Ex Parte Rourk

Patent Trials and Appeals Board

Jun 17, 2019

13043373 - (D) (P.T.A.B. Jun. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/043,373 03/08/2011 Christopher J. Rourk
25555 7590 06/17/2019
JACKSON WALKER LLP
2323 ROSS A VENUE
SUITE 600
DALLAS, TX 75201
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.
999956.00007 8728
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
06/17/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. ROURK
Appeal2017-003576 1
Application 13/043,373 2
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant filed a Request for Rehearing ("Req. Reh'g"), pursuant to
37 C.F.R. § 41.52, on May 21, 2019, seeking reconsideration of our
Decision on Appeal mailed March 22, 2019 ("Decision"), in which we
affirmed the Examiner's rejection of claims 21-23 and 40-56 under
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
January 13, 2016) and Reply Brief ("Reply Br.," filed December 20, 2016),
and the Examiner's Answer ("Ans.," mailed October 20,216) and Final
Office Action ("Final Act.," mailed July 14, 2015). The record includes a
transcript of the March 13, 2019 oral hearing.
2 Appellant identifies the inventor, Christopher John Rourk, as the real party
in interest. App. Br. 4.
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Application 13/043,373
35 U.S.C. § 101 as directed to patent-ineligible subject matter. We have
jurisdiction over the Request under 35 U.S.C. § 6(b ). 3
DISCUSSION
We held, in our Decision, that the Examiner erred in concluding,
based on the March 23, 2015 Decision on Petition, that claims 21 and 40 are
not patentably distinct, and that the patentability of claims 40-56, therefore,
stands or falls with claim 21 (Decision 17-18). And we reversed the
Examiner's rejection of claims 40-56 under 35 U.S.C. § 103(a) because the
Examiner admittedly had not examined claims 40-56 under 35 U.S.C. § 103
and, as such, had not established a prima facie case of obviousness with
respect to those claims (id. at 18). We also reversed the Examiner's
rejection of claim 21, and its dependent claims 22 and 23, under § 103
because although claim 21 recited "charging the one or more network
operators for the content supplied to the consumers through the one or more
respective networks," the Examiner interpreted and examined claim 21
under § 103 as though it recited "charging the consumers for the content
supplied to the consumers through the one or more respective networks" (id.
at 16).
Appellant alleges in the Request that the Board, in addressing the
rejection of the claims under 35 U.S.C. § 101, improperly held "that
'Appellant argues the pending claims as a group,' when in fact Appellant
argued that none of claims 21-23 and 40-56 had been examined at any
3 We also affirmed the Examiner's rejection of claims 21-23 under
35 U.S.C. § 112, first paragraph, and we reversed the Examiner's rejections
of claims 21-23 and 40-56 under 35 U.S.C. § 103(a). Appellant seeks
reconsideration only of the affirmed rejection under§ 101. See Req.
Reh'g 1-2.
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Application 13/043,373
time" and "all the pending claims were ... separately argued" (Req.
Reh' g 2). Appellant also maintains that "the Board cannot reject the claims
if it is acting in compliance [with] the guidance set forth by the
2019 Revised Patent Subject Matter Eligibility Guidance at 84 FR pages 50-
57'' (id.). And Appellant requests that the Board reverse the rejection of all
claims under § 101 or, at a minimum, "designate the rejection of
claims 40-56 as a new ground of rejection and provide findings of fact as to
why the claims are not directed to different practical applications" (id.). We
decline Appellant's request.
As an initial matter, Appellant's assertion that none of claims 21-23
and 40-56 has been examined under 35 U.S.C. § 101 is squarely at odds
with the present record. And although Appellant maintains that "[t]he
primary argument made by Appellant was that the claims had not been
examined at all" (id.), we find no indication of record, nor does Appellant
direct us to any indication, that Appellant previously argued in either of its
briefs that the pending claims, or claims 40-56, specifically, had not been
examined under 35 U.S.C. § 101.
In fact, rather than failing to examine the claims under § 101, the
Examiner explicitly (and separately) addressed claims 21-23 and claims 40-
56 in the Final Office Action (Final Act. 5-6). And the Examiner
determined, with respect to each of these sets of claims, that the claims are
directed to an abstract idea, i.e., allowing consumers to choose content, and
that the additional elements or combination of elements in the claims, other
than the abstract idea, does not provide meaningful limitations to transform
the abstract idea into a patent eligible application of the abstract idea such
that the claims amount to significantly more than the abstract idea itself (id.).
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Appellant argued in the Appeal Brief that the rejection of claim 21
under § 103 should be reversed because Stefik, on which the Examiner
relied, only discloses charging the consumers for content supplied to the
consumers, not a network operator, as called for in claim 21:
Claim 21 further includes charging the one or more network
operators for the content supplied to the consumers through the
one or more respective networks. The Office relies on Stefik at
46: 1-44 for the alternate limitation of "charging the consumers
for the content supplied to the consumers through the one or
more respective networks," but as can be seen, the efforts of the
Office are meaningless because the re-written claim limitation
bears no relationship to the actual claim language, as the cited
section of Stefik instead only discloses charging the consumer
for the content, not a network operator.
(App. Br. 23). But Appellant presented no such distinct argument with
respect to the rejection under§ 101. Nor did Appellant otherwise contend
that the Examiner's rewriting of claim 21 as calling for charging consumers
for content, rather than a network operator, had any bearing on the patent-
eligibility determination under 35 U.S.C. § 101 - it does not.
Appellant asserts in the Request, as described above, that the Board
improperly held "that 'Appellant argues the pending claims as a group"'
(Req. Reh'g 2). And Appellant maintains that it identified "the claims that
were being separately argued with separate headings that identified
individual claims by claim number" (id. at 3). Yet, the only headings in the
Appeal Brief with respect to the§ 101 rejection read: "2. The pending
claims are directed to patentable subject matter." (App. Br. 11); "A. The
Office has failed to properly apply controlling case law in rejecting the
claims under 35 USC 101." (id.); and "B. The claims are directed to
patentable subject matter under 35 U.S.C. 101." (id. at 15). Appellant also
repeatedly phrased its challenges to the § 101 rejection with reference to
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"the claims," generally, or specifically to claim 21 (App. Br. 11-16, 18),
which the Board treated as representative (Decision 4).
The only explicit reference to any other claim appears on pages 16
and 17 of the Appeal Brief. And there, Appellant merely paraphrases the
language of claims 22, 23, and 40-46, and asserts that these claims include
limitations that prevent the claims from preempting any abstract idea in its
entirety (App. Br. 16-17)- an argument that the Board fully addressed in
the Decision (Decision 13-14).
Even accepting Appellant's argument that the Board erred in finding
that the pending claims are argued as a group, any such error was harmless.
Aside from the preemption argument, which the Board fully addressed,
Appellant offered no substantive argument with respect to any of claims 22,
23, and 40-46 separate from the arguments with respect to claim 21.
After Appellant's briefs were filed in this appeal, and the Examiner's
Answer mailed, the USPTO published revised guidance for use by USPTO
personnel in evaluating subject matter eligibility under 35 U.S.C. § 101.
2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the "2019 Revised Guidance"). That
guidance revised the US PTO' s examination procedure with respect to the
first step of the Mayo/ Al ice framework by ( 1) providing groupings of subject
matter that is considered an abstract idea; and (2) clarifying that a claim is
not "directed to" a judicial exception ( and the eligibility analysis concluded)
if the judicial exception is integrated into a practical application of
that exception. Id. at 50. However, contrary to Appellant's suggestion (Req.
Reh'g 6), the 2019 Revised Guidance did not change the "standards for
determining subject matter eligibility." Nor, contrary to Appellant's
assertion (id.), did this Board "acknowledge" during the oral hearing that the
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2019 Revised Guidance effected any such change. In fact, the guidance
explicitly provides that
[t]his guidance does not constitute substantive rulemaking and
does not have the force and effect of law. The guidance sets out
agency policy with respect to the USPTO' s interpretation of the
subject matter eligibility requirements of 35 U.S.C. 101 in view
of decisions by the Supreme Court and the Federal Circuit. The
guidance was developed as a tool for internal USPTO
management and does not create any right or benefit, substantive
or procedural, enforceable by any party against the USPTO.
Rejections will continue to be based upon the substantive law,
and it is those rejections that are appealable to the Patent Trial
and Appeal Board (PTAB) and the courts.
2019 Revised Guidance, 84 Fed. Reg. at 51. And, the 2019 Revised
Guidance further states that it operates "[i]n accordance with judicial
precedent" and merely "extracts and synthesizes key concepts identified by
the courts." Id. at 52.
Appellant notes that, in accordance with the 2019 Revised Guidance,
as also described above, a claim is not "directed to" a judicial exception, and
is patent-eligible, if the recited judicial exception is integrated into a
practical application of the exception (Req. Reh'g 6). And Appellant
charges that the Board "did not address those controlling standards for
examination of patent application in the Decision, even though that was
discussed extensively at the oral hearing held March 13, 2019" (id.).
The Board, in fact, applied the 2019 Revised Guidance in rendering
the Decision. The Board also explicitly addressed the "controlling
standards," about which Appellant complains, at pages 7-8 of Decision -
finding no indication of record that the claimed invention integrates the
recited abstract idea into a "practical application," as that phrase is used in
the 2019 Revised Guidance.
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Appellant asserts in the Request that "Applicant addressed the fact
that the claims are directed to practical applications at least at pages 16 to 18
of Appellant's brief' (Req. Reh'g 6). Appellant, however, presented no
persuasive argument or reasoning in its Appeal Brief ( or, for that matter, in
the Reply Brief) to demonstrate that "the claims are directed to practical
applications." Instead, Appellant charged that the Office "has not provided
any evidence in support of this requirement [i.e., the Office's alleged
obligation to demonstrate that the claims have no practical application]"
(App. Br. 17-18), and then summarily asserted "it is quite apparent that the
claims provide numerous practical applications" and that "since 'the record
as a whole suggests that it is more likely than not that the claimed invention
would be considered a practical application of an abstract idea,' the [ § 101]
rejection should be withdrawn" (see id. at 18).
It also is telling here that when Appellant's counsel was asked during
the oral hearing, whether any of the considerations set forth in the
MANUAL OF PATENT EXAMINING PROCEDURE ("MPEP")
§ 2106.05(a}-(c) and (e}-(h) are applicable to the pending claims-
considerations that the 2019 Revised Guidance describes are indicative that
an additional element or combination of elements integrates the judicial
exception, e.g., the abstract idea, into a practical application, see 2019
Revised Guidance, 84 Fed. Reg. at 55 -Appellant's counsel's
acknowledged that these considerations are not addressed in the briefs and
further indicated that he was not prepared to address these matters at the
hearing (Tr. 7-8). Among the relevant considerations are whether "[a]n
additional element reflects an improvement in the functioning of a computer,
or an improvement to other technology or technical field"; whether "an
additional element implements a judicial exception with, or uses a judicial
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exception in conjunction with, a particular machine or manufacture that is
integral to the claim"; and whether "an additional element applies or uses the
judicial exception in some other meaningful way beyond generally linking
the use of the judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort designed to
monopolize the exception." 2019 Revised Guidance, 84 Fed. Reg. at 55.
Appellant variously argues at pages 7-12 of the Request that the§ 101
rejection is improper ostensibly because the pending claims are analogous to
the claims held patent-eligible in BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). But, those arguments,
presented for the first time in the Request, are not a proper basis for
rehearing. As such, they will not be considered. 4
We are not persuaded that we overlooked or misapprehended any
point of law or fact in rendering our Decision. Therefore, we decline to
modify our original Decision.
DECISION
Appellant's Request has been granted to the extent that we have
reconsidered our Decision in light of Appellant's Request, but is denied in
all other respects.
4 Under 37 C.F.R. § 4I.52(a)(l), "[a]rguments not raised, and Evidence not
previously relied upon ... are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) through (a)(4) of this section."
Appellant may present a new argument based on a recent relevant decision
of either the Board or a federal court; new arguments responding to a new
ground of rejection designated as such under § 41.50(b ), and new arguments
that the Board decision contains an undesignated new ground of rejection
also are permitted. § 4I.52(a)(2}-(a)(4).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
DENIED
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