Kieran Hayes

Patent Trials and Appeals Board

May 29, 2020

2019000543 (P.T.A.B. May. 29, 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.
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.
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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.
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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.
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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
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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.
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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
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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
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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
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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
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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
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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
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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.
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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
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“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
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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
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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
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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
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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.
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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
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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
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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