Andrea Waidmann et al.

Patent Trials and Appeals Board

Sep 16, 2019

13292964 - (D) (P.T.A.B. Sep. 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.
13/292,964 11/09/2011 Andrea Waidmann 091066-004300US-0823183 7283
20350 7590 09/16/2019
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
ZIMMERMAN, MATTHEW E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
09/16/2019 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREA WAIDMANN, IRINA THOSS, FREDDIE GEIER,
ANDREAS GEIER, MICHAEL HERMANN, and THOMAS HARTMANN

___________

Appeal 2017-010037
Application 13/292,964
Technology Center 3600
____________

Before ERIC B. CHEN, JAMES B. ARPIN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 34–52. Claims 1–33 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

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STATEMENT OF THE CASE
Appellant’s1 invention relates to digital reading, in particular, the
consumer’s need for selecting, collecting, storing, and managing digital
content. (Spec., Abstract.)
Claim 34 is exemplary:
34. A method for providing content of interest to a
user, comprising the steps:
providing for a display, by a touch sensitive display, of
content provided by a content database;
receiving, by a processor, selected content of interest
from the displayed content, wherein said selected content of
interest is selected by a user using the touch sensitive display as
a user interface;
extracting text out of the content of interest and creating,
by the processor, a semantic index of the extracted text of the
selected content of interest, taking into account synonyms and
word collocations, wherein creating the semantic index of the
extracted text comprises calculating, by the processor, a first
vector representing the semantic index in a multidimensional
vector space, wherein the dimension of the vector space is equal
to a number of words to be considered out of the text extracted
from the content of interest, and adding further information
related to the selected content of interest;
calculating, by the processor, a number of further vectors
each representing a further semantic index in a document
contained in a content database, wherein the further vectors are
associated with further semantic indices, wherein each further
vector is a vector in a multidimensional vector space, wherein
an element of each further vector is zero if a word
corresponding to said element does not occur in the document,
and an element of said vector contains a non-zero value

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Andrea
Waidmann, et al. (App. Br. 2.)
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corresponding to counted occurrence of the word in the
document; and
providing further content of interest from the content
provided by the content database based on a semantic index of
the further content of interest by comparing the further semantic
indices of the further content of interest to the semantic index of
the selected content of interest by comparing the first vector
calculated for the content of interest to each of the further
vectors calculated for each of the documents in the content
database, and also by using the further information related to
the selected content of interest.
Claims 34–52 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter.

ANALYSIS
We are persuaded by Appellant’s arguments (App. Br. 8) that the
Examiner has not satisfied the initial burden of demonstrating that
independent claim 34 is directed to patent-ineligible subject matter under 35
U.S.C. § 101.
The Examiner determined that: (i) “the claims [are directed] to the
concept of determining and providing additional content of interest which is
an idea of itself as it can be performed by a human using a pen and paper,”
as in Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed.
Cir. 2011); and (ii)
the claims are directed to a formula for locating content of
interest which is also an abstract idea and is similar to the
abstract idea of determining the optimal number of visits by a
business represented to a client as recited in In re Maucorps
[609 F.2d 481 (CCPA 1979)] as both deal with a determination
of specific content of interest.
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(Final Act. 3 (emphases omitted); see also Ans. 2.) We agree that the
Examiner has not satisfied the proper burden for a prima facie case.
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 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, 67 (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
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
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 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. at 191 (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 Office recently published revised guidance on the application of
§ 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84
Fed. Reg. 50 (Jan. 7, 2019). Under that 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 (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
2019)).
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 are 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 84 Fed. Reg. at 56.
Although the Examiner generally states that independent claim 34 is
“an idea of itself as it can be performed by a human using a pen and paper”
and “similar to the abstract idea of determining the optimal number of visits
by a business represented to a client,” with citations to Cybersource and
Maucorps, respectively (see Final Act. 3), these statements neither: (a)
identify the specific limitations in the claims under examination that the
Examiner believes recites an abstract idea; nor (b) demonstrate the identified
limitations fall within the subject matter groupings of abstract ideas of
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mathematical concepts, certain methods of organizing human activity, or
mental processes. See 84 Fed. Reg. at 56. In particular, the Examiner
neither accounts for all the limitations recited in claim 34, nor adequately
articulates why the claimed concepts are analogous to the facts of
Cybersource and Maucorps. For example, the Examiner has not adequately
addressed the limitations
a first vector representing the semantic index in a
multidimensional vector space, wherein the dimension of the
vector space is equal to a number of words to be considered out
of the text extracted from the content of interest, and adding
further information related to the selected content of interest
and
wherein the further vectors are associated with further semantic
indices, wherein each further vector is a vector in a
multidimensional vector space, wherein an element of each
further vector is zero if a word corresponding to said element
does not occur in the document, and an element of said vector
contains a non-zero value corresponding to counted occurrence
of the word in the document.
Accordingly, we are persuaded by Appellant’s arguments that:
Appellants submit that the Examiner has failed to establish
a prima facie case of unpatentability under 35 U.S.C. 101 for
another reason. Specifically, with respect to any of the alleged
abstract ideas, the Examiner does not explain why the abstract
ideas correspond to a concept that the courts have identified as
an abstract idea.
(App. Br. 8.)
Thus, we do not sustain the rejection of independent claim 34 under
35 U.S.C. § 101. Claims 35–47 depend from independent claim 34. We do
not sustain the rejection of claims 35–47 under 35 U.S.C. § 101 for the same
reasons discussed with respect to independent claim 34.
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Independent claim 48 recites limitations similar to those discussed
with respect to independent claim 34. (App. Br. 32.) We do not sustain the
rejection of claim 48, as well as dependent claims 49–52, for the same
reasons discussed with respect to claim 34.

DECISION
The Examiner’s decision rejecting claims 34–52 under 35 U.S.C.
§ 101 is reversed.
REVERSED