Ex Parte Lundberg

Patent Trial and Appeal Board

Nov 22, 2017

14608520 (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.
14/608,520 01/29/2015 Steven W. Lundberg 3431.005US2 2480
21186 7590 11/27/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
HOANG, HAU HAI
ART UNIT PAPER NUMBER
2167
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
following e-mail address(es):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN W. LUNDBERG
Appeal 2017-011549
Application 14/608,520
Technology Center 2100
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 21—41, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b). Claims 1-20 are cancelled.
We affirm and designate our affirmance as a new ground of rejection
under 37 C.F.R. § 41.50(b) (2015).
1 The real party in interest identified by Appellant is Black Hills IP
Holdings, LLC. App. Br. 2.
Appeal 2017-011549
Application 14/608,520
STATEMENT OF THE CASE
The Invention
Appellant’s disclosed invention relates to “automatically tracking
change in ownership status of patents listed in a database at a patent
registry.” Spec., Abstract. Claim 21, which is illustrative, reads as follows
21. A computer-implemented method of automatically
tracking change in ownership of a patent listed in a database, the
method comprising:
receiving input identifying the patent to be tracked for
changes in ownership, the input further including data associated
with a plurality of selected fields relating to the patent, wherein
the plurality of selected fields includes two or more of the
following fields:
name change in patent holder; date or date range of
assignment; date of incorporation of assignor or assignee;
place of incorporation, or address, of assignor or assignee;
nationality of assignor or assignee; and nature of
assignment;
causing the presentation of each field in a user interface,
wherein the user interface receives input;
automatically performing a search of the database on a
predetermined regular basis based on the input received, wherein
the search result identifies one or more intervening changes in
ownership status for the patent; and
transmitting the search result for display in the user
interface.
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The Rejections
Claims 21^41 stand rejected for non-statutory obviousness-
type double patenting over claims 1-21 ofU.S. Patent No. 8,972,385.
See Final Act. 3-17.
Claims 21-34 and 38—41 stand provisionally rejected for non-
statutory obviousness-type double patenting over claims 1-18 of copending
Application 14/628,941. See Final Act. 17-31.
Claims 21^41 stand rejected under 35 U.S.C. § 1012 as being directed
to non-statutory subject matter. See Final Act. 31-37.
The Record
Rather than repeat the arguments here, we refer to (1) the Briefs
(“App. Br.” filed May 12, 2017; “Reply Br.” filed Sept. 14, 2017) and the
Specification (“Spec.” filed Jan. 29, 2015) for the positions of Appellant;
and (2) the Final Office Action (“Final Act.” mailed Oct. 12, 2016) and
Examiner’s Answer (“Ans.” mailed July 14, 2017) for the reasoning,
findings, and conclusions of the Examiner. Only those arguments actually
made by Appellant have been considered in this decision. Arguments that
Appellant did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
2 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011.
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Application 14/608,520
Related Appeals
Appellant identifies one related appeal for App. No. 14/628,941
(Appeal No. 2017-011552). See App. Br.
thirty (30) other related appeals:
Anneal No. Annlication No.
2009-005709 10/128,141
2009-006404 10/874,486
2011-009966 11/061,383
2012-004166 11/061,312
2015-000319 13/309,080
2015-000321 13/309,127
2015-003180 13/309,039
2015-007422 13/309,146
2016-000912 13/309,060
2016-001687 11/888,632
2016-002121 13/309,200
2016-002680 13/310,279
2016-002792 12/605,030
2016-006797 13/310,368
2016-007186 13/573,803
2016-007415 13/464,598
2016-007623 13/408,877
2016-007787 13/310,322
2016-008030 13/253,936
2017-000280 13/408,917
2017-000386 11/098,761
. There are, in addition, at least
Decided/Status
Decision mailed Mar. 23, 2010
Decision mailed Aug. 2, 2010
Decision mailed Jan. 31, 2014
Decision mailed Nov. 4, 2014
Decision mailed May 27, 2016
Decision mailed July 26, 2017
Decision mailed Sept. 23, 2016
Decision mailed June 1, 2016
Decision mailed Aug. 25, 2017
Decision mailed Jan. 19, 2017
Decision mailed Aug. 28, 2017
Decision mailed Aug. 30, 2017
Decision mailed Sept. 1, 2017
Decision mailed Aug. 30, 2017
Decision mailed July 28, 2017
Decision mailed July 31, 2017
Decision mailed Sept. 6, 2017
Decision mailed Sept. 20, 2017
Decision mailed Aug. 3, 2017
Decision mailed Sept. 12, 2017
Decision mailed Nov, 17, 2017
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Application 14/608,520
2017-002337 14/010,376 Decision mailed Sept. 8, 2017
2017-003702 14/483,903 Decision mailed Sept. 25, 2017
2017-003815 14/094,542 Decision mailed Sept. 18, 2017
2017-004158 14/010,391 Decision mailed Oct. 25, 2017
2017-004159 14/010,380 Decision mailed Sept. 27, 2017
2017-004188 14/010,400 Decision mailed Nov. 3, 2017
2017-006390 13/409,189 Pending
2017-006642 13/310,452 Decision mailed Sept. 27, 2017
2017-011247 13/253,811 Decision mailed Nov. 1, 2017
DOUBLE PATENTING REJECTIONS
Our review of the record indicates that terminal disclaimers submitted
January 15, 2016 and February 29, 2016 have been approved. Document
Code - DISQ, Feb. 1, 2016; Document Code - DISQ , Mar. 3, 2016.
Accordingly, the approved terminal disclaimers render these rejections
moot. We do not address the non-statutory double patenting rejections
further, as they are not now before us.
ISSUE
The issue presented by Appellant’s arguments is whether the
Examiner errs in finding claims 21-41 are directed to non-statutory subject
matter under 35 U.S.C. § 101.
ANALYSIS
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be
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Application 14/608,520
statutorily eligible, the subject matter of an invention must be a “new and
useful process, machine, manufacture, or composition of matter, or [a] new
and useful improvement thereof.” 35 U.S.C. § 101. We initially note that
claims 21-30 are directed to a “method,” i.e., a process, claims 31-37 are
directed to a “system” implemented in “hardware,” i.e., a machine, claims
38 and 39 are directed to a “tool” implemented in “hardware,” i.e., a
machine, claim 40 is directed to a “system,” which we construe in this case
to be a machine, and claim 41 is directed to a “non-transitory machine-
readable medium,” i.e., an article of manufacture. Thus, each of the claims
is directed to one of the four statutory categories of patentable subject
matter. The Supreme Court has held that there are implicit exceptions to the
categories of patentable subject matter identified in § 101, including laws of
nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CIS
Banklnt’l, 134 S. Ct. 2347, 2355 (2014). In Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66, 71-73 (2012), the Supreme
Court established an analytical framework under § 101 to distinguish patents
that claim patent-ineligible laws of nature, natural phenomena, and abstract
ideas—or add too little to such underlying ineligible subject matter—from
those that claim patent-eligible applications of those concepts. To determine
whether claims are patent eligible under § 101, we apply the Supreme
Court’s two-step test as articulated in Alice.
Prima Facie Case
Appellant contends that the Examiner failed to make a prima facie
case of ineligibility because of a failure to follow the guidance materials of
the United States Patent and Trademark Office (USPTO) (specifically,
Recent Subject Matter Eligibility Decisions, Memorandum (Nov. 2, 2016)).
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See App. Br. 10 n.62; see also Reply Br. 2 n.2. We disagree. Even as stated
in one of the USPTO’s guidance materials, “[f]allure of Office personnel to
follow the USPTO’s guidance materials is not, in itself, a proper basis for
either an appeal or a petition.” May 2016 Subject Matter Eligibility Update,
81 Fed. Reg. 27,381, 27,382 (May 6, 2016). “Rejections will continue to be
based upon the substantive law, and it is these rejections that are
appealable.” Id.
The Examiner has a duty to give notice of a rejection with sufficient
particularity to give Appellant a fair opportunity to respond to the rejection.
See 35 U.S.C. § 132(a). Here, we find the Examiner’s rejection satisfies the
initial burden of production by identifying that the claims include limitations
similar to the identified abstract idea in Intellectual Ventures I, LLC v. Erie
Indemnity Co., 850 F.3d 1315 (Fed. Cir. 2017) (first step of thq Alice
analysis) and that the remainder of the claims do not include significantly
more than the abstract idea because the generically-recited computer
elements are well-understood, routine, and conventional, and therefore do
not add meaningful limitations to the abstract idea (second step of the Alice
analysis). Ans. 2-12. Accordingly, the Examiner (1) set forth the statutory
basis for the rejection, namely 35 U.S.C. § 101; (2) concluded that the
claims are directed to a judicial exception to § 101, namely an abstract idea,
adding too little to the abstract idea to render the claims patent eligible; and
(3) explained the rejection in sufficient detail to permit Appellant to respond
meaningfully. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus,
we find that the Examiner set forth a prima facie case of ineligibility.
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Alice Step One
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355 (emphasis added). “[T]he ‘directed
to’ inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
The Specification discusses the problem to be solved by the
invention—an inventor, business manager, or patent attorney’s need to track
a competitor’s activities related to patents. Spec. ^ 11. According to the
Specification, “up-to-date information relating to change of ownership . . .
occurring in [the] competitor’s patent portfolio may be particularly helpful
to the inventor, business manager or patent attorney in planning strategy or
making informed business decisions.” Id. Appellant’s invention solves the
problem by proposing a user interface that serves as an automated ownership
tracking tool. Id. ^ 57.
Appellant relies on the arguments made for claim 21 to argue the
patentability of the remaining pending claims. See generally App. Br. 10-
15; Reply Br. 2-5. We, therefore, select independent claim 21 as the
representative claim for this group, and the remaining claims 22-41 stand or
fall with claim 21. 37 C.F.R. § 41.37(c)(l)(iv). Here, claim 21 requires, in
essence, receiving input identifying a patent to be tracked for changes in
ownership, presenting fields in a user interface that receives input,
performing a search on a predetermined regular basis based on the input
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received, and identifying changes in ownership status of the patent for
display. Accordingly, in the context of the Specification discussed above,
claim 21’s “character as a whole” is directed to an automated ownership
tracking tool that allows a user to track a patent’s ownership changes, such
as a competitor’s patent.
Appellant similarly asserts the claims, when considered as a whole,
are “directed toward tracking changes in ownership of a patent or patent
portfolio.” App. Br. 13; see also Reply Br. 3. Appellant argues the claims
are not directed toward an abstract idea because, similar to the claims in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299, 1314
(Fed. Cir. 2016) and Enfish, 822 F.3d at 1335, tracking changes in
ownership of a patent or patent portfolio “solves a specific issue arising in
computer technology.” App. Br. 13.
We disagree. The Court addressed improvements to computer-related
technology in Enfish:
Software can make non-abstract improvements to computer
technology just as hardware improvements can, and sometimes
the improvements can be accomplished through either route. We
thus see no reason to conclude that all claims directed to
improvements in computer-related technology, including those
directed to software, are abstract and necessarily analyzed at the
second step of Alice, nor do we believe that Alice so directs.
Therefore, we find it relevant to ask whether the claims are
directed to an improvement to computer functionality versus
being directed to an abstract idea, even at the first step of the
Alice analysis.
Enfish, 822 F.3dat 1335. Thus, we determine whether claim 21 “focus[es]
on a specific means or method that improves the relevant technology” or is
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“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.
We find claim 21 at issue here bears a substantial similarity to the
analyzed claim 12 that the Federal Circuit determined was patent ineligible
in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016). Under the first step of Alice, the Federal Circuit in Electric Power
Group stated
[t]he claims in this case fall into a familiar class of claims
“directed to” a patent-ineligible concept. The focus of the
asserted claims, as illustrated by claim 12 . . . , is on collecting
information, analyzing it, and displaying certain results of the
collection and analysis. We need not define the outer limits of
“abstract idea,” or at this stage exclude the possibility that any
particular inventive means are to be found somewhere in the
claims, to conclude that these claims focus on an abstract idea—
and hence require stage-two analysis under §101.
Id. at 1353. Like claim 12 in Electric Power Group, Appellant’s claim 21
involves collecting data from disparate sources, analyzing the data, and
displaying results, and they amount to no more than providing a user with
information about a patent’s ownership change by obtaining, analyzing, and
displaying data. As such, claim 21 is “clearly focused on the combination of
those abstract-idea processes. The 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.” Elec. Power Grp., 830 F.3d at 1354.
Thus, contrary to Appellant’s argument discussed above (App. Br. 13;
see also Reply Br. 3), “the focus of the claims is not on ... an improvement
in computers as tools, but on certain independently abstract ideas that use
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computers as tools.” Elec. Power Grp., 830 F.3d at 1354. Accordingly, we
find that claim 21 is not directed to an improvement to computer
functionality, but involves nothing more than providing data, displaying
data, and selecting data—activities squarely within the realm of abstract
ideas. See id. at 1353-54 (when “the focus of the asserted claims” is “on
collecting information, analyzing it, and displaying certain results of the
collection and analysis,” the claims are directed to an abstract idea).
Alice Step Two
Turning to the second step of the Alice analysis, because we find
claim 21 is directed to an abstract idea, we “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,
566 U.S. at 78). The Supreme Court describes the second step of this
analysis as “a 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) (internal quotations omitted).
Appellant contends the ordered combination of the claimed invention
amounts to significantly more than any abstract idea. App. Br. 14 (citing
Bascom Global Internet Servs., Inc. v. AT&T Mobility, LLC, 827 F.3d 1341,
1348 (Fed. Cir. 2016)). In particular, Appellant argues that the claimed
invention “represents an improvement over previous ways of tracking
changes in ownership of a patent or patent portfolio by tracking changes to
two or more fields related to ownership.” App. Br. 15. We do not find that
providing two or more fields relating to ownership constitutes significantly
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more than the abstract idea. “[Mjerely selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
exclusion from § 101 undergirds the information-based category of abstract
ideas.” Elec. Power Grp., 830 F.3d at 1355. Moreover, claim 21 does “not
include any requirement for performing the claimed functions ... by use of
anything but entirely conventional, generic technology. The claims
therefore do not state an arguably inventive concept.” Id. at 1356. In short,
each step does no more than require a generic computer processor to
perform generic computer functions. See Spec. ^ 17 (describing use of
generic computers).
Thus, “the claims at issue amount to ‘nothing significantly more’ than
an instruction to apply the abstract idea . . . using some unspecified, generic
computer.” Alice, 134 S. Ct. at 2360 (citing Mayo, 566 U.S. at 71).
Summary
Appellant does not persuade us of error in the rejection of claim 21.
Accordingly, we sustain the rejection of (1) independent claim 21; (2)
independent claims 31, 38, 40, and 41, which are argued relying on the
arguments made for claim 21 (see App. Br. 15); (3) claims 22-30, 32-37,
and 39, which variously depend, directly or indirectly, from claims 21,31,
and 38, and were not separately argued with particularity (see id.).
Although the overall thrust of our analysis is the same as the
Examiner’s reasoning, we have provided additional explanation not provided
by the Examiner. Accordingly, in the interests of giving Appellant a full and
fair opportunity to respond, we designate our affirmance as a new ground of
rejection.
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DECISION
We do not reach the provisional double patenting rejections.
The Examiner’s decision to reject claims 21^11 is affirmed and the
affirmance is designated as a new ground of rejection within our authority
under 37 C.F.R. §41.50(b).
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
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.
§§ 41.50(f), 41.52(b).
AFFIRMED
37 C.F.R. § 41.50(b)
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