Ex Parte Perreault

Patent Trial and Appeal Board

Jan 24, 2018

12683678 (P.T.A.B. Jan. 24, 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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
1209.001 3639
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
12/683,678 01/07/2010
36790 7590 01/24/2018
TILLMAN WRIGHT, PLLC
PO BOX 49309
CHARLOTTE, NC 28277-0076
Francois Perreault
01/24/2018 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 FRANCOIS PERREAULT
Appeal 2016-005989
Application 12/683,678
Technology Center 3600
Before ERIC B. CHEN, JOSEPH P. LENTIVECH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 21, 25—32, 41—48, 52, and 53, which are all of the claims pending in
the application. Claims 1—20, 22—24, 33—40, and 49—51 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to “enforcing community covenant rules and
guidelines.” Spec. Abstract.
Illustrative Claim
Claim 21 is illustrative and reproduced below:
Appeal 2016-005989
Application 12/683,678
21. A method of selecting, by different communities, both
community rules for enforcing by a common sub-contractor, and
associated remedies for violation of the selected communities
rules in the different communities, the method comprising:
(a) with respect to a first community,
(1) determining and facilitating the determination of,
by a community representative of the first
community, predetermined actions to be taken by
the sub-contractor for violations of community rules
of the first community, comprising,
(i) communicating over the Internet, for view by
a community representative of the first
community,
(A) a plurality of community rules
selectable for enforcement in the first
community, and
(B) a plurality of remedies available for
selection by the community
representative of the first community
for violation of a selected community
rule, wherein each remedy comprises a
predetermined action to be taken by
the sub-contractor,
(ii) presenting, to the community representative
of the first community, one or more of the
communicated community rules,
(iii) selecting, by the community representative of
the first community, one or more of the
communicated community rules that are
presented, and for each community rule so
selected,
(A) presenting, to the community
representative of the first community,
communicated remedies available for
selection by the community
representative of the first community
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Application 12/683,678
for violation of the selected
community rule, and
(B) selecting, by the community
representative of the first community,
one or more of the communicated
remedies that are presented,
(iv) based on the selections of said step(a)(l)(iii)
performed by the community representative
of the first community, communicating over
the Internet, from the community
representative of the first community, user
input representing the selected one or more
community rules and selected one or more
remedies for each respective selected
community rule,
(v) receiving over the Internet, from the
community representative of the first
community, the user input, and
(vi) based on the received user input from the
community representative of the first
community, associating in non-transitory
computer-readable medium, for the first
community, the selected one or more
respective remedies with each selected
community rule, violation of which the
selected one or more respective remedies
apply; and
(2) after associating with the first community the
selected one or more respective remedies with each
selected community rule, facilitating enforcement
by the sub-contractor of the community rules
selected by the community representative of the
first community by,
(i) receiving, from the sub-contractor, user input
representing a community rule of the first
community,
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Application 12/683,678
(ii) determining the selected one or more
respective remedies of the first community
that have been associated in said step
(a)(l)(iii) with such community rule, and
(iii) causing to be displayed for view by the sub­
contractor the determined one or more
selected remedies associated with such
community rule, whereby the sub-contractor
is informed of and may take the one or more
predetermined actions as selected by the
community representative of the first
community in response to a violation of such
community rule; and
(b) with respect to a second, different community,
(1) determining and facilitating the determination of,
by a community representative of the second
community, predetermined actions to be taken by
the sub-contractor for violations of community rules
of the second community, comprising,
(i) communicating over the Internet, for view by
a community representative of the second
community,
(A) a plurality of community rules
selectable for enforcement in the
second community, and
(B) a plurality of remedies available for
selection by the community
representative of the second
community for violation of a selected
community rule, wherein each remedy
comprises a predetermined action to be
taken by the sub-contractor,
(ii) presenting, to the community representative
of the second community, one or more of the
communicated community rules,
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Appeal 2016-005989
Application 12/683,678
(iii) selecting, by the community representative of
the second community, one or more of the
communicated community rules that are
presented, and for each community rule so
selected,
(A) presenting, to the community
representative of the second
community, communicated remedies
available for selection by the
community representative of the
second community for violation of the
selected community rule, and
(B) selecting, by the community
representative of the second
community, one or more of the
communicated remedies that are
presented,
(iv) based on the selections of said step (b) (1) (iii)
performed by the community representative
of the second community, communicating
over the Internet, from the community
representative of the second community, user
input representing the selected one or more
community rules and selected one or more
remedies for each respective selected
community rule,
(v) receiving over the Internet, from the
community representative of the second
community, the user input, and
(vi) based on the received user input from the
community representative of the second
community, associating in the non-transitory
computer-readable medium, for the second
community, the selected one or more
respective remedies with each selected
community rule, violation of which the
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Appeal 2016-005989
Application 12/683,678
selected one or more respective remedies
apply,
(vii) wherein, with respect to a community rule
selected by both the first community and the
second community, the selection of a remedy
of the first community associated with
violation thereof is independent of the
selection of a remedy of the second
community associated with violation thereof;
and
(2) after associating with the second community the
selected one or more respective remedies with each
selected community rule, facilitating enforcement
by the sub-contractor of the community rules
selected by the community representative of the
second community by,
(i) receiving, from the sub-contractor, user input
representing a selection of a community rule
of the second community,
(ii) determining the selected one or more
respective remedies of the second community
that have been associated in said step
(b)(l)(iii) with such community rule, and
(iii) causing to be displayed for view by the sub­
contractor the determined one or more
selected remedies associated with such
community rule, whereby the sub-contractor
is informed of and may take the one or more
predetermined actions as selected by the
community representative of the second
community in response to a violation of such
community rule;
(c) whereby, for violation of a community rule selected by
both the community representative of the first community
and the community representative of the second
community,
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Application 12/683,678
(1) the first and second community representatives can
respectively select one or more different
predetermined actions to be taken by the sub­
contractor, and
(2) the sub-contractor is informed of and can take the
one or more different predetermined actions as
respectively selected by the first and second
community representatives;
(d) wherein said steps (a)(l)(i), (a)(l)(v), (a)(l)(vi), (b)(l)(i),
(b)(l)(v), (b)(l)(vi), and (c) are performed by execution,
on a processor of a computer, of computer-readable
instructions contained on a non-transitory computer-
readable medium.
Rejection
Claims 21, 25—32, 41—48,1 52, and 53 stand rejected under 35 U.S.C.
§ 101 as being directed to ineligible subject matter. Final Act. 4.
ISSUES
Did the Examiner err in concluding claims 21, 25—32, 41—48, 52, and
53 are directed to ineligible subject matter?
ANALYSIS
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The Supreme Court, however, has “long held that
this provision contains an important implicit exception” that “[ljaws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
1 Claim 49 was cancelled in an Amendment After Final dated April 28,
2015, and entered in an Advisory Action dated May 29, 2015.
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Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). “Issues of patent-eligible subject matter are questions
of law and are reviewed without deference.” CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1369 (Fed. Cir. 2011). To determine
patentable subject matter, the Supreme Court has set forth a two part test.
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014).
“The inquiry often is whether the claims are directed to ‘a specific means or
method’ for improving technology or whether they are simply directed to an
abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that “all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas” {Mayo, 566 U.S. at 71), and “describing the
claims at... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule.”
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, “the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In the second step, 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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has “described step two of this analysis as a search for
an ‘inventive concept’—i.e., an element or combination of elements that is
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Application 12/683,678
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the ineligible concept itself.” Id. (quotation omitted).
Claim 21
The Examiner concludes “[t]he claims are directed to an abstract idea
of enforcing community covenant rules and guidelines for a selected
community among different communities, and specifically relates to the
violation of community rules and guidelines, and associated remedies for
violation of the selected community’s rules among the different
communities.” Ans. 3.
Appellant argues claim 21 does not “monopolize” the abstract idea
because “there are an innumerable number of methodologies related to
enforcing community covenant rules and guidelines that are not
encompassed by recited claim 21.” App. Br. 14. However, we agree with
the Examiner (Ans. 7) that “[wjhile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.” 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.”
Id.
Appellant also argues the claims cannot be ineligible subject matter,
routine, or conventional because “the Examiner acknowledges the novelty
and nonobvious[ness] of the claimed methods.” App. Br. 17. However, we
agree with the Examiner (Ans. 14) that “[t]he ‘novelty’ of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
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categories of possibly patentable subject matter.” Diamond v. Diehr, 450
U.S. 175, 188-89 (1981).
Appellant further contends the use of the Internet provides “a
technical solution to the problem of keeping a sub-contractor informed
regarding rules and remedies to be enforced for various communities.” App.
Br. 14—16. We are not persuaded by this argument. The Federal Circuit has
held that “receiving transmitted data over a network and displaying it to a
user merely implicates purely conventional activities that are the ‘most basic
functions of a computer.’” Intellectual Ventures ILLC v. Erie Indem. Co.,
850 F.3d 1315, 1331 (Fed. Cir. 2017) (quoting Alice, 134 S. Ct. at 2359).
Put another way, “[a]n abstract idea on ‘an Internet computer network’ or on
a generic computer is still an abstract idea.” BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016).
Appellant has not sufficiently explained how providing the information via
the Internet is any different than providing the same information via phone,
paper, or in person. See Ans. 4 (concluding the claims “are interpreted as
organizing a human activity” and “this data file could be a paper file
folder”); CyberSource, 654 F.3d at 1371 (“methods which can be performed
mentally, or which are the equivalent of human mental work, are
unpatentable abstract ideas”) (citing Gottschalk v. Benson, 409 U.S. 63, 67
(1972)). We agree with the Examiner that this is neither a technical problem
nor a technical solution, but merely the application of an abstract idea on a
computer via the Internet. “We have repeatedly held that such invocations
of computers and networks that are not even arguably inventive are
insufficient to pass the test of an inventive concept in the application of an
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abstract idea.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355
(Fed. Cir. 2016) (quotation omitted).
Here, the claims merely gather the rules and remedies for each
community and then display them to the sub-contractor. As the Federal
Circuit has held, “the practices of collecting, analyzing, and displaying data,
with nothing more, are practices whose implicit exclusion from § 101
undergirds the information-based category of abstract ideas.” FairWarning
IP, LLCv. Iatric Sys., Inc., 839 F.3d 1089, 1097-98 (Fed. Cir. 2016)
(quotation omitted); see also CyberSource, 654 F.3d at 1370 (“mere data-
gathering steps cannot make an otherwise nonstatutory claim statutory”)
(quotation omitted).
Accordingly, we sustain the rejection of claim 21.
Claims 32, 41, and 52
Appellant argues certain steps in claim 32 “are performed by a server,
making it even harder to dismiss such functionality as patent-ineligible.”
App. Br. 21. Similarly, Appellant argues claim 41’s “use of a server”
represents “a technical solution.” Id. at 21—22. And Appellant argues claim
52 is patentable for the same reasons as claim 41. Id. at 23.
“[A]s applied to a computer-implemented invention, it is often helpful
to ask whether the claims are directed to ‘an improvement in the functioning
of a computer,’ or merely ‘adding conventional computer components to
well-known business practices.’” Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016) (quoting Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1338 (Fed. Cir. 2016)). As with
“the Internet” in claim 21, we conclude that “use of a server” is merely
adding conventional computer components to well-known business practices
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(i.e., selecting community rules and remedies). “[W]ith the exception of
generic computer-implemented steps, there is nothing in the claims
themselves that foreclose them from being performed by a human, mentally
or with pen and paper.” Intellectual Ventures ILLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed. Cir. 2016).
Accordingly, we sustain the rejection of claims 32, 41, and 53.
Claims 25—31, 42—48, and 53
Appellant argues the Examiner has not addressed whether the
additional limitations of dependent claims 25—31, 42-48, and 53 constitute
“substantially more.” App. Br. 20, 22—23, 24. The Examiner, however,
concludes “[tjhere is no recitation of any limitation that is interpreted as
significantly more in the dependent claims. While these claims may have a
narrower scope . . ., no dependent claim contains an ‘inventive concept’”
and the dependent claims “do not recite a function that improves the
computer or network itself.” Ans. 16—17. Appellant has not identified any
specific limitation in any dependent claim that Appellant believes amounts
to substantially more.
Accordingly, given the record before us, we sustain the Examiner’s
rejection of claims 25—31, 42-48, and 53.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 21, 25—32, 41—48, 52, and 53.
No time for taking subsequent action in connection with this appeal
maybe extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f).
AFFIRMED
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