David Gerard. Ledet

Patent Trials and Appeals Board

Mar 4, 2020

13790439 - (D) (P.T.A.B. Mar. 4, 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.
13/790,439 03/08/2013 David Gerard Ledet DL0412A 1639
84646 7590 03/04/2020
Proactive Patents LLC
955 Garden Park Drive
Ste 230
Allen, TX 75013
EXAMINER
DURANT, JONATHAN W
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
03/04/2020 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
mzarinelli@proactivepatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID GERARD LEDET
Appeal 2018-003288
Application 13/790,439
Technology Center 3600
Before ALLEN R. MacDONALD, MICHAEL J. ENGLE, and
IFTIKHAR AHMED, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Open Invention Network LLC (“Appellant”1) appeals under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1–20, which are all
of the claims pending in the application. 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). Appellant identifies the real party in interest as Open
Invention Network LLC. Appeal Br. 3.
Appeal 2018-003288
Application 13/790,439

2
TECHNOLOGY
The claims relate to sending a broadcast message to different tiers of
users and summarizing the responses. Claim 1 is illustrative and reproduced
below with the limitation at issue emphasized:
1. A method, comprising:
identifying, by at least one mobile processor, a group of
participants to receive at least one broadcast message transmitted
from a wireless device;
establishing, by said at least one mobile processor, a first
tier of participants among the group of participants and
designating at least one participant of the group of participants
as part of the first tier of participants, by said at least one mobile
processor establishing said first tier of participants is based on a
first tier selection criteria based on a relational proximity, a
correspondence type and a correspondence frequency of said first
tier of participants;
establishing, by said at least one mobile processor, at least
one additional tier of participants among the group of
participants and designating at least one additional participant of
the group of participants as part of a second tier of participants,
said at least one mobile processor establishing at least one
additional tier of participants is based on at least one additional
tier selection criteria based on at least one of the relational
proximity, the correspondence type and the correspondence
frequency of said at least one additional tier of participants;
transmitting, by a transmitter, said at least one broadcast
message from the wireless device to a plurality of computing
devices corresponding to said first tier of participants and the at
least one additional tier of participants; and
transmitting, by said transmitter, additional data to at least
one member of said first tier of participants based on predefined
relationship data identifying a relationship between the at least
one member of the first tier of participants and said wireless
device,
Appeal 2018-003288
Application 13/790,439

3
wherein, based on analysis of responses received to the at
least one broadcast message, at least one summary message is
sent to the wireless device containing one of a most popular
response, a most important response, and a most concise
information received based on all received responses.
REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 for claiming patent-
ineligible subject matter. Final Act. 7.
Claims 1–5, 7–12, and 14–19 stand rejected under 35 U.S.C. § 103(a)
as obvious over Bird (US 2008/0278740 A1; Nov. 13, 2008), Vance
(US 2010/0246789 A1; Sept. 30, 2010), Turski (US 2011/0010182 A1; Jan.
13, 2011), and Bagga (US 2005/0262214 A1; Nov. 24, 2005). Final Act. 11.
Claims 6, 13, and 20 stand rejected under 35 U.S.C. § 103(a) as
obvious over Bird, Vance, Turski, Bagga, and Stovicek (US 2009/0313555
A1; Dec. 17, 2009). Final Act. 18–19.
Claims 1–5, 7–12, and 14–19 stand rejected for non-statutory double
patenting over claims 1, 8, and 15 of U.S. Patent No. 9,313,623 B1 (Apr. 12,
2016) (“the ’623 patent”) in view of Bird, Vance, Turski, and Bagga. Final
Act. 3–4.
Claims 6, 13, and 20 stand rejected for non-statutory double patenting
over claims 1, 8, and 15 of the ’623 patent in view of Bird, Vance, Turski,
Bagga, and Stovicek. Final Act. 5.
ISSUES
1. Did the Examiner err in concluding that claim 1 is directed to
patent-ineligible subject matter without significantly more?
2. Did the Examiner err in finding Bagga teaches or suggests
“based on analysis of responses received to the at least one broadcast
Appeal 2018-003288
Application 13/790,439

4
message, at least one summary message is sent to the wireless device
containing one of a most popular response, a most important response, and a
most concise information received based on all received responses,” as
recited in claim 1?
ANALYSIS
§ 101
35 U.S.C. § 101 defines patentable subject matter, but the Supreme
Court has “long held that this provision contains an important implicit
exception” that “[l]aws of nature, natural phenomena, and abstract ideas are
not patentable.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 70 (2012) (quotation omitted). “Eligibility under 35 U.S.C. § 101 is
a question of law, based on underlying facts.” SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). To determine patentable subject
matter, the Supreme Court has set forth a two part test.
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). A
court must be cognizant that “all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas” (Mayo, 566 U.S. at 71), and “describing the claims at . . . a high level
of abstraction and untethered from the language of the claims all but ensures
that the exceptions to § 101 swallow the rule.” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “we evaluate the
focus of the claimed advance over the prior art to determine if the character
of the claim as a whole, considered in light of the specification, is directed to
excluded subject matter.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d
Appeal 2018-003288
Application 13/790,439

5
1084, 1092 (Fed. Cir. 2019) (quotation omitted). “The inquiry often is
whether the claims are directed to ‘a specific means or method’ for
improving technology or whether they are simply directed to an abstract
end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed.
Cir. 2017).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “consider 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, 566 U.S.
at 79, 78). The Supreme Court has “described step two of this analysis as a
search for an ‘inventive concept’—i.e., 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.” Id. at
217–18 (quotation omitted). However, “[t]he abstract idea itself cannot
supply the inventive concept, no matter how groundbreaking the advance.”
Trading Techs., 921 F.3d at 1093 (quotation omitted).
In 2019, the U.S. Patent & Trademark Office published revised
guidance on the application of § 101. USPTO, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”);
USPTO, October 2019 Update: Subject Matter Eligibility, available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (“Oct. Update”). Under that guidance, we look to whether the claim
recites
Appeal 2018-003288
Application 13/790,439

6
(1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
(c) mental processes, such as an observation or evaluation
performed in the human mind;
(2) any additional limitations such that the claim as a whole
integrates the judicial exception into a practical application (see
MPEP § 2106.05(a)–(c), (e)–(h)); and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)).
See Guidance 52, 55, 56.
USPTO Step 2A, Prong One
Here, claim 1 recites:
identifying . . . a group of participants to receive at least
one broadcast message . . . ;
establishing . . . a first tier of participants among the group
of participants and designating at least one participant of the
group of participants as part of the first tier of participants, . . .
establishing said first tier of participants is based on a first tier
selection criteria based on a relational proximity, a
correspondence type and a correspondence frequency of said first
tier of participants;
establishing . . . at least one additional tier of participants
among the group of participants and designating at least one
additional participant of the group of participants as part of a
second tier of participants, . . . establishing at least one additional
tier of participants is based on at least one additional tier
Appeal 2018-003288
Application 13/790,439

7
selection criteria based on at least one of the relational proximity,
the correspondence type and the correspondence frequency of
said at least one additional tier of participants;
transmitting, by a transmitter, said at least one broadcast
message . . . to a plurality . . . corresponding to said first tier of
participants and the at least one additional tier of participants;
and
transmitting, by said transmitter, additional data to at least
one member of said first tier of participants based on predefined
relationship data identifying a relationship between the at least
one member of the first tier of participants and [the sender],
wherein, based on analysis of responses received to the at
least one broadcast message, at least one summary message is
sent . . . containing one of a most popular response, a most
important response, and a most concise information received
based on all received responses.
“[W]ith the exception of generic computer-implemented steps, there is
nothing in the claims themselves that foreclose them from being performed
by a human, mentally or with pen and paper.” Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Here, other than the
generic computer components discussed below (specifically, the “mobile
processor”; “wireless device”; and “computing devices”), the “identifying”
and “establishing” steps can be performed mentally. For example, before
physically mailing holiday cards, you might mentally decide that everyone
on your list will receive your holiday card but you want your closest friends
and family to also receive a handwritten sentence or two. You therefore
have mentally divided a group into two tiers based on a correspondence type
(e.g., a mailed holiday card) as well as relational proximity and
correspondence frequency (e.g., your closest friends and family). See also
Final Act. 8 (determining that “[o]rganizing the distribution of messages
Appeal 2018-003288
Application 13/790,439

8
using a group and tiers of participants in a group as claimed is an abstract
idea” because it is similar to collecting data, analyzing that data, and
displaying results).
Similarly, the “analysis of responses received to the at least one
broadcast message” and a “summary” containing “one of a most popular
response, a most important response, and a most concise information
received based on all received responses” can be done mentally. For
example, you might mentally note which picture or news in your holiday
card garnered the most comments from recipients. As the Federal Circuit
has said, “analyzing information by steps people go through in their minds,”
without more, constitutes “mental processes within the abstract-idea
category.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146
(Fed. Cir. 2016) (quotation omitted).
Claim 1 therefore recites mental processes, which are an abstract idea.
Other than the generic computer components, the “transmitting” steps
also can be performed verbally by humans talking (e.g., verbally saying
“Happy holidays!” to everyone you meet but “Happy holidays! Would you
like to come to our holiday party?” to your closest friends and family) or via
physical methods of communication (e.g., a mailed holiday card). Claim 1
therefore recites a form of “managing personal behavior or relationships or
interactions between people (including social activities . . . ),” which falls
within “certain methods of organizing human activity” that forms one
grouping of abstract ideas. Guidance 52; see also Interval Licensing LLC v.
AOL, Inc., 896 F.3d 1335, 1344 (Fed. Cir. 2018) (holding that “the act of
providing someone an additional set of information without disrupting the
ongoing provision of an initial set of information is an abstract idea,” such as
Appeal 2018-003288
Application 13/790,439

9
“the nontechnical human activity of passing a note to a person who is in the
middle of a meeting or conversation”).
Moreover, “[a]dding one abstract idea . . . to another abstract idea . . .
does not render the claim non-abstract.” RecogniCorp, 855 F.3d at 1327.
Accordingly, claim 1 recites an abstract idea.
USPTO Step 2A, Prong Two
Appellant points to the limitation “based on analysis of responses
received to the at least one broadcast message, at least one summary
message is sent to the wireless device containing one of a most popular
response, a most important response, and a most concise information
received based on all received responses.” Appeal Br. 16. Appellant relies
on this limitation to argue that the “claims are clearly directed to a
technological improvement in the field of medical analysis and response.
The claims teach this improvement by detecting accuracy and value in a
plurality of response messages to a broadcasted question or problem.” Id.
In particular, “[p]revious multiple messaging processes . . . generate a large
amount of output but not necessarily in any logical order and also likely . . .
produce a significant amount of unintelligible or worthless material,”
whereas “[t]he present disclosure takes advantage of more advanced search
technologies by analyzing received content and analyzing and prioritizing
the content in ways that illustrate the value of substantive responses and
exclude worthless or repetitive responses.” Id.
We are not persuaded by Appellant’s argument that the problem or
solution is technological. The Federal Circuit is clear that “[t]he abstract
idea itself cannot supply the inventive concept, no matter how
groundbreaking the advance.” Trading Techs. Int’l, Inc. v. IBG LLC, 921
Appeal 2018-003288
Application 13/790,439

10
F.3d 1084, 1093 (Fed. Cir. 2019) (quotation omitted). As discussed above,
the steps can be performed mentally or verbally, other than the computer
components of a “mobile processor”; “wireless device”; and “computing
devices.” Thus, Appellant cannot rely on the abstract idea as providing
significantly more.
Moreover, the Federal Circuit “look[s] to whether the claims in these
patents focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.” McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016). Here, the computer components do not provide a specific means or
method that improves technology. For example, claim 1 does not provide
any technological way to determine what is “a most popular response”; “a
most important response” or “a most concise information received.”
Instead, the claim recites only an abstract idea that is to be performed “by” a
mobile processor, “from” a wireless device, or “to” computing devices. We
agree with the Supreme Court that “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice, 573 U.S. at 223.
In reply, Appellant further argues that the use of “configuration
tables”; “natural language processing”; and “the Python language” provide
“technological solutions to technological problems.” Reply Br. 5. However,
none of these are recited in claim 1 and “features that are not claimed are
irrelevant as to step 1 or step 2 of the Mayo/Alice analysis.” Am. Axle &
Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d 1355, 1363 (Fed. Cir. 2019).
Appeal 2018-003288
Application 13/790,439

11
Finally, to the extent a “transmitter” transmitting or a “broadcast
message” were limited to an electronic implementation rather than verbal or
physical communication, those would be insignificant extra-solution activity
or field of use, akin to merely automating a manual process. See, e.g.,
MPEP § 2106.05(g), (h).
Thus, we are not persuaded that any additional limitation, alone or in
combination, reflects an improvement in the functioning of a computer or
other technology. Accordingly, claim 1 does not integrate the abstract idea
into a practical application.
USPTO Step 2B
The additional limitations in claim 1 such as a “mobile processor”;
“wireless device”; and “computing devices” were well-understood, routine,
and conventional. The Specification explains that they can be any generic
device. E.g., Spec. ¶¶ 97 (“the plurality of computing devices may include
at least one of a smartphone, cell phone, tablet computing device, personal
computer, and a laptop computer”), 21 (“a wireless user device . . . may be a
computer, laptop, mobile, wireless or cellular phone, a PDA, a tablet, a
client[,] a server or any device that contains a processor and/or memory”),
21 (“The present application discussed throughout the disclosure may work
with any device, such as a personal computer with a touch screen, a laptop
with a touch screen, a personal computing tablet, a smartphone or any device
with a processor, memory and a touch screen.”), 57 (similar), 99 (“The
processor and storage medium may reside in an application specific
integrated circuit (‘ASIC’)” or “[i]n the alternative . . . as discrete
components.”).
Appeal 2018-003288
Application 13/790,439

12
In sum, whether the additional limitations are considered individually
or in ordered combination, claim 1 fails to recite an inventive concept
beyond the abstract idea.
Accordingly, we sustain the rejection under § 101 of claim 1, and
claims 2–20, which Appellant argue are patentable for similar reasons. See
Appeal Br. 13–18; 37 C.F.R. § 41.37(c)(1)(iv).
§ 103
All of the independent claims, including claim 1, recite “based on
analysis of responses received to the at least one broadcast message, at least
one summary message is sent to the wireless device containing one of a most
popular response, a most important response, and a most concise
information received based on all received responses.”
Appellant argues that Bagga teaches each individual message in a
thread gets condensed down to a single sentence representing that particular
message, but that nothing in Bagga teaches creating a single summary
message containing the most popular response, most important response, or
most concise information across all received responses. Appeal Br. 25.
Appellant illustrates this point with Figure 3 of Bagga, reproduced below.
Appeal 2018-003288
Application 13/790,439

13

Figure 3 of Bagga depicts an “exemplary thread overview” that
includes (1) “an indication 310 of the original subject of the initial posting”;
(2) “an indicative summary 320 of the initial posting”; and (3) “indicative
summaries 330, 340 of one or more follow up email messages.” Bagga ¶ 19.
As can be seen, summaries 330 and 340 constitute multiple single-sentence
summaries (i.e., one for each message) rather than one summary for all
messages.
The Examiner counters by determining that “the claim does not
require any distillation of the multiple responses into one message” and “no
particulars of the analysis requires any comparative analysis between
messages.” Ans. 8.
However, the Examiner has not sufficiently explained how Bagga
teaches or suggests this claim limitation. In Bagga, each “follow-up email”
gets divided up into sentences and each sentence gets a score for how much
it overlaps with the original message (called the “root message”). Bagga
¶ 24. “The sentence with [the] highest score is extracted . . . as an indicative
summary for the follow-up message.” Id. Thus, each follow-up message
Appeal 2018-003288
Application 13/790,439

14
gets summarized by a single sentence within that message, such that one
sentence from each follow-up message will be displayed in the thread, as
seen in Figure 3 of Bagga.
The Examiner has not sufficiently explained how each single-sentence
summary in Bagga is “based on all received responses,” as recited in the
claims. Rather, it appears that each individual response is based on only one
follow-up message.
Further, the Examiner appears to rely on Bagga’s selected sentence
containing the “most important information bearing word types,” Ans. 9–10
(emphasis added), but the claims recite a “summary message . . . containing
. . . a most important response . . . based on all received responses.” To the
extent the claimed “response” is Bagga’s “follow-up email,” Bagga’s single
sentence summary does not contain “a most important [follow-up email].”
Thus, the Examiner has not sufficiently explained how Bagga’s summary
message “contain[s] . . . a most important response.”
Accordingly, given the record here, we are constrained to reverse the
rejection of claims 1–20.
Double Patenting
Appellant asks that the double patenting rejection “be held in
abeyance pending disposition . . . on this appeal.” Appeal Br. 13. The
Examiner notes that “Appellant does not dispute the propriety of the double
patenting rejection in the appeal brief.” Ans. 3.
Accordingly, we sustain the double patenting rejections of claims 1–
20 pro forma.
Appeal 2018-003288
Application 13/790,439

15
DECISION
The following table summarizes the outcome of each rejection:
Claims
Rejected Statute Basis Affirmed Reversed
1–20 § 101 Eligibility 1–20
1–5, 7–12,
14–19
§ 103 Bird, Vance, Turski,
Bagga
1–5, 7–12,
14–19
6, 13, 20 § 103 Bird, Vance, Turski,
Bagga, Stovicek
6, 13, 20
1–5, 7–12,
14–19

Double patenting –
’623 patent, Bird,
Vance, Turski, Bagga
1–5, 7–12,
14–19

6, 13, 20 Double patenting –
’623 patent, Bird,
Vance, Turski, Bagga,
Stovicek
6, 13, 20
OVERALL 1–20
TIME TO RESPOND
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.
§ 1.36(a)(1)(iv).
AFFIRMED