Ex Parte Holt

Patent Trials and Appeals Board

Jun 19, 2019

11487526 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/487,526 07/14/2006
146524 7590
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
06/20/2019
FIRST NAMED INVENTOR
Christopher Holt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
31547-357 I LEN0081PA 5805
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
06/20/2019 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 CHRISTOPHER HOLT
Appeal2017-005999
Application 11/487,526
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE1
The Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52
of the Decision on Appeal.
In the Decision on Appeal, the Board, we affirmed the rejection of
claims 10-14 and 21-30 under 35 U.S.C. § 101 for claiming patent-
ineligible subject matter and reversed the rejections under 35 U.S.C.
1 This Decision references the Appellant's Request for Rehearing ("Req.
Reh'g," filed June 7, 2019) and the Board Decision ("Dec.," mailed April
10, 2019).
Appeal2017-005999
Application 11/487,526
§ 103(a) of claims 10, 11, 14, 21, 23, 25, and 26 under 35 U.S.C. § 103(a) as
being unpatentable over Rivette, Cockburn, and Slovak; claims 12, 13, and
27-29 as being unpatentable over Rivette, Cockburn, Slovak, and Grainger;
claims 22 and 24 as being unpatentable over Rivette, Cockburn, Slovak, and
Brudz; and, claim 30 as being unpatentable over Rivette, Cockburn, Slovak,
and USPTO.
The Request seeks reconsideration of the Board's Decision only as to
the rejections of claims 10-14 and 21-30 under 35 U.S.C. § 101 for
claiming patent-ineligible subject matter.
We have reviewed the Request but, find it fails to "state with
particularity the points believed to have been misapprehended or overlooked
by the Board." 37 C.F.R. § 41.52.
Regarding our Decision to affirm the rejection of claims 10-14 and
21-30 under 35 U.S.C. § 101 for claiming patent-ineligible subject matter,
the Appellant argues that the Board failed to present "any specific evidence
required under the Berkheimer Memo." Req. Reh'g 2.
The Decision on Appeal alleges that it has provided court
decisions under prong 1. However, the Decision on Appeal
only makes a vague statement without actually identifying any
such citations to the [S]pecification. Moreover, Appellant
respectfully points out that the claims recite far more than a
processor, and the Decision on Appeal fails to take any other
claim elements into account under the evidentiary requirements
of the Berkheimer Memo. Appellant further asserts that this is
not a sufficient showing for a preponderance of the evidence
that the claims fail to recite significantly more than abstract idea
under Step 2B of the Alice framework. For at least these
reasons and the clearly articulated reasons in the Appeal Brief
and Reply Brief explaining in detail why the pending claims
recite significantly more than an abstract idea, reversal of this
rejection is respectfully requested.
2
Appeal2017-005999
Application 11/487,526
Req. Reh' g 3-4 ( emphasis added).
We think the Appellant is referring to this passage from the Decision.
We cited the Specification in our discussion as intrinsic
evidence that the claimed element "processor" is conventional.
In doing so, we have followed "Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP Inc.[,
881 F.3d 1360(Fed. Cir. 2018)]," USPTO Memorandum,
Robert W. Bahr, Deputy Commissioner For Patent Examination
Policy, April 19, 2018 (the "Berkheimer Memo")).
Dec. 28 ( emphasis added). We were referring to our discussion on page 19
of the Decision.
The Appellant argues that "the claims recite far more than a processor,
and the Decision on Appeal fails to take any other claim elements into
account under the evidentiary requirements of the Berkheimer Memo." Req.
Reh'g 3-4.
We disagree that we "fail[ ed] to take any other claim elements into
account." We provided a claim construction section that addresses every
claim limitation. Dec. 8-10. "We reasonably broadly construe claim 10 as
being directed to a data-gathering scheme comprising receiving a particular
search request, filtering content to identify certain information, and
presenting the identified information for review, implemented on a generic
computer system comprising a generic database." Dec. 10. The Appellant
has not disputed our construction of the claim. Given this, the Appellant has
not shown and we are unable to discern in what way the claim as reasonably
broadly construed recites far more than a generic processor.
3
Appeal2017-005999
Application 11/487,526
CONCLUSION
We have carefully considered the Request but, for the foregoing
reasons, we do not find it persuasive as to error in the Board's Decision of
April 10, 2019 to affirm the rejections of claims 10-14 and 21-30 under
35 U.S.C. § 101 for claiming patent-ineligible subject matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l). See 37 C.F.R.
§ l.136(a)(l )(iv).
DENIED
4