Ex Parte RINCON et al

Patent Trial and Appeal Board

Aug 22, 2018

13235133 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/235, 133 09/16/2011
69316 7590 08/24/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Lilian RINCON
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.
336067-US-NP 7001
EXAMINER
MACASIANO, MARILYN G
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
08/24/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LILIAN RINCON and ALOK KHANNA
Appeal 2017-006111
Application 13/235,133 1
Technology Center 3600
Before ROBERT E. NAPPI, MATHEW R. CLEMENTS,
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-7 and 15-2 7. Claims 8-14 are cancelled. We have
jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellants identify Skype as the real party in interest. (App. Br. 3.)
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Application 13/235, 133
THE INVENTION
Appellants' disclosed and claimed invention is directed to
communicating advertisement-funded telephone calls over a packet-based
network. (Spec. ,i 1.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method comprising:
identifying, in an electronic document displayed on a
computing device, a phone number for a relevant party, the
phone number being displayed in a first visual format and being
usable to establish communication, via a packet-based
communications system provider, between a user of the
computing device and the relevant party;
determining a sponsorship configuration of the phone
number, the sponsorship configuration being provided by a
third party sponsor distinct from the user, the relevant party,
and the packet-based communications system provider;
determining a caller account configuration associated
with the user of the computing device;
amending, via logic executed by the computing device,
the electronic document to visually reformat the phone number
according to the sponsorship configuration and the caller
account configuration such that the visually reformatted phone
number is displayed in the electronic document according to a
second visual format different than the first visual format and is
selectable to initiate a sponsored call to the relevant party;
receiving an indication of a selection of the visually
reformatted phone number from the electronic document; and
causing, in response to said receiving the indication and
via logic executed by the computing device, a sponsored call to
be established with the relevant party such that data of the
sponsored call is transmitted from the computing device at least
partially over a packet-based network for receipt by a receiving
device associated with the relevant party.
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REJECTIONS
The Examiner rejected claims 1-7 and 15-27 under 35 U.S.C. § 101
as being directed to non-statutory subject matter. (Final Act. 2-5.)
ISSUE ON APPEAL
Appellants' arguments in the Appeal and Reply Briefs present the
following issue:2
Whether the Examiner erred in finding claims 1-7 and 15-27 as
directed to non-statutory subject matter. (App. Br. 13-29.)
ANALYSIS
The Examiner concludes claims 1-7 and 15-27 are patent-ineligible
under 35 U.S.C. § 101 because the claims are directed to the fundamental
economic practice of "funding telephone calls with advertisements." (Final
Act. 2-3.) The Examiner finds that there is nothing in the claims that is
significantly more than this abstract idea, because "the use of computer
systems having generic components does not render statutory, a claim to an
abstract idea." (Final Act. 3.) As to claims 15-20, the Examiner also
concluded the claims encompass transitory signals and thus are patent-
ineligible under 35 U.S.C. § 101 for that additional reason. (Final Act. 5.)
We separately consider these two aspects of the rejection.
2 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed March 7, 2016); the corrected
Appendix (filed July 25, 2016); the Reply Brief (filed Feb. 27, 2017); the
Final Office Action (mailed Aug. 26, 2015); and the Examiner's Answer
(mailed Dec. 27, 2016) for the respective details.
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Appeal 2017-006111
Application 13/235, 133
"Fundamental Economic Practice" Rejection: Claims 1-7 and 15-27
In analyzing the claims, the Examiner considers some of the detailed
operations recited therein:
• identifying in an electronic document a phone number useable in a
packet-based communications system;
• determining a third party sponsor related to the phone number;
• determining the caller account configuration associated with the user;
• reformating the phone number according to the sponsorship and the
caller account information;
• when the user selects the reformatted phone number, establishing a
call over the packet-based network.
(Final Act. 3-4.)
The Examiner characterizes these steps as "describing only generic,
routine and well-understood operations of computer systems." (Final Act.
4.) The Examiner thus analyzes these elements under the "second step" of
the two-step Alice framework (referred to further below). However,
Appellants argue, under the first step of Alice, that these and other claim
limitations, taken as a whole, "can readily be analogized to the claims in
DDR Holdings, LLC v. Hotels.com et al., 773 F.3d 1245 (Fed. Cir. 2014),"
because "'the claimed solution is necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks[,]"' and not "'merely recit[ing] the performance of some business
practice known from the pre-Internet world along with the requirement to
perform it on the Internet."' (App. Br. 15, quoting DDR at 1257.)
We are persuaded the Examiner's approach is in error. The Supreme
Court has long held that "[l]aws of nature, natural phenomena, and abstract
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Application 13/235, 133
ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014) (quoting Assoc.for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 598-99 (2013)). The "abstract ideas" category
embodies the longstanding rule that an idea, by itself, is not
patentable. Alice Corp., 134 S. Ct. at 2354-55 (quoting Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims "individually and 'as an ordered combination'" to determine
whether there are additional elements that "'transform the nature of the
claim' into a patent-eligible application." Id. ( quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (quoting Mayo, 566 U.S. at 73.) The
prohibition against patenting an abstract idea "'cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or adding 'insignificant postsolution activity."' Bilski v.
Kappas, 561 U.S. 593, 610-11 (2010).
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Application 13/235, 133
Turning to the first step of the Alice inquiry, we do not agree with the
Examiner's finding that the claims are merely directed to "funding telephone
calls with advertisements." There is no definitive rule to determine what
constitutes an "abstract idea." Rather, the Federal Circuit has explained that
"both [it] and the Supreme Court have found it sufficient to compare claims
at issue to those claims already found to be directed to an abstract idea in
previous cases." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed.
Cir. 2016); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F .3d
1288, 1294 (Fed. Cir. 2016) (explaining that, in determining whether claims
are patent-eligible under § 101, "the decisional mechanism courts now apply
is to examine earlier cases in which a similar or parallel descriptive nature
can be seen-what prior cases were about, and which way they were
decided"). The Federal Circuit also noted that "examiners are to continue to
determine if the claim recites (i.e., sets forth or describes) a concept that is
similar to concepts previously found abstract by the courts." Amdocs, 841
F.3d at 1294 n.2.
Here, we agree with Appellants that DDR is analogous to the
circumstances here: "Similar to the case in DDR, the claims in the instant
application provide a solution to a problem specifically arising in the realm
of computer networks." (App. Br. 16.) In particular, the claims are directed
to providing a user with the ability to select a displayed telephone number
that is reformatted to place a call over a packet-based network tailored to
both the user's and a third party's account information. Id.
Also instructive is McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016). As explained by the Federal Circuit in SAP
America, Inc. v. Investpic, LLC, 890 F.3d 1016, 1021-22 (Fed. Cir. 2018),
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The claims in McRO were directed to the creation of something
physical-namely, the display of "lip synchronization and facial
expressions" of animated characters on screens for viewing by
human eyes. Id. at 1313. The claimed improvement was to how
the physical display operated (to produce better quality images),
unlike . . . a claimed improvement in a mathematical technique
with no improved display mechanism. The claims in McRO thus
were not abstract in the sense that is dispositive here.
Similar to the claims in McRO, the claims here are directed to the creation of
something physical - a displayed, reformatted telephone number associated
with a third-party sponsor placed on a computer screen for viewing and
selection by the human user.
As the claimed method is not directed to an abstract idea, we do not
need to proceed to Alice step two. See Enfish, 822 F.3d at 1339 (citing
Alice, 134 S. Ct. at 2355). Accordingly, we do not sustain this aspect of the
Examiner's 35 U.S.C. § 101 rejection of claims 1-7 and 15-27.
"Encompassing Transitory Signals" Rejection: Claims 15-20
Appellants argue that the Examiner errs in concluding that claims 15-
20 are non-statutory under 35 U.S.C. § 101 because they encompass
transitory signals. (App. Br. 28-29.) Independent claim 15 is directed to a
"hardware computer readable storage device storing a program which is
executable to perform operations." (Corrected Appx. 6.) The Examiner
concludes that this language is broad enough to encompass transitory
transmission waves and signals, which are not patentable subject matter.
(Final Act. 5.) See In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007).
Appellants argue the inclusion of "hardware" and "device" meets the
requirements for statutory subject matter under Section 101. (App. Br. 14.)
Our precedential decision in Ex parte Mewherter, I 07 USPQ2d 1857 (PTAB
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Application 13/235, 133
2013) (precedential) ( expanded panel) is controlling. In Ex parte
Mewherter, the Board held a claim that recited computer-readable storage
medium, absent contrary indication in the specification, is ineligible under
§ 101 since it encompasses transitory media. Numerous decisions of the
Board similarly conclude that a recitation of "computer-readable storage
devices" also encompasses transitory signals, absent contrary disclosure in
the specification. E.g., Ex Parte Joshi, Appeal 2014-004812, 2016 WL
4159110, at *5 (Aug. 4, 2016); Ex Parte McMullin, Appeal 2012-004839,
2014 WL 7336710, at *3 (Dec. 17, 2014); Ex Parte Montgomery, Appeal
2013-007047, 2015 WL 2063304, at *2 (May 1, 2015). We are not
persuaded that adding the word "device" requires a different conclusion.
We note Appellants' Specification states:
In yet another embodiment, a computer readable storage
medium containing a program which, when executed, performs
an operation of rendering a document, is disclosed ....
Other embodiments include, without limitation, a non-
transitory computer-readable storage medium that includes
instructions that enable a processing unit to implement one or
more aspects of the disclosed methods ....
(Spec. ,-J,-J 7, 8 ( emphasis added)). This disclosure of one embodiment that
includes a "computer readable storage medium" and a separate embodiment
that includes a "non-transitory computer-readable storage medium" strongly
suggests claim coverage encompassing transitory signals.
Accordingly, we sustain the Examiner's rejection of Appellants'
claims 15-20 as directed to non-statutory subject matter under 35 U.S.C.
§ 101.
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DECISION
The Examiner's rejection of claims 15-20 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1-7 and 21-27 under 35 U.S.C.
§ 101 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART
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