Ex Parte Milman

Patent Trial and Appeal Board

Jul 26, 2017

14225395 (P.T.A.B. Jul. 26, 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.
14/225,395 03/25/2014 David Milman RC001 7658
114977 7590 07/27/2017
James Edward Shultz Jr.
16656 Pine Dunes Court
Grand Haven, MI 49417
EXAMINER
MCATEE, PATRICK
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
07/27/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID MILMAN
____________

Appeal 2015-006545
Application 14/225,3951
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to “managing a distributed
network of sales, service and/or repair operations that include automated
features.” (Spec. ¶ 2.)

1 According to Appellant, the real party in interest is David Milman.
(Appeal Br. 1.)
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Claims 1, 8, and 14 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A computer implemented method for establishing a
client account with a provider, the method comprising:
receiving, at a processor of a computer system, client
personal data, wherein the client personal data is representative
of client personal information;
receiving, at the processor of a computer system, client
device data, from a particular client device via a network adaptor
of the particular client device, wherein the client device data is
representative of a unique identifier of the particular client
device;
generating, using the processor of the computer system,
client subscription data, wherein the client subscription data is
based, at least in part, on the client device data; and
generating, using the processor of the computer system,
client account data, wherein the client account data is based, at
least in part, on the client personal data and the client
subscription data.

REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 112(b) as indefinite.
Claims 8–20 are rejected under 35 U.S.C. § 112(a) for failing to
comply with the written description requirement.
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1–4 and 6–20 are rejected under 35 U.S.C. § 103 as
unpatentable in view of Sanders (US 2002/0143561 A1, pub. Oct. 3, 2002)
and Pelley (US 2009/0132324 A1, pub. May 21, 2009).
Claim 5 is rejected under 35 U.S.C. § 103 as unpatentable in view of
Sanders, Pelley, and Segelstein (US 2003/0135595 A1, pub. July 17, 2003).
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ANALYSIS
The § 112(b) rejection of claims 1–7
The Examiner rejects claim 1 and dependent claims 2–6 as indefinite.
Claims 1–7 recite or incorporate the limitations receiving, at a
processor of a computer system, client personal data...and
receiving, at [the] processor of a computer system, client device
data, recited in claim 1. Claim 1 is indefinite because the
element a computer system is recited twice, and it is not clear
whether the second recitation of a computer system is intended
to introduce a new computer system or whether it refers back to
the first recitation of a computer system. Accordingly,
subsequent recitations of the computer system in claims 1–7 are
rendered ambiguous . . . .

(Final Action 8.)
Appellant argues that “claims 1, 4, 6, 7, 11, 13, 17 and 20” were
amended in response to this rejection. (Appeal Br. 7.) Appellant’s
amendments do not resolve the ambiguity that is the basis for the rejection.
Claim 1 recites: a) “a processor of a computer system,” b) “the
processor of a computer system,” and c) “the processor of the computer
system.” (Claim 1, emphasis added.) We agree with the Examiner that it is
not clear if the reference to “a computer system” in b) is a reference to a
different computer system from that recited in a). And since c) recites “the
computer system,” it is unclear whether the computer system of c) refers to
the computer system of a) or b).
In view of the above, we are not persuaded that the Examiner erred in
rejecting claims 1–7 under § 112(b).
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The § 112(b) rejection of claims 8–20
Claim 8 recites:
8. A computer system for generating and storing client
account data, the computer system comprising:
a client personal data receiving module, stored on a
memory of a central computer system, that, when executed by a
processor of the central computer system, causes the processor
of the central computer system to receive client personal data,
wherein the client personal data is representative of client
personal information;
a client device data receiving module, stored on the
memory of the central computer system, that, when executed by
the processor of the central computer system, causes the
processor of the central computer system to receive, via a central
computer system network adaptor, client device data, from a
particular client device via a particular client device network
adaptor, wherein the client device data is representative of a
unique identifier of the particular client device and wherein the
central computer system network adaptor and the particular
client device network adaptor are communicatively coupled via
a network;
a client subscription data generation module, stored on the
memory of the central computer system, that, when executed by
the processor of the central computer system, causes the
processor of the central computer system to generate client
subscription data, wherein the client subscription data is based,
at least in part, on the client device data;
a client account data generation module, stored on the
memory of the central computer system, that, when executed by
the processor of the central computer system, causes the
processor of the central computer system to generate client
account data, wherein the client account data is based, at least in
part, on the client personal data and the client subscription data;
a client account data storage module, stored on the
memory of the central computer system, that, when executed by
the processor of the central computer system, causes the
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processor of the remote computer system to store the client
account data in a client database.

The Examiner construes these limitations, and similar limitations in
independent claim 14, under § 112(f) (formerly § 112, paragraph 6) because
“they use a generic placeholder ‘module’ coupled with functional language
(e.g., to receive, to generate, to store, to transmit) without reciting sufficient
structure to achieve the function. Furthermore, the generic placeholder is
not preceded by a structural modifier.” (Final Action 4.)
Appellant disagrees and argues that the claims
recite a module (e.g., a client account data generation module, a
client account data storage module, a client user interface
module, a client personal data generation module, a client
personal data transmission module, a user interface module, or a
client personal data generation module) that, when executed by
a processor, causes the processor to perform a function (e.g.,
cause client device data to be received by a processor from a
particular client device). Accordingly, Appellant submits that
claims 8, 10, 13, 14, 16 and 18 recite sufficient definite structure
(e.g., a processor) and acts (e.g., executing the respective
module) to perform a particular function.
Moreover, paragraphs [0045] and [0050], for example, of
the originally filed application describes [sic] that the methods
200 and 300, respectively, may be implemented, at least in part,
by any one of the processors 107, 115, 122, 134, 149, executing
a respective set of computer-readable instructions stored thereon.

(Appeal Br. 6.)
A claim term that does not use “means” triggers a rebuttable
presumption that the term should not be construed under § 112(f). Media
Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1371 (Fed.
Cir. 2015). But this presumption may be overcome if “the claim term fails
to ‘recite sufficiently definite structure’ or else recites ‘function without
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reciting sufficient structure for performing that function.’” Id. at 1371–72
(citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349–50 (Fed. Cir.
2015)).
“‘Module’ is a well-known nonce word that can operate as a substitute
for ‘means’ in the context of § 112, para. 6.” Williamson, 792 F.3d at 1350.
Here, as in Williamson, “the word ‘module’ does not provide any indication
of structure because it sets forth the same black box recitation of structure
for providing the same specified function as if the term ‘means’ had been
used.” Id.
Appellant directs us to paragraphs 45 and 50 of the Specification.
(Appeal Br. 6.) Paragraphs 45 and 50 discuss Figures 2 and 3, respectively,
of the Specification. (See Spec. ¶¶ 45, 50.) Figure “2 depicts a flow
diagram of an example method for remotely establishing a dialog between a
provider and a client” (id. ¶ 20) and Figure “3 depicts a flow diagram of an
example method for remotely authenticating an identity of a client device”
(id. ¶ 21). In short, Appellant’s argument appears directed to showing that
corresponding structure is disclosed in the Specification. However,
Appellant does not persuasively argue why these portions of the
Specification show that the claim limitations should not be construed under
§ 112(f). Therefore, we are not persuaded that the Examiner erred in
construing the above claim limitations in independent claims 8 and 14 under
§ 112(f).
Next, the Examiner determines that the claim limitations “a client
subscription data generation module . . . to generate client subscription data”
and “a client account data generation module . . . to generate client account
data” both “recite specialized computer functions. As such, a disclosure of
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an algorithm to perform these functions and to transform a general purpose
computer into a special purpose computer is required. The specification
does not provide an adequate description of an algorithm to support these
functions . . . .” (Final Action 5.) Moreover,
because the originally-filed disclosure does not describe the
algorithm or steps that would transform a general purpose
computer into a special purpose computer, the functional claim
limitations above amount to unbounded, purely functional
limitations for which a person having ordinary skill in the art
could not ascertain the metes and bounds. In other words, a
person having ordinary skill in the art would not be able to
determine whether or not their computer performing the same
functions infringes the claimed computer because it is not
possible to ascertain whether the computer is programmed with
the same algorithm or its equivalents. As such, claims 8–20 are
indefinite because the scope of the claims based on the functional
claim limitations cannot be determined.

(Id. at 9.)
Appellant again argues with regard to paragraphs 45 and 50 of the
Specification. Specifically, Appellant argues that the methods shown in
Figures 2 and 3 “may be implemented, at least in part, by any one of the
processors 107, 115, 122, 134, 149, executing a respective set of computer-
readable instructions stored thereon and associated with managing
distributed sales, service and repair operations 109, 117, 124, 136, 151.”
(Appeal Br. 7.)
Means-plus-function claiming under § 112(f) “involves a quid pro
quo.” Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1318 (Fed. Cir. 2012).
In exchange for being able to draft a claim limitation in purely
functional language, “[t]he applicant must describe in the patent
specification some structure which performs the specified
function.” Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d
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1039, 1042 (Fed. Cir. 1993). And, importantly, the functional
claim language covers only “‘the corresponding structure,
material, or acts described in the specification and equivalents
thereof.’” Id. (quoting § 112 ¶ 6).

Noah Sys., 675 F.3d at 1318. “[T]he disclosure must identify the method for
performing the function, whether or not a skilled artisan might otherwise be
able to glean such a method from other sources or from his own
understanding. That various methods might exist to perform a function is
‘precisely why’ the disclosure of specific programming is required.” Id. at
1317 (citations omitted). If, for a claim term that invokes § 112(f), “we are
unable to identify any ‘corresponding structure, material, or acts described in
the specification,’ the claim term is indefinite.” Robert Bosch, LLC v. Snap-
On Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014) (citing Noah Sys., 675 F.3d at
1312).
“In cases such as this one, involving a special purpose computer-
implemented means-plus-function limitation, ‘this court has consistently
required that the structure disclosed in the specification be more than simply
a general purpose computer or microprocessor.’ We require that the
specification ‘disclose an algorithm for performing the claimed function.’”
Noah Sys., 675 F.3d at 1312. Even “where a disclosed algorithm supports
some, but not all, of the functions associated with a means-plus-function
limitation, we treat the specification as if no algorithm has been disclosed at
all.” Id. at 1318. And when a specification discloses no algorithm
corresponding to a computer-enabled means-plus-function limitation in a
claim, the applicant has necessarily failed to particularly point out and
distinctly claim the invention as required by the second paragraph of section
112. See Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d
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1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d
1241, 1249 (Fed. Cir. 2005) (“‘[T]he corresponding structure for a § 112 ¶ 6
claim for a computer-implemented function is the algorithm disclosed in the
specification.’”).
In this case, Appellant does not point to sufficient structure/algorithms
in the Specification to support the functions associated with at least the
“client subscription data generation module” and the “client account data
generation module” limitations of claims 8 and 14. Therefore, we are not
persuaded that the Examiner erred in rejecting independent claims 8 and 14,
and dependent claims 9–13 and 15–20, as indefinite.

The § 112(a) rejection of claims 8–20
The Examiner finds, at least with regard to the claim limitations “a
client subscription data generation module . . . to generate client subscription
data” and “a client account data generation module . . . to generate client
account data,” which “have been interpreted under § 112(f),” that “[t]he
disclosure of the algorithm is necessary to meet the written description
requirement because the steps or algorithm that transform a general purpose
computer into a special purpose computer must be shown so that one of skill
in the art would know what Applicant possessed at the time of the
invention.” (Final Action 7.)
Appellant disagrees and argues that “paragraphs [0045] and [0050],
for example, of the originally filed application describes [sic] that the
methods 200 and 300, respectively, may be implemented, at least in part, by
any one of the processors 107, 115, 122, 134, 149, executing a respective set
of computer-readable instructions stored thereon.” (Appeal Br. 6.)
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Appellant further argues that “[t]he sets of computer-readable instructions
109, 117, 124, 136, 151 are each referred to as a ‘module’ throughout
various portions of the originally filed application.” (Id. at 6–7.)
Section 112, sixth paragraph (now § 112(f)), “does not itself implicate
the requirements of § 112 ¶ 1 [now § 112(a)]. Paragraph 1 provides the
requirements for what must be contained in the written description
regardless of whether the claims are written in means-plus-function form or
not.” In re Dossel, 115 F.3d 942, 946 (Fed. Cir. 1997).
In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec
verba support for the claimed subject matter at
issue. Nonetheless, the disclosure must . . . convey with
reasonable clarity to those skilled in the art that . . . [the inventor]
was in possession of the invention. Put another way, one skilled
in the art, reading the original disclosure, must immediately
discern the limitation at issue in the claims.

Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000)
(citations omitted, alterations in original). In this case, the Examiner finds
that disclosure of an algorithm is necessary to “know what Applicant
possessed at the time of the invention.” (See Final Action 7.)
Appellant does not persuasively argue either that the disclosure of an
algorithm is not necessary to meet the written description requirement in this
case or that an algorithm is disclosed with regard to at least the “client
subscription data generation module” and the “client account data generation
module” limitations of claims 8 and 14. Therefore, we are not persuaded
that the Examiner erred in rejecting independent claims 8 and 14, and
dependent claims 9–13 and 15–20, under § 112(a).
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The § 101 rejection
Claims 1–20 are rejected under § 101. The Examiner determines that
“the claims are directed towards the concept of exchanging and storing data
using computers.” (Final Action 10.) The Examiner concludes that
“[e]xchanging and storing data using computer in the claimed invention is
merely a fundamental economic practice and an idea of itself. Therefore, the
claims are drawn to an abstract idea.” (Id.)
Appellant argues that
[b]ecause the client device data is received by a processor from
a particular client device as opposed to, for example, a human
manually entering the client device data, a service provider
computer may automatically uniquely identify a client computer
and associate the unique client computer with an account. See,
e.g., paragraphs [0037], [0047] and [0050], along with Fig. 3, of
the originally filed application. Thereby, a client is prohibited
from obtaining a subscription for one client device and, unjustly,
get another client device serviced.

(Appeal Br. 7–8.)
In determining if a claim is directed to patent-ineligible subject
matter, we look for guidance in the Supreme Court decision Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part
framework, earlier set out in Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66 (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, 134 S. Ct. at 2355.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
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are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second part of the framework is applied to determine if “the
elements of the claim . . . contain[] an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.” Id.
at 2357 (citing Mayo, 566 U.S. at 72–73, 79).
In this case, Appellant does not argue that the Examiner erred in
determining that the claims are directed to an abstract idea. (See Appeal
Br. 7–8.) Rather, Appellant appears to argue under part two of the Alice
framework that the claims contain an inventive concept sufficient to
transform the abstract idea into patent-eligible subject matter.
Part two of the Alice framework has been described “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, 134 S. Ct. at 2355
(citing Mayo, 566 U.S. at 72–73).
Appellant argues, but does not explain why, a human manually
entering client device data would be unable to identify the source of the data,
i.e., the client computer, and identify it with an account. Although we agree
that the claims recite the use of a processor, the claims “do not require an
arguably inventive set of components or methods, such as measurement
devices or techniques.” Alice Corp., 134 S. Ct. at 2357. The introduction of
a computer/processor into the claims does not alter the analysis at step two.
[T]he 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.’”
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Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result.

Id. at 2358 (citations omitted). Taking the claim elements separately, the
function performed by the processor at each step of the process is purely
conventional. Considered as an ordered combination, the computer
components of Appellant’s method add nothing that is not already present
when the steps are considered separately.
In view of the above, we are not persuaded that the Examiner erred in
rejecting the claims under § 101.

The § 103 rejections
The Examiner finds that Sanders discloses
receiving, at the processor of a computer system, client device
data [. . .] wherein the client device data is representative of a
unique identifier of the particular client device; [the customer
submits a service order to the servicing company website by
submitting order data, which is stored (¶ 0006), where Figures
5A–5C show web pages for the customer to order a service that
includes fields for the user to submit customer device data,
include a unique identifier of a customer’s device such as a
specific number assigned to the device by the customer or the
manufacturer’s serial number (¶ 0041–43, describing Figures 5A
and 5B[)].]

(Final Action 12.)
The Examiner additionally finds that Pelley discloses “receiving, at
the processor of a computer system, client device data, from a particular
client device via a network adaptor of the particular client device.” (Id.
at 13.) Based on this, the Examiner determines that
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it would have been obvious to a person having ordinary skill in
the art before the effective filing date of the claimed invention to
receive the client device information by the service computer
system, as disclosed by Sanders, from the client device via a
network adapter of the client device, as taught by Pelley.

(Id. at 14.)
Appellant disagrees and argues that “Sanders does not disclose or
suggest receiving data related to an item from the item itself. In fact,
Sanders does not disclose or suggest any mechanism by which data related
to an item can be received from the item itself.” (Appeal Br. 9.) But the
Examiner does not rely on Sanders for a disclosure of receiving data related
to an item from the item itself. The Examiner relies on Sanders for its
disclosure of a user submitting customer device data. (See Final Action 12.)
The Examiner relies on Pelley for its disclosure of receiving data from a
client device via a network adaptor of that device. (Id. at 13.) Therefore,
this argument is not persuasive of error.
Appellant next argues that “Pelley does not disclose or suggest
generating client subscription data based on the client device data or
generating client account data based on the client subscription data and
client personal data.” (Appeal Br. 10.) But the Examiner relies on Sanders,
not Pelley, as disclosing these limitations. (See Final Action 12.) Therefore,
this argument is not persuasive of error.
Appellant next argues that “[e]ven if the cited references could be
combined to produce the claimed invention (a proposition to which
Appellant does not concur), at the time of the invention, there was no
teaching, suggestion or motivation to modify or combine the cited references
to produce the claimed invention.” (Appeal Br. 10.)
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In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420–21 (2007), the
Supreme Court stated:
Under the correct analysis, any need or problem known in the
field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the
manner claimed.
. . .
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.

Additionally, “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. at 416.
The Examiner determined, and we agree, that
the combination of Sanders in view of Pelley is merely a
combination of prior art elements according to known methods
to yield predictable results. The prior art references cited above
. . . clearly establish that it was known in the art to both provide
specific kinds of device data to a service company and that the
specific kinds of device data claimed by applicant were known
to be used when associating customer devices with service
subscriptions or requests. As such, it would have been obvious
to person [sic] having ordinary skill in the art to collect any data
associated with the device being submitted for service using any
available communication channel, because this is merely
combining a known data-submitting and storing step with known
types of data. A person having ordinary skill in the art could
have easily made this combination using the same data
transmission and storage techniques disclosed by Sanders, and
therefore the results would have been . . . attainable, obvious, and
. . . predictable.
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(Final Action 14–15.) Appellant does not persuasively argue why the
Examiner erred in determining that the combination of Sanders and Pelley is
simply a combination of familiar elements according to known methods that
produced a predictable result. Therefore, we are not persuaded that the
Examiner erred in combining Sanders and Pelley or in rejecting claim 1
under § 103.
Independent claims 8 and 14 contain similar language and Appellant
makes similar arguments. (See Appeal Br. 12–14.) Therefore, for similar
reasons we are not persuaded that the Examiner erred in rejecting claims 8
and 14, and dependent claims 2–7, 9–13, and 15–20, which are not
separately argued, under § 103. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s other arguments have been considered but are not
persuasive of error.
DECISION
The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 112(b)
are affirmed.
The Examiner’s rejection of claims 8–20 and 14–18 under 35 U.S.C.
§ 112(a) is affirmed.
The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103 are
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)(1)(iv).

AFFIRMED