Ex Parte McEachern et al

Patent Trial and Appeal Board

Nov 6, 2018

12508640 (P.T.A.B. Nov. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/508,640 07/24/2009
136869 7590 11/08/2018
Wilson Lue LLP/BlackBerry Files
250 University A venue, 5th Floor
Toronto, ON MSH 3E5
CANADA
FIRST NAMED INVENTOR
Donald Kevin McEachern
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.
1679-2037/JLW 8391
EXAMINER
SWEARINGEN, JEFFREY R
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
11/08/2018 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):
docketing@wilsonlue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD KEVIN MCEACHERN and BO ZOU
Appeal2017-001803 1
Application 12/508,6402
Technology Center 2400
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 5-10, 14--16, and 24--31 3 in the Non-Final
Office Action ("Non-Final Act.") mailed February 3, 2016. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed
June 30, 2016), and Reply Brief ("Reply Br.," filed Nov. 15, 2016), as well
as the Examiner's Answer ("Ans.," mailed Sept. 15, 2016).
2 Appellants identify the real party in interest as "BlackBerry Limited" (App.
Br. 3).
3 Claims 2--4, 11-13, and 17-23 have been cancelled (see id. at 14--16,
Claims Appendix).
Appeal2017-001803
Application 12/508,640
STATEMENT OF THE CASE
Claimed Invention
Appellants' "invention relates to the field of communications systems,
and, more particularly, to electronic messaging communications systems and
related methods." Spec. ,r 2.
Claims 1, 10, and 24 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An electronic messaging method comprising:
storing at least one signature field to be included in
electronic messages on a message server in one of a plurality of
different character set formats;
receiving electronic message body text at the message
server to be included in an electronic message for a given
communications network among a plurality of communications
networks, the body text having a respective character set
format;
comparing the character set format of the body text with
the character set format of the at least one signature field and
when the at least one signature field is displayable in the
character set format of the body text, formatting the at least one
signature field in the character set format of the body text,
when the at least one signature field is not displayable in
the character set format of the body text, formatting the body
text and the at least one signature field in a default character set
format that is associated with the given communications
network and is different from the character set format of the
body text, and
transmitting the formatted body text and the formatted at
least one signature field to a recipient communications device
via the given communications network.
App. Br. 14, Claims Appendix.
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Rejections4
The following rejections are before us for review:
Claims 1, 5-10, 14--16, and 24--31 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception without
significantly more. Non-Final Act. 3--4.
Claims 1, 5-10, 14--16, and 24--31 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Greer (US 6,247,048 Bl, iss. June 12,
2001), Ogawa (US 2003/0078982 Al, pub. Apr. 24, 2003), and Rosen (US
2009/0325609 Al, pub. Dec. 31, 2009). Id. at 4--13.
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 566 U.S. 66, 82-84 (2012), "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice,
4 We treat the inclusion of cancelled claim 17 in the statements of rejections
(Non-Final Act. 3, 5; Ans. 2) as inadvertent error.
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134 S. Ct. at 2355. The first step in that analysis is to "determine whether
the claims at issue are directed to one of those patent-ineligible concepts."
Id. If the claims are not directed to a patent-ineligible concept, e.g., to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered "individually
and 'as an ordered combination'" to determine whether there are additional
elements that "'transform the nature of the claim into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. at 66, 78-79). This inventive
concept must do more than simply recite "well-understood, routine,
conventional activity." Mayo, 566 U.S. at 79.
Under Alice step one, "[t]he transcoding of email messages is
determined [by the Examiner] to be an abstract idea, based on the 2014
Interim Eligibility Guidance on Patent Subject Matter Eligibility, as it is
merely the transformation of data ( email content) from one form of
representation ( character set format) to another ( character set format)."
Non-Final Act. 4.
Appellants argue against the Examiner's § 101 rejection of claims 1,
5-10, 14--16, and 24--31 as a single group. See App.Br. 5-10. We select
independent claim 1 as the representative claim for the group, and, thus,
claims 5-10, 14--16, and 24--31 stand or fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv). In particular, Appellants argue the claimed invention is
not directed to an abstract idea, but instead, "directed to a solution that
ensures that message content will be legible at a recipient end of a
communication." App. Br. 6 ("For instance, despite the fact that a message
header may indicate a first character set encoding (e.g., UTF-8), an ISP may
transcode message content to another character set (e.g., IS0-2022-JP) due to
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localization."). Appellants assert "the claimed invention provides for a
system and method for only selectively converting a signature field, or the
signature field and body text, of a message to improve the likelihood that the
entire message will be legible by a recipient when received and displayed at
a recipient device." Id. at 6-7. Although Appellants acknowledge that "the
Examiner did not have the benefit of the updated Office examination
guidance published in May 2016 subsequent to the decision ... in Enfzsh,
LLC v. Microsoft Corp. 5" (id. at 7), they nevertheless argue the Examiner's
characterization of the abstract idea is inadequately supported because it has
not been compared to a concept that courts have identified as an abstract
idea. Id. at 8 ( quoting from May 2016 Office Memo).
As Appellants point out,
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. See, e.g., Elec. Power Grp., 830 F.3d [1350,] 1353-54
[(Fed. Cir. 2016)]. That is the classic common law
methodology for creating law when a single governing
definitional context is not available. See generally Karl N.
Llewellyn, The Common Law Tradition: Deciding Appeals
(1960). This more flexible approach is also the approach
employed by the Supreme Court. See Alice, 134 S. Ct. at 2355-
57. We shall follow that approach here.
Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir.
2016).
To that end, in Novo Transforma Techs., LLC v. Sprint Spectrum L.P.,
No. CV 14-cv-612-RGA, 2015 WL 5156526 (D. Del. Sept. 2, 2015), aff'd,
5 822 F.3d 1327 (Fed. Cir. 2016).
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669 F. App'x 555 (Fed. Cir. 2016), the court considered a claim similar to
Appellants' claim 1, which converted and delivered content. That claim in
Novo recited:
Id.
23. A payload delivery method for providing guaranteed end-
to-end delivery of a payload from a sender to a recipient, said
payload being delivered via one or more communication
networks, comprising the steps of:
generating a payload in a first media;
defining payload delivery parameters by said sender;
converting said payload to an alternative media at
different locations as necessary for completion of delivery of
said payload; and
automatically [ notifying] said sender upon receipt of said
payload by said recipient.
Similarly here, claim 1 is drawn to an electronic messaging method
comprising: ( 1) storing a signature field to be included in electronic
messages in one of a plurality of different character set formats;
(2) receiving body text to be included in an electronic message for a given
communications network having a respective character set format;
(3) comparing the character set format of the body text with that of the
signature field: (a) when the signature field is displayable in the character set
format of the body text,formatting the signature field in the format of the
body text, (b) otherwise,formatting the body text and the signature filed in a
default character set format associated with the given network; and
( 4) transmitting the formatted body text and signature field via the given
communications network.
In Novo, the Specification stated "that the claimed invention addresses
the problem of 'incompatibility between different communication services
employing different media for communicating information."'
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2015 WL 5156526, at *3 (quoting Specification of U.S. Pat. No. 5,826,034).
Here, Appellants' Specification discloses that "the use of different email
protocols, such as character sets, by different email systems may result in
compatibility issues when emails are communicated between the various
systems." Spec. ,r 4.
In determining the abstract idea, the Novo court explained:
Incompatible communication types have existed since
before the emergence of computers and the Internet. Translators
have been used for centuries to facilitate communication
between individuals who speak different languages. The
translator receives a message in one language, translates it into
another, and delivers the translated message. Here, the claims
require a computer system that receives a payload in one media
form, translates it into a different media form, and delivers the
translated payload. This is no different than the function of a
translator.
Novo, 2015 WL 5156526, at *3; accord Messaging Gateway Solutions, LLC
v. Amdocs, Inc., No. CV 14-732-RGA, 2015 WL 1744343, at *4 (D. Del.
Apr. 15, 2015) (receiving a short message service text message, converting it
to an Internet Protocol message, and delivering the converted message
directed to the abstract idea of translation.).
Considering the parallel descriptive nature of Novo, in our view,
claim 1 is directed to storing, receiving, comparing, formatting, and
transmitting data according to rules. See, e.g., Spec. ,r,r 21, 44--4 7, 83. We
determine the concept of formatting data by changing the "character set
format," as recited in claim 1, is substantively similar to the abstract idea of
translating data from one format to another in Novo, a decision affirmed by
the Court of Appeals for the Federal Circuit. Cf Spec. ,r,r 24, 25, 28-30
(Japanese ISPs using IS0-2022-JP character set encoding for emails v. email
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messages in UTF-8). Essentially, our articulation of the abstract idea
comports with Appellants' characterization of the claimed concept as
"directed to a solution that ensures that message content will be legible at a
recipient end of a communication" (App. Br. 6) upon translation from one
format to another.
Furthermore, Appellants' claimed concept is analogous to collecting
and manipulating data, which the Federal Circuit has determined to be an
abstract idea. See, e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1142, 1150 (Fed. Cir. 2016) (claims reciting "[a] method for
converting a hardware independent user description of a logic circuit. .. into
logic circuit hardware components" were "drawn to the abstract idea of:
translating a functional description of a logic circuit into a hardware
component description of the logic circuit"); Broadband iTV, Inc. v.
Hawaiian Telcom, Inc., 669 F. App'x 555 (Fed. Cir. 2016) (unpublished per
curiam mem.) (affirming district court's grant of summary judgement of
invalidity of patent as being directed to patent-ineligible subject matter
directed to nothing more than the abstract idea of translation of a data from
one format to another); Elec. Power, 830 F.3d at 1353-54 (collecting and
analyzing data, and displaying the results of the collection and analysis,
regardless of particular content, is an abstract idea). Examining these past
cases, especially the similar descriptive nature of the concept in Novo, we
see little character difference between "transformation of data ( email
content) from one form of representation (character set format) to another
(character set format)" as proffered by the Examiner (Non-Final Act. 4), and
the abstract idea in Novo. Because we are not apprised of error as to the
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Examiner's determination under Alice step one, we proceed to the second
step in the Alice framework.
Under step two of Alice, the Examiner determines that "a generic
computer is performing a generic computer mathematical function to
transcode email characters between character formats, which is a well-
understood, routine and conventional activity previously known to the
industry. Therefore, the claims as a whole do not recite significantly more
than the exception itself, and are not eligible subject matter." Non-Final
Act. 4.
Appellants do not dispute the Examiner's determination under Alice
step two. Instead, Appellants argue that even if the claims are directed to an
abstract idea, they claim significantly more because the Examiner's
"analysis ignores the combination of claim limitations, and the effect of the
claimed invention as a whole." App. Br. 9-10. Citing the decision in
BASCOM, 6 Appellants contend the claims recite a specific, discrete
implementation of the idea of transcoding emails ... [that] provide[s] a
solution that is a technical improvement over the prior art transcoding of
email. Id. at 10; see also Reply Br. 4. We do not agree.
In BASCOM, the Federal Circuit held that "[t]he inventive concept
described and claimed in the '606 patent is the installation of a filtering tool
at a specific location, remote from the end-users, with customizable filtering
features specific to each end user." 827 F.3d at 1350. The court explained
that the remote location of a filtering tool having customizable user-specific
filtering features provides the filtering tool both the benefits of a filter on a
6 BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016).
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local computer and the benefits of a filter on the ISP server, which is a
technical improvement over prior art ways of filtering content. Id. at 1350-
51. Here, Appellants have not shown any particular arrangement in the
claims as providing an inventive concept.
Indeed, Appellants' claims do not address a problem rooted in
technology. These claims are unlike those in Enfzsh, in which the Federal
Circuit determined the claims eligible because they focused on a specific
software-based improvement to database techniques. Enfzsh, 822 F.3d
at 1335-36. Nor are they like the claims in DDR Holdings,7 "rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks" because those claims required an inventive
device or technique for displaying information. 773 F.3d at 1257. Unlike
DDR Holdings and Enfzsh, receiving and converting messages is not a
problem specifically arising in the realm of computers. Instead, the claims'
character, as a whole, lies in longstanding conduct that exists apart from
computers-i.e., receiving and converting messages and responses. See
Novo, 2015 WL 5156526, at *4. In Appellants' own words, the claimed
invention is "directed to a solution that ensures that message content will be
legible at a recipient end of a communication" (App. Br. 6) to prevent for
example the text of a name from a Japanese character set encoding "being
displayed as garbled or unreadable symbols to the end user." Spec. ,r 24.
Notwithstanding the claims' recitation of generic computing devices
and conventional communications network, the claims uses computers to
receive, compare, and convert messages or data, which is merely the
7 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014).
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application of computers to solve a conventional problem of incompatibility.
For example, the ability to implement the solution using functions normally
performed by general purpose computers indicates the claims are not
"inextricably linked to the operations of computers," and, thus, we are
unpersuaded that they represent advances in computer technology. Further,
although preemption (see App. Br. 10 (''Nor do the claims preempt all ways
of transcoding email messages"), may signal patent-ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). As such, we are unpersuaded the Examiner erred in concluding "the
claims as a whole do not recite significantly more than the exception itself,
and are not eligible subject matter." Non-Final Act. 4.
Accordingly, we are not persuaded for the reasons set forth above that
the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101.
Therefore, we sustain the rejection of claim 1, including claims 5-10, 14--16,
and 24--31, which fall with claim 1.
Obviousness over Greer, Ogawa, and Rosen
On February 3, 2015, in a prior Decision on Appeal, the Board
affirmed the Examiner's decision to reject claims 1-23 under§ 103 as
unpatentable over Greer and Ogawa. See Dec. 6 (Appeal 2012---008607).
Appellants filed a Request for Continued Examination (RCE) on April 3,
2015 in which then pending independent claims 1, 10, and 17 were
amended.
Appellants argue the rejection of independent claims 1, 10, and 24
under 35 U.S.C. § 103(a) as a group. App. Br. 11-12. We select claim 1 as
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representative of this group. Thus, claim 10 and 24 stand or fall with
claim 1. We have considered Appellants' arguments against the Examiner's
rejection of claim 1 as unpatentable over the combination of Greer, Ottawa,
and Rosen, but we are not persuaded of error for the following reasons.
Appellants argue the Greer, Ogawa, and Rosen combination teaches
how to implement a message formatting process that is counterintuitive to
the claimed solution because "an entire message must always be formatted
together." App. Br. 12.
Id.
The cited combination fails to disclose, for example, "when the
at least one signature field is displayable in the character set
format of the body text, formatting the at least one signature
field in the character set format of the body text"; and "when
the at least one signature field is not displayable in the character
set format of the body text, formatting the body text and the at
least one signature field in a default character set format that is
associated with the given communications network and is
different from the character set format of the body text". There
is no basis to conclude that the claimed subject matter of the
independent claims would have been obvious to the skilled
worker, given the contrary teachings presented in the Greer-
Ogawa-Rosen combination.
First, Appellants' argument that both "when" limitations must be
taught by the prior art is unpersuasive because it is not commensurate with
the scope of claim 1. In performing the process of claim 1, the claim only
requires that one of those "when" conditions must be performed because
"the at least one signature field" cannot be both "displayable" and "not
displayable" in the character set format of the body text at the same time.
See Ex Parte Schulhauser, Appeal 2013---007847, 2016 WL 6277792, at *3-
5 (PT AB Apr. 28, 2016) (precedential) (holding that in a method claim, a
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step reciting a condition precedent does not need to be performed if the
condition precedent is not met).
Second, as to Appellants' position that all the cited references require
that an entire message must be formatted together, the Examiner provides
reasoning and citations to the prior art to the contrary. See Ans. 5-7. For
example, the Examiner finds "Rosen disclose[ s] the transcoding of an email
[0108], [0114], where one of the message parts of the email included an
electronic signature [0083]." Id. at 6. In view of the teachings of Greer and
Ogawa with Rosen, "[ o ]ne of ordinary skill would want to format both the
body as in Ogawa and the signature as in Rosen in order to present a
completely reformatted message when necessary." Id. at 7. In the Reply
Brief Appellants do not rebut or dispute these findings, thus, we are not
apprised of error by the Examiner.
Instead, in their Reply Brief, Appellants assert that the Examiner's
obviousness analysis is only possible due to impermissible hindsight
because
[t]here is nothing in the prior art to indicate that the problem
identified by the inventors of this application, which causes
garbling of messages, was identified as a problem to be solved
or that the person skilled in the art would have recognized that
it could be solved in the manner recited in the claims.
Reply Br. 4.
But, contrary to Appellants' assertion, Ogawa discloses that "[i]f the
receiving apparatus receives an incompatible character set, it will not be able
to appropriately display and record characters, creating so-called an
indecipherable garbling (meaningless group of characters)." Ogawa ,r 6.
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It is general practice that the above-described set phrases
are displayed using the pre-registered character sets in the
language native to the country where the apparatus is used. As a
result, an e-mail message sent to a destination having a different
language, e.g., a message is sent to another country, will render
the set phrase attached to the e-mail message indecipherable for
the receiver. For example, when sending an e-mail message
having a set phrase in Japanese to the USA from Japan, many
American will consider the phrase indecipherable; therefore, the
message fails to be understood by the receiver.
Id. ,r 7. Thus, Ogawa aims to solve this problem by providing an email
transmission "method that is able to prevent a garbling at receiving
terminals." Id. ,r 8; see also id. ,r,r 42--44 (describing various conditions for
conversion of data into a character set).
For the foregoing reasons, we are not apprised of error in the rejection
of claim 1 under 35 U.S.C. § 103(a). Therefore, we sustain the rejection of
independent claim 1, including independent claims 10 and 24, which fall
with claim 1. We sustain the rejection of dependent claims 5-9, 14--16, and
25-31 for the same reasons, because Appellants do not separately argue
these claims, and instead rely on the arguments discussed above as to the
independent claims. See App. Br. 13.
DECISION
The Examiner's rejection of claims 1, 5-10, 14--16, and 24--31 under
35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 1, 5-10, 14--16, and 24--31 under
35 U.S.C. § 103(a) is affirmed.
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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