Ex Parte Lundberg

Patent Trial and Appeal Board

Dec 14, 2017

13409189 (P.T.A.B. Dec. 14, 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.
13/409,189 03/01/2012 Steven W. Lundberg 3431.025US1 3625
21186 7590 12/18/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
DANZIG, REVA R
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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 2017-006390
Application 13/409,1891
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 1-12 and 14-18. Claim 13 was cancelled. 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.
Appeal 2017-006390
Application 13/409,189
STATEMENT OF THE CASE
Appellant invented a user interface for managing patent annuity fee
payments. See generally Abstract; Spec. 41-76; Figs. 2-3. Claim 18 is
illustrative:
18. A system for managing patent annuity fee
payments, the system comprising:
a network;
at least one universal registry, accessible on the network,
the registry including at least one database of patent matters
representing a totality of all patent matters registered at a
national patent office for which respective patent annuity fees
are payable; and
a server, operatively connected to the network, wherein
the server includes:
a processor;
a memory; and
software operable on the processor to:
provide a listing of at least some of the patent matters
stored in the registry database;
register customers of the universal registry as registered
users of the registry, wherein a user identification for a
respective registered user of the registered users is obtained
from an external system associated with the universal registry;
generate a universal patent registry user interface
including a first plurality of selectable user interface elements;
present, upon receiving the user identification of a
registered user of the registered users, the universal patent
registry user interface;
present, upon selection of a first one of the first plurality
of selectable user interface elements, a subset of the totality of
all patent matters based on a set of access rights associated with
the user identification of the registered user;
allow the registered user to search the sub set of the
totality of patent matters, wherein the search results are
displayed in the universal patent registry user interface;
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Appeal 2017-006390
Application 13/409,189
present a second plurality of selectable user interface
elements associated with respective patent matters of the subset
of the totality of patent matters;
determine, upon selection of a second one of the first
plurality of selectable user interface elements, that one or more
of the second plurality of selectable user interface elements
corresponding with respective patent matters has been selected
to be tagged;
tag the respective patent matters for payment of patent
annuity fees based on the determining;
present, upon selection of a third one of the first plurality
of selectable user interface elements, a track me user interface,
wherein the track me user interface includes user interface
elements to collect back-up contact information for the
registered user;
determine that the registered user is available to authorize
annuity fee payments for the respective patent matters; and
transmit, upon the determination that the registered user
is available, an authorization request including a request for a
payment authorization key; and
transmit, upon receipt of the payment authorization key,
the respective patent annuity fees due for the respective patent
matters to the national patent office.
Related Appeals
Appellant did not identify any related appeals. See App. Br. 3. There
are at least thirty (31) other related appeals:
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
2015-000319 13/309,080 Decision mailed May 27, 2016
2015-000321 13/309,127 Decision mailed July 26, 2017
3
Appeal 2017-006390
Application 13/409,189
2015-003180 13/309,
2015-007422 13/309,
2016-000912 13/309,
2016-001687 11/888,
2016-002121 13/309,
2016-002680 13/310,
2016-002792 12/605,
2016-006797 13/310,
2016-007186 13/573,
2016-007415 13/464,
2016-007623 13/408,
2016-007787 13/310,
2016-008030 13/253,
2017-000280 13/408,
2017-000386 11/098,
2017-002337 14/010,
2017-003702 14/483,
2017-003815 14/094,
2017-004158 14/010,
2017-004159 14/010,
2017-004188 14/010,
2017-006642 13/310,
2017-011247 13/253,
2017-011549 14/608,
2017-011552 14/628,
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
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
Decision mailed Nov. 3, 2017
Decision mailed Sept. 27, 2017
Decision mailed Nov. 1, 2017
Decision mailed Nov. 27, 2017
Decision mailed Dec. 6, 2017
039
146
060
,632
200
,279
,030
,368
,803
,598
,877
,322
,936
,917
,761
,376
,903
,542
,391
,380
,400
,452
,811
,520
,941
4
Appeal 2017-006390
Application 13/409,189
THE REJECTION
The Examiner rejected claims 1-12 and 14-18 under 35 U.S.C. § 101
as being directed to non-statutory subject matter. Non-Final Act. 3-5.2
CONTENTIONS
The Examiner finds that the claims are directed to managing patent
annuity fee payments. Id. at 3. The Examiner further finds a computer is
not necessary for carrying out the invention, but even if a computer is
necessary, the claims are said to contain no more than routine and generic
computer components without any meaningful limitations. Id. at 3—4.
Given these findings, the Examiner concludes the claims are ineligible under
§ 101. Non-Final Act. 3—4; Ans. 5-10.
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. 10-11, 21; Reply Br. 2. According to
Appellant, the Examiner fails to establish that (1) the claims are directed to
an abstract idea {id. at 11-18); and (2) the additional elements of the claims
do not amount to significantly more than an abstract idea (id. at 18-21;
Reply Br. 2-3).
2 Throughout this opinion, we refer to (1) the Non-Final Rejection mailed
December 23, 2015 (“Non-Final Act.”); (2) the Appeal Brief filed October
25, 2016 (“App. Br.”); (3) the Examiner’s Answer mailed January 4, 2017
(“Ans.”); and (4) the Reply Brief filed March 6, 2017 (“Reply Br.”).
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Appeal 2017-006390
Application 13/409,189
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 18 as directed to
ineligible subject matter under § 101?
ANALYSIS
To be eligible under 35 U.S.C. § 101, 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 (1) claims 1-12 and 14-16 are
directed to a “method,” i.e., a process; (2) claim 17 is directed to a “system,”
i.e., which we construe in this case to be a machine; and (3) claim 18 is
directed to a “system” implemented in hardware i.e., a machine. Thus, each
of the claims is directed to one of the four statutory categories of patentable
subject matter.
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
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Application 13/409,189
articulated in Alice Corp. Pty. Ltd. v. CLS Bank International, (134 S. Ct.
2347, 2355 (2014).
Prima Facie Case
Appellant contends that the Examiner failed to make a prima facie
case of ineligibility because of a failure to follow guidance material of the
United States Patent and Trademark Office (USPTO) (specifically, 2014
Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618
(Dec. 16, 2014)). See App. Br. 10. We disagree. As stated in another
agency guidance document, the “[f] ail ure 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 of managing patent annuity fee
payments, 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). Non-Final Act. 3-5; Ans. 5-10. 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
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Application 13/409,189
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.
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—managing patent annuity fee payments. Spec. 3, 14-19.
According to the Specification, the inventor provides a single payment
registry and user interface that helps assist users manage patent annuity fee
payments. Id. Appellant relies on the arguments made for claim 18 to argue
the patentability of the remaining pending claims. See generally
App. Br. 10-15; Reply Br. 2—4. We, therefore, select independent claim 18
as the representative claim for this group, and the remaining claims 1-12 and
14-17 stand or fall with claim 18. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
On this record, the Examiner is correct in finding that claim 18 is
directed to the abstract idea of managing patent annuity fee payments. See
Non-Final Act. 2-3; Ans. 4-9. Here, claim 18 requires, in essence, the
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Application 13/409,189
specifics of managing patent annuity fee payments by providing a universal
registry of patent matters that customers are registered to, generating and
presenting a universal patent registry user interface to a registered user,
presenting a subset of all patent matters, allowing the registered user to
search the subset and tag respective patent matters for payment of patent
annuity fees, and transmitting patent annuity fees due for the respective
patent matters.
Accordingly, in the context of the Specification, claim 18’s “character
as a whole” is directed to managing patent annuity fee payments—an
abstract idea. See Enfish, LLC, 822 F.3d at 1334-35 (Although “[t]he
Supreme Court has not established a definitive rule to determine what
constitutes an ‘abstract idea’ sufficient to satisfy the first step of the
Mayo/Alice inquiry ... the first step of the inquiry is a meaningful one”);
Alice, 134 S. Ct. at 2354 (“[W]e tread carefully in construing this [abstract
idea] exclusionary principle lest it swallow all of patent law.”). Here, even
claim 18’s preamble, directed to a system “for managing patent annuity fee
payments,” further supports that claim 18’s character as a whole is directed
to managing patent annuity fee payments.
Accordingly, we find claim 18 is directed to an abstract idea of
managing patent annuity fee payments under the first step of Alice.
Alice Step Two
Because we find that claim 18 is directed to an abstract idea, we next
“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
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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). To be sure, managing patent annuity fee payments is a
conventional business practice known in the art. Appellant’s Specification
acknowledges that a client currently directs which patent matters an annuity
payment service is to handle, and “[a]s such, various different annuity
payment services keep track of various different clients to handle payments
for those clients and their matters.” Spec. ^ 3. Furthermore, a patent
attorney providing competent representation to a client on a patent matter, in
accordance with 37 C.F.R. § 11.101, knows that “[i]t is the responsibility of
the patentee to ensure that the maintenance fees are paid to prevent
expiration of the patent.” Manual of Patent Examining Procedure
(MPEP) § 2575 (9th ed. Rev. 07.2015, Nov. 2015). Appellant’s
Specification further acknowledges that clients may obtain data from a
single maintenance fee registry at a national patent office, such as the
USPTO’s Patent Application Information Retrieval (PAIR) system.
Spec. 6-9. Moreover, the Specification provides that existing annuity
payment services keep track of due dates for patent annuity fee payments by
interacting with the PAIR system. Id. ^[9.
But Appellant’s Specification describes the invention as claimed as
improving the conventional business practice of managing patent annuity fee
payments by providing a specific user interface that connects to a single
patent registry. Spec. 41-76. Appellant argues that the claims are rooted
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and arise from computer technology, and recite a solution for presenting
secure user interfaces including the functionality of a universal patent
registry similar to the claims at issue in BASCOM Global Internet Services v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). App. Br. 20-21;
Reply Br. 2-3.
We disagree. At the outset, we recognize a user interface alone is a
generic computer element not sufficient to transform an otherwise abstract
idea into patent-eligible subject matter. See FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773
F.3d at 1256). See also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1262 (Fed. Cir. 2016). Moreover, a user interface that provides
little more than an unspecified set of rules for displaying and organizing
elements does not recite eligible subject matter. See Intellectual Ventures I
LLCv. Capital One Fin. Corp., 850 F.3d 1332, 1342 (2017) (citing
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015)).
Appellant’s Specification discloses that the user interface of claim 18
uses a variety of conventional known programming languages or
programming methods, such as HyperText Markup Language (HTML),
Visual Basic® Scripting Edition (VBSScript), or JavaScript™. Spec. ^ 35.
The Specification further discloses conventional hardware that displays the
user interface and connects to the single registry of patent matters.
See id. 33 40. Thus, despite Appellant’s contentions to the contrary
(App. Br. 20-21; Reply Br. 2-3), claim 18 merely adds a user interface that
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uses conventional software and hardware to the conventional business
practice of managing patent annuity fee payments.
Notably, Appellant’s claim 18 is strikingly similar to claim 1 that the
Federal Circuit held was patent ineligible in Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240—43 (Fed. Cir. 2016). Like the user interface of claim 1
in Ameranth, the user interface of claim 18 generates and displays selectable
user interface elements from other selectable user interface elements. The
user interface of claim 18 does not require specific structure that pairs with a
prescribed functionality directly related to the structure. See Trading
Technologies Int 7, Inc. v. CQG, Inc., 675 Fed. App’x 1001, 1003-06 (Fed.
Cir. 2017) (unpublished) (holding that a user interface, including a static
price index, is an inventive concept that allows traders to place trades more
efficiently and accurately using an electronic trading system).
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
Accordingly, we are not persuaded that the Examiner erred in
rejecting claim 18, and claims 1-12 and 14-17 not argued separately with
particularity
CONCLUSION
The Examiner did not err in rejecting claims 1-12 and 14-18 under
§ 101.
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DECISION
The Examiner’s decision to reject claims 1-12 and 14-18 is affirmed.
AFFIRMED
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