Ex Parte Malcolm et al

Patent Trial and Appeal Board

Sep 7, 2018

11958270 (P.T.A.B. Sep. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/958,270 12/17/2007
106095 7590 09/11/2018
Baker Botts LLP/CA Technologies
2001 Ross Avenue
SUITE 900
Dallas, TX 75201
FIRST NAMED INVENTOR
Peter Bryan Malcolm
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.
063170.9373 1833
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/11/2018 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):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER BRYAN MALCOLM, JOHN ANTHONY NAPIER,
ANDREW MARK STICKLER, NATHAN JOHN TAMBLIN,
PAUL JAMES BEADLE, and JASON PAUL CROCKER
Appeal2017-002543
Application 11/958,270 1
Technology Center 3600
Before ELENI MANTIS MERCADER, LINZY T. McCARTNEY, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-60. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify CA, Inc. as the real party in interest. App. Br. 4.
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Application 11/958,270
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to an
information management system comprising an analyzer to monitor
outgoing electronic mail messages. See Spec. ,r,r 277-289, Abstract. In a
disclosed embodiment, if the electronic mail address of a recipient is
determined to be associated with the electronic mail address of the sender,
the electronic mail message may be re-directed to a third party. See Spec.
,r,r 277-289.
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
1. An information management system comprising:
an application stored in a memory of a workstation for
transmitting outbound data to a network;
policy data containing rules for determining one or more
particulars of the outbound data, and for controlling the
transmission of said outbound data in dependence on those
particulars, said policy data including a predetermined list of
internet mail domains;
an analyser comprising a processor, said analyser operable
to scan an address of a recipient of an outbound message,
wherein the address comprises an electronic mail address, to
determine:
whether the electronic mail address is associated with an
internet mail domain on the predetermined list of internet mail
domains; and
whether the electronic mail address is associated with a
sender of the outbound message by determining whether the
address of the recipient contains at least one of a surname, a first
name, or initials of the sender of the outbound message; and
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said analyser being further operable to, based upon said
policy data, re-direct the outbound message to a third party in
response to determining that the electronic mail address of the
recipient of the outbound message is associated with the internet
mail domain, and is associated with the sender of the message.
The Examiner's Rejections
1. Claims 1-60 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2-3.
2. Claims 1-60 stand rejected under the doctrine of obviousness-
type double patenting over U.S. Patent No. 9,203,650 ("the '650 patent").
Final Act. 4.
ANALYSIS 2
Rejection under doctrine of obviousness-type double patenting
As the Examiner explains in the Final Office Action, "[a] timely filed
terminal disclaimer ... may be used to overcome an actual or provisional
rejection based on a nonstatutory double patenting ground." Final Act. 4.
Subsequent to the Examiner's Answer, on December 2, 2016,
Appellants filed a terminal disclaimer identifying the '650 patent. See Reply
Br. 2. Accordingly, we summarily reverse the rejections of claims 1---60
under the doctrine of non-statutory obviousness-type double patenting.
2 Throughout this Decision, we have considered the Appeal Brief, filed
May 31, 2016 ("App. Br."); the Reply Brief, filed December 5, 2016
("Reply Br."); the Examiner's Answer, mailed October 5, 2016 ("Ans."); the
Examiner's Supplemental Answer, mailed November 30, 2016 ("Supp.
Ans."); and the Final Office Action, mailed December 1, 2015 ("Final
Act."), from which this Appeal is taken.
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Rejection under 35 USC§ 101
Appellants dispute the Examiner's conclusion that the pending claims
are directed to patent ineligible subject matter. App. Br. 14--29. In
particular, Appellants argue the claims are not directed to patent-ineligible
subject matter, but rather to a specific technological solution to a problem
necessarily rooted in computer technology. App. Br. 15-21. Further,
Appellants assert the claimed solution cannot be performed entirely in the
human mind. App. Br. 22-23. Additionally, Appellants assert the claims
recite significantly more than the abstract idea articulated by the Examiner.
App. Br. 23-29. Appellants also contend the Examiner failed to consider the
different scope of the independent claims or the additional limitations recited
by the dependent claims. App. Br. 17, 26-27.
The Supreme Court's two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. v. CLS Banklnt'l,
134 S. Ct. 2347, 2355 (2014). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 134 S. Ct. at 2355. If so, the
second step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. Alice,
134 S. Ct. at 2355.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception-i.e., an abstract idea. Final Act. 2-3.
Further, the Examiner concludes the claims do not recite significantly more
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than the abstract idea itself. Final Act. 2-3. Accordingly, the Examiner
concludes the claims are not directed to patent-eligible subject matter. Final
Act. 2-3.
Instead of using a definition of an abstract idea, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea."). As part of this
inquiry, we must "look at the 'focus of the claimed advance over the prior
art' to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
Our reviewing court has concluded that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection,
storage, and recognition of data are directed to an abstract idea").
Additionally, the collection of information and analysis of information (e.g.,
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recognizing certain data within the dataset) are also abstract ideas. Elec.
Power, 830 F.3d at 1353-54 ("analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category"). Also,
subsequent to Appellants' filing of their Appeal Brief, and as identified by
the Examiner (see Supp. Ans. 2-3), our reviewing court concluded
"receiving e-mail ( and other data file) identifiers, characterizing e-mail
based on the identifiers, and communicating the characterization-in other
words, filtering files/e-mail-is an abstract idea." Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016). Additionally
the court concluded claims related to "receiving, screening, and distributing
e-mail" were not patent eligible under§ 101. Intellectual Ventures, 838 F.3d
at 1316.
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d
1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another
abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016) ( determining the pending claims were directed to a combination of
abstract ideas).
Here, Appellants' claims are directed to re-directing an electronic mail
message to a third party if it is determined that an electronic mail address of
an intended recipient is associated with the sender of the electronic mail
message. This characterization is consistent for each of the independent
claims. According to the claims, an analysis step determines whether the
address of the electronic mail recipient contains "at least one of a surname, a
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first name, or initials" of the sender. See, e.g., claim 1. If so, the electronic
email message is re-directed to a third party, pursuant to policy data rules.
The claimed scanning of an intended recipient's electronic mail
address to determine if it is associated with the electronic mail address of the
sender is similar to the collection, analysis, and recognition of data ideas that
our reviewing court has concluded to be abstract. See Content Extraction,
776 F.3d at 1347; Elec. Power, 830 F.3d at 1353; Berkheimer v. HP Inc.,
881 F.3d 1360, 1366 (Fed. Cir. 2018). Further, the re-directing of emails
that satisfy the claimed criteria (i.e., whether a recipient's electronic mail
address is associated with the sender based on an analysis of the addresses)
is similar to the abstract ideas filtering, screening, and distributing electronic
mail. Intellectual Ventures, 838 F.3d at 1313, 1316. Accordingly, we
conclude the character as a whole of the claims is directed to an abstract
idea.
Appellants' arguments that the claims are directed to a technical
solution to a problem rooted in computer technology (see App. Br. 18-21)
are also unavailing. As the court in Intellectual Ventures explained, similar
to a corporate mailroom implementing the organization's business
communication policies, the screening of messages "are abstract ideas,
'fundamental ... practice[ s] long prevalent in our system' and 'method[ s] of
organizing human activity."' Intellectual Ventures, 838 F.3d at 1317-18
(quoting Alice, 134 S. Ct. at 2356). Accordingly, we disagree that the
problem is necessarily rooted in computer technology. Rather, "the focus of
the claims is not on ... an improvement to computers, but on certain
independently abstract ideas that use computers as tools." Elec. Power, 830
F.3d at 1354; see also Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
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Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the
required calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed subject
matter.").
Further, Appellants rely on statements from the Specification to
suggest the claims recite specific technological features. See App. Br. 19--
21. "' [T]he main purpose of the examination, to which every application is
subjected, is to try to make sure that what each claim defines is patentable ....
[T]he name of the game is the claim . ... "' In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998) (quoting Giles S. Rich, Extent of the Protection
and Interpretation of Claims--American Perspectives, 21 Int'l Rev. Indus.
Prop. & Copyright L. 497, 499 (1990)). The purported technological
solutions are not recited in the claims.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to "significantly more" than
the abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294, 1297-98 (2012)).
The implementation of the abstract idea involved must be "more than [the]
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (quoting Alice, 134 S. Ct. at 2359) (alteration in original).
Appellants assert the claims recite significantly more than the alleged
abstract idea because the claims recite an unconventional step of re-directing
an electronic email message. App. Br. 23-26. As discussed above, the re-
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directing of the electronic mail message is part of the abstract idea. Further,
the transmitting of data by a computing device (i.e., re-directing of the
electronic mail message) is a conventional activity. See buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer
receives and sends the information over a network-with no further
specification-is not even arguably inventive.").
Further, to the extent Appellants are asserting a lack of rejection under
Section 103 suggests the instant claims do not recite well understood,
routine, or conventional activities or, otherwise, recite an inventive concept
(see Reply Br. 4), we are not persuaded. Subject-matter eligibility under
35 U.S.C. § 101 is a requirement separate from other patentability inquiries.
See Mayo, 566 U.S. at 90 (recognizing that the§ 101 inquiry and other
patentability inquiries "might sometimes overlap," but that "shift[ing] the
patent-eligibility inquiry entirely to these [other] sections risks creating
significantly greater legal uncertainty, while assuming that those sections
can do work that they are not equipped to do"); see also Diamond v. Diehr,
450 U.S. at 188-89 ("[t ]he 'novelty' of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter"); Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) ("[e]ligibility and
novelty are separate inquiries").
Appellants' argument that dependent claim 2 blocks outbound "data"
as opposed to a "message" do not apprise us of error. App. Br. 26-27. The
"block[ing] transmission of the outbound data to the address of the
recipient" does not change the character of the claims (i.e., the abstract idea
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to which they are directed) or recite an invent concept that is significantly
more than the abstract idea.
To the extent Appellants contend the claims are not preemptive (see
App. Br. 15-17) of the abstract idea, we are unpersuaded of Examiner error.
"' [W]hile preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."'
FairWarning IP, 839 F.3d at 1098 (quotingAriosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). Further, "[ w ]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot." Ariosa,
788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 1 under 35 U.S.C. § 101. For similar reasons, we sustain the
Examiner's rejection of independent claims 16, 31, and 46, which recite
similar limitations. Additionally, we sustain the Examiner's rejection of
claims 2-15, 17-30, 32--45, and 47---60, which depend directly or indirectly
therefrom. 3 See 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
3 Appellants only presented arguments regarding dependent claim 2, which
we addressed supra.
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DECISION
We summarily reverse the Examiner's decision rejecting claims 1---60
under the doctrine of nonstatutory double patenting.
We affirm the Examiner's decision rejecting claims 1-60 under
35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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