Elsevier, Inc.

Patent Trials and Appeals Board

Apr 2, 2020

14094682 - (R) (P.T.A.B. Apr. 2, 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.
14/094,682 12/02/2013 Edwin ADRIAANSEN ELV0015VA / 77434-33 7609
146524 7590 04/02/2020
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
EXAMINER
SITIRICHE, LUIS A
ART UNIT PAPER NUMBER
2126
MAIL DATE DELIVERY MODE
04/02/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWIN ADRIAANSEN and BOB J.A. SCHIJVENAARS

Appeal 2019-000930
Application 14/094,682
Technology Center 2100

Before JAMES B. ARPIN, JON M. JURGOVAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant1 timely requests rehearing under 37 C.F.R. § 41.50(b)(2)
(“Request” or “Req. Reh’g”) for reconsideration of our Decision on Appeal
mailed January 8, 2020 (“Decision” or “Dec.”). The Decision affirmed the
Examiner’s rejection of claims 1, 2, 4–8, 10–14, and 16–21 under 35 U.S.C.
§ 101. Dec. 18.
We have considered Appellant’s Request, but we do not modify our
opinion.

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 Elsevier Inc.
Appeal Br. 2.
Appeal 2019-000930
Application 14/094,682

2
DISCUSSION
“The 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) (emphasis added). A request for rehearing is not an
opportunity to express disagreement with a decision without setting forth
those points that Appellant believes the Board misapprehended or
overlooked in rendering its Decision. The proper course for an Appellant
dissatisfied with a Board decision is to seek judicial review, not to file a
request for rehearing to reargue issues that already have been decided. See
35 U.S.C. §§ 141, 145.
Appellant’s Request is essentially a disagreement with our Decision,
and the state of the law regarding patent eligibility, which, as noted above, is
not a proper basis for rehearing. Appellant presents two arguments. First,
Appellant argues the Examiner failed “to provide any specific evidence”
pointing out which claim elements are not well-understood, routine, or
conventional, “as required under the Berkheimer Memo2.” Req. Reh’g 3.
Second, Appellant argues our Decision “misapprehended or overlooked the
evidentiary requirement established by the USPTO [Berkheimer]
Memorandum.” Id. at 2.
Neither argument sufficiently explains how we misapprehended or
overlooked, i.e., failed to consider, Appellant’s arguments presented in the

2 April 19, 2018 Memorandum to the Patent Examining Corps, entitled
“Changes in Examination Procedure pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), dated
(available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF).
Appeal 2019-000930
Application 14/094,682

3
Appeal Brief or Reply Brief. We consider and address each argument
below, but decline to change our decision in view of Appellant’s arguments.
Argument 1
Appellant argues the Examiner failed “to provide any specific
evidence” pointing out which claim elements are not well-understood,
routine, or conventional, “as required under the Berkheimer Memo.” Req.
Reh’g 3.
We are unpersuaded. The Examiner finds that
[the] claims recite one or more computer processors, storage
devices, and non-transitory processor-readable storage mediums
storing instructions to perform the claimed processes of creating
an index and using that index to search for and retrieve data.
However the mere recitation of “processors, storage devices and
computer readable storage mediums” is akin to adding the words
“apply it” with a computer in conjunction with the abstract idea.
Moreover, instant application specification cites, for example, at
[Spec. ¶ 15]: “Further, one skilled in the art will appreciate that
the system and method disclosed herein can be implemented via
a general-purpose computing device in the form of a computer
101. The components of the computer 101 can comprise, but are
not limited to, one or more processors or processing units 103, a
system memory 112, and a system bus 113 that couples various
system components including the processor 103 to the system
memory 112’. Also, at [Spec. ¶ 22]: “ . . The computer 101 can
operate in a networked environment using logical connections to
one or more remote computing devices 114a,b,c. By way of
example, a remote computing device can be a personal computer,
portable computer, a server, a router, a network computer, a peer
device or other common network node, and so on... A network
adapter 108 can be implemented in both wired and wireless
environments. Such networking environments are conventional
and commonplace in offices, enterprise-wide computer
networks, intranets, and the Internet 115 . . ..”
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Application 14/094,682

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Ans. 20–21. Accordingly, by identifying certain additional elements and
providing evidence from Appellant’s Specification that those limitations are
well-understood, routine, and conventional, the Examiner satisfies the
evidentiary requirement of the Berkheimer Memorandum. Berkheimer
Memorandum III. A. 1.
Appellant in turn, does not address the Examiner’s findings. See
generally Reply Br. 2–6 (no mention of Berkheimer or the Examiner’s
additional findings presented in the Answer). Accordingly, Appellant does
not show that we misapprehended or overlooked Appellant’s argument that
the Examiner fails to provide any specific evidence under the Berkheimer
Memorandum. Req. Reh’g 3.
Argument 2
Appellant argues our Decision “misapprehended or overlooked the
evidentiary requirement established by the USPTO [Berkheimer]
Memorandum.” Req. Reh’g 2.
In view of our response to Argument 1 above, this argument also is
unpersuasive. Moreover, our Decision discusses the Examiner’s
identification of “one or more computer processors” in claim 1 as well
understood, routine and conventional in view of Appellant’s Specification.
Decision 14 (citing Final Act. 5; Ans. 21 (citing Spec. ¶¶ 15, 22)). See also
Spec. ¶¶ 13, 14, 18. Accordingly, our Decision correctly determines that the
Examiner complied with the evidentiary requirement established by the
Berkheimer Memorandum by presenting evidence from Appellant’s
Specification that additional elements are well understood, routine and
conventional. Id.
Appeal 2019-000930
Application 14/094,682

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Still further, as we note in our Decision, “Appellant . . . fails to point
out which [other] ‘claim elements’ are not well-understood, routine, or
conventional, whether under Berkheimer or any other authority.” Decision
14 (citing Appeal Br. 34–35; Reply Br. 2–6). That is, Appellant does not
respond to the Examiner’s findings; nor does Appellant specifically identify
any additional element (or combination of elements) that is not well-
understood, routine or conventional. Such a conclusory argument is
unpersuasive to rebut the Examiner’s findings. Cf. 37 C.F.R. § 41.37(c)(iv)
(“The arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant.”); In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant.”).
Accordingly, Appellant does not demonstrate that our Decision
“misapprehended or overlooked the evidentiary requirement established by
the USPTO [Berkheimer] Memorandum.” Req. Reh’g 2.
Appellant’s Request for Rehearing is denied.
CONCLUSION
Outcome of Decision on Rehearing:
Claims 35 U.S.C.
§
Basis Denied Granted
1, 2, 4–8,
10–14,
16–21
101 Eligibility 1, 2, 4–8,
10–14,
16–21

Appeal 2019-000930
Application 14/094,682

6
Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 2, 4–8,
10–14,
16–21
101 Eligibility 1, 2, 4–8,
10–14,
16–21

1, 2, 4,
6–8, 10, 12–
14, 16, 18
103(a) Essafi, Encina, Shamir,
Glass
1, 2, 4,
6–8, 10,
12–14, 16,
18
5, 11, and
17
103(a) Essafi, Encina, Shamir,
Glass, Ikeda
5, 11, and
17
20 103(a) Essafi, Encina, Shamir,
Glass, Jones
20
21 103(a) Essafi, Encina, Shamir,
Glass, Aumann
21
Overall
Outcome
1, 2, 4–8,
10–14,
16–21

DENIED