Jacob Pechenik et al.

Patent Trials and Appeals Board

Aug 3, 2020

2018005790 (P.T.A.B. Aug. 3, 2020)

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.
13/312,004 12/06/2011 Jacob Pechenik YJI-08-1292DIV 7678
35811 7590 08/03/2020
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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):
pto.phil@us.dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JACOB PECHENIK, GREGORY CAMPBELL,
and BLAKE BARNES
____________

Appeal 2018-005790
Application 13/312,0041
Technology Center 3600
____________

Before MICHAEL W. KIM, MURRIEL E. CRAWFORD, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant has filed a Request for Rehearing (hereinafter “Req.
Reh’g”) under 37 C.F.R. § 41.52(a)(3) of our Decision entered on June 2,
2020 (hereinafter “Decision” or “Dec.”).
Our Decision affirmed the Examiner’s rejection of claims 1–27 under
35 U.S.C. § 101. Dec. 26. For the reasons identified below, we deny the
Request for Rehearing.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies “YellowJacket, Inc.” as the real party in
interest. Appeal Br. 1.
Appeal 2018-005790
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REQUEST FOR REHEARING ARGUMENTS
Appellant asserts:
[U]nder Prong Two, the Board has analyzed the claims in a
manner that explicitly contradicts the Guidance. Namely, the
Board identified several hardware components – “at least one
computing device,” “non-transitory memory,” and “ a processor”
– and concluded that the claims fail to include elements that
transform the abstract idea into an inventive concept because
these components [are] well-understood, routine, and
conventional.
Req. Reh’g 2.
We disagree with Appellant because Appellant wrongly conflates our
“practical application” finding which is found in our Decision on page 13,
lines 3–11, with our “significantly more” finding which starts at line 22 of
page 13 and ends on page 14, line 14. Each section is written distinctly from
the other. Nowhere in the “practical application” section of our Decision do
we conclude that the listed device elements are “well-understood, routine,
and conventional.” Req. Reh’g 2. This simply is not what was written in
the Decision. Possibly, Appellant is confusing Step 2A, Prong Two with
Step 2B. The following is what the Decision actually states as its Step 2A,
Prong Two analysis, i.e., the “practical application” analysis:
Turning to the second prong of the “directed to” test, claim
1 only generically requires “at least one computing device,”
“non-transitory memory,” and “ a processor.” These components
are described in the specification at a high level of generality.
See Spec. ¶¶ 17–19. We fail to see how the generic recitations
of these most basic computer components and/or of a system so
integrates the judicial exception as to “impose[] a meaningful
limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.”
Guidance, 84 Fed. Reg. at 53.
Thus, we find that the claims recite the judicial exceptions
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of a certain method of organizing human activity and a mental
process that are not integrated into a practical application.
Dec. 13.
As is apparent from the above, nowhere in this analysis did the panel
conclude, enumerate, or otherwise intimate that the device elements listed on
page 13 lines 4–5 of the Decision fail to “transform the abstract idea into an
inventive concept because these components [are] well-understood, routine,
and conventional.” Req. Reh’g 2.
Instead, what the panel did find was: “We fail to see how the generic
recitations of these most basic computer components and/or of a system so
integrates the judicial exception as to “impose[] a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Dec. 13. This language is taken
verbatim from the Guidance at page 53 concerning the qualifications needed
for practical application eligibility.2
Our finding that the claims fail to integrate a judicial exception into a
practical application, because they fail to apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception, is not incongruent with the October 2019
Update. The October Update explicitly states:

2 A claim that integrates a judicial exception into a practical
application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.
Guidance, 84 Fed Reg. at 53.
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Application 13/312,004

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By way of example, examiners may review the specification to
determine if the underlying claimed invention is described as a
concept that is performed in the human mind and applicant is
merely claiming that concept performed 1) on a generic
computer, 2) in a computer environment or 3) is merely using a
computer as a tool to perform the concept. In these situations, the
claim is considered to recite a mental process.
October 2019 Update 8.
Appellant offers insufficient evidence as to why reference to the device
components is meaningful beyond the face of the language itself, other than
being the way that data are carried within the network. There is no further
discussion in the Specification of the particular technology for performing
this claimed step. See Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1336 (Fed. Cir. 2016) (focusing on whether the claim is “an
improvement to the computer functionality itself, not on economic or other
tasks for which a computer is used in its ordinary capacity.”). Although
computing devices, a “non-transitory memory,” and “a processor,” are by
definition in some sense technological, their use has become so notoriously
settled that merely invoking them is no more than abstract conceptual advice
to use well known technology for its intended purpose. See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 612–613 (Fed. Cir. 2016).
(Using a generic telephone for its intended purpose was a well–established
“basic concept” sufficient to fall under Alice step 1.)
Instead, our Decision finds the claims attempt to monopolize the
judicial exception of “processing a trade transaction of a plurality of
structured products defined by an agreement to comply with product
specifications of one or more processing facilities.” Dec. 11. “That is, it is
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an improvement to contract formation and not a technological
improvement.” Dec. 16. “Merely offering redundancies for processing
products after sale is time practiced, and itself, abstract.” Dec. 21.

CONCLUSION
For the reasons above, we are not convinced that Appellant has
shown, with particularity, points believed to have been misapprehended or
overlooked in our Decision. See 37 C.F.R. § 41.52(a)(1) (2016).

DECISION SUMMARY
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Denied Granted
1–27 101 Eligibility 1–27

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–27 101 Eligibility 1–27
1–27 103 Glinberg, Pinkava,
Wyatt
1–27
Overall
Outcome

1–27

DENIED