Ex Parte Spittle et al

Patent Trial and Appeal Board

Mar 16, 2018

11996192 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111996,192 02/06/2008
34282 7590 03/20/2018
QUARLES & BRADY LLP (TUC)
Attn: IP Docket
ONE SOUTH CHURCH A VENUE, SUITE 1700
TUCSON, AZ 85701-1621
Mark Charles Spittle
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.
121931.00039 4609
EXAMINER
YEN,JASONTAHAI
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK CHARLES SPITTLE, SIMON SKELTON, and
BARRY YEARSLEY
Appeal2017-001438
Application 11/996, 192
Technology Center 3700
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's rejection of claims 78-92. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
According to Appellants, their "invention relates to an electronic
entertainment device." Spec. 1, 1. 1. Claim 78 is the only independent claim
1 According to Appellants, the real party in interest is Big Ideas Product
Development Limited. Appeal Br. 1.
Appeal2017-001438
Application 11/996, 192
on appeal. Below, we reproduce claim 78 as illustrative of the appealed
claims.
78. A cellular phone comprising: a display screen, an
audio speaker, a memory having access to a plurality of stored
items of data, and a processor programmed to analyze a
telephone number or name, isolate respective subsets of
component digits of the telephone number or respective subsets
of the component characters of the name and associate said
stored items of data with a telephone number or a name
according to values of respective subsets of component digits of
the telephone number or to values of respective subsets of
component characters of the name, whereby said associated
items of data are played or displayed on one or more of said
display screen and audio speaker.
REJECTION2
The Examiner rejects claims 78-92 under 35 U.S.C. § 101 as patent-
ineligible subject matter.
ANALYSIS
With respect to the § 101 rejection, Appellants argue claims 78-92 as
a group. See Appeal Br. 5-6. We base our analysis on independent claim
78, and its dependent claims 79-92 stand or fall with claim 78. See 37
C.F.R. § 41.37(c)(l)(iv).
We determine whether a claim recites ineligible subject matter based
on the Supreme Court's framework, as articulated in Alice Corp. Pty. Ltd. v.
CLS Bank International, 134 S. Ct. 2347 (2014), which follows the two-part
test set forth in Mayo Collaborative Services v. Prometheus Laboratories,
2 The Examiner withdraws the rejections under 35 U.S.C. §§ 112
and 103(a). See Answer 3.
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Appeal2017-001438
Application 11/996, 192
Inc., 566 U.S. 66 (2012). That is, a claim recites ineligible subject matter if,
in accordance with the first part of the Alice test, the claim is directed to
ineligible subject matter, e.g., an abstract idea, and if, in accordance with the
second part of the test, the claim lacks any further claim limitations that,
when "consider[ ed] ... both individually and 'as an ordered combination'
... 'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78, 79).
More specifically, with respect to the first part of the Alice test,
[t]he "directed to" inquiry[] ... cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon-after all, they take place in the physical world.
See Mayo, 132 S. Ct. at 1293 ("For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.") Rather, the "directed to" inquiry
applies a stage-one filter to claims, considered in light of the
specification, based on whether "their character as a whole is
directed to excluded subject matter." Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375, 2016
WL 1393573, at *5 (Fed. Cir. 2016) (inquiring into "the focus of
the claimed advance over the prior art").
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). The
court put the question as being "whether the focus of the claims is on [a]
specific asserted improvement in computer capabilities ... or, instead, on a
process that qualifies as an 'abstract idea' for which computers are invoked
merely as a tool." Id. at 1335-36 (citation omitted). In this case, according
to Appellants,
similar to the claims at issue in Enfzsh ... , [ c ]laim 78 is focused
[on] a novel invention for improving cellular phone
functionality. In other words, upon analysis of the claim
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Appeal2017-001438
Application 11/996, 192
limitations as an ordered combination, claim 78 as a whole
amounts to significantly more than simply organizing human
activity or manipulating data using a generic computer system.
With regard to the sole independent claim, the recited invention
addresses the technology-centric issue of providing an improved
cellular phone device, i.e., a phone with special programming for
the automated personalization/identification of an incoming call
(or message alert). In other words, when viewed as a whole, the
claim 78 is directed to a cellular phone possessing a wholly
technological improvement m automated identification/
personalization.
Appeal Br. 5; see also id. at 5-6.
We note, however, that claim 78 is not limited to identification of
incoming calls or messages. Instead, the claim recites "a processor
programmed to analyze a telephone number or name," to "associate ...
stored items of data with a telephone number or a name," and to "play[] or
display[] on one or more of [a] display screen and [an] audio speaker" the
"associated items of data," without limitation to a received call. As written,
claim 78 does not require anything other than a generic processor
performing routine operations, such as analyzing, associating, and outputting
different types of data, and, therefore, the claim is directed to ineligible
subject matter, in accordance with the first part of the Alice test. See, e.g.,
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.
Cir. 2014) (citing Alice, 134 S. Ct. at 2358) ("[A]fter Alice, there can remain
no doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible.").
With respect to the second part of the Alice test, Appellants argue that
the claims are "directed to a cellular phone possessing a wholly
technological improvement in automated identification/personalization."
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Appeal2017-001438
Application 11/996, 192
Appeal Br. 5; see also id. at 6 (The claims recite "a cellular phone with a
specifically[-]defined improvement to technological functionality."). We are
not persuaded by Appellants' argument, however. Because the claims recite
a cellular phone having a processor that is programmed to gather, analyze,
and display data, does not, in and of itself, mean the claims represent an
improvement to cellular phone functionality. To the contrary, the recited
cellular phone simply limits the claims to a particular technological
environment, which is insufficient for patent eligibility. See Alice, 134
S. Ct. at2358 (quotingBilskiv. Kappas, 130 S. Ct. 3218, 3230 (2010)).
Thus, Appellants do not persuade us that the claims recite limitations that
transform the claim into a patent-eligible application.
Therefore, based on the foregoing, we are not persuaded of Examiner
error. Thus, we sustain the Examiner's§ 101 rejection of claims 78-92.
DECISION
We AFFIRM the Examiner's rejection of claims 78-92.
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
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