Jobin, Bernard

Patent Trials and Appeals Board

Aug 23, 2019

12523427 - (R) (P.T.A.B. Aug. 23, 2019)

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.
12/523,427 07/16/2009 Bernard Jobin 9710
7590 08/23/2019
BERNARD JOBIN
1108 HUNT SEAT DR
AMBLER, PA 19002
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
08/23/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BERNARD JOBIN
____________

Appeal 2018-005329
Application 12/523,427
Technology Center 3600
____________

Before JOHN A. JEFFERY, LINZY T. McCARTNEY, and BETH Z.
SHAW, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Appellant requests rehearing of our decision dated May 22, 2019
(“Dec.”), where we affirmed-in-part the Examiner’s decision to reject claims
221–225, 228–235, 238–242, 246–249, 253–255, 259, 260, and 264–270.
Request for Rehearing filed July 22, 2019 (“Req. Reh’g”). In that decision,
we affirmed the Examiner’s rejection under 35 U.S.C. § 101 of independent
claims 221, 229, 231, and 239, but reversed the rejection of dependent
claims 222–225, 228, 230, 232–235, 238, 240–242, 246–249, 253–255, 259,
260, and 264–270.
In the Request, Appellant contends that we misapprehended the
USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,1 and
allegedly ignored Appellant’s requests for proper consideration of (1)
technological elements; (2) their contribution to claimed technical
improvements explained in the Specification; and (3) the relevant
technological field of the invention. Req. Reh’g 1. For the reasons noted
below, we deny the request to modify our decision.
First, contrary to Appellant’s assertions, our decision is consistent
with the Guidance that, in Prong One of Revised Step 2A, instructs that in
determining whether a claim recites an abstract idea, the following steps
must be performed: (1) identify the specific limitations in the claim that
recite an abstract idea, and (2) determine whether the identified limitations
fall within the enumerated subject matter groupings of abstract ideas, namely
(a) mathematical concepts; (b) certain methods of organizing human
activity; and (c) mental processes. See Guidance, 84 Fed. Reg. at 52–54.

1 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“Guidance”).
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Our decision on pages 15 to 23 did just that by (1) identifying the specific
limitations that recite an abstract idea (which were italicized for clarity and
emphasis), and (2) determining that the identified limitations fell within the
enumerated subject matter groupings of abstract ideas. Not only were these
limitations identified clearly and unambiguously in connection with this
determination, we explained in detail why they fell within respective
categories of abstract ideas, along with supporting case law citations relevant
to that determination. See Dec. 15–23. Rather than repeat that detailed
analysis here, we incorporate it in this decision, along with all other aspects
of our earlier opinion. See 37 C.F.R. § 41.52(a) (noting that the Board’s
decision on the request for rehearing incorporates the earlier opinion
reflecting its decision except for those portions specifically withdrawn).
On page 9 of the Request, Appellant identifies six limitations that are
said to provide “a new built-in technical mechanism to enable improved
device interactions with, identification of, and collaborative feedback on
capture [sic] online collaborations, and to also further enable control over
identified collaborative results.” According to Appellant, “[n]ot only data
structure information in a server and devices are essential parts of the claim,
but the recited details of their identifiable relationships and interactions as
technical information enabling the recited automated steps, correspond to
pointers in memory only usable by technical devices.” Req. Reh’g 9–10.
We squarely addressed these limitations in our decision. First,
regarding the recited “operating with a data structure that enables” limitation
in the preamble of claim 221, we noted that the recited data structure did not
recite an abstract idea, but rather recited an additional element beyond the
abstract idea. See Dec. 15 (excluding the claimed data structure from the
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recited abstract idea); see also id. 23, 31 (identifying the recited data
structure as an additional element). Therefore, to the extent that Appellant
contends that we somehow misapprehended or overlooked the recited data
structure and its functionality in connection with the claimed invention, we
disagree.
On pages 16 to 19 of our decision, we also squarely addressed the
recited limitations calling for (1) “at least one of the given sets from each of
the descriptions corresponding to at least one of the sets comprised in at least
one of the entitled groupings”; and (2) “which received responses result
from each user . . . receiving at least one of the descriptions of a plurality of
given sets and using the described given sets to at least [] (i) offer to [the]
user an arrangement of content items by using and conveying, in the
arrangement, the data . . . associations of the described given sets and of
their subsets of identified content items” as falling within the certain
methods of organizing human activity category because these limitations,
considered in the context of the claimed invention, involve at least personal
interactions, including following rules or instructions. As we explained in
the decision, because these limitations fall within the certain methods of
organizing human activity category of the Guidelines, they recite an abstract
idea. See Dec. 16–19. To the extent Appellant contends otherwise, we
disagree.
On pages 21 and 22 of our decision, we also squarely addressed the
recited limitation calling for (1) “generat[ing] . . . at least one insight
grouping, which insight groupings each represents a grouping of one or of a
plurality of the subsets comprised in a given one of the entitled groupings
based on (i) the number of described rated subsets that were received in the
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contributions and that correspond, according to the described . . .
associations, to the one or plurality of the subsets comprised in the given one
of the entitled grouping”; and (2) “classifying . . . as valuable product
information, each of one or of a plurality of the content items identified by at
least one of the subsets from at least one of the insight groupings” as capable
of being performed entirely mentally by merely thinking about these
groupings and classifications or writing them down—both involving mere
observation and logical reasoning. As we explained in the decision, because
these limitations fall within the mental processes category of the Guidelines,
they recite an abstract idea. See Dec. 21–22. To the extent Appellant
contends otherwise, we disagree.
On pages 22 and 23 of our decision, we also squarely addressed the
recited limitation calling for “grant[ing] . . . the given one of the entitlement
options by validating that the given one of the entitlement options was
previously detected . . . , and communicat[ing] said grant to the given one of
the user[s], said grant and said communicat[ing] being executed: (i) without
restriction, or (ii) after one or more granting conditions are detected . . . to
have been met” as falling within the certain methods of organizing human
activity category because these limitations, considered in the context of the
claimed invention, involve at least personal or commercial interactions,
including following rules or instructions and fundamental economic
practices at least to the extent that a person could (1) receive the recited
entitlement-based information via face-to-face or written communication
with others; (2) decide whether to grant an entitlement if certain conditions
are satisfied; and (3) if so, communicate the grant to the intended recipient
via similar means. As we explained in the decision, because these
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limitations fall within the certain methods of organizing human activity
category of the Guidelines, they recite an abstract idea. See Dec. 22–23. To
the extent Appellant contends otherwise, we disagree.
In short, as we noted on pages 15 to 23 of our decision, the claimed
invention recites an abstract idea under Prong One of Revised Step 2A of the
Guidance. See Guidance, 84 Fed. Reg. at 52–54. That the claimed
invention recites a combination of abstract ideas is of no consequence here,
for it is well settled that adding one abstract idea to another does not render
the claim non-abstract. See Recognicorp, LLC v. Nintendo Co., Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017).
Our decision is also consistent with the Guidance that, in Prong Two
of Revised Step 2A, requires determining whether the recited abstract idea is
integrated into a practical application, namely whether the claim applies,
relies on, or uses the abstract idea in a manner that imposes a meaningful
limit on the abstract idea, such that the claim is more than a drafting effort
designed to monopolize the abstract idea. See Guidance, 84 Fed. Reg. at 54–
55. To this end, the Guidance requires (1) identifying whether there are any
additional recited elements beyond the abstract idea, and (2) evaluating those
additional elements individually and collectively to determine whether they
integrate the exception into a practical application. See id.
Our decision on pages 23 to 31 did just that by not only identifying
clearly and unambiguously the additional elements beyond the abstract idea,
namely the recited (1) online collaborative content management system; (2)
data structure; (3) server; and (4) user devices, but we also evaluated those
additional elements individually and collectively in concluding that they did
not integrate the abstract idea into a practical application. In reaching this
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conclusion, we not only gave weight to these additional elements consistent
with the Guidelines, but we also considered them in combination with the
other recited elements, such that the claim was interpreted as a whole. See
Guidance, 84 Fed. Reg. at 55; see also Dec. 23–31. Appellant’s contention,
then, that we allegedly did not consider the weight of all additional elements
or the technological field (Req. Reh’g 11) is unavailing.
In determining that the abstract idea was not integrated into a practical
application, we not only determined that the claimed invention did not
improve a computer or its components’ functionality, but also that it did not
improve another technology or technical field. See Dec. 23–31. As we
indicated on page 24 of our decision, we did not agree that the claimed
invention was directed to a technical solution. Among other things, we
noted that “[e]ven assuming, without deciding, that claimed invention can
solicit and evaluate product development contributions received from
participants, and compensate participants according to that evaluation faster
than doing so manually, any speed increase comes from the capabilities of
the generic computer components—not the recited process itself.” Dec. 24.
In other words, we emphasized any purported technological improvement of
the claimed invention stems solely from the capabilities of the recited
generic computer implementation, particularly given its high level of
generality. So while an additional element reflecting an improvement to
another technology or technical field can integrate an exception into a
practical application (see Guidance, 84 Fed. Reg. at 55), we did not
misapprehend or overlook such an integration, as Appellant seems to
suggest. Rather, we determined that the claimed invention, when read as a
whole, lacked such an integration.
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On page 14 of the Request, to the extent that Appellant contends that
we mischaracterized McRO, Inc. v. Bandai Namco Games America, Inc.,
837 F.3d 1299 (Fed. Cir. 2016) in distinguishing that case from the claimed
invention on page 26 of our decision, we disagree. Although Appellant
contends that McRO’s rationale did not involve improving the operation of a
physical display (Req. Reh’g 14), the Federal Circuit has nonetheless noted
that “[t]he claimed improvement [in McRO] was to how the physical display
operated (to produce better quality images), unlike (what is present here) a
claimed improvement in a mathematical technique with no improved display
mechanism.” SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir.
2018).
Therefore, our analysis in this regard is consistent with the Federal
Circuit’s interpretation of McRO where, on page 26 of our decision, we
noted:
[U]nlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the
claimed invention here merely uses generic computing
components to solicit and evaluate product development
contributions received from participants, and compensate
participants according to that evaluation. This generic
computer implementation is not only directed to fundamental
human activity organization, mathematical concepts, and
mental processes, but also does not improve a display
mechanism as was the case in McRO.

Dec. 26.
In addition, contrary to Appellant’s assertions, our decision is also
consistent with the Guidance that, in Revised Step 2B, instructs that, if a
claim is directed to a judicial exception, the additional elements must be
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evaluated individually and collectively to determine whether they provide an
inventive concept, namely whether the additional elements amount to
significantly more than the exception itself. See Guidance, 84 Fed. Reg. at
56. As we indicated on page 32 of our decision, the limitations that were
explicitly identified as reciting an abstract idea earlier in the decision are not
additional elements beyond the abstract idea, but rather are directed to the
abstract idea as noted previously. See Guidance, 84 Fed. Reg. at 56
(instructing that additional recited elements should be evaluated in
Alice/Mayo step two to determine whether they (1) add specific limitations
that are not well-understood, routine, and conventional in the field, or (2)
simply append well-understood, routine, and conventional activities
previously known to the industry (citing MPEP § 2106.05(d)).
Rather, as we noted in the decision, the recited (1) online
collaborative content management system; (2) data structure; (3) server; and
(4) user devices are the additional recited elements whose generic computing
functionality is well-understood, routine, and conventional. Appellant’s
contention that we allegedly did not comply with the evidentiary
requirements under the April 2018 USPTO memorandum mandating these
requirements for ineligibility rejections after Berkheimer v. HP, Inc., 881
F.3d 1360, 1369 (Fed. Cir. 2018) (Req. Reh’g 12–13, 20) is unavailing. To
be sure, the Examiner must show—with supporting facts—that certain claim
elements are well-understood, routine, and conventional where such a
finding is made. See Berkheimer, 881 F.3d at 1369 (noting that whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the invention is a factual determination). In light of this
factual determination, the USPTO issued a memorandum requiring that
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Examiners support a finding that an additional element of a claim is well-
understood, routine, and conventional. Robert W. Bahr, Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), USPTO, Apr.
19, 2018 (“Berkheimer Memo.”), at 2–3 (noting that the Berkheimer
decision clarifies the inquiry whether an additional element (or combination
of additional elements) represents well-understood, routine, and
conventional activity).
As noted previously, the recited (1) online collaborative content
management system; (2) data structure; (3) server; and (4) user devices are
the only additional recited elements whose generic computing functionality
is well-understood, routine, and conventional. Therefore, to the extent that
Appellant contends that the Examiner failed to provide evidence that all
recited elements are well-understood, routine, and conventional (see Req.
Reh’g 12–13, 20), such an argument is not commensurate with the more
limited scope of the Examiner’s finding in this regard, namely that the
elements other than the abstract idea, namely the additional computer-
based elements whose generic computing functionality is well-understood,
routine, and conventional. See Dec. 33 (citing Final Act. 13–14; Ans. 20–21
(concluding that the claims’ general-purpose computing devices do not add
significantly more than the abstract idea)).
As noted in our decision, there is ample evidence of this generic
computing functionality as detailed on pages 32 and 33 of our decision. To
the extent that Appellant contends otherwise, we disagree.
Lastly, we note Appellant’s attempt to distinguish the claimed
invention from prior art crowdsourcing systems, including the “Mechanical
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Turk” crowdsourcing engine (Req. Reh’g 19–38), but these arguments do
not persuade us that our decision was erroneous. Not only are these
arguments presented for the first time on rehearing and, therefore, could not
have been misapprehended or overlooked, but they are not germane to the
limited purpose for which we referred to crowdsourcing activities on page
18 of our decision, namely merely as an example of personal or commercial
interactions, including following rules or instructions. As we indicated on
pages 17 to 19 of our decision, these activities fall squarely within the
certain methods of organizing human activity category of the USPTO’s
Guidelines. To the extent Appellant contends otherwise, we disagree.

CONCLUSION
For the foregoing reasons, we have granted Appellant’s request to the
extent that we have reconsidered our decision, but we deny the request with
respect to making any changes therein.

DENIED