Ex Parte Speier

Patent Trial and Appeal Board

Jun 23, 2017

13083749 (P.T.A.B. Jun. 23, 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.
13/083,749 04/11/2011 Gary J. Speier 750.045US1 8820
21186 7590 06/27/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
SHANKER, JULIE MEYERS
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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 GARY J. SPEIER
Appeal 2015-003591
Application 13/083,749
Technology Center 3600
Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—21. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellant’s invention is directed to a method for patent claim analysis
and more particularly to patent claim matrix and non-literal infringement
(Spec. 1).
Appeal 2015-003591
Application 13/083,749
Claim 1 is illustrative:
1. A method comprising:
selecting, by one or more processors, a patent claim
with a plurality of versions;
identifying, by the one or more processors, a prior
version of the patent claim, from the plurality of versions, that
a target technology does literally infringe;
identifying, by the one or more processors, a subsequent
version of the patent claim, from the plurality of versions, that
the target technology does not literally infringe, the
subsequent version of the patent claim including at least one
claim amendment in comparison with the prior version of the
patent claim; and
notifying, by the one or more processors based on
identifying the subsequent version of the patent claim, a user
that the target technology does not infringe the patent claim
based on the doctrine of equivalents.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Appellant appeals the following rejections:
Claims 1—21 under 35 U.S.C. § 101 because the claimed invention is
directed to nonstatutory subject matter.
Claims 1, 2, 6—9, and 14—21 under 35 U.S.C. § 102(b) as anticipated
by Adler.
Claims 3—5 and 10-13 under 35 U.S.C. § 103(a) as unpatentable over
Adler and Speier.
Adler US 2006/0173920 A1
US 2007/0288256 A1
Aug. 3, 2006
Dec. 13, 2007Speier
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Application 13/083,749
ISSUES
Did the Examiner err in rejecting claims 1—21 under 35U.S.C. §101
because the claims are not directed to an abstract idea, because the Examiner
has provided no facts to support the rejection and because the claims recite
subject matter that is significantly more than an abstract idea?
Did the Examiner err in rejecting claims under 35 U.S.C. § 102(b) and
103(a) because Adler does not disclose identifying a prior version of the
patent claim that does literally infringe and identifying a subsequent version
of the patent claims that does not literally infringe?
ANALYSIS
Rejection under 35 U.S.C. § 101
We are not persuaded of error on the part of the Examiner in rejecting
claims 1—21 as being directed to patent ineligible subject matter by
Appellant’s argument that claims are not directed to an abstract idea.
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 implicit
exceptions: “[ljaws of nature, natural phenomena, and abstract ideas” are
not patentable. Alice Corp. Pty. Ltd. v. CLS BankInt’l, 134 S. Ct. 2347,
2354 (2014).
In determining whether a claim 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 and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
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claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes: fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
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S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
In the instant case, the Examiner asserts that independent claim 1 is
directed to “intellectual property analysis,” which is considered to be both a
fundamental economic or business practice, and a method of organizing
human activity. Ans. 3.
In our view, independent method claim 1, based on its express
limitations, is directed to identifying a prior version of the patent claim that
the target technology infringes, identifying a subsequent version of the
patent claim that the target technology does not infringe, and notifying a user
that the target technology does not infringe the patent claims based on the
doctrine of equivalence. In essence, the claim is directed to comparing
patent claims to target technology to determine infringement. We agree with
the Examiner that the practice of comparing patent claims to determine
infringement has been done for many years in the patent field and thus is a
fundamental economic practice.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under § 101.”). Accordingly, the mental
processes recited in independent claim 1, e.g., identifying a prior version of
a claim which the technology does infringe and a subsequent version of a
claim that the technology does not infringe, remain ineligible, even when
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Application 13/083,749
automated to reduce the burden on the user of what once could have been
done with pen and paper. Id. at 1375 (“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[, 409 U.S. 63
(1972)].”).
We are not persuaded of error on the part of the Examiner by the
Appellant’s argument that the claims do not preclude or preempt
performance of the method in other fields. “While preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015), cert, denied,
136 S. Ct. 701, 193 (2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”). And, “[w]here a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns axe fully
addressed and made moot.” Ariosa, 788 F.3d at 1379.
We are not persuaded of error on the part of the Examiner by
Appellants argument that the Examiner has not provided facts, rationale or
legal precedent to support the conclusion that intellectual property analysis
is a method of organizing human activity or a fundamental economic
practice. Consideration of evidence in making a determination under the
first step of the Alice framework has merit. See Apple, Inc. v. Ameranth,
Inc., 842 F.2d 1229 (Fed. Cir. 2016). But there is no requirement that
Examiners must provide evidentiary support in every case before a
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Application 13/083,749
conclusion can be made that a claim is directed to an abstract idea. See, e.g.,
“July 2015 Update: Subject Matter Eligibility” to 2014 Interim Guidance on
Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) 6
(“The courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law. Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception, and in most cases
resolve the ultimate legal conclusion on eligibility without making any
factual findings.”) (emphasis added). Evidence may be helpful in certain
situations where, for instance, facts are in dispute. But it is not always
necessary. It is not necessary in this case.
In addition, we do not agree that the Examiner provided no rationale
for the rejection. In our view, it is clear from the Examiner’s rejection that
the rationale for the rejection is that the practice of analyzi ng patent claims
for infringement is a fundamental economic practice.
In addition, to the extent Appellant suggests that particular steps
are required to be performed in specific ways to establish that a claim is
directed to an abstract idea, Appellant is mistaken. Instead, 35 U.S.C.
§132 sets forth a more general notice requirement whereby the
applicant is notified of the reasons for a rejection together with such
information as may be useful in judging the propriety of continuing with
prosecution of the application. See, e.g., In re Jung, 637 F.3d 1356,
1362 (Fed. Cir, 2011); see also July 2015 Update 6 (setting forth a
general notice requirement whereby the Examiner should “clearly
articulat[e] the reason(s) why the claimed invention is not eligible”
when rejecting on under 35 U.S.C. § 101); May 2016 Memorandum 2
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(“the rejection . . . must provide an explanation . . . which [is]
sufficiently clear and specific to provide applicant sufficient notice of
the reasons for ineligibility.”) (emphasis added). In this case, we find
the Examiner has provided an adequate explanation to meet said notice
requirement.
Turning to the second step of the Alice analysis, because we determine
that independent claim 1 is directed to an abstract idea, the claim must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements that is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
Appellant argues that the recitation of notifying the user in claim 1
and the element of a display module in claim 9 and the recitation of a
causing a machine to present a user interface in claim 17 are steps that are
substantially more than an abstract idea.
However, nothing in claim 1, nor in dependent method claims 2—10
and 12, purports to improve computer functioning or “effect an improvement
in any other technology or technical field.” Alice, 134 S. Ct. at 2359. Nor
do the claims solve a problem unique to the Internet. See DDR Holdings,
773 F.3d at 1257. The claims also are not adequately tied to “a particular
machine or apparatus.” Bilski, 561 U.S. at 601. As noted by the Examiner,
independent claim 1 appears to “require 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. 3.
In addition, we find no meaningful distinction between independent
claim 1 and independent claims 9 and 17; the claims all are directed to the
same underlying invention. As the Federal Circuit has made clear “the basic
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Application 13/083,749
character of a process claim drawn to an abstract idea is not changed by
claiming only its performance by computers, or by claiming the process
embodied in program instructions on a computer readable medium.” See
CyberSource, 654 F.3d at 1375—76 (citing In reAbele, 684 F.2d 902 (CCPA
1982)).
In view of the foregoing, we will sustain this rejection.
Rejection under 35 U.S.C. § 102(b)
We will not sustain this rejection because we agree with the Appellant
that Adler does not disclose identifying a prior version of the patent claim
that literally infringes and identifying a subsequent version of the patent
claim that does not literally infringe. The Examiner relies on paragraphs
114—116 of Adler for teaching this subject matter. Final Act. 4—5.
We find that paragraph 114 discloses that the Adler infringement
analyzer will determine whether each and every element of the claims of the
prior art is met by words or phrases describing the innovation. Paragraph
115 discloses that even if it is determined that every element of the claim is
not met by such words or phrases, one should not conclude that infringement
does not exist. Paragraph 116 discloses that the analyzer determines
whether the doctrine of equivalence is available for determining
infringement by analyzing the file wrapper of the prior art patent. Each
claim of the prior art patent is matched against the corresponding claim in
the application as originally filed to determine if an amendment has been
made of the claim at issue. If an amendment has been made, the user is
notified that the doctrine of equivalence may not be applicable to those
claims, and if no amendment has been made, the user is notified that the
doctrine of equivalence may be applicable to the claims. There is no
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Application 13/083,749
disclosure in these portions of Adler of identifying a prior version of patent
claims that literally infringes and identifying a subsequent version of patent
claims that does not literally infringe.
In view of the foregoing, we will not sustain the rejection as it is
directed to claim 1 and claims 2 and 6—8 dependent therefrom.
We will also not sustain this rejection as it is directed to independent
claims 9 and 17 from which claims 14, 15 and 8—21 depend, respectively,
because both independent claims contain similar language related to
determining infringement of different version of a patent claim.
Rejection under 35 U.S.C. §103(a)
We will not sustain this rejection because each of the claims rejected
under 35 U.S.C. § 103(a) depends from either claim 1 or 9, and the
Examiner relies on Adler for teaching the subject matter identified in our
discussion of the anticipation rejection to be lacking in Adler.
DECISION
We affirm the Examiner’s § 101 rejection.
We do not affirm the Examiner’s §§ 102(b) and 103(a) rejections.
TIME PERIOD
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)(1) (2009).
AFFIRMED
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