Ex Parte Bergstrom et al

Patent Trial and Appeal Board

Oct 26, 2017

12333564 (P.T.A.B. Oct. 26, 2017)

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.
12/333,564 12/12/2008 Andrew William Bergstrom 2007.0035US 6581
68242 7590 10/30/2017
FIALA & WEAVER P.L.L.C.
C/O CPA GLOBAL
900 Second Avenue South
Suite 600
MINNEAPOLIS, MN 55402
EXAMINER
KWONG, CHO YIU
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
DOCKETING@CPAGLOBAL.COM
docketing@fwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW WILLIAM BERGSTROM and NIGEL GAY
Appeal 2016-004107
Application 12/333,564
Technology Center 3600
Before CAROLYN D. THOMAS, HUNG H. BUI, and
CHARLES J. BOUDREAU, Administrative Patent Judges.
BOUDREAU, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—24, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 Appellants identify FoundationIP, LLC as the real party in interest.
App. Br. 1.
2 Our Decision refers to the Examiner’s Final Office Action mailed
March 14, 2014 (“Final Act.”); Appellants’ Appeal Brief filed April 10,
2015 (“App. Br.”); the Examiner’s Answer mailed September 28, 2015
(“Ans.”); and the original Specification filed December 12, 2008 (“Spec.”).
Appeal 2016-004107
Application 12/333,564
STATEMENT OF THE CASE
Appellants’ invention “relates to an interface between two
applications through a web service,” and “more specifically,... to
interfacing an annuity application with an asset management application.”
Spec. 1.
Claims 1 and 13 are independent. Independent claim 1, reproduced
below with disputed limitations in italics, is illustrative of the subject matter
on appeal:
1. A computer system comprising:
a first server comprising a first processor in communication
with a first data storage medium to store intellectual property
asset data;
a first application to serve as an interface for said first
storage and in communication with the first processor, wherein
the first application is directed to docket intellectual property
assets;
a second server comprising a second processor in
communication with a second data storage device to store
annuity data;
a second application to serve as an interface for said second
storage medium and in communication with the second
processor, wherein the second application is directed to manage
annuity data for intellectual property assets;
a third application local to the first server and in
communication with the first application via a local
communication protocol and in communication with the second
application via a web service, wherein the third application
communicates annuity related instructions and requests for
retrieving annuity information received from the first
application to the second application and the corresponding
annuity related information received from the second
application to the first application;
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a plurality of queues accessible by the first and the third
application, wherein each of the annuity related instructions,
the requests, and the corresponding annuity related information
is stored in the plurality of queues before they are
communicated to the first or the second application; and
a scheduler in communication with the third application,
wherein the scheduler prompts the third application to
periodically release the annuity related instructions, the
requests, and the corresponding annuity related information
from the plurality of queues to one of the first application and
the second application.
App. Br. 24 (Claims App’x).
EXAMINER’S REJECTIONS
Claims 1—24 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Ans. 3.
Claims 1—24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings of Frank et al.
(US 2006/0080135 Al; published Apr. 13, 2006) (“Frank”) and Larue et al.
(US 2002/0156798 Al; published Oct. 24, 2002) (“Larue”). Final Act. 2-
12.
ANALYSIS
Rejection under 35 U.S.C. §101
In a new ground of rejection set forth in the Answer, the Examiner
rejected claims 1—24 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Ans. 3. The Examiner finds, in particular, that
claims 1—24 are directed to an abstract idea (i.e., managing intellectual
property asset data, a method of organizing human activity) and do not
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include additional elements that are sufficient to amount to significantly
more than such abstract idea. Id. The Examiner further finds that the
limitations of the instant claims are carried out by generic servers and
processors and
are merely instructions to implement the abstract idea on a
computer and require no more than a generic computer to
perform generic computer functions (such as interfacing data
storage to an application; using application to communicate
instructions and requests; storing request and the corresponding
information; using a scheduler to prompt periodic release of
instruction, request and information) that are well-understood,
routine and conventional activities previously known to the
industry.
Id.
The Examiner further explains that, because the Answer contains a
new ground of rejection, Appellants were required, within two months from
the date of the Answer, either (1) to reopen prosecution before the primary
examiner by filing a reply under 37 C.F.R. § 1.111 relevant to the new
ground of rejection or (2) to maintain their appeal by filing a reply brief
under 37 C.F.R. § 41.41 addressing the new ground of rejection, in order to
avoid sua sponte dismissal of the appeal as to all claims subject to the new
ground of rejection. Id. at 12; see 37 C.F.R. § 41.39(b).
The record does not indicate that Appellants filed a reply under
37 C.F.R. § 1.111 or a reply brief under 37 C.F.R. § 41.41 within the allotted
two-month period, and all of pending claims 1—24 are subject to the stated
new ground of rejection. Accordingly, Appellants’ appeal as to all claims is
subject to sua sponte dismissal. 37 C.F.R. § 41.39(b). Nonetheless, we
discern no error in the Examiner’s rejection of claims 1—24 under 35 U.S.C.
§101.
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The Supreme Court has long held that “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The
Court previously made clear, for example, that “[phenomena of nature, . . .
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work.” Gottschalk v.
Benson, 409 U.S. 63, 67 (1972). Following that guidance, the Federal
Circuit similarly has held that mental processes are not patent-eligible
subject matter and that methods that “can be performed entirely in the
human mind are the types of methods that embody the ‘basic tools of
scientific and technological work’ that are free to all men and reserved
exclusively to none.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366,1373 (Fed. Cir. 2011).
In Alice, the Supreme Court reiterated a two-step framework,
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
at 2355. The first step in the analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. (citing
Mayo, 132 S. Ct. at 1296—97). If so, the second step requires consideration
of the elements of the claims “individually and ‘as an ordered combination”’
to determine whether the additional elements “‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
1297—98). In other words, the second step is to “search for an ‘inventive
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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. (alteration in original) (quoting
Mayo, 132 S. Ct. at 1294). The Court acknowledged in Mayo, that “all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293.
We, therefore, look to whether the claims “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); Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1336 (Fed. Cir. 2016).
In view of these principles, we agree with the Examiner that claims 1—
24 are directed to patent-ineligible subject matter. In contrast with
precedential cases in which the Federal Circuit has found claims directed to
computer-implemented methods to be patent-eligible under the Alice
framework, the instant claims do not provide, for example, (1) a “solution []
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks” (see DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)); (2) “a
specific improvement to the way computers operate” (Enfish, 822 F.3d at
1336; see also McRO, 837 F.3d at 1303; Visual Memory LLC v. NVIDIA
Corp., 867 F.3d 1253, 1259 (Fed. Cir. Aug. 15, 2017)); or (3) an
“unconventional technological solution ... to a technological problem” that
“improve[s] the performance of the system itself’ (Amdocs (Israel) Ltd. v.
Openet Telecom, Inc. 841 F.3d 1288, 1302, 1306 (Fed. Cir. 2016); see also
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Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1352 (Fed. Cir. 2016); Thales Visionix Inc. v. United States, 850 F.3d 1343,
1347, 1349 (Fed. Cir. 2017). Rather, the instant claims are analogous to
those addressed in Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016), where the court explained that the asserted claims fell
“a familiar class of claims ‘directed to’ a patent-ineligible concept,”
specifically, “collecting information, analyzing it, and displaying certain
results of the collection and analysis.” Id. at 1353. As in that case, the
“advance [the claims] purport to make is a process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular assertedly inventive technology for performing those
functions.” Id. at 1354. Further, where the court in that case explained that
“[njothing in the claims, understood in light of the specification, requires
anything other than off-the-shelf, conventional computer, network, and
display technology for gathering, sending, and presenting the desired
information” {id. at 1355), similarly here nothing in the instant claims
understood in light of the specification requires anything other than
off-the-shelf, conventional computer, storage, and communication
technology. Accordingly, we affirm the Examiner’s rejection of claims 1—
24 under 35 U.S.C. § 101.
Rejection under 35 U.S.C. § 103(a)
The Examiner finds Frank teaches all elements of independent
claim 1, except for using one set of server and storage medium set to docket
intellectual property assets and a separate set of server and storage medium
to manage annuity data, whereas Larue teaches synchronizing two different
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server and database sets. Final Act. 2—\ (citing Frank || 53, 60, 95, 129,
138, 141, 227, 290, Fig. 4; Larue 1137). Based on these teachings, the
Examiner concludes it “would have been obvious for one of ordinary skill in
the art at the time of the invention to modify the system for managing
intellectual property assets taught by Frank with teachings from LARUE to
del[eg]ate two different intellectual property assets tasks to two different
systems and synchronize both,” and that one of ordinary skill would have
been motivated to make such a modification “as it reduces work load on one
particular system.” Id. at 4. The Examiner relies on essentially the same
findings with respect to independent claim 13. Id. at 7—9.
Appellants dispute the Examiner’s findings regarding Frank and
Larue. In particular, Appellants contend that Frank fails to disclose the
recited “third application” limitation; that neither Frank nor Larue teaches
the recited “plurality of queues” and “scheduler” limitations; and that Frank
and Larue “cannot be fairly combined” absent impermissible hindsight.
App. Br. 6—22.
We agree with Appellants that the portions of Frank and Larue cited
by the Examiner do not teach or suggest “a plurality of queues accessible by
the first and the third application, wherein each of the annuity related
instructions, the requests, and the corresponding annuity related information
is stored in the plurality of queues before they are communicated to the first
or the second application,” as recited in claim 1, or the similar limitation
recited in claim 13. With respect to those limitations, the Examiner cites
paragraphs 53, 60, and 129 of Frank as disclosing a “docketing system” that
“suggests queues” and further cites paragraph 246 of Frank as “regarding
pipeline.” Final Act. 3.
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In response to Appellants’ arguments, the Examiner explains that,
under the broadest reasonable interpretation standard, “queue” is interpreted
as “temporary storing format in certain order, storing annuity related
information that accessible by multiple applications within the system,” and
“Franks teaches storing of annuity related information in the database
accessible by docketing and tracking applications. Id. at 14 (citing Frank
53, 60, 129); see also Ans. 7 (repeating the same explanation). The
Examiner further finds “[a] ‘docket’ is known in the art as ‘a calendar or list
of cases for trial or people having cases pending’, while a queue is known in
the art as ‘a line or sequence of people or vehicles awaiting their turn to be
attended to or to proceed.’” Final Act. 14; see also Ans. 7 (repeating the
same finding and further adding that “[t]he listing and pending aspect of a
docket is equivalent to the linear and sequential aspect of a queue.”).
According to the Examiner, “[a] ‘docket’ and a ‘queue’ are analogous in
which both are defined as a temporary storing medium for cases pending.”
Final Act. 14; Ans. 7—8. Thus, according to the Examiner:
Given Frank[’s] teaching on a IP docketing system accessible by
multiple applications in a system and that a docket and a queue
being analogous in the art of document processing, Frank in view
of Fame teaches [“]a plurality of queues accessible by the first
and the third application, wherein each of the annuity related
instmctions, the requests, and the corresponding annuity related
information is stored in the plurality of queues before they are
communicated to the first or the second application”.
Final Act. 14; Ans. 8. The Examiner does not rely on Fame as teaching or
suggesting these limitations.
Whether or not a “docket” and a “queue” may be analogous in certain
aspects, we are not persuaded that Frank’s docket teaches or suggests “a
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plurality of queues” in which “annuity related instructions,” “requests,” and
“annuity related information” are stored “before they are communicated to”
Frank’s IP utilization system 7000—i.e., the component of Frank that the
Examiner relies on as teaching the “first application” and the “second
application” in the manner recited in claims 1 and 13. See Ans. 5. Although
paragraph 141 of Frank discloses that IP utilization system 7000 can receive
certain information from IP asset management system 6000, that same
paragraph discloses that “information related to decisions to abandon an IP
asset (e.g., to forego paying a maintenance fee)”—i.e., the information relied
upon by the Examiner as teaching annuity related information (see Ans. 5)—
is stored by IP utilization system 7000 itself.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 13 and their respective dependent claims 2—12 and
14—24 under 35 U.S.C. § 103(a) as being unpatentable over Frank and
Larue.
DECISION
The rejection of claims 1—24 under 35 U.S.C. § 101 is affirmed.
The rejection of claims 1—24 under 35 U.S.C. § 103(a) is reversed.
Because one rejection of each of the appealed claims is sustained, the
decision of the Examiner is affirmed. See 37 C.F.R. § 41.50(a)(1).
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)(l)(iv).
AFFIRMED
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