Ex Parte Oral et al

Patent Trial and Appeal Board

Jan 31, 2018

11608682 (P.T.A.B. Jan. 31, 2018)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/608,682 12/08/2006 Tolga Oral CAM920060108US1 (160) 9780
46321 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOLGA ORAL, SERGEI R. LANDAR, and
ANDREW L. SCHIRMER
Appeal 2016-002299
Application 11/608,6821
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE2
Appellants filed a Request for Rehearing (hereinafter “Request”)
dated December 11, 2017, seeking reconsideration of our Decision, mailed
1 According to Appellants, the real party in interest is International Business
Machines Corporation (Appeal Br. 2).
2 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
June 15, 2015) and Reply Brief (“Reply Br.,” filed Dec. 16, 2015), and the
Examiner’s Final Office Action (“Final Act.,” mailed Jan. 14, 2015) and
Answer (“Ans.,” mailed Oct. 16, 2015).
Appeal 2016-002299
Application 11/608,682
October 10, 2017 (“Decision”), in which we affirmed the rejection of claims
1-17 under 35 U.S.C. § 101.3
ANALYSIS
The Court in Alice emphasized the use of a two-step framework for
analysis of patentability under 35 U.S.C. § 101:
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, we then
ask, “[w]hat else is there in the claims before us?” To answer that
question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application.
See Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012)).
In the Decision, we determined that claims 1—17 were directed to the
abstract idea of scheduling events on a calendar, which is a method of
organizing human activity, and that the remaining limitations do not add
significantly more to transform the abstract idea into patentable subject
matter. Decision 4—6.
Appellants argue that the panel erred in stating: “We agree with the
Examiner that Appellants have not tied the case law discussion to specific
aspects of the claims or Specification.” Request 4 (quoting Decision 4).
Appellants argue that the panel overlooked the following argument in the
Reply Brief:
3 Although not at issue, the Decision also reversed the Examiner’s rejections
of claims 1—7 under 35 U.S.C. § 102, and of claims 8—17 under
35 U.S.C. § 103.
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Appeal 2016-002299
Application 11/608,682
A plain viewing of Figure 2 will illustrate a networked
computing arrangement in which a specific logic block of a
module entitled “unprocessed invitations processing” is coupled
to an event scheduling application. Clearly, such an arrangement
is not “generic”. Further, Figure 3 of Appellants' originally filed
specification reveals a very particular flow chart in which a very
particular and detailed computer driven process is shown-hardly
generic computing. Examiner argues that the foregoing “does not
provide any specialized computer instructions for implementing
the claimed invention” and thereafter provides some sort of
subjective hypothetical not present in the evidence of record.
Yet, such a statement is a blatant mis-statement of truth and
Examiner’s hypothetical-not evidentiary. In fact, Figure 3 under
no reasonable circumstances can be considered “generic” and the
very particular process steps of identifying a time slot for an
event scheduling request, retrieving unprocessed events and
responding to a resultant conflict is shown.
Request 3 (quoting Reply Br. 3). Appellants contend that Figures 2 and 3 of
the Specification “demonstrably illustrated a system and process far beyond
a mere generic arrangement of computing components.” Id. (citing Reply
Br. 3—4).
However, page 5 of the Decision specifically cited Figures 2 and 3 of
the Specification in agreeing with the Examiner’s findings that the
Specification does not provide anything more than conventional computer
equipment and programming techniques. Decision 5 (citing Spec. 23—25,
Figs. 2—3; Ans. 8—10 (citing Spec. Tflf 20-21, Figs. 2, 3). The Decision
reviewed the Examiner’s finding that these portions of the Specification
show a generic computer platform and a generic flow chart, with routine and
nominal computer functions for loading data and performing processing, but
without specific computer instructions for implementing the claimed
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Application 11/608,682
invention. Id. (citing Ans. 10; Final Act. 6). The Decision found, inter alia,
that “the Specification . . . does not offer a specific implementation.” Id.
For ease of reference, we reproduce Figures 2 and 3 of the
Specification:
FIG. 2 3
Figure 2 is “a schematic illustration of a C&S data processing system
configured for invite processing user interface configured for event
scheduling conflict management and resolution for unprocessed” events.
Spec. 114. Figure 3 is “a flow chart illustrating a process for invite
processing user interface configured for event scheduling conflict
management and resolution for unprocessed events in a collaborative
computing environment.” Spec. 115.
The Decision did not overlook or misapprehend any arguments in this
regard. To the extent that Appellants are relying on a logic block in Figure 2
labeled “unprocessed invitations processing,” Request 3 (quoting Reply Br.
3), neither Figure 2 nor paragraphs 20 and 21 of the Specification offer a
specific implementation for such processing. As such, Figure 2 restates the
abstract idea without providing a specific implementation. To the extent that
Appellants are relying on Figure 3 for such processing, Figure 3 and the
accompanying discussion in the Specification do not provide any further
programming steps. Rather, Figure 3 restates the abstract idea of “conflict
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Appeal 2016-002299
Application 11/608,682
resolution” for “unprocessed events,” in flow chart form, without providing
a specific implementation. In this connection, the Decision did not err in
finding that the Specification does not provide a specific implementation for
the abstract idea. The Decision distinguished the claims and Specification
from that of DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014), finding that the Specification here “addresses a pre-internet
problem that is not specific to computer networks” and “does not provide
anything more than conventional technology to solve the problem of
avoiding unscheduled meetings on a calendar . . . .” Decision 5.
Appellants also contend that the panel overlooked the following
argument in the Reply Brief:
It is to be noted that in Internet Patents Corporation v. Active
Network, Inc., the Federal Circuit found that an innovative
concept reflected in a claim rejected under 35U.S.C. § 101 must
be restricted by the claim language itself in terms of how the
innovative concept is achieved so as to realize patentable subject
matter. In Internet Patents, the claim language lacked such a
restriction as to how the innovative concept is achieved, and
therefore, the claims in Internet Patents were rightfully rejected
as being directed to non-statutory subject matter. However,
Applicants’ claims, unlike the claims of Internet Patents indeed
are restricted as to how the innovative concept of “event
scheduling conflict management” is achieved. Accordingly, with
the jurisprudence of Alice and Internet Patents in mind, after
taking all of the claim recitations into consideration, Applicants'
believe claim 1 recites statutory subject matter under 35 U.S.C.
§101.
Request 4—5 (quoting Reply Br. 5). The Decision did not overlook or
misapprehend any arguments in this regard. Appellants argue that the
claims are restricted to “how” the “event scheduling conflict management is
achieved.” Id. As above, the Decision found that “the Specification . . .
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Application 11/608,682
does not offer a specific implementation.” Decision 5. The Specification
and claims merely restate the abstract idea without providing a specific
implementation or computer instructions, as discussed above. See id. As
such, the claimed invention suffers from a similar deficiency as that in
Internet Patents, contrary to Appellants’ assertion. See Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015)
(“mechanism for maintaining the state is not described”).
To the extent that Appellants are arguing that the claimed invention is
patentable because it does not “pre-empt” an entire field (see Request 5), a
showing of pre-emption is not required for a determination that an idea is
directed to non-patentable subject matter. Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“Where a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.”).
The Decision further concluded that the additional limitations, which
include “proposing,” “identifying,” “prompting,” “listing,” “selecting,”
“determining,” taken individually, or as a whole, do not add significantly
more to take the invention out of the realm of the abstract because they are
directed to the same abstract idea. Decision 6. In this connection, the panel
has considered Appellants’ arguments and concludes that the Decision did
not overlook or misapprehend any arguments in concluding that the claims
are directed to an abstract idea without significantly more.
DECISION
In view of the foregoing, the panel has granted Appellants’ Request to
the extent that we have reconsidered our Decision in light of Appellants’
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Application 11/608,682
Request. But we are not persuaded that we misapprehended or overlooked
any points of law or fact in rendering our Decision; therefore, we deny
Appellants’ request to make 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
DENIED
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