Ex Parte Vogler-Ivashchanka et alDownload PDFPatent Trial and Appeal BoardAug 27, 201811725146 (P.T.A.B. Aug. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/725,146 03/15/2007 32864 7590 08/29/2018 FISH & RICHARDSON, P.C. (SAP) PO BOX 1022 MINNEAPOLIS, MN 55440-1022 FIRST NAMED INVENTOR Iryna Vogler-Ivashchanka 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. 13913-0581001 3304 EXAMINER OFORI-AWUAH,MAAME ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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): P ATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IRYNA VOGLER-IVASHCHANKA, KIM LESSLEY, STEFAN EHRLER, MICHAEL BECHERER, and FLORIAN HERY Appeal 2016-006565 Application 11/725, 146 Technology Center 3600 Before CATHERINE SHIANG, BETH Z. SHAW, and MICHAEL J. ENGLE, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-30, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Introduction According to the Specification, the present invention relates to interacting with a user via a personal information manager user interface. See generally Spec. 1. Appeal 2016-006565 Application 11 /725, 146 In one aspect, a method includes receiving, at a user interface of a personal information manager, requisition information and candidate information from a recruiting server that manages data associated with recruiting individuals to an enterprise, and rendering, in the personal information manager user interface, the requisition information and the candidate information. The personal information manager user interface is generated in accordance with the logic of a personal information manager for the management of personal information of a human user. The requisition information describes a request to fill a position. The candidate information describes an individual who is a candidate to fill the position. Spec. 3. Claim 1 is exemplary: 1. A computer-implemented method, the method being executed using one or more processors and comprising: receiving, by a client system operating a personal information manager, either by a push mechanism or a pull mechanism, requisition information and candidate information directly from a recruiting server that manages data associated with recruiting individuals to an enterprise; and displaying, by the client system operating a personal information manager user interface, the requisition information in response to a user selection of a folder that archives the requisition information and the candidate information in response to a user selection of a folder that archives the candidate information in the personal information manager user interface, generating, by one or more processors, the personal information manager user interface on one or more input/output devices in accordance with a logic of the personal information manager for management of personal information of a human user, displaying, by the personal information manager user interface the folder corresponding to the user selection, the folder comprising the requisition information that describes a collection of requests to fill positions, and the candidate information that describes a collection of 2 Appeal 2016-006565 Application 11 /725, 146 individuals who are candidates to fill the positions; issuing service requests, by the client system operating the personal information manager, to the recruiting server; and receiving, by one or more processors, responsive responses from the recruiting server, the responsive responses including the requisition information and the candidate information. Rejection Claims 1-30 are rejected under 35 U.S.C. § 101 because they are directed to patent-ineligible subject matter. ANALYSIS 35 us.c. § 101 We disagree with Appellants' arguments, and agree with and adopt the Examiner's findings and conclusions in (i) the action from which this appeal is taken (Final Act. 2-5) and (ii) the Answer (Ans. 2-10) to the extent they are consistent with our analysis below. 1 The Examiner rejects the claims under 35 U.S.C. § 101 because they are directed to patent-ineligible subject matter. See Final Act. 2-5; Ans. 2- 10. In particular, the Examiner concludes the claims are directed to the abstract idea of organizing information. See Ans. 2-5; Ans. 2-10. The Examiner determines the claims do not identify an inventive concept to transform the nature of the claims into a patent-eligible application. See 2- 5; Ans. 2-10. Appellants argue the Examiner erred. See App. Br. 11-15; Reply Br. 1---6. 1 To the extent Appellants advance new arguments in the Reply Brief without showing good cause, Appellants have waived such arguments. See 37 C.F.R. § 41.41(b)(2). 3 Appeal 2016-006565 Application 11 /725, 146 Appellants have not persuaded us of error. Section 101 of the Patent Act provides "[ w ]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101. That provision "contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp.v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the Supreme Court: [W]e set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts .... If so, we then ask, "[ w ]hat else is there in the claims before us?" . . . To answer that question, we consider the elements of each claim both individually and "as an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent-eligible application .... We have described step two of this analysis as a search for an "'inventive concept'" -i.e., an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself." Alice Corp., 134 S. Ct. at 2355. The Federal Circuit has described the Alice step-one inquiry as looking at the "focus" of the claims, their "character as a whole," and the Alice step-two inquiry as looking more precisely at what the claim elements add-whether they identify an "inventive concept" in the application of the ineligible matter to which the claim is directed. See Elec. Power Grp., LLC 4 Appeal 2016-006565 Application 11 /725, 146 v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Regarding Alice step one, the Federal Circuit has "treated collecting information, including when limited to particular content ( which does not change its character as information), as within the realm of abstract ideas." Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents, 790 F.3d at 1348--49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "In a similar vein, we have treated analyzing information [including manipulating information] by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category." Elec. Power, 830 F.3d at 1354 (emphasis added); see also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). "And we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis." Elec. Power, 830 F.3d at 1354 (emphasis added); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--15 (Fed. Cir. 2014). The rejected claims "fall into a familiar class of claims 'directed to' a patent-ineligible concept." Elec. Power, 830 F.3d at 1353. Contrary to Appellants' arguments (App. Br. 11-15; Reply Br. 1---6), the claims are similar to the claims of Electric Power, and are focused on the combination of abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354. 5 Appeal 2016-006565 Application 11 /725, 146 For example, claim 1 is directed to receiving or generating information ("receiving .. "; "generating ... "; "issuing ... "), and displaying information ("displaying ... "). See Elec. Power, 830 F.3d at 1353. Claim 16 is similarly directed to managing information and displaying information ("provide services related to a recruiting process and manage data ... "; "provide services related to management of a user's personal information"; "request services and receive services from the personal information manager server ... the data processing activities including ... "; "integrates, onto a single display screen, personal information"; "issue service requests ... and receive responsive responses ... , the responsive responses including the data associated with the recruiting process"). The Specification explains "[a] personal information manager is one example of a set of machine-readable instructions that governs the mechanisms of interaction between a user and a data processing device." Spec. 1. The dependent claims are directed to similar functions or processes, and Appellants have not shown such claims are directed to other non-abstract functions or processes. See claims 2-15 and 17-30. Appellants contend the Examiner incorrectly determines the claims are directed to organizing human activities, because under In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), "'organizing human activities' encompasses interactions between humans that could be performed without a computer." App. Br. 13. However, Appellants do not provide any pinpoint citation to support that assertion. In fact, Appellants' arguments are unsubstantiated and mischaracterize Bilski, as "organizing human activities" does not appear in the majority's decision at all, instead first appearing in a concurrence. 6 Appeal 2016-006565 Application 11 /725, 146 And Appellants have not shown even the concurrence advocates their position. Appellants' assertion regarding pre-emption (App. Br. 15) is unpersuasive, because "[w]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility .... Where a patent's claims are deemed only to disclose patent ineligible subject matter under the Afayo framework, as they are in this case, preemption concerns are fully addressed and made moot" Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP, 788 F.3d at 1362---63 ("that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make thern any less abstract"). Regarding Alice step two, contrary to Appellants' assertion (App. Br. 11-15; Reply Br. 1---6), Appellants have not shown the claims in this case require an arguably inventive set of components or methods, or invoke any assertedly inventive programming. See Elec. Power, 830 F.3d at 1355. Further, contrary to Appellants' arguments (App. Br. 11-15; Reply Br. 1---6), the claims are similar to the claims of Electric Power, because they do not require any nonconventional computer, network, or display components, or even a "non-conventional and non-generic arrangement of known, conventional pieces," but merely call for performance of the claimed information management and display functions on generic computer components and display devices. See Elec. Power, 830 F.3d at 1355; see also Claim 1 (reciting "a client system operating a personal information manager" and "one or more processors"); Claim 16 ( reciting "one or more computers"; "a recruiting server"; and "a personal information manager 7 Appeal 2016-006565 Application 11 /725, 146 server"). As discussed above, the Specification explains "[a] personal information manager is one example of a set of machine-readable instructions that governs the mechanisms of interaction between a user and a data processing device." Spec. 1. The dependent claims call for similar generic components and devices, and Appellants have not shown such claims require any non-conventional components or devices. See claims 2- 15 and 17-30. Similar to the claims of Electric Power, the rejected claims specify what information is desirable to manage and display, but they "do not include any requirement for performing the claimed functions of' managing and displaying "by use of anything but entirely conventional, generic technology." Elec. Power, 830 F.3d at 1355. Therefore, similar to the claims of Electric Power, the rejected claims "do not state an arguably inventive concept in the realm of application of the information-based abstract ideas." Elec. Power, 830 F.3d at 1356. Appellants' assertion (App. Br. 14; Reply Br. 5---6) about DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) is unpersuasive. 2 In DDR Holdings, the Court found: the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result-a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink. Instead of the computer network operating in its normal, expected manner by sending the website visitor to the third-party website that appears to be connected with the clicked advertisement, the claimed system generates and directs the visitor to the above- described hybrid web page that presents product information 2 Appellants also cite PTAB opinions that are not precedential. See App. Br. 13-15; Reply Br 1-2, 4. 8 Appeal 2016-006565 Application 11 /725, 146 from the third-party and visual "look and feel" elements from the host website. When the limitations of the '399 patent's asserted claims are taken together as an ordered combination, the claims recite an invention that is not merely the routine or conventional use of the Internet. DDR Holdings, 773 F.3d at 1258-59. Unlike the claims of DDR, the claims here do not "specify how interactions with the Internet are manipulated to yield ... a result that overrides the routine and conventional sequence of events." DDR Holdings, 773 F.3d at 1258. Further, this case is distinguished from DDR because as discussed above, the claims here recite inventions that are merely the routine or conventional use of the technology-the opposite of what the claims of DDR represent. See DDR Holdings, 773 F.3d at 1258-59. 3 In short, Appellants have not shown the claims, read in light of the Specification, require anything other than conventional computer, network, and display technology for managing and presenting the desired information. See Elec. Power, 830 F.3d at 1354. Such invocations of computers and networks are "insufficient to pass the test of an inventive concept in the application" of an abstract idea. See Elec. Power, 830 F.3d at 1355. Because Appellants have not persuaded us the Examiner erred, we 3 Likewise, Appellants fail to show the claims are similar to the claims of Klaustech, Inc. v. AdMob, Inc., 2015 \iVL 10791915 (N.D. Cal. 2015). In particular, Appellants acknowledge the Klaustech invention "employs a new approach ... to solve technical problems that do not exist in the conventional advertising realm." Reply Br. 5 (citing Klaustech, at *3). In contrast, the rejected claims do not "solve technical problems that do not exist in the conventional advertising realm." Klaustech, at *3. Appellants also cite Messaging Gateway Solutions, LLC v. Amdocs, Inc., 2015 WL 1744343 (D. Del. 2015) (Reply Br. 6), but do not persuasively explain why that case is similar to this case. 9 Appeal 2016-006565 Application 11 /725, 146 sustain the Examiner's rejection of claims 1-30 under 35 U.S.C. § 101. DECISION We affirm the Examiner's decision rejecting claims 1-30. 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). See 37 C.F.R. § 41.50(±). AFFIRMED 10 Copy with citationCopy as parenthetical citation