Ex Parte Pirvu et al

Patent Trials and Appeals Board

May 13, 2019

14346674 - (D) (P.T.A.B. May. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/346,674 03/21/2014 Cristine! Dan Pirvu
157703 7590 05/15/2019
Cozen O'Connor - SEA Patent
277 Park A venue, 20th Floor
New York, NY 10172
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.
290121.402USPC/439525 7447
EXAMINER
CAMPBELL, JR., WARREN
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
05/15/2019 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):
nyipdocketing@cozen.com
sclayton@cozen.com
ppogson@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRISTINEL DAN PIRVU, BRENT WAYNE HALVERSON, and
IAN CAMPBELL BRABY
Appeal2018-006916
Application 14/346,674
Technology Center 2100
Before JOHN A. JEFFERY, JOHN P. PINKERTON, and JASON M.
REPKO, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 3, 5-19, 21, 23-35, 37--43, and 45-50. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention transforms documents automatically into a form
usable by a recipient. Based on certain instructions, document headers and
footers are extracted, and the remaining body concatenated. See generally
Abstract; Spec. 1-2. Claim 1 is illustrative:
1 Appellants identify the real party in interest as ECMARKET INC. App.
Br. 2.
Appeal2018-006916
Application 14/346,674
1. A method of operating a document transformation
system, comprising:
storing a plurality of sets of instructions on at least one
non-transitory processor readable medium of the document
transform system;
receiving a first document for processing by the
document transformation system;
determining a first set of instructions from the plurality of
sets of instructions
stored on the at least one non-transitory processor-readable
medium of the document
transformation system based on at least one aspect of the
received first document;
based on the first set of instructions which includes at
least one set of header
specific extraction instructions, at least one set of footer specific
extraction instructions and at least one set of line item specific
extraction instructions, autonomously without user interaction:
attempting to extract header data from the first document
according to a first one of the at least one set of header specific
extraction instructions of the first set of
instructions by the at least one processor of the document
transformation system;
determining whether the attempt to extract the header
data from the first document according to the first one of the at
least one set of header specific extraction instructions was
successful;
attempting to extract the header data from the first
document according to a second one of the at least one set of
header specific extraction instructions if the attempt to extract
the header data from the first document according to the first
one of the at least one set of header specific extraction
instructions was unsuccessful;
attempting to extract footer data from the first document
according to a first one of the at least one set of footer specific
extraction instructions of the first set of instructions by the at
least one processor of the document transformation system;
2
Appeal2018-006916
Application 14/346,674
determining whether the attempt to extract the footer data
from the first document according to the first one of the at least
one set of footer specific extraction instructions was successful;
attempting to extract the footer data from the first
document according to a second one of the at least one set of
footer specific extraction instructions if the attempt to extract
the footer data from the first document according to the first
one of the at least one set of footer specific extraction
instructions was unsuccessful;
concatenating remaining data in the first document after
extracting all of the header data and all of the footer data from
the first document by the at least one processor of the document
transformation system; and
attempting to extract a number of line items from the first
document according to a first one of the set of at least one set of
line item specific extraction instructions of the first set of
instructions by the at least one processor of the document
transformation system.
THE REJECTIONS
The Examiner rejected claims 1, 3, 5-19, 21, 23-35, 37--43, and 45-
50 under 35 U.S.C. § 101 as directed to ineligible subject matter. Ans. 3--4. 2
The Examiner rejected claims 1, 3, 5-12, 14--19, 21, 23-30, 32-35,
37-39, 41--43, 45--47, 49, and 50 under 35 U.S.C. § 103 as unpatentable
over Harman (US 2003/0084068 Al, published May 1, 2003);
Chandrasekaran (US 7,373,554 B2, issued May 13, 2008); and Xiaofan Lin,
Header and Footer Extraction by Page-Association, Hewlett-Packard Co.
(2002) ("Lin"). Ans. 5-35.
2 Throughout this opinion, we refer to (1) the Appeal Brief filed February 5,
2018 (supplemented March 5, 2018) ("App. Br."); (2) the Examiner's
Answer mailed May 3, 2018 ("Ans."); and (3) the Reply Brief filed June 25,
2018 ("Reply Br.").
3
Appeal2018-006916
Application 14/346,674
The Examiner rejected claims 13, 40, and 48 under 35 U.S.C. § 103 as
unpatentable over Harman, Chandrasekaran, Lin, and Ritz (US
2005/0182933 Al, published Aug. 18, 2005). Ans. 35-38.
THE INELIGIBILITY REJECTION
The Examiner determines that the claims are directed to an abstract
idea, namely extracting information from a document using a set of
predefined instructions. Ans. 3. The Examiner adds that the claims do not
include elements that add significantly more than the abstract idea, but
merely recite, among other things, generic computer components. Id. at
3--4.
Appellants argue that the claimed invention is not directed to an
abstract idea. App. Br. 25-31; Reply Br. 8-9. According to Appellants, not
only did the Examiner fail to establish a prima facie case of ineligibility, the
claimed invention is necessarily rooted in computer technology and yields a
technological improvement to automated correction of computer-generated
errors and transformation of the computer-error corrected document. Id.
Appellants add that the claimed invention adds significantly more to the
purported abstract idea by reciting an unconventional solution to a technical
problem involving unpredictable computer-generated errors. App. Br. 31-
34; Reply Br. 9-11. According to Appellants, this technical solution, among
other things, ( 1) extracts information from each of first and second sections
of each page of a document; (2) concatenates remaining information; and (3)
successively attempts to extract information from a third section of at least
the document's first page. App. Br. 31-34; Reply Br. 9-11.
4
Appeal2018-006916
Application 14/346,674
ISSUE
Under § 101, has the Examiner erred in rejecting claims 1--4, 6-1 7,
19-29, 21-35, and 40--43 as directed to ineligible subject matter? This issue
turns on whether the claims are directed to an abstract idea and, if so,
whether recited elements----considered individually and as an ordered
combination-transform the nature of the claims into a patent-eligible
application of that abstract idea.
PRINCIPLES OF LAW
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. See, e.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208, 216 (2014) ( citation omitted).
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
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.").
5
Appeal2018-006916
Application 14/346,674
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, 67 (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.
(15 How.) 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."). That
said, 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
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.").
6
Appeal2018-006916
Application 14/346,674
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 ( citation 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. (alterations in original) (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.
In January 2019, the USPTO published revised guidance on the
application of§ 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under that
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 MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08. 2017, Jan.
2018)).
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:
7
Appeal2018-006916
Application 14/346,674
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.0S(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
ANALYSIS
Claims 1, 3, 5-19, 21, 23-35, 37-43, and 45-50: Alice/Mayo Step One
Independent claim 1 recites:
a method of operating a document transformation
system, comprising:
storing a plurality of sets of instructions on at least one
non-transitory processor-readable medium of the document
transform[ation] system;
receiving a first document for processing by the
document transformation system;
determining a first set of instructions from the plurality of
sets of instructions stored on the at least one non-transitory
processor-readable medium of the document transformation
system based on at least one aspect of the received first
document;
based on the first set of instructions which includes at
least one set of header specific extraction instructions, at least
one set of footer specific extraction instructions and at least one
set of line item specific extraction instructions, autonomously
without user interaction:
attempting to extract header data from the first document
according to a first one of the at least one set of header specific
extraction instructions of the first set of instructions by the at
least one processor of the document transformation system;
8
Appeal2018-006916
Application 14/346,674
determining whether the attempt to extract the header
data from the first document according to the first one of the at
least one set of header specific extraction instructions was
successful;
attempting to extract the header data from the first
document according to a second one of the at least one set of
header specific extraction instructions if the attempt to extract
the header data from the first document according to the first
one of the at least one set of header specific extraction
instructions was unsuccessful;
attempting to extract footer data from the first document
according to a first one of the at least one set of footer specific
extraction instructions of the first set of instructions by the at
least one processor of the document transformation system;
determining whether the attempt to extract the footer
data from the first document according to the first one of the at
least one set of footer specific extraction instructions was
successful;
attempting to extract the footer data from the first
document according to a second one of the at least one set of
footer specific extraction instructions if the attempt to extract
the footer data from the first document according to the first
one of the at least one set of footer specific extraction
instructions was unsuccessful;
concatenating remaining data in the first document after
extracting all of the header data and all of the f oater data from
the first document by the at least one processor of the document
transformation system; and
attempting to extract a number of line items from the first
document according to a first one of the set of at least one set of
line item specific extraction instructions of the first set of
instructions by the at least one processor of the document
transformation system. 3
3 Unless otherwise indicated, we italicize or quote text associated with
various recited limitations for emphasis and clarity.
9
Appeal2018-006916
Application 14/346,674
As the disclosure explains, Appellants' invention automatically
transforms documents, such as the purchase order shown in Figure 3, that
are transferred between senders and recipients even when formatting differs
with respect to scaling, alignment, etc. Abstract. To this end, document
transformation instructions are selected and, based on these instructions,
headers and footers are extracted and the remaining body concatenated. Id.
But, if these extractions in accordance with these instructions were
unsuccessful, the system searches for additional extraction instructions. Id.;
see also Spec. 42--45; Figs. 6-7B.
Turning to claim 1, we first note that the claim recites a method and,
therefore, falls within the process category of§ 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we must determine whether the claim (1) recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52-55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
In the rejection, the Examiner determines that claim 1 is directed to an
abstract idea, namely extracting information from a document using a set of
predefined instructions. Ans. 3, 47--49. To determine whether a claim
recites an abstract idea, we ( 1) identify the claim's specific limitations that
recite an abstract idea, and (2) determine whether the identified limitations
fall within certain subject matter groupings, namely (a) mathematical
10
Appeal2018-006916
Application 14/346,674
concepts4; (b) certain methods of organizing human activity5; or ( c) mental
processes. 6
Here, apart from the recited ( 1) instructions stored on at least one
non-transitory processor-readable medium; and (2) performing various steps
autonomously without user interaction by using a processor, all of claim 1 's
recited limitations, which collectively are directed to extracting information
from a document using a set of predefined instructions, fit squarely within at
least one of the above categories of the agency's guidelines.
First, the steps reciting ( 1) "storing a plurality of sets of instructions";
and (2) "receiving a first document for processing by the document
transformation system" involve at least personal interactions, including
following rules or instructions, at least to the extent that a person could store
instructions either entirely mentally or in a repository, and receive
documents by merely reading pertinent records or other associated
information, or alternatively receive that information via face-to-face or
written communication with another person with such knowledge, such as a
4 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
5 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
6 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
11
Appeal2018-006916
Application 14/346,674
colleague. Cf Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat'! Ass 'n, 776 F.3d 1343, 1345--49 (Fed. Cir. 2014) (holding
ineligible claims reciting (1) receiving output representing diverse types of
hard copy documents from an automated digitizing unit, and (2) storing
information from those documents into memory); see also CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting
that limitation reciting obtaining information about transactions that have
used an Internet address identified with a credit card transaction can be
performed by a human who simply reads records of Internet credit card
transactions from a pre-existing database); In re Salwan, 681 F. App'x 938,
939--41 (Fed. Cir. 2017) (unpublished) (holding ineligible claims reciting,
among other things, receiving medical records information and transmitting
reports where the claimed invention's objective was to enable electronic
communication of tasks that were otherwise done manually using paper,
phone, and facsimile machine); Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1344 (Fed. Cir. 2018) (noting that a nontechnical human activity
of passing a note to a person who is in a meeting or conversation as
illustrating the invention's focus, namely providing information to a person
without interfering with the person's primary activity); LendingTree, LLC v.
Zillow, Inc., 656 F. App'x 991, 993-94, 996 (Fed. Cir. 2016) (unpublished)
(holding ineligible claims reciting, among other things, (1) receiving
selection criteria from lending institutions and credit data from a computer
user, and (2) forwarding the credit data to selected lending institutions as
directed to an abstract idea). Therefore, the storing and receiving steps fall
squarely within the methods of organizing human activity category of the
agency's guidelines and, therefore, recite an abstract idea. See Guidance, 84
12
Appeal2018-006916
Application 14/346,674
Fed. Reg. at 52 (listing exemplary methods of organizing human activity,
including personal interactions and following rules or instructions).
Second, "determining a first set of instructions from the plurality of
sets of instructions ... based on at least one aspect of the received first
document" can be done entirely mentally by merely thinking about these
instructions or writing them down-both involving mere observation and
logical reasoning. Cf CyberSource, 654 F.3d at 1372 (noting that a recited
step that utilized a map of credit card numbers to determine the validity of a
credit card transaction could be performed entirely mentally by merely using
logical reasoning to identify a likely instance of fraud by merely observing
that numerous transactions using different credit cards all originated from
the same IP address). Therefore, the instruction set determination step falls
squarely within the mental processes category of the agency's guidelines
and, therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52
(listing exemplary mental processes including observation and evaluation).
Third, the following limitations, namely:
based on the first set of instructions which includes at
least one set of header specific extraction instructions, at least
one set of footer specific extraction instructions and at least one
set of line item specific extraction instructions [l] attempting to
extract header data from the first document according to a first
one of the at least one set of header specific extraction
instructions of the first set of instructions; [2] determining
whether the attempt to extract the header data from the first
document according to the first one of the at least one set of
header specific extraction instructions was successful; [3]
attempting to extract the header data from the first document
according to a second one of the at least one set of header
specific extraction instructions if the attempt to extract the
header data from the first document according to the first one
of the at least one set of header specific extraction instructions
13
Appeal2018-006916
Application 14/346,674
was unsuccessful; [4] attempting to extract footer data from the
first document according to a first one of the at least one set of
footer specific extraction instructions of the first set of
instructions; [5] determining whether the attempt to extract the
footer data from the first document according to the first one of
the at least one set of footer specific extraction instructions was
successful; [6] attempting to extract the footer data from the
first document according to a second one of the at least one set
of footer specific extraction instructions if the attempt to extract
the footer data from the first document according to the first
one of the at least one set of footer specific extraction
instructions was unsuccessful; [7] concatenating remaining
data in the first document after extracting all of the header data
and all of the footer data from the first document; and [8 J
attempting to extract a number of line items from the first
document according to a first one of the set of at least one set of
line item specific extraction instructions of the first set of
instructions
can be done entirely mentally by merely reading the document and
attempting to extract its respective data cognitively or by using pen and
paper. Cf CyberSource, 654 F.3d at 1372-73 (noting that a recited step that
constructed a map of credit card numbers could be performed by merely
writing down a list of credit card transactions made from a particular IP
address). Determining whether the attempted header and footer data
extractions were successful or not can likewise be done entirely mentally by
merely thinking about these attempts and assessing whether their goals were
achieved, namely whether the header and footer data were extracted. In
short, these steps involve mere observation and logical reasoning. Cf id. at
1372. Moreover, the concatenating the remaining data after extraction can
likewise be done entirely mentally by merely joining the data together
mentally or using pen and paper. Cf id.; see also Burnett v. Panasonic
14
Appeal2018-006916
Application 14/346,674
Corp., 741 F. App'x 777, 778-81 (Fed. Cir. 2018) (unpublished) (noting that
a recited concatenation limitation merely joined a string of numbers together
and converted coordinate data into a new form of data). Thus, the recited
data extraction attempts, associated success determinations, and
concatenation fall squarely within the mental processes category of the
agency's guidelines and, therefore, recite an abstract idea. See Guidance, 84
Fed. Reg. at 52 (listing exemplary methods of organizing human activity,
including personal interactions and following rules or instructions); see also
id. (listing exemplary mental processes including observation and
evaluation).
The recited data extraction attempts, associated success
determinations, and concatenation also fall within the methods of organizing
human activity category, for they are tantamount to filtering or tailoring
content to satisfy particular criteria and, therefore, organize human behavior
and involve following rules or instructions. See BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)
(noting that filtering content is a longstanding, well-known method of
organizing human behavior); see also Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (noting that tailoring
content based on certain criteria, such as a viewer's location or address, is a
fundamental practice prevalent in our system); Guidance, 84 Fed. Reg. at 52
(listing exemplary methods of organizing human activity including ( 1)
commercial interactions, and (2) managing interactions between people
including following rules or instructions).
Although the claim recites an abstract idea based on these methods of
organizing human activity and mental processes, we nevertheless must still
15
Appeal2018-006916
Application 14/346,674
determine whether the abstract idea is integrated into a practical application,
namely whether the claim applies, relies on, or uses the abstract idea in a
manner that imposes a meaningful limit on the abstract idea, such that the
claim is more than a drafting effort designed to monopolize the abstract idea.
See Guidance, 84 Fed. Reg. at 54--55. To this end, we (1) identify whether
there are any additional recited elements beyond the abstract idea, and (2)
evaluate those elements individually and collectively to determine whether
they integrate the exception into a practical application. See id.
Here, ( 1) the recited instructions stored on at least one non-transitory
processor-readable medium; and (2) performing various steps autonomously
without user interaction by using a processor are the only recited elements
beyond the abstract idea, but these additional elements do not integrate the
abstract idea into a practical application when reading claim 1 as a whole.
First, we are not persuaded that the claimed invention improves the
computer's or its components' functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d
1327 (Fed. Cir. 2016), despite Appellants' arguments to the contrary (App.
Br. 31 ). The claimed self-referential table in Enfish was a specific type of
data structure designed to improve the way a computer stores and retrieves
data in memory. Enfish, 822 F.3d at 1339. To the extent Appellants
contends that the claimed invention uses such a data structure to improve a
computer's functionality or efficiency, or otherwise change the way that
device functions, there is no persuasive evidence on this record to
substantiate such a contention.
16
Appeal2018-006916
Application 14/346,674
To the extent that Appellants contend that the claimed invention is
rooted in technology because it is ostensibly directed to a technical solution
(see App. Br. 29-31; Reply Br. 8-9), we disagree. Even assuming, without
deciding, that the claimed invention can transform documents by extracting
header and footer data and concatenating remaining data faster than doing so
manually, any speed increase comes from the capabilities of the generic
computer components-not the recited process itself. See Fair Warning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (alteration in
original) (citing Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d
1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.")); see also Intellectual
Ventures I LLC v. Erie Indem. Co., 711 F. App'x 1012, 1017 (Fed. Cir.
2017) (unpublished) (alteration in original) (citation omitted) ("Though the
claims purport to accelerate the process of finding errant files and to reduce
error, we have held that speed and accuracy increases stemming from the
ordinary capabilities of a general-purpose computer 'do[] not materially alter
the patent eligibility of the claimed subject matter."'). Like the claims in
Fair Warning, the focus of claim 1 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at
1095.
As the Examiner indicates (Ans. 3, 47), the claimed invention is
analogous to that which the court held ineligible in Content Extraction.
There, the court held ineligible claims reciting a method of ( 1) extracting
data from hard copy documents using an automated digitizing unit such as a
17
Appeal2018-006916
Application 14/346,674
scanner; (2) recognizing specific information from the extracted data; and
(3) storing that information in memory. Content Extraction, 776 F.3d at
1345--49. That certain claims in that case also recited extracting and
detecting specific data fields and storing associated data did not render the
claims patent-eligible. See id. at 1348--49.
The court's ineligibility decision in Glasswall Solutions Limited v.
Clearswift Limited, 754 F. App'x 996, 997-98 (Fed. Cir. 2018)
(unpublished) is also relevant here. There, the court held ineligible a claim
reciting a method for processing an electronic file to create a substitute
electronic file containing only allowable content data, where the method ( 1)
received an electronic file containing content data encoded and arranged
according to a predetermined file type; (2) determined an allowable portion
of the content data that conformed with values or range of values specified
in an associated rule set; (3) extracted only the allowable portion of content
data from the file; (4) created a substitute electronic file that contained only
the extracted allowable content data; (5) forwarded the substitute
regenerated electronic file only if all content data conformed to the specified
values or range of values; and ( 6) forwarded the incoming electronic file if
some or all of the content data does not conform when the intended recipient
pre-approved the predetermined file type when associated with the file's
sender. See id.; see also Glasswall Solutions Ltd. v. Clearswift Ltd., No.
C16-1833, 2017 WL 5882415, at *1-5 (W.D. Wash. 2017) (unpublished)
(reproducing the claim). In holding this claim ineligible, the Federal Circuit
noted that the claim merely (1) compared the file's content to a set of rules;
(2) extracted conforming data; and then (3) duplicated the conforming data
to create a substitute file. Glasswall, 754 F. App'x at 997-98. The claimed
18
Appeal2018-006916
Application 14/346,674
invention was, therefore, held abstract as merely delivering allowable
content and inhibiting communicating other content. Id.
Like the extraction, storage, and processing certain data in Content
Extraction and Glasswall, the present invention here performs similar
document processing functions, including (1) extracting header and footer
data; (2) concatenating the remaining data; and (3) attempting to extract line
items 7----document processing functions that do not render the claims patent-
eligible. Accord Burnett, 741 F. App'x at 778-81 (noting that a recited
concatenation limitation merely joined a string of numbers together and
converted coordinate data into a new form of data). Where, as here, a
recited process (1) starts with data; (2) applies an algorithm; and (3) ends
with a new form of data, such a claim is directed to an abstract idea. See id.
at 781; see also EasyWeb Innovations, LLC v. Twitter, Inc., 689 F. App'x
969, 969-71 (Fed. Cir. 2017) (unpublished) (holding ineligible claims
reciting a message publishing system that ( 1) converted a portion of a
received message to a different format, and (2) published the converted
portion only if the sender was identified as authorized); Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1365---69 (Fed. Cir.
2019) (holding ineligible claim reciting method of integrating physiologic
treatment data that (1) converted physiologic data received from at least two
bedside machines into machine-independent data; (2) performed at least one
programmatic action involving that data; and (3) presented results from that
7 Notably, unlike line items, claim 1 's method presupposes that the header
and footer data were extracted successfully by concatenating remaining data
after extracting all of the header and footer data from the first document.
Claim 1 's method, however, does not actually extract line items, but rather
merely attempts to extract them.
19
Appeal2018-006916
Application 14/346,674
action upon a bedside GUI as directed to the abstract idea of collecting,
analyzing, manipulating, and displaying data); see also Intellectual Ventures
I, 792 F.3d at 1369 (noting that tailoring content based on certain criteria,
such as a viewer's location or address, is a fundamental practice prevalent in
our system).
Nor is this a case involving eligible subject matter as in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), despite
Appellants' arguments to the contrary (App. Br. 30; Reply Br. 8-9). There,
instead of a computer network operating in its normal, expected manner by
sending a website visitor to a third-party website apparently connected with
a clicked advertisement, the claimed invention in DDR generated and
directed the visitor to a hybrid page that presented ( 1) product information
from the third party, and (2) visual "look and feel" elements from the host
website. DDR, 773 F.3d at 1258-59. Given this particular Internet-based
solution, the court held that the claimed invention did not merely use the
Internet to perform a business practice known from the pre-Internet world,
but rather was necessarily rooted in computer technology to overcome a
problem specifically arising in computer networks. Id. at 1257.
That is not the case here. As noted previously, Appellants' claimed
invention, in essence, is directed to extracting information from a document
using a set of predefined instructions by extracting header and footer data
and concatenating remaining data-albeit using computer-based components
to achieve that end. The claimed invention here is not necessarily rooted in
computer technology in the sense contemplated by DDR where the claimed
invention solved a challenge particular to the Internet. Although Appellants'
invention uses various computer-based components noted previously, the
20
Appeal2018-006916
Application 14/346,674
claimed invention does not solve a challenge particular to the computing
components used to implement this functionality.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016). There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques-an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to validate and
authenticate a payment-based transaction between parties. This generic
computer implementation is not only directed to fundamental human activity
organization, mathematical concepts, and mental processes, but also does
not improve a display mechanism as was the case in McRO. See SAP Am. v.
InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing
McRO).
Accordingly, we do not find that the claim recites additional elements
improving (1) the computer itself, or (2) another technology or technical
field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)).
Rather, the above-noted additional elements merely (1) apply the abstract
idea on a computer, (2) include instructions to implement the abstract idea
21
Appeal2018-006916
Application 14/346,674
on a computer, or (3) use the computer as a tool to perform the abstract idea.
See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)).
We add that the limitations reciting ( 1) "storing a plurality of sets of
instructions on at least one non-transitory processor-readable medium of
the document transform[ation] system"; and (2) "receiving a first document
for processing by the document transformation system" not only organize
human activity and use generic computing components to perform the
abstract idea as noted above, but these storing and receiving functions are
also insignificant pre-solution activity that merely gather data and, therefore,
do not integrate the exception into a practical application for that additional
reason. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), ajf'd
on other grounds, 561 U.S. 593 (2010) (characterizing data gathering steps
as insignificant extra-solution activity); see also CyberSource, 654 F.3d at
1371-72 (noting that even if some physical steps are required to obtain
information from a database ( e.g., entering a query via a keyboard, clicking
a mouse), such data-gathering steps cannot alone confer patentability).
Accord Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)).
In conclusion, although the recited functions may be beneficial by
extracting information from a document using a set of predefined
instructions, a claim for a useful or beneficial abstract idea is still an abstract
idea. See CyberSource, 654 F.3d at 1379-80.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.
22
Appeal2018-006916
Application 14/346,674
Claims 1, 3, 5-19, 21, 23-35, 37--43, and 45-50: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1 's additional recited elements,
namely the recited ( 1) instructions stored on at least one non-transitory
processor-readable medium; and (2) performing various steps autonomously
without user interaction by using a processor----considered individually and
as an ordered combination----do not provide an inventive concept such that
these additional elements amount to significantly more than the abstract
idea. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
As noted above, the claimed invention merely uses generic computing
components to implement the recited abstract idea.
To the extent that Appellants contend that the recited limitations,
including the recited data extraction attempts, associated success
determinations, and concatenation noted previously add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two (see App. Br. 31-34; Reply Br. 9-12), these limitations are not
additional elements beyond the abstract idea, but rather are directed to the
abstract idea as noted previously. See Guidance, 84 Fed. Reg. at 56
(instructing that additional recited elements should be evaluated in
Alice/Mayo step two to determine whether they (1) add specific limitations
that are not well-understood, routine, and conventional in the field, or (2)
simply append well-understood, routine, and conventional activities
previously known to the industry (citing MPEP § 2106.05(d))).
Rather, the recited (1) computer-implemented method; (2) performing
various steps "by one or more processors"; and (3) ''providing . .. the near-
well unstructured grid to a parallel reservoir simulator" are the additional
recited elements whose generic computing functionality is well-understood,
23
Appeal2018-006916
Application 14/346,674
routine, and conventional. See Intellectual Ventures, 792 F.3d at 1368
(noting that a recited user profile (i.e., a profile keyed to a user identity),
database, and communication medium are generic computer elements);
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324--
25 (Fed. Cir. 2016) (noting that components such an "interface," "network,"
and "database" are generic computer components that do not satisfy the
inventive concept requirement); buySAFE v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) ("That a computer receives and sends the information
over a network-with no further specification-is not even arguably
inventive."). Accord Ans. 4 ( concluding that the claims' generically recited
computer components do not add significantly more than the abstract idea).
See also Spec. 7-22, 60-62 ( describing generic computer components
associated with the disclosed invention).
We reach a similar conclusion regarding the recited insignificant
extra-solution activity, namely (1) "storing a plurality of sets of instructions
on at least one non-transitory processor-readable medium of the document
transform[ation] system"; and (2) "receiving a first document for processing
by the document transformation system." That (1) instruction sets are stored,
and (2) a document is received does not mean that these steps are performed
in an unconventional way to add significantly more than the abstract idea
and provide an inventive concept under Alice/Mayo step two. See Guidance,
84 Fed. Reg. at 56. Given these limitations' (1) high level of generality, and
(2) use of generic computing components whose functionality is well-
understood, routine, and conventional for the reasons noted previously, the
recited extra-solution activity does not add significantly more than the
24
Appeal2018-006916
Application 14/346,674
abstract idea to provide an inventive concept under Alice/Mayo step two. To
the extent Appellants contend otherwise (see App. Br. 17-19), we disagree.
Appellants' reliance on the decision in Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (App. Br. 32; Reply Br. 9-10)
is unavailing. There, the court held that a claim directed to using accounting
information with which a network accounting record is correlated to
enhance the record was eligible because the claim involved an
unconventional technological solution ( enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases). Amdocs, 841 F.3d at 1300--01. Although the
court recognized that this solution used generic components, the recited
enhancing function necessarily required these generic components to operate
in an unconventional manner to achieve an improvement in computer
functionality. Id. Notably, the recited enhancement in Amdocs depended on
not only the network's distributed architecture, but also on the network
devices and "gatherers" working together in a distributed environment. Id.
at 1301. In reaching its eligibility conclusion, the court noted the patent's
emphasis on the drawbacks of previous systems where all network
information flowed to one location making it very difficult to keep up with
massive record flows from network devices and requiring huge databases.
Id. at 1300. The court also noted similar network-based drawbacks that
were overcome by similar unconventional distributed solutions in other
patents at issue. See id. at 1305---06.
That is not the case here. Although the claimed invention uses
conventional computing components that store and process data, there is no
persuasive evidence on this record to show that these generic components
25
Appeal2018-006916
Application 14/346,674
operate in an unconventional manner to achieve an improvement in
computer functionality as in Amdocs.
Appellants' reliance on BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 34; Reply
Br. 10-11) is likewise unavailing. There, the court held eligible claims
directed to a technology-based solution to filter Internet content that
overcame existing problems with other Internet filtering systems by making
a known filtering solution-namely a "one-size-fits-all" filter at an Internet
Service Provider (ISP}--more dynamic and efficient via individualized
filtering at the ISP. BASCOM, 827 F.3d at 1351. Notably, this customizable
filtering solution improved the computer system's performance and,
therefore, was patent-eligible. See id. But unlike the filtering system
improvements in BASCOM that added significantly more to the abstract idea
in that case, the claimed invention here uses generic computing components
to implement an abstract idea as noted previously.
In conclusion, the additional recited elements----considered
individually and as an ordered combination----do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 3, 5-19, 21, 23-35, 37--43, and 45-50 not argued
separately with particularity.
26
Appeal2018-006916
Application 14/346,674
THE OBVIOUSNESS REJECTION OVER HARMAN,
CHANDRASEKARAN, AND LIN
Regarding independent claim 1, the Examiner finds that Harman's
method of operating a document transformation system including, among
other things, ( 1) determining a first set of instructions based on at least one
aspect of a received first document; (2) attempting to extract the document's
header and footer data according to respective first header- and footer-
specific instructions of the first instruction set and, if unsuccessful, (3)
attempting those extractions according to respective second header- and
footer-specific instructions of the first instruction set. Ans. 5-9. Although
the Examiner acknowledges that Harman does not ( 1) execute instructions
autonomously without user interaction, and (2) concatenate data remaining
after extracting all of the first document's header and footer data, the
Examiner cites Chandrasekaran and Lin for teaching features (1) and (2),
respectively, in concluding that the claim would have been obvious. Ans. 9-
10.
Appellants argue that Harman does not determine a first set of
instructions based on at least one aspect of a received first document, let
alone attempt to extract the document's header and footer data according to
respective header- and footer-specific instructions autonomously without
user interaction. App. Br. 15-19; Reply Br. 4--5. According to Appellants,
Harman's system processes only one document type after an extensive,
iterative manual setup process, unlike the claimed invention that is said to
operate on multiple document types. App. Br. 18-19; Reply Br. 4--5.
Appellants add that Chandrasekaran does not concatenate data and extract
data from headers or footers, nor does Lin concatenate remaining data after
27
Appeal2018-006916
Application 14/346,674
extracting headers and footers as claimed. App. Br. 20-21. Appellants also
contend that modifying Harman's single-page system with Lin's multi-page
system would render Harman inoperable and unsatisfactory for its intended
purpose. App. Br. 21; Reply Br. 7-8.
ISSUES
(1) Under§ 103, has the Examiner erred in rejecting claim 1 by
finding that Harman, Chandrasekaran, and Lin collectively would have
taught or suggested ( 1) determining a first set of instructions based on at
least one aspect of a received first document; and (2) autonomously without
user interaction, (a) attempting to extract the document's header, footer, and
line-item data according to respective first header-, footer-, and line item-
specific instructions of the first instruction set and, if the header and footer
extractions are unsuccessful, attempting those extractions according to
respective second header- and footer-specific instructions of the first
instruction set; and (b) concatenating data remaining after extracting all of
the first document's header and footer data.
(2) Is the Examiner's proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion? This issue turns on whether
the proposed combination would render Harman unsatisfactory for its
intended purpose.
ANALYSIS
We begin by construing various limitations in claim 1. First, despite a
key issue in this dispute centering on whether certain steps are performed
28
Appeal2018-006916
Application 14/346,674
autonomously without user interaction, the first three steps of claim 1 need
not be so performed. Rather, they could be performed manually and still
satisfy the claim.
Second, despite the possibility that attempted extractions of header
and footer data may be unsuccessful according to certain associated
instructions, thus necessitating using other instructions in subsequent header-
and footer-data extraction attempts, claim 1 's method nonetheless
presupposes that the header and footer data were extracted successfully by
concatenating remaining data after extracting all of the header and footer
data from the first document.
The same, however, cannot be said for line items. That is, the recited
method does not actually extract line items, but rather merely attempts to
extract them. And the fact that this attempted line item extraction is the last
clause of claim 1 does not mean that it must be performed last to satisfy the
claim. It is well settled that method steps are not ordinarily construed to
require an order unless they expressly or implicitly require performance in
that order-a requirement that is not present here, at least with respect to the
recited line item extraction attempt. Altiris v. Symantec Corp., 318 F.3d
1363, 1369 (Fed. Cir. 2003) (citing Interactive Gift Express, Inc. v.
Compuserve Inc., 256 F.3d 1323 (Fed. Cir. 2001)). Nor have Appellants
shown that the Specification expressly or implicitly requires this particular
order, namely that the attempted line item extraction be performed last. See
Altiris, 318 F.3d at 1369-70 (noting that method steps are not ordinarily
construed to require an order unless the claim or Specification requires
performance in that order).
29
Appeal2018-006916
Application 14/346,674
We also note that claim 1 recites two key conditions with respect to
the respective header and footer data extraction attempts. That is, the claim
requires attempting to extract header data according to a second one of
header specific extraction instructions if this attempt according to a first one
of such instructions was unsuccessful. A similar condition is recited for the
footer data extraction attempt.
Our emphasis on the term "if' underscores these conditional
limitations that, in a recited method, need not be satisfied to meet such a
claim. See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792
(PT AB Apr. 28, 2016) (precedential); see also MPEP § 2111.04(II) ( citing
Schulhauser).
But where, as here, the claim also recites an apparatus whose structure
performs a function that need only occur if a condition precedent is met, the
claim still requires structure for performing the function should the condition
occur. See Schulhauser, 2016 WL 6277792, at *14--15. Therefore, structure
of independent system claims 19 and 43, namely the processor and
computer-readable medium with stored instructions to implement the recited
functionality, is present in the system regardless of whether the recited
conditions are met and the functions are actually performed.
Because the recited "if' conditions need not be satisfied to meet the
claim, the recited header and footer data extraction attempts according to
respective second instructions need not be performed to satisfy the claim.
Although both header and footer data are ultimately extracted successfully
as noted in claim 1 's concatenating clause ( where concatenation occurs after
this successful extraction), they need not be extracted according to the
second respective instructions associated with those extractions because
30
Appeal2018-006916
Application 14/346,674
these instructions are used only if these extraction attempts under the first
respective instructions are unsuccessful----conditions that need not be
satisfied to meet the claim as noted above. Rather, the header and footer
data may have been extracted successfully according to the first-not the
second-header- and footer-specific instructions. Therefore, to the extent
that Appellants contend that the cited prior art does not teach or suggest
attempting to extract header and footer data according to the associated
second instructions (see App. Br. 15-20; Reply Br. 4--5), such arguments are
unavailing and not commensurate with the scope of claim 1 for that reason
alone.
Nevertheless, we are unpersuaded of error in the Examiner's rejection
of claim 1 even if the recited conditions had to be satisfied to meet the claim
(which they do not). Turning to the rejection, we see no error in the
Examiner's reliance on Harman for teaching, among other things, the recited
(1) instruction set determination, and (2) header, footer, and line item data
extraction attempts. See Ans. 5-9, 39--40.
Harman's system reformats and adds control indicia to a file by using
( 1) a setup process that defines import parameters used to extract
information from a print stream; and (2) a runtime process that reformats the
input file and modifies it to include control indicial as a new print stream.
Harman, Abstract; id. ,r 11. As noted in Harman's paragraph 33, the import
process can define import set-up parameters involving various types of data
associated with typical text files including (1) document header information;
(2) variable information; (3) footer information; and ( 4) destination address
information. The input setup process controls where from the input file to
retrieve information. Harman ,r 33. For example, set-up parameters can be
31
Appeal2018-006916
Application 14/346,674
instructed that the document's first five lines include header information, the
next 20 lines include variable information, etc. Id. Document fields are also
defined in the import setup process, and import parameters control the
location to import the text for those fields. Id.
Harman's import set-up process is shown in Figure 4A. In step 110,
the user defines the text file's overall layout including line number, starting
column, width, and type of each field to extract from the file. Id. ,r 82. In
addition, various sections in Harman's parameter set-up define fields that are
to be extracted from certain pages of the document as well as the input file's
line items section. Id. ,r 85-86.
After set-up completes in step 120 of Harman's Figure 4A, the import
process is tested in step 130 and, if no errors occur at step 140, import set-up
completes. Id. ,r 89. But if errors occur during the test import as determined
in step 140, the process returns to step 110 to redefine the set-up parameters.
Id.
Harman's import process is shown in Figure 5 where, after reading a
page in step 240, header, address, and line item information is extracted
from the first page in steps 260 to 310, and footer data extracted from the
last page in step 300. Id. ,r 99.
Given this functionality, we see no error in the Examiner's reliance on
Harman for at least suggesting attempting to extract document header and
footer data according to a first set of associated instructions during an initial
test import in step 130 of Figure 4A. Notably, if these extraction attempts
are unsuccessful due to errors encountered during this initial test as
determined in step 140, the extractions are attempted again using a second
set of associated instructions by returning back to step 110 to redefine the
32
Appeal2018-006916
Application 14/346,674
parameters and field definitions and repeating the test in step 130 as the
Examiner indicates. See Ans. 7-8, 42 (noting that when an error occurs in
Harman, user must provide a different set of predefined extraction
instructions).
Although the Examiner acknowledges that Harman does not perform
this process autonomously without user interaction as claimed, we
nonetheless see no error in the Examiner's reliance on Chandrasekaran's
Abstract merely to show that it is known to select a different set of
instructions automatically when an error occurs in a software-based system,
and that providing functionality to switch extraction-based instructions in
Harman automatically upon encountering errors in import tests would have
been at least an obvious variation. See Ans. 9, 41--42. Merely replacing
manual activity with an automatic means to accomplish the same result, as
here, is an obvious improvement. See In re Venner, 262 F .2d 91, 95 (CCP A
1958). Nor have Appellants shown persuasively that performing these
functions automatically in lieu of at least some manual interaction would
have been uniquely challenging or otherwise beyond the level of ordinarily
skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007).
Appellants' arguments regarding Chandrasekaran's alleged
shortcomings in extracting data from headers or footers and concatenating
remaining data after successful extraction (App. Br. 19-20), are inapposite
to the limited purpose for which Chandrasekaran was cited, namely merely
to show that switching instructions automatically responsive to errors is
known in the art, and that providing such an automatic selection
functionality when errors occur during import testing in Harman would have
33
Appeal2018-006916
Application 14/346,674
been obvious as noted above. Such an enhancement uses prior art elements
predictably according to their established functions-an obvious
improvement. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,417 (2007).
In short, Appellants' arguments regarding Harman's and Chandrasekaran' s
individual shortcomings in this regard (App. Br. 17-20; Reply Br. 4--5), do
not show nonobviousness where, as here, the rejection is based on the cited
references' collective teachings. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). And even assuming, without deciding, that Harman's
set-up process is limited to one document type as Appellants contend (App.
Br. 18-19; Reply Br. 4--5), the claim nevertheless does not preclude
Harman's above-noted test import functionality that at least suggests, among
other things, attempting to extract document header, footer, and line item
data iteratively using different associated instructions if such attempts are
unsuccessful.
We reach this conclusion despite the apparent difficulties in
transforming different types of documents automatically as noted by Mr.
Will Anderson in his declaration. See Declaration Under 37 C.F.R. § 1.132
dated Aug. 4, 2017 ("Anderson Deel."). Notably, Mr. Anderson is the VP of
Software Development at Ecmarket Inc., the assignee of the present
application. Anderson Deel. ,r 1. But leaving aside the fact that Mr.
Anderson is an interested party-a fact that diminishes the declaration's
probative value8-we fail to see how Mr. Anderson's averments
persuasively rebut the Examiner's findings and conclusions, particularly in
8 See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776, F.2d 281,
294 (Fed. Cir. 1985) (noting that an expert's interest in the outcome of the
case is a factor in assessing the probative value of an expert opinion).
34
Appeal2018-006916
Application 14/346,674
light of the scope and breadth of the claim and the cited prior art's collective
teachings. Although we appreciate Mr. Anderson's insights in this regard,
the weight of the evidence on this record nevertheless favors the Examiner.
Nor do we find error in the Examiner's reliance on Lin (Ans. 9-10,
43--44), for at least suggesting concatenating data remaining after extracting
all of the first document's header and footer data despite Appellants'
arguments to the contrary (App. Br. 20-21; Reply Br. 5-8). The
Specification does not define the term "concatenating," unlike other terms
whose definitions leave no doubt as to their meaning. See Spec. 8-9
( defining various terms). We, therefore, construe the term "concatenating"
with its plain meaning. The term "concatenate" is defined, quite broadly, as
"link together (event, things, etc.)." THE OXFORD AMERICAN DESK
DICTIONARY 117 (Frank Abate ed. 1998). Accord Burnett, 741 F. App'x at
781 (noting that the recited "concatenating" programming process merely
joins a string of numbers together).
As Lin explains, headers and footers do not belong in the body text
and, consequently, can fragment normal text flow if not extracted. For
example, in the document of Lin's Figure 1, a portion of which is
reproduced below, the phrase bridging the first and second pages in the top
half of the figure normally reads "we simply asked whether a second person
could see a first person's mental entity (a thought about a dog)." A portion
of Lin's Figure 1 showing two document pages is reproduced below.
35
Appeal2018-006916
Application 14/346,674
::;;·~;,p::~::;;!t,t~l;:~::;i~:;;;:,/~,;:~t~i :~~'.!;;t;;. en,r.i~;'~,\~,§
~"?:«I:/ .. ~f~ '."-)*t.1$.~ u~~~=*.l:,.;,· (~=tJ!"f~. :i:ffi·.a_g,1:s:~~~~~~ ... j:;~~t ~ ~\o~ijf.:t}~ !$~d ·:&t~~
.{~;t~r~~~""~ly., j~_~t -~~ ~ht· h,~ ~:ti ff'ii~d~ l~ :R~i f.~e,;, t~?/%) ®,,'lj;X\'l'°'~; *'1!
1n1b1~:ti~~ ~l -~~~~~~ ~~~:~~r~,.s ·~',j.·j~~ f~;i~) ... ~\-~:s.l f$b:~ecta, \~i~ ~L~n:plj' ~~~
wh.:-th,;:r $i; $~"'.t)\1;$ petiitm ,wdJ t~~ iii fa,st r~s:sort& IT:liA"ti~I *:t'l:tlty {-~
ih,;mt~:t ;;;h~~ :~ "~~~t\ Z."'hlh'.iru, urid~t~1h,, ~:;,m{ ;iQ. ~t th<:'ii ,i/.,>;,;}\m},
#;,m,fy t.Xit ,f\~t ~h'f, fu':S~ f-Hll:tm: s:oolcl rn.~ S>t'>\!· M'li-M l\~r t:b !::Mtt~!
N'li.ttt.'.'i .• Tb~,~. th~lr~~W,ffi.1:i:,."& ~~ lt,\It,li~., ~tit fJW~@,1%:' ~~ v.ptlus.t..lln-d,
J~ th# t!~flJi:\l Ji.!.;l~~$i ~i,.~ ¢,n,!.\t,\~ ,,~t' ;SM~~ij~~ f~i~~.l~t, f;<~ lhf
rt~\l~l imii<_©:,t,:1,y M:W,/ll~tt. k;:~t!a'"~~, d'lii..:k~~ ,;,c;tt:'n :,,;&s.J th."1-tihty f.i:-i::1M
" ~ • -~ • •. - ti~ ,:; • \~-~-. ;.., .... .
Partial detail view of Lin's Figure 1 showing two document pages
Due to the intervening header "Distinction between Mental, Physical
Phenomena 49" on the second page, without extracting the header, the
sentence across the two pages reads (with our emphasis) "we simply asked
Distinction between Mental, Physical Phenomena 49 whether a second
person could see a first person's mental entity (a thought about a dog)." Lin
1 ( emphasis added). As our emphasis indicates, including the header makes
the sentence difficult to understand.
Given these difficulties, Lin's system extracts headers and footers
from various electronic documents by detecting headers and footers
automatically via page association. Lin, Abstract. Given this functionality,
Lin at least suggests that after extracting the header and footer, the
remaining data in the document is concatenated so that the remaining data is
more understandable without the header and footer data. In the example in
36
Appeal2018-006916
Application 14/346,674
Lin's Figure 1 noted above, after extracting the header "Distinction between
Mental, Physical Phenomena 49 ," the phrases before and after the header,
namely ( 1) "we simply asked," and (2) "whether a second person could see a
first person's mental entity (a thought about a dog)," would be concatenated
to form an understandable phrase consistent with the original text, namely
"we simply asked whether a second person could see a first person's mental
entity (a thought about a dog)." That Lin emphasizes on page 1 that a multi-
page document can be rendered as a complete Hypertext Markup Language
(HTML) page where it is desirable to have only continuous text flow with no
page breaks only underscores Lin's suggestion of concatenating remaining
document data after extracting the header and footer data in this document
re-purposing application. Accord Ans. 43 (noting this suggestion).
Given this functionality, we see no error in the Examiner's reliance on
Lin for at least suggesting concatenating, or linking together, remaining data
after extracting all header and footer data. Nor do we find error in
combining this teaching with the teachings of Harman and Chandrasekaran,
as the Examiner proposes, despite Appellants' arguments to the contrary
(App. Br. 20-21; Reply Br. 5-8). Such an enhancement uses prior art
elements predictably according to their established functions-an obvious
improvement. See KSR, 550 U.S. at 417.
That Lin uses a particular technique to extract headers and footers,
namely by associating pages, is not germane to the limited purpose for
which Lin was cited, namely merely to show that concatenating remaining
data after extracting all header and footer data is known in the art, and that
providing such a concatenation in connection with the Harman-
Chandrasekaran system would have been obvious. See Ans. 9-10, 43--44.
37
Appeal2018-006916
Application 14/346,674
That is, even assuming, without deciding, that Harman's system operates
solely on a page-by-page basis as Appellants contend (App. Br. 21 ), and Mr.
Anderson indicates (Anderson Deel. ,r 21 ), the Examiner is not proposing to
bodily incorporate Lin's particular header and extraction technique into the
Harman-Chandrasekaran system, but rather relies on Lin merely to show that
concatenating remaining data after extracting header and footer data is at
least suggested by Lin, and, therefore, such a concatenation would have been
obvious in the Harman-Chandrasekaran system. Although we appreciate
Mr. Anderson's insights in paragraphs 6 to 21 of his declaration, the weight
of the evidence on this record nevertheless favors the Examiner.
We reach this conclusion emphasizing that "a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012). Nor is the test for obviousness whether a secondary
reference's features can be bodily incorporated into the structure of the
primary reference. In re Keller, 642 F.2d 413,425 (CCPA 1981). Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. Id. And here, the Examiner's
proposed combination would not render Harman unsatisfactory for its
intended purpose as Appellants contend (App. Br. 21; Reply Br. 7-8), but
rather uses prior art elements predictably according to their established
functions to yield a predictable result. See KSR, 550 U.S. at 417. We,
therefore, find the Examiner's combination of the teachings of the cited
references is supported by articulated reasoning with some rational
underpinning to justify the Examiner's obviousness conclusion.
38
Appeal2018-006916
Application 14/346,674
Lastly, we note that although Appellants argue for the first time on
pages 5 and 6 of the Reply Brief that Lin does not disclose the particular
sequence recited in connection with the concatenation limitation in
independent claim 35, these particular arguments were not raised in the
Appeal Brief and are, therefore, waived as untimely under 37 C.F.R.
§ 4I.41(b)(2). 9 Compare App. Br. 15-21 with Reply Br. 5-6. Nor has good
cause been shown to raise these new arguments in the first instance in the
Reply Brief.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 3, 5-12, 14--19, 21, 23-30, 32-35, 37-39, 41--43, 45--47,
49, and 50 not argued separately with particularity.
THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner's obviousness rejection of claims 13,
40, and 48. Ans. 35-38. Because this rejection is not argued separately with
particularity, we are not persuaded of error in this rejection for the reasons
previously discussed.
9 Although Appellants nominally argue claims 35 and 43 separately on page
21 of the Appeal Brief, Appellants merely reiterate arguments made for
claim 1, and did not recite the particular disputed limitations of claim 35 that
are argued on pages 5 and 6 of the Reply Brief-limitations that differ from
those in claim 1. Consequently, Appellants' newly-raised arguments for
claim 35 in the Reply Brief are waived as untimely.
39
Appeal2018-006916
Application 14/346,674
CONCLUSION
The Examiner did not err in rejecting claims 1, 3, 5-19, 21, 23-35,
37--43, and 45-50 under§§ 101 and 103.
DECISION
We affirm the Examiner's decision to reject claims 1, 3, 5-19, 21, 23-
35, 37--43, and 45-50.
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
40