Ex Parte Menezes

Patent Trial and Appeal Board

Jan 31, 2017

11741429 (P.T.A.B. Jan. 31, 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.
11/741,429 04/27/2007 Clive D. Menezes 140846-005100US 2974
127406 7590 02/02/2017
Phamherlain HrHlioka
EXAMINER
Halliburton Energy Services, Inc. GILKEY, CARRIE STRODER
1200 Smith St., 14th Floor
Houston, TX 77002 ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
Patents @ chamberlainlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLIVE D. MENEZES
Appeal 2015-0027851
Application 11/741,429
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1, 36, 37, 58—63,
98, and 99. We have jurisdiction to review the case under 35 U.S.C. §§ 134
and 6.
The invention relates generally to the acquisition and enforcement of
patent rights. Spec. para. 1.
1 The Appellants identify Halliburton Energy Services as the real party in
interest. Appeal Br. 3.
Appeal 2015-002785
Application 11/741,429
Claim 1 is illustrative:
1. A method comprising:
obtaining an equity interest in a software patent property
developed by a third party, the patent property being selected
from a group of patent properties consisting of a patent, a patent
application, and intellectual property embodied in a patent
application as it is being prepared and before it is filed;
determining the identity of a second party that has a
product that is within the scope of the patent property;
performing research, using a computer programmed to
perform the research pursuant to instructions from program
software, to convert a first unobservable aspect of the product of
the second party to an observable aspect, the first unobservable
aspect being an aspect of the product that the second party
intends to keep secret;
making an inference about a second unobservable aspect
of the product of the second party, the second unobservable
aspect being an aspect of the product that the second party
intends to keep secret;
writing a claim within the scope of the patent property to
cover the product of the second party including the first
unobservable aspect that has been converted to an observable
aspect and the inference about the second unobservable aspect;
filing the claim with a patent office;
prosecuting the claim in the patent office until a
prosecuted claim issues, thereby transforming the product of the
second party from one that is not covered by a patent within the
scope of the patent property to one that is covered by a patent
within the scope of the patent property;
offering a license of the prosecuted claim to the second
party; and attempting to obtain a monetary settlement from the
second party based on the assertion of infringement of the claim.
Claims 1, 36, 37, 58—63, 98, and 99 are rejected under 35 U.S.C.
§ 101 as reciting ineligible subject matter.
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Application 11/741,429
Claims 1, 36, 37, 58—63, 98, and 99 are rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement because of new matter.
Claims 1, 36, 37, 58—63, 98, and 99 are rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite.
Claims 1 and 37 are rejected under 35 U.S.C. § 103(a) as unpatentable
over John P. Costello, Using Patent Publication Laws to Your Advantage
Regarding the Exploitation of Trade Secrets (2005), retrieved from
http ://www. sacramentopatentattomey. com/Briefs-Articles/using-patent-
publication-laws.pdf (last viewed Jan. 6, 2017) (hereinafter “Costello”),
Paula Samuelson, Reverse-engineering someone else's software: is it legal?,
IEEE Software, vol. 7, iss. 1 (Jan. 1990) (hereinafter “Samuelson”), and Lisa
Lerer, Meet the Original Patent Troll, IP Law & Business, July 20, 2006
retrieved from http://www.law.com/jsp/law/LawArticleFriendly.jsp?id=l
153299926232 (hereinafter “Lerer”).
Claims 36 and 59-62 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Costello, Samuelson, Lerer, and the USPTO web site,
http://www.uspto.gov (hereinafter “USPTO”).
Claim 58 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Costello, Samuelson, Lerer, and Some Ways to Help You Stay on the Internet
Island: Trick is to Place Your Business at the Top of a Completed Search,
National Post, Toronto, Canada, p. C7 (July 13, 2000) (hereinafter
“National”).
Claims 63, 98, and 99 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Costello, Samuelson, Lerer, USPTO, and Carl Shapiro,
Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-
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Application 11/741,429
Setting, University of California at Berkeley (May 4, 2000) (hereinafter
“Shapiro”).
We AFFIRM.
ANALYSIS
Rejection under 35 U.S.C. §101
We are not persuaded by Appellant’s argument that the claims recite
“significantly more than just an abstract idea,” specifically in the language
about performing research with a “significantly improved” computer. Reply
Br. 2.
Independent method claim 1, as well as independent method claims
37 and 63, merely recite steps to organize human activity in the realm of
securing and enforcing patent rights. Claim 1, for instance, recites obtaining
a financial equity in an intellectual property right, doing research to acquire
information about other parties and products, securing additional intellectual
property rights, and using the rights as leverage for financial gain.
Independent claims 37 and 63 recite similar steps. The dependent claims
primarily concern refinements to the steps of searching for party
information. The claims, thus, primarily concern organizing human activity,
and concern abstract ideas.
The patent statute provides that a patent may be obtained for “any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof.” 35 U.S.C. § 101. Yet the Supreme
Court has “long held that this provision contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
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Application 11/741,429
(2014) (quoting Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 133
S. Ct. 2107, 2116 (2013)). The Court has, thus, made clear that
“[phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67
(1972).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of these concepts.” Alice, 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 so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether the additional elements “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 132
S. Ct. at 1291, 1297). In other words, the second step is to “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. (citing Mayo, 132 S.
Ct. at 1294).
The only step in any of the claims involving a computer is for
“performing research ... to convert a first unobservable aspect of the
product of the second party to an observable aspect.” This language does
not require any more than using the computer for simple communication or
recording, and in a broad reading of the claims could stand for nothing more
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Application 11/741,429
than insignificant extra-solution activity in the form of basic data input or
output.
The Federal Circuit has held that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under § 101.”). Additionally, mental processes, e.g.,
doing research, as recited in claim 1, remain unpatentable even when
automated to reduce the burden on the user of what once could have been
done with pen and paper, such as reading about a product. Id. at 1375
(“That purely mental processes can be unpatentable, even when performed
by a computer, was precisely the holding of the Supreme Court in
Gottschalkv. Benson, [409 U.S. 63 (1972)].”).
Appellant asserts that without the computer-operated step “the entire
claimed method would not be possible as there would be no way to convert
the unobservable aspect into an observable aspect.” Reply Br. 2. We
disagree. First, no definition of “unobservable” is set forth in Appellant’s
Specification, which merely states that unobservable aspects “would also be
classified as secret aspects.” Spec. para. 26. The ordinary and customary
meaning of “unobservable” is “undiscemible.” Merriam-Webster Online
Dictionary, retrieved from https://www.merriam-
webster.com/dictionary/observable (last viewed Jan. 9, 2017). To “discern”
is “to detect with the eyes,” or “to detect with senses other than vision.”
Merriam-Webster Online Dictionary, https://www.merriam-
webster.com/dictionary/discemible (last viewed Jan. 9, 2017).
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Application 11/741,429
The claim, thus, requires detection of something secret that cannot be
detected, and conversion into something that can be detected.2 One way this
could be done would be using a computer to spy, or take other steps of
industrial espionage, such as purchasing insider information, to detect
secrets that cannot be detected by directly observing a product. That may
involve reading or watching, such as through a video feed or eavesdropping
device, or using the computer as a communications portal, such as to interact
with a person with knowledge of the product. In this broad interpretation of
the claim language, the computer is merely an input-output device to a
purely abstract, mental process.
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, the claim must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself.
Claim 1, at best, adds only “using a computer programmed to perform
the research pursuant to instructions from program software,” which is
merely a statement that computers operate under software instructions.
“[A]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible. The
bare fact that a computer exists in the physical rather than purely conceptual
realm is beside the point.” DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations and quotation marks
omitted).
2 We ignore for now whether observing the unobservable is indefinite.
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Nothing in the claims purports to improve computer functioning or
“effect an improvement in any other technology or technical field.” Alice,
134 S. Ct. at 2359. The claims also are not adequately tied to “a particular
machine or apparatus.” Bilski v. Kappos, 561 U.S. 593, 601 (2010).
Because the claims are directed to an abstract idea and nothing in the
claims adds an inventive concept, the claims are not patent-eligible under
§ 101. Therefore, we sustain the Examiner's rejection of claims 1, 36, 37,
58—63, 98, and 99 under 35 U.S.C. § 101.
Rejections under 35 U.S.C. § 112, First Paragraph
The Examiner bases the new matter rejection of all claims on two
different claim phrases, asserting the Appellant did not have possession of
the invention represented by the amended claim language, at the time of
filing, first as to acquiring an interest in a software patent, and second as to
using a computer to convert an unobservable aspect to an observable aspect.
Final Act. 2—6.
We are persuaded by Appellant’s argument that at least paragraph 8 of
the Specification shows possession, in stating that “if a party provides a
web-based service that uses software that runs on the party’s computers, the
party may intend for the operation of the software to be secret.” Appeal
Br. 14, citing Spec. para. 8. Because the party providing a web-based
service is a potential target against which to enforce patent rights under the
scope of the claims, this statement makes clear that software patents are
within the scope intended by the claim language.
We are not, however, persuaded by Appellant’s argument that,
because paragraph 8 envisions application to a web-based software product
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Application 11/741,429
of another party, the claimed research “necessarily” includes the use of a
computer. Appeal Br. 14. As we noted above, other methods to learn about
undetectable aspects of a product also include activities such as industrial
espionage, which does not necessarily require the user of a computer.
We are also not persuaded by Appellant’s argument that the
Declaration of Marsh demonstrates support in the Specification for the new
claim language about using a computer for researching unobservable aspects
of a product, using reverse engineering software. Appeal Br. 16. This
would require us to believe that the ordinary artisan, reading Appellant’s
original claims and Specification, which provide no guidance on how to
convert the unobservable into the observable, would have known that the
claims encompass the use of reverse engineering of software, which is a
process so complex that it “would necessarily require a computer device as
claimed.” Id. We do not so believe.
In support of the claim limitation “performing research, using a
computer programmed to perform the research pursuant to instructions from
program software, to convert a first unobservable aspect of the product of
the second party to an observable aspect,” in claims 1,37, and 63, Appellant
directs us to paragraphs 26, 32, and 33 of the Specification. Appeal Br. 7, 9,
11. Paragraphs 32 and 33 concern researching a party, and the only relevant
statement in paragraph 26 is as follows: “The first party may research the
product of the second party to a reasonable extent to convert as many
unobservable aspects to observable aspects as possible.” Spec. para. 26.
This statement does not disclose or suggest using reverse engineering
techniques, and, thus, does not require the use of a computer.
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We, thus, agree with the Examiner that performing research using a
programmed computer was not a concept the ordinary artisan would
recognize the Appellant was in possession of at the time of invention.
For this reason we sustain the rejection of all claims under 35 U.S.C.
§112, first paragraph.
Rejection under 35 U.S.C. § 112, Second Paragraph
The Examiner asserts the claims are indefinite because the program
for performing the research about unobservable aspects of software is not
described in the Specification, and therefore the ordinary artisan would not
know the metes and bounds of such a claimed program. Final Act. 7; see
also Answer 14.
We are persuaded by Appellant’s argument that the ordinary artisan
would understand what is meant by the “computer programmed to perform
the research.” Appeal Br. 19.
The Examiner confuses breadth with indefmiteness. The ordinary
artisan does not need to know details about Appellant’s software to
understand that what is being claimed is using a computer to perform
research, using any available methods.
For this reason, we do not sustain the rejection of claims under 35
U.S.C. § 112, second paragraph.
Rejections under 35 U.S.C. § 103(a)
Claims 1 and 3 7
Appellant argues independent claims 1 and 37 together as a group, so
we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
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We are not persuaded by Appellant’s argument that there is no
motivation to combine Lerer with Costello3. Appeal Br. 21. The Examiner
explicitly advances a motivation for the combination, in that “this would
provide a manner for profiting from a patent, thus aiding the client by
enabling him to operate at a profit (Lerer, paragraph 1).” Final Act. 16.
Appellant does not advance any argument in response to this finding, other
than the mere assertion that there is no motivation to combine.
We are not persuaded by Appellant’s argument that Costello “teaches
away” from Lerer, “because Costello requires filing by the first party after
reverse engineering of a product.” Appeal Br. 21. “A reference may be said
to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citations and
internal quotation marks omitted). See also In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (noting that merely disclosing more than one
alternative does not teach away from any of these alternatives if the
disclosure does not criticize, discredit, or otherwise discourage the
alternatives). Costello does not discuss Lerer’s concept of purchasing a
previously-identified patent interest from another party, and, thus, could not
discourage one from Lerer’s approach.
Appellant continues that Costello does not disclose what the Examiner
finds in Lerer, such that the combination also fails to disclose the concepts
recited in claim 1. Appeal Br. 22—23. We are unpersuaded by Appellant’s
3 The Examiner actually combines Lerer with the previously-established
combination of Costello and Samuelson. See Final Act. 13—16.
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argument, because Lerer discloses the items Appellant argues are missing
from Costello. Appellant, thus, argues references individually when the
obviousness rejection is based on a combination of references.
For these reasons, we sustain the rejection of claims 1 and 37.
Claims 36 and 58—62
Appellant argues claims 36 and 58—62, which depend, directly or
indirectly, from independent claims 1 and 37, only by asserting that the
additional references relied upon by the Examiner in the rejections of these
claims do not “remedy” the alleged shortcomings in Costello, Samuelson,
and Lerer. Appeal Br. 23—24. Because we find no shortcomings in the
combination of Costello, Samuelson, and Lerer, as we established above at
claim 1, we sustain the rejections of claims 36 and 58—62.
Claims 63, 98, and 99
Appellant argues the rejection of independent claim 63 using
arguments that are essentially identical to those advanced at claim 1, with
the addition of the assertion that Shapiro fails to remedy the alleged
shortcomings in the rejection of claim 1. Appeal Br. 24—27. We find the
arguments unpersuasive for the same reasons we explained above at claim 1.
For this reason, we sustain the rejection of claim 63. We also sustain the
rejection of claims 98 and 99 for which no specific arguments were
advanced.
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Application 11/741,429
DECISION
We affirm the rejection of claims 1, 36, 37, 58—63, 98, and 99 under
35 U.S.C. § 101.
We affirm the rejection of claims 1, 36, 37, 58—63, 98, and 99 under
35 U.S.C. § 112, first paragraph.
We reverse the rejection of claims 1, 36, 37, 58—63, 98, and 99 under
35 U.S.C. § 112, second paragraph.
We affirm the rejection of claims 1, 36, 37, 58—63, 98, and 99 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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