Ex Parte Lundberg

Patent Trial and Appeal Board

Sep 6, 2017

14010376 (P.T.A.B. Sep. 6, 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.
14/010,376 08/26/2013 Steven W. Lundberg 3431.002US3 6310
21186 7590 09/08/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/08/2017 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 2017-002337
Application 14/010,3761
Technology Center 3600
Before JOHN A. JEFFERY, MICHAL J. STRAUSS, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 2, 4—7, 9-12, and 14—18, which are all the
claims pending in the application. Claims 3, 8, and 13 were cancelled
previously. 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.
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STATEMENT OF THE CASE
Appellant’s invention is a patent management system using social
media. Abstract. In a disclosed embodiment, “every time a US patent
issues, or application] publishes, a fan page is automatically set up on
Facebook/social network. A tool may then then [sic] search for owners of
[the] patent on Facebook/linkedin, and invite them to become a fan.” Spec.
1163. Claim 1 is representative and reproduced below:
1. A computer-implemented method comprising:
maintaining or accessing, by a computer processor, a
database including data relating to patent applications;
detecting, by a computer processor, the grant or
publication of a patent application in the database;
creating, in response to the detection, in a social media
network, a fan page including data relating to the granted or
published patent application;
identifying the owner of the granted or published patent in
the social media network;
inviting the owner to be a fan of the fan page;
monitoring the database to detect a change in status of the
granted or published patent application; and
updating the data included on the fan page in response to
a detection of a change in status of the granted or published
patent application.
RELATED APPEALS
Appellant did not identify any related appeals. See App. Br. 3.
However, there are at least twenty-eight (28) related appeals, which are:
Anneal No. Application 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
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Application 14/010,376
2012-004166 11/061,312
2015-000321 13/309,127
2015-003180 13/309,039
2015-007422 13/309,146
2016-000319 13/309,080
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
2017-003702 14/483,903
2017-003815 14/094,542
2017-004158 14/010,391
2017-004159 14/010,380
2017-004188 14/010,400
2017-006390 13/409,189
2017-006642 13/310,452
Decision mailed Nov. 4, 2014
Decision mailed July 26, 2017
Decision mailed Sept. 23, 2016
Decision mailed June 1, 2016
Decision mailed May 27, 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 Aug. 3, 2017
Decision mailed Aug. 3, 2017
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
Pending
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Application 14/010,376
REJECTIONS
Claims 1, 2, 4—7, 9-12, and 14—18 stand rejected under 35 U.S.C.
§ 101, as being directed to non-statutory subject matter. See Final Act. 2—3.
Claims 1, 2, 4—7, 9-12, and 14—18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Grainger (US 2002/0091542 Al;
July 11, 2002) and Avisar (US 2010/0023386 Al; Jan. 28, 2010).
See Final Act. 3—8.
THE 35 U.S.C. § 101 REJECTION
The Examiner finds that specific language from independent claim 1
is directed to an abstract idea. Final Act. 2—3; Ans. 2-4. The Examiner adds
that claim 1 does not include additional elements sufficient to transform the
abstract idea into a patent-eligible application of the abstract idea. Id. As
such, the Examiner determines claim 1 does not recite significantly more
than the abstract idea itself and, therefore, is ineligible under § 101. Id.
Appellant argues the claimed invention is not directed to an abstract
idea. App. Br. 9-10; Reply Br. 2—3. According to Appellant, the Examiner
fails to establish aprima facie case of subject matter eligibility because
(1) the Examiner has failed to establish that the claims are directed to an
abstract idea; (2) the Examiner has failed to establish that Appellant's claims
do not amount to significantly more than an abstract idea; and (3) even
assuming Appellant’s claims are directed to an abstract idea, the elements of
Appellant’s claims amount to significantly more than an abstract idea. Id.
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ISSUE
Has the Examiner erred in finding that claim 1 is directed to ineligible
subj ect matter under §101?
ANALYSIS
We begin by noting Appellant argues the claims as a group. See App.
Br. 9-10; Reply Br. 2—3. We, therefore, select independent claim 1 as the
representative claim for this group, and the remaining claims 2, 4—7, 9-12,
and 14—18 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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. v. CLS Bank Int’l, 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. At the outset, we note
Appellant’s arguments effectively ask this panel to turn the July 2015
Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015)
(“the 2015 Guidelines”) into a requirement that the Examiner must rely on
case law precedent. See App. Br. 8—9. We decline to do so because the
2015 Guidelines set forth no such requirement. Rather, the 2015 Guidelines
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(emphasis added) set forth the steps as “the examiner’s burden is met... for
example by providing a reasoned rationale that identifies the judicial
exception recited in the claim. . . . This rationale may rely, where
appropriate,... on the case law precedent^]”
The Examiner has identified the abstract idea to which the claims are
directed. 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, the Examiner’s rejection satisfies the initial burden of
production by characterizing independent claim 1, as a whole, and stating
that “[t]he claims describe concepts that have been identified by courts such
as data recognition and storage, using categories to organize, store and
transmit information, through mathematical correlations, and others.”
Ans. 2. The Examiner finds that “[sjtoring data in a database is not an
inventive concept, but an abstract idea.” Id. at 3. The Examiner further
finds the steps related to social media pages are simply methods of
organizing human activities. Id. The Examiner summarizes the rejection
stating “viewed as a whole, the claims simply recite the concept of creating a
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patent application database and a fan page of selected patent applications
using by [sic] a generic computer.” Id.
The Examiner then explains that “the technological environment
recited in the claims invokes or contains no more than purely functional,
routine and generic components for detecting patent grants, monitoring
change in status, identifying owner, creating fan page, inviting to become a
fan, etc., without any meaningful limitations” (part 2 of the Alice analysis).
Ans. 3. Accordingly, the Examiner has set forth the statutory basis for the
rejection (a judicial exception to 35 U.S.C. § 101) and explained the
rejection in sufficient detail to permit Appellant to respond meaningfully.
Thus, we find that the Examiner set forth a prima facie case of ineligibility.
Alice Step One
As discussed above, the Examiner finds, under the first step of the
Alice analysis, that claim 1 is directed to an abstract idea. Abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Alice, 134 S. Ct. at 2355—57.
Before determining whether the claims at issue are directed to an
abstract idea, we must first determine what the claims are directed to. The
“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.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
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The Examiner finds claim 1 is directed to the abstract idea of “a social
media network for maintaining status of patent applications.” Final Act 3, 8.
In this case, we agree with the Examiner. The Specification mentions social
media networks in the Specification only in paragraphs 109 and 163. These
paragraphs indicate the social media network is simply one interface option
for allowing individuals to track the status of patents or patent applications
using a social media page. See Spec. Tflf 109, 163. There are other aspects
recited in the claim, including details regarding how the data is stored,
created and presented, but those aspects are not the focus of the claims. Cf.
In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 1613 (Fed.
Cir. 2016) (the claims’ focus “was not on an improved telephone unit or an
improved server.”). Rather, restating the Examiner’s finding, the claims as a
whole are directed to managing (i.e., monitoring and updating) status
information of a patent or patent application.
We now turn to the question of whether managing status information
of a patent or patent application is a patent-ineligible abstract idea. As
discussed above, the Examiner finds claim 1 involves the abstract idea of
managing data (“data recognition and storage, using categories to organize,
store and transmit information”) and organizing human activities. Ans. 2, 3.
We agree with the Examiner that managing status information of a patent or
patent application is mere manipulation of data and a method of organizing
human activity. 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. Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1343 (Fed. Cir. 2016). Thus, the Examiner
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has sufficiently articulated that the claim, as a whole, is directed to an
abstract idea and Appellant has not persuaded us of error with respect to step
one of the Alice inquiry.
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). Limitations referenced
in Alice that may be enough to qualify as “significantly more” when recited
in a claim with an abstract idea include, as non-limiting or non-exclusive
examples: (1) improvements to another technology or technical field, id. at
2358 (citing the example of a mathematical formula applied in a specific
rubber molding process from Diamond v. Diehr, 450 U.S. 175, 177—178
(1981)); (2) improvements to the functioning of the computer itself, Alice,
134 S. Ct. at 2359; and (3) meaningful limitations beyond generally linking
the use of an abstract idea to a particular technological environment, id. at
2360 (noting that none of the hardware recited “offers a meaningful
limitation beyond generally linking ‘the use of the [method] to a particular
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technological environment,’ that is, implementation via computers” (citing
Bilski, 561 U.S. at 610, 611)).
Appellant specifically points to the aspects of the claim centered on
creating a social media web page and inviting an individual to become a fan
of that page. App. Br. 10. Appellant contends these are steps “not
previously possible before the advent of [IJnternet technologies, such as
social media networks.” Id. Appellant is correct that creating a social media
page was not possible before the advent of social media networks.
However, we disagree that the identified recitations add “significantly more”
to Appellant’s claims.
Appellant, rightly, does not appear to assert that using generic
computer hardware, i.e., the recited processor and database, to store and
retrieve data, is enough to confer subject matter eligibility. See, e.g., Alice,
134 S. Ct. at 2358 (“[I]f a patent's recitation of a computer amounts to a
mere instruction to ‘implement]’ an abstract idea ‘on ... a computer,’ that
addition cannot impart patent eligibility.” (citation omitted)). Although
social media networks are new relative to processors and databases, we are
not persuaded that reciting the use of Internet technologies for their intended
purpose is distinguishable from Appellant’s recited use of databases and a
processor.
The Federal Circuit has held a claim may pass the second step if “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). The Court restated that premise by indicating a claim may be
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“significantly more” than the abstract idea if “the focus of the claims is on
[a] specific asserted improvement in computer capabilities [rather than] on a
process that qualifies [the] ‘abstract idea’ for which computers are invoked
merely as a tool.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335—36 (Fed. Cir. 2016). Appellant’s recitation of creating a social media
page and inviting an individual to be a fan does not improve the technology
(i.e., social media network), but rather uses the technology as intended to
provide a particular display of the managed information (i.e., patent or
patent application status). Id. at 1336 (finding that the “plain focus of the
claims” was on “an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity.”).
Appellant nominally argues the Examiner fails to provide a discussion
of the claims as an ordered combination, which BASCOM Global Internet
Services, 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. We disagree.
In BASCOM, the Federal Circuit found “the limitations of the claims,
taken individually, recite generic computer, network and Internet
components, none of which is inventive by itself,” but “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. Claim 1
recites generic components, such as a database, a processor, and a social
media network, and Appellant does not provide a persuasive explanation of
how or why the recited ordered combination of these elements amounts to
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“significantly more,” rendering the claimed abstract idea patent-eligible
subject matter. See App. Br. 10 (simply arguing the steps relating to
creating and updating the social media page were not possible before social
media networks existed). As discussed above, Appellant’s claims merely
recite manipulating and displaying data using the social media network, as it
was intended to be used, to present information. The known use of a known
technology or implementing a concept in a particular technological
environment does not confer patent eligibility on an otherwise abstract
concept. Cf. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1332
(Fed. Cir. 2015) (citations omitted) (“This requires more than simply stating
an abstract idea while adding the words ‘apply if or ‘apply it with a
computer.’ Similarly, the prohibition on patenting an ineligible concept
cannot be circumvented by limiting the use of an ineligible concept to a
particular technological environment.”).
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).
Accordingly, we are not persuaded the Examiner erred in rejecting the
claims as directed to ineligible subject matter under 35 U.S.C. § 101.
THE OBVIOUSNESS REJECTION
Regarding claim 1, the Examiner finds that Grainger detects the grant
or publication of a patent application in a database. Final Act. 4—5.
Although the Examiner acknowledges that Grainger does not teach creating
a fan page in a social media network including data relating to the detected
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granted or published patent application, and inviting the owner of the
granted or published patent application to be a fan of the fan page, the
Examiner finds Avisar teaches these features. Id. 5—6.
Appellant contends the Examiner erred in finding that Avisar involves
either creating a fan page in a social media network including data relating
to a detected granted or published patent application, and inviting the owner
of the granted or published patent to be a fan of the fan page, as recited in
claim 1. App. Br. 17—18.
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Grainger and Avisar collectively would have taught or suggested
creating a fan page and inviting a friend to be a fan of the fan page?
ANALYSIS2
We begin by noting the Examiner’s reliance on the primary reference
to Grainger is undisputed, as is the cited references’ combinability. Rather,
2 Although we note claims 4 and 5 are indefinite because each of these
claims depend directly from cancelled claim 3, for purposes of this Decision,
we presume that claims 4 and 5 are intended to depend from independent
claim 1. Compare App. Br. 16 (currently pending claims 1, 4, and 5), with
Spec. 48-49 (originally filed claims 3—5).
Further, we note claims 9, 10, and 17 are indefinite because each of
these claims depend directly from cancelled claim 8, but we likewise
presume that claims 9, 10, and 17 are intended to depend from independent
claim 6 for purposes of this Decision. Compare App. Br. 17—18 (currently
pending claims 6, 9, 10, and 17), with Spec. 49 (originally filed claims 8—10
and 17).
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as noted above, this dispute turns solely on whether Avisar teaches creating
a fan page and inviting a friend to be a fan of the fan page. We therefore
confine our discussion to Avisar.
The Examiner finds Avisar teaches creating a fan page and inviting a
friend to be a fan of the fan page. Final Act. 5—6 (citing Avisar Abstract;
16—17; Figures 1—9). Such a finding is problematic on this record.
Avisar is generally directed to a social networking platform. Avisar Title;
Abstract. Avisar’s social networking platform includes a market for the
purchase or selling of intellectual property (IP) assets. Avisar 116. The
Examiner explains that standard features of a social network, which include
creating a fan page and inviting another party to be a fan of the fan page,
“are standard features of a social media network.” See Ans. 5. In the
absence of evidence or technical reasoning supporting the Examiner’s
findings, however, the explanation constitutes teachings of the Examiner,
not the teachings of Avisar. Thus, the Examiner does not provide sufficient
evidence or technical reasoning as to how Avisar’s social networking
platform teaches or suggests creating a fan page and inviting a friend to be a
fan of the fan page. Instead, we agree with Appellant that the Examiner
failed to show, by a preponderance of the evidence, that claim 1 would have
Lastly, we note claims 14, 15, and 18 are indefinite because each of
these claims depend directly from cancelled claim 13, but we likewise
presume that claims 14, 15, and 18 are intended to depend from independent
claim 11 for purposes of this Decision. Compare App. Br. 17—18 (currently
pending claims 11, 14, 15, and 18), with Spec. 50-51 (originally filed claims
13-15).
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been obvious in view of the asserted teachings of Grainger and Avisar. App.
Br. 13.
Therefore, we are persuaded the Examiner erred in rejecting claim 1.
Because this issue is dispositive regarding the Examiner’s rejection of claim
1, we need not address Appellant’s remaining arguments.
Independent claims 6 and 11 recite limitations commensurate in scope
to claim 1. Thus, claims 6 and 11, and claims 2, 4—5, 7, 9, 10, 12, and
14—18, which depend from one of claims 1, 6, and 11, are rejected using the
same deficient teaching. Accordingly, we reverse the Examiner’s rejections
of claims 1, 2, 4—7, 9-12, and 14—18.
CONCLUSION
The Examiner properly rejected claims 1, 2, 4—7, 9—12, and 14—18 as
directed to ineligible subject matter under 35 U.S.C. § 101, but the Examiner
erred in rejecting claims 1, 2, 4—7, 9-12, and 14—18 as obvious under
35 U.S.C. § 103(a).
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DECISION* 1 2 3’4
For the above reasons, we affirm the Examiner’s decision to reject
claims 1, 2, 4—7, 9-12, and 14—18.
AFFIRMED
3 We leave to the Examiner to determine whether independent claim 6 meets
the requirements of 35 U.S.C. § 112, H 1, 6. In particular, we leave the
following questions to the Examiner:
(1) Whether or not the phrase “at least one module . . . to” is a generic
placeholder for “means for” and invokes 35 U.S.C. § 112,16. See
Manual of Patent Examining Procedure (MPEP) § 2181(1), 9th ed.,
Rev. 7, Nov. 2015.
(2) If the Examiner determines the at least one module invokes 35
U.S.C. § 112, | 6, whether “one or more computer processors” is a
sufficient structural modifier. Id.
(3) If the Examiner determines the one or more computer processors
is not a sufficient structural modifier, whether claim 6 is a single
means claim and subject to an enablement rejection under 35 U.S.C.
§112,11. See MPEP § 2164.08(a).
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
4 We leave it to the Examiner to determine whether FACEBOOK and
LINKEDIN, as used in Appellant’s Specification (see Spec. H 110, 163),
meet the test set forth in MPEP § 608.0l(v) (citing U.S. Gypsum Co. v. Nat 7
Gypsum Co., 74 F.3d 1209, 1214 n.6 (Fed. Cir. 1996)).
16