Ex Parte Lundberg

Patent Trial and Appeal Board

Nov 1, 2017

14010400 (P.T.A.B. Nov. 1, 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.
14/010,400 08/26/2013 Steven W. Lundberg 3431.002US6 6876
21186 7590 11/03/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
11/03/2017 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 2017-004188
Application 14/010,4001
Technology Center 3600
Before JOHN A. JEFFERY, MICHAEL J. STRAUSS, and
JUSTIN BUSCH, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 4—6, 9-11, 14, and 15. Claims 2, 3, 7, 8, 12, and
13 were cancelled.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Black Hills IP
Holdings, LLC. App. Br. 2.
2 Although the Examiner indicates in the Final Action that claims 2, 3, 7, 8,
12, and 13 were withdrawn from consideration (see Final Act. 1), these
claims were indicated by Appellant as cancelled by amendment (see
Amendment filed July 22, 2015, 2—5). See 37 C.F.R. § 1.121(c).
Accordingly, for clarity, we indicate here the correct status identifier for
claims 2, 3, 7, 8, 12, and 13 is cancelled, and deem the Examiner’s error in
this regard harmless.
Appeal 2017-004188
Application 14/010,400
STATEMENT OF THE CASE
Appellant’s invention provides a patent rating metric for an identified
patent or patent application based on the changing ownership of related
patents. See generally Spec. Abstract, || 158, 183-196. Claim 1 is
illustrative:
1. A computer-implemented method comprising:
identifying a patent or patent application;
providing, by a computer processor, a patent rating
metric for the patent or patent application based on an
identification of a change in ownership of a first set of patents
in a class or subclass to which the patent or patent application
belongs compared to a change in ownership of a second set of
patents in at least one other class or subclass;
monitoring a level of patent activity of an owner of the
patent or patent application; and
modifying the patent rating metric using the monitored
level of patent activity.
RELATED APPEALS
Appellant did not identify any related appeals. See App. Br. 3.
However, there are at least thirty-one (31) related appeals, which are:
Anneal No. Annlication No. Decided/Status
2009-005709 10/128,141 Decision mailed Mar. 23, 2010
2009-006404 10/874,486 Decision mailed Aug. 2, 2010
2011-009966 11/061,383 Decision mailed Jan. 31, 2014
2012-004166 11/061,312 Decision mailed Nov. 4, 2014
2015-000321 13/309,127 Decision mailed July 26, 2017
2015-003180 13/309,039 Decision mailed Sept. 23, 2016
2015-007422 13/309,146 Decision mailed June 1, 2016
2016-000319 13/309,080 Decision mailed May 27, 2016
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Application 14/010,400
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
2017-002337 14/010,376
2017-003702 14/483,903
2017-003815 14/094,542
2017-004158 14/010,391
2017-004159 14/010,380
2017-006390 13/409,189
2017-006642 13/310,452
2017-011247 13/253,811
2017-011549 14/608,520
2017-011552 14/628,941
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
Pending
Decision mailed Sept. 8, 2017
Decision mailed Sept. 25, 2017
Decision mailed Sept. 18, 2017
Decision mailed Oct. 25, 2017
Decision mailed Sept. 27, 2017
Pending
Decision mailed Sept. 27, 2017
Pending
Pending
Pending
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Appeal 2017-004188
Application 14/010,400
THE REJECTIONS
The Examiner rejected claims 1, 4—6, 9-11,14, and 15 under
35 U.S.C. § 101 as directed to non-statutory subject matter. Final Act. 2—3.3
The Examiner rejected claims 1, 4—6, 9-11, 14, and 15 under
35 U.S.C. § 103(a) as unpatentable over Barney (US 2011/0289096 Al;
Nov. 24, 2011). Final Act. 3—6.
THE § 101 REJECTION
The Examiner finds that the claims are directed to a method of
organizing human activity. Ans. 3. The Examiner further finds a computer
is not necessary for carrying out the invention because the claims contain no
more than routine and generic computer components whose functions could
be replaced with human thought (data collection and analysis) or by a human
using pencil and paper. Id. at 3^4. Given these findings, the Examiner
concludes the claims are ineligible under § 101. Final Act. 2—3; Ans. 2—5.
Appellant argues that the Examiner fails to meet the basic
requirements for establishing a prima facie case of subject matter
ineligibility under § 101. App. Br. 6—8; Reply Br. 2—A. According to
Appellant, the Examiner fails to establish that (1) the claims are directed to
an abstract idea (App. Br. 6—7; Reply Br. 2), and (2) the additional elements
of the claims do not amount to significantly more than an abstract idea
(App. Br. 7—8; Reply Br. 2-4).
3 Throughout this opinion, we refer to (1) the Final Rejection mailed
September 10, 2015 (“Final Act.”); (2) the Appeal Brief filed August 8,
2016 (“App. Br.”); (3) the Examiner’s Answer mailed November 10, 2016
(“Ans.”); and (4) the Reply Brief filed January 10, 2017 (“Reply Br.”).
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Application 14/010,400
ISSUES
I. Has the Examiner met the basic requirements for establishing a
prima facie case of subject matter ineligibility under § 101?
II. Has the Examiner erred in rejecting claim 1 as directed to
ineligible subject matter under § 101?
ANALYSIS
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
articulated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014).
Prima Facie Case
Appellant’s contention that the Examiner has failed to make a prima
facie case of unpatentability is unavailing. See App. Br. 6—8; Reply Br. 2-4.
Appellant argues the Examiner has failed to follow the guidance materials of
the United States Patent and Trademark Office (USPTO) (specifically, (1)
July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429
(July 30, 2015); and (2) Recent Subject Matter Eligibility Decisions,
Memorandum, (Nov. 2, 2016)). See App. Br. 6; Reply Br. 3 n.7. We
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Application 14/010,400
decline to require such guidance be followed to support a prima facie case.
Even as stated in one of the USPTO’s guidance materials, “[fjailure 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). Rather,
“[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 the rejection with sufficient
particularity to give Appellant a fair opportunity to respond to that rejection.
See 35 U.S.C. § 132(a). As the Federal Circuit has clarified,
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notifying] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35
U.S.C. § 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection.” Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original).
Here, we find the Examiner’s rejection satisfies the initial burden of
production by identifying that the claims consist of a method of organizing
human activity (step one of the 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 a meaningful limitation to the
abstract idea (step two of the Alice analysis). See Ans. 3—5. Accordingly,
the Examiner has set forth the statutory basis for the rejection, namely § 101,
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identified a judicial exception to 35 U.S.C. § 101, namely an abstract idea,
and explained the rejection in sufficient detail to permit Appellant to respond
meaningfully. Thus, we find the Examiner has set forth a prima facie case
of ineligibility.
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) (second bracket in original).
The Specification discusses the problem to be solved by the
invention—whether it is worth the initial investment of filing a patent
application or proceeding investments of each future stage the patent
application undergoes. Spec. H 5, 13. According to the Specification, the
inventor provides a patent monitor “tool [that] detects how many patents in
the same class/subclass or in other related group have changed owners in a
time period.” Id. 1158; see also id. ^fl[ 183—196. By comparing the detected
ownership changes to a list of trolls, a potential value of the patent
application is determined. Id ^fl[ 192—196.
Appellant argues the claims rejected under § 101 as a group.
See App. Br. 6—8; Reply Br. 2-4. We, therefore, select independent claim 1
as the representative claim for this group, and claims 4—6, 9-11, 14, and 15
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). In light of the
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Specification discussed above, we agree with the Examiner that claim 1 as a
whole, and in light of the Specification discussed above, is directed to a
method of organizing human activity. See Ans. 3—5. Here, claim 1 requires
three distinct steps: (a) providing a patent rating metric based on a change of
ownership of a first set of patents (to which an identified patent or patent
application belongs) compared to a second set of patents; (b) monitoring a
patent activity of an owner of the identified patent or patent application; and
(c) modifying the patent rating metric using the monitored level. Thus, the
essence of claim 1 is directed to at least two types of human activity—(1)
changes of ownerships between the two sets of patents; and (2) owner
activity. Further, providing a patent rating metric and modifying the patent
rating metric based on the human activity is a method of organizing the
human activity. As such, it is an abstract idea.
We further agree with the Examiner that claim 1 as a whole, and in
light of the Specification discussed above, is directed to an idea of itself.
See Ans. 3—5. “An idea of itself is not patentable.” Diamond v. Diehr, 450
U.S. 175, 185 (1981) (citation omitted); see also Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (“[MJental processes, and abstract intellectual concepts
are not patentable.”). It is well settled that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and not patent-eligible under § 101. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372—73 (Fed. Cir. 2011).
A human can mentally (or use pen and paper to do so) perform the
above three steps (a)-(c). That claim 1 adds a “computer-implemented
method” does not change our conclusion. Mental processes remain
unpatentable even when automated to reduce the burden on the user of what
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Application 14/010,400
once could have been done with pen and paper. See CyberSource, 654 F.3d
at 1375 (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
GottschalkT); see also Bancorp Servs., LLC v. Sun Life Assurance Co., 687
F.3d 1266, 1279 (Fed. Cir. 2012) (“Using a computer to accelerate an
ineligible mental process does not make that process patent-eligible.”).
Therefore, claim 1 is directed to an abstract idea under the first step of
the analysis.
Alice Step Two
Turning to the second step of the Alice analysis, because we find that
claim 1 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).
At the outset, we note claim 1, directed to “[a] computer-
implemented” method, does not improve the computer’s functionality or
efficiency, or otherwise change the way the computer functions. Cf. Enfish,
822 F.3d at 1335. Rather, claim 1 recites nothing more than using a generic
computer to perform the method of claim 1. But merely reciting a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
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eligible invention. See Alice, 134 S. Ct. at 2358. In other words, merely
reciting an abstract idea while adding the words “apply it with a computer”
does not render an abstract idea non-abstract: there must be more. See id. at
2358.
Appellant nominally argues the Examiner fails to provide a discussion
of the claims as an ordered combination, as Bascom Global Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) suggests
is necessary for a proper analysis under step two of the Alice/Mayo test.
App. Br. 7—8; Reply Br. 2—3. Appellant further argues Bascom holds that an
inventive concept is found in an arrangement of elements known in the art,
in general, and not just for arrangements involving a filter action. Reply Br.
3. We disagree. First, Bascom did not hold that merely having an
arrangement of elements known in the art was sufficient to satisfy the
second step of Alice. Instead, Bascom held that “an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces.” Bascom, 827 F.3d at 1349—50. Second, Appellant
does not provide any persuasive explanation of how the recited ordered
combination of these elements amounts to an inventive concept that converts
an abstract idea into patent-eligible subject matter.
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).
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Conclusion
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 1, and claims 4—6, 9-11, 14, and 15 not argued separately with
particularity, as directed to ineligible subject matter under 35U.S.C. § 101.
THE OBVIOUSNESS REJECTION
The Examiner finds Barney’s user seeking to acquire a patent has
access to ownership records for patents, whether using Barney’s database or
the United States Patent and Trademark Office (USPTO) Patent Application
Information Retrieval (PAIR) system database. Ans. 5—6 (citing
Barney 20, 161). The Examiner concludes it would have been obvious
for the patent purchasing entity to determine a possible change in ownership
of the patent, and “[tjherefore it would have been obvious to update patent
level metrics, based on application status.” Ans. 6. The Examiner further
finds a person of ordinary skill in the art “can easily perform [a] comparison
[of a] change in ownership from publicly available sources in any country. . .
. Hence, the claims are obvious in view of the prior art of record . . . .” Id.
6-7.
Appellant asserts Barney’s metrics used to statistically rate a patent
include changes of ownership, but argues Barney contains no language
defining an ownership patent metric based on a comparison between an
ownership change in one class and a change in another class. App. Br. 9.
Appellant further argues the Examiner provides no reasoned rationale
explaining how and why a person of ordinary skill in the art would modify
Barney, and thus fails to provide adequate support to establish a prima facie
case of obviousness for claim 1. Id. 10-13.
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ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
Barney would have taught or suggested providing a patent rating metric for
an identified patent or patent application based on an identification of a
change in ownership of a first set of patents in a class or subclass to which
the identified patent or patent application belongs compared to a change in
ownership of a second set of patents in at least one other class or subclass?
ANALYSIS
On this record, we find error in the Examiner’s obviousness rejection
of independent claim 1. A key aspect of the recited patent rating metric is
that it is based on a comparison: comparing (1) a change in ownership of a
first set of patents to which a selected patent or patent application belongs,
and (2) a change in ownership of a second set of patents. This comparison is
essential to the invention, for it enables determining the potential value of
the patent or patent application. Spec. H 183—196.
Turning to the rejection, we fail to see—nor has the Examiner
shown—how Barney teaches or suggests the comparison that provides the
patent rating metric. Barney is generally directed to a statistically-based
method that rates patents for various purposes including, among other
things, patent investment decisions. Barney, Abstract. Barney’s
statistically-based method rates patents based on various patent metrics
(id. 57—58), including a patent’s change of ownership (id. 1164).
Barney’s internet-based application allows a user to access
information of patents including ownership records. Id. 1161. Barney’s
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user may retrieve a patent number based on the ownership records.
Id. 1162. If Barney’s user is interested in a particular accessed patent, a
rating report of the user-selected patent is created including variables the
user is able to control in the rating calculation. Id. 1161. Barney’s rating
report, using the controlled variables, rates the selected patent by comparing
the selected patent to other patents in, e.g., the same art group. Id.
Barney does not, however, indicate that controlled variables that are
used to create the rating report are Barney’s patent metrics, and therefore
relate to the selected patent’s change of ownership (as discussed above; see
id. 1164). To be sure, Barney’s variables relate only to those used in a
multiple regression model. Id. H 73, 81, 83.
But even assuming, without deciding, that Barney at least suggests
that (1) the user selectable variables used in the rating report are patent
metrics (and patent metrics include a patent’s change of ownership as
discussed above; see id. 1164); and (2) the user requests that the selected
patent be rated against other patents in the same art group (as discussed
above; see id. 1161), then Barney, at best, suggests a rating report based on
comparing one patent against other patents in the same art group. But
Barney falls short of teaching or suggesting a rating report based on
comparing a first set of patents in a class or subclass to which the user
selected patent belongs and a second set of patents in at least one other class
or subclass.
Thus, even if we were to accept the Examiner’s unsupported premise
that ordinarily skilled artisans can easily compare ownership changes from
publicly available sources (Ans. 6), there is still insufficient evidence on this
record to show that providing a patent rating metric by comparing ownership
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Application 14/010,400
changes for two sets of patents in different classes or subclasses would have
been obvious apart from impermissible hindsight reconstruction using
Appellant’s disclosure as a blueprint.
Therefore, we agree with Appellant that Barney does not teach or
suggest this particular limitation. App. Br. 9—12; Reply Br. 4—5.
Accordingly, we are persuaded that the Examiner erred in rejecting
(1) independent claim 1, (2) independent claims 6 and 11 which recite
commensurate limitations, and (3) dependent claims 4, 5, 9, 10, 14, and 15
for similar reasons. Because this issue is dispositive regarding our reversing
the Examiner’s rejection of these claims, we need not address
Appellant’s other associated arguments.4
CONCLUSION
The Examiner did not err in rejecting claims 1, 4—6, 9—11, 14, and 15
under § 101, but erred in rejecting those claims under § 103.
4 We note in passing that Barney discusses, in at least one particular
embodiment, selecting a first population of patents having a first “quality or
characteristic,” and a second population of patents having a second different
“quality or characteristic.” Barney 133. Barney further determines or
identifies one or more patent metrics having either a positive or negative
correlation with either the first quality or second quality. Id. Nevertheless,
the Examiner did not rely on this functionality in the obviousness rejection,
nor will we speculate in that regard here in the first instance on appeal.
Rather, we leave to the Examiner to consider whether this functionality,
considered alone or combined with other prior art, would have rendered the
claims obvious to ordinarily skilled artisans.
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DECISION
The Examiner’s decision to reject claims 1, 4—6, 9-11, 14, and 15 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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