Ex Parte MorinvilleDownload PDFPatent Trial and Appeal BoardNov 22, 201713244561 (P.T.A.B. Nov. 22, 2017) Copy Citation 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. 13/244,561 09/25/2011 Paul V. Morinville IBIGl 100-16 7379 42671 7590 11/22/2017 LAW OFFICES OF MARK L. BERRIER 1715 S. Capital of Texas Hwy. Suite 200-E Suite 200-E AUSTIN, TX 78746 EXAMINER BOYCE, ANDRE D ART UNIT PAPER NUMBER 3623 MAIL DATE DELIVERY MODE 11/22/2017 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 PAUL V. MORINVILLE Appeal 2016-003311 Application 13/244,561 Technology Center 3600 Before DEBRA K. STEPHENS, ADAM J. PYONIN, and DAVID J. CUTITTAII, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) (“Req.”) on October 12, 2017 for reconsideration of our Decision mailed August 31, 2017 (“Dec.”). We have reconsidered the Decision in light of Appellant’s arguments; however, we are not persuaded of any error therein. Appeal 2016-003311 Application 13/244,561 DISCUSSION In the Decision, we affirmed the Examiner’s rejection of the claims pursuant to 35 U.S.C. § 101, stating “we agree with the Examiner that the claims are directed to an abstract idea, and fail to recite inventive concepts sufficient to transform the abstract idea into a patent eligible invention.” Dec. 7 (citing Ans. 4—7); see also Alice Corp. Pty Ltd. v. CLS Bank Int 7, 134 S.Ct. 2347, 2355 (2014) (Describing the two-step framework “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.”). Appellant argues the Board misapprehended and/or overlooked the Examiner’s failure to establish a prima facie case of patent ineligibility. See Req. 4. Specifically, Appellant contends “the Examiner failed to consider the elements recited in each claim, both individually and as an ordered combination,” and the Examiner did not “provide a full development of reasons (rather than a mere conclusion coupled with a boiler plate expression) as to why the recited claim elements are directed to an abstract idea and why the additional elements recited in the claim do not amount to significantly more than the abstract idea.” Id. Appellant does not persuade us of error. We note Appellant does not challenge the analysis of the Board Decision; rather, Appellant’s arguments essentially reiterate the positions of the briefs without identifying specific points that were misapprehended or misunderstood in the Decision, other than to argue “the Board overlooked this failure on the part of the Examiner to meet the burden of establishing a prima facie case of patent ineligibility.” Req. 7; see also, e.g. App. Br. 15—16; Reply Br. 4—6; see also 37 C.F.R. 2 Appeal 2016-003311 Application 13/244,561 §41.52. We disagree. Appellants have been notified of the reasons for the rejection with such information as may be useful in judging of the propriety of continuing the prosecution of the application, as required. See Ans. 4—7; In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (The USPTO carries its procedural burden when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.”); cf. Secured Mail Sols. LLCv. Universal Wilde, Inc., No. 2016-1728, 2017 WL 4582737, at *7 (Fed. Cir. Oct. 16, 2017) (The court “simply concluded from the claims that they were directed to patent-ineligible subject matter.”). Appellants do not persuade us we overlooked an argument that the Examiner failed to establish a prima facie case of patent ineligibility. To the contrary, as set forth in the Decision, the Examiner correctly determined the claimed invention is unpatentable pursuant to the two-step framework of Alice'. The Examiner finds the claimed invention is directed to the abstract idea of “controlling access by a user to a business process,” which is “similar to concepts involving organizing information . .. that have been found by the courts to be abstract ideas.” Ans. 5. The Examiner further finds the “claim(s) does/do not include additional elements that are sufficient to amount to significantly more that the judicial exception” (Final Act. 2), as the claims do not recite “any improvement to another technology or technical field, or the functioning of the computer itself. Moreover, there are not any meaningful limitations beyond generally linking the abstract idea to a particular technological environment, i.e., implementation via a computer system” (Ans. 6). Dec. 4—5; see also Final Act. 2—3, 9—10; Ans. 4—7. 3 Appeal 2016-003311 Application 13/244,561 As set forth in the Decision, we find the Examiner has performed a proper § 101 analysis pursuant to the USPTO guidelines. See, e.g., July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015); May 2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27,381, 27,382 (May 6, 2016). Accordingly, we are not persuaded that we overlooked or misapprehended any points in sustaining “the Examiner’s findings and analysis with respect to 35 U.S.C. § 101.” Dec. 5. DECISION We have granted Appellant’s request to the extent that we have reconsidered our Decision, but we deny the request with respect to making any changes therein. 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). REHEARING DENIED 4 Copy with citationCopy as parenthetical citation