Ex Parte Mussman

Patent Trials and Appeals Board

Mar 27, 2019

12822259 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/822,259 06/24/2010
84646 7590
Proactive Patents LLC
955 Garden Park Drive
Ste 230
Allen, TX 75013
03/29/2019
FIRST NAMED INVENTOR
David C. Mussman
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.
052677.0355 5510
EXAMINER
ROTARU, OCTAVIAN
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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):
eofficeaction@appcoll.com
mzarinelli@proactivepatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID C. MUSSMAN
Appeal2018-002355 1
Application 12/822,259
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 7, 8, and 14--20.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to electronic calendars. Spec. ,r 1.
1 The Appellant identifies Open Invention Network as the real party in
interest. App. Br. 2.
Appeal2018-002355
Application 12/822,259
Claim 1 is illustrative:
1. A method of managing electronic calendar appointments,
compnsmg:
receiving, via a computing device, a plurality of identifiers
corresponding to a plurality of users;
receiving, via the computing device, a search period start
date;
receiving, via the computing device, a search period end
date;
receiving, via the computing device, a minimum duration
of consecutive days desired to be identified; and
invoking a non-scheduled period search routine which
comprises
initializing a user index variable (i) to zero,
determining that a plurality of user schedules are to be
evaluated,
incrementing the user index variable (i) by one to indicate
at least one additional user schedule is to be evaluated,
receiving and storing names of the plurality of users,
evaluating the search period start date and the search
period end date for a number of consecutive days during which
the plurality of users do not have any scheduled appointments,
initializing a length variable to zero representing a length
of days and incrementing the length variable by one when one of
the user schedules is identified as not having a scheduled
appointment for the evaluated day,
repeating the non-scheduled period search routine until the
number of consecutive days equals or exceeds the minimum
duration of the consecutive days for at least one of the plurality
of users,
identifying a period of at least one previously evaluated
user's schedule that has a duration of the consecutive days
equaling or exceeding the minimum duration of the consecutive
days and designating this period as a co-period,
creating a co-period array and storing an identified co-
period start date in a first row element of a first row of the co-
period array and storing a co-period end date in a second row
element of the first row of the co-period array, wherein the co-
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period start date and co-period end date indicate a period of time
that equals or exceeds the minimum duration of the consecutive
days and which are within an identified non-scheduled period,
determining the co-period length equals or exceeds the
minimum duration of the consecutive days and setting a zeroth
element of the co-period to a first day of the co-period and a first
element of the co-period to the evaluated day, and
setting a co-period located flag to true to indicate the co-
period will be used as a non-scheduled period for at least one of
the plurality of user schedules.
App. Br. 63---64 (Claims Appendix).
The Examiner rejected claims 1, 7, 8, and 14--20 under 35 U.S.C.
§ 101 as directed to ineligible subject matter in the form of abstract ideas.
We AFFIRM.
ANALYSIS
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
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Application 12/822,259
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
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( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 P.R. 50 (2018).
We tum first to whether the claim recites a judicial exception. The
Examiner finds the claims are directed to "managing electronic calendar
appointments." Final Act. 17. The Examiner also finds the claims are a
mental process. Final Act. 22.
Claim 1 recites steps for
invoking a non-scheduled period search routine ... ,
determining that a plurality of user schedules are to be
evaluated, ...
evaluating the search period start date and the search
period end date for a number of consecutive days during which
the plurality of users do not have any scheduled appointments,
identifying a period of at least one previously evaluated
user's schedule that has a duration of the consecutive days
equaling or exceeding the minimum duration of the consecutive
days and designating this period as a co-period,
creating a co-period array and storing an identified co-
period start date in a first row element of a first row of the co-
period array and storing a co-period end date in a second row
element of the first row of the co-period array, wherein the co-
period start date and co-period end date indicate a period of time
that equals or exceeds the minimum duration of the consecutive
days and which are within an identified non-scheduled period,
determining the co-period length equals or exceeds the
minimum duration of the consecutive days and setting a zeroth
element of the co-period to a first day of the co-period and a first
element of the co-period to the evaluated day, and
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setting a co-period located flag to true to indicate the co-
period will be used as a non-scheduled period for at least one of
the plurality of user schedules."
Because the receiving of information is merely data gathering, the four first
receiving steps, and their "computing device," are insignificant extra-
solution activity. See Manual of Patent Examining Procedure ("MPEP")
§ 2106.05(g). And except for those four steps, each of the steps can be
performed mentally, by a person using their mind along with paper and pen.
For example, "determining that a plurality of user schedules are to be
evaluated" is no more than an evaluation, opinion, or judgment that certain
criteria are met. The step of "evaluating the search period start date and the
search period end date for a number of consecutive days during which the
plurality of users do not have any scheduled appointments" involves making
an observation within the given parameters. The step of "identifying a
period of at least one previously evaluated user's schedule that has a
duration of the consecutive days equaling or exceeding the minimum
duration of the consecutive days and designating this period as a co-period"
is again making an evaluation, opinion, or judgment that certain criteria are
met. A similar analysis is applicable to the remaining limitations cited
above. And, largely consistent with the Examiner's positions, each of these
limitations are steps one would take in managing calendar appointments,
specifically, evaluating existing calendar appointments of multiple users to
make a judgment as to when a common period of a certain length is
availabe. Because each of these steps recited after the data gathering steps
can be performed mentally, the claim is directed to mental processes, which
is a judicial exception. See MPEP § 2106.04(a)(2)(III).
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We next determine whether the claim, in accordance with step (2) of
the Guidance, integrates the the judicial exception into a practical
application. The method does not improve the underlying computer by
analyzing data to managing calendar appointments, because any processor
can be used to execute the claimed method. See Spec. ,r 29 ("any variety of
server architectures may be substituted for the depicted implementation").
In addition, the method is directed to managing calendar appointments
(Spec. ,r 1 ), and as such the claimed method does not improve another
technology. MPEP § 2106.05(a). Because a particular computer is not
required, the claim also does not define or rely on a "particular machine."
MPEP § 2106.05(b ). Further, the method does not transform matter. MPEP
§ 2106.05( c ). Instead, the claim merely gathers, analyzes, and stores data
with respect to time, which is intangible. As such, the method has no other
meaningful limitations (MPEP § 2106.05(e)), and thus merely recites
instructions to execute managing calendar appointments on a computer
(MPEP § 2106.05([)).
Significantly More
Lastly, we determine whether the claim includes additional subject
matter in addition to the abstract idea that is significantly more than the
abstract idea. In accordance with steps (3) and (4) of the Guidance, the only
element in claim 1, beyond the abstract idea of analyzing calendar data, is a
"computing device," which involves only general purpose computer servers
and any communications network. Spec. ,r,r 25-29. The operations of
storing, analyzing, receiving, and writing data are primitive computer
operations found in any computer system. See In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011). Thus, the
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only additional elements beyond the abstract idea are well-understood,
routine, and conventional. See MPEP ,r 2106.05( d).
"[ 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). Here, independent claims 8 and 15 merely
recite a system and medium that comprise "computer-executable instructions
for execution by a processing system," and "storage device," "client device,"
"network," and "server," which execute steps that correspond to the steps of
method claim 1. Independent claims 8 and 15 thus also are directed to
abstract ideas. The Examiner finds the dependent claims are also directed to
abstract ideas. Final Act. 17-19.
Therefore, the claims are directed to abstract ideas, and do not recite
limitations that transform the abstract ideas into eligible subject matter.
Turning now to the Appeal Brief and Reply Brief, we are not
persuaded by the Appellant's argument, citing Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016), that the "customized data fields and
structures" described in the claims and Specification, which may be
implemented on a relational database system on a computer, provides
"something more" than an abstract idea, and "is quite similar to the
subjective content and patentable logic used by the Court in Enfish." App.
Br. 17-19. In Enfzsh, the Court found the self-referential database that was
an improvement on a computerized relational database was an improvement
to computer database technology and was "an improvement to computer
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functionality itself." Enfzsh at 1336. The claims here, which can be
implemented on the relational database Enfzsh improved upon, are not an
improvement in computer functionality, but merely an abstract mental
process to analyze calendar data.
The Appellant argues the operations recited in claim 1 "are not
realistically performed by a human in the absence of a computer." App.
Br. 28. We disagree, because in claim 1 the only use of a "computing
device" is for receiving data "via" the computing device. This, as we
pointed out above, is simply a data gathering step, which is insignificant
extra-solution activity. The remainder of claim 1 does not even recite a
requirement to utilize computer technology, and thus the claim language on
its face can be performed mentally by a human.
The remainder of arguments (App. Br. 28---61) merely repeat the
arguments set forth in pages 15-28 of the Brief, and are unpersuasive for the
same reasons as above.
DECISION
We affirm the rejection of claims 1, 7, 8, and 14--20 under 35 U.S.C.
§ 101.
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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