Waller, Marquis G. et al.

Patent Trials and Appeals Board

Jan 28, 2020

13428322 - (D) (P.T.A.B. Jan. 28, 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.
13/428,322 03/23/2012 Marquis G. Waller 8185P142 9576
76073 7590 01/28/2020
InfoPrint Solutions/ Blakely
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
RODRIGUEZGONZALE, LENNIN R
ART UNIT PAPER NUMBER
2675
NOTIFICATION DATE DELIVERY MODE
01/28/2020 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):
eofficeaction@appcoll.com
mark.watson@jwmhlaw.com
paralegals@jwmhlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARQUIS G. WALLER, LINDA S. LIEBELT,
THOMAS N. BILAN, and IOANA C. NAGY1
____________________

Appeal 2019-001335
Application 13/428,322
Technology Center 2600
____________________

Before ROBERT E. NAPPI, JOHN A. EVANS, and
SCOTT B. HOWARD, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3, 6 through 12, 14, and 16 through 19. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Ricoh Company Ltd. is the real party in
interest. Appeal Br. iii.
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INVENTION
The invention is directed to a printing software product, for use on a
print server, that generates an object including one or more attributes
defining work expected to be received in a printing system, assigns the
object to an input device associated with a folder designated to receive the
work, monitors the received work and provides a notification if the received
work does not match the attributes of the object. Spec., Abstract. Claim 1 is
reproduced below.
1. An article of manufacture comprising a non-transitory
machine-readable medium including data that, when accessed
by a machine, cause the machine to perform operations
comprising:
assigning an object to an input device associated with a
workflow folder designated to determine one or more print jobs
received at the workflow folder, wherein the object includes
one or more attributes defining a set of rules for print jobs
expected to be received the workflow folder, and the object
attributes have a scheduling attribute including a value that
indicates a number of print jobs expected to be received in a
time specified by the scheduling attribute;
monitoring print jobs received at the workflow folder via
the input device;
transmitting a print request for the one or more print jobs
upon determining that the received print jobs matches the object
attributes; and
providing a notification upon determining that the
received print jobs do not match the object attributes, wherein
the notification is provided when the number.

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EXAMINER’S REJECTION2
The Examiner rejected claims 1, 3, 6 through 12, 14, and 16 through
19 under 35 U.S.C. § 101 for being directed to patent-ineligible subject
matter. Final Act. 3–8.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of all the claims under 35 U.S.C. § 101. Patent
eligibility under § 101 is a question of law that may contain underlying
issues of fact. “We review the [Examiner’s] ultimate conclusion on patent
eligibility de novo.” Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335,
1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1365
(Fed. Cir. 2018)); see also SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d
1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn to patent-eligible
subject matter is an issue of law that we review de novo.”)

PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new

2 Throughout this Decision we refer to the Appeal Brief filed May 14, 2018
(“Appeal Br.”); the Reply Brief filed November 30, 2018 (“Reply Br.”); the
Final Office Action mailed January 8, 2018 (“Final Act.”); and the
Examiner’s Answer mailed November 16, 2018 (“Ans.”).
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and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.

There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012).
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. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). 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, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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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.”).
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. (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.
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The United States Patent and Trademark Office “USPTO” published
revised guidance on the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”). Under that guidance, we first determine 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 MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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 Memorandum.
DISCUSSION
The Judicial Exception
The Examiner determines the claims are not patent eligible because
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they are directed to a judicial exception without reciting significantly more.
Final Act. 3–8. Specifically, the Examiner determines the claim recites
“steps describe the concept of managing a workflow, which corresponds to
concepts identified as abstract ideas by the courts, such as collecting,
analyzing, and displaying certain results of the collection and analysis in
Electric Power Group, or data recognition in Content Extraction.” Final
Act. 4 (citing Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016); Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat. Ass’n, 776 F.3d 1343 (Fed. Cir. 2014)).
Appellant does not contest that the claims recite an abstract idea but
instead asserts that the claims amount to significantly more than an abstract
idea, as “claims provide a solution to a problem recognized in print
production workflow management.” Appeal Br. viii.
We concur with the Examiner’s uncontested finding that
representative claim 1 sets forth an abstract concept, a mental process.
Representative claim 1 recites: “assigning an object to an input device
associated with a workflow folder . . . wherein the object includes one or
more attributes defining a set of rules for print jobs expected to be received
in the workflow folder”3 (a data gathering step) this step is similar to a
mental step a supervisor performs in managing the expecting work from
various people or process; “monitoring print jobs received at the workflow
folder” (a data gathering or observation element) and is similar to a

3 Appellant’s Specification identifies an input device as software to monitor
folders to determine if a file is input. Specification ¶ 23. Further objects are
to provide notification of the input devices. Id. Thus they are merely data
gathering elements.
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supervisor checking to see if an expected job is done; and “transmitting a
print request for the one or more print jobs” and “providing notification
upon determination that the receive print jobs do not match” (are a means of
communicating the result of the analysis); similar to the supervisor signing
off on the job being done or notification that the job is not done. We
consider these limitations to recite an abstract mental process.
These steps can be performed in the human mind as they are merely
gathering data, analyzing the data and displaying the results, and thus we
agree with the Examiner that they recite a concept similar to that at issue in
Electric Power Group. The claims at issue in Electric Power Group recited
several steps of receiving data from various sources, detecting and analyzing
the data and displaying the data. Elec. Power Grp., 830 F.3d at 1351–52.
The court stated “we have treated collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.” Id. at 1353; see also
Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed.
Cir. 2011) (claim to collecting and comparing known information
determined to be steps that can be practically performed in the human mind);
Content Extraction, 776 F.3d at 1347 (“The concept of data collection,
recognition, and storage is undisputedly well-known. Indeed, humans have
always performed these functions.”); October 2019 Update: Subject Matter
Eligibility 7 (discussing Electric Power Group and mental processes),
available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf. Thus, we concur with the Examiner and consider
representative claim 1 to recite an abstract concept.

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Integration of the Judicial Exception into a Practical Application
Appellant argues that the claims recite significantly more than the
abstract concept of gathering analyzing and displaying data and solve a
problem in the field of high speed print production. Appeal Br. viii. Reply
Br 2. Appellant argues:
Appellant’s claims provide a solution to a problem recognized
in print production workflow management. In high speed print
production, a workflow often includes thousands of print jobs.
However, there may be occurrences in which one or more of the
print jobs may not be received, and there is no notification of
them not being received. As a result, it may be necessary to
reprocess some print jobs that are lost (e.g., not received).
Appellant’s claims recite a process of solving this
problem by monitoring print jobs received at a workflow folder,
transmitting print request for one or more print jobs upon
determining that the received print jobs match the object
attributes and providing a notification upon determining that the
received print jobs do not match the object attributes (e.g.,
indicating that corresponding jobs have not been received).
Thus, the claimed process recites much more than merely
monitoring received print jobs, as asserted by the Examiner.
See Advisory Action at Page 2, lines 12-13. Instead, the
present claims recite a specific process that provides for an
inventive workflow management solution to a problem
recognized in high-speed print production environments.

Appeal Br. viii, ix.
The Examiner finds that the additional claim limitations do not recite
an improvement to a technical field or a technology. Final Act. 5, Answer 4.
We are not persuaded of error by Appellant’s arguments. As
discussed above, we concur with the Examiner that representative claim 1
recites an abstract idea. Further, Appellant has not persuaded us that the
claim is drawn to a practical application of the abstract idea as we do not
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find that the claim recites an improvement to technology or otherwise tied to
technology. Initially, we note we agree with the Examiner’s statement “the
solution to the problem of ‘it may be necessary to reprocess some print jobs
that are lost’ (as applicant alleges) is not included in the claims.” Answer 4.
Rather, representative claim 1 just recites providing notification if the
number of received print jobs in the time specified by the scheduling
attribute does not match the value. Further, Appellant’s Specification
identifies the purpose of the invention as to notify the user when expected
work is not received. Specification ¶¶ 4, 6. Thus, Appellant’s arguments
are not commensurate with the scope of the claim or supported by the
Specification. Further, we do not consider the claim to recite an
improvement to a technological field. The Specification does not identify
that the method changes the operation of a computer to improve the function
of the computer, but rather to improve the abstract concepts of gathering,
analyzing and displaying data (notifying the user). Thus, the claims, when
interpreted in light of the Specification, merely recite use of a computer as a
tool to implement a process of gathering, analyzing and displaying data (an
abstract idea). See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1327 (Fed. Cir. 2017) (“Unlike Enfish, [the claim] does not claim a software
method that improves the functioning of a computer . . . [but] claims a
‘process that qualifies as an “abstract idea” for which computers are invoked
merely as a tool.’” (citation omitted)). Thus, Appellant’s argument has not
persuaded us the Examiner erred in not considering the claim as an
improvement to a technical field or a technology.

Significantly More than the Abstract Idea
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Under the Memorandum, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d) and Berkheimer v. HP
Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)); or, simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Appellant argues that the Examiner erred as “none of the steps in the
recited claims could reasonably be construed as merely using existing
technology to recognize and store data from specific data fields.” Appeal.
Br. ix.
We are not persuaded of error in the Examiner’s rejection by this
argument and do not find that the representative claim recites additional
elements, beyond the judicial exception, that are not well-understood,
routine, or conventional. Representative claim 1 recites the additional
element of a non-transitory machine readable medium, and an input device.
The Examiner has found, that these elements do not amount to significantly
more and are merely well-understood, routine and conventional activities.
Final Act. 4–5. Appellant’s Specification identifies the machine readable
medium generically as any of a plurality different mediums. Specification
¶ 39. Further, Appellant’ Specification discusses input devices as being both
generic computer components such as a keyboard, mouse etc. and as
software to gather data. Specification ¶¶ 15, 23. Thus, Appellant’s
Specification supports the Examiner’s finding that the additional elements
are well known conventional elements. Further, the activities of assigning
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an object, and monitoring print jobs, as discussed above are merely data
collection steps which are conventional to computer technology MPEP
§ 2106.05(d) II (iv). Similarly the transmitting step is also conventional to
computer technology, see MPEP § 2106.05(d) II (i). The providing
notification step broadly is a step of displaying data as conventional. See
Electric Power Grp., 830 F.3d at 1355.
Thus, we find ample evidence to support the Examiner’s finding that
the elements of the claim, in addition to the abstract concept, represent well-
understood, routine and conventional activities.
In summary, Appellant’s arguments have not persuaded us of error in
the Examiner’s determination that representative claim 1 is directed to an
abstract idea; a mental process. Further, Appellant’s arguments have not
persuaded us that the Examiner erred in finding that the claim is not:
directed to an improvement in the functioning of the computer or to other
technology or other technical field; directed to a particular machine; directed
to performing or affecting a transformation of an article to a different state or
thing; directed to using a judicial exception in some meaningful way beyond
linking the exception to a particular technological environment such that the
claim as a whole is more than a drafting effort to monopolize the judicial
exception. For these reasons, we are unpersuaded that the claim recites
additional elements that integrate the judicial exception into a practical
application. See Memorandum, 84 Fed. Reg. at 54. Accordingly, we sustain
the Examiner’s rejection, under 35 U.S.C. § 101, of representative claim 1
and claims 3, 6 through 12, 14, and 16 through 19 grouped with claim 1.
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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3, 6–12,
14, 16–19
101 Eligibility 1, 3, 6–12, 14,
16–19

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