Kieran HayesDownload PDFPatent Trials and Appeals BoardMay 29, 202014436045 - (D) (P.T.A.B. May. 29, 2020) Copy Citation 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. 14/436,045 04/15/2015 Kieran HAYES G1169.10005US01 3369 97149 7590 05/29/2020 Maschoff Brennan 1389 Center Drive, Suite 300 Park City, UT 84098 EXAMINER ZHU, RICHARD Z ART UNIT PAPER NUMBER 2675 NOTIFICATION DATE DELIVERY MODE 05/29/2020 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): d@mabr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KIERAN HAYES ____________________ Appeal 2019-000543 Application 14/436,0451 Technology Center 2600 Before MICHAEL J. STRAUSS, JEREMY J. CURCURI, and JON M. JURGOVAN, Administrative Patent Judges. JURGOVAN, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks review under 35 U.S.C. § 134(a) from a Non-Final Rejection of claims 15–39, constituting all pending claims in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, the real party in interest is Kieran Hayes. Appeal Br. 4. 2 Our Decision refers to the Specification (“Spec.”) filed April 15, 2015, the Final Office Action (“Final Act.”) mailed March 17, 2017, the After-Final Amendment and Declaration (“Decl.”) filed May 17, 2017, the Non-Final Office Action (“Non-Final Act.”) mailed August 9, 2017, the Appeal Brief (“Appeal Br.”) filed May 4, 2018, and the Examiner’s Answer (“Ans.”) mailed August 8, 2018. Appeal 2019-000543 Application 14/436,045 2 CLAIMED INVENTION The claims are directed to a background service that uses ‘text-speak’ to compress plain text received from one of multiple software applications while maintaining its comprehensibility. Spec. ¶¶ 2–5, 8. For example, using text-speak, ‘tomorrow’ can be shortened to ‘tmrw’, ‘I’m’ to ‘Im’, ‘you’ to ‘u’, ‘before’ to ‘b4’, or ‘be right back’ to ‘brb’. Id. ¶ 3. Also, pictograms may replace words, for example, by representing ‘love’ as ‘<3’ and laughter as ‘xD’. Id. Claims 15, 27, and 393 are independent. Claim 15 is reproduced below: 15. An electronic device comprising a computer program for processing text, and performing the method of: receiving plain text from one of a plurality of software applications on the electronic device; processing the text into compressed text, while maintaining comprehensibility of the compressed text; and returning the compressed text to the one of the plurality of software applications; wherein the computer program runs as a background service which services the plurality of software applications on the electronic device. Appeal Br. 25 (Claims Appendix). 3 The Examiner is advised to consider whether claims 15 and 39 recite both a device and method and are thus indefinite under 35 U.S.C. § 112, second paragraph. See, e.g., IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1383–84 (Fed. Cir. 2005) (discussion regarding claim 24). The Examiner is also advised to consider whether claims 15 and 39 recite software per se. Appeal 2019-000543 Application 14/436,045 3 REJECTIONS (1) Claims 15–33 and 36–38 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Non-Final Act. 6–7.4 (2) Claims 15–22, 24–34 and 36–39 stand rejected under 35 U.S.C. § 103(a) over Kirkland (US 2004/ 0122979 A1, June 24, 2004) and Dantzler, Jr. (US 2010/0298009 A1, November 25, 2010). Non-Final Act. 7–12. (3) Claims 23 and 35 stand rejected under 35 U.S.C. § 103(a) based on Kirkland, Dantzler, Jr., and The Joint Commission’s Official “Do Not Use” List (updated 3/5/09). Non-Final Act. 12. ANALYSIS § 101 Rejection We perform a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Patentable subject matter is defined by 35 U.S.C. § 101, as follows: [w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. In interpreting this statute, the Supreme Court emphasizes that patent protection should not preempt “the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative 4 For the substance of the § 101 rejection, the Examiner refers back to the Final Office Action (“Final Act.”) mailed March 17, 2017. See Final Act. 7– 19. Appeal 2019-000543 Application 14/436,045 4 Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The rationale is that patents directed to basic building blocks of technology would not “promote the progress of science” under the U.S. Constitution, Article I, Section 8, Clause 8, but instead would impede it. Accordingly, laws of nature, natural phenomena, and abstract ideas, are not patent-eligible subject matter. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216). The Supreme Court set forth a two-part test for subject matter eligibility in Alice (573 U.S. at 217–18). The first step is to determine whether the claim is directed to a patent-ineligible concept. Id. (citing Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the second step of the Alice/Mayo test in which we “examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (internal quotation marks omitted) (quoting Mayo, 566 U.S. at 72, 79). In our subsequent § 101 analysis, we group all rejected claims together and select claim 15 as representative of the group. See 37 C.F.R. § 31.47(c)(1)(iv). Accordingly, claims 16–33 and 36–38 stand or fall with claim 15. We will address these claims generally where possible, but when it is helpful to the analysis, we will refer to the specific claim language in claim 15 only. USPTO Step 1–Categories of Invention in 35 U.S.C. § 101 After the briefing for this appeal, the Patent Office revised its guidance for how to apply the Alice/Mayo test in the 2019 Revised Patent Appeal 2019-000543 Application 14/436,045 5 Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). Step 1 of the Revised Guidance (which is unchanged from the prior guidance) is to review the claims to determine whether they fall within one of the enumerated categories of invention under § 101. For purposes of our review, we treat claims 15–33 and 36–38 as reciting “electronic devices” or “methods” which qualify as “machines” or “processes” under § 101.5 Thus, these claims satisfy Step 1 of the subject matter eligibility analysis, and we proceed to USPTO Step 2A in the analysis of these claims, which is the first step in the Alice/Mayo test. USPTO Step 2A – Alice/Mayo Step 1 (Are the Claims Directed to a Judicial Exception?) In Step 2A of the Revised Guidance, we determine whether the claims are “directed to” a judicial exception. Step 2A of the Revised Guidance corresponds to the first step of the Alice/Mayo test but is in part changed from the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618–74633 (December 16, 2014), by separating the first step into two prongs. We address these prongs in order below. USPTO Step 2A—Prong One (Does the Claim Recite a Judicial Exception?) In Step 2A, Prong One of the Revised Guidance, we determine whether the claims recite a judicial exception including (a) mathematical concepts; (b) certain methods of organizing human activity; or (c) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 51–52. The Examiner determines that claim 15 recites the abstract idea of “processing [plain] text into compressed text,” which the Examiner 5 As mentioned, claim 15 may be considered as reciting software per se in which case it would not fall within one of the enumerated categories under § 101. Appeal 2019-000543 Application 14/436,045 6 characterizes as an “abstract intellectual concept.” Final Act. 15–17. We agree with the Examiner that the claims recite an abstract idea because the “processing” step could be performed by a human mentally or with pen and paper, and thus, falls under the mental processes category of judicial exception. “[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Mayo, 566 U.S. at 71 (citing Benson, 409 U.S. at 67 (1972)). Accordingly, we conclude for Step 2A, Prong One that the claims recite processing plain text into compressed text, which falls under the mental processes category of judicial exception. We proceed to Step 2A, Prong Two, of the Alice/Mayo test to determine whether the judicial exception recited in the claims is integrated into a practical application. USPTO Step 2A—Prong Two (Is the Judicial Exception Integrated into a Practical Application?) Under Step 2A, Prong Two, of the Revised Guidance, we (a) identify whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluate those additional elements individually and in combination to determine whether the claim as a whole integrates the judicial exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 54–55. The additional elements recited in the claims include an “electronic device” with “one or more processors” and “memory,” a “computer program” running as a “background service,” and “software applications.” The “electronic device” is shown in Figure 1 of the Specification (id. ¶ 7) and includes one or more processors 120, communication device 130, storage device 140, output device 150 and input device 160, and memory 170 with text processing system 180. The memory may include a random Appeal 2019-000543 Application 14/436,045 7 access or read only memory (RAM/ROM) (id. ¶ 21). The Specification further describes that the “electronic device” may be a personal computer, server machine, mobile communication device, tablet computer, wearable device, multi-processor system, multi-server system, set-top box or mainframe (id. ¶ 26). The “electronic device” may be a single device or spread across multiple devices (id. ¶ 27). Thus, the “electronic device” with “one or more processors” and “memory” is described broadly and generically in the Specification. Some embodiments of the “electronic device” in the Specification include specific features, such as a dictionary which stores mappings of groups of text characters to compressed text (id. ¶¶ 11–12). The broadest reasonable interpretation of claim 15, however, does not include these features, and we are obligated to give claim terms their broadest reasonable interpretation consistent with the Specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). The Specification provides several specific examples of pseudo code that can be used to implement the claimed “computer program.” Spec. ¶¶ 59, 61, 66, Figs. 7–9. But claim 15 merely recites the “computer program” processes plain text into compressed text, essentially reciting a desired result without reciting any detail to explain how this is accomplished. Reviewing the Specification, we do not find any details on what the “software applications” are. They are merely described as providing plain Appeal 2019-000543 Application 14/436,045 8 text and receiving compressed text from the “computer program.” See, e.g., Spec. ¶¶ 8, 21. One consideration showing integration into a practical application is whether the additional elements reflect an improvement in the functioning of a computer or other technology or field. See MPEP § 2106.05(a); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258–59 (Fed. Cir. 2014). Claim 15 fails to recite such an improvement because the additional elements of the claims merely recite the generically implemented computer components performing the abstract idea. Further, in the computer context, a “background service” without any particulars of the implementation, does not improve the functionality of the various computer components, nor does it 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). We do not agree that the claimed invention improves technology as a whole. Another consideration showing integration into a practical application is whether the additional elements of the claim use the judicial exception in conjunction with a particular machine or manufacture. See MPEP § 2106.05(b); Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 64–65 (1923). As discussed previously, the additional elements of the claims are described and claimed at a high level of generality, not as a particular machine or manufacture that is integral to the claim. As recited, the “electronic device” can be one of myriad generic devices, or a combination of such devices, or even software per se. The claims recite no details specifying how the “computer program” is implemented, and what the “software applications” are or what they do. Accordingly, the judicial Appeal 2019-000543 Application 14/436,045 9 exception is not used in conjunction with a particular machine or manufacture in these claims. The additional elements likewise fail to apply the judicial exception in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP § 2106.05(e); Diamond v. Diehr, 450 U.S. 175, 184, 187 (1981); USPTO Memorandum of April 2, 2018, ‘‘Recent Subject Matter Eligibility Decisions’’ (Apr. 2, 2018), available at https://www.uspto.gov/sites/default/ files/documents/ memo-recent-sme-ctdec-20180402.PDF (USPTO Finjan Memorandum). The claims would indeed monopolize the judicial exception because they recite nothing more than generically implemented computer components performing the abstract idea. In essence, the additional elements of Appellant’s claims amount to instructions to implement the judicial exception on an electronic device (computer), in which the electronic device is merely used as a tool to process plain text to compressed text while maintaining its comprehensibility, without specifying how this is accomplished. MPEP § 2106.05(f); Alice, 573 U.S. at 222–26. We further note that “receiving plain text from one of a plurality of software applications on the electronic device” and “returning the compressed text to the one of the plurality of software applications” in claim 15, even if these steps were considered as not part of the abstract idea, merely involve the input and output of data, which add insignificant extra- solution activity to the judicial exception. See MPEP § 2106.05(g); CyberSource, 654 F.3d at 1375; Mayo, 566 U.S. at 79; Parker v. Flook, 437 Appeal 2019-000543 Application 14/436,045 10 U.S. 584, 590 (1978); Benson, 409 U.S. 63 (1972); Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (Fed. Cir. 2017). Considering these factors, and evaluating the additional elements individually and in combination, we determine that claim 15 as a whole fails to integrate the judicial exception recited therein into a practical application. We conclude that claim 15 is directed to a judicial exception and proceed to Step 2B of the Revised Guidance corresponding to the second step of the Alice/Mayo test. USPTO Step 2B— Alice/Mayo Step 2 (Do the Claims Provide an Inventive Concept?) We now evaluate whether the claims recite an inventive concept that that is significantly more than the abstract idea embodied therein and transforms the judicial exception into patentable subject matter. Under Step 2B of the Revised Guidance, an “inventive concept” can be evaluated based on whether an additional element or combination of elements: (1) “[a]dds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present;” or (2) “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.” See Revised Guidance, 84 Fed. Reg. at 56. As explained above with reference to the Specification, the additional elements of an “electronic device” with “one or more processors” and “memory,” the “computer program” running a “background service,” and “software applications” are described in conventional or generalized functional terms, and this reasonably indicates that Appellant’s Specification Appeal 2019-000543 Application 14/436,045 11 discloses conventional components. Further, the Specification does not provide additional details about the computer that would distinguish the recited components from generic implementation individually and generic implementation in the combination. In view of Appellant’s Specification, the claimed computer components are reasonably determined to be generic, purely conventional computer elements. Thus, the claims do no more than require generic computer elements to perform generic computer functions, rather than improve computer capabilities. Considering the foregoing factors, we determine that the claims fail to recite any “inventive concept” that would transform the claims into patent- eligible subject matter. We, therefore, conclude that the claims are patent- ineligible under § 101. Appellant’s Arguments Appellant argues that the Non-Final Office Action from which this appeal is taken fails to address Applicant’s response dated May 17, 2017 and instead merely refers back to the same reasoning set forth in the Final Office Action dated March 17, 2017. Non-Final Act. 10–13. Because the claims were amended in that response, Appellant argues, the Examiner should have reconsidered the amended claims and addressed Appellant’s remarks under MPEP § 707.07(f). Appellant also argues it requested the Examiner to explain why the amendments are not sufficient to overcome the rejections in the response. Id. Appellant further contends the Examiner carries the burden to explain why the claims are ineligible for patenting clearly and Appeal 2019-000543 Application 14/436,045 12 specifically, so that the applicant has sufficient notice and is able to effectively respond under MPEP § 2106.07. The Examiner indicated that the Non-Final Office Action from which this appeal is taken is responsive to Appellant’s Request for Continued Examination (RCE) which requested consideration of the After-Final Amendment, Response and Declaration under 37 C.F.R. § 1.132 filed May 17, 2017 in response to the Final Office Action mailed March 17, 2017. See Non-Final Act. 1–2. It appears, therefore, that the Examiner considered Appellant’s After-Final Amendment, Response and Declaration, and decided the claims amendments did not change the prior analysis. Appellant next argues providing the text processing system as a service improves computer-related technology by allowing multiple applications on a device to access the service so that third party applications require little or no modifications. Appeal Br. 19–21. Dantzler (¶¶ 24, 26) teaches the same feature, however, and would presumably offer the same advantages. Accordingly, we are not persuaded the claims constitute an improvement to computer-related technology, as Appellant argues. In addition, as we explained above, we determine that a “background service” without any particulars of the implementation is a generic implementation, and does not improve the functionality of the various computer components. Appellant further argues claims 15 and 27 provide a particular solution to a problem or a particular way to achieve a desired outcome defined by the claimed invention. Appeal Br. 21–22. The claims, however, do not provide any particularity and instead merely recite generic computer components performing the abstract idea for reasons explained. Appeal 2019-000543 Application 14/436,045 13 Accordingly, we find Appellant’s arguments unpersuasive to show the Examiner erred in the § 101 rejection. § 103 Rejections A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) where present, objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Claims 15–22, 24–33, and 36–38 In our subsequent § 103 analysis, we group claims 15–22, 24–33 and 36–38 together and select claim 15 as representative of the group. See 37 C.F.R. § 31.47(c)(1)(iv). Accordingly, claims 16–33 and 36–38 stand or fall with claim 15. The Examiner relies on the combination of Kirkland and Dantzler to teach claim 15’s limitations. Non-Final Act. 7–10. The Examiner finds Kirkland’s text processing system meets Appellant’s definition of a “background service.” Id. at 8–10 (citing Kirkland ¶¶ 4, 23–25, 30, 47, 48, 50, Figs. 1, 10). The Examiner finds that Dantzler also teaches a Appeal 2019-000543 Application 14/436,045 14 “background service” as claimed. Id. at 9 (citing Dantzler code [57], ¶¶ 23– 26, 38). 1. Meaning of “Background Service” Appellant argues Kirkland and Dantzler fail to teach or suggest a “background service” as claimed. Appeal Br. 9–16. Specifically, Appellant contends that a “background service” has the following features: (1) the capability to service other computer programs installed on the same device; (2) automatic operation without requiring a user input; and (3) execution in a different memory space than the dedicated software applications. Id. at 11 (citing Spec. ¶¶ 24–25, Fig. 10); Decl. 2. Appellant contends Kirkland and Dantzler fail to teach or suggest a “background service” with features (1), (2) and (3). Id. at 10–16. Regarding feature (1) above, claim 15 recites “wherein the computer program runs as a background service which services the plurality of software applications on the electronic device.” We interpret this limitation as meaning the “background service” is not only capable of servicing, but actually services, the software applications on the electronic device. One dictionary defines “service” as “[i]n reference to programming and software, a program or routine that provides support to other programs, particularly at a low (close to hardware) level.” Service, Microsoft Computer Dictionary (5th ed. 2002), p. 475. This definition is consistent with the meaning Appellant proposes for “background service” concerning feature (1). Regarding feature (2) above, we agree with Appellant that the claimed “background service” requires automatic operation without user input. Appeal Br. 9. The inventor testifies “that one o[f] or ordinary skill in the art would understand that a background service can operate automatically Appeal 2019-000543 Application 14/436,045 15 without requiring a user input” (emphasis added). Decl. 2. A “background service” not only can, but does, operate automatically without requiring user input. But this does not mean that the background service cannot be manually triggered to run, just that once running it operates automatically without user input. The referenced dictionary defines “background” as “[i]n the context of processes or tasks that are part of an operating system or program, operating without interaction with the user while the user is working on another task.” Background, Microsoft Computer Dictionary (5th ed. 2002), pp. 47–48. Thus, Appellant’s interpretation of “background service” to require feature (2) is consistent with the definition of “background” as used in the art. Regarding feature (3) above, Appellant proposes that “background service” should be interpreted as requiring execution in a different memory space than the dedicated software applications. The Specification does not mention anything about “memory space.” The inventor testifies “that one o[f] ordinary skill in the art would understand that a background service is executed in a different memory space than the dedicated application or applications it is servicing.” Decl. 2. This testimony is not corroborated by any other evidence. The noted dictionary definitions of “background” and “service” make no mention of memory space. Appellant does not explain why a memory space could not be partitioned to run the computer program and software applications separately, for example. Accordingly, we agree with the Examiner that “background service” should not be interpreted to require its execution in a different memory space than the dedicated software applications according to feature (3). Ans. 4, 6–9. More particularly, we recognize that a modern operating system may run a “background service” in Appeal 2019-000543 Application 14/436,045 16 its own memory space; however, we are not persuaded that this is a strict requirement. 2. “Background Service” Servicing Software Applications on Same Device (Feature (1)) Appellant argues Kirkland does not teach or suggest that its computer program for compressing and abbreviating text messages “runs in the background” as alleged in the Non-Final Office Action. Appeal Br. 12–13 (citing Kirkland ¶ 25). Appellant argues Kirkland does not appear to teach that the computer program product is capable of servicing other computer programs installed on the same device (i.e., feature (1)). Id. Appellant contends Kirkland instead describes a dedicated application that does not expose an Application Programming Interface (API) that can be accessed by other software applications. Id. Appellant argues Dantzler also fails to teach a background service which services a plurality of software applications on the electronic device as recited in the claims. Appeal Br. 14–16. Appellant contends Dantzler discloses use of a client that combines several instant messengers (IMs) and solves the problem of compressing text for multiple applications in an alternative way by combining the functions of multiple applications into one application. Id. (citing Dantzler ¶ 26). We do not agree with Appellant’s arguments. Before addressing these arguments, we first examine Kirkland and Dantzler in greater detail. Kirkland (code [57]) teaches that its text message device abbreviates source text into human-readable compressed text according to a message length reduction profile. Kirkland (¶ 9) teaches human-readable compressed text and profile are then sent to another text message device where the Appeal 2019-000543 Application 14/436,045 17 compressed text and profile are used to interpret the messaged text. Kirkland ¶ 9. Dantzler (code [57]) similarly teaches altering outgoing text to conform to a limitation on message length and by substituting “SMS lingo” in the text message. Dantzler (¶ 22) teaches a mobile computing device 110 with a memory 210 and processor 220. Dantzler (¶ 23) teaches the memory 210 stores a messaging module 214 and a message control module 215. Dantzler (¶ 24) teaches the “message control module 215 can be invoked or terminated when the user touches an icon on a touch screen, or by some other technique.” “Once invoked, a daemon operates as a background process until messages are sent or received” (emphasis added). Id. Dantzler (¶ 26) teaches that “the components can be provided by various sources, and be made compatible using application program interfaces (APIs)” (emphasis added). Dantzler (¶ 26) further teaches that the messaging module 214 may be “downloaded from an online service provider (e.g., America Online IM, Yahoo IM, Facebook IM or a client that combines several IMs)” (emphasis added). Putting these teachings together, we agree with the Examiner that the combination of Kirkland and Dantzler teaches or suggests the claimed “wherein the computer program runs as a background service which services the plurality of software applications on the electronic device.” As noted, Dantzler teaches that the messaging module 214 may be downloaded as a client that combines several IMs, that the message control module 215 runs as a background process to send and receive messages, and that the two modules may be made compatible by API. Dantzler ¶¶ 24, 26. A person of ordinary skill in the art considering these teachings would have understood Appeal 2019-000543 Application 14/436,045 18 that Dantzler’s message control module 215 acts as a background service to send and receive messages for the several IM applications of messaging module 214 which are interfaced via API similarly to the way Appellant describes in the Specification (¶¶ 30–31). Accordingly, we do not agree with Appellant’s argument. 3. “Background Service” Automatically Operating Without User Input (Feature (2)) Appellant argues that Kirkland fails to teach or suggest a “background service” because Kirkland requires user input of source text to its messaging device whereas the claimed “background service” operates without user input by receiving text from another application (feature (2)). Appeal Br. 13. Appellant’s argument confuses user input of text for compression with user input connected to the function that the “background service” performs. Like Kirkland (¶¶ 25, 28–30, Figs. 3, 4B), Appellant’s Specification (¶ 9) contemplates the source of text to be compressed is user input, but that the “background service” to receive, compress, and return text operates without user input. Appellant’s argument also fails to address Dantzler (¶ 24) which teaches a daemon that “can be invoked or terminated when a user touches an icon on a touch screen, or by some other technique.” Once invoked, however, Dantzler’s daemon runs as a background process to receive and send messages without requiring user input to perform these functions. In this regard, we note that a “daemon” is defined as follows A program associated with UNIX systems that performs a housekeeping or maintenance utility function without being called by the user. A daemon sits in the background and is activated only when needed, for example, to correct an error from which another program cannot recover. Appeal 2019-000543 Application 14/436,045 19 Daemon, Microsoft Computer Dictionary (5th ed. 2002), pp. 140. Appellant’s argument attacks Kirkland alone and does not properly consider what its combination with Dantzler would have signified to a person of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Thus, we do not agree with Appellant’s argument. 4. “Background Service” Executing in Different Memory Space than Dedicated Software Applications (Feature (3)) Appellant argues Kirkland fails to teach that the background service is executed in a different memory space than the dedicated software applications (feature (3)). Appeal Br. 12. Since we do not interpret “background service” to require execution in a different memory space than the software applications, Appellant’s argument is not commensurate in scope with the claim language, and are, therefore, unpersuasive to show Examiner error. See Self, supra. 5. Conclusion for Claims 15–33 and 36–38 Accordingly, we do not find Appellant’s arguments persuasive to show the Examiner errs in the § 103 rejection of claim 15, and consequently also claims 16–33 and 36–38, which fall with claim 15 for the same reasons. Claim 39 Appellant argues that the combination of Kirkland and Dantzler fails to teach or suggest claim 39’s “splitting the received text into blocks of text, the splitting determined by the positions of delimiting characters in the received text.” Kirkland (¶ 28) teaches “replacement rules that replace words or phrases in source text 300 with abbreviations.” The Specification does not define what a block of text is, and Appellant does not proffer any definition. Therefore, under broadest reasonable interpretation, one could Appeal 2019-000543 Application 14/436,045 20 consider a word or phrase delimited by spaces to be a block of text, in which case Kirkland effectively splits text into blocks which are words or phrases and applies the replacement rules to those word or phrase blocks. Thus, we agree with the Examiner that Kirkland teaches the claimed feature. Non-Final Act. 11 (citing Kirkland ¶¶ 28, 30, 34, 35). Claims 23 and 35 No separate arguments are made for claims 23 and 35, which fall for the reasons stated with respect to the claims from which they depend. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION The Examiner’s rejections of claims 15–33 and 36–38 under 35 U.S.C. § 101 are affirmed. The Examiner’s rejections of claims 15–39 under 35 U.S.C. § 103 are affirmed. Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 15–33, 36–38 101 Eligibility 15–33, 36–38 15–22, 24–34, 36–39 103 Kirkland, Dantzler 15–22, 24–34, 36–39 23, 35 103 Kirkland, Dantzler, The Joint Commissions Official “Do Not Use” List 23, 35 Overall Outcome 15–39 Appeal 2019-000543 Application 14/436,045 21 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). AFFIRMED Copy with citationCopy as parenthetical citation