Michael A. Marth et al.

Patent Trials and Appeals Board

Jul 1, 2020

2019001783 (P.T.A.B. Jul. 1, 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.
14/630,442 02/24/2015 Michael A. Marth P5240-US-ORG5 4678
108982 7590 07/01/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
ANDREI, RADU
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL A. MARTH and KEN BEATON
Appeal 2019-001783
Application 14/630,442
Technology Center 3600
Before JOHNNY A. KUMAR, JENNIFER S. BISK, and JOYCE CRAIG,
Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–16 and 21–24. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Throughout this Decision we have considered the Specification filed
February 24, 2015 (“Spec.”), the Final Rejection mailed June 14, 2018
(“Final Act.”), the Appeal Brief filed October 18, 2018 (“Appeal Br.”), the
Examiner’s Answer mailed November 30, 2018 (“Ans.”), and the Reply
Brief filed December 26, 2018 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Adobe Systems, Inc.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to managing content for marketing, including
content creation, deployment collaboration, activity stream, and task
management. Spec. ¶ 4. Claims 1, 13, and 21 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter (bracketed
numbers added):
1. In a digital medium environment involving content creation, a
system to create the content comprising one or more modules
implemented at least partially in hardware, the one or more
modules configured to perform operations comprising:
[1] monitoring interaction of one or more users with
content available via a shared network resource, the interaction
including execution of an image editing operation to modify the
content as part of the shared network resource;
[2] collecting comments and markups made in association
with the content as part of the monitored interaction, the markups
identifying portions within the content that correspond with
respective comments;
[3] exposing a user interface for display that includes:
[a] the content and the markups in which at least one
of the markups is disposed over a display of the content; and
[b] an activity stream that includes the collected
comments and an indication of the execution of the image editing
operation to modify the content; and
[4] responsive to the comments and the markups being
made by a first contributor type, presenting the content and the
markups for review without requiring approval by a managing
user of the shared network resource; and
[5] responsive to the comments and the markups being
made by a second contributor type, presenting the content and
the markups for review and requiring approval by the managing
user of the shared network resource.
Appeal Br. 20 (Claims App.).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
O’Donnell U.S. 9,396,279 B1 July 19, 2016
Vagell U.S. 9,529,785 B2 Dec. 27, 2016
Roman U.S. 2013/0332512 A1 Dec. 12, 2013
REJECTIONS
Claims 1–16 and 21–24 are rejected under 35 U.S.C. § 101 because
the claimed invention is not directed to patent eligible subject matter. Final
Act. 4–8.
Claims 1–8, 13–16, and 21–24 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over O’Donnell and Vagell. Final Act. 8–14.
Claims 9–12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over O’Donnell, Vagell, and Roman. Final Act. 14–17.
OPINION
We review 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).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
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Rejection of Claims 1–16 and 21–24 under 35 U.S.C. § 101
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“‘Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S.
at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “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, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised
Guidance, to decide whether a claim is “directed to” an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
abstract idea grouping listed in the Revised Guidance and (2) fails to
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integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry.” Revised Guidance, 84 Fed. Reg. at 56.
For the § 101 rejections, Appellant argues claims 1–16 and 21–24
together. See Appeal Br. 8–14. As permitted by 37 C.F.R. § 41.37, we
decide the appeal for this rejection based on claim 1. See 37 C.F.R.
§41.37(c)(1)(iv). Noting claims 1 and 21 recite systems and claim 13 recites
a method and, therefore, falls within the process category of § 101, we turn
to the Examiner’s § 101 rejection.
The Judicial Exception—Abstract Idea
The Examiner determined that claims 1 and 21 recite subject matter
“monitoring user interactions, collecting comments and markups, and
displaying content comments and markups,” which “are conceptually
similar” to those actions found to be an abstract idea in Electric Power
Group. Final Act. 4 (citing Elec. Power Grp., LLC v. Alstom, S.A., 830 F.3d
1350 (Fed. Cir. 2016). Similarly, the Examiner determines that claim 13 is
directed to “updating the activity stream, the content and modifications to
the content, as well as displaying the content and modifications to the
content,” also similar to the claims at issue in Electric Power Group. Id. at
4–5.
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The Examiner also states that “each of the foregoing activities” of
claims 1, 13, and 21 can “be performed by a human being, or by a ‘human
analog’ mentally or manually, i.e. with pen and paper.” Id. at 5.
For the reasons explained below, we agree that the claims recite an
abstract idea.
According to the Specification, the invention overcomes problems
related to having to select content for inclusion in marketing activities “from
scratch.” Spec. ¶ 3. This often requires marketing professionals to create
new marketing material by guessing why other marketing activities have
been successful, “which could be complicated, time consuming, and may not
be accurate.” Id. The Specification describes “[c]ontent and deployment
collaboration techniques,” which use a “content creation service” and a
“content deployment service,” so that deployment data may be tracked and
reused in future marketing activities. Id. ¶ 5. Providing data to be used in
creating marketing material falls within “advertising, marketing, or sales
activities.” Revised Guidance, 84 Fed. Reg. at 52.
As quoted and enumerated above, claim 1 includes five main
limitations. These limitations recite, in part, the following steps: monitoring
user interaction, including image editing, of content (limitation [1]),
collecting comments and markups associated with portions of the content
(limitation [2]), and displaying the content with markups and corresponding
comments by first (without manager approval required) and second
contributor type (with manager approval required) (limitations [3], [4], and
[5]). Appeal Br. 20 (Claims App.). Under their broadest reasonable
interpretation, all these limitations ([1]–[5]) contribute to a method of
creating and displaying marketing content, which is advertising, marketing
or sales activity. Such activity has been found to be an abstract idea. See,
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e.g., See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir.
2014) (holding that claim “describ[ing] only the abstract idea of showing an
advertisement before delivering free content” is patent ineligible); In re
Ferguson, 558 F.3d 1359, 1364 (Fed Cir. 2009) (holding methods “directed
to organizing business or legal relationships in the structuring of a sales
force (or marketing company)” to be ineligible).
In addition, we agree with the Examiner that at least limitations [1]–
[5], except for the recitation of “shared network resource” and “user
interface,” could be performed in the mind or with pencil and paper. That is,
nothing recited in the claim prevents each of the steps from practically being
performed in the mind. For example, but for the “shared network resource”
and “user interface,” the claim encompasses a process that could occur in a
person’s mind—watching users modifying content using image editing,
writing on paper the comments and markups made during that process and
linking those comments and markups with the content at issue, and then
presenting those notes. Similar claims have been found ineligible by the
Federal Circuit. For example, the Federal Circuit continues to “‘treat[ ]
analyzing information by steps people go through in their minds, . . . without
more, as essentially mental processes within the abstract-idea category.’”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146–47 (Fed. Cir.
2016) (quoting Electric Power Group, 830 F.3d at 1354).
When claimed in a manner similar to the claims here, gathering and
analyzing information using conventional techniques has been determined to
be an abstract idea. In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
612–13 (Fed. Cir. 2016). Also, more recently, our reviewing court has also
concluded that some acts of collecting, analyzing, manipulating, and
displaying data are patent ineligible. Univ. of Fl. Research Found., Inc. v.
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General Electric Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019) (citing
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017); Electric Power Group, 830 F.3d at 1353–54).
Accordingly, we conclude claim 1 recites a certain method of
organizing human activity identified in the Revised Guidance (i.e., a
commercial interaction), and thus, an abstract idea.3 Revised Guidance, 84
Fed. Reg. at 52, 53 (listing “[c]ertain methods of organizing human activity
. . . commercial or legal interactions” as one of the “enumerated groupings
of abstract ideas”).
Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the

3 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[a]n abstract
idea can generally be described at different levels of abstraction. . . . The
Board’s slight revision of its abstract idea analysis does not impact the
patentability analysis.” Id. Moreover, merely combining several abstract
ideas does not render the combination any less abstract. RecogniCorp, LLC
v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one
abstract idea (math) to another abstract idea . . . does not render the claim
non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were
directed to a combination of abstract ideas).
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recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites the additional elements of “one or more modules
implemented at least partially in hardware,” “shared network resource,” and
“a user interface for display.” Appeal Br. 20 (Claims App.). Considering
claim 1 as a whole, the additional elements do not apply or use the abstract
idea in a meaningful way such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. The Supreme Court
guides that the “prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or [by] adding ‘insignificant postsolution
activity.’” Bilski, 561 U.S. at 610–11 (quoting Diamond v. Diehr, 450 U.S.
175, 191–92 (1981)).
The Specification describes each of these additional elements as
generic components. For example, the Specification states that
“[c]omputing devices that are used to implement the content creation service
102, content deployment service 104, and the client device 106 are
configurable in a variety of ways,” ranging from “full resource devices with
substantial memory and processor resources (e.g., personal computers, game
consoles) to a low-resource device with limited memory and/or processing
resources (e.g., mobile devices).” Spec. ¶ 48; see also ¶¶ 153–166
(describing the system in terms of conventional computer hardware and
software). The recited “shared network resource” is described in the
Specification as including “a folder that may be made accessible to other
users” that may be “maintained by a third-party sharing service, such as
Google® Drive, Dropbox®, OneDrive®, and so forth.” Id. ¶¶ 92, 111. The
Specification also describes “a display device (e.g., a monitor or projector).”
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Id. ¶ 157; see also ¶ 154 (“The example computing device 3502 as
illustrated includes . . . one or more I/O interface 3508 that are
communicatively coupled, one to another.”).
Appellant’s arguments have not persuaded us claim 1 is “directed to”
a patent-eligible concept. Appellant argues that the claims are directed to a
user interface that “improves the efficiency of content creation and
deployment,” and, therefore, are not directed to an abstract idea. Appeal Br.
10–11 (citing Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880
F.3d 1356, 1362 (Fed. Cir. 2018); Data Engine Techs. LLC v. Google LLC,
906 F.3d 999 (Fed. Cir. 2018)). To support this argument Appellant cites to
claim language requiring “a user interface for display that includes” “the
content and the markups in which at least one of the markups is disposed
over a display of the content” and “an activity stream that includes the
collected comments and an indication of the execution of the image editing
operation to modify the content” along with paragraphs 72–74 of the
Specification. Id. at 11. In addition, Appellant contends that the
Specification explains that the availability of deployment data is useful
information to content creators and maybe manufacturers of devices and,
therefore, “the specification identifies an improvement to a user interface.”
Reply Br. 7 (citing Spec. ¶ 44).
We disagree that determining the availability of data to users
describes an improvement to a user interface for displaying that data. The
fact that users may find data displayed on a user interface to be useful has no
bearing on whether there has been a technological improvement to
technology of the user interface itself. Appellant does not point to, and we
do not see, any disclosure in the Specification that describes improving the
user interface itself, but instead describes determining what data should be
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displayed by a conventional user interface. See Spec. ¶ 44 (“Content
creators, in one such instance, receive this data to determine which of their
content has been successfully employed as part of marketing activities and
use this information in the creation of future content.”).
Appellant also argues that the claims “limit the technical means for
presenting content and markups for review,” “identify several particular
tools for presentation,” and “require performance of the claimed functions of
presenting content and markups,” and, thus, are not similar to the claims
found ineligible in Electric Power Group. Appeal Br. 10 (citing Electric
Power Group, 830 F.3d at 1351).
We disagree with Appellant’s attempted differentiation of the claims
of Electric Power Group from the claims in this case. In Electric Power
Group, the court held ineligible a recited method of detecting events on an
interconnected power grid from plural data streams in real time and
analyzing those events, where the method included, among other things,
displaying event analysis results and diagnoses, metrics, and concurrent
visualization of measurements from the data streams, and deriving a
composite reliability indicator. Electric Power Group, 830 F.3d at 1351–56.
Notably, in Electric Power Group, the claimed invention was ineligible
because it merely gathered and analyzed information, and then displayed
results—an abstract idea that is strikingly similar to the one at issue here.
Merely displaying the results of such abstract ideas does not integrate them
into a practical application as illustrated in Electric Power Group. In
addition to receiving and analyzing data using mathematical calculations,
claim 12 in Electric Power Group also displayed the results of that analysis
“in visuals, tables, charts, or combinations thereof, the data comprising at
least one of monitoring data, tracking data, historical data, prediction data,
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and summary data.” Electric Power Group, 830 F.3d at 1352. It also
displayed “concurrent visualization of measurements from the data streams
and the dynamic stability metrics.” Id. The court held that displaying
information that results from collection and organizing is “abstract as an
ancillary part of such collection and analysis.” Id. at 1354.
We do not agree with Appellant’s argument that the claims here “limit
the technical means for presenting content and markups for review” or
“identify several particular tools for presentation” such that they are
distinguishable from the claims at issue in Electric Power Group.
Specifically, we do not agree that requiring presented content to be
responsive to comments is a limitation on the “technical means for
presenting content and markups from review,” but instead presents data in
an analogous manner that was recited in the claims at issue in Electric
Power Group (reciting displaying data after analysis). See Appeal Br. 10;
Electric Power Group, 830 F.3d 1352. Similarly, we do not agree with
Appellant’s argument that “presenting content and markups, presenting
markups relative to content, and presenting content and markups with and
without requiring approval” qualify as “particular tools for presentation.”
See Appeal Br. 10. These limitations simply determine what data will be
presented by generic display devices using commonly available tools.
Finally, we do not agree that “requir[ing] performance of the claimed
functions of presenting content and markups” in any way distinguishes the
claims at issue with those in Electric Power Group. See Appeal Br. 10.
Here, claim 1 recites collecting comments and markups and
displaying that data together with the relevant content based on contributor
type and depending on whether a supervisor need approve the display. In
other words, the display functions generically; it displays data. What data is
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displayed and how it is arranged is described by the claims at issue, but not
the mechanism of how that data is displayed.
Finally, Appellant argues that the claims recite significantly more than
an abstract idea because they “recite how interactions are manipulated to
achieve a desirable result.” Appeal Br. 14 (citing DDR Holdings, LLC v.
Hotels.com, 773 F.3d 1245, 1258 (Fed. Cir. 2014)). We do not agree with
Appellant’s reading of DDR Holdings as holding that “[c]laims that recite
how interactions are manipulated to achieve a desirable result recite
significantly more than an abstract idea.” Id. at 13.
In DDR Holdings, the Court evaluated the eligibility of claims
“address[ing] the problem of retaining website visitors that, if adhering to
the routine, conventional functioning of Internet hyperlink protocol, would
be instantly transported away from a host's website after ‘clicking’ on an
advertisement and activating a hyperlink.” Id. at 1257. The Court found
that the claims at issue in DDR Holdings were patent eligible because they
transformed the manner in which a hyperlink typically functions to resolve a
problem that had no “pre-Internet analog.” Id. at 1258. The Court
cautioned, however, “that not all claims purporting to address Internet-
centric challenges are eligible for patent.” Id. For example, the Court
distinguished the patent-eligible claims at issue from claims found patent-
ineligible in Ultramercial. See id. at 1258–59 (citing Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014)). As the Court explained,
the Ultramercial claims were “directed to a specific method of advertising
and content distribution that was previously unknown and never employed
on the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 715–
16). Nevertheless, those claims were patent ineligible because they “merely
recite[d] the abstract idea of ‘offering media content in exchange for viewing
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an advertisement,’ along with ‘routine additional steps such as updating an
activity log, requiring a request from the consumer to view the ad,
restrictions on public access, and use of the Internet.”’ Id.
Appellant’s asserted claims are more similar to the claims found
ineligible in Ultramercial than the claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a] sponsor
message;” and “if the sponsor message is an interactive message, presenting
at least one query to the consumer and allowing said consumer access to said
media product after receiving a response to said at least one query.” 772
F.3d at 712. Similarly, Appellant’s asserted claims recite collecting data and
outputting certain of that data depending on content and potentially based on
managerial approval. This is the type of activity found ineligible in
Ultramercial.
Moreover, we agree with the Examiner that the invention as a whole
does not solve problems specifically arising in some aspect of computer
technology, nor is it solving an Internet centric problem, but rather the
computer in the instant claims is used as a mechanism to improve efficiency.
Ans. 4; see also Appeal Br. 11 (stating that the claims “improve[] the
efficiency of content creation and deployment.”); see FairWarning, 839 F.3d
at 1095 (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir.
2017) (unpublished) (“Though the claims purport to accelerate the process
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of finding errant files and to reduce error, we have held that speed and
accuracy increases stemming from the ordinary capabilities of a general-
purpose computer ‘do[] not materially alter the patent eligibility of the
claimed subject matter.’” (alteration in original) (citation omitted)).
Accordingly, even in combination with all the other recited elements,
the addition of “one or more modules implemented at least partially in
hardware,” “shared network resource,” and “a user interface for display”
does not integrate the abstract idea into a practical application because it
does not impose any meaningful limits on practicing the abstract idea. For
these reasons, we determine that claim 1 does not integrate the recited
abstract idea into a practical application.
Inventive Concept
Because we agree with the Examiner that claim 1 is “directed to” an
abstract idea, we consider whether an additional element (or combination of
elements) adds a limitation that is not well-understood, routine, conventional
(“WURC”) activity in the field or whether the additional elements simply
append WURC activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Revised Guidance, 84
Fed. Reg. at 23. The Examiner’s finding that an additional element (or
combination of elements) is WURC activity must be supported with a
factual determination. Id. (citing MPEP § 2106.05(d), as modified by the
Berkheimer Memorandum4).

4 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”).
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Whether the additional elements (“one or more modules implemented
at least partially in hardware,” “shared network resource,” and “a user
interface for display”) are WURC activity is a question of fact. See
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether
something is well-understood, routine, and conventional to a skilled artisan .
. . is a factual determination.”).
On the record before us, Appellant has not shown that the claims on
appeal add a specific limitation beyond the judicial exception that is not
“well-understood, routine, and conventional” in the field, whether the
limitations are considered individually or as an ordered combination (see
MPEP § 2106.05(d)). Appellant does not point to any particular claimed
element, or combination of elements, that does not qualify as WURC. See
Appeal Br. 8–14.
In fact, as explained by the Examiner (Final Act. 7) Appellant’s
Specification demonstrates the WURC nature “one or more modules
implemented at least partially in hardware,” “shared network resource,” and
“a user interface for display” because it indicates they may be implemented
with generic devices. Spec. ¶¶ 153–166.
For these reasons, we conclude that claim 1, considered as a whole,
does not include an inventive concept.
Therefore, we sustain the Examiner’s § 101 rejection of independent
claim 1. For the reasons discussed above, we also sustain the Examiner’s
§ 101 rejection of dependent claims 2–12. We also sustain the Examiner’s
§ 101 rejection of independent claims 13 and 21 and dependent claims 14–
16 and 22–24, for which Appellant relies on the same arguments made with
respect to claim 1. Appeal Br. 8–14; Reply Br. 2–8.
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Rejection of Claims 1–16 and 21–24 under 35 U.S.C. § 103
The Examiner rejects independent claims 1, 13, and 21 as obvious
over the combination of O’Donnell and Vagell. Final Act. 8–10.
Specifically, the Examiner cites to O’Donnell as teaching the majority of
limitations of the claims, but relies on Vagell “to illustrate the functionality
of reviewers with and without approval authority in the same or similar
context.” Final Act. 10 (claims 1 and 21), 13–14 (claim 13). In addition, the
Examiner explains that a person of ordinary skill in the art “would have been
motivated” to modify O’Donnell to include the elements of Vagell “in order
to make sure that edits/modifications are approved by the designated
authority” using “well-known computer technologies in the same or similar
context.” Final Act. 10 (claims 1 and 21), 14 (claim 13). The Examiner
adds that “the content, as disclosed by O’Donnell, needs to be presented, as
disclosed by Vagell, in order for the steps disclosed by the application to be
performed in a meaningful way.” Ans. 7 (claims 1 and 21), 8 (claim 13).
Appellant argues that the Examiner has not sufficiently shown that the
combination of O’Donnell and Vagell render the claims obvious because the
Examiner does not adequately provide the requisite rational underpinning to
support the legal conclusion of obviousness (Appeal Br. 22–23 (claim 1), 25
(claim 13), 26–27 (claim 21); Reply Br. 13).
We agree with Appellant that the Examiner’s proffered rationale for
combining O’Donnell and Vagell falls victim to hindsight bias. Care must
be taken to avoid hindsight reconstruction by using ‘the patent in suit as a
guide through the maze of prior art references, combining the right
references in the right way so as to achieve the result of the claims in suit.”’
Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902, 907
(Fed. Cir. 1988) (quoting Orthopedic Equip Co. v. United States, 702 F.2d
Appeal 2019-001783
Application 14/630,442
18
1005, 1012 (Fed. Cir. 1983)). “The mere fact that references can be
combined or modified does not render the resultant combination obvious
unless the results would have been predictable to one of ordinary skill in the
art.” MPEP § 2143.01 (III) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007)). The use of the present application as a “road map” for
selecting and combining prior art disclosures is wholly improper. See
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)
(stating that “[t]he invention must be viewed not with the blueprint drawn by
the inventor, but in the state of the art that existed at the time”); see also In
re Fritch, 972 F.2d 1260 (Fed. Cir. 1992); MPEP § 2141.01(111); MPEP
§ 2142. Here, the Examiner appears to use Appellant’s application as a road
map to show that the prior art references teach the claimed invention—the
essence of hindsight. See Ans. 7 (“In this case, it becomes apparent that the
content, as disclosed by O’Donnell, needs to be presented, as disclosed by
Vagell, in order for the steps disclosed by the application to be performed in
a meaningful way.”) (emphasis added)). Other than to reproduce the claims
at issue, the Examiner does not explain why a person of ordinary skill in the
art would have been motivated to modify O’Donnell to incorporate approval
by a designated authority. Accordingly, we do not sustain the rejection of
claims 1, 13, and 21 as obvious over the combination of O’Donnell and
Vagell.
Because this determination resolves the § 103 rejection for all pending
claims, we need not address Appellant’s other arguments regarding
Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (explaining that an administrative agency may render a
decision based on “a single dispositive issue”).
Appeal 2019-001783
Application 14/630,442
19
CONCLUSION
We sustain the rejection of claims 1–16 and 21–24 under 35 U.S.C.
§ 101.
We reverse the rejection of claims 1–16 and 21–24 under 35 U.S.C.
§ 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s rejection of claims 1–16 and
21–24.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis/
Reference(s)
Affirmed Reversed
1–16, 21–24 101 Eligibility 1–16, 21–24
1–8, 13–16,
21–24
103 O’Donnell, Vagell 1–8, 13–16,
21–24
9–12 103 O’Donnell,
Vagell, Roman
9–12
Overall
Outcome
1–16, 21–24
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED