Ex Parte VARADHACHARY et al

Patent Trial and Appeal Board

Dec 17, 2018

15051249 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/051,249 02/23/2016
93599 7590
Eric P. Mirabel, JD, LLM
3783 Darcus Street
Houston, TX 77005
12/19/2018
FIRST NAMED INVENTOR
Atul VARADHACHARY
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Fannin-Bus 1003
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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):
emirabel@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ATUL VARADHACHARY, LEO LLNBECK,
and MARK WORSCHEH
Appeal2017-009229
Application 15/051,249
Technology Center 3600
Before MAHSHID D. SAADAT, BETH Z. SHAW, and
SCOTT E. BAIN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Fannin Innovation Studio Inc. as the real party in
interest. App. Br. 3.
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Application 15/051,249
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to "[a] method [and a system for]
maximizing the benefits from a group of diverse healthcare technologies"
wherein "management is pooled by bringing together experienced people
with a range of development or management skills across a range of fields,
and where several such experienced people who serve on management also
have specific responsibility for one or more of the projects in development."
Abstract, Spec. 2.
Exemplary Claim
Claim 1 is exemplary and illustrative of the invention and reads as
follows:
1. A method of maximizing the benefits from a group
of diverse healthcare technologies, by establishing a
management entity which in tum establishes a website which
sets forth its activities, where the activities comprise:
in-licensing, by the management entity, a diverse group
of healthcare technologies;
obtaining a funding pool to be allocated for development
of said group;
forming a group of business units which is each
responsible for developing at least one of the group of
technologies, and where distribution to each business unit from
the funding pool is determined by the management entity and
each business unit reports its technology development progress,
available and projected funding for development, and
expenditures to the management entity;
pooling the management entity and business unit
personnel to form a pool to manage development of the group
of technologies;
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determining, by the pool, the likelihood of each business
unit to obtain a collaborator or outside funding to develop its
technology;
distributing funding to a unit from the funding pool
and/or determining whether to actively assist each business unit
in seeking collaboration or outside funding based on said
likelihood;
assisting, by the pool, business units with approval and
commercialization of their technology such that the technology
is used to treat or diagnose patients; and
wherein the website discusses and continuously updates
the pool's activities as a way of attracting additional
technologies, funding and collaborators, to thereby enlarge the
pool and increase the pool's expertise.
The Examiner's Rejections
Claims 1-20 stand rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as indefinite for failing to particularly
point out and distinctly claim the subject matter regarded as the invention.
Final Act. 2.
Claims 1-20 stand rejected under 35 U.S.C. § 101 for being directed
to patent-ineligible subject matter. See Final Act. 3-5.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the briefs that the Examiner has erred. We are unpersuaded by
Appellants' contentions and agree with and adopt the Examiner's findings
and conclusions in: (i) the action from which this appeal is taken (Final Act.
2-5); and (ii) the Answer (Ans. 2--4) to the extent they are consistent with
our analysis below.
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THE REJECTION UNDER§ 112
Section 112's second paragraph requires that the specification
"conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the [applicant] regards as his invention."
35 U.S.C. § 112 ,r 2.
Due to the need for "particular[ity]" and "distinct[ness]," claim
language that "is ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention" warrants a
rejection under§ 112 ,r 2. In re Packard, 751 F.3d 1307, 1311, 1313
(Fed. Cir. 2014); see Ex parte McAward, Appeal 2015-006416, 2017 WL
3669566, at *5 (PTAB Aug. 25, 2017) (precedential); see also In re
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (explaining that "[t]he
legal standard for definiteness is whether a claim reasonably apprises those
of skill in the art of its scope"); In re Moore, 439 F.2d 1232, 1235 (CCP A
1971) (requiring "a reasonable degree of precision and particularity" in
claims). Similarly, the Supreme Court has held in a litigation context that
§ 112 ,r 2 "require[s] that a patent's claims, viewed in light of the
specification and prosecution history, inform those skilled in the art about
the scope of the invention with reasonable certainty." Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). The definiteness
requirement "strikes a 'delicate balance' between 'the inherent limitations of
language' and providing 'clear notice of what is claimed."' Son ix Tech. Co.
v. Publ'ns Int'!, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) (quoting
Nautilus, 134 S. Ct. at 2129).
The Examiner rejects claims 1-20 under 35 U.S.C. § 112(b ), as
"being indefinite" (Final Act. 2). In particular, as to independent claims 1,
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8, and 15, the Examiner concludes that it is not clear if "the pool" recited in
lines 13 and 17 "refers to the funding pool or (managing) pool." Id.
Appellants contend "[i]t is clear, however, that 'the pool' refers to the
'managing pool,' because all references to 'the pool' follow the introductory
clause: 'pooling the management entity and business unit personnel to form
a pool to manage development of the group of technologies ... "' and
"[b] efore that clause, the term 'funding pool' is used in the claims ( to refer
to the funding pool)." App. Br. 12. In response, the Examiner explains the
term "'the pool' can refer to either the 'funding pool' or 'the pool to manage
development of the group of technologies.'" Ans. 2-3.
We agree with the Examiner's finding that the claims are unclear.
The test for definiteness under 35 U.S.C. § 112(b) is whether "those skilled
in the art would understand what is claimed." Orthokinetics, Inc., v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). The skilled artisan reading the claims would not be able to
ascertain the scope of the claimed invention, specifically the term "the pool"
recited in claims 1, 8, and 15, because it could refer to either one of the two
types of pools in the claim. Therefore, we sustain the rejection of claim 1-
20 under the second paragraph of 35 U.S.C. § 112.
THE REJECTION UNDER§ 101
Principles of Law
The Patent Act defines patent-eligible subject matter broadly:
"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
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requirements of this title." 35 U.S.C. § 101. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. Pty. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the
Supreme Court explained that § 101 "contains an important implicit
exception" for laws of nature, natural phenomena, and abstract ideas. See
Diamondv. Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court
set forth a two-step analytical framework for evaluating patent-eligible
subject matter: 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. If so, "consider the elements of each claim both individually and
'as an ordered combination' to determine whether the additional elements"
add enough to transform the "nature of the claim" into "significantly more"
than a patent-ineligible concept. Id. at 2355, 2357 ( quoting Mayo, 566 U.S.
at 79); see Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
Mayo/Alice Step One
The Examiner rejects claims 1-20 under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 3-5. The
Examiner particularly determines that the claims are directed to "a method
of organizing human activity" and "are similar to other concepts related to
managing relationships or transaction between people that have been found
abstract by courts such as creating a contractual relationship in buySAFE,
and mitigating settlement risk in Alice." Final Act. 4.
Appellants contend the Examiner erred. See App. Br. 12-15; see also
Reply Br. 1-2. Appellants argue that, unlike the abstract idea rooted in a
"fundamental economic practice" in Alice, their claims "are limited to a
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particular complex, multi-step business method, which the PTO has tacitly
admitted is novel and unconventional, as there is no prior art rejection. App.
Br. 13. Appellants also argue that "[t]here is no danger of 'monopolization'
or 'pre-emption' of all verification in all fields, and certainly no such danger
with respect to 'basic tools of scientific and technological work' (which was
the Court's purpose in carving out exceptions to patentable subject matter in
Alice and Bilski)." Id.
The Examiner explains "the claimed invention focuses on certain
independently abstract ideas that use computers as tools and not on an
improvement in computers as tools." Ans. 3. With respect to novelty, the
Examiner states "the existence of novel and/or non-obvious features does
not necessarily cure the deficiencies of the claims with respect to the abstract
idea." Ans. 3--4 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d. 709,
715-16 (Fed. Cir. 2014)).
Appellants' arguments do not persuade us of Examiner error. The
"abstract idea" category encompasses a variety of concepts including,
among other things, mathematical formulas and methods of organizing
human activity. See Alice, 134 S. Ct. at 2355-56; Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015)
( deeming the claim at issue is "not meaningfully different from the ideas
found to be abstract in other cases before the Supreme Court and our court
involving methods of organizing human activity"); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1351-55 (Fed. Cir. 2014) (creating a contractual
relationship); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1367---68, 1376-77 (Fed. Cir. 2011) (verifying credit-card transactions); In re
Comiskey, 554 F.3d 967, 970-71, 981 (Fed. Cir. 2009) (conducting an
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arbitration). Here, the focus of the claims is organizing human activity and
"maximizing the benefits from a group of diverse healthcare technologies,"
which uses technology as a tool, rather than improving the underlying
technology.
Furthermore, although preemption may denote patent ineligibility, its
absence does not demonstrate patent eligibility. See FairWarning, 839 F.3d
at 1098. For claims covering a patent-ineligible concept, preemption
concerns "are fully addressed and made moot" by an analysis under the
Mayo/Alice framework. Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
With respect to novelty, "under the Mayo/Alice framework, a claim
directed to a newly discovered law of nature ( or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility." Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). "[A] claim for a new abstract
idea is still an abstract idea." Synopsys, 839 F.3d at 1151. Similarly, a claim
for a beneficial abstract idea is still an abstract idea. See Ariosa, 788 F.3d at
1379-80. Further, the Federal Circuit has expressly rejected the notion that
"abstract ideas remain patent-eligible under § 101 as long as they are new
ideas, not previously well known, and not routine activity." Ultramercial,
772 F.3d. at 714--16.
Mayo/Alice Step Two
The Examiner finds the claims use generic computer components to
perform generic computer functions, which "does not amount to
significantly more than the recited abstract idea." See Final Act. 4. The
Examiner particularly determines:
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Id.
The only additional limitation in the claim relate to the use of a
website. This would require a processor and memory in order
to perform basic computer functions. These components are
construed at the highest level of generality. Thus, the recited
generic processor component performs no more than its basic
processor functions. These additional elements are well
understood, routine and conventional limitation that amounts to
mere instructions to implement the abstract idea on a website.
Taking these computer limitations as an ordered combination
adds nothing that is not already present when the elements are
taken individually.
Appellants assert that the claims satisfy Mayo/Alice step two because
the claims recite "'wherein the website discusses and continuously updates
the pool's activities as a way of attracting additional technologies, funding
and collaborators, to thereby enlarge the pool and increase the pool's
expertise."' App. Br. 14. Appellants assert "[t]his discussion and updating
of the website's discussion of the management pool's activities cannot be
accomplished without a website and internet technology. There is no way to
so update activity summaries where they are in printed form, as used prior to
website technology being available." Id. Appellants also assert that the
claims here are similar to the claims in DDR Holdings, and are thus drawn to
patentable subject matter. See App. Br. 14--15 (citing DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). DDR Holdings does
not help Appellants.
In DDR Holdings, the Federal Circuit determined that certain claims
satisfied Mayo/Alice step two because "the claimed solution amount[ ed] to
an inventive concept for resolving [a] particular Internet-centric problem,"
i.e., a challenge unique to the Internet. DDR Holdings, 773 F.3d at 1257-59;
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see Synopsys, 839 F.3d at 1151 (noting that "[i]n DDR Holdings, we held
that claims 'directed to systems and methods of generating a composite web
page that combines certain visual elements of a "host" website with content
of a third-party merchant' contained the requisite inventive concept"). In
DDR Holdings, the Federal Circuit explained that the patent-eligible claims
specified "how interactions with the Internet are manipulated to yield a
desired result ... that overrides the routine and conventional sequence of
events ordinarily triggered by the click of a hyperlink." DDR Holdings,
773 F.3d at 1258. The court reasoned that those claims recited a
technological solution "necessarily rooted in computer technology" that
addressed a "problem specifically arising in the realm of computer
networks." Id. at 1257.
We are not persuaded that the claimed features are rooted in computer
technology because "there is nothing generic about the 'computer-
implemented solution' in the claims, i.e.: a website which 'discusses and
continuously updates the pool's activities as a way of attracting additional
technologies, funding and collaborators, to thereby enlarge the pool and
increase the pool's expertise."' Reply Br. 2. In fact, the argued
improvement is focused on an alleged improvement to the abstract idea. See
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) ("[T]he focus of the claims is not on such an improvement in
computers as tools, but on certain independently abstract ideas that use
computers as tools."). Furthermore, according to the Federal Circuit, "DDR
Holdings does not apply when ... the asserted claims do not 'attempt to
solve a challenge particular to the Internet."' Smart Sys., 873 F.3d at 1375
(quoting TL! Commc'ns, 823 F.3d at 613). Similarly, the claims here do not
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attempt to solve a challenge particular to a website that collects and updates
the data represented in a pool of participating entities.
The claims here do not achieve an improvement in computer
functionality. See Ans. 4. The claims do not describe an advance in
hardware or software that, for example, causes a computer itself or a website
related to a pool of entities to perform the business development functions
more efficiently. Nor do the claims address the operation of a computer
itself or a website itself. Instead, the claims relate to collecting real-world
information about a management entity or business unit that allegedly solves
"attracting additional technologies, funding and collaborators." See Reply
Br. 2. Further, the claims here do not recite a technological solution to a
technological problem specific to computer algorithms and networks
because they do not require any unconventional website and funding
business units. App. Br. 16-20 (Claims App.). Rather, they require generic
computer components for collecting and pooling business entities.
SUMMARY
For the reasons discussed above, Appellants' arguments have not
persuaded us of any error in the Examiner's findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the§ 101 rejection of
claims 1-2 0.
DECISION
We affirm the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 112(b ).
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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).
AFFIRMED
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