Ex Parte Skiba et al

Patent Trial and Appeal Board

Jan 30, 2018

14133251 (P.T.A.B. Jan. 30, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/133,251 12/18/2013 David Skiba 4366CSM-223 3846
48500 7590
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
CELANI, NICHOLAS P
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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):
cjacquet@ sheridanross.com
pair_Avay a @ firsttofile. com
edocket @ sheridanross .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SKIBA, GEORGE ERHART, and
LEE BECKER
Appeal 2017-001627
Application 14/133,251
Technology Center 2400
Before JOSEPH L. DIXON, JOHN P. PINKERTON, and
JAMES W. DEJMEK, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-001627
Application 14/133,251
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to an impact prediction of social media
interaction. Claim 1, reproduced below, is representative of the claimed
subject matter:
1. A method, comprising:
accessing a number of historical social media posts
associated with a given domain;
selecting a historic viral event having a popularity greater
than a previously selected deviation for events within the domain
and comprising a first number of the historical social media
posts;
identifying a historic viral signature indicating an attribute
of the first number of the historical social media posts comprising
the historic viral event;
monitoring a social media website for a number of current
social media posts;
prior to the number of current social media posts becoming
a current viral event, determining the degree of a first match
between the number of current social media posts and the historic
viral signature; and
upon determining the degree of the first match indicates a
current viral event, performing a first response selected to
perform a desired one of mitigation or promotion of the virality
of the current viral event.
1 Appellants indicate that Avaya Inc. is the real party in interest. App Br. 2.
2
Appeal 2017-001627
Application 14/133,251
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
US 2009/0282100 A1
US 2012/0215903 A1
US 2013/0024322 A1
US 2013/0041860 A1
Kim et al.
Fleischman et al.
Tuchman et al.
Lawrence et al.
Nov. 12, 2009
Aug. 23, 2012
Jan. 24, 2013
Feb. 14, 2013
Palash WO 2010/127150 A2 Nov. 4,2010
Sakaki (“Earthquake Shakes Twitter Users: Real-time Event Detection by
Social Sensors,” WWW 2010, Apr. 26-30, 2010).
REJECTIONS
The Examiner made the following rejections:
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
Claims 1-20 stand rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement.
Claims 1-11 and 13-20 stand rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the Applicants regard as the
invention.
Claims 1, 2, 6, 9-11, 13, 15, 19, and 20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Palash in view of Sakaki.
Claims 3 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Palash in view of Sakaki and further in view of Lawrence.
3
Appeal 2017-001627
Application 14/133,251
Claims 4, 7, 8, 14, and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Palash in view of Sakaki and further in view of
Tuchman.
Claims 5 and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Palash in view of Sakaki and further in view of
Fleischman.
Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Palash in view of Sakaki.
Claims 1, 2, 6, 9-11, 13, 15, 19, and 20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Palash in view of Sakaki and further in
view of Tuchman.
Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Palash in view of Sakaki.
ANALYSIS
35 U.S.C. §101
With respect to claims 1-20, Appellants argue the claims together.
(App. Br. 6). We select independent claim 1 as the representative claim for
the group and will address Appellants’ arguments thereto.
Appellants submit that the rejection is improper for failing to establish
a prima facie case of non-patentable subject matter and maintains that the
claims are properly directed towards patent-eligible subject matter under 35
U.S.C. § 101. (App Br. 9). Appellants further contend that the Examiner
has not set forth with sufficient clarity and specificity sufficient information
to establish the prima facie case. (App Br. 9). Appellants argue that “the
claims are not directed to a law of nature, a natural phenomenon, or an
4
Appeal 2017-001627
Application 14/133,251
abstract idea and, therefore, Step 2A should be answered in the negative.”
(App Br. 10). Appellants further argue that
the claims are directed towards management of a contact center,
the particular application is plainly evident. For example, the
claims, among other things, utilize a processor to access
historical viral events and identify a common attribute associated
with a present event for the purpose of managing (promoting or
mitigating) the event.
(App Br. 11). Appellants further contend that the claimed invention is
not directed to one of the:
four categories (The Update, pp. 4-5):
A “Fundamental economic practices”
B. “Certain Methods of Organizing Human Activity”
C. “An Idea ‘OfItself”
D. “Mathematical relationships/formulas.”
(App Br. 11-13). Appellants further generally contend that
Appellant’s claims are directed to novel and unconventional
steps that confine the claim to a particular useful application,
determining and responding to a potential viral event. Well-
understood? Routine? Conventional? No, quite to the contrary.
The unconventional steps provided are novel, non-obvious, and
applicable to a particular useful application
(App Br. 14). Appellants generally argue “Appellant’s claims are directed to
novel and unconventional steps that confine the claim to a particular useful
application, assignment of an agent to minimize an identified risk.” (App
Br. 15). Appellants dispute the Examiner’s identifying that the claimed
invention is an idea itself or involving mathematics (Ans. 8) and Appellants
argue:
5
Appeal 2017-001627
Application 14/133,251
[t]he claims recite limitations that are beyond the ability of an
unaided human. For example, a human (absent a computer,
display, network, or other aids) cannot monitor a social media
website (see claim 1) incorporate a claimed processor, database,
or network connection (see claim 12) or cause a computer to
perform an action, including monitoring a social media website
(see claim 15). Accordingly, the claims fall outside the realm of
“an idea ‘of itself.’”
(Reply Br. 10). Appellants rely upon the Ultramercial and Enfish cases (see
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014); Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)) and generally contend
the findings in Ultramercial were that the claims were patent ineligible and
merely recited a general purposes computer. (Reply Br. 8-9). Further,
Appellants pray for relief and a final determination that physical structures
are not a requirement to patentable subject matter. (Reply Br. 9).
Appellants additionally contend “[t]he claims are directed towards the
particular application of determining future viral events based, inter alia, on
signatures common with past viral events.” (Reply Br. 11).
For the reasons discussed infra, Appellants have not persuaded us of
error.
The Supreme Court’s two-step framework guides our analysis. Alice
Corp. Pty. Ltd. v. CLS Banklnt’l, 134 S. Ct. 2347, 2355 (2014). If a claim
falls within one of the statutory categories of patent eligibility (i.e., a
process, machine, manufacture or composition of matter) then the first
inquiry is whether the claim is directed to one of the judicially recognized
exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Alice, 134 S. Ct. at 2355. If so, the second step is to determine whether any
element, or combination of elements, amounts to significantly more than the
judicial exception. Alice, 134 S. Ct. at 2355.
6
Appeal 2017-001627
Application 14/133,251
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner determines the claims are directed
to a judicially recognized exception—i.e., an abstract idea. (Final Act. 3,
19).
Instead of using a definition of an abstract idea, “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.” Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLCv.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that “a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea.”). As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
In Alice, the Court concluded claims directed to the mere formation
and manipulation of economic relations may involve an abstract idea. Alice,
134 S. Ct. at 2356-57. Additionally, our reviewing court has concluded that
abstract ideas include the concepts of collecting data, recognizing certain
data within the collected data set, and storing the data in memory. Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343,
1347 (Fed. Cir. 2014). In particular, in Content Extraction, the court noted
“banks have, for some time, reviewed checks, recognized relevant data such
7
Appeal 2017-001627
Application 14/133,251
as the amount, account number, and identity of account holder.” Content
Extraction, 776 F.3d at 1347. Additionally, the collection of information
and analysis of information (e.g., recognizing certain data within the dataset)
are also abstract ideas. Elec. Power, 830 F.3d at 1353. Similarly, “using
categories to organize, store, and transmit information” is an abstract idea.
Cyberfone Sys., LLC v. CNN Interactive Group, Inc., 558 F. App’x 988, 992
(Fed. Cir. 2014) (unpublished). Also, “tracking financial transactions to
determine whether they exceed a pre-set spending limit” is an abstract idea.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1367 (Fed. Cir. 2015).
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea ... to another
abstract idea . . . does not render the claim non-abstract.”); see also
FairWarningIP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
We find Appellants’ arguments unsupported and conclusory.
Moreover, we agree with the Examiner that the claims are directed to an
abstract idea, as Appellants’ claims are directed to nothing more than
applying the general inductive reasoning framework to the subject matter of
“viral events,” and the Examiner finds Appellants, importantly, do not claim
a particular algorithm and in fact do not even describe one in their
Specification. (Ans. 3).
Specifically, the Examiner maintains the claim merely requires:
accessing a number of historical social media posts; selecting a
historic viral event; identifying a historic viral signature;
8
Appeal 2017-001627
Application 14/133,251
monitoring a social media website; determining the degree of a
first match between the number of current social media posts and
the historic viral signature; and performing a first response.
(Ans. 5). We agree with the Examiner.
Because we determine the claims are directed to an abstract idea, we
analyze the claims under step two of Alice to determine if there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 134
S. Ct. at 2355 (citing Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1294, 1297-98 (2012)). The implementation of the
abstract idea involved must be “more than [the] performance of ‘well-
understood, routine, [and] conventional activities previously known to the
industry.’” Content Extraction, 776 F.3d at 1347-48 (quoting Alice, 134 S.
Ct. at 2359) (alteration in original).
Here, we agree with the Examiner that the additional limitations,
separately, or as an ordered combination, do not provide meaningful
limitations (i.e., do not add significantly more) to transform the abstract idea
into a patent eligible application. (Final Act. 3; Ans. 8). Moreover, we
agree with the Examiner that Appellants set forth “a naked assertion that he
meets the standard, without evidence or even argument as to why he does.”
(Ans. 8). It is well-settled that mere attorney arguments and conclusory
statements, which are unsupported by factual evidence, are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1 and its dependent claims. For similar reasons, we also sustain the
Examiner’s rejection of independent claims 12 and 17 and their respective
9
Appeal 2017-001627
Application 14/133,251
dependent claims, which recite similar limitations and were not argued
separately. (See App. Br. 6-15). Further, we sustain the Examiner’s
rejection under 35 U.S.C. § 101 of claims 2-11, 13-16, and 18-20, which
depend therefrom and were not argued separately. (See App. Br. 6-15).
35 U.S.C. § 112(a)
Claim 1
With respect to claims 1-20, Appellants present arguments to the
claims together. We select independent claim 1 as the representative claim
and address Appellants’ arguments thereto.
The Examiner sets forth a rejection that Appellants’ claims fail to
comply with the written description requirement. (Final Act. 4-5).
Appellants identify specific corresponding portions of the
Specification for each of the identified claim limitations. (App. Br. 16-17).
The Examiner maintains that all of the claims contain the limitations:
“selecting a historic viral event having popularity greater than a
previously selected deviation for events within the domain”,
“identifying a historic viral signature indicating an attribute”,
“determining a degree of first match [between a post and the
signature]” and “determining that the degree indicates a viral
event,”
which are overbroad and undescribed because Appellants fail to prove
possession of the full range of the scope claimed. (Final Act. 4). The
Examiner explains at length the application of overbreadth which is
addressed by enablement and may also be addressed by written description.
(Ans. 11-21).
Appellants identify specific corresponding portions of the
Specification for each of the identified claim limitations. (App. Br. 16-17).
10
Appeal 2017-001627
Application 14/133,251
We agree with Appellants that the originally filed Specification
contains written description support for the invention as broadly disclosed
and claimed. Although we agree with the Examiner on the statement of the
law, we find the instant factual situation to be different than those discussed
in the MPEP. Here, we find the scope of disclosure in the originally filed
application to correspond with the broad claim language so as to evidence
possession of the broad scope of claimed invention. Additionally, we note
that the originally filed claims similarly track the broad originally filed
disclosure. Consequently, we find the Examiner’s discussion of the
disclosure of a narrow species and claims directed to a broad a genus to be
irrelevant to the instant filed disclosure, and we cannot sustain the
Examiner’s written description rejection.
35 U.S.C. § 112(b)
Claim 1
With respect to the Examiner’s indefmiteness rejection of claims 1-11
and 13-20, Appellants argue the claims together as a group. We select
independent claim 1 as the representative claim.
With respect to independent claim 1, the Examiner finds:
the notice function turns upon a definite and recognizable time
that a person of ordinary skill in the art would say that the current
media posts have turned into a viral event. Appellant not only
refuses to define such a time, but expressly states that no definite
time can be given. Spec, para. 18: “The term, ‘viral’ or ‘viral
event’ as used herein refers to a number of social media posts
containing a sentiment and/or endorsements of the posts that has
become, or is predicted to become, atypically popular within a
given domain, topic, and/or subject. An event is viral if the
number posts and/or associated endorsements within a certain
period of time are greater than the norm for like items within the
11
Appeal 2017-001627
Application 14/133,251
domain. The exact quantity and/or rate to declare an event viral
is a matter of design choice.”
(Ans. 22).
Appellants argue that “The claims do not ask for a possible infringer
or anyone else to know when current posts become viral.” (Reply Br. 17).
Furthermore, Appellants argue
the determining is not concerned with wither the post is viral or
not. What is at issue is “determining the degree of a first match
between the number of current social media posts and the
historic viral signature. ” A person performing non-infringing
acts could never be brought into the realm of infringement solely
by a current event being, or not being, “viral.”
(Reply Br. 17). We agree with Appellants that the timing of the determining
step is not indefinite based upon the context of the disclosure and the claim
language, but is merely broad claim language. Consequently, we do not
sustain the Examiner’s indefiniteness rejection of independent claims 1 and
15, which contain similar limitations and dependent claim 13, which adds
the limitations to independent claim 12 (which is not rejected).
With respect to dependent claim 2, the Examiner also makes an
additional § 112(b) rejection over the claim terminology “substantially
absent” without further detailing the reasoning therefore. (Final Act. 26).
We note that the language is original claim language from originally filed
dependent claim 2, but not specifically defined in the Specification.
Appellants argue “[i]n the realm of eliminating attributes that do not lead to
posts becoming viral, one may which [sic, wish] to find a second attribute
present in a non-viral event and absent, or substantially so, from a viral
event.” (Reply Br. 18).
12
Appeal 2017-001627
Application 14/133,251
We agree with Appellants that the claims are sufficiently definite and
are broad rather than indefinite. Consequently, we do not sustain the
Examiner’s indefmiteness rejection of dependent claim 2.
35U.S.C.§ 103
Claims 1, 12, and 15
With respect to independent claims 1, 12, and 15, Appellants argue
the claims together. (App. Br. 21). We select independent claim 1 as the
representative claim for the group and address Appellants’ arguments
thereto.
With respect to representative independent claim 1, Appellants
disagree with the Examiner’s findings that the Palash reference discloses a
“domain.” (App. Br. 21). Appellants contend “English words are full of
homonyms. While ‘domain’ may refer to top-level Internet address, such as
‘youtube.com,’ it is plainly evident from Appellant’s specification, in its
entirety, that ‘domain,’ as used in the instant application, refers to a sphere
of knowledge, influence, or activity.” (App. Br. 21).
Appellants further contend “the art of record fails to identify the
claimed historic viral signature indicating an attribute'''’ and fails to teach
every claimed limitation. (App. Br. 22).
We disagree. Rather, we agree with the Examiner that “[a] viral event
can be a video.” (Final Act. 26). Thus, the Examiner finds Palash describes
a popularity engine for analyzing videos and determining their current
popularity. (Final Act. 26) (citing Palash ^ 25). The Examiner further finds
Palash teaches of the determined current popularity of a video is greater than
a predetermined deviation, this is an indication of a viral event. (Final Act.
26).
13
Appeal 2017-001627
Application 14/133,251
We find Appellants have not identified any express definition or
identified a specific portion of the Specification which provides limiting
context for the claim term “domain.” Consequently, we find Appellants’
argument to be unpersuasive of error in the Examiner’s factual findings or
conclusion of obviousness of representative independent claim 1.
The Examiner
point[s] out how broad Applicant’s claim is. Palash considers
many attributes in determining virality. Para. 27 considers both
the raw number of favorites and the curve for which they are
applied. The raw number of favorites is an attribute of the post.
The slope of the line of their adding (i.e. exponential growth) is
an attribute. Para. 30 considers other factors such as view
counts, ratings, age of the video (an intrinsic attribute, which
might be what applicant is complaining of), number of favorites,
comments, search queries, identity of the content provider,
shares. Paras. 31-32; geographic regions, controversial or racy
content are also considered (again, all three are intrinsic
attributes of the post).
(Final Act. 27-28).
We agree with the Examiner that the language of independent claim is
broad, and Appellants have not identified any specific definitions or limiting
context from the Specification to differentiate from the combination of the
Palash and Sakaki references. As a result, Appellants’ arguments do not
show error in the Examiner’s conclusion of obviousness representative
independent claim 1.
Arguments in the Reply Brief
Appellants contend the fact remains that the art of record fails to
“identifying a historic viral signature indicating an attribute of the first
14
Appeal 2017-001627
Application 14/133,251
number of the historical social media posts comprising the historic viral
event.” (Reply Br. 19). Appellants further contend:
Palash does not "identify[] a historic viral signature indicating
an attribute of the first number of the historical social media
posts comprising the historic viral event.” Palash does not
connect the attributes to popularity and Palash does not identify
a signature of the attribute.”
(Reply Br. 19). Appellants further contend that “Sakaki, in §[§] 4.1 and 4.2
and elsewhere, is unconcerned with predicting virality.” (Reply Br. 20). We
note Appellants’ argument is not commensurate in scope with the breadth of
the language of independent claim 1 which does not expressly recite
“predicting virality.” Thus, Appellants’ argument fails because it is not
commensurate with the scope of the claim. See In re Self 671 F.2d 1344,
1348 (CCPA 1982) (“[AJppellant’s arguments fail from the outset because
. . . they are not based on limitations appearing in the claims.”). See In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts
... are not commensurate with the claim scope and are therefore
unpersuasive.”).
Appellants further contend “no determination of a degree of match
indicates a viral event is taught. Sakaki does disclose the sending of emails
based on sufficient authentic tweets regarding an earthquake, but such a
teaching is different from what is claimed.” (Reply Br. 20). Appellants
identify no specific difference rather than merely repeating the language of
the claim.
We disagree with Appellants and find that because of the breadth of
independent claim 1, the combination of the Palash and Sakaki references
teaches and fairly suggests the disputed claim limitations. As discussed
15
Appeal 2017-001627
Application 14/133,251
above with the written description and indefiniteness rejections, Appellants
have proffered that the claims are broad. Consequently, the prior art teaches
the broadly claimed invention and, further, because the Specification is
drafted in the same broad manner, we find Appellants have identified no
limiting context beyond general attorney argument.
Palash, Sakaki, and Tuchman
With respect to the alternative rejection including the Tuchman
reference, Appellants contend that the Tuchman reference teaches “the
promotion or mitigation of sentiment. (Tuchman ^ 81).”
(Reply Br. 21). Appellants further contend:
The Examiner relies on a statement in Appellant’s
Specification that a post contains sentiment. Then a leap is made
to conclude that promoting virality is equivalent to promoting
sentiment, it plainly is not, nor is it what is claimed. Virality is
predicted and, based on a match, a response is made to affect
virality, not sentiment.
(Reply Br. 21). We disagree with Appellants and agree with the Examiner
that the action of an individual working to mitigate sentiments would
similarly directly affect the promotion or mitigation of virality.
Claims 2, 4, 6, 8, and 11
We find Appellants generally repeat the language of the claim and
provide a general argument for patentability. (App. Br. 23-25; Reply
Br. 21-23). Moreover, the general arguments do not address the prior art as
applied by the Examiner. (See Ans. 36 discussing length/shortness of the
message as an attribute present or absent for claim to; see Final Act. 13
discussing the Tuchman reference which Appellants do not address for claim
16
Appeal 2017-001627
Application 14/133,251
for; see Final Act. 8 the discussing Sakaki having a subject and keyword of
the root post as shown in section 4 and table 1 for claim 6, etc.)
Merely reciting the language of the claim is insufficient. See 37
C.F.R. § 41.37(c)(l)(iv))(2015) (“A statement which merely points out what
a claim recites will not be considered an argument for separate patentability
of the claim.”). Merely alleging that the references fail to support an
obviousness rejection is insufficient to persuade us of Examiner error.
Attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. See Geisler, 116 F.3d
at 1470; see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and
Ex parte Belinne, No. 2009-004693, 2009 WL 2477843, slip op. at 7-8
(BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693 .pdf.
Here, we find Appellants’ arguments are conclusory in nature and fail
to address the thrust of the Examiner’s obviousness rejections.
“Argument in the brief does not take the place of evidence in the
record.” In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole,
326 F.2d 769, 773 (CCPA 1964)). This reasoning is applicable here.
On this record, we find Appellants have failed to present substantive
arguments and supporting evidence persuasive of Examiner error. Cf. In re
Baxter TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
CONCLUSIONS
The Examiner did not err in rejecting claims 1-20 based upon a lack
of patent eligible subject matter under 35 U.S.C. § 101 and the Examiner did
not err in rejecting claims 1-20 based upon obviousness under 35 U.S.C.
17
Appeal 2017-001627
Application 14/133,251
§103, but the Examiner erred in rejecting claims 1-20 based upon a lack of
written description under 35 U.S.C. § 112(a) and the Examiner erred in
rejecting claims 1-11 and 13-20 based upon indefmiteness under 35 U.S.C.
§ H2(b).
DECISION
For the above reasons, we sustain the Examiner’s rejections of claims
1-20 based upon a lack of patent eligible subject matter under 35 U.S.C.
§ 101 and for obviousness under 35 U.S.C. § 103, but we reverse the
Examiner’s rejection of claims 1-20 based upon a lack of written description
support under 35 U.S.C. § 112(a) and of claims 1-11 and 13-20 based upon
indefmiteness under 35 U.S.C. § 112(b).
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
18