Ex Parte Koll et al

Patent Trial and Appeal Board

Feb 27, 2017

13526684 (P.T.A.B. Feb. 27, 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.
13/526,684 06/19/2012 Detlef Koll M0002-1038 1802
24208 7590
Robert Plotkin, P.C.
1500 District Ave.
Burlington, MA 01803
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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
following e-mail address(es):
mail@rplotkin.com
hdas@rplotkin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DETLEF KOLL, THOMAS POLZIN, and MICHAEL FINKE
Appeal 2016-005920
Application 13/526,684
Technology Center 3600
Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
This is a decision on rehearing in Appeal Number 2016-005920. We
have jurisdiction under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, or to responses
to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R.
§ 41.52. Appellants may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court. 37 C.F.R. § 41.52
(a)(2).
Appeal 2016-005920
Application 13/526,684
ANALYSIS
The Appellants argue that the affirmance of all the rejected claims
under 35 U.S.C. § 101 as being drawn to non-statutory subject matter should
be reconsidered in light of the recent CAFC decisions BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016) (hereinafter “BASCOM”) and McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (hereinafter “McRO”)
(Request 3).
With regard to the BASCOM decision, the Appellants argue that
elements of the claim must be considered both individually and “as an
ordered combination” to determine if the additional elements transform the
nature of the claim under step 2 of the framework, as set forth in Alice Corp.
Pty Ltd. v. CLSBanklnt’l, 134 S. Ct. 2347, 2358 (2014) (emphasis original).
The Appellants also argue that BASCOM holds that “an inventive concept
can be found in the non-conventional and non-generic arrangement of
known, conventional pieces” (Request 4, emphasis original).
With regard to the McRO decision, the Appellants argue that even a
method claim directed to software executing on known generic computer
hardware must be evaluated under both step 1 and step 2 of the Alice test as
an “ordered combination, without ignoring the requirements of the
individual steps” (Request 8, emphasis original). The Appellants also
argue that specific-software implemented requirements must be taken into
account.
We have reviewed the Appellants’ remarks regarding the above cited
CAFC decisions, and have deemed them unpersuasive. Unlike the claims at
issue in BASCOM, the claims here do not require an arguably inventive
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Appeal 2016-005920
Application 13/526,684
distribution of functionality within a network. Bascom, 827 F.3d at 1350.
And unlike the claims at issue in McRO, the claims do not involve an
incorporation of claimed rules that allow computers to produce ‘“accurate
and realistic lip synchronization and facial expressions in animated
characters’ that previously could only be produced [in a subject process] by
human animators.” McRO, 837 F.3d at 1313—14.
We have reviewed the claim again in light of the remarks by the
Appellants and again determine that the claim is directed to the abstract idea
of organizing human activities in deciding which data sets are to be
reviewed for billing, as set forth in the Decision at page 4. The claim here
focuses on collecting information and analyzing it, and our reviewing court
has recognized that collecting and analyzing information, without more, is
abstract. Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016) (collecting cases).
Further, we note that our Decision expressly states in the Analysis
section that we “consider the elements of the claim both individually and as
‘an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application of the
abstract idea” (Decision 3—4). We again determine that, both individually
and as an ordered combination, claim 1 fails to transform the nature of the
claim into patent eligible subject matter. Instead, the arrangement of the
steps in the claim is purely conventional, and no persuasive arguments have
been presented to show otherwise.
For example, claim 1 recites identifying certain data, assigning a value
to identify data, and deciding whether to generate a request based on an
analysis of the data. But “merely selecting information, by content or
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Appeal 2016-005920
Application 13/526,684
source, for collection [and] analysis . . . does nothing significant to
differentiate a process from ordinary mental processes. Electric Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1355(Fed. Cir. 2016). Selecting and
manipulating data, by itself, does not transform otherwise-abstract processes
of information collection and analysis. Id. Like the claims at issue in
Electric Power, claim 1 does not invoke “any assertedly inventive
programing” or an “arguably inventive set of components or method.” Id.
Here, the invocations of conventional, off-the-shelf computer components,
such as claim 1 ’s “computer processor” and “computing device,” are
insufficient to pass as an inventive set of components. As such, our review
of the claim fully considering the claim’s elements both individually and as
“an ordered combination” fails to show that the nature of the claim is
transformed into patent-eligible subject matter. For these reasons, the
request for reconsideration is denied.
CONCLUSION
The Appellants’ request for reconsideration has not convinced us that
we have not overlooked or misapprehended issues in the previous analysis in
light of the arguments presented.
DECISION
REHEARING DENIED
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