Ex Parte Koll et al

Patent Trial and Appeal Board

Mar 27, 2017

14317323 (P.T.A.B. Mar. 27, 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.
14/317,323 06/27/2014 Detlef Koll M0002-1010C4 3202
24208 7590
Robert Plotkin, P.C.
1 Broadway, 14th Floor
Cambridge, MA 02142
03/29/2017 EXAMINER
VO, HUYEN X
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
mail@rplotkin.com
hdas@rplotkin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DETLEF KOLL and MICHAEL FINKE
Appeal 2016-006312
Application 14/317,323
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 2—28. 1 Claim 1 is cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
1 Although dependent claim 29 is included in the claims appendix to the
Appeal Brief (26), we note the Final “Office Action Summary” page and the
statements of rejection in the Final Action only reject claims
1—28. In reviewing the record, we find no statement of rejection for
dependent claim 29 in the Final Action (mailed June 2, 2015). See 37
C.F.R. § 41.39(a)(1). There is no mention of claim 29 in the Advisory
Action (mailed Aug. 27, 2015), or in the Answer (mailed June 1, 2016). Nor
does the Examiner indicate in the record that claim 29 is allowable or
objected to. See Final Act. 8: “Claims 2-28 are allowable and will be
Appeal 2016-006312
Application 14/317,323
The Invention
The disclosed and claimed invention on appeal relates to “verification
of extracted data.” (Title.)
Representative Claim 2
2. A method performed by at least one computer processor
executing computer program instructions tangibly stored on at
least one non-transitory computer-readable medium, the method
comprising:
(A) identifying a document including a first coding having a
first feature encoding a first concept, the first coding being
associated with a first code;
(B) rendering the first coding on an output device to have a
visual characteristic that is based on the first feature,
without rendering the first code;
(C) receiving, via an input device, a first indication from a user
of whether the rendering is accurate;
(D) identifying, based on the first indication received from the
user, a verification status of the first coding, wherein the
verification status of the first coding indicates whether the
first code represents the first concept, comprising:
(D) (1) if the first indication indicates that the rendering
is accurate, then identifying a verification status of the first
coding indicating that the first coding is accurate;
and.
(D) (2) otherwise, identifying a verification status of the
allowed when the double patenting and 101 issues are resolved.” In
reviewing the entire prosecution history, we can find no rejection of claim
29 in the record. Nor do Appellants mention claim 29 in the Appeal Brief
(filed Jan. 11, 2016), or in the Reply Brief (filed June 6, 2016). Therefore,
we find the status of claim 29 is unclear on appeal. Because claim 29 was
never rejected by the Examiner, the Board has no adverse decision
establishing a prima facie case under 35 U.S.C. § 132(a) to review, and
therefore we have no jurisdiction under pre-AlA 35 U.S.C. §6(b) as to any
claims that were not rejected. Accordingly, dependent claim 29 is not
before us on appeal, because claim 29 was never rejected by the
Examiner.
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first coding indicating that the first coding is inaccurate;
(E) identifying a type of the first indication; and
(F) storing, in the document, a non-transitory record of the first
indication and of the type of the first indication.
Rejections
A. Claims 2—28 are rejected on the ground of non-statutory
obviousness-type double patenting (OTDP) over claims 1—18 of U.S. Patent
No. 8,768,694, over claims 1—48 of U.S. Patent No. 8,521,514, and over
claims 1—32 of U.S. Patent No. 8,321,199. (Final Act. 3.)
B. Claims 2—28 are rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
GROUPING OF CFAIMS
Appellants advance no separate, substantive arguments regarding
rejection B under § 101 of claims 3—28. Arguments not made are waived.
See 37 C.F.R. § 41.37(c) (l)(iv). Therefore, based upon Appellants’
arguments, we decide the appeal of rejection B of claims 2—28 on the basis
of representative claim 2.
1. Rejection A — Obviousness-Type Double Patenting (OTDP)
As noted above, claims 2—28 were rejected on the ground of non-
statutory OTDP patenting over claims 1—18 of U.S. Patent No. 8,768,694,
over claims 1—48 of U.S. Patent No. 8,521,514, and over claims 1—32 of
U.S. Patent No. 8,321,199, as indicated by the Examiner. (Final Act. 3.)
Because the Examiner’s Answer is silent regarding the status of rejection A,
this rejection remains before us on appeal. See 37 C.F.R. § 41.39(a)(1).
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However, Applicants filed a Terminal Disclaimer on August 11, 2015
to obviate the OTDP rejection, prior to filing the Appeal Brief on January 1,
2016. (App. Br. 2.) The record indicates Appellants’ Terminal Disclaimer
was approved and entered into the record on the same day it was filed
(August 11, 2015). Therefore, we DISMISS non-statutory OTDP rejection
A of claims 2—28 as MOOT.
2. Rejection B under $101 of Claims 2—28
Issue: Under § 101, did the Examiner err in concluding the scope of
claims 2—28, directed to “a method performed by at least one computer
processor executing computer program instructions ... on at least one non-
transitory computer-readable medium,” encompasses non-statutory subject
matter?
Appellants compare their claims to claims that were held to be
directed to patent-eligible subject matter in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), in particular, because the
claims in DDR Holdings addressed a “business challenge (retaining website
visitors) that is particular to the Internet.” (App. Br. 9—10 (emphasis
omitted).) According to the Appellants, the claimed invention is similar to
the claims found patent eligible in DDR Holdings (Id.). Appellants
specifically contend:
Similarly, the pending claims are necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer technology,
namely the problem of how to render a document on an output
device to facilitate the verification of information encoded in
that document. Computer-readable documents containing
codings and codes are inherently related to computers and
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the Internet. For at least this reason, the pending claims are
not merely directed to an abstract idea.
(App. Br. 10-11.) (emphasis added.)
Regarding the claim 2 step of “rendering the first coding on an output
device to have a visual characteristic that is based on the first feature,
without rendering the first code,” Appellants contend that “[o]nly a
computer can render a coding on an output device; a human cannot perform
this action. Therefore, the method of claim 2 is inherently computer-
implemented and therefore is not directed to an abstract idea.” (App.
Br. 11.) Appellants note: “The DDR case demonstrates that the mere lack
of non-generic hardware in a claim does not imply that the claim is directed
to patent-ineligible subject matter.” (App. Br. 12.)
We are not persuaded by Appellants’ arguments and we agree with
the Examiner’s legal conclusion (Ans. 2—8), for the reasons discussed infra.
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
We are mindful that claim terms are not interpreted in a vacuum,
devoid of the context of the claim as a whole. See Hockerson-Halberstadt,
Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“proper claim
construction . . . demands interpretation of the entire claim in context, not a
single element in isolation.”); ACTV, Inc. v. Walt Disney Co., 346 F.3d
1082, 1088 (Fed. Cir. 2003) (“While certain terms may be at the center of
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the claim construction debate, the context of the surrounding words of the
claim also must be considered . . .
Here, in deciding whether Appellants’ claim 2 falls within the
excluded category of abstract ideas, we are guided in our analysis by the
Supreme Court’s two-step framework, described in Mayo. {Id. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1296—97 (2012)).) In accordance with that framework, we: (1) first
determine whether the claim is “directed to” a patent-ineligible abstract idea.
If so, we then (2) consider the elements of the 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 of the
abstract idea. {Id.) This is a search for an “inventive concept,” i.e., an
element or combination of elements sufficient to ensure that the claim
amounts to “significantly more” than the abstract idea itself. {Id.)
Contrary to Appellants’ characterization that claim 2 is directed to a
specific implementation of a computer processor (App. Br. 11), the only
technological feature recited in the claim is a generic “computer processor
executing computer program instructions tangibly stored on at least one non-
transitory computer readable medium” without sufficient specificity of any
improvement upon the intrinsic operation or capabilities of the computer
processor itself.
The Supreme Court in Alice cautioned that merely limiting the use of
abstract idea “to a particular technological environment” or implementing
the abstract idea on a “wholly generic computer” is not sufficient as an
additional feature to provide “practical assurance that the process is more
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than a drafting effort designed to monopolize the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (citations omitted).
Although “at least one computer processor” is nominally recited in
Appellants’ claim 2, we find a person would also be capable of performing
the recited steps as mental steps, or with the aid of pen and paper. For
example, we find a person can render (i.e., write) a “first coding” on an
“output device” (i.e., a piece of paper) with a pen, within the meaning of
claim 2. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson’’ ). As applicable to method claim 2
on appeal, “a method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under § 101.” (Id. at
1373.)2
We conclude claim 2 is directed to the abstract idea of a user verifying
whether the rendering of “the first coding ... to have a visual characteristic
that is based on the first feature” that encodes a first concept in a document
2 See also Cybersource, 654 F.3d at 1372 (“It is clear that unpatentable
mental processes are the subject matter of claim 3. All of claim 3’s method
steps can be performed in the human mind, or by a human using a pen and
paper. Claim 3 does not limit its scope to any particular fraud detection
algorithm, and no algorithms are disclosed in the ’154 patent’s specification.
Rather, the broad scope of claim 3 extends to essentially any method of
detecting credit card fraud based on information relating past transactions to
a particular “Internet address,” even methods that can be performed in the
human mind.”); see also In reNuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007)
(“The four categories [of § 101] together describe the exclusive reach of
patentable subject matter. If a claim covers material not found in any of the
four statutory categories, that claim falls outside the plainly expressed scope
of § 101 even if the subject matter is otherwise new and useful.”).
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is accurate. We find the method of claim 2 can be performed by a person
without the use of a computer. Therefore, we conclude claim 2 is directed to
an abstract idea beyond the scope of § 101.
Regarding prong two of the test articulated by the Supreme Court in
Alice, we further “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,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297)).
Claim 2 recites a method for a user to provide “a first indication” that
is used to identify whether the rendering is accurate, using conventional
computer components, namely a “computer processor executing computer
program instructions.” We conclude the nature of claim 2 is not
transformed into a patent-eligible application of the abstract idea because
claim 2 does nothing more than simply instruct the practitioner to implement
an abstract idea using generic computer components.
Although Appellants cite to DDR in support of their arguments above,
(App. Br. 9), we find Appellants’ claim 2 is distinguishable from the claim
considered by the court in DDR, where the court found “the claimed solution
is necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). In DDR, the
claim was held patent-eligible because it encompassed “an inventive
concept” for resolving a “particular Internet-centric problem.” DDR, 773
F.3d at 1259.
Here, we conclude the focus of Appellants’ claim 2 is not on solving
an Internet-centric problem, or on a method of improving the computer
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itself. We conclude claim 2 on appeal merely uses a generic computer
processor as a tool used in the way a computer normally functions. We find
claim 2 fails to impart any discernible improvement upon the computer
processor, nor does claim 2 solve “a challenge particular to the Internet” as
considered by the court in DDR, 773 F.3d at 1256—57.
We find Appellants’ claim 2 is unlike the claim held patent-eligible by
the court in DDR, in which the claimed invention was directed to the
“challenge of retaining control over the attention of the customer in the
context of the Internet,” such that:
Instead of the computer network operating in its normal,
expected manner by sending the website visitor to *1259 the
third-party website that appears to be connected with the clicked
advertisement, the claimed system generates and directs the
visitor to the above-described hybrid web page that presents
product information from the third-party and visual “look and
feel” elements from the host website.
DDR, 773 F.3d at 1258—59; cf Intellectual Ventures ILLC v. Capital One
Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir. 2015) (because the patent
claims at issue did not “address problems unique to the Internet, . . . DDR
has no applicability.”).
Appellants’ present additional arguments based on several USPTO
examination guidelines. (App. Br. 13—15; Reply Br. 1—2.). We have
considered these guidelines, which are based on controlling case law and
USPTO policy at the time the guidelines were issued. However, PTAB
applies relevant U.S. Supreme Court and Federal Circuit case law to the
facts of each patent application on appeal, and does not rely on policy
guidelines intended to train Patent Examiners as a controlling legal
authority.
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Appellants additionally cite Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016) in prefacing their arguments in the Reply Brief (2).
However, we find Appellants’ claim 2 is distinguishable over the claim
considered by the court in Enfish, which was found to be “directed to an
improvement in the functioning of a computer.” Enfish, 822 F.3d at 1338.
The court in Enfish further noted: “In contrast, the claims at issue in Alice
and Versata can readily be understood as simply adding conventional
computer components to well-known business practices.” 3 (Id.)
Although Appellants urge that “rendering documents” as recited in
claim 2 is an improvement in computer technology (Reply Br. 4), we
disagree. We find the rendering step of Appellants’ claim 2 does not
positively recite any improved electronic or programmatic method of
rendering data, e.g., on a display, but instead is merely directed to the
informational content of the data to be displayed to a user who indicates
whether the rendering is accurate. 3 4
3 The Supreme Court held that the claims in Alice were drawn to the
abstract idea of intermediated settlement and that “the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” See Alice, 134 S. Ct. at 2358. Alice involved “a
method of exchanging financial obligations between two parties using a
third-party intermediary to mitigate settlement risk.” Id. at 2356. Like the
method of hedging risk in Bilski v. Kappos, 561 U.S. 593, 628 (2010)—
which the Court deemed “a method for organizing human activity”—Alice’s
“concept of intermediated settlement” was held to be “a fundamental
economic practice long prevalent in our system of commerce.” Alice, 134 S.
Ct. at 2356.
4 The Manual of Patent Examining Procedure (MPEP) guides: “where the
claim as a whole is directed [to] conveying a message or meaning to a
human reader independent of the intended computer system, and/or the
computer-readable medium merely serves as a support for information or
data, no functional relationship exists.” MPEP § 2111.05 (III.) (9th Ed., Rev.
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Thus, the data that is rendered in Appellants’ claim 2 is received
(viewed) by a user who determines as a mental step whether the rendering is
accurate. We conclude the rendered (displayed) “first coding” data is non­
functional descriptive material (NFDM) merely intended for human
perception, and is not positively recited as actually being used to change or
affect any computer-implemented step of the method of claim 2. Instead, it
is the responsive ‘ first indication” from the user that is used to identify a
“verification status of the first coding” in subsequent step D of claim 2.
Therefore, we conclude method claim 2, when considered as a whole, is
directed to an abstract idea, even if performed with the aid of a generic
computer processor. See Enfish, 822 F.3d at 1335.
For at least the aforementioned reasons, on this record, we are not
persuaded the Examiner erred. Accordingly, we sustain rejection B under
§ 101 of independent claim 2, and rejection B of the remaining grouped
claims 3—28 (not argued separately), which fall with claim 2. See Grouping
of Claims, supra.
CONCLUSION
For at least the aforementioned reasons, on this record, Appellants
have not persuaded us the Examiner erred in rejecting claims 2—28 under
35 U.S.C. § 101 (rejection B).
07.2015, Last Revised Nov. 2015). See Ex parte Nehls, 88 USPQ2d 1883,
1889 (BPAI 2008) (precedential) (“[T]he nature of the information being
manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process.”).
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DECISION
We affirm the Examiner’s decision rejecting claims 2—28 under § 101.
We dismiss as moot the Examiner’s non-statutory OTDP rejection of
claims 2—28, because a terminal disclaimer was filed, approved, and entered
into the record on August 11, 2015.
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.
§ 41.50(f).
AFFIRMED
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