Ex Parte LundbergDownload PDFPatent Trial and Appeal BoardNov 22, 201714608520 (P.T.A.B. Nov. 22, 2017) Copy Citation 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. 14/608,520 01/29/2015 Steven W. Lundberg 3431.005US2 2480 21186 7590 11/27/2017 SCHWEGMAN LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER HOANG, HAU HAI ART UNIT PAPER NUMBER 2167 NOTIFICATION DATE DELIVERY MODE 11/27/2017 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): uspto@slwip.com SLW @blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN W. LUNDBERG Appeal 2017-011549 Application 14/608,520 Technology Center 2100 Before JOHN A. JEFFERY, BRUCE R. WINSOR, and JUSTIN BUSCH, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection of claims 21—41, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1-20 are cancelled. We affirm and designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b) (2015). 1 The real party in interest identified by Appellant is Black Hills IP Holdings, LLC. App. Br. 2. Appeal 2017-011549 Application 14/608,520 STATEMENT OF THE CASE The Invention Appellant’s disclosed invention relates to “automatically tracking change in ownership status of patents listed in a database at a patent registry.” Spec., Abstract. Claim 21, which is illustrative, reads as follows 21. A computer-implemented method of automatically tracking change in ownership of a patent listed in a database, the method comprising: receiving input identifying the patent to be tracked for changes in ownership, the input further including data associated with a plurality of selected fields relating to the patent, wherein the plurality of selected fields includes two or more of the following fields: name change in patent holder; date or date range of assignment; date of incorporation of assignor or assignee; place of incorporation, or address, of assignor or assignee; nationality of assignor or assignee; and nature of assignment; causing the presentation of each field in a user interface, wherein the user interface receives input; automatically performing a search of the database on a predetermined regular basis based on the input received, wherein the search result identifies one or more intervening changes in ownership status for the patent; and transmitting the search result for display in the user interface. 2 Appeal 2017-011549 Application 14/608,520 The Rejections Claims 21^41 stand rejected for non-statutory obviousness- type double patenting over claims 1-21 ofU.S. Patent No. 8,972,385. See Final Act. 3-17. Claims 21-34 and 38—41 stand provisionally rejected for non- statutory obviousness-type double patenting over claims 1-18 of copending Application 14/628,941. See Final Act. 17-31. Claims 21^41 stand rejected under 35 U.S.C. § 1012 as being directed to non-statutory subject matter. See Final Act. 31-37. The Record Rather than repeat the arguments here, we refer to (1) the Briefs (“App. Br.” filed May 12, 2017; “Reply Br.” filed Sept. 14, 2017) and the Specification (“Spec.” filed Jan. 29, 2015) for the positions of Appellant; and (2) the Final Office Action (“Final Act.” mailed Oct. 12, 2016) and Examiner’s Answer (“Ans.” mailed July 14, 2017) for the reasoning, findings, and conclusions of the Examiner. Only those arguments actually made by Appellant have been considered in this decision. Arguments that Appellant did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). 2 All rejections are under the provisions of 35 U.S.C. in effect prior to the effective date of the Leahy-Smith America Invents Act of 2011. 3 Appeal 2017-011549 Application 14/608,520 Related Appeals Appellant identifies one related appeal for App. No. 14/628,941 (Appeal No. 2017-011552). See App. Br. thirty (30) other related appeals: Anneal No. Annlication No. 2009-005709 10/128,141 2009-006404 10/874,486 2011-009966 11/061,383 2012-004166 11/061,312 2015-000319 13/309,080 2015-000321 13/309,127 2015-003180 13/309,039 2015-007422 13/309,146 2016-000912 13/309,060 2016-001687 11/888,632 2016-002121 13/309,200 2016-002680 13/310,279 2016-002792 12/605,030 2016-006797 13/310,368 2016-007186 13/573,803 2016-007415 13/464,598 2016-007623 13/408,877 2016-007787 13/310,322 2016-008030 13/253,936 2017-000280 13/408,917 2017-000386 11/098,761 . There are, in addition, at least Decided/Status Decision mailed Mar. 23, 2010 Decision mailed Aug. 2, 2010 Decision mailed Jan. 31, 2014 Decision mailed Nov. 4, 2014 Decision mailed May 27, 2016 Decision mailed July 26, 2017 Decision mailed Sept. 23, 2016 Decision mailed June 1, 2016 Decision mailed Aug. 25, 2017 Decision mailed Jan. 19, 2017 Decision mailed Aug. 28, 2017 Decision mailed Aug. 30, 2017 Decision mailed Sept. 1, 2017 Decision mailed Aug. 30, 2017 Decision mailed July 28, 2017 Decision mailed July 31, 2017 Decision mailed Sept. 6, 2017 Decision mailed Sept. 20, 2017 Decision mailed Aug. 3, 2017 Decision mailed Sept. 12, 2017 Decision mailed Nov, 17, 2017 4 Appeal 2017-011549 Application 14/608,520 2017-002337 14/010,376 Decision mailed Sept. 8, 2017 2017-003702 14/483,903 Decision mailed Sept. 25, 2017 2017-003815 14/094,542 Decision mailed Sept. 18, 2017 2017-004158 14/010,391 Decision mailed Oct. 25, 2017 2017-004159 14/010,380 Decision mailed Sept. 27, 2017 2017-004188 14/010,400 Decision mailed Nov. 3, 2017 2017-006390 13/409,189 Pending 2017-006642 13/310,452 Decision mailed Sept. 27, 2017 2017-011247 13/253,811 Decision mailed Nov. 1, 2017 DOUBLE PATENTING REJECTIONS Our review of the record indicates that terminal disclaimers submitted January 15, 2016 and February 29, 2016 have been approved. Document Code - DISQ, Feb. 1, 2016; Document Code - DISQ , Mar. 3, 2016. Accordingly, the approved terminal disclaimers render these rejections moot. We do not address the non-statutory double patenting rejections further, as they are not now before us. ISSUE The issue presented by Appellant’s arguments is whether the Examiner errs in finding claims 21-41 are directed to non-statutory subject matter under 35 U.S.C. § 101. ANALYSIS Patent eligibility is a question of law that is reviewable de novo. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be 5 Appeal 2017-011549 Application 14/608,520 statutorily eligible, the subject matter of an invention must be a “new and useful process, machine, manufacture, or composition of matter, or [a] new and useful improvement thereof.” 35 U.S.C. § 101. We initially note that claims 21-30 are directed to a “method,” i.e., a process, claims 31-37 are directed to a “system” implemented in “hardware,” i.e., a machine, claims 38 and 39 are directed to a “tool” implemented in “hardware,” i.e., a machine, claim 40 is directed to a “system,” which we construe in this case to be a machine, and claim 41 is directed to a “non-transitory machine- readable medium,” i.e., an article of manufacture. Thus, each of the claims is directed to one of the four statutory categories of patentable subject matter. The Supreme Court has held that there are implicit exceptions to the categories of patentable subject matter identified in § 101, including laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134 S. Ct. 2347, 2355 (2014). In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 71-73 (2012), the Supreme Court established an analytical framework under § 101 to distinguish patents that claim patent-ineligible laws of nature, natural phenomena, and abstract ideas—or add too little to such underlying ineligible subject matter—from those that claim patent-eligible applications of those concepts. To determine whether claims are patent eligible under § 101, we apply the Supreme Court’s two-step test as articulated in Alice. Prima Facie Case Appellant contends that the Examiner failed to make a prima facie case of ineligibility because of a failure to follow the guidance materials of the United States Patent and Trademark Office (USPTO) (specifically, Recent Subject Matter Eligibility Decisions, Memorandum (Nov. 2, 2016)). 6 Appeal 2017-011549 Application 14/608,520 See App. Br. 10 n.62; see also Reply Br. 2 n.2. We disagree. Even as stated in one of the USPTO’s guidance materials, “[f]allure of Office personnel to follow the USPTO’s guidance materials is not, in itself, a proper basis for either an appeal or a petition.” May 2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27,381, 27,382 (May 6, 2016). “Rejections will continue to be based upon the substantive law, and it is these rejections that are appealable.” Id. The Examiner has a duty to give notice of a rejection with sufficient particularity to give Appellant a fair opportunity to respond to the rejection. See 35 U.S.C. § 132(a). Here, we find the Examiner’s rejection satisfies the initial burden of production by identifying that the claims include limitations similar to the identified abstract idea in Intellectual Ventures I, LLC v. Erie Indemnity Co., 850 F.3d 1315 (Fed. Cir. 2017) (first step of thq Alice analysis) and that the remainder of the claims do not include significantly more than the abstract idea because the generically-recited computer elements are well-understood, routine, and conventional, and therefore do not add meaningful limitations to the abstract idea (second step of the Alice analysis). Ans. 2-12. Accordingly, the Examiner (1) set forth the statutory basis for the rejection, namely 35 U.S.C. § 101; (2) concluded that the claims are directed to a judicial exception to § 101, namely an abstract idea, adding too little to the abstract idea to render the claims patent eligible; and (3) explained the rejection in sufficient detail to permit Appellant to respond meaningfully. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, we find that the Examiner set forth a prima facie case of ineligibility. 7 Appeal 2017-011549 Application 14/608,520 Alice Step One According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Alice, 134 S. Ct. at 2355 (emphasis added). “[T]he ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). The Specification discusses the problem to be solved by the invention—an inventor, business manager, or patent attorney’s need to track a competitor’s activities related to patents. Spec. ^ 11. According to the Specification, “up-to-date information relating to change of ownership . . . occurring in [the] competitor’s patent portfolio may be particularly helpful to the inventor, business manager or patent attorney in planning strategy or making informed business decisions.” Id. Appellant’s invention solves the problem by proposing a user interface that serves as an automated ownership tracking tool. Id. ^ 57. Appellant relies on the arguments made for claim 21 to argue the patentability of the remaining pending claims. See generally App. Br. 10- 15; Reply Br. 2-5. We, therefore, select independent claim 21 as the representative claim for this group, and the remaining claims 22-41 stand or fall with claim 21. 37 C.F.R. § 41.37(c)(l)(iv). Here, claim 21 requires, in essence, receiving input identifying a patent to be tracked for changes in ownership, presenting fields in a user interface that receives input, performing a search on a predetermined regular basis based on the input 8 Appeal 2017-011549 Application 14/608,520 received, and identifying changes in ownership status of the patent for display. Accordingly, in the context of the Specification discussed above, claim 21’s “character as a whole” is directed to an automated ownership tracking tool that allows a user to track a patent’s ownership changes, such as a competitor’s patent. Appellant similarly asserts the claims, when considered as a whole, are “directed toward tracking changes in ownership of a patent or patent portfolio.” App. Br. 13; see also Reply Br. 3. Appellant argues the claims are not directed toward an abstract idea because, similar to the claims in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) and Enfish, 822 F.3d at 1335, tracking changes in ownership of a patent or patent portfolio “solves a specific issue arising in computer technology.” App. Br. 13. We disagree. The Court addressed improvements to computer-related technology in Enfish: Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis. Enfish, 822 F.3dat 1335. Thus, we determine whether claim 21 “focus[es] on a specific means or method that improves the relevant technology” or is 9 Appeal 2017-011549 Application 14/608,520 “directed to a result or effect that itself is the abstract idea and merely invoke[s] generic processes and machinery.” McRO, 837 F.3d at 1314. We find claim 21 at issue here bears a substantial similarity to the analyzed claim 12 that the Federal Circuit determined was patent ineligible in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Under the first step of Alice, the Federal Circuit in Electric Power Group stated [t]he claims in this case fall into a familiar class of claims “directed to” a patent-ineligible concept. The focus of the asserted claims, as illustrated by claim 12 . . . , is on collecting information, analyzing it, and displaying certain results of the collection and analysis. We need not define the outer limits of “abstract idea,” or at this stage exclude the possibility that any particular inventive means are to be found somewhere in the claims, to conclude that these claims focus on an abstract idea— and hence require stage-two analysis under §101. Id. at 1353. Like claim 12 in Electric Power Group, Appellant’s claim 21 involves collecting data from disparate sources, analyzing the data, and displaying results, and they amount to no more than providing a user with information about a patent’s ownership change by obtaining, analyzing, and displaying data. As such, claim 21 is “clearly focused on the combination of those abstract-idea processes. The advance [it purports] 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.” Elec. Power Grp., 830 F.3d at 1354. Thus, contrary to Appellant’s argument discussed above (App. Br. 13; see also Reply Br. 3), “the focus of the claims is not on ... an improvement in computers as tools, but on certain independently abstract ideas that use 10 Appeal 2017-011549 Application 14/608,520 computers as tools.” Elec. Power Grp., 830 F.3d at 1354. Accordingly, we find that claim 21 is not directed to an improvement to computer functionality, but involves nothing more than providing data, displaying data, and selecting data—activities squarely within the realm of abstract ideas. See id. at 1353-54 (when “the focus of the asserted claims” is “on collecting information, analyzing it, and displaying certain results of the collection and analysis,” the claims are directed to an abstract idea). Alice Step Two Turning to the second step of the Alice analysis, because we find claim 21 is directed to an abstract idea, we “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, 566 U.S. at 78). The Supreme Court describes the second step 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. (brackets in original) (internal quotations omitted). Appellant contends the ordered combination of the claimed invention amounts to significantly more than any abstract idea. App. Br. 14 (citing Bascom Global Internet Servs., Inc. v. AT&T Mobility, LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)). In particular, Appellant argues that the claimed invention “represents an improvement over previous ways of tracking changes in ownership of a patent or patent portfolio by tracking changes to two or more fields related to ownership.” App. Br. 15. We do not find that providing two or more fields relating to ownership constitutes significantly 11 Appeal 2017-011549 Application 14/608,520 more than the abstract idea. “[Mjerely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas.” Elec. Power Grp., 830 F.3d at 1355. Moreover, claim 21 does “not include any requirement for performing the claimed functions ... by use of anything but entirely conventional, generic technology. The claims therefore do not state an arguably inventive concept.” Id. at 1356. In short, each step does no more than require a generic computer processor to perform generic computer functions. See Spec. ^ 17 (describing use of generic computers). Thus, “the claims at issue amount to ‘nothing significantly more’ than an instruction to apply the abstract idea . . . using some unspecified, generic computer.” Alice, 134 S. Ct. at 2360 (citing Mayo, 566 U.S. at 71). Summary Appellant does not persuade us of error in the rejection of claim 21. Accordingly, we sustain the rejection of (1) independent claim 21; (2) independent claims 31, 38, 40, and 41, which are argued relying on the arguments made for claim 21 (see App. Br. 15); (3) claims 22-30, 32-37, and 39, which variously depend, directly or indirectly, from claims 21,31, and 38, and were not separately argued with particularity (see id.). Although the overall thrust of our analysis is the same as the Examiner’s reasoning, we have provided additional explanation not provided by the Examiner. Accordingly, in the interests of giving Appellant a full and fair opportunity to respond, we designate our affirmance as a new ground of rejection. 12 Appeal 2017-011549 Application 14/608,520 DECISION We do not reach the provisional double patenting rejections. The Examiner’s decision to reject claims 21^11 is affirmed and the affirmance is designated as a new ground of rejection within our authority under 37 C.F.R. §41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. §§ 41.50(f), 41.52(b). AFFIRMED 37 C.F.R. § 41.50(b) 13 Copy with citationCopy as parenthetical citation