Ex Parte Long

Patent Trial and Appeal Board

Jan 19, 2018

13610167 (P.T.A.B. Jan. 19, 2018)

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.
13/610,167 09/11/2012 SAPHURA SAFAVI LONG 1002U001 3322
41461 7590
Charles A. Rattner
17379 BLUEBERRY DRIVE
BROOKINGS, OR 97415-9717
EXAMINER
SHORTER, RASHIDA R
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/23/2018 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):
Charles. rattner @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAPHURA SAFAVI LONG
Appeal 2016-001392
Application 13/610,167
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Pursuant to 37 C.F.R. § 41.52, Appellant filed a Request for
Rehearing on October 27, 2017 (“Req. Reh’g”), seeking reconsideration of
our Decision on Appeal mailed August 28, 2017 (“Dec.”), in which we
affirmed the Examiner’s decision to reject claims 1—20 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.1 We have jurisdiction over
the Request under 35 U.S.C. § 6(b).
1 We also reversed the Examiner’s decision to reject claims 1—20 under
35 U.S.C. § 103(a). Appellant seeks reconsideration of only the affirmed
rejection under § 101. Req. Reh’g 1—2, 24.
Appeal 2016-001392
Application 13/610,167
ANALYSIS
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the Board.”
37 C.F.R. § 41.52(a). Arguments not raised and evidence not previously
relied upon in the briefs on appeal are not permitted, except in the limited
circumstances set forth in §§ 41.52(a)(2)-(4). In particular, § 41.52(a)(2)
allows an appellant to present a new argument based upon a recent relevant
decision of either the Board or a Federal Court.
Appellant argues the Board misapprehended or overlooked recent
decisions and Office guidance affecting patent-eligibility under 35 U.S.C.
§ 101. Req. Reh’g 1—3. More particularly, Appellant argues the Examiner’s
determination that the claims are directed to an abstract idea under the first
step of the patent-eligibility analysis is improper in view of recent
jurisprudence and guidance. Id. at 10-12, 23. Appellant also asserts that
seven of the Board’s statements, which Appellant labels as statements (a)-
(g), are incorrect in light of these recent decisions and guidance. Id. at 12—
24. We have considered Appellant’s arguments, and, for the reasons set
forth below, we conclude that the Examiner did not err in rejecting claims 1—
20 under § 101.
Appellant contends recent jurisprudence and Office guidance requires
the Examiner to compare the nature of the claims to similar concepts the
courts have held to be abstract ideas and to use the identified abstract ideas
set forth in the guidance when determining whether the claims are directed
to an abstract idea under the first step of the patent-eligibility analysis.
Req. Reh’g 11. Appellant further asserts that the Examiner’s comparison of
the concept of “improving customer relationship management through an
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Application 13/610,167
entity’s online community,” to which the present claims are directed, and the
abstract idea of using categories to organize, store, and transmit information
in Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App’x
988 (Fed. Cir. 2014) is insufficient support for the Examiner’s determination
that the claims are directed to an abstract idea. Id. at 11—12. Appellant
similarly argues the Board’s statement that “improving customer
relationship management through an entity’s online community” is an
abstract idea, i.e., statement (b), is not supported. Id. at 14. Appellant’s
arguments are unconvincing.
As an initial matter, we need not address whether the Examiner must
compare the nature of the claims to similar concepts the courts have held to
be abstract ideas and use the identified abstract ideas set forth in the Office
guidance because, as Appellant acknowledges, the Examiner compares the
concept of “improving customer relationship management through an
entity’s online community” to the similar descriptive nature of the claims in
Cyberfone. Req. Reh’g 11. We, therefore, turn to whether “improving
customer relationship management through an entity’s online community” is
an abstract idea.
Contrary to Appellant’s argument, the Examiner’s determination that
the claims are directed to an abstract idea is not premised solely on a
comparison to Cyberfone. Rather, as we previously explained, the Examiner
finds the claims are directed to “improving customer relationship
management through an entity’s online community,” which is a method of
organizing human activities. Dec. 9. As set forth in the Decision on Appeal,
and unrefuted by Appellant, courts have found certain methods organizing
human activities to be abstract ideas. Id. (citing Alice Corp. Pty. Ltd. v. CLS
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Application 13/610,167
Banklnt’l, 134 S. Ct. 2347, 2356 (2014); buy SAFE Inc. v. Google, Inc.,
765 F.3d 1350, 1354—55 (Fed. Cir. 2014); Intellectual Ventures ILLC v.
Capital One Bank (USA), 792 F.3d 1363, 1367—68 (Fed. Cir. 2015)). As we
also explained in the Decision on Appeal, we see no meaningful distinction
between methods of organizing human activity held to be the abstract ideas
in the prior cases and the concept of “improving customer relationship
management through an entity’s online community.” Id. Accordingly, we
see no error in the Examiner’s determination that “improving customer
relationship management through an entity’s online community” is an
abstract idea.
Appellant further argues the Board’s statement that “the specific
limitations are tied to the abstract idea and simply suggest that the
Examiner’s characterization is at a high level of abstraction, which is not
persuasive of error,” i.e., statement (c), is unsupportable under recent
jurisprudence. Req. Reh’g 14—15. According to Appellant, recent cases
require that we express a claim’s fundamental concept at a level of
generality or abstraction consistent with the level of generality or abstraction
expressed in the claims themselves, and that we consider each claim as
whole. Id. at 14. Appellant asserts that the Examiner’s characterization of
the claims as “improving customer relationship management through an
entity’s online community” overlooks key elements of the claims, namely
the “generating,” “displaying,” “receiving,” and “initiating” steps in
response to the electronic request. Id. at 14—15. Appellant’s argument is not
persuasive of error.
Although we appreciate that recent cases may provide additional
guidance for determining whether the claims are directed to an abstract idea
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Application 13/610,167
under the first step of the patent-eligibility analysis, the additional guidance
does not apprise us of error in the Examiner’s characterization of the claims.
In the Decision on Appeal, we explain that the specific limitations of the
claims, including the steps in response to the electronic request, do not
separate the claims from the abstract idea of “improving customer
relationship management through an entity’s online community.” Dec. 7.
For the same reasons, characterizing the claims as “improving customer
relationship management through an entity’s online community” is
consistent with the level of generality expressed in the claims themselves
and reflects the character of the claims as whole.
Appellant also takes issue with the Board’s statements regarding the
recited generic computing components, i.e., statements (a), (d), and (e).
Req. Reh’g 13—15. More specifically, Appellant contends that Appellant is
not relying on generic computing components, but rather the
specially-programmed, unique, and non-obvious functions, to confer
patent-eligibility pursuant to recent jurisprudence and guidance. Id.
Appellant’s argument does not apprise us of error.
Admittedly, the Supreme Court has explained that “the § 101 patent-
eligibility inquiry and, say, the § 102 novelty inquiry might sometimes
overlap.” Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1304 (2012). The question in the second step of the
patent-eligibility analysis, however, is not whether a claim element is novel,
but rather whether the implementation of the abstract idea involves “more
than performance of ‘well-understood, routine, [and] conventional activities
previously known to the industry.’” Content Extraction & Transmission
LLCv. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347-48 (Fed. Cir. 2014)
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(quoting Alice, 134 S. Ct. at 2359); see also Uliramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014) (“[Njovelty in implementation of the
idea is a factor to he considered only in the second step of the Alice
analysis/’).
Here, the recited functions may he unique and non-obvious, but there
is no indication that the implementation of these functions requires
something apart from generic computing components performing routine
and conventional computer functions, such as retrieving, processing, and
displaying data. Although software-programmed functions can confer
patent-eligibility when they provide an improvement to functioning of the
computer itself or other technological improvement, the claimed invention is
simply the generic computer implementation of an improved business
practice, which is insufficient for patent-eligibility.
Appellant additionally argues the Board’s statements explaining that
the claimed invention is not a technical improvement, he,, statements (f) and
(g), are incorrect. Req. Reh’g 15-16. According to Appellant, the claimed
invention is an improvement to conventional technology. Id. at 15—16.
Appellant further contends that, in accordance with recent precedent, the
Specification, not the technical details recited in the claims, controls the
inquiry under the first step of the patent-eligibility analysis, and that the
Specification provides the necessary details for technical implementation of
the claimed invention. Id. at 16. Appellant’s arguments are not convincing.
At the outset, Appellant’s assertion that the Specification controls the
analysis under the first step is inapposite because we considered the
technical aspects of the invention under the second step. See, e.g., Alice,
134 S. Ct. at 2357—59 (explaining that the claims fail to transform the
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abstract idea into a patent-eligible invention under the second step of the
analysis because the claims do not, for example, effect an improvement in
any other technology or technical field). That notwithstanding, even in view
of Appellant’s Specification, we fail to see how the claimed invention is a
technical improvement. For example, enabling only a vendor, as opposed to
a customer or owner-operator of the vendor-centric network, to determine
the privileges and options available to customers and employees of the
vendor is not a technical improvement, but rather a business improvement.
In view of the foregoing, Appellant’s arguments do not affect our
determination that the Examiner did not err in determining that the claims
are patent-ineligible, i.e., judicially-excepted from statutory subject matter.
We, therefore, decline to modify our decision affirming the Examiner’s
decision to reject claims 1—20 under 35 U.S.C. § 101.
DECISION
We have reconsidered our Decision on Appeal in light of Appellant’s
Request for Rehearing, and we deny Appellant’s request to modify our
original Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
DENIED
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