and26 under 35 U.S.C.
§ 103( a) as being unpatentable over Rivette, Cockburn, and Slovak is
reversed.
The rejection of claims 12, 13, and27-29 under 35 U.S.C. § 103(a) as
being unpatentable over Rivette, Cockburn, Slovak, and Grainger is
reversed.
The rejection of claims 22 and 24 under 35 U.S.C. § 103(a) as being
unpatentable over Rivette, Cockburn, Slovak, and Brudz is reversed.
Therejectionofclaim 30under35U.S.C. § 103(a)asbeing
unpatentable over Rivette, Cockburn, Slovak, and USP TO is reversed.
DECISION
The decision of the Examiner to reject claims 10-14 and 21-30 is
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
36