Ex Parte Singh et al

Patent Trial and Appeal Board

Oct 25, 2017

14074839 (P.T.A.B. Oct. 25, 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.
14/074,839 11/08/2013 Munindar P. Singh I310C3/US 4024
49277 7590 10/27/2017
SCENERA RESEARCH, LLC
155 Fleet Street
Portsmouth, NH 03801
EXAMINER
SAMS, MATTHEW C
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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.correspondence@sceneralabs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MUNINDAR P. SINGH and MONA SINGH
(Applicant: Scenera Mobile Technologies, LLC)
Appeal 2017-005734
Application 14/074,8391
Technology Center 2600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—20, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant Scenera Mobile Technologies, LLC identifies itself as the real
party in interest. App. Br. 3.
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Application 14/074,839
THE INVENTION
According to Appellant, the disclosed and claimed invention is
directed to “creating smart services,” where “[sjmart services combine basic
service functions” with “personal (often private) subscriber information.”
Spec. 113, 5.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for delivering smart services, comprising:
defining a situation including subscriber context
information based on private information of a service subscriber;
identifying an action associated with the defined situation;
determining that the service subscriber is in the defined
situation based on current subscriber context information; and
performing, in response to determining that the service
subscriber is in the defined situation, the action, wherein
performing the identified action includes accessing service-
specific resources that are made only indirectly available to the
service subscriber;
wherein at least one of the preceding actions is performed
on at least one electronic hardware component.
REJECTION
Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 7—9.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
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considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments with respect to claims 1—20, and
we incorporate herein and adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
Act. 8—9) and (2) the reasons and rebuttals set forth in the Examiner’s
Answer in response to Appellant’s arguments (Ans. 2—7). We incorporate
such findings, reasons, and rebuttals herein by reference unless otherwise
noted. However, we highlight and address specific findings and arguments
for emphasis as follows.
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70-71, 132 S. Ct. 1289, 1293 (2012). Although an
abstract idea, itself, is patent-ineligible, an application of the abstract idea
may be patent-eligible. Alice, 134 S. Ct. at 2355. Thus, we must 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.” Id. (citing Mayo, 132
S. Ct. at 1298, 1297). The claim must contain elements or a combination of
elements that are “sufficient to ensure that the patent in practice amounts to
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significantly more than a patent upon the [abstract idea] itself.” Id. (quoting
Mayo, 132 S. Ct. at 1294).
The Supreme Court set forth a two-part “framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Id. at
2355.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo,] 132 S. Ct., at
1296—1297. If so, we then ask, “[w]hat else is there in the claims
before us?” Id., at------- , 132 S. Ct., at 1297. To answer that
question, 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. Id., at------- , 132 S. Ct.,
at 1298, 1297. We have described step two 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., at------- , 132 S. Ct., at
1294.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim's
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
“abstract idea.” Rather, the Federal Circuit has explained that “both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
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cases.” Enfish, 822 F.3d 1327, 1334 (Fed. Cir. 2016); see also Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
(explaining that, in determining whether claims are patent eligible under
§101, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen—what
prior cases were about, and which way they were decided”).
Appellant argues the Examiner does not identify the category of
abstract idea using the actual claim language of claims 1—20, or identify a
case identifying a similar concept as abstract. App. Br. 8—11. More
specifically, Appellant argues “the Office has failed to identify whether the
claims are analogous to fundamental economic practices (e.g., intermediated
settlement), methods of organizing human activities (e.g., steps to hedge
risk), ‘an idea in itself (e.g., principle, an original cause, a motive), or a
mathematic relationship/formula.” Id. at 10. Appellant further argues “the
Office not only failed to identify to what concept identified by the courts the
claims are similar, but has not even identified any category recognized by
the Guidelines (or even otherwise known).” Id. Instead of an abstract idea,
Appellant argues:
the claims solve the problem of electronically providing services
that utilize the personal information and context of a service
subscriber without requiring actual knowledge of the
subscriber’s personal information. This is clearly not an abstract
problem but is one directed to maintaining the privacy of
subscribers to electronic service providers. For example, claim
1 recites ‘performing the identified action includes accessing
service-specific resources that are made only indirectly available
to the service subscriber. ’
App. Br. 10-11.
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We are not persuaded by Appellant’s arguments that the Examiner
erred. First, contrary to Appellant’s arguments, the Examiner properly
considered the language of the claim. Specifically, in both the Final Action
and the Answer, the Examiner focused on the specific limitations recited in
the claim prior to concluding the claim is directed to an abstract idea:
Is the claim directed to an Abstract Idea? Yes. Specifically, the
abstract idea (delivering smart services) is defined by various
steps in the claim (defining, identifying, determining, performing
and accessing). In other words, the claim is directed to defining
an event, creating an action to occur in response to the event,
waiting for the event to occur, then performing the action when
the event occurs using stored information.
Final Act. 2—3; see also Ans. 4 (making the same conclusion).
Second, the Examiner properly identified the abstract idea by
“examin[ing] earlier cases in which a similar or parallel descriptive nature
can be seen—what prior cases were about, and which way they were
decided.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016). Specifically, the Examiner concludes, and we agree,
that the claims are “directed to the abstract idea of ‘delivering smart
services’ which is “An Idea ‘Of Itself’” as “defined by various steps
(defining, identifying, determining, performing and accessing), with a
generic ‘electronic hardware component’ performing at least one of the
action.” Final Act. 8. The Examiner finds Appellant’s claim “falls into the
category of ‘Comparing new and stored information and using rules to
identify options.’” Final Act. 8; see also Ans. 2—3 (citing SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 Fed. Appx. 950 (Fed. Cir. 2014)
(nonprecedential)).
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In addition to SmartGene, the claims of the instant application are also
similar to the claims in Electric Power, which did “not go beyond requiring
the collection, analysis, and display of available information in a particular
field, stating those functions in general terms, without limiting them to
technical means for performing the functions that are arguably an advance
over conventional computer and network technology.” 830 F.3d at 1351.
Specifically, in that case our reviewing Court held that “collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas”
and that “analyzing information by steps people go through in their minds,
or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category.” Id. at 1353—54 (citations
omitted). As in Electric Power, the combination of various abstract ideas
relating to data collection and analysis is itself an abstract idea.
Third, in cases such as this where Appellant’s arguments is based on
the scope of the claim, “it will ordinarily be desirable—and often
necessary—to resolve claim construction disputes prior to a § 101 analysis,
for the determination of patent eligibility requires a full understanding of the
basic character of the claimed subject matter.” See Bancorp Servs. L.L.C. v.
Sun Life Assur. Co of Canada, 687 F.3d 1266, 1273—74 (Fed. Cir. 2012).
Considering the language recited in claim 1, we agree with the Examiner’s
conclusion that this feature upon which Appellant relies (maintaining the
privacy of subscribers to electronic service providers) is not recited in the
rejected claims. Ans. 3. Although claims are construed “in light of the
specification as it would be interpreted by one of ordinary skill in the art,”
limitations are not to be read from the specification into the claims. In re
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Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal
citations and quotations omitted); In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993).
In this case, claim 1 recites a performing step that makes the service-
specific resources only indirectly available. See App. Br. 16 (Claims
Appx.). However, claim 1 does not recite any limitation restricting access to
the information of the service subscriber. Id. Because we will not read
specific embodiments from the Specification into the claims, see Van Geuns,
988 F.2d at 1184, Appellant’s argument is not commensurate with the scope
of the claim.
Moreover, even if we agree with Appellant that the claims recite
electronically providing services that utilize the personal information and
context of a service subscriber without requiring actual knowledge of the
subscriber’s personal information, the specific limitations do not separate the
claimed invention from the abstract idea of “delivering smart services” and
“[comparing new and stored information and using rules to identify
options.” See Final Act. 8. For example, a method that defines an event
(situation), identifies an action associated with the event (situation),
determines the event has occurred (subscriber is in the situation), and
performs the action associated with the event in response to determining the
event has occurred by accessing resources abstracted from (made indirectly
available to) the subscriber, is still a method for “delivering smart services.”
See Final Act. 8 (“the claim is directed to defining an event, creating an
action to occur in response to the event, waiting for the event to occur, then
performing the action when the event occurs using stored information.”).
Rather than distinguishing the claimed invention from the abstract idea, the
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specific limitation is tied to the abstract idea and simply suggests that the
Examiner’s characterization is at a high level of abstraction, which is not
persuasive of error. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir, 2016) (“An abstract idea can generally be described at different
levels of abstraction. As the Board has done, the claimed abstract idea could
be described as generating menus on a computer, or generating a second
menu from a first menu and sending the second menu to another location. It
could be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.”).
Appellant further argues the Examiner failed to make a prima facie
case that the claims are directed to an abstract idea. App. Br. 11—12.
However, as our reviewing Court has held, “all that is required of the office
to meet its prima facie burden of production is to set forth the statutory basis
of the rejection ... in a sufficiently articulate and informative manner as to
meet the notice requirement of [35 U.S.C.] § 132.” In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011). We have reviewed the Examiner’s rejection
(Final Act. 8—9; Ans. 2—4) and conclude that the notice requirement is
satisfied in this case by the Examiner’s discussion of the theory of
unpatentability, including both the first and second prongs of the Alice!Mayo
framework. See Jung, 637 F.3d at 1363; see also Ex parte Badros, Appeal
2015-005795, 2017 WL 2303190, at *4 (PTAB May 19, 2017) (holding the
Examiner complied with section 132 when “the Examiner notifies the
Appellants that the claims are directed to a patent-ineligible abstract idea”).
Moreover, the scope of Appellant’s Appeal Brief directed to the section 101
rejection belies any argument that Appellant was not given sufficient notice
as to the basis of the rejection.
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Turning to step two of the Alice/Mayo framework, we must next
determine whether claims 1—20 contain “an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 134 S. Ct. at 2357.
Appellant argues that “the claims are patent eligible because, viewed
as a whole, the claims amount to significantly more than the alleged abstract
idea.” App. Br. 12.
However, Appellant’s contention consists of a recitation of the
limitations recited in claim 1 without any argument as to how the limitations,
considered individually or separately, are more than the abstract idea. Id. at
12—13. That is, Appellant does not identify how the claim does more than
claim generic computer steps performed on a generic computer. As noted by
the Examiner,
the Supreme Court identified limitations that were not found to
be enough to qualify as “significantly more” when recited in a
claim with a judicial exception that includes “mere instruction to
implement an abstract idea on a computer” and “a claim to an
abstract idea requiring no more than a generic computer to
perform generic computer functions that are well-understood,
routine and conventional activities previously known to the
industry”.
Ans. 5.
Consistent with the claims recitation of generic steps using generic
computer components, Appellant’s Specification describes the use of generic
computer devices, including:
any machine or computer readable medium for use by or in
connection with an instruction execution machine, system,
apparatus, or device, such as a computer-based or processor-
containing machine, system, apparatus, or device, that can read
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or fetch the instructions from the machine or computer readable
medium and execute the instructions.
Spec. 1136.
Thus, we agree with the Examiner’s determination that ‘“wherein at
least one of the preceding actions is performed on at least one electronic
hardware component’ is a perfect example of a limitation that does not
quality as ‘significantly more.’” Id. Performance of the method steps using
“at least one electronic hardware component” requires no more than a
generic computer to perform generic computer functions (define an event,
identify an action associated with the event, determine the event has
occurred, and perform the action associated with the event by accessing
resources abstracted from the subscriber) that are well-understood, routine,
and conventional activities previously known to the industry. See Final Act.
8.
Appellant has not persuasively explained how the claimed method,
when performed by the system (claim 10) or by the computer program
contained on a non-transitory computer readable medium (claim 20), would
be any different than the claimed method performed by a generic processor
or by a mental process. Therefore, even if the claimed method is carried out
by a computer (“hardware”), as argued by Appellant, the scope of the claims
encompasses a mental process implemented as well-understood, routine, and
conventional computer functions that do not transform the abstract mental
process into a patent-eligible invention. Alice, 134 S. Ct. at 2357—58.
Appellant further argues the claims do not preempt the use of an
abstract idea. See App. Br. 13 (“Claim 1 recites ‘significantly more’
limitations than the alleged abstract idea itself and for this reason does not
pose a risk . . . pre-empting others from using the alleged abstract idea . . .
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the dependent claims [] also add significantly more than the alleged abstract
idea.”). However, although the extent of preemption is a consideration, the
absence of complete preemption is not dispositive. See Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.”); Ultramercial
Inc. v. HuluLLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013) (“[T]he Supreme
Court has stated that, even if a claim does not wholly pre-empt an abstract
idea, it still will not be limited meaningfully if it contains only insignificant
or token pre- or post-solution activity—such as identifying a relevant
audience, a category of use, field of use, or technological environment.”)
(citations omitted), vacated and remanded, WildTangent, Inc. v.
Ultramercial LLC, 134 S. Ct. 2870 (2014) (remanding for consideration in
light of Alice, 134 S. Ct. 2347).
Appellant also argues that because there are no prior art rejections, the
instant claims are “novel and inventive in the field and thus cannot be well
understood, routine, or conventional in the field.” App. Br. 13. However,
although the second step in the Alice/Mayo framework is termed a search for
an “inventive concept,” the analysis is not an evaluation of novelty or non­
obviousness, but rather, a search for “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.”’ Alice,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 89-91. Accordingly, we are not
persuaded by Appellant’s argument.
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Finally, Appellant argues that, like the claims in DDR,2 3the claims
“recite a solution that is ‘not merely the routine or conventional use of the
Internet’” and are thereby patent-eligible. App. Br. 13—14. According to
Appellant:
As described in paragraph 0005 and 0138 of the instant
specification, the claims solve the problem of electronically
providing services that utilize the personal information and
context of a service subscriber without requiring actual
knowledge of the subscriber’s personal information. For
example, claim 1 recites “performing the identified action
includes accessing service-specific resources that are made only
indirectly available to the service subscriber.” Accordingly, as
in DDR, the claimed solution must amount to an inventive
concept rendering the claims patent-eligible.
App. Br. 14.
We are not persuaded by Appellant’s arguments that the Examiner
erred. First, as our reviewing court held in DDR, “not all claims purporting
to address Internet-centric challenges are eligible for patent.” 773 F.3d at
1258. As the Federal Circuit recognized:
For example, in our recently-decided UltramerciaP] opinion,
the patentee argued that its claims were “directed to a specific
method of advertising and content distribution that was
previously unknown and never employed on the Internet before.”
772F.3dat714. But this alone could not render its claims patent-
eligible. In particular, we found the claims to merely recite the
abstract idea of “offering media content in exchange for viewing
an advertisement,” along with “routine additional steps such as
updating an activity log, requiring a request from the consumer
to view the ad, restrictions on public access, and use of the
Internet.” Id. at 715-16.
2 DDR Holdings, LLCv. Hotels.com LLP, 773 F.3d 1245 (Fed. Cir. 2014).
3 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
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Id. Because Appellant has merely identified routine additional steps
(performing the identified action includes accessing service-specific
resources that are made only indirectly available to the service subscriber),
they are insufficient to render the claims patent-eligible.
Second, we disagree with that the claims in this case are directed to a
computer-centric problem similar to that in DDR. In DDR, the Court found
that the claims “do not merely recite the performance of some business
practice known from the pre-Internet world along with the requirement to
perform it on the Internet. Instead, the claimed solution is necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks.” Id. at 1257. Unlike the claims in DDR,
the claims in this case are merely adopting a pre-existing solution to a pre­
existing problem, in this case maintaining user privacy, for use with
computer technology. See Ans. 4—5.
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejections of claims 2—20, which are not separately argued.
DECISION
For the above reasons, we affirm the Examiner’s decision rejecting
claims 1—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. §41.50(f).
AFFIRMED
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