Ex Parte Mansfield et al

Patent Trial and Appeal Board

Dec 27, 2016

13489210 (P.T.A.B. Dec. 27, 2016)

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.
13/489,210 06/05/2012 Richard J.W. Mansfield 36534-0002001 8399
26161 7590 12/29/2016
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD J.W. MANSFIELD, NISSIM SHANI,
DANIEL SHANI, RONI SHANI, and MICHELE SHANI
Appeal 2014-008256
Applicationl 3/489,2101
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
AMEE A. SHAH, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’
final rejection of claims 1-8, 11, 14, 17-53, 57, and 72. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We Reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 Appellants identify Forget You Not, LLC as the real party in interest.
(Appeal Br. 1).
Appeal 2014-008256
Application 13/489,210
THE INVENTION
Appellants claim a computer-implemented method for “transferring
items from one party to another.” (Spec. para. generally Summary, and
Description).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method comprising:
maintaining, by a computer, information provided by a donor
that specifically identifies or is useful in inferring a transfer item to be
transferred, that specifically identifies or is useful in inferring a
recipient who is to receive the transfer item, and that specifically
identifies or is useful in inferring a transfer time when the transfer
item is to be transferred to the recipient, the information being
maintained until the transfer time,
inferring one or more of the transfer item, the identity of the
recipient, and the transfer time based on (i) information provided by
the donor that does not specifically identify at least one of the transfer
item, the identity of the recipient, and the transfer time, and (ii)
historical data about the recipient, the inferring comprising:
(a) when the transfer item is not specifically identified by
the information provided by the donor, using a predictive
analytical engine to infer the transfer item based on the
information useful in inferring the transfer item and the
historical data about the recipient,
(b) when the identity of the recipient is not specifically
identified by the information provided by the donor, using the
predictive analytical engine to infer the identity of the recipient
based on the information useful in inferring the recipient, and
(c) when the transfer time is not specifically identified by
the information provided by the donor, using the predictive
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Application 13/489,210
analytical engine to infer the transfer time based on the
information useful in inferring the transfer time and the
historical data about the recipient, and
managing, by a computer, a transfer of the transfer item to the
recipient at the transfer time.
(Appeal Br. 34 (Claims App.)).
THE REJECTIONS AND THE EVIDENCE
The Examiner relies upon the following as evidence of
unpatentability:
Krim US 2002/0072925 A1
Yost US 2009/0276284 A1
Weiss US 2011/0099048 A1
Isaacson US 2012/0150740 A1
The interests of the unborn child (Nasciturus), VDV/am/2006, 1-41
(2006) available at http://wikistudent.ws/Unisa (hereinafter “Wikistudent”).
June 13, 2002
Nov. 5, 2009
Apr. 28, 2011
June 14, 2012
The following rejections are before us for review.
Claims 1-8, 11, 14, 17-53, 57, and 72 rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
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Application 13/489,210
Claims 1-8, 11, 14, 17-24, 26—29, 31^43, and 72 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Krim in view of Wikistudent
(page 10), Weiss, and further in view of Yost.2
Claims 25 and 44-53 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krim in view of Wikistudent, Weiss, Yost, and further in
view official notice.
Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Krim in view of Wikistudent, Weiss, Yost, and further in view of
Issacson.
Claim 57 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Krim in view of Wikistudent (page 10) and Weiss.
FINDINGS OF FACT
1. Wikistudent discloses:
[a] Testator may even nominate an unborn or unconceived
person in a Will to inherit even if they would only be bom
generations after his death.
e.g. T dies and bequeaths his farm to his son (S),
subject to the proviso that upon S’s death the farm is
to devolve upon S’s eldest son (GS). . . .
(Wikistudent, p.10).
2 Although the Examiner included claim 25 in the heading for this rejection
(Final Act. 3), the Examiner did not include it in the body of the rejection
{id. at 11).
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ANALYSIS
35 U.S.C. § 112 REJECTION
We will not sustain the rejection of claims 1-8, 11, 14, 17-53, 57, and
72 under 35 U.S.C. § 112 because the Examiner’s concerns go to claim
breadth, and not indefmiteness. “Breadth is not indefmiteness.” In re
Gardner, All F.2d 786, 788 (1970).
35 U.S.C. § 103 REJECTIONS
Each of independent claims 1, 45, 57, and 72, requires in one form or
another:
inferring one or more of the transfer item, the identity of the
recipient, and the transfer time based on (i) information provided by
the donor that does not specifically identify at least one of the transfer
item, the identity of the recipient, and the transfer time, and (ii)
historical data about the recipient, the inferring comprising:
(a) . . . .
(b) ....
(c) .....
(Appeal Br. 34 (Claims App.)).
The Examiner found that Krim discloses all the elements of the
independent claims except for:
inferring one or more of the transfer item, the identity of the
recipient, and the transfer time based on (i) information provided by
the donor that does not specifically identify at least one of the transfer
item, the identity of the recipient, and the transfer time, and (ii)
historical data about the recipient, the inferring comprising:
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Application 13/489,210
(b) . . . .
(c) .....
(Appeal Br. 34 (Claims App.)). See (Final Act. 4-5).
The Examiner thus relies on Wikistudent to meet the claimed shortfall
and found that “Wikistudent discloses inferring the transfer time and the
recipient identity.” (Ans. 5).
Appellants argue:
The cited parts of Wikistudent described a Testator who
“bequeaths his farm to his son (S), subject to the proviso that
upon S’s death the farm is to devolve upon S’s eldest son” (p.
10). Even assuming the time after S’s death was the transfer
time, as the examiner asserts (Action dated January 9, 2014, p.
7) (and which we do not necessarily concede), the cited parts of
Wikistudent did not describe inferring the time after S’s death.
Wikistudent did not describe any inference that was to be made
regarding the transfer time. Rather, the cited parts of
Wikistudent described that the death of S is stated as a proviso
in the Testator’s will.
(Appeal Br. 10).
We agree with Appellants. We find that Wikistudent’s disclosure of
bequeathing a farm to the testator’s son and thereafter to the son’s yet to be
conceived child (FF. 1), while it does disclose identifying the transfer item,
fails to meet the claim requirement of inferring the recipient and/or transfer
time, because neither the time designation or the recipient identity is
inferable because S’s son is yet to be conceived.
The Examiner also found, in the alternative, that elements (a), (b), and
(c) of independent claim 1 are “considered as optional language because if
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Application 13/489,210
the provided information by the donor that specifically identify the transfer
item, the identity of the recipient, and the transfer time, then the ‘inferring’
step by a predictive analytical engine would not happen.” (Final Act. 5).
Appellants argue that:
claim 1 requires that one or more of the transfer item and the
identity of the recipient be inferred. Although it may be
optional whether any particular one of the pieces of
information—the item or the identity—is one of the pieces of
information being inferred, the act of inferring of one or more
of the transfer item and the identity of the recipient is not
optional. An act of inferring must occur.
(Appeal Br. 27).
We agree with Appellants that the act of inferring the one or more
transfer item, the identity of the recipient, and the transfer time occurring
before the claim items (a), (b), and (c) is independent of the claim items (a),
(b), and (c), because the steps at items (a), (b), and (c) cover the one(s) of the
transfer item, the identity of the recipient, and the transfer time that
was/were not inferred above the (a), (b), and (c) items.
Accordingly, we do not sustain the rejection of the independent claims
1,45, 57, and 72.
Since dependent claims 2-8, 11, 14, 17^44, and 46-53 depend from
one of claims 1 and 45, and since we do not sustain the rejections of the
independent claims 1 and 45, we do not therefore sustain the rejections of
the dependent claims 2-8, 11, 14, 17-44, and 46-53.
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NEW GROUND OF REJECTION
We enter a new ground of rejection for claims 1—8, 11, 14, 17—53, 57,
and 71, 54, 55, 58—70, and 72 under 35 U.S.C. § 101 pursuant to 37 C.F.R. §
41.50(b).
The Supreme Court states:
we set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[w]hat else is there in the claims before us?” To answer that
question, 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. We have described
step two 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.”
Alice Corp., Pty. Ltd. v CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012)) (internal citations omitted).
To perform the Supreme Court’s test in Alice, we must first determine
whether the claims at issue are directed to a patent-ineligible concept.
While the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves provide enough
information to inform one as to what they are directed to.
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Application 13/489,210
Exemplary claim 1 recites, “inferring one or more of the transfer item,
the identity of the recipient, and the transfer time based on (i) information
provided by the donor that does not specifically identify at least one of the
transfer item, the identity of the recipient, and the transfer time, and (ii)
historical data about the recipient. ...” Thus, claim 1 is directed to an
inferring process and “inferring”, by definition, means “to involve a normal
outcome of thought.”3
It follows from prior Supreme Court cases, and Gottschalk v. Benson,
409 U.S. 63 (1972), in particular, that the claims at issue here are directed to
an abstract idea. Like the algorithm in Gottschalk, the claimed process of
inferring one or more of the transfer item, the identity of the recipient, and
the transfer time based is a mathematical algorithm that preempts all
implementations and uses. Thus, inferring is an “abstract idea” beyond the
scope of § 101. See Alice, 134 S. Ct. at 2356.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
performing a mathematical algorithm in Gottschalk and the concept of
inferring information from other information. Both are squarely within the
realm of “abstract ideas” as the Court has used that term. See Alice,
3 https://www.memam-webster.com/dictionary/infer (last visited
12/20/2016).
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134 S. Ct. at 2357. See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1360-1361 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two:
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (alterations in original) (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice, 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data and compute a result from a database amounts to
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Application 13/489,210
electronic data query and retrieval—one of the most basic functions of a
computer. All of these claimed computer functions are well-understood,
routine, conventional activities previously known to the industry. In short,
each step does no more than require a generic computer to perform generic
computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ claims simply
recite the concept of inferring information from other information performed
by a generic computer. The method claims do not, for example, purport to
improve the functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than an instruction to apply the
abstract idea of inferring data from other data, in a generic computer. Under
our precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2360.
Accordingly, we enter a new ground of rejection for claims 1-8, 11,
14, 17-53, 57, and 72 under 35 U.S.C. § 101 pursuant to 37 C.F.R.
§ 41.50(b).
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting:
(1) claims 1-8, 11, 14, 17-53, 57, and 72 under 35 U.S.C.
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§ 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which applicant
regards as the invention.
(2) claims 1-8, 11, 14, 17-24, 26—29, 31—43, and 72 under 35
U.S.C. § 103(a) as being unpatentable over Krim in view of
Wikistudent (page 10), Weiss, and further in view of Yost.
(3) claims 25 and 44-53 under 35 U.S.C. § 103(a) as being
unpatentable over Krim in view of Wikistudent, Weiss, Yost, and
further in view official notice.
(4) claim 30 under 35 U.S.C. § 103(a) as being unpatentable
over Krim in view of Wikistudent, Weiss, Yost, and further in view of
Issacson.
(5) claim 57 under 35 U.S.C. § 103(a) as being unpatentable
over Krim in view of Wikistudent (page 10) and Weiss.
DECISION
The decision of the Examiner to reject claims 1-8, 11, 14, 17-53, 57,
and 72 is reversed.
We enter a new ground of rejection for claims 1-8, 11, 14, 17-53, 57,
and 72 under 35 U.S.C. § 101 pursuant to 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
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review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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.
§ 1.136(a)(l)(iv).
REVERSED: 37 C.F.R, $ 41.50(b)
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