Ex Parte Koll et alDownload PDFPatent Trial and Appeal BoardMar 27, 201714317323 (P.T.A.B. Mar. 27, 2017) Copy Citation 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. 14/317,323 06/27/2014 Detlef Koll M0002-1010C4 3202 24208 7590 Robert Plotkin, P.C. 1 Broadway, 14th Floor Cambridge, MA 02142 03/29/2017 EXAMINER VO, HUYEN X ART UNIT PAPER NUMBER 2659 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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 and MICHAEL FINKE Appeal 2016-006312 Application 14/317,323 Technology Center 2600 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 2—28. 1 Claim 1 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Although dependent claim 29 is included in the claims appendix to the Appeal Brief (26), we note the Final “Office Action Summary” page and the statements of rejection in the Final Action only reject claims 1—28. In reviewing the record, we find no statement of rejection for dependent claim 29 in the Final Action (mailed June 2, 2015). See 37 C.F.R. § 41.39(a)(1). There is no mention of claim 29 in the Advisory Action (mailed Aug. 27, 2015), or in the Answer (mailed June 1, 2016). Nor does the Examiner indicate in the record that claim 29 is allowable or objected to. See Final Act. 8: “Claims 2-28 are allowable and will be Appeal 2016-006312 Application 14/317,323 The Invention The disclosed and claimed invention on appeal relates to “verification of extracted data.” (Title.) Representative Claim 2 2. A method performed by at least one computer processor executing computer program instructions tangibly stored on at least one non-transitory computer-readable medium, the method comprising: (A) identifying a document including a first coding having a first feature encoding a first concept, the first coding being associated with a first code; (B) rendering the first coding on an output device to have a visual characteristic that is based on the first feature, without rendering the first code; (C) receiving, via an input device, a first indication from a user of whether the rendering is accurate; (D) identifying, based on the first indication received from the user, a verification status of the first coding, wherein the verification status of the first coding indicates whether the first code represents the first concept, comprising: (D) (1) if the first indication indicates that the rendering is accurate, then identifying a verification status of the first coding indicating that the first coding is accurate; and. (D) (2) otherwise, identifying a verification status of the allowed when the double patenting and 101 issues are resolved.” In reviewing the entire prosecution history, we can find no rejection of claim 29 in the record. Nor do Appellants mention claim 29 in the Appeal Brief (filed Jan. 11, 2016), or in the Reply Brief (filed June 6, 2016). Therefore, we find the status of claim 29 is unclear on appeal. Because claim 29 was never rejected by the Examiner, the Board has no adverse decision establishing a prima facie case under 35 U.S.C. § 132(a) to review, and therefore we have no jurisdiction under pre-AlA 35 U.S.C. §6(b) as to any claims that were not rejected. Accordingly, dependent claim 29 is not before us on appeal, because claim 29 was never rejected by the Examiner. 2 Appeal 2016-006312 Application 14/317,323 first coding indicating that the first coding is inaccurate; (E) identifying a type of the first indication; and (F) storing, in the document, a non-transitory record of the first indication and of the type of the first indication. Rejections A. Claims 2—28 are rejected on the ground of non-statutory obviousness-type double patenting (OTDP) over claims 1—18 of U.S. Patent No. 8,768,694, over claims 1—48 of U.S. Patent No. 8,521,514, and over claims 1—32 of U.S. Patent No. 8,321,199. (Final Act. 3.) B. Claims 2—28 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. GROUPING OF CFAIMS Appellants advance no separate, substantive arguments regarding rejection B under § 101 of claims 3—28. Arguments not made are waived. See 37 C.F.R. § 41.37(c) (l)(iv). Therefore, based upon Appellants’ arguments, we decide the appeal of rejection B of claims 2—28 on the basis of representative claim 2. 1. Rejection A — Obviousness-Type Double Patenting (OTDP) As noted above, claims 2—28 were rejected on the ground of non- statutory OTDP patenting over claims 1—18 of U.S. Patent No. 8,768,694, over claims 1—48 of U.S. Patent No. 8,521,514, and over claims 1—32 of U.S. Patent No. 8,321,199, as indicated by the Examiner. (Final Act. 3.) Because the Examiner’s Answer is silent regarding the status of rejection A, this rejection remains before us on appeal. See 37 C.F.R. § 41.39(a)(1). 3 Appeal 2016-006312 Application 14/317,323 However, Applicants filed a Terminal Disclaimer on August 11, 2015 to obviate the OTDP rejection, prior to filing the Appeal Brief on January 1, 2016. (App. Br. 2.) The record indicates Appellants’ Terminal Disclaimer was approved and entered into the record on the same day it was filed (August 11, 2015). Therefore, we DISMISS non-statutory OTDP rejection A of claims 2—28 as MOOT. 2. Rejection B under $101 of Claims 2—28 Issue: Under § 101, did the Examiner err in concluding the scope of claims 2—28, directed to “a method performed by at least one computer processor executing computer program instructions ... on at least one non- transitory computer-readable medium,” encompasses non-statutory subject matter? Appellants compare their claims to claims that were held to be directed to patent-eligible subject matter in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), in particular, because the claims in DDR Holdings addressed a “business challenge (retaining website visitors) that is particular to the Internet.” (App. Br. 9—10 (emphasis omitted).) According to the Appellants, the claimed invention is similar to the claims found patent eligible in DDR Holdings (Id.). Appellants specifically contend: Similarly, the pending claims are necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer technology, namely the problem of how to render a document on an output device to facilitate the verification of information encoded in that document. Computer-readable documents containing codings and codes are inherently related to computers and 4 Appeal 2016-006312 Application 14/317,323 the Internet. For at least this reason, the pending claims are not merely directed to an abstract idea. (App. Br. 10-11.) (emphasis added.) Regarding the claim 2 step of “rendering the first coding on an output device to have a visual characteristic that is based on the first feature, without rendering the first code,” Appellants contend that “[o]nly a computer can render a coding on an output device; a human cannot perform this action. Therefore, the method of claim 2 is inherently computer- implemented and therefore is not directed to an abstract idea.” (App. Br. 11.) Appellants note: “The DDR case demonstrates that the mere lack of non-generic hardware in a claim does not imply that the claim is directed to patent-ineligible subject matter.” (App. Br. 12.) We are not persuaded by Appellants’ arguments and we agree with the Examiner’s legal conclusion (Ans. 2—8), for the reasons discussed infra. 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: “[l]aws 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). We are mindful that claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“While certain terms may be at the center of 5 Appeal 2016-006312 Application 14/317,323 the claim construction debate, the context of the surrounding words of the claim also must be considered . . . Here, in deciding whether Appellants’ claim 2 falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court’s two-step framework, described in Mayo. {Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)).) In accordance with that framework, we: (1) first determine whether the claim is “directed to” a patent-ineligible abstract idea. If so, we then (2) 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. {Id.) This is a search for an “inventive concept,” i.e., an element or combination of elements sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. {Id.) Contrary to Appellants’ characterization that claim 2 is directed to a specific implementation of a computer processor (App. Br. 11), the only technological feature recited in the claim is a generic “computer processor executing computer program instructions tangibly stored on at least one non- transitory computer readable medium” without sufficient specificity of any improvement upon the intrinsic operation or capabilities of the computer processor itself. The Supreme Court in Alice cautioned that merely limiting the use of abstract idea “to a particular technological environment” or implementing the abstract idea on a “wholly generic computer” is not sufficient as an additional feature to provide “practical assurance that the process is more 6 Appeal 2016-006312 Application 14/317,323 than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 134 S. Ct. at 2358 (citations omitted). Although “at least one computer processor” is nominally recited in Appellants’ claim 2, we find a person would also be capable of performing the recited steps as mental steps, or with the aid of pen and paper. For example, we find a person can render (i.e., write) a “first coding” on an “output device” (i.e., a piece of paper) with a pen, within the meaning of claim 2. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson’’ ). As applicable to method claim 2 on appeal, “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.” (Id. at 1373.)2 We conclude claim 2 is directed to the abstract idea of a user verifying whether the rendering of “the first coding ... to have a visual characteristic that is based on the first feature” that encodes a first concept in a document 2 See also Cybersource, 654 F.3d at 1372 (“It is clear that unpatentable mental processes are the subject matter of claim 3. All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper. Claim 3 does not limit its scope to any particular fraud detection algorithm, and no algorithms are disclosed in the ’154 patent’s specification. Rather, the broad scope of claim 3 extends to essentially any method of detecting credit card fraud based on information relating past transactions to a particular “Internet address,” even methods that can be performed in the human mind.”); see also In reNuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007) (“The four categories [of § 101] together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.”). 7 Appeal 2016-006312 Application 14/317,323 is accurate. We find the method of claim 2 can be performed by a person without the use of a computer. Therefore, we conclude claim 2 is directed to an abstract idea beyond the scope of § 101. Regarding prong two of the test articulated by the Supreme Court in Alice, we further “consider the elements of each 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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297)). Claim 2 recites a method for a user to provide “a first indication” that is used to identify whether the rendering is accurate, using conventional computer components, namely a “computer processor executing computer program instructions.” We conclude the nature of claim 2 is not transformed into a patent-eligible application of the abstract idea because claim 2 does nothing more than simply instruct the practitioner to implement an abstract idea using generic computer components. Although Appellants cite to DDR in support of their arguments above, (App. Br. 9), we find Appellants’ claim 2 is distinguishable from the claim considered by the court in DDR, where the court found “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). In DDR, the claim was held patent-eligible because it encompassed “an inventive concept” for resolving a “particular Internet-centric problem.” DDR, 773 F.3d at 1259. Here, we conclude the focus of Appellants’ claim 2 is not on solving an Internet-centric problem, or on a method of improving the computer 8 Appeal 2016-006312 Application 14/317,323 itself. We conclude claim 2 on appeal merely uses a generic computer processor as a tool used in the way a computer normally functions. We find claim 2 fails to impart any discernible improvement upon the computer processor, nor does claim 2 solve “a challenge particular to the Internet” as considered by the court in DDR, 773 F.3d at 1256—57. We find Appellants’ claim 2 is unlike the claim held patent-eligible by the court in DDR, in which the claimed invention was directed to the “challenge of retaining control over the attention of the customer in the context of the Internet,” such that: Instead of the computer network operating in its normal, expected manner by sending the website visitor to *1259 the third-party website that appears to be connected with the clicked advertisement, the claimed system generates and directs the visitor to the above-described hybrid web page that presents product information from the third-party and visual “look and feel” elements from the host website. DDR, 773 F.3d at 1258—59; cf Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir. 2015) (because the patent claims at issue did not “address problems unique to the Internet, . . . DDR has no applicability.”). Appellants’ present additional arguments based on several USPTO examination guidelines. (App. Br. 13—15; Reply Br. 1—2.). We have considered these guidelines, which are based on controlling case law and USPTO policy at the time the guidelines were issued. However, PTAB applies relevant U.S. Supreme Court and Federal Circuit case law to the facts of each patent application on appeal, and does not rely on policy guidelines intended to train Patent Examiners as a controlling legal authority. 9 Appeal 2016-006312 Application 14/317,323 Appellants additionally cite Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) in prefacing their arguments in the Reply Brief (2). However, we find Appellants’ claim 2 is distinguishable over the claim considered by the court in Enfish, which was found to be “directed to an improvement in the functioning of a computer.” Enfish, 822 F.3d at 1338. The court in Enfish further noted: “In contrast, the claims at issue in Alice and Versata can readily be understood as simply adding conventional computer components to well-known business practices.” 3 (Id.) Although Appellants urge that “rendering documents” as recited in claim 2 is an improvement in computer technology (Reply Br. 4), we disagree. We find the rendering step of Appellants’ claim 2 does not positively recite any improved electronic or programmatic method of rendering data, e.g., on a display, but instead is merely directed to the informational content of the data to be displayed to a user who indicates whether the rendering is accurate. 3 4 3 The Supreme Court held that the claims in Alice were drawn to the abstract idea of intermediated settlement and that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” See Alice, 134 S. Ct. at 2358. Alice involved “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk.” Id. at 2356. Like the method of hedging risk in Bilski v. Kappos, 561 U.S. 593, 628 (2010)— which the Court deemed “a method for organizing human activity”—Alice’s “concept of intermediated settlement” was held to be “a fundamental economic practice long prevalent in our system of commerce.” Alice, 134 S. Ct. at 2356. 4 The Manual of Patent Examining Procedure (MPEP) guides: “where the claim as a whole is directed [to] conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists.” MPEP § 2111.05 (III.) (9th Ed., Rev. 10 Appeal 2016-006312 Application 14/317,323 Thus, the data that is rendered in Appellants’ claim 2 is received (viewed) by a user who determines as a mental step whether the rendering is accurate. We conclude the rendered (displayed) “first coding” data is non functional descriptive material (NFDM) merely intended for human perception, and is not positively recited as actually being used to change or affect any computer-implemented step of the method of claim 2. Instead, it is the responsive ‘ first indication” from the user that is used to identify a “verification status of the first coding” in subsequent step D of claim 2. Therefore, we conclude method claim 2, when considered as a whole, is directed to an abstract idea, even if performed with the aid of a generic computer processor. See Enfish, 822 F.3d at 1335. For at least the aforementioned reasons, on this record, we are not persuaded the Examiner erred. Accordingly, we sustain rejection B under § 101 of independent claim 2, and rejection B of the remaining grouped claims 3—28 (not argued separately), which fall with claim 2. See Grouping of Claims, supra. CONCLUSION For at least the aforementioned reasons, on this record, Appellants have not persuaded us the Examiner erred in rejecting claims 2—28 under 35 U.S.C. § 101 (rejection B). 07.2015, Last Revised Nov. 2015). See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer-implemented product or process.”). 11 Appeal 2016-006312 Application 14/317,323 DECISION We affirm the Examiner’s decision rejecting claims 2—28 under § 101. We dismiss as moot the Examiner’s non-statutory OTDP rejection of claims 2—28, because a terminal disclaimer was filed, approved, and entered into the record on August 11, 2015. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED 12 Copy with citationCopy as parenthetical citation