International Business Machines Corporation

Patent Trials and Appeals Board

Feb 7, 2022

2020005775 (P.T.A.B. Feb. 7, 2022)

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. 14/951,689 11/25/2015 Mustansir Banatwala SVL920150148US1_8150-0597 2479 112978 7590 02/07/2022 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER DENNISON, JERRY B ART UNIT PAPER NUMBER 2419 NOTIFICATION DATE DELIVERY MODE 02/07/2022 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MUSTANSIR BANATWALA, DAVID A. BROOKS, MIGUEL A. ESTRADA and JOSEPH A. RUSSO1 ____________________ Appeal 2020-005775 Application 14/951,689 Technology Center 2400 ____________________ Before ROBERT E. NAPPI, NORMAN H. BEAMER, and JOYCE CRAIG, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52 on January 18, 2022 (hereinafter “Request”), requesting that we reconsider our Decision on Appeal of November 15, 2021 (hereinafter “Decision”). In the Decision, we affirmed the Examiner’s rejection of claims 21 through 40 under 35 U.S.C. § 101. We have reconsidered our Decision in light of Appellant’s Request for Rehearing, but we decline to modify the Decision. . 1 According to Appellant, IBM Corporation is the real party in interest. Appeal Br. 1. Appeal 2020-005775 Application 14/951,689 2 ISSUES AND ANALYSIS A request for rehearing is properly limited to previously addressed matters that were misapprehended or overlooked. See 37 C.F.R. § 41.52(a). It is not an opportunity to further develop the record through the introduction of new evidence and/or arguments. Nor is it an opportunity to disagree with the Board’s assessment of the arguments or to bolster an insufficient argument already made. The applicable standard for a Request for Rehearing is set forth in 37 C.F.R. § 41.52(a)(1), which provides in relevant part, “[t]he request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” Appellant requests rehearing based on several points allegedly misapprehended or overlooked in the Decision by the Board when affirming the 35 U.S.C. § 101 rejection of claims 21 through 40. Request 3-13. We will address each point in the order presented in the Request. First Point Appellant’s first argued point is that the Board’s analysis mischaracterized claim limitations and omits elements that are not generic computer elements. Request 3-6. Appellant argues that our analysis on page 6 of the decision states that the claim recites “monitoring communication between users” whereas the claim 21 limitation states “monitoring real time electronic communication between users.” Request 4 (citing Decision 6). As such Appellant argues that the Board overgeneralized the claim language and that the recitation of the communications as being Appeal 2020-005775 Application 14/951,689 3 real time electronic communications is significantly more than just monitoring communications. Request 5. Further Appellant argues: Referring to page 7 of the Decision on Appeal, the Board further stated the following: Moreover, courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. This statement is incomplete and therefore not consistent with the 2019 PEG. While the “generic computer components” can be ignored, other computer components cannot. Additionally, the 2019 PEG includes the limitation of: “unless the claim cannot practically be performed in the mind.” Of particular note, that limitation refers to “practically” not “possibly.” Consequently, an allegation that a particular could possibly be performed in the mind does not necessarily establish that it can be practically performed. For example, the Board writes the following: While the claim recites that the communications are electronic and over a network of computing systems, that does not preclude the human perception of the communications, people routinely receive electronic communications (e.g. text, phone, e-mail, radio, telegraph etc.). First, as a practical matter, the human mind is incapable of receiving and/or interpreting (i.e., “monitoring”) “electronic communications between exchanged within the network,” as claimed. Rather, the human mind requires specific machines (e.g., a computer, phone, radio, telegraph) to translate the electronic communication into something perceptible by the human mind (e.g., a visual image or audible sound). Second, the claims require the real-time communications are being monitored. As it is used in computers, the term “real time” refers to “various operations in computing or other processes that must guarantee response times within a specified time (deadline), usually a relatively short time. A real-time process is generally one that happens in defined time steps of Appeal 2020-005775 Application 14/951,689 4 maximum duration and fast enough to affect the environment in which it occurs, such as inputs to a computing system.” While it is possible for a human, via the use of an electronic device, to monitor real time electronic communications between several devices within a network, it is not practical. Request 5-6 (footnotes omitted). These arguments have not persuaded us to change the Decision. The cited sentence on page 6 of our Decision is analyzing claim 21, and we identified that the claimed step of monitoring communication is a step of collecting information. Further, on pages 5 and 6 of the Decision we further elaborated and addressed the claimed electronic communications, as not precluding the human perception, and identified that “people routinely receive electronic communications (e.g. text, phone, e-mail, radio, telegraph etc.)” Decision 7. We additionally note that Appellant’s Specification identifies that email, instant messaging and text messages are forms of real time electronic communication to allow users to communicate. Underlying Appellant’s arguments is the premise that the claimed real time electronic communications are not perceptible by humans, but we do not construe the claim that narrowly. The claims state that the monitored real time electronic communication between “users” (i.e. people) and as such the claimed real time electronic communications limitation is broad enough to encompass communications which a person can monitor. Thus, Appellant’s argument directed to the first point has not persuaded us that we mischaracterized Appeal 2020-005775 Application 14/951,689 5 claim limitations and misapprehended or overlooked Appellant’s arguments in the Appeal Briefs, and have not persuaded us to change our Decision. Second Point Appellant’s second argued point is that the Board’s reliance on Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1351-52 (Fed. Cir. 2016) is an undesignated new ground of rejection. Request 8. Further, Appellant argues that the fact that data is collected and analyzed does not establish that it recites an abstract idea. Request 8-9 (citing examples from the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG)). These arguments have not persuaded us to change the Decision. As identified by Appellant “[t]he ultimate criterion as to whether new grounds should be designated in a decision by the Board is whether Appellants have had fair opportunity to react to the thrust of the rejection. In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976).” Request 2. The Examiner rejected the claims under 35 U.S.C. § 101, specifically the Examiner concluded that the claims recited a mental process. Decision 5 (citing Final Act. 2-7). In our Decision we relied on Electric Power Group (and other cases) in response to Appellant’s arguments to demonstrate that the Examiner’s conclusion is consistent with the precedent of our reviewing court when considering whether a claim recites a mental process. Thus, Appellant has not persuaded us that the Decision’s reliance on Electric Power Group and other cases constitutes a new ground of rejection. Further, Appellant’s argument, that the fact that data is collected and analyzed does not establish that the claim recites an abstract idea on page 8 and 9 of the Request, is not persuasive as it does not identify an error in our analysis or differentiate Appellant’s claim Appeal 2020-005775 Application 14/951,689 6 from the precedent cited in the Decision. Thus, Appellant’s argument directed to the second point have not persuaded us that our decision included a new ground of rejection and have not persuaded us to change our Decision. Third Point Appellant’s third argued point is that the Board’s decision did not address the combination of elements under prong two. Request 9-12. Appellant argues that: the Examiner did not evaluate the combination of elements in addition to all of the elements, which include the judicial exception. Turning to the Board's analysis in the paragraph spanning pages 10 and 11 of the Decision on Appeal, the Board makes the same error committed by the Examiner. Rather, like the Examiner, the Board dismisses limitations as being "insignificant pre-solution activity" while citing M.P.E.P. § 2106.05(g). Request 10. Further, Appellant states: the additional elements (in underline) include the following: monitoring real time electronic communications between users exchanged within the network; detecting, via the monitoring, a question within a first electronic communication from a client device of a first user directed to a client device of a second user; recording, in a computer data structure associated with the question, that the question is unanswered by the second user upon a determination that the question is unanswered; detecting, via the monitoring, an answer to the question in a second electronic communication from a client device of a third user directed to the first user; and sending, based upon the answer and using the computer data structure, an electronic notification to the second user of Appeal 2020-005775 Application 14/951,689 7 the answer to the question, wherein the first, second, and third client devices are connected to the network. Request 11-12. These arguments have not persuaded us to change the Decision. Initially, we note that the Examiner did evaluate the integration of these additional elements on pages 3 and 4 of the Final Action and on pages 7 and 8 of the Final. On page 10 of Appellant’s Appeal Brief, Appellant merely argues “Examiner has not accurately characterized what constitutes the additional elements.”2 In the Appeal Brief, Appellant argues that the limitation of monitoring communication, detecting a question and Answer constitute additional elements. Our decision addressed these limitations as directed to the abstract concept. Decision 5-7. Appellant’s argument in the Request, on pages 11 and 12, which identifies specific limitations as additional elements, that allegedly show that the claim is not monopolizing the abstract idea, was not presented in the Appeal Briefs. As such these arguments were not before us and thus was not overlooked or misapprehended. See 37 C.F.R. § 41.52 (a)(1) (arguments not previously raised are not permitted in a rehearing). Thus, Appellant’s argument directed to the third point have not persuaded us we misapprehended or overlooked 2 We note that this statement is appears to be in contradiction to what Appellant is arguing in the Request, as many of the claim elements identified by Appellant on pages 11 and 12 of the Request as being additional elements are the same as the additional elements cited by the Examiner on pages 3 and 4 of the Final Action. Appeal 2020-005775 Application 14/951,689 8 Appellant’s arguments in the Appeal Brief and have not persuaded us to change our Decision. Fourth Point Appellant’s fourth argued point is that the Board’s decision misapprehended or overlooked Appellant’s argument that the claim is directed to an improvement in computer technology. Request 13 (asserting that the invention is in improvement to customer service software). These arguments have not persuaded us to change the Decision. On page 10 of the Appeal Br. Appellant asserted that the invention improves network messaging computing systems involving answering questions. The Examiner addressed this argument in the Answer, and we concurred with the Examiner. Ans. 10, Decision 11. Appellant in the Appeal Brief, did not assert that the claim recites an improvement to customer service software, nor does representative claim 21 recite such a limitation. Thus, the fourth argued point has not identified an issue that was overlooked or misapprehended in our Decision. See 37 C.F.R. § 41.52 (a)(1) (arguments not previously raised are not permitted in a rehearing). Accordingly, Appellant’s argument directed to the fourth point have not persuaded us we misapprehended or overlooked Appellant’s arguments in the Appeal Briefs and have not persuaded us to change our Decision. Fifth Point Appellant’s fifth argued point is that “The Board addresses Step 2B on pages 12 and 13 of the Decision on Appeal. However, Appellants do not present any arguments regarding Step 2B in the Appeal Brief or Reply Appeal 2020-005775 Application 14/951,689 9 Brief.” Request 13. Appellant’s fifth point has not persuaded us to change our decision, as the inclusion of a discussion of step 2B in our decision was merely to acknowledge the Examiner’s determination that the claims do not recite significantly more than the abstract idea. CONCLUSION For the aforementioned reasons, Appellant’s contentions have not persuaded us to change our Decision with respect to the rejections of claims 21 through 40 under 35 U.S.C. § 101. Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21-40 101 Eligibility 21-40 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21-40 101 Eligibility 21-40 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REQUEST FOR REHEARING DENIED