Ex Parte Ikeda et al

Patent Trial and Appeal Board

Nov 22, 2017

14181927 (P.T.A.B. Nov. 22, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/181,927 02/17/2014 Keiichi Ikeda 1924.075605D1 9184
24978 7590 11/27/2017
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
EXAMINER
NGUYEN, STEVEN H D
ART UNIT PAPER NUMBER
2414
NOTIFICATION DATE DELIVERY MODE
11/27/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEIICHI IKED A and SEIGO KOTANI1
Appeal 2017-005857
Application 14/181,927
Technology Center 2400
Before JOHN A. EVANS, JOHN P. PINKERTON, and
NORMAN H. BEAMER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1 and 2, which constitute all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Fujitsu Limited as the real party in interest. App. Br. 2.
Appeal 2017-005857
Application 14/181,927
STATEMENT OF THE CASE
Introduction
Appellants disclosed and claimed invention is generally directed to a
mechanism in which users can confirm whether equipment, such as a user
terminal, can receive a service, such as films and music, easily and
efficiently. Spec. 1—3.2
Claim 1 is representative and reproduced below:
1. An equipment-information transmitting system
comprising:
a processor, wherein the processor executes a process
comprising:
generating identification information for the equipment based
on environment information including information of software and
hardware built in the equipment and information of hardware
connected to the equipment;
first transmitting an information output request for evaluation
value including the identification information of the equipment, when
the identification information is received from the equipment;
searching, when the information output request is received from
the first transmitting, a database for the evaluation value of the
equipment corresponding to the identification information, the
evaluation value being given from viewpoints of safety and
performance based on the vulnerability and capacity of the software
and the hardware;
2 Our Decision refers to the Final Office Action mailed May 6, 2016 (“Final
Act.”); Appellants’ Appeal Brief filed Nov. 14, 2016 (“App. Br.”) and Reply
Brief filed Feb. 22, 2017 (“Reply Br.”); the Examiner’s Answer mailed Dec.
22, 2016 (“Ans.”); and the original Specification filed Feb. 17, 2014
(“Spec.”).
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Application 14/181,927
second transmitting the evaluation value, searched at the
searching; and
controlling, when the evaluation value of the equipment is
received from the second transmitting, the service to be provided to
the equipment based on the evaluation value.
App. Br. 22 (Claims App’x).
Rejection on AppeaP
Claims 1 and 2 stand rejected under 35U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Briefs. For the reasons discussed infra, we are not
persuaded by Appellants’ arguments that the Examiner erred in rejecting
claims 1 and 2 under 35 U.S.C. § 101.
Applicable Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
3 The Examiner’s rejection of claim 1 under 35 U.S.C. § 112, second
paragraph, was withdrawn. Ans. 3.
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Application 14/181,927
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 566 U.S. 66, 75—77 (2012), “for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 134 S. Ct. at
2355. The first step in the analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. For
example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 2355—57. If, at the
first stage of the Alice analysis, we conclude that the claim is not directed to
a patent-ineligible concept, it is considered patent eligible under § 101 and
the inquiry ends. RapidLitig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042,
1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims “individually
and ‘as an ordered combination’” to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
In other words, the second step is to “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.’” Id. (brackets in original) (quoting Mayo, 566
U.S. at 12—IS). The prohibition against patenting an abstract idea “‘cannot
be circumvented by attempting to limit the use of the formula to a particular
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technological environment’ or adding ‘insignificant postsolution activity.”’
Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (internal citation omitted).
In determining whether a process claim recites an abstract idea, we
must examine the claim as a whole, keeping in mind that an invention is not
ineligible just because it relies upon a law of nature or mathematical
algorithm. Digitech Image Tech. LLC v. Electronics for Imaging Inc., 758
F.3d 1344, 1350 (Fed. Cir. 2014). As noted by the Supreme Court, “an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.” Diamond v. Diehr,
450 U.S. 175, 187 (1981). The “directed to” inquiry asks not whether “the
claims involve a patent-ineligible concept,” but instead whether, “considered
in light of the specification,. . . ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (internal citations omitted). In that regard, we
determine whether the claims “focus on a specific means or method that
improves the relevant technology” or are “directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
Claims 1 and 2A
The Examiner concludes that claim 1 is directed to an abstract idea —
providing a service based on the retrieved evaluation value by searching a
database using the generated identifier based on equipment information.
4 Appellants argue these claims as a group. See App. Br. 10-20; Reply Br.
2—8. We select claim 1 as the representative claim for this group, and claim
2 stands or falls with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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Final Act. 2—3; Ans. 5—7. The Examiner finds the abstract idea of claim 1 is
an “idea of itself which is similar to SmartGene.”5 Ans. 7. The Examiner
also finds that claim 1 does “not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the claimed invention is just an idea of itself since the step of
providing service is not sufficient enough to modify the technology field.”
Final Act. 2—3; Ans. 7.
Appellants contend that claim 1 is not directed to an abstract idea and,
even assuming arguendo that it is, the claim includes features that amount to
“something more.” App. Br. 10, 16. In particular, Appellants argue the
Examiner has not satisfied the requirements of the May 2016 Memorandum
regarding the USPTO’s 2014 Interim Guidance on Patent Subject Matter
Eligibility (hereinafter, “the Memorandum”) with respect to steps one and
two of thq Alice test. App. Br. 10-13, 16—17. Appellants argue the
Examiner does not identify specific claim limitations and explain why they
set forth a judicial exception, but describes the claim at a high level of
abstraction untethered from the language of the claim, which the Federal
Circuit cautioned against in Enfish. Id. at 12—13; Reply Br. 4. Appellants
also argue the Examiner has not identified additional elements recited in the
claim beyond the judicial exception and explained why they do not,
individually and as a combination, add significantly more to the exception.
Id. at 16—17.
Appellants argue the Examiner mischaracterizes the claim in finding it
is directed to an abstract idea because the claim is “actually directed to
5 SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950 (Fed.
Cir. 2014).
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communications regarding software/hardware equipment, under the control
of a processor, and to controlling a service to be provided to the equipment.”
App. Br. 14. According to Appellants, claim 1 “relate[s] to technology for
confirming whether users can receive a service, and whether a user can
purchase or use a user terminal with security.” Id. Appellants also argue
claim 1 “solves a technical problem unique to the field of computers,
networks, and computer systems.” Id. Appellants further argue “it is not an
idea of itself to search a database using a generated identifier based on
information of equipment, receive an evaluation value, and provide a
service, nor could these steps be performed mentally by a human.” Id. at 15.
Appellants’ further argue that SmartGene’s claimed method is not
comparable to claim 1 or “even the Examiner’s alleged ‘abstract idea.’”
Reply Br. 5—8.
Appellants contend that claim 1 would not preempt the alleged
abstract idea identified by the Examiner because the claim “additionally
define [s] at least generating identification information, transmitting an
information output request for evaluation value including identification of
the equipment, when the identification information is received from the
equipment, and second transmitting the evaluation value.” Id. at 18—19.
According to Appellants, these features in combination with other claim
features provide “additional benefits, which further illustrates that the
claimed combination of features provides an inventive concept under Part 2
of the Alice test.” Id. at 19—20; see also Reply Br. 2—5.
We are not persuaded by Appellants’ arguments that the Examiner
erred. First, to the extent Appellants suggest that the Memorandum requires
particular steps to be performed in specific ways to establish that a claim is
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directed to an abstract idea and does not as a whole amount to significantly
more than the abstract idea, i.e., a “prima facie” case, which steps were not
followed, Appellants are mistaken. Instead, 35 U.S.C. § 132 sets forth a
more general notice requirement whereby the applicant is notified of the
reasons for a rejection together with such information as may be useful in
judging the propriety of continuing with prosecution of the application. See,
e.g., In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011); see also May 2016
Memorandum 2 (“the rejection . . . must provide an explanation . . . which
[is] sufficiently clear and specific to provide applicant sufficient notice of
the reasons for ineligibility”). In this case, we find the Examiner has
provided an adequate explanation to meet this notice requirement.
Second, we agree with the Examiner that claim 1 is “directed to” an
abstract idea — providing a service [to user equipment] based on the
retrieved evaluation value by searching a database using the generated
identifier based on equipment information — a patent-ineligible concept.
The focus of claim 1 is on a processor performing a set of functions:
generating identification information for the equipment based on hardware
and software; first transmitting an information output request for an
evaluation value including the identification information; searching a
database for the evaluation value of the equipment corresponding to the
identification information; second transmitting the evaluation value; and,
controlling the service to be provided. Considering the focus of the claim as
a whole, we conclude it is directed to an abstract idea because “[t]he
advance . . . [it] purports] 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.”
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See Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253,
1258 (Fed. Cir. 2016) (concluding a claim that recited nothing “directed to
how to” implement a recited idea “is drawn to the idea itself’); In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016)
(concluding claims “not directed to a specific improvement in computer
functionality” but instead “directed to the use of conventional or generic
technology in a nascent but well-known environment” are directed to an
abstract idea). In addition, Appellants argue that claim 1 is directed “to
communications regarding software/hardware equipment,” “relates to
technology for confirming whether users can receive a service,” and “solves
a technical problem” (see App. Br. 14) are not persuasive because the claims
do not recite specific improvements to communication software or hardware,
computers, or existing technical processes. Further, Appellants argue that it
is not an idea of itself to search a database, receive an evaluation value, and
provide service, nor could these steps be performed mentally by a human,
are not persuasive. Appellants have not provided persuasive evidence or
technical reasoning establishing that these steps involve more than the
performance of well-understood, routine, and conventional activities
previously known to the industry. See Content Extraction & Transmission
LLCv. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1347-A8 (Fed. Cir.
2014). And, even though human minds could not perform these same steps
as performed in the claim by a processor, “the claims in Alice [] required a
computer that processed streams of bits, but nevertheless were found to be
abstract.” See Content Extraction, 776 F.3d at 1347.
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Appellants argument that the claims provide “features and benefits”
that demonstrate why claim 1 is not directed to an abstract idea is also not
persuasive. Reply Br. 2—3. “A patent may issue ‘for the means or method
of producing a certain result, or effect, and not for the result or effect
produced.’” McRO, 837 F.3d at 1314 (internal citation omitted).
Thus, regarding step one of the Alice analysis, even if we were to
agree with Appellants’ argument that SmartGene is not applicable here, we
see no meaningful difference in claim 1 and methods of collecting,
analyzing, and displaying or storing data that courts have also concluded are
directed to abstract ideas. See Content Extraction, 776 F.3d at 1347 (“[t]he
concept of data collection, recognition, and storage is undisputedly well-
known); Electric Power, 830 F.3d at 1353—54 (claims focus on the abstract
idea of collecting information, analyzing it, and displaying certain results of
the collection and analysis); Intellectual Ventures ILLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1327 (Fed. Cir. 2017) (affirming that the invention is
drawn to the abstract idea of “creating an index and using that index to
search for and retrieve data”).
Third, regarding step two of the Alice analysis, we do not find that
claim 1 recites elements that individually or in combination transform the
nature of the claim into a patent-eligible application of the abstract idea.
Appellants argue that claim 1 does not preempt the alleged abstract idea
because the claim additionally recites “generating identification
information,” “first transmitting an information output request for evaluation
value,” and “second transmitting the evaluation value” and these features in
combination with the other claim features “provide an inventive concept.”
App. Br. 18—20. Appellants’ preemption argument is not persuasive.
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“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility. . . . Where a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Technologies, Inc.
v. Amazon.com, Inc, 788 F.3d 1359, 1362—63. Further, we are not persuaded
that the features argued by Appellants provide an inventive concept because
they do not “focus on a specific means or method that improves the relevant
technology,” but are “directed to a result or effect that itself is the abstract
idea and merely invoke[s] generic processes and machinery.” McRO, 837
F.3d at 1314; Enfish, 822 F.3d at 1336. Claim 1 essentially recites a generic
processor that performs functions specified at high levels of generality,
including the “generating” and first and second “transmitting” functions.
This is not enough to transform an abstract idea into patent-eligible subject
matter. See, e.g., Alice, 134 S. Ct. at 2360 (explaining that claims that
“amount to ‘nothing significantly more’ than an instruction to apply the
abstract idea . . . using some unspecified, generic computer .... is not
‘enough ’ to transform an abstract idea into a patent-eligible invention”
(quoting Mayo, 132 S. Ct. at 1297, 1298)); Capital One Fin. Corp., 850 F.3d
at 1342 (“[T]he claim language here provides only a result-oriented solution,
with insufficient detail for how a computer accomplishes it. Our law
demands more.”). We see nothing in the limitations of claim 1, considered
individually or in an ordered combination, that transforms the claimed
abstract idea into patent-eligible subject matter.
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Thus, for the reasons discussed above, we sustain the Examiner’s
rejection of claim 1, as well as claim 2, under § 101.
DECISION
We affirm the Examiner’s decision rejecting claims 1 and 2 under
35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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