Mark B. Barron et al.

Patent Trials and Appeals Board

Aug 19, 2019

13270848 - (R) (P.T.A.B. Aug. 19, 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.
13/270,848 10/11/2011 Mark B. Barron PTS008CIP 8204
27137 7590 08/19/2019
DIEDERIKS & WHITELAW, PLC
13885 HEDGEWOOD DR., SUITE 317
WOODBRIDGE, VA 22193
EXAMINER
SHUI, MING
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
08/19/2019 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):
MAIL@DWPATENTLAW.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK B. BARRON and MICHAEL HAYS
____________

Appeal 2017-003549
Application 13/270,8481
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BART A. GERSTENBLITH, and
BRUCE T. WIEDER, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE2
Appellants filed a Request for Rehearing under 37 C.F.R. § 41.52 of
the Decision on Appeal, contending the Board erred in its affirmance of the
rejection of claims 11–40 under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.

1 According to Appellants, the real party in interest is Consumeron, LLC.
Appeal Br. 6.
2 This Decision references Appellants’ Request for Rehearing (dated Jan. 31,
2019, “Req.”), Appellants’ Supplemental Submission Regarding Request for
Rehearing (dated Mar. 28, 2019, “Supp. Req.”) and the Board Decision on
Appeal (dated Dec. 12, 2018, “Dec.”).
Appeal 2017-003549
Application 13/270,848
2
We note at the outset that a Request for Rehearing “must state with
particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 C.F.R. § 41.52(a). A Request for Rehearing is not an
opportunity to rehash arguments raised in the Appeal Brief or in the Reply
Brief. Neither is it an opportunity to merely express disagreement with a
decision without setting forth points believed to have been misapprehended
or overlooked. Arguments not raised in the briefs before the Board and
evidence not previously relied on in the briefs also are not permitted except
in the limited circumstances set forth in §§ 41.52(a)(2) through (a)(4). Id.
To the extent the Appellants present supplemental or new arguments in the
Request, those arguments are untimely and, as such, will not be considered
except where the arguments are based on a recent relevant decision of either
this Board or a federal court, or on an allegation that the Board’s decision
contains an undesignated new ground of rejection. See id.
Appellants argue that we overlooked the state of the law because there
is no evidence to support the finding that the claims do not recite
substantially more than any abstract idea. (Req. 3.) In support of this
argument, Appellants, relying on Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018), argue that there is no evidence that the claims do not
include additional elements that are not well understood, routine, and
conventional. Appellants also argue that our reliance on the disclosure in the
Specification at paragraph 7 as evidence that the additional elements were
well understood, routine, and conventional was a new ground of rejection.
(Req. 5.)
Appeal 2017-003549
Application 13/270,848
3
We do not agree that the Examiner’s finding was not supported by
evidence. The Examiner found, relying on the intrinsic evidence in the
Specification, on page 4 of the Final Office Action that:
the Applicants have argued that the digital image capture device
and communication devices do provide significantly more, the
Examiner disagrees. The specification in paragraph 14
describes these hardware components as portable devices with
generic recitations of functions such as real-time video
capability, GPS technology, communications systems, etc.
Additionally, it goes on to state that each of the functionalities
may be provided by separate devices, i.e., a GPS, a printer, a
video device. These hardware components are operating at their
most basic functions and in doing so, are merely streaming data
back and forth between servers and computer interfaces.
Therefore, the Examiner maintains that the claims do not
amount to an improvement to another technology or technical
field; the claims do not amount to an improvement to the
functioning of a computer itself; the claims do not move
beyond a general link of the use of an abstract idea to a
particular technological environment; the claims merely amount
to the application or instructions to apply the abstract idea on a
computer; and/or that the claim amounts to nothing more than
requiring a generic computer to perform generic computer
functions that are well-understood, routine and conventional
activities previously known to the industry.
(Final Act. 4.)
As such, the Examiner did rely on evidence that was found in the
Specification.
We also relied on evidence from the Specification to support our
finding that the recitation of an image capture device was well understood,
routine, and conventional. (Dec. 7.) This finding did not amount to a new
ground of rejection because as detailed above, the Examiner also relied on
the teachings in the Specification as evidence that the elements in addition to
the abstract idea were well understood, routine, and conventional.
Appeal 2017-003549
Application 13/270,848
4
We do not agree with Appellants that reliance on the teachings in the
Specification are not sufficient to support the rejection. We note that this
argument is not accompanied by reference to specific case citations or other
authorities. We relied on the Specification in our discussion as intrinsic
evidence that the claimed “processor” is conventional. In doing so, we have
followed “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP
Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO Memorandum, Robert W.
Bahr, Deputy Commissioner for Patent Examination Policy, April 19, 2018
(the “Berkheimer Memo”)).
We are not convinced that one of our conclusions reached in the
Decision on Appeal—that the Examiner did not establish that the claims
would have been obvious in view of the Examiner’s cited prior art—
mandates that we find the elements are unconventional. (Req. 5.) To the
extent Appellants maintain that the limitations of claim 11 necessarily
amount to “significantly more” than an abstract idea because the claimed
apparatus is allegedly patentable over the prior art, Appellants misapprehend
the controlling precedent. Although the second step in the Alice/Mayo
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.”’ Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.
208, 217–18 (2014) (citation omitted). A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 90–91 (2012).
Appeal 2017-003549
Application 13/270,848
5
In their Supplemental Submission Regarding Request for Rehearing,
Appellants argue that we should consider the 2019 Revised Patent Subject
Matter Eligibility Guidance. Supp. Req. 1.
After Appellants’ briefs were filed in this appeal, the Examiner’s
Answer was mailed, and the Decision on Appeal was mailed, the USPTO
published revised guidance for use by USPTO personnel in evaluating
subject matter eligibility under 35 U.S.C. § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (the
“2019 Revised Guidance”). That guidance revised the USPTO’s
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) providing groupings of subject matter that are considered
abstract ideas; and (2) clarifying that a claim is not “directed to” an abstract
idea if the judicial exception is integrated into a practical application of that
exception. (2019 Revised Guidance, 84 Fed. Reg. at 50.)
Appellants argue that the claims do not contain a judicial exception
within the meaning of the 2019 Revised Guidance and that the claims
integrate the Examiner’s alleged judicial exception into a practical
application of allowing a customer to see a product while it is being
acquired. (Supp. Req. 4.)
We do not agree with Appellants that the claims do not contain a
judicial exception within the meaning of the 2019 Revised Guidance. As we
discussed in the Decision on Appeal, the Examiner determined that the
claims were directed to organizing human behavior. Dec. 6. According to
the 2019 Revised Guidance, a claim that is directed to organizing human
behavior is directed to a judicial exception. (2019 Revised Guidance, 84
Fed. Reg. at 52.) The 2019 Revised Guidance states that methods directed
Appeal 2017-003549
Application 13/270,848
6
to managing personal behavior or relationships or interactions between
people are considered certain methods of organizing human activity. (Id.)
The Examiner’s determination that the claims are directed to
organizing human behavior is supported by the actual steps recited in
claim 11. In this regard, claim 11 recites “locating a plurality of agents,”
“receiving a first acquisition request from a first customer,” “contacting one
of the plurality of agents,” “transmitting . . . information on . . . goods,”
“acquiring . . . goods,” and “providing for delivery of . . . goods.” As such,
the steps of the claim amount to organizing the interactions between a
customer and an agent so that the agent purchases goods at the direction of
and for a customer.
As we discussed in our Decision on Appeal, the Examiner also
determined that the claims were directed to the collection, analysis, and
storage of data. Dec. 6. Specifically, in order to determine whether to
purchase goods by an agent for a customer, data is captured by the digital
image capture device and is sent to the customer. After the customer views
the data, the agent acquires the goods for the customer. These steps
constitute “analyzing information by steps people go through in their minds,
or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category.” Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
Therefore, the Examiner determined, and we affirmed, that the claims
fell into two categories outlined in the 2019 Revised Guidance, i.e.,
organizing human activity and mental processes.
We do not agree with Appellants that the claims integrate the judicial
exception into a practical application. In determining whether the claims are
Appeal 2017-003549
Application 13/270,848
7
integrated into a practical application, we must consider whether the claims
include additional elements that improve the functioning of the computer or
other technology, whether the additional elements use the judicial exception
in a particular machine or manufacture and whether the additional elements
transform a particular article into a different state or thing. (2019 Revised
Guidance, 84 Fed. Reg. at 55.)
As we found in our Decision on Appeal, the claims do not recite an
improvement to the functioning of the digital capture device or the server.
Dec. 6–7.
We find no indication in the Specification, nor do Appellants direct us
to any indication, that the operations recited in independent claim 11 invoke
any inventive programming, require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the 2019 Revised Guidance. (See 2019 Revised
Guidance, 84 Fed. Reg. at 55.)
Appeal 2017-003549
Application 13/270,848
8

CONCLUSION
We have carefully considered Appellants’ Request for Rehearing but,
for the foregoing reasons, we do not find it persuasive as to error in the
Board’s Decision on Appeal affirming the rejection of claims 11–40 under
35 U.S.C. § 101.

DENIED