Ex Parte Tsukahara et al

Patent Trial and Appeal Board

Dec 27, 2017

13423574 (P.T.A.B. Dec. 27, 2017)

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.
13/423,574 03/19/2012 Carl TSUKAHARA 26EF-160760 5020
69849 7590 12/29/2017
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
379 Lytton Avenue
Palo Alto, CA 94301
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
12/29/2017 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):
svpatents @ sheppardmullin.com
S heppardMullin_Pair @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL TSUKAHARA and TERRI PRINCE
Appeal 2015-000725
Application 13/423,574
Technology Center 3600
Before HUBERT C. LORIN, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE1
The Appellants filed a Request for Rehearing under 37 C.F.R. § 41.52
of the Decision on Appeal.
In the Decision on Appeal, the Board
• affirmed the rejection of claims 1-20 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter but denominated the
affirmed rejection as a new ground of rejection;
• affirmed the rejection of claims 16-20 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
1 This Decision references the Appellants’ Request for Rehearing (“Req.,”
filed Nov. 27, 2017) and the Board Decision (“Dec.,” mailed Sept. 25,
2017).
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point out and distinctly claim the subject matter which applicants
regard as the invention;
• reversed the rejection of claims 1-3, 5-12, 14-16, and 18-20
under 35 U.S.C. § 103(a) as being unpatentable over Nightengale2
and Gladstone3; and,
• reversed the rejection of claims 4, 13, and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Nightengale, Gladstone, and
Rothermel.4
The Request seeks reconsideration only of the Board’s decision to
affirm the rejection of claims 1-20 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter (albeit denominated as a new ground of
rejection) and to affirm the rejection of claims 16-20 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention.
The Appellants make several points they believe the Board
overlooked or misapprehended.
DISCUSSION
“I. The Board misapprehended or overlooked Appellant’s arguments
made in the Reply Brief with respect to the first and second steps of the
Alice test under 35 U.S.C. § 101.” Req. 2.
The Alice step one determination
According to the Appellants,
[t]he Board misapprehended or overlooked Appellant’s
arguments made in the Reply Brief with respect to what claims
2 Nightengale, US 2010/0241535 Al, issued Sept. 23, 2010.
3 Gladstone, US 2003/0023774 Al, issued Jan. 30, 2003.
4 Rothermel, US 2006/0143034 Al, issued June 29, 2006.
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at issue are directed to in terms of the first step of the Alice test
under 35U.S.C. § 101, because the Board failed to understand
Appellant’s argument about what the claims at issue are in fact
directed to in contrast to the Examiner’s view.
Req. 2.
The Appellants reproduce portions of the Reply Brief and Decision
(see Req. 2-3) and contend that
[t]he argument made in the Reply Brief by Appellant was clear
in that claims at issue are directed to generating a state model,
determining an expected response to an alert associated with a
first event, and updating the state model in accordance with the
expected response if the second event includes the value
sufficient to identify the expected response, rather than simply
directed to sending and receiving alerts through stateless
communication channels.
Req. 3 (emphasis added).
If, in using the word “simply,” the Appellants mean to contend that
the Appellants were arguing that “The Examiner Misinterprets Claims 1,
10, and 16 as Being Only Directed to Sending and Receiving Alerts
through Stateless Communication Channels” (Reply Br. 3; see also Reply
Br. 3 (“Claim 1 is not just directed to sending and receiving alerts through
stateless communication channels”) and twice at Reply Br. 4 (“the Examiner
is incorrect in interpreting claim 1 as only being directed towards sending
and receiving alerts through stateless communication channels”), emphasis
added), then there is no disagreement and the Board did not misapprehend or
overlook the Appellants’ argument. As we stated,
[a] 11 that is argued is that each independent claim includes
language which shows “the Examiner is incorrect in
interpreting [each independent] claim [ ] as only directed
towards sending and receiving alerts through stateless
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communication channels.” See Reply Br. 4 (for independent
claims 1 and 11) and 5 (for independent claim 16). In support
thereof certain claim limitations are reproduced, without further
explanation.
Dec. 4-5 (emphasis added). We did not find the argument persuasive
because
[t]he Examiner did not say that the claims are only directed
towards sending and receiving alerts through stateless
communication channels . . . and the Appellants do not explain,
in what way the additional limitations in the claims materially
affect the concept to which they are directed to as the Examiner
has articulated it or its abstract nature.
Dec. 5 (emphasis added).
If, in using the word “simply,” the Appellants are now contending that
the Appellants were actually arguing that the claims were directed to a
concept substantially more than the one the Examiner articulated it to be,
then we disagree that we misunderstood the Appellants’ initial position
(Reply Br. 3-6). No such argument was made.
Yet, the latter interpretation seems to be what the Appellants are now
contending. According to the Request, the
claims at issue are directed to generating a state model,
determining an expected response to an alert associated with a
first event, and updating the state model in accordance with the
expected response if the second event includes the value
sufficient to identify the expected response, rather than simply
directed to sending and receiving alerts through stateless
communication channels. This concept comes from a
technological problem involved in stateless communication
based on the stateless communication channels as stated in the
background of the disclosure ([0001]-[0002]), because each
message (e.g., alert or response) communicated in stateless
communication channels is regarded as an independent
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message, and conventionally, distinction among messages
could not be properly made even when a response to an alert is
expected. See [0060] of the Specification (“[distinguishing
between multiple outstanding alerts for a single account holder
becomes impossible on a stateless communication channel
without ensuring that the responses are within prescribed
parameters”). In consideration of the technological problem
involved in the stateless communication, the claims at issue
includes the limitations of “generates a state model,”
“determines an expected response to an alert associated with the
first event,” and “updating the state model in accordance with
the expected response if the second event includes the value
sufficient to identify the expected response.” Therefore, in
view of the disclosure as a whole, it is apparent that claims at
issues [sic] are as a whole directed to operations performed in
expectation of a response to a message sent through stateless
communication channels, i.e., “generating a state model,”
“determining an expected response,” and “updating the state
model,” rather than simply sending and receiving alerts through
stateless communication channels.
Req. 3—4.
We concluded that “[i]n light of the Specification and in view of the
Appellants’ insufficient explanation to the contrary, the Appellants’
suggestion that the Examiner did not properly determine whether the claims
at issue are directed to a patent-ineligible concept, such as an abstract idea,
in accordance with Alice step one is unpersuasive.” Dec. 7. This conclusion
rested not just on the Appellants’ insufficient rebuttal. It was also based on
making an Enfish “directed to” inquiry (.Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1335 (Fed. Cir. 2016)). See Dec. 5-7. Consistent therewith we
found that
[t]he Specification describes “[o]ne problem with the current
alerts is that they must be used on stateful communication
channels, such as through a website. While it is possible to
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send an alert for which a response can be made via some other
channel, it is not typically possible to send an alert via a
stateless communication channel, and receive a response via
that same stateless communication channel.” Spec., para. 2.
Consistent with what is claimed, the Specification discloses as a
solution “[a] technique for actionable alerting [that] involves
processing a first event, maintaining state associated with the
event, sending an alert on a stateless communication channel to
a registered destination of an account holder associated with the
event, processing a second event, updating the maintained state,
and closing, reminding, or escalating in response to the second
event.” Id. at para. 5. These passages appear to support the
Examiner’s view that “[t]he claims are directed to sending and
receiving alerts through stateless communication channels.”
Ans. 2-3. While the scheme, as claimed, is more detailed than
just sending and receiving alerts through stateless
communication channels, it does not change its abstract
character. Adding words such as “receiving,” “identifying,”
“making,” “generating,” “sending,” “determining,” and
“updating,” to more fully articulate the concept to which the
claims are directed describes the concept at a lower level of
abstraction, but does not change its character. . . .
As to the elements in the claims (e.g., “datastore” and
“engine” in claim 1) which facilitate said technique, the
Specification discloses the use of “traditional databases” (para.
23) and “general purpose central processing unit[s]” (para. 16).
Thus, the Specification supports the view that these elements
are simply conventional computer components added to a
scheme for sending and receiving alerts through stateless
communication channels.
Dec. 6-7.
While not expressly stated, the Request challenges our “directed to”
analysis.
The Appellants cite Enflsh, emphasizing that the inquiry requires
looking at the claims in light of the Specification and basing the
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determination that the claims are directed to excluded subject matter on
“their character as a whole.” Req. 3. But the Appellants do not explain in
what way we failed to accomplish that.
The Appellants state that the “claims at issue are directed to
generating a state model, determining an expected response to an alert
associated with a first event, and updating the state model in accordance
with the expected response if the second event includes the value sufficient
to identify the expected response.” Req. 3. But we acknowledged that
claim 1 included limitations to that effect. See Dec. 6. We stated that
“[wjhile the scheme, as claimed, is more detailed than just sending and
receiving alerts through stateless communication channels, it does not
change its abstract character.” Dec. 6.
Why is this more detailed concept to which the claims are said to be
directed to any less abstract than the concept the Examiner determined it to
be? The Appellants do not say, arguing rather that
[tjhis concept comes from a technological problem involved in
stateless communication based on the stateless communication
channels as stated in the background of the disclosure ([0001]-
[0002]), because each message (e.g., alert or response)
communicated in stateless communication channels is regarded
as an independent message, and conventionally, distinction
among messages could not be properly made even when a
response to an alert is expected. See [0060] of the Specification
(“[distinguishing between multiple outstanding alerts for a
single account holder becomes impossible on a stateless
communication channel without ensuring that the responses are
within prescribed parameters”). In consideration of the
technological problem involved in the stateless communication,
the claims at issue includes the limitations of “generates a state
model,” “determines an expected response to an alert associated
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with the first event,” and “updating the state model in
accordance with the expected response if the second event
includes the value sufficient to identify the expected response.”
Therefore, in view of the disclosure as a whole, it is apparent
that claims at issues [sic] are as a whole directed to operations
performed in expectation of a response to a message sent
through stateless communication channels, i.e., “generating a
state model,” “determining an expected response,” and
“updating the state model,” rather than simply sending and
receiving alerts through stateless communication channels.
Req. 3—4.
Setting aside the arguably abstract character of “operations performed
in expectation of a response to a message sent through stateless
communication channels” (Req. 4), an underlying difficulty with the
argument is that claim 1 does not reflect the solution to the problem set forth
in para. 60 of the Specification. Para. 60 describes a module (module 204 in
Fig. 2) for “maintaining state for an issue associated with the event” (para.
59):
[0060] In the example of FIG. 2, the flowchart 200
continues to module 206 with sending an alert on a stateless
communication channel to a registered destination of the
account holder. Since state was maintained (204), it becomes
possible to send an alert to an account holder on a stateless
communication channel. If no state were maintained, an
alerting system might not be able to reconcile an event that was
a response to an alert through the stateless communication
channel. Distinguishing between multiple outstanding alerts for
a single account holder becomes impossible on a stateless
communication channel without ensuring that the responses are
within prescribed parameters. So the alert can include expected
responses such that a response from the account holder can be
matched with the alert.
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We do not see in claim 1 sending an alert while the state for an issue
associated with an event is maintained, as para. 60 discloses. At best,
claim 1 calls for generating a state model, storing it in the “issue state model
datastore,” and updating the state model if a certain condition is met. But
claim 1 does not describe the solution (“maintaining state”) to the problem
(“[distinguishing between multiple outstanding alerts for a single account
holder becomes impossible on a stateless communication channel without
ensuring that the responses are within prescribed parameters”) described in
para. 60 of the Specification.
Accordingly, we are unpersuaded by the argument that we were in
error to conclude that “the Appellants’ suggestion that the Examiner did not
properly determine whether the claims at issue are directed to a patent-
ineligible concept, such as an abstract idea, in accordance with Alice step
one is unpersuasive” (Dec. 7).
The Alice step two determination
The Appellants argue that “the Board misapprehended or overlooked
the above argument made by Appellant, and failed to sufficiently understand
technological concepts articulated in the Appellant’s argument.” Req. 5.
The argument said to be misapprehended/overlooked was:
[t]he claims include language that goes beyond merely linking
sending and receiving alerts over a stateless communication
channel to a particular technological environment. Specifically,
the language of the claims includes generating a state model,
determining an expected response to an alert associated with a
first event, and updating the state model in accordance with the
expected response if a second event includes a value sufficient
to identify the expected response. As discussed previously,
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maintaining a state model is advantageous, as “a system
implementing the technique can handle multiple events
simultaneously for a single account holder or state model, even
using stateless channels.” Specification, p. 1. Therefore, in
generating and updating a state model to handle multiple events
simultaneously using stateless communication channels, the
claims include meaningful limitations that go beyond merely
linking an abstract idea to a particular technological
environment.
Reply Br. 7. This was the only argument made challenging the Examiner’s
step-two determination.
We disagree that we misapprehended and/or overlooked said
argument. We reproduced said argument in our Decision (see pages 9-10)
and responded that
the Appellants do not sufficiently explain, how the additional
limitations render the abstract idea to which the claims are
directed to any less an abstract idea. For example, the argued-
over state model appears to be a type of information. See
Specification, para. 34 (“An issue state model includes an
account identifier and the status of an issue.”) However,
information is an intangible. See Microsoft Corp. v. AT & T
Corp., 550 U.S. 437, 451 n.12 (2007). Also, “[t]hat a computer
receives and sends the information over a network—with no
further specification—is not even arguably inventive.”
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014).
Dec. 10.
The discussion in the Request does not provide an explanation that is
any more sufficient than the one provided for in the Reply Brief.
We are cognizant of the Federal Circuit’s caution
courts “must be careful to avoid oversimplifying the claims” by
looking at them generally and failing to account for the specific
requirements of the claims. . . . Whether at step one or step two
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of the Alice test, in determining the patentability of a method, a
court must look to the claims as an ordered combination,
without ignoring the requirements of the individual steps.
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313
(Fed. Cir. 2016) (citing In re TLI Commc ’ns LLC Patent Litig., 823 F.3d
607, 611 (Fed. Cir. 2016)). See Req. 5.
But we did not oversimplify the claims. Under step one we analyzed
whether the concept to which the Examiner determined the claims to be
directed was in error. We also ascertained whether said concept was an
abstract idea. Then, under step two, we analyzed whether the Examiner was
in error in determining that claim 1 did not include an element or
combination of elements sufficient to ensure that the claimed subject matter
in practice amounted to significantly more than to be on the patent-ineligible
abstract idea itself.
The Appellants argue, again, that the
claims at issue include concepts of generating a state model,
determining an expected response to an alert associated with a
first event, and updating the state model in accordance with the
expected response if the second event includes the value
sufficient to identify the expected response, which is in
consideration of the technological problem of associating
conventionally-undistinguishable messages (e.g., an alert and a
response thereto) communicated in stateless communication
channels, as set forth above.
Req. 5-6 (emphasis added). But we do not see, and the Appellants do not
explain, how including said “concepts” transforms the abstract idea into an
inventive application. If anything, they further reinforce the abstract
character of the claimed subject matter.
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The combined concepts of generating a state model, determining an
expected response to an alert associated with a first event, and updating the
state model in accordance with the expected response if the second event
includes the value sufficient to identify the expected response desribes a
solution oriented to achieve a result (i.e., to overcome problems associated
with sending and receiving alerts through stateless communication
channels). What the Appellants are urging as patent-eligible subject matter
is a result-oriented solution that is absent any technical detail for practicing
it. It is a broad solution that is not circumscribed by technical detail. Cf.
Credit Acceptance Corp. v. Westlake Services, LLC, 859 F.3d 1044, 1057
(Fed. Cir. 2017):
Significantly, the claims do not provide details as to any
non-conventional software for enhancing the financing process.
See Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that “[o]ur law
demands more” than claim language that “provides only a
result-oriented solution, with insufficient detail for how a
computer accomplishes it”); Elec. Power Grp., 830 F.3d at
1354 [Elec. Power Grp., LLCv. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016)]; (explaining that claims are directed to
an abstract idea where they do not recite “any particular
assertedly inventive technology for performing [conventional]
functions”).
Accordingly, we continue to find that the Examiner was not in error in
determining that claim 1 did not include an element or combination of
elements sufficient to ensure that the claimed subject matter in practice
amounted to significantly more than to be on the patent-ineligible abstract
idea itself.
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“II. The claims at issue are patent-eligible under 35 U.S.C. § 101 in
terms of recent Federal Circuit cases.” (Req. 6).
The Appellants argue that
claims at issues are directed to a concept of “generating a state
model according to the business rules determination . . .
determining an expected response to the alert associated with
the first event. . . and updating the state model in accordance
with the expected response if the second event includes the
value sufficient to identify the expected response.” Unlike
Apple [Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir.
2016)], . . . this claimed concept is not simply directed to a
concept of mere resulting systems with certain features, and
instead directed to certain computer operations of “generating a
state model according to the business rules determination . . .
determining an expected response to the alert associated with
the first event. . . and updating the state model in accordance
with the expected response if the second event includes the
value sufficient to identify the expected response,” so as to
enable sequential and mutual communication through stateless
communication channels.
Req. 7.
The argument is unpersuasive. Claim 1 is not focused on “enabling]
sequential and mutual communication through stateless communication
channels.” It is broader than that.
The Appellants argue that “the claims at issue are rather patent-
eligible like Enflsh, where use of a self-referential table for a computer
database instead of conventional separate multiple tables for a computer
database have been held as not merely using computers as a tool and rather
focus on improvement in the functioning of the computer itself.” Req. 7.
According to the Appellants, “the claim features improve the functioning of
the computer itself.” Req. 8.
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The argument is unpersuasive. Claim 1 nominally defines a system
comprising three different engines and three different datastores. But, as we
stated in the Decision,
[a]s to the elements in the claims (e.g., “datastore” and
“engine” in claim 1) which facilitate said [claimed] technique,
the Specification discloses the use of “traditional databases”
(para. 23) and “general purpose central processing unit[s]”
(para. 16). Thus, the Specification supports the view that these
elements are simply conventional computer components added
to a scheme for sending and receiving alerts through stateless
communication channels.
Dec. 7. The Appellants do not dispute this. The Specification belies the
Appellants’ current argument that the claimed subject matter does not
merely use generic computers as a tool or that their functioning is improved
by the claimed scheme.
No more arguments having been submitted. For the foregoing reasons
we see no error in the Board’s decision to affirm the rejection of claims 1-20
under 35 U.S.C. § 101 as being directed to non-statutory subject matter and
to denominate the affirmed rejection as a new ground of rejection.
“III. The Board misapprehended or overlooked Appellant’s arguments
made in the Appeal Brief with respect to rejections under 35 U.S.C.
§ 112, second paragraph.” Req. 8.
The Appellants argue “[t]he Board misapprehended or overlooked
Appellant’s argument made in the Appeal Brief with respect to the rejections
under 35 U.S.C. § 112, second paragraph, because the Board failed to refer
to any of the disclosure that Appellant’s argued as describing the structure of
the claimed limitations that allegedly amount to means-plus-function
limitations.” Req. 8.
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In the Appeal Brief, the Appellants argued that
[t]he Examiner asserts that FIG. 1 repeats the same limitation as
claim 16 in a flow diagram. See Final Office Action, pp. 2-3.
Applicant respectfully submits that FIG. 1 is not a flow diagram
and discloses sufficient structure to allow one of ordinary skill
in the art to understand what is claimed when read in light of
the specification. For example, Applicant points to the
Application which reads “the alert generation engine 114
determines an expected response to the alert and generates an
alert that includes a value sufficient to identify the expected
response.” Application, [0035]. Applicant further points to
the Application, which recites
As used in this paper, an engine includes a dedicated
or shared processor and, typically, firmware or
software modules that are executed by the processor.
Depending upon implementation-specific or other
considerations, an engine can be centralized or its
functionality distributed. An engine can include
special purpose hardware, firmware, or software
embodied in a computer-readable medium for
execution by the processor. As used in this paper, a
computer-readable medium is intended to include all
mediums that are statutory (e.g., in the United States,
under 35 U.S.C. 101 ), and to specifically exclude all
mediums that are non-statutory in nature to the extent
that the exclusion is necessary for a claim that
includes the computer-readable medium to be valid.
Application, [0022], Based on the example portions of the
Application, Applicant respectfully submits that the Application
discloses sufficient structure to allow one of ordinary skill in
the art to understand what is claimed in claims 16-20 when read
in light of the specification
App. Br. 8.
We stated that the “Examiner’s position has not been adequately
challenged.” Dec. 11. We stated that
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[t]he Appellants argue that “the Application discloses
sufficient structure to allow one of ordinary skill in the art to
understand what is claimed in claims 16-20 when read in light
of the specification.” Appeal Br. 8. But that is not the
question.
Dec. 11. We quoted from Federal Circuit decisions (i.e., Rodime PLC v.
Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999); In re Donaldson
Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994); and Biomedino, LLCv.
Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007)), reproduced the
Examiner’s position, and stated that
[cjlaim 16 has eleven means-plus-function clauses. The
question is whether the Specification discloses structure
corresponding to each of said means-plus-function limitations.
The Appellants’ response that there is “sufficient structure to
allow one of ordinary skill in the art to understand what is
claimed” (Appeal Br. 8) is not an adequate response to the
Examiner’s determination that the Specification does not
disclose structure corresponding to the means-plus-function
limitations sufficient to render the claims definite.
Dec. 12.
We maintain that was not an adequate response.
The Appellants now argue that said response is indeed adequate. The
Appellants argue that we misapprehended and misunderstood the adequacy
of the Appellants response as set forth on page 8 of the Appeal Brief.
According to the Appellants,
[t]he argument made in the Appeal Brief by Appellant was clear
in that FIG. 1 of the disclosure depicts each of the alleged
means-plus-function limitations, and that the Specification
sufficiently describes the structure corresponding to the alleged
means-plus-function limitations, for example, the alert
generation engine 114 described in paragraph [0035] in
combination with description about specific structure of
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“engine” described in paragraph [0022] for claimed “alert
generation engine.”
Req. 9 (emphasis added). We disagree.
There is nothing in the Appeal Brief about FIG. 1 of the disclosure
depicting each of the alleged means-plus-function limitations. Apparently
the Appellants deem it sufficient to cite a figure and provide an example and
then to leave it to the Board investigate the Specification for some structure
corresponding to each of the 11 means-plus-function limitations in claim 16.
Suffice it to say that we are not in favor of that tactic. See DeSilva v.
DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999) (“[An appeal] brief must
make all arguments accessible to the judges, rather than ask them to play
archaeologist with the record.”) See also (1) Shiokawa v. Maienfisch,
56 USPQ2d 1970, 1975 (BPAI 2000) and (2) LeVeen v. Edwards, 57
USPQ2d 1406, 1413 (BPAI 2000).
Be that as it may, FIG. 1 of the disclosure insufficiently discloses
structure corresponding to each of the 11 means-plus-function limitations of
claim 16. FIG. 1 is reproduced below:
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100
FIG. 1
FIG. 1 depicts an example of an actionable alerting system according to the
Appellants’ invention.
FIG. 1 depicts an Actionable Alert System 106. “The actionable alert
system 106 can be implemented on one or more devices in a network.
Networks can include enterprise private networks and virtual private
networks (collectively, private networks), which are well known to those of
skill in computer networks.” Spec. para. 21. Accordingly, the actionable
alert system 106 and its components are computer-enabled. “For computer-
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implemented means-plus-function claims where the disclosed structure is a
computer programmed to implement an algorithm, ‘the disclosed structure is
not the general purpose computer, but rather the special purpose computer
programmed to perform the disclosed algorithm.’” Finisar Corp. v. DirecTV
Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008) (quoting WMS
Gaming, Inc. v. Inti Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)).
FIG. 1 depicts black boxes. They provide insufficient disclosure of an
algorithm.
For example, one box contains the words “Issue State Maintenance
Engine.” This is not a disclosure of an algorithm corresponding to the
claimed function “generating at an issue state maintenance engine a state
model according to the business rules determination” (assuming that is what
the Appellants are arguing). Claim 11.
The Appellants suggest another example: that paras. 35 and 22
disclose a structure corresponding to the functions set forth in the last two
means clauses of claim 16, means associated with alert generation engine
114; that is, “receiving a second event over the stateless communication
channel in response to the alert” and “updating the state model in accordance
with the expected response if the second event includes the value sufficient
to identify the expected response.” See Req. 9 (relying on Appeal Br. 8).
But there is no algorithm disclosed there. Para. 35 describes what an alert
engine does (e.g., “The alert generation engine 114 sends the alert to the
alert destination.”) and para. 22 discloses what the term “engine” covers
(e.g., “An engine can include special purpose hardware, firmware, or
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Application 13/423,574
software embodied in a computer-readable medium for execution by the
processor.”)
Neither FIG. 1 nor the Specification provides the necessary sufficient
disclosure of an algorithm corresponding to the functions recited in the 11
means-plus-function clauses set forth in claim 16. When there is no
description of an algorithm in the Specification to support a computer-
enabled means-plus-function limitation in a claim, the disclosure will be
considered inadequate to explain to one of ordinary skill in the art what is
meant by the claim language. Aristocrat Techs. Australia Pty. Ltd. vs. Int’l
Game Tech., 521 F.3d 1328, 1337 (Fed. Cir. 2008). Based on FIG. 1 and
what is disclosed in the Specification, we cannot determine the
corresponding structure in the Specification for the recited means.
Accordingly, we agree with the Examiner that claim 16, and claims 17-20
that depend therefrom, are indefinite under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter which the Appellants regard as the invention. “If there is no structure
in the specification corresponding to the means-plus-function limitation in
the claims, the claim will be found invalid as indefinite.” Biomedino, LLC v.
Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007).
Notwithstanding that we did not misapprehend or misunderstand the
Appellants’ arguments with respect to the rejections under 35 U.S.C. § 112,
second paragraph, the position that the Specification provides sufficient
structure (e.g., an algorithm) corresponding to the recited functions of the 11
means-plus-function clauses of claim 16 is not supported by the evidence.
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Application 13/423,574
CONCLUSION
We have carefully considered the arguments that the Appellants have
set forth in the Request but, for the foregoing reasons, we do not find them
persuasive as to error in the Board’s decision of September 25, 2017 to
affirm the rejection of claims 1-20 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter but denominate the affirmed rejection as a
new ground of rejection and to affirm the rejection of claims 16-20 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which
applicants regard as the invention.
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).
DENIED
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