Ex Parte Strumwasser et al

Patent Trials and Appeals Board

May 30, 2019

13831375 - (D) (P.T.A.B. May. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/831,375 03/14/2013 Stuart Strumwasser
38834 7590 06/03/2019
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
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.
Pl664US01 7120
EXAMINER
LI, MICHAEL J
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
06/03/2019 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STUART STRUMWASSER
and THEODORE JAY WERTH
Appeal 2018-004568
Application 13/831,375 1
Technology Center 2400
Before DENISE M. POTHIER, JASON J. CHUNG, and
JOHN D. HAMANN, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-4, 8-14, 17, 18, and 26-30.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to inputting end-user selected electronic data,
inputting end-user selected gradation values of the electronic data, and
creating correlation outputs of the inputted gradation values. Spec. 1. Claim
1 According to Appellants, Tengrade, Inc. is the real party in interest. Br. 2.
2 Claims 5-7, 15, 16, and 19-25 are canceled. Br. 17-18, 21-22. Note, the
Brief' s Appendix A contains no page numbering. We use the page sequence
that follows from the last page of the Brief.
Appeal 2018-004568
Application 13/831,375
1 is illustrative of the invention and is reproduced below:
1. A computer system enabling a computer to
automatically identify variable-length user inputted
alphanumeric topic and valuation data and to generate visual
representations related thereto, comprising:
a) at least one server computer configured to receive
user submissions from remote end users including both a)
user-created topics, each said user created topic having
user-selected alphanumeric data of a user-selected length,
and b) a corresponding user-selected valuation associated
with each said user-created topic, each said user-selected
valuation having an alphanumeric value from a set of at
least three potential alphanumeric values, wherein said at
least one server is configured to receive said user
submissions as electronic messages and to identify
corresponding portions of said electronic messages as said
user created topics and as said user-selected valuations
based on the following syntax:
said user-created topic is preceded by a symbol#,
and said user-created topic is an alphanumeric character
string of a variable length, the end of which length is
identified by said at least one server computer;
said user-selected valuation is preceded by an
identifier including a*, said valuation being an integer no
less than O and no greater than 1 O;
b) said server computer being configured to store
said user submissions along with associated data,
including associated time data, and along with end user
data;
c) said server computer being configured to
determine an average or mean value of said user-selected
valuations for corresponding topics;
d) said server computer being configured to present
a graphical display of values of said user-selected
valuations for corresponding topics over a time period,
said graphical display being presented in a tornado-like
format including
rows of discs which are stacked from lowest to
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highest valuation, with a respective disc corresponding to
a respective valuation level;
each of said discs including visual depictions of
topics therein, and being configured to visually rotate for
display of said topics therein.
Br. 17-18 (Claims Appendix). 3
REJECTIONS AT ISSUE4
Claims 1-4, 8-14, 17, 18, and 26-30 stand rejected under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter. Final Act. 4-5.
Claims 1, 11, and 26 stand rejected under 35 U.S.C. § l 12(b) as being
indefinite. Final Act. 6.
Claims 1-4, 8-14, 17, 18, and 26-30 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Barnes (US
2009/0299824 Al; published Dec. 3, 2009), Passmore (US 2012/0240062
Al; filed Mar. 14, 2012), Ramakrishnan (US 2009/0239505 Al; published
Sept. 24, 2009), and Mikytuck (US 2004/0128112 Al; published July 1,
2004). Final Act. 7-17.
ANALYSIS
I. Claims 1--4, 8-14, 17, 18, and 26--30 Rejected Under 35 U.S. C. § 1 OJ
A. Legal Principles
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
3 Appellants filed two Appeal Briefs; the first was filed on April 2, 2017 and
the second was filed on October 9, 2017. In our Decision, all of our
citations are to the second Appeal Brief filed on October 9, 2017.
4 The rejection of claims 1, 11, and 26 under 35 U.S.C. § l 12(a) was
withdrawn. Ans. 3.
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However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
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Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). See
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https://www.federalregister.gov/docmnents/2019/01/07/2018-28?82/?019-
revised-patent-subject-matter-eligibility-guidance. Under that guidance, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
B. The Examiner's Conclusions and Appellants' Arguments
The Examiner concludes the present claims are directed to certain
methods of organizing human activity. Final Act. 2, 4. The Examiner also
determines the present claims do not amount to significantly more than an
abstract idea because the Examiner finds the abstract idea is implemented on
generic components that are well-understood, routine, and conventional
previously known to the industry. Ans. 4-5.
Appellants argue the Examiner's final rejection is improper because
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the rejection originally rejected only claims 1, 11, and 22 and later included
all pending claims in the rejection. Br. 6. Appellants argue, similar to
Enfzsh, LLCv. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) andMcRO,
Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1308-14 (Fed.
Cir. 2016), the present claims are directed to automating computer
identification of sentiments and values in textual data, which is a
technological improvement. Br. 7-9. Appellants also argue the present
claims are directed to a technological improvement because they provide
novel and unique syntax within messages so that a computer system can
precisely and quickly identify sentiments and values, and create
advantageous graphical displays based on computer analysis of the computer
identified sentiments and values. Id. at 10. Appellants argue, similar to
BASCOM, the present claims are directed to a non-conventional and non-
generic arrangement of known, conventional pieces, which results in an
inventive concept. Id. at 9. We disagree with Appellants.
C. Discussion
1. Step 2A, Prong 1 (Alice Step 1)
The present claims, as a whole, are directed to receiving user
submissions including user-created topics and a corresponding user-selected
valuation associated with the user-created topic, wherein a server computer
stores the user submissions, determines an average value of the user-selected
valuations, and presents a graphical display of user-selected valuations.
Stated differently, these claims are directed to managing personal behavior
or relationships (including social activities). According to the
Memorandum, managing personal behavior or relationships (including
social activities) fall into the category of certain methods of organizing
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human activity, which the Memorandum explains is one category of abstract
ideas. See Memorandum.
When claimed in a certain way, like in this case, the present claims
are analogous to the claims in Electric Power Group, LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016). In Electric Power, the court held that the
claims were drawn to "collecting information, analyzing it, and displaying
certain results of the collection and analysis," which is similar to the present
claims. Id. at 1353. In both cases, they are drawn to certain methods of
organizing human activity, which is an abstract idea.
Lastly, we disagree with Appellants' argument that the Examiner's
101 rejection should be withdrawn because the Examiner's rejection is
improper (Br. 6); we note the issue of whether an Examiner improperly
introduced a new ground of rejection is a petitionable matter and not an
appealable matter. See 37 C.F.R. § 41.40(a). Appellants' failure to file
timely such a petition waives the argument. See id.
Because the present claims recite an abstract idea, we proceed to
prong 2.
2. Step 2A, Prong 2 (Alice Step 1)
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea. In particular, for reasons discussed below, we disagree
with Appellants' argument that the present claims recite a technological
improvement by automating computer identification of sentiments and
values in textual data. Br. 7-9. We also disagree with Appellants' argument
that the present claims are directed to a technological improvement because
they provide novel and unique syntax within messages so that a computer
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system can precisely and quickly identify sentiments and values, and create
advantageous graphical displays based on computer analysis of the computer
identified sentiments and values. Id. at 10.
Unlike the claims of McRO, the present claims are not directed to
rules for lip sync and facial expression animation or an improvement in
computer technology. Also unlike the claims of Enfish, the present claims
are not directed to a specific improvement to the way computers operate,
embodied in the self-referential table. Instead, the present claims are
directed to an abstract idea as discussed supra, in§ I.C. l. or at best,
improving an abstract idea-not a technological improvement. The
Specification indicates the additional elements (i.e., server computer) recited
in the present claims are merely tools used to implement the abstract idea.
Spec. 17, 24.
Appellants do not make any other arguments pertaining to step 2A,
prong 2. Because the present claims are directed to an abstract idea, we
proceed to Step 2B.
3. Step 2B (Alice Step 2)
We agree with the Examiner's determination that the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional previously known to the industry. Ans. 4-5. Also, the
Specification supports the determination that "server computer" is a generic
components. Spec. 17, 24. Appellants' Specification indicates these
elements were well-understood, routine, and conventional components
previously known to the industry because it describes them at a high level of
generality and in a manner that indicates that they are sufficiently well-
known.
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We disagree with Appellants' argument that the present claims are
directed to a non-conventional and non-generic arrangement of known,
conventional pieces, which results in an inventive concept. Br. 9. Rather,
the present claims are directed to an abstract idea using additional generic
elements as tools to implement the abstract idea as discussed supra, in
§§ I.C.l., I.C.2.-not an inventive concept. Moreover, Appellants'
argument amounts to a mere assertion with inadequate support that the
present claims are non-conventional and non-generic arrangement of known,
conventional pieces. See Br. 9.
Appellants do not argue claims 2-4, 8-14, 17, 18, and 26-30
separately with particularity, but assert the rejections of those claims should
be withdrawn for at least the same reasons as argued for independent claim
1. Br. 6-10. Accordingly, we sustain the Examiner's rejection of:
(1) independent claims 1, 11, and 26; and (2) dependent claims 2-4, 8-10,
12-14, 17, 18, and 27-30 under 35 U.S.C. § 101.
II. Claims 1, 11, and 26 Rejected Under 35 U.S.C. § l l 2(b)
The Examiner concludes claims 1, 11, and 26 are indefinite. 5 Final
Act. 5-6. Appellants do not proffer arguments pertaining to this rejection.
Br. 5-16. We, therefore, summarily sustain the Examiner's rejection. See
37 C.F.R. § 41.39(a)(l).
5 Although the dependent claims usually are rejected under 35 U.S.C.
§ l 12(b) when the independent claims are rejected, the Examiner did not
reject the dependent claims. In the event of further prosecution, the
Examiner may want to consider whether to include dependent claims 2-4,
8-10, 12-14, 17, 18, and27-30 in this rejection.
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III. Claims 1--4, 8-14, 17, and 18 Rejected Under 35 U.S.C. § 103
The Examiner finds Mikytuck teaches a graphical display presented in
a tornado-like format including rows of discs, each of the discs
corresponding to visual depictions of topics, which the Examiner maps to
the limitation
said graphical display being presented in a tornado-like format
including rows of discs ... each of said discs including visual
depictions of topics therein, and being configured to visually
rotate for display of said topics therein[,]
recited in claims 1 and 11. Ans. 7-9; Final Act. 11 ( citing Mikytuck
,i,i 4, 21-22, 28, 30, 38).
Appellants argue that while Mikytuck may teach a tornado chart,
Mikytuck does not teach or suggest that the graphical display in tornado-like
format is "configured to visually rotate for display of said topics therein."
Br. 12 ( emphasis omitted). We agree with Appellants.
We disagree with the Examiner's finding that the cited portions of
Mikytuck teaches or suggests the limitation "configured to visually rotate
for display of said topics therein" ( emphasis added) recited in claims 1 and
11. Final Act. 11 ( citing Mikytuck ,i,i 4, 21-30, 38, Fig. 6). In particular,
the cited portions of Mikytuck relied upon by the Examiner merely teach a
tornado chart with discs and topics, but fail to teach the recited "rotate"
feature. Nor does the Examiner provide sufficient rationale as to why the
cited portions of Mikytuck teach this "rotate" feature.
Accordingly, we do not sustain the Examiner's rejection of:
(1) independent claims 1 and 11; and (2) dependent claims 2-4, 8-10, 12-
14, 17, and 18 under 35 U.S.C. § 103.
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IV. Claims 26--30 Rejected Under 35 U.S.C. § 103
Unlike the above claims, independent claim 26 does not recite the
above discussed "rotate" feature. The Examiner finds Barnes teaches a user
providing a rating between O and 5 and Passmore teaches a hashtag
preceding a user created topic, which the Examiner maps to the limitation
receive said user submissions as electronic messages and to
identify corresponding portions of said electronic messages as
said user created topics and as said user-selected valuations
based on the following syntax: said user-created topic is
preceded by a first identifier including a first pre-defined single
character alphanumeric symbol, and said user-created topic is an
alphanumeric character string of a variable length,
recited in claim 26. Final Act. 13-15 (citing Barnes ,i 26; Passmore ,i,i 55,
57, 61).
The Examiner maps Ramakrishnan' s teaching of an asterisk preceding
a user valuation of 21 in combination with Barnes' user rating between O and
5 to the limitation "said user-selected valuation is preceded by a second
identifier including a second pre-defined character alphanumeric symbol,
said valuation being integers values within a pre-defined range," recited in
claim 26. Final Act. 13, 16 (citing Barnes ,i 26; Ramakrishnan ,i 30). The
Examiner finds Mikytuck teaches a graphical display presenting a graph in a
tornado-like format including rows of discs, each of the discs corresponding
to visual depictions of topics, which the Examiner maps to the limitation a
"server computer being configured to present a graphical display of values
of said user-selected valuations for corresponding topics, said graphical
display including different images corresponding to different valuation
levels," recited in claim 26. Final Act. 17 (citing Mikytuck ,i,i 21-30, 38).
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Appellants first argue that Barnes fails to teach parsing a message to
identify user-selected topics and valuations where the topic is preceded by a
"#" identifier and the valuation is preceded by a "*" identifier. Br. 11.
Second, Appellants argue Passmore fails to teach a user-selected valuation
preceded by a "*" identifier followed by an integer between O and 10. Id.
Appellants' third argument is Ramakrishnan teaches using a number greater
than 10 that is shared among many users, but fails to teach a unique pairing
identifier that is "assigned for use by the recipient" using an"*" along with a
number between O and 10. Id. at 11-12. Fourth, Appellants argue Mikytuck
teaches a tornado chart, but does not teach the any sentiment identifier,
values between O and 10, the claim 1 limitation "rows of discs which are
stacked from lowest to highest valuation," and the claim 1 limitation
"configured to visually rotate for display of said topics therein." Lastly,
Appellants argue the combination of references fail to teach the emphasized
claim 26 limitations on pages 15 and 16 of the Appeal Brief. Br. 15-16. We
disagree with Appellants.
Regarding Appellants' first four arguments, "[ A Jppellant' s arguments
fail from the outset because ... they are not based on limitations appearing
in the claims." See In re Self, 671 F.2d at 1348 (CCPA 1982). In particular,
although the limitations "#," "* ," an "integer no less than O and no greater
than 10," "rows of discs which are stacked from lowest to highest
valuation," "configured to visually rotate for display of said topics therein"
are recited in independent claims 1 and 11, these limitations are not recited
in independent claim 26.
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As for Appellants' last argument, Barnes teaches a user providing a
rating between O and 5 and Passmore teaches a hashtag preceding a user
created topic, which teaches the limitation
receive said user submissions as electronic messages and to
identify corresponding portions of said electronic messages as
said user created topics and as said user-selected valuations
based on the following syntax: said user-created topic is
preceded by a first identifier including a first pre-defined single
character alphanumeric symbol, and said user-created topic is an
alphanumeric character string of a variable length
recited in claim 26. Final Act. 13-15 (citing Barnes ,i 26; Passmore ,i,i 55,
57, 61).
Ramakrishnan's teaching of an asterisk preceding a user valuation of
21 in combination with Barnes' user rating between O and 5 teaches the
limitation "said user-selected valuation is preceded by a second identifier
including a second pre-defined character alphanumeric symbol, said
valuation being integers values within a pre-defined range" recited in claim
26. Final Act. 13, 16 (citing Barnes ,i 26; Ramakrishnan ,i 30). Mikytuck
teaches a graphical display presenting a graph in a tornado-like format
including rows of discs, each of the discs corresponding to visual depictions
of topics, which teaches the limitation a "server computer being configured
to present a graphical display of values of said user-selected valuations for
corresponding topics, said graphical display including different images
corresponding to different valuation levels" recited in claim 26. Final Act.
17 (citing Mikytuck ,i,i 21-30, 38). Thus, collectively the references teach
and suggest the emphasized limitations.
Appellants do not argue claims 27-30 separately with particularity,
but assert the rejections of those claims should be withdrawn for at least the
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same reasons as argued for independent claim 26. Br. 10-16. Accordingly,
we sustain the Examiner's rejection of: (1) independent claim 26; and
(2) dependent claims 27-30 under 35 U.S.C. § 103.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 1-4, 8-14, 17, 18,
and 26-30 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1, 11, and 26
under 35 U.S.C. § 112(b).
We reverse the Examiner's decision rejecting claims 1-4, 8-14, 17,
and 18 under 35 U.S.C. § 103.
We affirm the Examiner's decision rejecting claims 26-30 under
35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject claims 1-
4, 8-14, 17, 18, and 26-30. See 37 C.F.R. § 41.50(a)(l).
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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