Ex Parte Poulos et al

Patent Trial and Appeal Board

Dec 28, 2016

13525187 (P.T.A.B. Dec. 28, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/525,187 06/15/2012 John Poulos P005CA.US.02 1764
(79967.0009)
26582 7590 12/30/2016
HOLLAND & HART, LLP
222 South Main Street, Suite 2200
P.O. Box 11583
SALT LAKE CITY, UT 84147
EXAMINER
ZELAS KIEWICZ, CHRYSTINA E
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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):
patentdocket @ hollandhart. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN POULO, JAMES HOOVER,
NICK IKONOMAKIS, and GORAN OBRADOVIC
Appeal 2014-009362
Application 13/525,187
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and NINA L.
MEDLOCK, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 27-46. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). Appellants appeared for oral hearing on
December 13, 2016.
We REVERSE.
Appeal 2014-009362
Application 13/525,187
Claim 27 is illustrative:
27. A method for determining votes recorded on a voter-
marked paper ballot, comprising:
receiving, at a ballot processing computer, optical image
data comprising an optical image of a voter-marked paper
ballot, the voter-marked paper ballot including voter selection
areas;
performing a pixel determination of one or more voter
selection areas, the pixel determination identifying pixels in the
optical image that contain a voter marking;
determining that a first subset of the one or more voter
selection areas have been selected based on the pixel
determination when a pixel count of one or more voter selection
areas exceed a predefined first threshold value for determining
a specific voter selection area has been selected;
determining that a second subset of the one or more voter
selection areas have not been selected when a pixel count of
one or more voter selection areas fall below a predefined
second threshold value for determining a specific voter
selection area has not been selected;
determining that a third subset of the one or more voter
selection areas includes at least one ambiguous mark when a
pixel count of one or more voter selection areas fall between the
predefined first threshold value and second threshold value; and
outputting an indication that one or more voter selection
areas are ambiguous when it is determined that the voter-
marked paper ballot includes at least one ambiguous mark.
Appellants appeal the following rejections:
1. Claims 27-40 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
2. Claims 27, 28, and 32-46 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chung et al. (US 2007/0170253, pub. July 26, 2007) in
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Appeal 2014-009362
Application 13/525,187
view of Kakarala et al. (US 2003/0052981, pub. Mar. 20, 2003).
ISSUE
Did the Examiner err in rejecting claims 27 40 under 35 U.S.C. § 101
because the Examiner has not established that the claims are directed to an
abstract idea?
Did the Examiner err in rejecting claims 27 46 under 35 U.S.C.
§103 (a) because Kakarala does not disclose determining that one or more
voter selection areas include at least one ambiguous mark?
ANALYSIS
Rejection under 35 U.S.C. §101
The Examiner rejects claims 27 40 under 35 U.S.C. § 101 as directed
to non-statutory subject matter. In the rejection, the Examiner refers to the
[the USPTO’s] . . . Interim Guidance for Determining Subject Matter
Eligibility for Process Claims in View of Bilski v. Kappos” (75 Fed. Reg.
43,922 (July 27, 2010)). (Final Act. 3).
Although the Examiner mentions whether the claimed invention is
directed to an abstract idea (Answer 2), the Examiner’s analysis appears to
be largely based on the machine-or-transformation test, which was displaced
by the Court’s decision in Bilski v.Kappos, 561 US. 593 (2010) which held
that the machine-or-transformation is not dispositive of the issue of whether
claims are directed to an abstract idea. As such, it is not clear that the
Examiner’s reasoning is consistent with the Interim Guidance for
Determining Subject Matter Eligibility for Process Claims in View of Bilski
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Appeal 2014-009362
Application 13/525,187
v. Kappos. In any event, we proceed to analyze the claims pursuant to the
two-part test for determining whether claims are directed to patentable
subject matter under the framework of the Court in Alice Corp. v. CLS Bank
Inti, 134 S. Ct. 2347 (2014) which followed the two-part test set forth in
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
(2012).
First, as to whether the claim is directed to an abstract idea, law of
nature, or natural phenomenon, see Alice, 134 S. Ct. at 2355, the Examiner
discusses whether the claimed method is directed to an abstract idea in the
Final Action. The Examiner, in the Answer, in response to the Appellants
arguing that the claims are not directed to an abstract idea, expresses
disagreement with the Appellants on whether the claims are directed to an
abstract idea. However, the Examiner does not establish that the method,
which involves a ballot processing computer that performs a pixel count of
voter-marked ballots on optical ballot images and determines whether the
pixel count is above a first threshold, below a second threshold, or falls
between the first and second thresholds, covers an abstract idea. There is no
articulation of an abstract idea. The Examiner states only that the claims fail
the machine-or-transformation test. We conclude that the Examiner fails to
demonstrate sufficiently that the claims are directed to an abstract idea.
Because we resolve this issue after consideration of the first step of
the Alice test, we need not reach the second step of the Alice test, e.g., as to
whether there are further claim limitations that contain an “inventive
concept” sufficient to “transform” an abstract idea into a patent-eligible
application. See Alice, 134 S. Ct. at 2357; USPTO 2014 Interim Guidance
on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618, 74,621 (Dec. 16,
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Appeal 2014-009362
Application 13/525,187
2014). For this reason, we do not sustain the Examiner’s rejection under
35 U.S.C. § 101 of claims 27-AO.
Obviousness
We will not sustain the Examiner’s rejection under 35 U.S.C. § 103(a)
of claims 27, 28, and 32-46 as being unpatentable over Chung in view of
Kakarala, because we agree with the Appellants that Kakarala does not
disclose determining whether the voter selection areas include at least one
ambiguous mark.
The Examiner relies on paragraphs 75 and 76 of Kakarala for teaching
this subject matter.
We find that Kakarala discloses a demosaicing process for
interpolating colors of a digital image obtained from an image sensor to
obtain all three primary colors at a single pixel location. The process uses a
vote logic to demosaic the image in which three votes are assigned for each
pixel. This vote logic does not relate to voter selection areas but rather to a
demosaicing process. As such, the disclosure in paragraphs 75 and 76
regarding votes relates to pixel votes in a demosaicing process not
determining whether voter selection areas include at least one ambiguous
mark.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 27 and claims and 32-40 dependent therefrom. We will also not
sustain the rejection of claim 41 and claims 42-46 dependent therefrom
because claim 41 also requires determining whether voter selection areas
include at least one ambiguous mark.
We will also not sustain the rejection of claims 29-31 as being
unpatentable over Chung in view of Kakarala and Munyer because the
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Appeal 2014-009362
Application 13/525,187
Examiner relies on Kakarala for teaching determining whether voter
selection areas include at least one ambiguous mark.
DECISION
The decision of the Examiner is reversed.
REVERSED
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