Ex Parte Holt

Patent Trials and Appeals Board

May 31, 2019

11823557 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/823,557 06/28/2007
146524 7590
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
05/31/2019
FIRST NAMED INVENTOR
Christopher L. 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.
31547-359/LEN0081NA 1190
EXAMINER
TO, BAOQUOC N
ART UNIT PAPER NUMBER
2154
MAIL DATE DELIVERY MODE
05/31/2019 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 STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER L. HOLT
Appeal2017-008341
Application 11/823,557
Technology Center 2100
Before ERIC B. CHEN, JEREMY J. CURCURI, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-008341
Application 11/823,557
This is an appeal under 35 U.S.C. § 134(a) from the non-final
rejection of claims 1-10, 12, 14--16, 18, 20, and 21. Claim 11, 13, 17, and
19 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
An oral hearing was held on April 1 7, 2019. The record includes a
written transcript of the oral hearing.
We affirm.
STATEMENT OF THE CASE
Appellant's invention relates to a patent examiner information
accessing system, such that a user can search information aggregated by the
system. (Abstract.)
Claims 1, 10, and 16 are exemplary, with disputed limitations in
italics:
1. A computer-implemented patent data accessing system,
compnsmg:
[i] a data store containing a collection of patent office actions
generated by at least one patent examiner during administrative
prosecution of a plurality of different patent applications, and grouped
by patent examiner and by type of rejection;
[ii] a data aggregation system that identifies rejection types of
rejections in the patent office actions for each patent examiner based
on a statutory section under which the rejections are made;
[iii] a data search component that counts a number of office
actions issued before allowance in each of the plurality of different
patent applications, and calculates and stores in the data store, an
average number of office actions before allowance for each patent
examiner, and that, in response to receiving a search request
identifying a specific patent examiner and rejection type, searches the
data store and identifies and returns a subset of the collection of patent
office actions, wherein the subset is a set of the patent office actions
that are identified as containing a denial of patentability based on the
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rejection type for the specific patent examiner identified in the search
request and wherein the data search component, in response to
receiving a search request identifying the specific patent examiner,
searches the data store and identifies and returns the average number
of office actions before allowance for the specific patent examiner;
and
[iv] a computer processor that is a functional component of a
computing device, the computer processor being utilized by the data
search component to facilitate said identification of the subset of the
collection of patent office actions.
10. A data accessing system, comprising:
[i] a computer-implemented identifier that analyzes textual
content of office actions generated by a patent examiner during
prosecution of a patent application and identifies rejection bases based
on the analysis of the textual content of the office actions, the
rejection bases corresponding to a statutory section upon which the
rejections are based, and wherein the identifier generates a data store
storing plurality of office actions arranged by patent examiner and
rejection bases;
[ii] a component that calculates a set of statistics indicative of
how often each patent examiner uses each rejection basis;
[iii] a report generation system that receives a request
identifying a specific patent examiner and, in response, retrieves the
set of statistics identifying how often the specific patent examiner uses
each of a plurality of different rejection bases;
[iv] a computer processor that is a component of a computing
device, the computer processor being utilized by the computer-
implemented identifier to facilitate said identification of the rejection
basis.
16. A computer-implemented method of providing
information, the method comprising:
[i] obtaining a computer readable data store of a plurality of
different office actions generated by a given patent examiner during
administrative prosecution of a plurality of different patent
applications;
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Application 11/823,557
[ii] utilizing a computer processor that is a component of a
computing device to count a number of office actions before
allowance in each of the plurality of different patent applications;
[iii] using the computer processor to generate a statistic
indicative of an average number of office actions issued before
allowance for the given patent examiner, based on the count;
[iv] repeating steps of obtaining, utilizing and generating a
statistic for a plurality of different patent examiners to generate a data
store of sets of office actions and statistics arranged by patent
exammer;
[ v] receiving a query that contains an indication of a specific
patent examiner;
[ vi] comparing the indication of the specific patent examiner to
the data store;
[ vii] determining if the indication of the specific patent
examiner matches a patent examiner in the data store;
[ viii] if it matches, then responding to the query by displaying
an indication of the statistic showing an average number of office
actions issued before allowance in the patent applications for the
specific patent examiner; and
[ix] if it does not match, then responding to the query indicating
that no match is found.
Claims 1-10, 12, 14--16, 18, 20, and 21 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter.
Claims 1-9 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Van Luchene (US 2007/0219853 Al; Sept. 20, 2007),
Ikeda (US 6,505,195 Bl; Jan. 7, 2003), Mueller (US 2007/0219854 Al;
Sept. 20, 2007), and Greening (US 2001/0013009 Al; Aug. 9, 2001).
Claims 10, 12, 14, and 15 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Van Luchene, Ikeda, and Mueller.
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Claims 16, 20, and 21 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Van Luchene, Greening, and Carr (US
2007/0050238 Al; Mar. 1, 2007).
Claim 18 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Van Luchene, Greening, Carr, and Ikeda.
ANALYSIS
§ 1 OJ Rejection
We are unpersuaded by Appellant's arguments (App. Br. 11-17; see
also Reply Br. 2---6) that independent claims 1, 10, and 16 are directed to
patent-eligible subject matter under 35 U.S.C. § 101.
The Examiner determined that independent claims 1, 10, and 16
"read, retrieval data being organized and classified and stored to the
system," which is analogous to Digitech Image Techs., LLC v. Electronics
for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). (Ans. 4.) Moreover, the
Examiner determined that the limitations
counting number office actions issue before allowance,
calculate and tore in the data store an average number of office
action, in claim 1, and calculate a set of statistic indicative of
how often each patent examiner uses each rejection basis in
claim 10, and using the computer to generate a statistic
indicative of an average number of office action issued before
allowance ... for plurality of different examiners in claim 16
are the mathematical calculation either to provide a statistic of
examiner using rejection or average number of office action
before allowance
are analogous to Cyberfone Sys. v. CNN Interactive Grp., 558 Fed. Appx.
988 (Fed. Cir. 2014). (Id.) In addition, the Examiner determined that the
claims 1, 10, and 16 "do not include additional elements that are sufficient to
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amount to significantly more than the judicial exception." (Id. at 2.) We
agree with the Examiner's determinations and ultimate conclusion that the
claims are directed to patent-ineligible subject matter.
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.").
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
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Application 11/823,557
(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 176; 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. ( 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.").
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 ( citation 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. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
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generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019). Under that guidance, we first look to
whether the claim recites:
( 1) 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) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h) (9th ed.
2019).
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 are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(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 84 Fed. Reg. at 56.
Step One
Are the claims at issue directed
to a patent-ineligible concept?
Claim 1 is a data accessing system claim, which falls within the
"manufacture" category of 35 U.S.C. § 101. Likewise, claim 10 is a data
accessing system, which also falls within the "manufacture" category of 35
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U.S.C. § 101, and claim 16 is a computer-implemented method claim, which
falls within the "process" category of 35 U.S.C. § 101. Therefore, claims 1,
10, and 16 fall within one of the four statutory categories of patentable
subject matter identified by 35 U.S.C. §101.
Although claims 1, 10, and 16 fall within the statutory categories, we
must still determine whether the claims are directed to a judicial exception,
namely an abstract idea. See Alice, 573 U.S. 208 (2014). Thus, we must
determine whether the claims recite a judicial exception and whether the
exception is integrated into a practical application. See 84 Fed. Reg. at 52-
55. If both elements are satisfied, the claim is directed to a judicial
exception under the first step of the Alice/Mayo test. See id.
Step 2A, Prong One
Appellant's application is entitled "Examiner Information System."
(Spec. 1.) Appellant discloses that "there is currently no convenient way to
efficiently gather information on an Examiner-specific basis." (Id.)
Appellant, therefore, provides a system that "aggregates data and can index
it in a variety of different ways, illustratively one way is by Examiner, and
stores it in aggregated Examiner data store." (Id. at 2.)
Independent Claim 1
Independent claim 1 is a system claim, and includes the following
limitation: "[i] a collection of patent office actions generated by at least one
patent examiner during administrative prosecution of a plurality of different
patent applications .... " Such limitation of claim 1 is directed to a patent-
ineligible abstract idea of certain methods of organizing human activity,
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such as a collecting data. See, e.g., Elec. Power Grp. v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) ("collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.").
Moreover, independent claim 1 recites: "[ii] a collection of patent
office actions ... grouped by patent examiner and by type of rejection,"
"[iii] a data aggregation system that identifies rejection types of rejections in
the patent office actions for each patent examiner based on a statutory
section under which the rejections are made," and "[iv] a data search
component that counts a number of office actions issued before allowance in
each of the plurality of different patent applications, and calculates and
stores in the data store, an average number of office actions before
allowance for each patent examiner ... searches the data store and identifies
and returns a subset of the collection of patent office actions, wherein the
subset is a set of the patent office actions that are identified as containing a
denial of patentability based on the rejection type for the specific patent
examiner identified in the search request ... identifying the specific patent
examiner, searches the data store and identifies and returns the average
number of office actions before allowance for the specific patent examiner."
Such limitations of claim 1 are directed to a patent-ineligible abstract idea of
mathematical concepts, such as the use of mathematical algorithms to
manipulate existing information. See, e.g., Digitech Image Techs., LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)
("[ w ]ithout additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible").
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Independent Claim 10
Independent claim 10 is a system claim, and includes the following
limitations: "[i] analyzes textual content of office actions generated by a
patent examiner during prosecution of a patent application and identifies
rejection bases based on the analysis of the textual content of the office
actions, the rejection bases corresponding to a statutory section upon which
the rejections are based, and wherein the identifier generates a data store
storing plurality of office actions arranged by patent examiner and rejection
bases" and "[ii] calculates a set of statistics indicative of how often each
patent examiner uses each rejection basis." Such limitations of claim 10 are
directed to a patent-ineligible abstract idea of mathematical concepts, such
as the use of mathematical concepts to manipulate existing information.
See, e.g., Digitech, 758 F.3d at 1351.
Additionally, independent claim 10 recites "[iii] receives a request
identifying a specific patent examiner and, in response, retrieves the set of
statistics identifying how often the specific patent examiner uses each of a
plurality of different rejection bases." Such limitation of claim 10 is directed
to a patent-ineligible abstract idea of certain methods of organizing human
activity, such as routing information. See Two-Way Media Ltd. v. Comcast
Cable Commc 'ns, LLC, 874 F.3d 1329, 1337 (2017) ("The claim requires
the functional results of ... 'routing,' ... but does not sufficiently describe
how to achieve these results in a non-abstract way").
Independent Claim 16
Independent claim 16 is a method claim, and includes the following
limitation: "[i] obtaining ... a plurality of different office actions generated
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by a given patent examiner during administrative prosecution of a plurality
of different patent applications." Such limitation of claim 16 is directed to a
patent-ineligible abstract idea of certain methods of organizing human
activity, such as a collecting data. See, e.g., Elec. Power Grp., 830 F.3d at
1353.
Additionally, independent claim 16 recites the following: "[iii]
generate a statistic indicative of an average number of office actions issued
before allowance for the given patent examiner, based on the count," "[iv]
repeating steps of obtaining, utilizing and generating a statistic for a plurality
of different patent examiners to generate a data store of sets of office actions
and statistics arranged by patent examiner,""[ vi] comparing the indication
of the specific patent examiner," and "[vii] determining if the indication of
the specific patent examiner matches a patent examiner." Such limitations
of claim 16 are directed to a patent-ineligible abstract idea of mathematical
concepts, such as the use of mathematical algorithms to manipulate existing
information. See, e.g., Digitech, 758 F.3d at 1351.
Additionally, independent claim 16 recites "[ viii] if it matches, then
responding to the query by displaying an indication of the statistic showing
an average number of office actions issued before allowance in the patent
applications for the specific patent examiner" and "[ix] if it does not match,
then responding to the query indicating that no match is found." Such
limitations of claim 16 are directed to a patent-ineligible abstract idea of
certain methods of organizing human activity, such as routing information.
See Two-Way Media Ltd., 874 F.3d at 1337.
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Step 2A, Prong Two
Because claims 1, 10, and 16 recite a judicial exception, we next
determine if the claims recite additional elements that integrate the judicial
exception into a practical application.
System claim 1 recites "[i] a data store containing a collection of
patent office actions generated by at least one patent examiner during
administrative prosecution of a plurality of different patent applications" and
"[iv] a computer processor . .. being utilized by the data search component
to facilitate said identification of the subset of the collection of patent office
actions" (emphases added). Similarly, system claim 10 recites "[iv] a
computer processor . .. being utilized by the computer-implemented
identifier to facilitate said identification of the rejection basis." Moreover,
method claim 16 recites "[i] obtaining a computer readable data store of a
plurality of different office actions generated by a given patent examiner
during administrative prosecution of a plurality of different patent
applications," "[ii] utilizing a computer processor that is a component of a
computing device to count a number of office actions before allowance in
each of the plurality of different patent applications," and "[iii] using the
computer processor to generate a statistic indicative of an average number of
office actions issued before allowance for the given patent examiner .... "
The recited computer hardware, including the recited "data store" ( or
"computer readable data store"), "computer processor," and "computing
device," are merely tools for performing the abstract idea. See Affinity Labs
v. DirecTV, 838 F.3d 1253, 1262 (Fed. Cir. 2016) ("the claims are directed
not to an improvement in cellular telephones but simply to the use of cellular
telephones as tools in the aid of a process focused on an abstract idea").
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Accordingly, claims 1, 10, and 16 do not recite additional elements that
integrate the judicial exception into a practical application.
Step 2B
Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Because claims 1, 10, and 16 are directed to a judicial exception, we
next determine, according to Alice, whether these claims recite an element,
or combination of elements, that is enough to ensure that the claim is
directed to significantly more than a judicial exception. We look to whether
the claims: (a) add a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field, or (b)
simply append well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. 84 Fed. Reg. at 56.
Claim 1 is a data accessing system claim, which includes "a data
store" and "a computer processor." Similarly, claim 10 is a data accessing
system claim, which includes "a computer processor" and method claim 16
includes "a computer readable data store."
With respect to the claimed hardware components, Appellant's
Specification discloses the following:
FIG. 1 shows that Examiner information accessing system
102 includes a data search system 118 and data aggregation
system 122. The query 116 is provided to data search system 118
which, in tum, executes the query against aggregated Examiner
data 106 .... The data search system 118 may illustratively be a
conventional search engine or another type of searching system
that searches through aggregated Examiner data 106. In any case,
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data search system 118 generates results 120 that are provided,
through search user interface system 108, and through the search
UI 110 generated by system 108, to a user over network 114. The
query 116 and results 120 can contain any of a wide variety of
different information, depending on what the user 112 desires,
and depending on the type of data aggregated in aggregated
Examiner data store 106.
(i118 (emphasis added).) Appellant's Specification is silent with respect to
the terms "computer processor" or "computing device."
The generalized functional terms by which the computer components
are described reasonably indicate that Appellant's Specification discloses
conventional data store 106 which interacts with a conventional "computer
processor" as component in a conventional "computing device."
In view of Appellant's Specification, the claimed hardware
components, including "data store" ( or "computer readable data store"),
"computer processor," and "computing device," reasonably may be
determined to be generic, purely conventional computer elements. Thus, the
claims do no more than require generic computer elements to perform
generic computer functions at a high level of generality, rather than improve
computer capabilities.
First, Appellant argues "that [the] claims ... are not directed to an
abstract idea, but instead are directed to specific applications of computer-
implemented patent data accessing systems and computer-implemented
methods of providing information to new and useful ends." (App. Br. 11.)
In particular, Appellant argues that "[s]uch computer-implemented systems
and methods are inextricably tied to computer technology and distinct from
the types of concepts typically found as abstract." (Id.) However, other than
providing a conclusory statement that the claims are "inextricably tied to
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computer technology," Appellant has not adequately explained why the
claims overcome a problem that specifically arises in computer technology.
In particular, Appellant has not explained how collecting, analyzing, and
routing information relating to patent examiners is a problem rooted in
computer technology.
Second, Appellant argues that "[ s ]imilar to the claims at issue in
Enfzsh, 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.'" (App.
Br. 12.) In particular, "the claims of the present application solve a problem
in the software arts ... that affect a real world result (users' inability to have
information regarding an examiner with whom they are interacting ... )."
(Id.) Again, Appellant has not explained how the collecting, analyzing, and
routing information relating to patent examiners is a problem rooted in
computer technology. Moreover, any increased speed in generating
information about patent examiners is derived solely from the capabilities of
a general-purpose computer. FairWarning IP, LLC v. Iatric Sys., 839 F.3d
1089, 1095 (Fed. Cir. 2016).
Third, Appellant argues that "the fact 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" and "the pending claims, which recite specific applications
of computer-implemented patent data accessing systems and computer-
implemented methods of providing information that all include a number of
detailed and specific features, do not preempt basic tools of science or
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technology." (App. Br. 13.) However, although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Where claims are deemed to
recite only patent ineligible subject matter under the two-step Alice analysis,
as they are here, "preemption concerns are fully addressed and made moot."
Id.
Fourth, Appellant argues that "[i]n addition to characterizing the
claims at an impermissibly high level of abstraction that is untethered from
the actual claim language, this rejection is facially deficient because the
Examiner has not analogized to case law to substantiate the rejection."
(App. Br. 15; see also Reply Br. 2-5.) Contrary to Appellant's arguments,
the Examiner has identified the appropriate judicial exceptions of organizing
human activity or mathematical concepts, and the Examiner has compared
the claimed concepts of independent claim 1 to the appropriate Federal
Circuit decisions (i.e., Digitech and Cyberfone). Accordingly, the Examiner
has met the burden of a general prima facie notice requirement. See In re
Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) ("[A]ll that is required of the
[Patent] [O]ffice to meet its prima facie burden of production is to set forth
the statutory basis of the rejection and the reference or references relied
upon in a sufficiently articulate and informative manner as to meet the notice
requirement of§ 132.").
Fifth, Appellant argues that "even if the pending claims are
erroneously viewed as being directed to an abstract idea, the elements of
these claims amount to significantly more than the alleged abstract idea itself
to transform the nature of the claims into a patent-eligible invention"
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because "each of the pending claims recites an 'inventive concept' and is
accordingly eligible for patenting." (App. Br. 17.) However, other than
providing block quotes of the independent claims with a conclusory
statement that "the elements of these claims amount to significantly more
than the alleged abstract idea," Appellant does not adequately explain why
the claims recite "significantly more."
Last, Appellant argues that "the more recent non-precedential decision
of Trading Technologies v. CQG, 2016-1616 (Fed. Cir. 2017) ... is more
applicable than Cyberfone and/or Digitech" and "that the graphical user
interface in Trading Technologies ... uniquely matches the facts as
compared with Digitech and/or Cyberfone." (Reply Br. 5---6.) However,
other than citing to Trading Technologies, and providing unsupported
conclusory statements, Appellant does not adequately explain how this case
pertains to the claimed invention.
Thus, we agree with the Examiner that claims 1, 10, and 16 are
directed towards patent-ineligible subject matter. Accordingly, we sustain
the rejection of independent claims 1, 10, and 16 under 35 U.S.C. § 101.
Claims 2-9, 12, 14, 15, 18, 20, and 21 depend from independent
claims 1, 10, and 16, and Appellant has not presented any additional
substantive arguments with respect to these claims. We sustain the rejection
ofclaims2-9, 12, 14, 15, 18,20,and21 under35U.S.C. § 101 forthesame
reasons discussed with respect to independent claims 1, 10, and 16.
§ 103 Rejection-Van Luchene, Ikeda, Mueller, and Greening
We are persuaded by Appellant's arguments (Reply Br. 9-10) that the
combination of Van Luchene, Ikeda, Mueller, and Greening would not have
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rendered obvious independent claim 1, which includes the limitation
"grouped by patent examiner and by type of rejection."
The Examiner found that the document retrieval apparatus of Ikeda,
having classification attribute storage, corresponds to the limitation
"grouped by patent examiner and by type of rejection." (Non-Final Act. 15.)
In particular, the Examiner stated that "[t]his suggests the concept of
analyzing the content of the retrieved documents and the documents to
classify documents based on attributes such as rejection types as such 112,
101, 102, 103 and others." (Id.) Alternatively, the Examiner found that the
database of Van Luchene, which includes Examiner profiles, corresponds to
the limitation "grouped by patent examiner and by type of rejection."
(Ans. 7.) We do not agree with the Examiner's findings.
Ikeda relates to "retrieving documents matching an indicated
condition from a large number of documents." (Col. 1, 11. 10-11.) Ikeda
explains that the following:
Specifically, the document retrieval apparatus has a
classification attribute storage storing only types of indicated
attributes, among a plurality of types of attributes that can be
used to classify documents, an attribute analyzing means for
analyzing each of the retrieved documents to determine whether
an attribute element belonging to the types of attributes stored
in the classification attribute storage is contained in the
document or not, and an attribute classifying means for
classifying each of the retrieved documents such that
documents containing the same type of attribute elements fall in
the same category and documents containing no attribute
elements fall in an independent category.
(Col. 3, 11. 10-20.)
Van Luchene relates to "various automated and non-automated
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means for selecting a qualified examiner based on a number of criteria
including the examiners history, current workload and the subject matter of
the filed application." (Abstract.) Van Luchene explains the following:
In some embodiments, a database may be created of all of the
examiners and their histories. Such information may be used to
create a profile of a patent examiner. Profiles may include
information regarding previous applications that the examiner
has examined, the patent applications in the examiner's queue
for examination, the examiner's efficiency rating, the prior art
cited in the previous and/or waiting applications, the examiner's
education, the examiner's particular area of expertise, the length
of time it takes the examiner to examine an application, the
examiner's grade or level, the examiner's current workload, the
examiner's seniority, the examiner's previous experience, the
examiner's training, the number of reissues in previously filed
applications, the number of appeals filed, the results of
appealed applications, or any combination thereof.
(iT 107.)
Although the Examiner cited to Ikeda for the "plurality of types of
attributes that can be used to classify documents, [including] an attribute
analyzing means for analyzing each of the retrieved documents" (col. 3,
11. 12-14), the Examiner has provided insufficient evidence to support a
finding the Ikeda teaches the limitation "grouped by patent examiner and by
type of rejection." Likewise, although the Examiner cited to Van Luchene
for the examiner profiles, which includes "previous applications that the
examiner has examined" or "the number of reissues in previously filed
applications," the Examiner has provided insufficient evidence to support a
finding that Ikeda teaches the limitation "grouped by patent examiner and by
type of rejection." In particular, both Ikeda and Van Luchene are silent with
respect to "grouping by rejection," as recited in claim 1. Therefore, on this
record, the Examiner has not demonstrated either Ikeda or Van Luchene
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teaches the limitation "grouped by patent examiner and by type of
rejection." Moreover, the Examiner's application of Mueller and Greening
does not cure the deficiencies of Ikeda and Van Luchene.
Accordingly, we are persuaded by Appellant's arguments that
"the mere grouping of data by its attributes [in Ikeda] does not teach or fairly
suggest a plurality of different patent applications grouped by patent
examiner and type of rejection, as recited in claim 1" (Reply Br. 10
( emphasis omitted)) and "a reissue application [ of Van Luchene] is not a
ground of rejection, and therefore does not teach or fairly suggest a type of
rejection" (id. at 9-10).
Thus, we do not sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 2-9 depend from claim 1. We do not sustain the
rejection of claims 2-9 under 35 U.S.C. § 103(a) for the same reasons
discussed with respect to claim 1.
§ 103 Rejection-Van Luchene, Ikeda, and Mueller
Independent claim 10 recites limitations similar to those discussed
with respect to claim 1, and claims 12, 14, and 15 depend from claim 10.
We do not sustain the rejection of claims 10, 12, 14, and 15 under 35 U.S.C.
§ 103(a) for the same reasons discussed with respect to rejection of claim 1
under 35 U.S.C. § 103(a) as being unpatentable over Van Luchene, Ikeda,
Mueller, and Greening.
§ 103 Rejection-Van Luchene, Greening, and Carr
We are persuaded by Appellant's arguments (Reply Br. 15-16) that
the combination of Van Luchene, Greening, and Carr would not have
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rendered obvious independent claim 16, which includes the limitation "to
count a number of office actions before allowance in each of the plurality of
different patent applications."
The Examiner found that the user interface process of Greening, in
which a user rates an item by recording the number of time the user
mentions a word, corresponds to the limitation "utilizing a computer
processor that is a component of a computing device to count a number of
office actions before allowance in each of the plurality of different patent
applications." ( Ans. 11; see also Non-Final Act. 17.) In particular, the
Examiner found that "Greening ... discloses a calculation of an average
number times a user mention a word and stored in the database for retrieval
which the same concept can be used to calculate a number of office action
before allowance in each of the plurality of different patent applications."
(Ans. 11.) We do not agree with the Examiner's findings.
Greening relates to "marketing products and services," in particular,
"using a computer system to compare an individual's reaction to items to
other people's reactions." (i13.) Greening explains that "step 203 gets a
rating by providing a scalar rating selection control from which the user
selects" and " get[ s] a rating by recording the number of times a user
mentioned a word in text chat, in a review, in a story, or in an article."
(i163.)
Although the Examiner cited to the rating function of Greening, in
which one mechanism of "rating [is] by recording the number of times a user
mentioned a word," the Examiner has provided insufficient evidence to
support a finding that Greening teaches the limitation "to count a number of
office actions before allowance in each of the plurality of different patent
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applications," as recited in claim 16. In particular, the Examiner has not
adequately explained how the rating function in Greening, which counts the
frequency of words in a text file document (e.g., text, review, story, or
article), can be used to count Office actions issued by the Examiner prior to
allowance. Therefore, on this record, the Examiner has not demonstrated
that Greening teaches the limitation "to count a number of office actions
before allowance in each of the plurality of different patent applications."
Moreover, the Examiner's application of Van Luchene and Carr does not
cure the deficiencies of Greening.
Accordingly, we are persuaded by Appellant's arguments that
"equating an average number of times a user mentions a word with the
average number of office actions before allowance for the specific
patent examiner ... is facially deficient." (Reply Br. 15-16 ( emphasis
omitted).)
Thus, we do not sustain the rejection of independent claim 16 under
35 U.S.C. § 103(a). Claims 20 and 21 depend from claim 16. We do not
sustain the rejection of claims 20 and 21 under 35 U.S.C. § 103(a) for the
same reasons discussed with respect to claim 16.
§ 103 Rejection-Van Luchene, Greening, Carr, and Ikeda
Claim 18 depends from independent claim 16. Ikeda was cited by the
Examiner for teaching the additional features of claim 18. (Non-Final
Act. 29.) However, the Examiner's application of Ikeda does not cure the
above noted deficiencies of Van Luchene, Greening, and Carr.
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DECISION
The Examiner's decision rejecting claims 1-10, 12, 14--16, 18, 20,
and 21 under 35 U.S.C. § 101 is affirmed.
The Examiner's decision rejecting claims 1-10, 12, 14--16, 18, 20,
and 21 under 35 U.S.C. § 103(a) is reversed.
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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