Ex Parte Winner et al

Patent Trial and Appeal Board

May 14, 2018

10867844 (P.T.A.B. May. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/867,844 06/14/2004 Jeffrey B. Winner
91230 7590 05/16/2018
Baker Botts L.L.P./Facebook Inc.
2001 ROSS A VENUE
SUITE 900
Dallas, TX 75201
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.
079894.0137 4377
EXAMINER
HENRY, RODNEY M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
05/16/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY B. WINNER and NICHOLAS GALBREATH
Appeal2017-000357
Application 10/867 ,844 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jeffrey B. Winner and Nicholas Galbreath ("Appellants") seek our
review under 35 U.S.C. § 134 from the rejection of claims 1---6 and 22-27.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Facebook, Inc. as the real party in interest (Appeal
Br. 3).
Appeal2017-000357
Application 10/867,844
THE INVENTION
The "invention generally relates to online content management, and
more specifically, to a system and method for managing online content
delivery based on information from a person's social network." (Spec.
para. 1).
Claim 1 is representative, and is reproduced below, with bracketed
matter and indentation added:
1. A method comprising:
[ 1] maintaining, in a data store, a social network graph,
wherein the social network graph comprises a plurality of nodes,
each node corresponding to a respective user, and edge data
identifying connections between nodes of the plurality of nodes,
[ 1 a] wherein each connection between two nodes
establishes a degree of separation between the two nodes,
wherein a first user of the online social network
corresponds to a first node of the plurality of nodes;
[2] tracking, using a database of a computer system, online
activities of other users with respect to a certain interaction with
content of the online social network,
[2a] wherein the other users correspond to nodes that are
connected in the social network graph to the first node of
the first user by a single degree of separation and wherein
each other user shares one more attributes with the first
user;
[3] estimating, using the computer system, a probability
that the first user will perform the certain interaction with content
of the online social network based on the tracked online
activities;
[ 4] selecting, using the computer system, the content to be
delivered to the first user based on the estimated probability; and
[5] sending, to a client device of the first user, the selected
content for display to the first user, the selected content being
operable to perform the certain interaction.
2
Appeal2017-000357
Application 10/867,844
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sterling
Hsia
Achlioptas
Gross
Beyda et al.
("Beyda")
US 2002/0055833 Al
US 2002/0178166 Al
US 2004/0148275 Al
US 2004/0260600 Al
US 2005/0165644 Al
The following rejections are before us for review:
May 9, 2002
Nov. 28, 2002
July 29, 2004
Dec. 23, 2004
July 28, 2005
1. Claims 1---6 and 22-27 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1-3, 22-24 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gross and Achlioptas.
3. Claims 4 and 25 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gross, Achlioptas, and Beyda.
4. Claims 5 and 26 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gross, Achlioptas, Beyda, and Sterling.
5. Claims 6 and 27 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gross, Achlioptas, and Hsia.
ANALYSIS
The rejection of claims 1-6 and 22-27 under 35 U.S. C. § 1 OJ as being
directed to non-statutory subject matter.
The Appellants argue these claims as a group. See Reply Br. 3-7. We
select claim 1 as the representative claim for this group, and the remaining
claims 2-6 and 22-27 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
3
Appeal2017-000357
Application 10/867,844
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 566 U.S. 66, 82-84 (2012), "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice,
134 S. Ct. at 2355. The first step in that analysis is to "determine whether
the claims at issue are directed to one of those patent-ineligible concepts."
Id. If the claims are not directed to a patent-ineligible concept, e.g., to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered "individually
and 'as an ordered combination'" to determine whether the additional
elements "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. 66 at 79, 78).
Applying the framework in Alice, and as the first step of that analysis,
the Examiner determined that the claims are "directed to the abstract idea of
selecting content for members in a social network based on social network
connections, closeness of connections, and probability of interaction with the
content." (Ans. 4; see also Final Act. 2). According to the Examiner, the
invention is "a fundamental economic practice" (Final Act. 3) and "a
4
Appeal2017-000357
Application 10/867,844
mathematical relationship or formula." (Id. at 4). The Examiner also
determined that "[e]stimating/predicting user interaction with content to
select content for the users relies on the use of mathematical algorithms and
probabilistic methods, which is one of the excluded examples of an abstract
idea." (Id. at 5). Proceeding to the second step of Alice, the Examiner
determined that "[t]he claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the claims merely amount to the application or instructions to apply
the abstract idea." (Id.). The Examiner also determined that the claims "do
not effect an improvement to another technology or technical field; [] do not
amount to an improvement to the functioning of a computer itself; and [] do
not move beyond a general link of the use of an abstract idea to a particular
technological environment." (Id. at 6).
The Appellants contend that the Examiner erred and that claim 1 is
not directed to an abstract idea. (Appeal Br. 7-8). According to the
Appellants, the claims are "directed to tracking online interactions of first-
degree connections of a particular user of an online social network,
transforming the information about the tracked interactions to select content
that the particular user will likely interact with, and sending the interactive
content to the user's client device for display." (Id. at 8). The Appellants
further argue that "the Examiner has failed to provide evidence on the record
to establish that the claimed invention is an abstract idea." (Id. at 11).
We are not persuaded of error in the Examiner's rejection.
The "directed to" inquiry in the claims applies a stage-one filter to the
claims, considered in light of the Specification, based on whether "their
character as a whole is directed to excluded subject matter." Internet
5
Appeal2017-000357
Application 10/867,844
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015);
see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir.
2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(Inquiring into "'the focus of the claimed advance over the prior art.'").
Here, claim 1 calls for gathering and storing information, and using
the information for selecting relevant content for delivery. Claim 1 recites a
method comprising five steps including: (1) maintaining ... a social
network graph, (2) tracking ... online activities, (3) estimating ... a
probability, (4) selecting ... content, and (5) sending ... the selected
content for display. Claim 1 also includes two "wherein" clauses that further
describe the social network graph and the tracking step.
The court in Enfish put the question as being "whether the focus of the
claims is on [a] specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfish, 822 F.3d at 1335-1336.
The court found that the "plain focus of the claims" there was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id. at 1336.
"In determining the eligibility of respondents' claimed process for
patent protection under§ 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether the
claims as a whole "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016). In this case, we find that claim 1, as a whole, is focused on targeting
6
Appeal2017-000357
Application 10/867,844
content based on user tracking in a social network. We do not see that
claim 1 is focused on an improvement to any technology such as an
improved technique for storing data (e.g., social network graph) in a data
store or an improved technique for tracking online activities. Here, as in
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011 ), all of claim 1 's "method steps can be performed in the human mind,
or by a human using a pen and paper." As in CyberSource, the method of
claim 1 "can be performed by a human who simply reads records of Internet
credit card transactions from a preexisting database." (Id.)
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)); see also Enfish, 822 F.3d at 1335, quoted in Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).
In that regard, the Background section of the Specification discusses
the problem, which is that "[ s ]tatistical models, including those based on
collaborative filtering techniques, are, however, imperfect, and more
accurate predictors are desired on many fronts." (Spec. para. 3). According
to the Specification, the inventors solved the problem by selecting relevant
content for delivery to a member of a social network based on prior online
activities of other members of the network, and the closeness of the
member's relationship with the other members of the network. (Id. para. 4).
In light of the Specification's description of the problem and solution, the
7
Appeal2017-000357
Application 10/867,844
advance over the prior art by the claimed invention is in selecting relevant
content for delivery.
Given the focus of claim 1 as a whole, in light of the Specification, is
on data gathering activities2 in support of selecting relevant content for
delivery, the claims are properly characterized as being "directed to"
targeting content based on user tracking in a social network. Targeting
content based on user tracking in a social network is an abstract idea.
Cf Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1014 (C.D. Cal. 2014),
aff'd, 622 F. App'x 915 (Fed. Cir. 2015) (claims directed to "targeting
advertisements to certain consumers, and using a bidding system to
determine when and how advertisements will be displayed" held to be
directed to an abstract idea). As noted by the court in Morsa, matching
consumers with a given product or service "has been practiced as long as
markets have been in operation." Id. at 1013 (quoting Tuxis Technologies,
LLC v. Amazon.com, Inc., No. CV 13-1771-RGA, 2014 WL 4382446, at *5
(D. Del. Sept. 3, 2014)); see also OpenTV, Inc. v. Netjlix Inc., 76 F.Supp.3d
886, 893, No. 14-CV---01525-RS, at 10, 2014 WL 7185921 (N.D. Cal.
December 16, 2014) ("The concept of gathering information about one's
intended market and attempting to customize the information then provided
is as old as the saying, 'know your audience."'). Cf Personalized Media
Commc'ns, LLC v. Amazon.com, Inc., 161 F.Supp.3d 325, 337 (D. Del.
2 Cf Elec. Power Grp., LLC, 830 F.3d at 1353 (When "[t]he focus of the
asserted claims" is "on collecting information, analyzing it, and displaying
certain results of the collection and analysis," the claims are directed to an
abstract idea.)
8
Appeal2017-000357
Application 10/867,844
2015), ajfd, 2016 WL 7118532 (Mem) (Fed. Cir. 2016) ("providing
personalized recommendations" is an abstract idea).
The Appellants rely on PNC Bank v. Secure Axcess, LLC, CBM2014-
00100, 2014 WL 4537440 (PTAB Sept. 9, 2014) to argue that claims that
require a transformation of data are not directed to abstract ideas. (Appeal
Br. 10).
As a matter of course, what a different panel did in a different
situation under a different set of facts has little bearing on how this case
should be disposed of.
Still, examining earlier cases can have a role, especially in deciding
whether a concept that claims are found to be directed to is an abstract idea.
See Amdocs (Israel) Limited v. Openet Telecom, Inc., 841F.3d1288, 1294
(Fed. Cir. 2016) ("Instead of a definition [for what an "abstract idea"
encompasses], then, the decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen-what prior cases were about, and which way they were decided.").
In that regard, the patent claims (US 7,631,191 ("' 191 patent")) the PNC
Bank panel had before them are not comparable to the claims here at issue.
The' 191 patent claims involve authenticating a web page. They are
comparable to the claims involved in Bascom Global Internet Services, Inc.
v AT&T Mobility LLC, 827 F.3d 1341 (Fed Cir. 2016) (US 5,987,606). In
contrast, the claims here at issue involve targeting content based on user
tracking in a social network. More relevant cases are Morsa v. Facebook,
Inc., 77 F. Supp. 3d 1007, 1014 (C.D. Cal. 2014), ajf'd, 622 F. App'x 915
(Fed. Cir. 2015) (see, e.g., US 8,341,020 (claim 1) ("associating ... criteria
with an ad")) and Personalized Media Commc 'ns, LLC v. Amazon.com, Inc.,
9
Appeal2017-000357
Application 10/867,844
161 F.Supp.3d 325, 337 (D. Del. 2015), aff'd, 2016 WL 7118532 (Mem)
(Fed. Cir. 2016) (see, e.g., US 5,887,243 (claim 1) ("generating ... content
in respect to a viewer interest")).
The Appellants also rely on PNC Bank to make the point that the
Examiner did not adequately support the rejection with extrinsic evidence.
According to the Appellants, in PNC Bank "the Patent Trial and Appeal
Board found that there was not sufficient evidence that placing 'a trusted
stamp or seal on a document' was 'a fundamental economic practice' or a
'building block of the modem economy."' (Appeal Br. 11 ).
As far as evidentiary support for the determination that the concept to
which the claim is directed is an abstract idea, suffice it say that it is not
necessary to resort to additional facts and evidence in making the Alice step
one determination when the claims can adequately be compared to claims
declared abstract in past cases. See Amdocs at 1294, supra.
Although we do not consider PNC Bank either controlling or
germane, that panel's consideration of evidence in making a determination
under the first step of the Alice framework has merit. A similar approach
was taken in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016).
But these cases do not stand for the proposition that Examiners must provide
evidentiary support in every case before a conclusion can be made that a
claim is directed to an abstract idea. There is no such requirement. See, e.g.,
para. IV "July 2015 Update: Subject Matter Eligibility" to 2014 Interim
Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618
(Dec. 16, 2014) ("The courts consider the determination of whether a claim
is eligible (which involves identifying whether an exception such as an
abstract idea is being claimed) to be a question of law. Accordingly, courts
10
Appeal2017-000357
Application 10/867,844
do not rely on evidence that a claimed concept is a judicial exception, and in
most cases resolve the ultimate legal conclusion on eligibility without
making any factual findings" (emphasis added)). Evidence may be helpful
in certain situations where, for instance, facts are in dispute. But it is not
always necessary. It is not necessary in this case. We also note that for all
the criticism of a lack of evidentiary support, the Appellants have put
forward no rebuttal evidence showing that claim 1 is not directed to an
abstract idea.
In view of the above, we see no error in the Examiner's determination
that claim 1 is directed to an abstract idea.
We now tum to the second step of the Alice framework: "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, 134 S. Ct. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1294 (2012)).
Pages 9-10 of the Appeal Brief address the second step of the Alice
framework. According to the Appellants, independent claims 1 and 22
contain an inventive concept, in particular the "tracking" step. According to
the Appellants, the claimed tracking "is patentably distinct from the cited
references." (Appeal Br. 10).
However, a finding of novelty or nonobviousness does not necessarily
lead to the conclusion that subject matter is patent-eligible.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
11
Appeal2017-000357
Application 10/867,844
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). See especially Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016):
Indeed, "[t]he 'novelty' of any element or steps in a process, or even
of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89,
101 S. Ct. 1048, 67 L.Ed.2d 155 (1981) (emphasis added); see also
Mayo, 132 S. Ct. at 1303---04 (rejecting "the Government's invitation
to substitute§§ 102, 103, and 112 inquiries for the better established
inquiry under § 101 "). Here, the jury's general finding that Symantec
did not prove by clear and convincing evidence that three particular
prior art references do not disclose all the limitations of or render
obvious the asserted claims does not resolve the question of whether
the claims embody an inventive concept at the second step of
Mayo/Alice.
We also cannot agree with the Appellants' contention that the claims
before us are similar to the claims held eligible in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Appeal Br. 7-8. See also
Reply Br. 5---6. According to the Appellants, the claims are similar because
"the claimed invention is overcoming a problem specifically arising in the
context of an online social network." (Id. at 8). In particular, the Appellants
point to the steps of "maintaining," "tracking," and "sending" recited in
claim 1 as support for the proposition that the claims are necessarily rooted
in technology. (Id.).
In DDR Holdings, the Federal Circuit determined that although the
patent claims at issue involved conventional computers and the Internet, the
claims nevertheless addressed the problem of retaining website visitors who,
if adhering to the routine, conventional functioning of the Internet hyperlink
protocol, would be transported instantly away from a host's website after
"clicking" on an advertisement and activating a hyperlink. DDR Holdings,
12
Appeal2017-000357
Application 10/867,844
773 F.3d at 1257. The court determined that those claims were directed to
statutory subject matter because they claim a solution "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." Id.
No such technological advance is evident in the claimed invention.
Unlike the situation in DDR Holdings, Appellants do not identify any
problem particular to computer networks and/or the Internet that claim 1
allegedly overcomes. Here, the claimed computer components operate
precisely in the expected manner of storing data in association with other
data, and selecting and sending content via a conventional network. (See
Spec, para. 20 ("network 400, e.g., the Internet")). Cf buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer
receives and sends the information over a network--with no further
specification--is not even arguably inventive"). Nothing in the claim,
understood in light of the Specification, requires anything more than
conventional computer implementation. "The [S]pecification fails to
provide any technical details for the tangible components, but instead
predominately describes the system and methods in purely functional
terms." In re TL! Comm. LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir.
2016). For example, with respect to the claimed step of "maintaining, in a
data store, a social network graph," the Appellants' Specification discloses
that a representation of the social network for all the members is stored in a
"member database" (Spec. para. 25), and that the social network graph can
be stored in the form of "an adjacency list" or "an adjacency matrix or any
other graph data structure may be used" (id. para. 26). The Specification
13
Appeal2017-000357
Application 10/867,844
does not disclose, for example, a new way of storing a social network graph
that improves the functioning of the database itself.
The remaining arguments are unpersuasive as to error in the rejection.
We have fully considered the Appellants' arguments. For the foregoing
reasons, they are unpersuasive as to error in the rejection of claim 1, and
claims 2---6 and 22-27, which fall with claim 1.
The rejection is sustained.
The rejection of claims 1-3, 22-24 under 35 U.S. C. § 103 as being
unpatentable over Gross and Achlioptas.
Claim 1 requires "[2] tracking, using a database of a computer system,
online activities of other users with respect to a certain interaction with
content of the online social network, [2a] wherein the other users correspond
to nodes that are connected in the social network graph to the first node of
the first user by a single degree of separation and wherein each other user
shares one more attributes with the first user" (Appeal Br. 22, Claims
Appendix) (bracketed matter added). Claim 22 contains similar limitations
as claim 1.
The Examiner finds that Gross discloses limitation [2], i.e., "tracking"
(Final Act. 8), but not limitation [2a], i.e., "wherein the other users .... "
(Id. at 10). The Examiner relies on Achlioptas to remedy this deficiency.
(Id. at 11 ). In particular, the Examiner finds that Achlioptas discloses this
limitation in paragraphs 2 and 42 and in Figures 1 and 2. (Id. at 11-12; see
also Ans. 9).
The Appellants argue, inter alia, that "Achlioptas [does] not disclose
anything related to tracking [user's] interactions with content of an online
social network." (Appeal Br. 16).
14
Appeal2017-000357
Application 10/867,844
We have carefully reviewed these passages and the Examiner's
discussion of them. We are unable to discern from these passages what the
Examiner has identified as disclosing "wherein the other users correspond to
nodes that are connected in the social network graph to the first node of the
first user by a single degree of separation and wherein each other user shares
one more attributes with the first user" as required by limitation [2a].
Paragraph 2 of Achlioptas discloses that users can share information
with each other, such as job information. "For example, a person may be
searching for a job and contact his or her friends to determine if they are
aware of available positions." (Achlioptas para. 2). We do not see, and the
Examiner does not adequately explain, how a user sharing job information
with other users is equivalent to tracking online activities of other users that
share attributes with a user, as called for in limitation [2a] of claim 1.
Paragraph 42 of Achlioptas discloses that a social network can be
embodied as a directed graph with individuals and/or entities represented by
vertices (e.g., nodes), and that vertices can be annotated with information
(e.g., attributes) about the individual. The mere fact that attributes are stored
in the graph is not sufficient to meet the above limitation [2a]. There is no
disclosure of tracking a subset of "other users" who "share one more
attributes with a first user" as called for in claim 1.
A prima facie case of obviousness has not been made out in the first
instance by a preponderance of the evidence. Accordingly, we reverse the
rejection of independent claims 1 and 22. For the same reasons, we also do
not sustain the rejection of dependent claims 2, 3, 23, and 24. Cf In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are
15
Appeal2017-000357
Application 10/867,844
nonobvious if the independent claims from which they depend are
nonobvious").
The rejection of claims 4 and 25 under 35 U.S.C. § 103 as being
unpatentable over Gross, Achlioptas, and Beyda.
The rejection of claims 5 and 26 under 35 U.S.C. § 103 as being
unpatentable over Gross, Achlioptas, Beyda, and Sterling.
The rejection of claims 6 and 27 under 35 U.S.C. § 103 as being
unpatentable over Gross, Achlioptas, and Hsia.
As to the rejections of these dependent claims, the Examiner does not
rely on the additional references in any way that would cure the deficient
finding discussed in the corresponding independent claims above.
Therefore, we also do not sustain the rejection of dependent claims 4---6 and
25-27 under 35 U.S.C. § 103(a) because the Examiner relies on the same
deficient factual finding.
CONCLUSIONS
The Appellants have not shown that the Examiner erred in rejecting
claims 1---6 and 22-27 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
The Appellants have shown that the Examiner erred in rejecting
claims 1---6 and 22-27 under 35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1-6 and 22-27 is
affirmed.
16
Appeal2017-000357
Application 10/867,844
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
17