Ex Parte SpeierDownload PDFPatent Trial and Appeal BoardJun 23, 201713083749 (P.T.A.B. Jun. 23, 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. 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 2 Appeal 2015-003591 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 3 Appeal 2015-003591 Application 13/083,749 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 4 Appeal 2015-003591 Application 13/083,749 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 5 Appeal 2015-003591 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 6 Appeal 2015-003591 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 7 Appeal 2015-003591 Application 13/083,749 (“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 8 Appeal 2015-003591 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 9 Appeal 2015-003591 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 10 Copy with citationCopy as parenthetical citation