LEE, Hee-ran et al.

Patent Trials and Appeals Board

Dec 3, 2019

15397262 - (D) (P.T.A.B. Dec. 3, 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.
15/397,262 01/03/2017 Hee-ran LEE 2579.1002CC 2908
22879 7590 12/03/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
EBRAHIMI DEHKORDY, SAEID
ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
12/03/2019 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):
barbl@hp.com
ipa.mail@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEE-RAN LEE and HYUNG-JONG KANG
Appeal 2019-000221
Application 15/397,262
Technology Center 2600
Before JEREMY J. CURCURI, JAMES B. ARPIN, and
MICHAEL M. BARRY Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as S-
PRINTING SOLUTION CO., LTD. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to “a host apparatus to connect with an image
forming apparatus and a web page printing method thereof, which can edit
and print a predetermined area selected from a web page.” Spec. ¶ 2.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A system comprising:
an image forming apparatus; and
an electronic apparatus comprising:
a memory to store instructions; and
a processor to execute the instructions stored in the
memory to cause the electronic apparatus to perform a method
comprising:
defining a first section and a second section
in a window of a web-browser application in the electronic
apparatus, the first section to display a web page;
displaying the web page in the first section
based on markup language content;
displaying a border of an area within the web
page;
receiving a selection of an area based on an
adjustment to the displayed border within the web page;
capturing an area of the web page based on
the received selection in a form of image data;
displaying the captured area in the second
section in the window of the web-browser application; and
sending, based on an input for printing the
captured area, the image data to the image forming apparatus,
wherein the image forming apparatus is to receive the sent
image data for the captured area, and to print the received image
data.
REFERENCES
The references relied upon by the Examiner are:
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Name2 Reference Date
Larson US 2002/0188635 A1 Dec. 12, 2002
Higuchi US 2004/0019625 A1 Jan. 29, 2004
Imai US 2008/0094669 A1 Apr. 24, 2008
REJECTIONS
Claims 1–19 are rejected under 35 U.S.C. § 101 as directed to an
abstract idea without significantly more. Final Act. 7–8.
Claims 1–18 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Imai and Larson. Id. at 2–6.
Claim 19 is rejected under pre-AIA 35 U.S.C. § 103(a) as obvious
over Imai, Larson, and Higuchi. Id. at 7.
OPINION
The Judicial Exception Rejection of Claims 1–19
The Examiner determines claims 1–19 are directed to a judicial
exception without significantly more. Final Act. 7–8. The Examiner
determines:
Claims 1-19 are rejected under 35 U.S.C. 101, the claims
are directed to an abstract idea because it describe a process of
mental activity which is like a law of nature that falls within the
exceptions to patent-eligible subject matter. The steps “defining,
displaying, receiving, capturing, displaying, sending, receiving,
selecting and printing” can be implemented by an operator
(mental activity). The additional elements a memory and
processor are not significantly more the abstract idea itself
because the memory is conventional and well-known in the art
and the processor is a generic processor. The claims as a whole
do not purport to improve the functions of the computer itself, or
do improve any other technology or technical field. Therefore,
the claims as a whole do not provide significantly more than a

2 All reference citations are to the first named inventor only.
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generic computer upon which the claimed steps are implemented
by an operator. Thus, the claims do not amount to significantly
more than the judicial exception itself (Alice v. CLS Bank).
Id. at 7–8.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
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(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.” Diehr,
450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court also
indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, . . . and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must 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). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77)
(alterations in original). “[M]erely requir[ing] generic computer
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implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The U.S. Patent and Trademark Office (“USPTO”) recently published
revised guidance on the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019); USPTO
October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. 2018)).
See 84 Fed. Reg. at 54–55. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, do we
then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 84 Fed. Reg. at 56.
Are the claims patent-eligible?
Step One
Claims 1 and 7 recite systems, which fall within the “machine”
category of 35 U.S.C. § 101. Claim 13 is a method claim, which falls within
the “process” category of 35 U.S.C. § 101. Thus, we must determine
whether the claims recite a judicial exception, and fail to integrate the
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exception into a practical application. See 84 Fed. Reg. at 54–55. If both
elements are satisfied, the claim is directed to a judicial exception under the
first step of the Alice/Mayo test. See id.
Step 2A—Prong One
The Examiner generally states that claims 1–19 are directed to an
abstract idea because they describe mental processes because the recited
steps may be implemented by an operator. See Final Act. 7–8; see also Ans.
14–18 (discussing the claims being directed to an abstract idea because they
describe managing user’s activities (organizing human activity)).
Contrary to the Examiner’s determinations, we determine that the
claim limitations determined by the Examiner to recite an abstract idea do
not correspond to certain methods of organizing human activity, mental
processes, or mathematical concepts. In particular, claim 1 recites the
following steps:
defining a first section and a second section
in a window of a web-browser application in the electronic
apparatus, the first section to display a web page;
displaying the web page in the first section
based on markup language content;
displaying a border of an area within the web
page;
receiving a selection of an area based on an
adjustment to the displayed border within the web page;
capturing an area of the web page based on
the received selection in a form of image data;
displaying the captured area in the second
section in the window of the web-browser application; and
sending, based on an input for printing the
captured area, the image data to the image forming apparatus.
We disagree with the Examiner’s determination that these activities are
mental processes or certain methods of organizing human activity.
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In the context of the invention, these steps describing selecting,
editing, and printing a desired area from a web page are simply not mental
processes—they cannot be performed in the human mind. For example, the
human mind cannot perform the recited steps of “capturing an area of the
web page,” “displaying the captured area,” and “sending . . . the image data
to the image forming apparatus.” Similarly, these steps are also simply not
certain methods of organizing human activity as described in our guidance.
See 84 Fed. Reg. at 52. That is, managing a user’s activities with a computer
to perform the recited steps is not a “fundamental economic principle[] or
practice[],” “commercial or legal interaction[],” or “managing personal
behavior or relationships or interactions between people.” 84 Fed. Reg. at
52.
Put another way, the recited steps of “capturing an area of the web
page,” “displaying the captured area,” and “sending . . . the image data to the
image forming apparatus” are a process that only exists and has meaning
within the context of a computer environment, cannot be performed in the
human mind, and is not certain methods of organizing human activity as
described in our guidance. See 84 Fed. Reg. at 52.
The Examiner does not sufficiently articulate why the claimed
concepts fall within the subject matter groupings of abstract ideas of
mathematical concepts, certain methods of organizing human activity, or
mental processes. See 84 Fed. Reg. 52.
Accordingly, we are persuaded by Appellant’s arguments that the
claimed subject matter is not directed to a mental activity. See Appeal Br.
25–26 (“First, it is unclear how the claimed subject matter – which
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is directed to internet-centric activity – could be performed in the human
mind.”). Accordingly, we are also persuaded by Appellant’s arguments that
the claimed subject matter is not directed to certain methods of organizing
human activity. See Reply Br. 9–10 (“not all methods of organizing human
activity are abstract ideas, and methods of organizing human activity do not
cover human operation of machines”).
In addition, we note Appellant’s Specification discloses the following:
However, most of the web pages are designed without
regard to completeness when printed, so that when using the
foregoing printing function provided by the web browser,
information desired by a user may be omitted due to a partial
printing cut on the page, or an undesired page may be printed.
Spec. ¶ 6; see also Spec. ¶¶ 7–9 (further discussing problems related to
printing web pages).
Because claim 1 overcomes a problem specifically arising in the realm
of computers, “the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks,” and, accordingly, the claims are not directed to an
abstract idea. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014).
Thus, we do not sustain the rejection of independent claim 1 under 35
U.S.C. § 101. Claims 2–6 depend from claim 1. We, therefore, also do not
sustain the rejection of those claims under 35 U.S.C. § 101.
Independent claims 7 and 13 recite similar language as claim 1. We,
therefore, also do not sustain the rejection of independent claims 7 and 13
under 35 U.S.C. § 101. Claims 8–12 and 14–19 depend from claims 7 and
13, respectively. We, therefore, also do not sustain the rejection of those
claims under 35 U.S.C. § 101.
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The Obviousness Rejection of Claims 1–18 over Imai and Larson
The Examiner finds Imai and Larson teach all of the limitations of
claim 1. Final Act. 2–4; see also Ans. 2–13. In particular, the Examiner finds
Imai teaches “capturing an area of the web page based on the received
selection in a form of image data; displaying the captured area in the second
section in the window of the web-browser application” as recited in claim 1.
See Final Act. 3 (citing Imai Figs. 4 and 5, ¶¶ 51–55); see also Ans. 5–9.
Among arguments, Appellant presents the following principal
argument:
In sum, while Imai may desire to print out only portions of
a web page, this is accomplished by first providing an input in
the form of a print command to obtain a printing image window
via a printer driver, then selecting designated areas from a
preview image in order to only print out areas that the user
desires (i.e., avoiding printing of undesired banners, texts and
images). Imai makes this explicitly clear at paragraph [0081] by
outlining the steps of first obtaining a preview image (which
cannot reasonably be interpreted as a web page of a browser
application), then designating an area of the preview image,
editing the image, and outputting the image for printing.
Appeal Br. 17; see also Reply Br. 2–8.
Appellant’s argument persuades us that the Examiner erred in finding
Imai teaches the following key limitations recited in claim 1: “capturing an
area of the web page [displayed in the first section in the window of the web-
browser application] based on the received selection in a form of image
data; displaying the captured area in the second section in the window of the
web-browser application” (emphasis added).
According to the claim language, specific content is captured in the
first section of the web-browser, and then displayed in the second section of
the web-browser. Imai, in Figure 4, depicts “[a] preview image 300 is
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displayed in the preview image display frame 30, and a plurality of selection
buttons are displayed in the editing operation frame 31.” Imai ¶ 48. Preview
image display frame 30 is not a second section of the web-browser (where
the content was captured from a first section of the web-browser as required
by the key limitation).
We recognize that, as Imai explains in its discussion of related
art,“[s]ome browsers are equipped with a framing function that divides a
browser’s window into a plurality of regions (each region is referred to as a
‘frame’) and displays different web pages within respective frames.” Imai ¶
7; see also Final Act. 3. Nonetheless, Imai’s preview image display frame 30
is not a second frame of a web-browser (where the content was captured
from a first frame of the web-browser).
We, therefore, do not sustain the Examiner’s rejection of claim 1. We
also do not sustain the Examiner’s rejection of claims 2–6, which depend
from claim 1.
Independent claim 7 recites the same disputed limitation. We,
therefore, also do not sustain the Examiner’s rejection of claim 7. We also
do not sustain the Examiner’s rejection of claims 8–12, which depend from
claim 7.
Independent claim 13 recites the same disputed limitation. We,
therefore, also do not sustain the Examiner’s rejection of claim 13. We also
do not sustain the Examiner’s rejection of claims 14–18, which depend from
claim 7.
The Obviousness Rejection of Claim 19 over Imai, Larson, and Higuchi
The Examiner does not find Higuchi cures the deficiency of Imai and
Larson. See Final Act. 7; see also Ans. 14.
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We, therefore, do not sustain the Examiner’s rejection of claim 19.
CONCLUSION
The Examiner’s decision to reject claims 1–19 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–19 101 Eligibility 1–19
1–18 103(a) Imai, Larson 1–18
19 103(a) Imai, Larson,
Higuchi
19
Overall
Outcome
1–19
REVERSED