Paul Morinville

Patent Trials and Appeals Board

Dec 16, 2019

13244613 - (R) (P.T.A.B. Dec. 16, 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.
13/244,613 09/25/2011 Paul Morinville IBIG1110-7 9309
38844 7590 12/16/2019
Loveless Law Group, PLLC
4760 Preston Road
Ste 244-357
Frisco, TX 75034
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/16/2019 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):
eofficeaction@appcoll.com
ryan@lovelesslawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL V. MORINVILLE
____________________

Appeal 2018-002602
Application 13/244,613
Technology Center 3600
____________________

Before THU A. DANG, ELENI MANTIS MERCADER, and
MATTHEW J. McNEILL, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

I. STATEMENT OF THE CASE
On September 20, 2019, Appellant filed a Request for Rehearing
under 37 C.F.R. § 41.52 (hereinafter “Request”) for reconsideration of our
affirmance of the Examiner’s rejections of all pending claims under
35 U.S.C. § 101 and 35 U.S.C. § 103(a) in a Decision mailed July 24, 2019
(hereinafter “Decision”). See Req. Reh’g 2. The Decision affirmed the
Examiner’s rejections of claims 1–14, 17, and 19–22, which are all pending
claims, under 35 U.S.C. § 101, 35 U.S.C. § 112(b), and 35 U.S.C. § 103(a).
See Decision 16.

Appeal 2018-002602
Application 13/244,613

2
We have reconsidered our Decision in light of Appellant’s comments
in the Request. Req. Reh’g 2–12. We DENY the request to modify our
Decision. We incorporate our earlier Decision herein by reference. See 37
C.F.R. § 41.52(a)(1).

II. ISSUES
The issues we address in this Request are whether Appellant has
persuasively identified that the Board misapplied the relevant law or
misapprehended Appellant’s arguments set forth in the Appeal Brief in
affirming the Examiner’s findings and conclusions that:
1) the claims recite an abstract idea and do not amount to significantly
more than the abstract idea; and
2) Goodall teaches and suggests a “business process . . . including first
and secondary events,” wherein “while both the first event and the first one
of the secondary events are pending, . . . the first one of the secondary events
beginning processing [a] portion of information prior to completion of the
first event.” Claim 1.

III. ANALYSIS
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)(1); see Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI
2010) (precedential). A request for rehearing is not an opportunity to
express disagreement with a Board decision or rehash arguments previously
presented. See 37 C.F.R. § 41.52(a)(1). The proper course for an Appellant
dissatisfied with a Board decision is to seek judicial review, not to file a
Appeal 2018-002602
Application 13/244,613

3
request for rehearing to reargue issues that have already been decided. See
35U.S.C. §§ 141, 145.
1. Rejection under 35 U.S.C. § 101
In the Request, Appellant contends that “[t]he Board and the
Examiner’s characterization of the claims reveal a misapprehension of the
claims.” Req. Reh’g 2. In particular, Appellant contends that the
Examiner’s 101 analysis “does not address any of the specific limitation
recited in the claims.” Id. at 6. According to Appellant, “the Board did not
adopt the Examiner’s analysis, but rather his findings because there was no
analysis of the claims.” Id. at 7.
However, as set forth in our Decision, we did adopt the Examiner’s
analysis that “the claims recite a certain method of organizing human
activity.” Dec. 8 (emphasis added). In particular, in the Final Office Action,
the Examiner utilized the two-step analysis to determine subject matter
eligibility of the claims (Final Act. 4–11), and indicated that the claims are
directed to the abstract idea of “organizing human activities.” Final Act. 10.
Accordingly, we agreed and adopted the Examiner’s analysis of the claims
and the Examiner’s conclusion that the claims are directed to “[o]rganizing
or manipulating data or information or management of a workflow,” which
is similar to SmartGene (“comparing new and stored information and using
rules to identify list of options”). See Dec. 8 (citing Final Act. 10 (citing
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed.
Cir. 2014) (emphasis in original); also Cyberfone Systems, LLC v. CNN
Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014) (“using
categories to organize, store and transmit information”))). Thus, in our
Decision, we concluded that the claims “reciting a ‘business process’ that
Appeal 2018-002602
Application 13/244,613

4
initiates ‘the first event,’ . . . recite[] an abstract idea, and in particular, a
certain method of organizing human activity (commercial or legal
interaction).” Dec. 8.
Accordingly, although Appellant contends the Board fails to adopt
Examiner’s 101 analysis because the analysis “does not address any of the
specific limitation recited in the claims” (Req. Reh’g 6), the Examiner did
analyze the claims and concluded that the claims are directed to
“[o]rganizing or manipulating data or information or management of a
workflow.” Final Act. 10. Thus, contrary to Appellant’s contention (Req.
Reh’g 6), we did adopt the Examiner’s analysis of the claims in the
Decision. Dec. 8 (“[w]e adopt the Examiner’s findings that the claims recite
a certain method of organizing human activity . . . (commercial or legal
interaction)”).
As we specifically addressed in our Decision:
the claim language reciting a "business process" that initiates
"the first event," initiates "a first one of the secondary events,"
makes "at least a portion of information processed by the first
event available to the first one of the secondary events," and
completes "one or more of the first event and the first one of the
secondary events" (see generally claims 1, 3 and 12) represents
a commercial or legal interaction, an abstract idea.

Dec. 8.
Appellant also contends that “the claim recites additional elements
that integrate the exception into practical application” (Req. Reh’g 9).
Although Appellant does not identify the “additional elements,” Appellant
contends that, under step 2A of the two-prong test, Examiners should
“ensure that they give weight to all additional elements, whether or not
they are conventional, when evaluating whether a judicial exception has
Appeal 2018-002602
Application 13/244,613

5
been integrated into a practical application.” Id. at 10. According to
Appellant, “[w]hen tasked with a Step 2A analysis to consider the claims as
to the whole elements, the Examiner cited none.” Id. Appellant then
contends that “the Examiner . . . does not indicate the features claimed were
well-understood, routine, conventional activity.” Id. at 11.
We note that Appellant’s contentions are directed to the Examiner’s
analysis, but do not identify how the Board misapplied the relevant law or
misapprehended Appellant’s arguments. Req. Reh’g 9–11. Nevertheless,
we do not find Appellant’s contentions regarding the Examiner’s analysis
persuasive.
In particular, as set forth in the Final Office Action, the Examiner
conluded that “steps 1-6 are well-known business process management that
monitors events and process exceptions to complete the process using a
computer,” wherein “[t]he additional limitations . . . appear to improve the
business process management in general but not in a significant way.” Final
Act. 12. According to the Examiner, the claims include “recitation of
generic computer structure that serves to perform generic computer
functions.” Id. Contrary to Appellant’s contention that “the Examiner . . .
does not indicate the features claimed were well-understood, routine,
conventional activity” (Req. Reh’g 11), the Examiner did indeed conclude
that the claimed generic computer structure’s functions “are well-
understood, routine, and conventional activities previously known to the
pertinent industries.” Final Act. 13. That is, the Examiner considered the
claims as to the whole elements, giving weight to all elements, and
concluded the steps to be “well-known business process management,”
Appeal 2018-002602
Application 13/244,613

6
wherein the additional limitations do not improve the process in a
“significant way.” Id. 12–13.
Thus, as set forth in our Decision, we agreed with the Examiner and
concluded that the claims “recite a broadly defined ‘business process’ to
manage completion of first and second events,” wherein “[t]he provision of
interaction between business processes . . . does not in and of itself improve
a computer facilitating the business processes or improve the technological
field related to the business processes.” Dec. 10. Further, we agreed that the
additional recitation of “‘a computer’ does not integrate the abstract idea into
a practical application.” Id.
Accordingly, as set forth in our Decision, we agreed with the
Examiner that the claims are directed to patent-ineligible subject matter.
2. Rejection under 35 U.S.C. § 103
Appellant contends that “the Examiner did not create a prima facie
case of obviousness” because “the Examiner either was pointing to Figure 1
of Goodall” or “pointing to his own figure, which wasn’t prior art and can’t
be relied upon.” (Req. Reh’g 11–12). Appellant then contends that “[t]he
Board doesn’t clarify which argument of Examiner’s it adopted.” Id. at 12.
Although Appellant concedes that “the Board points to two purported events
in Goodall,” Appellant contends that “the claims also require a particular
connectedness between such events.” Id.
However, as set forth in our Decision, we agreed with the Examiner’s
finding (to which Appellant does not contest) that “Goodall teaches an
order-to-delivery event for a prescription and a label printing event that
occurs between the ordering and the delivery of the prescription.” Dec. 15.
Thus, contrary to Appellant’s contention that “[t]he Board doesn’t clarify
Appeal 2018-002602
Application 13/244,613

7
which argument of Examiner’s it adopted” (Req. Reh’g 12), the Decision
was clear as to which of the Examiner’s findings we agreed with and
adopted. Dec. 15. In fact, Appellant concedes that we pointed to particular
“events in Goodall” relied on by the Examiner. Req. Reh’g 12.
Furthermore, we are unpersuaded by Appellant’s contention that the
Examiner erred in relying on Goodall to teach and suggest the claimed
“events” which “require a particular connectedness between such events.”
Req. Reh’g 12. As set forth in our Decision, we found no error with the
Examiner’s finding that “Goodall teaches an order-to-delivery event [(i.e.,
“first event,”)] for a prescription and a label printing event [, i.e., “secondary
event,”] that occurs between the ordering and the delivery of the
prescription.” Dec. 15. That is, Goodall’s “first event” and “second event”
have a particular connectedness therebetween. Id.
Accordingly, as set forth in our Decision, we agreed with the
Examiner that Goodall teaches and/or suggests the contested limitations of
the claims. Id.
As set forth above, Appellant’s Request does not persuade us of any
points we misapprehended or overlooked in the Decision, or that we
misapplied the relevant law. We therefore maintain our affirmance of the
Examiner’s rejections of claims 1–14, 17, and 19–22 under 35 U.S.C. § 101,
35 U.S.C. § 112(b), and 35 U.S.C. § 103(a).

IV. CONCLUSION AND DECISION
We have considered the arguments raised by Appellants in the
Request for Rehearing. Although we have considered our prior Decision in
Appeal 2018-002602
Application 13/244,613

8
light of the Request for Rehearing, we decline to modify our prior Decision
in any respect.
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1–14, 17,
19–22
101 Eligibility 1–14, 17,
19–22

1–14, 17,
19–22
112(b) indefinite 1–14, 17,
19–22

1–14, 17,
19–22
103(a) Goodall 1–14, 17,
19–22

Overall
Outcome
1–14, 17,
19–22

Final outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–14, 17,
19–22
101 Eligibility 1–14, 17,
19–22

1–14, 17,
19–22
112(b) indefinite 1–14, 17,
19–22

1–14, 17,
19–22
103(a) Goodall 1–14, 17,
19–22

Overall
Outcome
1–14, 17,
19–22

REHEARING DENIED