LEE, Hee-ran et al.Download PDFPatent Trials and Appeals BoardDec 3, 201915397262 - (D) (P.T.A.B. Dec. 3, 2019) 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. 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. Appeal 2019-000221 Application 15/397,262 2 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: Appeal 2019-000221 Application 15/397,262 3 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. Appeal 2019-000221 Application 15/397,262 4 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 Appeal 2019-000221 Application 15/397,262 5 (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 Appeal 2019-000221 Application 15/397,262 6 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 Appeal 2019-000221 Application 15/397,262 7 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. Appeal 2019-000221 Application 15/397,262 8 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 Appeal 2019-000221 Application 15/397,262 9 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. Appeal 2019-000221 Application 15/397,262 10 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 Appeal 2019-000221 Application 15/397,262 11 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. Appeal 2019-000221 Application 15/397,262 12 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 Copy with citationCopy as parenthetical citation