Ex Parte White

Patent Trials and Appeals Board

Nov 30, 2018

13099434 - (D) (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/099,434
107681 7590
NCR Corporation
864 Spring Street NW
Atlanta, GA 30308
05/03/2011
12/04/2018
FIRST NAMED INVENTOR
Daniel White
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.
11-41 1815
EXAMINER
TRAN,BAOG
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
PTOMail.Law@ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL WHITE
Appeal2018-004867
Application 13/099,434 1
Technology Center 2100
Before JASON V. MORGAN, JEREMY J. CURCURI, and
JOHN R. KENNY, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1, 9-14, and 17-25. Claims 2-8, 15, and 16 are
canceled. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Invention
Appellant discloses a "system for locating and presenting video
content [ using a] search is done for events of interest to a user ....
1 Appellant identifies NCR CORPORATION as the real party in interest.
Appeal Br. 2.
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Application 13/099,434
In one form of the invention, the search is of the conceptual type, and not a
key-word search formulated by the user." Abstract.
Representative Claim
1. A method, comprising:
delivering to a conceptual search engine a first set of search terms
entered by a user to identify a single event;
performing a first search with the conceptual search engine based on
the first set of search terms to identify subject matter content for the
identified event;
selecting a subset of the subject matter content to suppress results of
the first search that are unrelated to the identified event;
based on the subset of the subject matter content, modifying at least
one search term from the first set of search terms to form a second set
of search terms related to the identified event;
automatically forming a search query based on the second set of
search terms, without input from the user;
performing a second search with the conceptual search engine based
on the search query to locate video footage of the identified event;
recording the video footage; and
delivering the video footage to a mobile device under control of the
user.
Rejections
The Examiner rejects claims 1, 9--11, 13, 14, 1 7-19, and 21-2 5 under
35 U.S.C. § I03(a) as being unpatentable over Peng et al. (US 2010/0191758
Al; published July 29, 2010), Martch et al. (US 2010/0083319 Al;
published Apr. 1, 2010), and Naimark et al. (US 2008/0320159 Al;
published Dec. 25, 2008). Final Act. 4--14
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Application 13/099,434
The Examiner rejects claims 12 and 20 under 35 U.S.C. § I03(a) as
being unpatentable over Peng, Martch, Naimark, and Koningstein (US
2006/0149625 Al; published July 6, 2006). Final Act. 14--16.
The Examiner newly rejects claims 1, 9--14, and 17-25 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Ans. 3-5.
ADOPTION OF EXAMINER'S
FINDINGS, DETERMINATIONS, AND CONCLUSIONS
We agree with and adopt as our own the Examiner's findings and
determinations, as set forth in the Answer and in the Action from which this
appeal was taken, and concur with the Examiner's conclusions in light
thereof. We have considered Appellant's arguments, but do not find them
persuasive of error. We provide the following explanation for emphasis.
35 U.S.C. § I03(A)
Examiner's Findings and Appellant's Contentions
Peng discloses a search directed to "events occurring in Central Park
in New York on weekends in the summer of2009." Peng ,r 24. Martch
discloses electronic programming guide data with markers such as "a sports
game marker and the keyword 'Tigers"' that enables a television event to
"be included in the search results for Detroit Tigers." Martch ,r 56.
In rejecting claim 1 under 35 U.S.C. § I03(a), the Examiner concludes
that the combination of Peng's search for events with Martch's identification
of an event that includes a keyword renders obvious delivering to a
conceptual search engine a first set of search terms entered by a user to
identify a single event. Final Act. 2-3 (citing, e.g., Peng ,r 24; Martch ,r 12);
see also Ans. 7-8. Specifically, the Examiner finds that Peng teaches the
claimed delivery to identify a plurality of events, but the Examiner relies on
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Application 13/099,434
Martch to teach or suggest modifying Peng' s delivery to identify a single
event. See Final Act. 3; Ans. 8. The Examiner concludes the combination
would have been obvious to an artisan of ordinary skill "to provide users
with a means for locating television content based on user-entered search
terms and filters." Final Act. 4 (citing Martch ,r 12).
Appellant contends the Examiner erred because Martch's "'markers'
do not teach identifying a single event, but instead indicate that particular
television events are related to sports programming." Appeal Br. 8.
Appellant further argues the markers of Martch "are associated with the
electronic programming guide, and are not entered by a user." Id.
Analysis
Appellant argues that Martch's "sports marker and 'Tigers' keyword
are not entered by a user. Consequently, the sports marker and 'Tigers'
keyword are not 'search terms entered by a user to identify a single event."'
Appeal Br. 9. The Examiner's unrebutted findings show, however, that
Peng teaches or suggests search terms entered by a user. See Final Act. 2
(citing Peng ,r,r 24--29). Thus, Appellant's contentions attacking Martch fail
to show error in the Examiner's reliance on Peng to teach delivering to a
conceptual search engine a first set of search terms entered by a user to
identify a plurality of events. See Final Act. 2-3.
Furthermore, the Examiner properly relies on Martch's use of markers
and keywords (e.g., a sports marker and "Tigers" keyword) to teach
information used in a searching or filtering process to identify a particular
event-i.e., a single event. Id. at 3 (citing Martch ,r 56). Appellant argues
"the 'marker' does not teach identifying a single event." Appeal. Br. 8.
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Appellant's arguments are unpersuasive, however, because Martch uses a
marker, combined with a keyword, to identify a single event. Martch ,r 56.
Appellant does not show error in the Examiner's conclusion that it
would have been obvious to modify the search terms of Peng to include
information, such as Martch's marker and keyword, to identify a single
event rather than a plurality of events. See Final Act. 4. Therefore, we agree
with the Examiner that the combination of Peng and Martch renders obvious
"delivering to a conceptual search engine a first set of search terms entered
by a user to identify a single event," as recited in claim 1.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejections
of claim 1, and claims 9-14, and 17-25, which Appellant argues are
patentable for similar reasons. Appeal Br. 10.
35 U.S.C. § 101
Examiner's Determinations and Appellant's Contentions
In making a new rejection under 35 U.S.C. § 101, the Examiner
determines that claim 1 is "directed to the abstract idea of searching for
content, refining the search, and retrieving the user-specified content, which
is similar to concepts courts have previously found to be abstract, such as
'remotely accessing and retrieving user-specified information."' Ans. 3
(citing Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315 (Fed.
Cir. 2017)). The Examiner determines the additional limitations, considered
as an ordered combination, do not "improve[] the functioning of a computer
or improve[] any other technology," but "merely provide [a] conventional
computer implementation." Ans. 5. Thus, the Examiner concludes the
additional recitations do not make claim 1 significantly more than the
underlying abstract idea. Id. at 4.
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Appellant contends the Examiner erred because claim 1 improves
existing searching technologies by enabling a user to enter "a first set of
search terms, and without any further input from the user, [returning] video
footage to a mobile device under control of the user." Appeal Br. 4.
Appellant contends the claimed method "automatically replace[ s] the cycle
of figuring out new search terms ... and manually reviewing ... search
results." Id. at 3. Appellant further contends that with "the method recited
in claim 1 [ a user] can advantageously implement 'recording the video
footage' and 'delivering the video footage to a mobile device under control
of the user'." Id. Appellant further contends that because "claim 1 improves
the technology for delivering content in a computer environment, the method
of claim 1 is significantly more than a mere abstract idea." Id. at 4.
Analysis
To be statutorily patentable, the subject matter of an invention must be
a "new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof." 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in§ 101, including: (1) laws of nature; (2) natural phenomena; and (3)
abstract ideas. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014).
The Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions "from those that claim patent-
eligible applications of those concepts." Id. ( citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The evaluation
follows a two-part analysis: (1) determine whether the claim is directed to a
patent-ineligible concept, e.g., an abstract idea; and (2) if so, then determine
whether any element, or combination of elements, in the claim is sufficient
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to ensure that the claim amounts to significantly more than the patent-
ineligible concept itself. See Alice, 134 S. Ct. at 2355.
"[ A ]t present there is no such single, succinct, usable definition or
test" for what an "abstract idea" encompasses. Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016). Therefore, the
conclusion that a claim is abstract often turns on the examination of "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, 841
F.3d at 1294 (citing Elec. Power Grp., 830 F.3d 1350, 1353-54 (Fed. Cir.
2016)).
"[ A ]11 inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. We, therefore, look to whether: (1) the claims focus on a specific
means or method that improves the relevant technology or (2) the claims are
instead directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery. See Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
Step 1
We agree with the Examiner that the claim 1 method-which entails
performing both a first search based on search terms to identify an event and
a second search based on search terms related to the identified event-is
similar to claimed activities such as "accessing records through ... an index-
searchable database" and "[ r ]emotely accessing and retrieving user-specified
information" that are abstract. See Intellectual Ventures I, 850 F.3d at 1327,
1330. Performing a search, and then performing a related search, includes
"longstanding conduct that existed well before the advent of computers and
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the Internet." Id. at 1327. The Specification even details an analogous, non-
technological practice of first identifying "subject matter of interest to the
public" such as "breaking news or headlines," and then "polling observers
and commentators of the news media [to] identify[] new topics." Spec. 11,
11. 1-5.
Appellant contends the claimed method does not require manually
figuring "out what search terms to omit, add, or change" to perform the
claimed second search. Reply Br. 3. However, "mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology." Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Similarly,
Appellant's argument that the claimed invention can "implement 'recording
the video footage' and 'delivering the video footage to a mobile device under
control of the user,"' rather than merely returning "links to video content"
(Reply Br. 3) merely suggests that the claimed invention automates the
process of recording and delivering video footage identified by a search.
Furthermore, claim 1 recites vague steps such as "based on the subject
of the subject matter content, modifying at least one search term from the
first set of search terms to form a second set of search terms related to the
identified event." Such steps are insufficient to define a "specific process
for automatically [ refining the first search] using particular information and
techniques .... in a process specifically designed to achieve an improved
technological result in conventional industry practice." McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016).
For these reasons, we agree with the Examiner that claim 1 is directed
to an abstract idea. See Ans. 3.
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Step 2
Appellant contends "claim 1 improves the technology for delivering
content in a computer environment, the method of claim 1 is significantly
more than a mere abstract idea." Reply Br. 4. Appellant's argument is
unpersuasive, however, because "the prohibition against patenting abstract
ideas cannot be circumvented by attempting to limit the use of [the idea] to a
particular technological environment." McRO, 837 F.3d at 1312 (alteration
in original) (quoting Alice, 134 S. Ct. at 2358).
Furthermore, the claimed method is directed to an improvement in the
process of searching for and retrieving content, rather than to an improved
computer. See Enfzsh, 822 F.3d at 1335-36. The Specification's broad
disclosures provide ample evidence that the claimed method merely invokes
generic processes and machinery rather than improving any relevant
technology. See, e.g., Spec. Fig. 1, p. 3, 11. 17-22 (describing "computer 3,
or other management device contain[ing] software 6 and extra hardware 29,
if required"), p. 10, 1. 24--p. 13, 1. 4 (describing a first approach in which
"selected web sites, or other forums where the public undertakes
discussions, are examined"), p. 13, 11. 5-12 (describing an approach similar
to the first approach, but "wherein content is of a particular type"), p. 13, 11.
13-18 ( describing a third approach using a search "of a third party's
collection of news items"), p. 13, 11. 19-22 (describing a fourth approach
where a Really Simple Syndication "feed can be subscribed to"), p. 19, 1.
20-p. 20, 1. 15 (describing and contrasting brute force searches and searches
of indices), p. 20, 11. 17-24 ( describing mobile devices that include
"[ m ]odem cell phones, Personal Digital Assistants (PD As), notebook
computers and the like").
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For these reasons, we agree with the Examiner that claim 1 does not
include additional recitations that make the claim significantly more than the
underlying abstract idea. Ans. 4. Accordingly, we sustain the Examiner's
35 U.S.C. § 101 rejection of claim 1, and claims 9-14, and 17-25, which
Appellant argues are patentable for similar reasons. See Reply Br. 4.
DECISION
We affirm the Examiner's decision rejecting claims 1, 9-14, and 17-
25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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