Ex Parte Mahafzah

Patent Trials and Appeals Board

Apr 30, 2019

13758545 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/758,545 02/04/2013
43218 7590 05/02/2019
Taft Stettinius & Hollister LLP
ONE INDIANA SQUARE, SUITE 3500
INDIANAPOLIS, IN 46204-2023
FIRST NAMED INVENTOR
AlMahafzah
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
35185-00008 5414
EXAMINER
SINGH, RUPANGINI
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
Taft-IP-Docket@taftlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AL MAHAFZAH
Appeal2018-003556
Application 13/758,545
Technology Center 3600
Before JOHN A. JEFFERY, JENNIFER L. McKEOWN, and
LINZY T. McCARTNEY, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 2, 6-9, 12-16, 19, and 20. Claims 3, 4, 10, 11,
17, and 18 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellant, the real party in interest is HSC Acquisition, LLC
dba HealthSTAR Communications. App. Br. 2.
Appeal2018-003556
Application 13/758,545
STATEMENT OF THE CASE
Appellant's disclosed and claimed invention "relates to the field of
promotional events. More particularly, the present invention relates to a
system and method for certifying attendance at a promotional event." Spec.
iT 1.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method for certifying attendance at a healthcare
promotional event, the method comprising the steps of:
a computer retrieving data indicative of a healthcare
professional's pre-registration for the healthcare promotional
event;
a computer prompting for a signature, wherein the
signature confirms the healthcare professional's attendance at the
healthcare promotional event;
a computer receiving an image representative of the
signature via an interface;
a computer converting the image representative of the
signature to binary code;
a computer storing the binary code representative of the
signature to memory;
a computer prompting for a response to a presented
certification statement;
a computer certifying the healthcare professional' s
attendance at the healthcare promotional event responsive to
receiving a response to the certification statement and responsive
to receiving the image representative of the signature; and
a computer transmitting data representative of the
response to the certification statement in association with the
binary code representative of the signature.
THE REJECTIONS
The Examiner rejected claims 1, 2, 5-10, 12-17, 19, and 20 under 35
U.S.C. § 101 as directed to patent ineligible subject matter. Final Act. 4--12.
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Application 13/758,545
The Examiner rejected claims 1, 2, 5-9, 12-16, 19, and 20 under 35
U.S.C. § 101 as unpatentable over White et al. (US 2010/0049562 Al,
published Feb. 25, 2010), Atsushi et al. (JP 2007272563(A), published Oct.
18, 2007), Terue (JP 20070128400(A), published May 24, 2007), Smith et
al. (US 2011/0246219 Al, Oct. 6, 2011), and Jegou et al. (US 2011/0164822
Al, published July 7, 2011). Final Act. 10-27.
ANALYSIS
THE§ 101 REJECTION
Claims 1, 2, 5-9, 12-16, 19, and 20
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1, 2, 5-9, 12-16, 19, and 2 0 as directed to patent
ineligible subject matter.
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,216
(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
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risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
section 101. USPTO's 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF p ATENT EXAMINING PROCEDURE
("MPEP") § 2106.05(a)-(c), (e)-(h) (9th ed. 2018)).
See Memorandum 52, 55-56. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, do we
then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum 56.
Examiner's Findings and Conclusion
Under step one of the Alice test, the Examiner determines that the
claimed invention is directed to the abstract idea of "certifying attendance at
an event." Final Act. 6. The Examiner explains that "certifying attendance
at an event is a method of organizing human activity, such as a concept
relating to interpersonal and intrapersonal activities, such as managing
relationships or transactions between people, social activities and human
behavior." Final Act. 6.
Under step two of the Alice test, the Examiner determines that the
additional limitations do not add significantly more to the abstract idea.
Final Act. 7-8. The Examiner finds that the claimed steps of "retrieving,
prompting, receiving via an interface, converting, storing, certifying,
transmitting, enabling, and modifying information" as required by the
claimed invention are "are well-understood, routine, and conventional
activit[ies] previously known to the industry." Final Act. 7. The Examiner
also finds that "converting an image representative of a signature to a binary
code is a generic and well-understood, routine and conventional activity."
Final Act. 7.
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Appellant's Contentions
Appellant argues that the claimed invention is not directed to an
abstract idea. App. Br. 11. According to Appellant, "the claims require a
fundamental change to data that cannot be performed in a human mind."
App. Br. 11-13. Appellant particularly points to converting the image of the
signature to binary code" "goes beyond merely manipulating, reorganizing
or collecting data, but rather generates new data (i.e., the binary code, as
recited in claim 1 ), thereby fundamentally altering the original data (i.e., the
data corresponding to the image, as recited in claim 1) and improving the
operation of the computer." App. Br. 12; App. Br. 15-18. Appellant also
contends that the claimed invention is not directed to a method of organizing
human activity. App. Br. 13-14.
Under step two of the Alice test, Appellant argues that the claimed
invention amounts to significantly more than the alleged abstract idea. App.
Br. 15-19. Appellant further argues that "the Final Action fails to provide
sufficient rational to support a conclusion that the functions performed by
the computer of claim 1 are well understood, routine, [and] conventional
functions .... "App.Br. 18.
Analysis - Revised Step 1
In step one we consider whether the claimed subject matter falls
within the four statutory categories of patentable subject matter identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
The claimed invention here recites a process including a number of a steps.
Accordingly, the claimed invention falls within the process category.
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Analysis - Revised Step 2A
Under the Memorandum, in prong one of step 2A we look to whether
the claims recite a judicial exception. The claims include "retrieving data
indicative of a healthcare professional's pre-registration for the healthcare
promotional event," "prompting for a signature, wherein the signature
confirms the healthcare professional' s attendance at the healthcare
promotional event," "receiving an image representative of the signature,"
"prompting for a response to a presented certification statement," and
"certifying the healthcare professional's attendance at the healthcare
promotional event responsive to receiving a response to the certification
statement and responsive to receiving the image representative of the
signature." As the Examiner explains, as a whole, these claimed steps gather
information to be used to certify attendance of an individual at an event.
Final Act. 6. Certifying attendance at an event relates to managing personal
behavior, i.e. the person's attendance or presence at the event. As such, the
claimed invention recites a method of organizing human activity, which is
an abstract idea. See Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed. Cir. 2015) (finding
ineligible claims directed to managing a person's spending or budgeting).
See also Final Act 6-7 (finding that "the abstract idea of certifying
attendance at an event is a method of organizing human activity, such as a
concept relating to interpersonal and intrapersonal activities, such as
managing relationships or transactions between people, social activities and
human behavior.").
Under prong two of revised step 2A, we determine whether the recited
judicial exception is integrated into a practical application of that exception
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by: (a) identifying whether there are any additional elements recited in the
claim beyond the judicial exception( s ); and (b) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.
In addition to the abstract idea discussed above, the claimed invention
recites "a computer," "an interface," "converting the image representative of
the signature to binary code," "storing the binary code representative of the
signature to memory" and "transmitting data representative of the response
to the certification statement in association with the binary code
representative of the signature." As the Examiner identifies, these additional
limitations "are generic computer components that perform functions (i.e.,
retrieving, processing, converting, storing, transmitting and outputting data)
that are well-understood, routine, and conventional activities previously
known to the industry .... " App. Br. 7 ( citations omitted).
Appellant, however, asserts that these additional limitations improve
the functioning or performance of the computer. App. Br. 12; App. Br. 15.
Namely, Appellant contend that the claimed "convert[ing] the image of the
signature to binary code [] reduce[ s] memory requirements for storing the
signature and [] reduce[ s] network bandwidth requirements for transmitting
the signature" (Spec. ,r 32), therefore, "improving the performance of the
computer." App. Br. 12; see also App. Br. 15-16.
We disagree. As the Examiner points out, "nothing in the claims
recites an improvement to the functioning of a computer itself, or an
'innovation in computer technology .... '." Ans. 14. For example, the
claims generally provide for converting the image, without any specific
details of how the conversion is performed. Compare Enfzsh, LLC v.
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Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016) (claims at issue are
"directed to a specific implementation of a solution to a problem in the
software arts" ( emphasis added)). As such, the broadly claimed process of
converting data from one form to another is not a technological
improvement sufficient to render the claimed invention eligible. See, e.g.,
Digitechimage Techs., LLCv. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014) (finding ineligible claims that take two data sets and
organize this information into a new form and reasoning that using an
algorithm "to manipulate existing information to generate additional
information is not patent eligible."); see also Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343 (Fed.
Cir. 2014); Ans. 14--15 (citations omitted).
We further determine that the claimed converting, storing, and
transmitting steps are merely insignificant extra-solution activity. Namely,
the claimed invention receives, processes, stores and transmits data - this is
merely conventional data gathering and analysis. See MPEP § 2106.05(g);
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
at 13 63 (collecting and analyzing data amounted to mere data gathering).
Moreover, the Specification describes the problem with manual prior
art methods. Specifically, "[ c ]ertifying attendance manually using
traditional paper records [] may be tedious and time consuming, as well as
error prone." Spec. 3. The claimed invention is directed to implementing
this previously manual process through use of a computer. In other words,
the claimed invention merely uses a computer as tool to implement the
previously paper process of certifying attendance, which is a method of
organizing human behavior - an abstract idea. As such, based on the record
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before us, we determine that the claimed invention is not integrated into a
practical application. See, e.g., MPEP § 2106.05(±).
Analysis - Step 2B
We agree with the Examiner that the additional limitations are not
sufficient to amount to significantly more than the abstract idea. See Final
Act. 7. Namely, as the Examiner determines "(i.e., retrieving, processing,
converting, storing, transmitting and outputting data) [] are well-understood,
routine, and conventional activities previously known to the industry." Final
Act. 7 (citing Alice Corp., 134 S. Ct. at 2360, buySAFE, Inc. v. Google, Inc.,
754 F.3d 1350, 1355, and USPTO's July 2015. Update: Subject Matter
Eligibility, page 7 (available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf)); see also, e.g., Content Extraction, 776 F.3d at 1347 (discussing
that data collection, recognition, and storage is well-known); Spec. ,r,r 22,
39, and 42 (identifying a variety of computing devices, along with various
memory, that may perform the claimed invention).
Appellants' argument that the claimed receiving and processing data
adds significantly more to the abstract idea is unpersuasive. See App. Br.
17. Instead, as discussed above, these steps are merely insignificant extra-
solution activity. Namely, the claimed invention receives, processes, stores
and transmits data - this is merely conventional data gathering and analysis.
See MPEP § 2106.05(g); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) at 1363 (collecting and analyzing data
amounted to mere data gathering).
Accordingly, based on the record before us, we are not persuaded of
error in the Examiner's conclusion that the appealed claims are directed to
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patent ineligible subject matter. Therefore, we affirm the Examiner's
decision to reject claims 1, 2, 5-9, 12-16, 19, and 20 as directed to patent
ineligible subject matter.
THE§ 103 REJECTION BASED ON WHITE, ATSUSHI, TERUE, SMITH, AND
JEGOU
Claims 1, 2, 5-9, 12-16, 19, and 20
Based on the record before us, we are not persuaded that the Examiner
erred in finding that claims 1, 2, 5-9, 12-16, 19, and 20 are unpatentable
over White, Atsushi, Terue, Smith, and Jegou.
Appellant contends that the Examiner erred in finding that Atsushi
teaches two prompt steps and certifying attendance in response to each
prompt. App. Br. 23-24. According to Appellant, "in Atsushi a single
signature request is used to confirm the identity of the student and
consequently the student's attendance to a given lecture" in contrast to the
claimed invention "that certifies in response to two prompting steps." App.
Br. 24. Specifically, Appellant argues that claim requires the signature
response to be separate and different from the certification response. App.
Br. 25.
We disagree. As the Examiner points out, the claims do not recite that
the prompting for a signature and prompting for a certification response or
the received responses must be separate or different. Ans. 24--25. For
example, the Specification generally describes providing prompts by
displaying questions or statements "and corresponding options for
responding, may be presented using checkboxes, buttons, radio buttons,
audio or video recordings, or in other suitable form." Spec. ,r 27. Atsushi's
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provided slip prompts the attendee to provide a signature and also prompts
the attendee to respond to the certification statement. Atsushi ,r 6, 17, 25
and Fig. 2. As such, based on the record before us, we are not persuaded of
error in the Examiner's determination that "under the broadest reasonable
interpretation" Atsushi's attendance slip/sheet [renders obvious] both
"'prompting for a signature' and 'prompting for a response to the
certification statement."' Ans. 25.
Accordingly, we affirm the Examiner's decision to reject claims 1, 2,
5-9, 12-16, 19, and 20 as unpatentable over White, Atsushi, Terue, Smith,
and Jegou.
DECISION
We affirmed the Examiner's decision to reject claims 1, 2, 5-9, 12-
16, 19, and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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