Social Dental, LLC

Patent Trials and Appeals Board

May 27, 2020

2019005655 (P.T.A.B. May. 27, 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.
14/334,423 07/17/2014 Thomas Steelman Clark 85283.0003 2114
57600 7590 05/27/2020
HOLLAND & HART
222 South Main Street, Suite 2200
P.O. Box 11583
Salt Lake City, UT 84110
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
05/27/2020 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):
PATENTDOCKET@HOLLANDHART.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS STEELMAN CLARK
____________

Appeal 2019-005655
Application 14/334,423
Technology Center 3600
____________

Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MOHANTY, 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 and 3–19. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

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 Social Dental, Inc.
(Appeal Br. 3).
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Application 14/334,423

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CLAIMED SUBJECT MATTER
The Appellants’ claimed invention relates to obtaining consent to use
media (Spec., para. 4). Claim 1, reproduced below with the italics added, is
representative of the subject matter on appeal.

1. A computer-implemented method for obtaining digital consent
to use dental related media, comprising:
generating, via a processor of a mobile computing device,
dental related media related to at least one person in a dental office
setting using a camera of the mobile computing device, the mobile
computing device including the camera and a display, the media
including at least one of a digital image of the at least one person, or a
video clip of the at least one person, or an audio recording of the at
least one person, or any combination thereof;
upon generating the media, displaying, via the processor, a
consent form on the display, the consent form being for the at least
one person to provide a digital consent for a third party to use the
media;
receiving, via the processor, the at least one person's digital
consent on the consent form shown on the display, wherein the media
is released for use by the third party only upon receiving the digital
consent;
linking, via the processor, the media to the consent form with
the digital consent, wherein the linking comprises assigning a same
electronic identifier to both the media and to the consent form with the
digital consent;
delivering, via the processor, the consent form with the digital
consent to a storage location;
presenting on the display, via the processor, at least one social
media site option for posting the media;
receiving on the display, via the processor, at least one social
media site selection; and
delivering, via the processor, the media to the at least one
selected social media site using the media generating device.

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THE REJECTIONS
The following rejections are before us for review:
1. Claims 1 and 3–19 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1, 5–13, and 5–19 are rejected under 35 U.S.C. § 103 as
being unpatentable over Padmanabhan (US 2013/0117692, Al pub. May 9,
2013) and Gauss (US 2015/0332318, Al pub. Nov. 19, 2015).2
3. Claims 3, 4, and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Padmanabhan, Gauss, and Brink (US 2012/0035949 Al,
pub. Feb. 9, 2012).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.3

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 11–14). The
Appellants argue further that the claim is “significantly more” than the
alleged abstract idea (Appeal Br. 14–18; Reply Br. 4–6).

2 The rejections made under 35 U.S.C. § 103 were made in the Non-Final
Action mailed December 28, 2017 at pages 5–10. The Answer did not list
the rejections as being withdrawn, and thus these rejections are considered
still pending.
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 3–5; Ans. 3–8).
We agree with the Examiner. 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 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. E.g., 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 Supreme 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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
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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
Supreme 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 Supreme 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.”).
The PTO published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
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monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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 Guidance.
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 (citation 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. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Specification at paragraph 4 states that the invention generally
relates to obtaining consent to use media. Here, the Examiner has
determined that the claim sets forth receiving digital consent, linking the
media consent with the digital consent, and displaying the media on the
social media site and which is drawn to an abstract concept (Ans. 3, 4). We
substantially agree with the Examiner. We determine that the claim sets
forth the subject matter in italics above which describes the concept of
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generating a consent form and obtaining consent for using media, and then
publishing the media which is a certain method of organizing human
activity, i.e. a judicial exception. See Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing
it, and displaying results from certain results of the collection and analysis
was held to be an abstract idea. See In re TLI Comm. LLC Patent Litig., 823
F.3d 607, 612 (Fed. Cir. 2016) (in which “classifying and storing digital
images in an organized manner” was held to be an abstract concept). In
Intellectual Ventures I LLC v. Capital One Financial, 850 F.3d 1332, 1340
(Fed. Cir. 2017) it was held that collecting, displaying, and manipulating
data was directed to an abstract idea.
We next determine whether the claim recites additional elements to
integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Here, the claim does not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claim imposes a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort to monopolize the judicial exception.
For example, in claim 1 the steps of [1] “generating . . . dental related
media;” [2] “upon generating the media, displaying . . . a consent form;” [3]
“receiving . . . at least one person's digital consent on the consent form;” [4]
“linking . . . the consent form with the digital consent;” [5] “delivering . . .
the consent form with the digital consent to a storage location;”
[6] “presenting . . . at least one social media site option for posting the
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media;” [7] “receiving . . . at least one social media site selection;” and
[8] “delivering . . . the media to the at least one selected social media site”
are merely steps performed by a generic computer that do not improve
computer functionality. That is, these recited steps [1]–[8] “do not purport
to improve the functioning of the computer itself” but are merely generic
functions performed by a conventional processor. Likewise, these same
steps [1]–[8] listed above do not improve the technology of the technical
field and merely use generic computer components and functions to perform
the steps. Also, the recited method steps [1]–[8] above do not require a
“particular machine” and can be utilized with a general purpose computer,
and the steps performed are purely conventional. In this case the general
purpose computer is merely an object on which the method operates in a
conventional manner. Further, the claim as a whole fails to effect any
particular transformation of an article to a different state. The recited
steps [1]–[8] fail to provide meaningful limitations to limit the judicial
exception and rather are mere instructions to apply the method to a generic
computer.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MPEP §§ 2106.05(a)–(c) and
(e)–(h).
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Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the claim elements both individually and as an ordered
combination fails to add subject matter beyond the judicial exception that is
not well-understood, routine, and conventional in the field. Rather the claim
uses well-understood, routine, and conventional activities previously known
in the art and they are recited at a high level of generality.
The Specification at paragraphs 38 and 73, for example, describes
using conventional computer components, such as a smartphone, controller,
processor, and memory, in a conventional manner. The claim specifically
includes recitations for computers to implement the method, but these
computer components are all used in a manner that is well-understood,
routine, and conventional in the field. Here, the claimed generic computer
components, which are used to implement the claimed method, are well
understood, routine, or conventional in the field. Here, the claim has not
been shown to be “significantly more” than the abstract idea.
For the above reasons, the rejection of claim 1 is sustained. The
Appellant has provided the same arguments for the remaining claims which
are drawn to similar subject matter, and the rejection of these claims is
sustained for the same reasons given above.

Rejections under 35 U.S.C. § 103
The Appellants have not provided any arguments for the rejections
made under 35 U.S.C. § 103. Accordingly, these rejections are summarily
affirmed.
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CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 101 and 35 U.S.C. § 103 as listed
in the Rejections section above.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–19 101 Eligibility 1, 3–19
1, 5–13, 15–
19
103 Padmanabhan,
Gauss
1, 5–13, 15–
19

3, 4, 14 103 Padmanabhan,
Gauss, Brink
3, 4, 14
Overall
Outcome
1, 3–19

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