Kaskoun, Kenneth et al.Download PDFPatent Trials and Appeals BoardMar 6, 202012629383 - (D) (P.T.A.B. Mar. 6, 2020) 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. 12/629,383 12/02/2009 Kenneth Kaskoun QCOM-1775US (080909) 7726 112246 7590 03/06/2020 Loza & Loza, LLP/Qualcomm 305 N. Second Ave., #127 Upland, CA 91786 EXAMINER WHITAKER, ANDREW B ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 03/06/2020 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): ocpat_uspto@qualcomm.com qualcomm-pto@lozaip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KENNETH KASKOUN, BARRY MATSUMORI, NICHOLAS YU and MATTHEW NOWAK ___________ Appeal 2019-000199 Application 12/629,383 Technology Center 3600 ____________ Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH, and JAMES B. ARPIN, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge WHITEHEAD JR. Opinion Concurring filed by Administrative Patent Judge ARPIN. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 is appealing the final rejection of claims 1–15, 24–29 and 31–37 under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Introduction 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies QUALCOMM Incorporated, as the real party in interest. Appeal Brief 2. Appeal 2019-000199 Application 12/629,383 2 According to Appellant, the invention is directed to “electronic branding, and more specifically to a device located on a consumer product that sends information regarding the product and/or the product user to a remote receiver.” Specification ¶ 2. Representative Claim 1. A system for wirelessly transmitting information comprising: a memory, separated into a plurality of memory portions, wherein the memory is configured to establish separate writable levels of access to each of the plurality of memory portions and store different portions of information associated with a consumer product to a respective memory portion according to each writable level of access; a controller coupled to the memory, wherein each of the controller and the memory are located on the consumer product, and wherein the controller is configured to selectively determine, in accordance with different information levels of access, which of the different portions of information associated with the consumer product to transmit in response to an interrogation received from a receiver separate from the consumer product; and a transmitter coupled to the controller and configured to wirelessly transmit the selected portions of information to the receiver, in accordance with each information level of access. Appeal 2019-000199 Application 12/629,383 3 References Name2 References Date Suila US 2002/0194303 A1 December 19, 2002 Katagishi US 2003/0120745 A1 June 26, 2003 Vock US 2003/0163287 A1 August 28, 2003 Winkler US 2008/0157931 A1 July 3, 2008 Rejections on Appeal Claims 1–15, 24–29 and 31–37 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to patent-ineligible subject matter. Final Action 4–6. Claims 1–3, 5–7, 9–15, 22, 24–29, 31 and 35 stand rejected under pre- AIA 35 U.S.C. § 103(a) as being unpatentable over Katagishi and Winkler. Final Action 6–17. Claims 4, 8, 36 and 37 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Katagishi, Winkler, and Suila. Final Action 17–19. Claims 32–34 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Katagishi, Winkler, and Vock. Final Action 19–20. ANALYSIS Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed May 8, 2018), the Reply Brief (filed October 4, 2018), the Final Action (mailed October 19, 2017) and the Answer (mailed August 10, 2018), for the respective details. 2 All reference citations are to the first named inventor only. Appeal 2019-000199 Application 12/629,383 4 PRINCIPLES OF LAW A. Section 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“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.”); see also 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.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India Appeal 2019-000199 Application 12/629,383 5 rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second part of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Appeal 2019-000199 Application 12/629,383 6 B. USPTO Section 101 Guidance In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Id. at 51; see also October 2019 Update at 1. Under the 2019 Revised Guidance and the October 2019 Update, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4 2019 Revised Guidance, 84 Fed. Reg. at 52–55. 3 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”) (available at https://www.uspto.gov/sites/default/files/ documents/peg_oct_2019_update.pdf). 4 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See 2019 Revised Guidance –Section III(A)(2), 84 Fed. Reg. 54–55. Appeal 2019-000199 Application 12/629,383 7 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 52–56. 35 U.S.C. § 101 Rejection Alice/Mayo—Step 1 (Abstract Idea) Step 2A–Prongs 1 and 2 identified in the 2019 Revised Guidance Step 2A, Prong One (Recitation of an Abstract Idea) The Examiner determines the claims are patent ineligible under 35 U.S.C. § 101. See Final Action 4–5. The Examiner finds: Claims 1, 24, 27, and 28 recite, in part, a system, method, and computer program product for establishing separate writable levels of access, selectively determine in accordance with the levels of access, different portions of information associated with a consumer product to be transmitted to a separate receiver. These steps describe the concept of an abstract idea ‘of itself,’ which corresponds to concepts identified as abstract ideas by the courts, such as processes of collecting data, recognizing certain data within the collected data set, and storing that recognized data in a memory (Content Extraction) wherein “an idea ‘of itself”’ is used to describe an idea standing alone such as an uninstantiated [sic] concept, plan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper” [please refer to the USPTO’s July 2015 Update to Subject Matter Eligibility, section III (C)]. Appeal 2019-000199 Application 12/629,383 8 Final Action 5. The claims employ a memory, a controller and a transmitter to transmit consumer product information to a receiver separate from the consumer product. See claim 1. We do not agree with the Examiner’s determination because the claims do not recite an abstract idea exception within the groupings of subject matter ((a) mathematical concepts, (b) certain methods of organizing human activity, (c) mental processes) identified in the 2019 Revised Guidance. See 2019 Revised Guidance at 52. Therefore, we conclude the claims do not recite an abstract idea pursuant to Step 2A, Prong One of the guidance. See Revised Guidance, Section III(A)(1) (Prong One: Evaluate Whether the Claim Recites a Judicial Exception). We do not sustain the Examiner’s 35 U.S.C. § 101 rejection of independent claims 1, 24, 27 and 28, all commensurate in scope, as well as, dependent claims 2–15, 25, 26, 29, and 31–37. Appeal 2019-000199 Application 12/629,383 9 35 U.S.C. § 103 Rejection Katagishi’s Figure 11 is reproduced below: Figure 11 shows “the overall structure of an information receiving system according to a fourth embodiment of the present invention.” Katagishi ¶ 46. “A feature of Embodiment 4 is applying access control to information that cellular phone 20 reads from RFID 10.” Katagishi ¶ 84. “In the memory 13 of RFID 10, personal information (D4) is stored in lieu of the product ID, and access control information (D5) has been stored beforehand. Controller 14 causes the RFID to send cellular phone 20 only the items of personal information that have been approved for transmission, based on the access control information.” Katagishi ¶ 86. Appeal 2019-000199 Application 12/629,383 10 Katagishi’s Figure 13 is reproduced below: Figure 13 “illustrates an example of a display shown when entering personal information items to be stored in the RFID, some of which are set for access control. Katagishi ¶ 48. Figure 13 “is an example of a display shown when using RFID reader/writer 24 to enter personal information items stored in RFID 10 of business card 1A that require access information.” Katagishi ¶ 89. “The user can set each item of personal information as accessible or not accessible (not for sending). When the user selects Write button G8, the personal information with access control information is stored in memory 13 of RFID 10 through RFID reader/writer 24. When the user selects Cancel button G9, the entered information is canceled.” Katagishi ¶ 90. Appellant contends: Appellant notes that the disclosure in Katagashi does not teach “a memory, separated into a plurality of memory portions, wherein the memory is configured to establish separate writable levels of access to each of the plurality of memory portions and store different portions of information associated with a consumer product to a respective memory portion according to each writable level of access.” [ ] Katagashi discloses that the data (product ID, personal information) is Appeal 2019-000199 Application 12/629,383 11 provided by a single entity, and thus would not use separate writable levels of access to each of the memory portions. Appeal Brief 23. Appellant’s contention is echoed in the Examiner’s findings: While Katagishi discloses the use of the controller and access levels of information provided (Katagishi ¶26-¶27 and ¶57); Katagishi does not expressly disclose wherein the memory is configured to establish separate writable levels of access to each of the plurality of memory portions and store different portions of information associated with a consumer product to a respective memory portion according to each writable level of access. Final Action 8. However, the Examiner finds Winkler addresses Katagishi’s noted deficiency: Winkler teaches wherein the memory is configured to establish separate writable levels of access to each of the plurality of memory portions and store different portions of information associated with a consumer product to a respective memory portion according to each writable level of access (RFID data access, Winkler ¶10-¶12; read/write tags, ¶8; granting access for a subset of information, ¶52; authorization levels, ¶71-¶73; see also ¶41 and ¶46). Final Action 8. Appellant further contends: Winkler does not solve the deficiencies of Katagashi, discussed above. Appellant notes that the Final Office Action does not explain the relevance of any of the citations, and leaves the Appellant guessing as to which disclosure is relevant to the presently claimed features. The Office Action first cites ¶¶0008 and 0010-12, but this portion of Winkler merely describes the generic workings of RFID systems, using read/write tags. Next, the Office Action cites ¶0052, which describes an access application for the enterprise portion (i.e., the server side) of an Appeal 2019-000199 Application 12/629,383 12 Electronic Product Code Information Service (EPCIS). Again, the relevance of this citation is lost on the Appellant. Going further, the Office Action then cites ¶¶007l-73, which describes how individual enterprises (e.g., supplier, distributor, retailer, etc.) can be authorized so that their servers/computers may access already-collected RFID data that resides in network storage. Finally, the Office Action cites ¶¶0041 and 0046, which describe the process of a reader reading data from an RFID tag (¶004l), and arranging a EPCIS network interface for different network framework levels (¶0046). None of these citations bear any relevance whatsoever to the presently claimed features or the disclosure in Katagashi. Appeal Brief 24. The Examiner further finds that Katagishi discloses, “the ability to prestore product summary information D3 (hereinafter product summary) in RFID 10 separately from the product information and the ability to present the product summary to the user when the cellular phone is waiting to obtain product information from the server.” See Answer 7 (“Katagishi also discusses in ¶82 how the product summary can be stored differently from product information.” (citing Katagishi ¶ 82 (3rd embodiment))). Winkler discloses: What EPCIS [electronic product code information service] provides is a technical specification for a data communication interface in a model that allows different applications to leverage EPC-related data both within and across enterprises. In particular, the EPCIS enables the capturing and querying of EPC- related data using a defined set of service operations and associated EPC-related data standards, all combined with appropriate security mechanisms that satisfy the needs of user enterprises. In other words, the EPCIS places no restrictions on the different enterprises’ underlying database, underlying operating system, underlying programming language, or underlying information system integration. Winkler ¶ 37 (emphasis added). Appeal 2019-000199 Application 12/629,383 13 Claim 1 simply requires a memory separated into portions wherein the portions are configured with separate writable levels of access and a controller configured to determine which portions, in response to a received interrogation, to transmit. We agree with the Examiner that Katagishi discloses in the 3rd embodiment, separating types of information and presenting one type of information to the user while the cellular phone waits to obtain another type of information from the server. See Answer 7 (citing Katagishi ¶ 82). However, we do not find that this alone establishes different writable levels of access as required by the claims. Winkler does not address Katagishi’s deficiency because Winkler indicates that the EPCIS does not restrict the database or underlying information system. See Winkler ¶ 37. Furthermore, none of Winkler’s paragraphs cited by the Examiner address Katagishi’s noted deficiency. See Final Action 8. Nevertheless, Katagishi discloses that the, “Controller 14 causes the RFID to send cellular phone 20 only the items of personal information that have been approved for transmission, based on the access control information.” Katagishi ¶ 86 (4th embodiment). Katagishi further discloses: The user can set each item of personal information as accessible or not accessible (not for sending). When the user selects Write button G8, the personal information with access control information is stored in memory 13 of RFID 10 through RFID reader/writer 24. When the user selects Cancel button G9, the entered information is canceled. Katagishi ¶ 90. Katagishi also discloses: Although it is possible to store only the information items set as “accessible” in memory 13 of RFID 10, all personal information items are stored in RFID 10 in Embodiment 4 so that the personal Appeal 2019-000199 Application 12/629,383 14 information can be provided to the person who has preset information that unlocks the access control. Katagishi ¶ 90. Accordingly, we find that Katagishi discloses “wherein the memory is configured to establish separate writable levels of access” as recited in claim 1. Further, Katagishi discloses that “In the memory 13 of RFID 10, personal information (D4) is stored in lieu of the product ID, and access control information (D5) has been stored beforehand.” Katagishi ¶ 86. We find that the type of information stored in the memory is inconsequential because it does not alter the physical structure of the memory itself and would be considered obvious to one of ordinary skill in the art. “As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). Therefore as long as Katagishi discloses that there are separate writable levels of access, the claim limitation reads upon Katagishi’s teachings. Further, Appellant’s argument that, “Katagashi discloses that the data (product ID, personal information) is provided by a single entity, and thus would not use separate writable levels of access to each of the memory portions” is not commensurate with the scope of claim 1 because claim 1 does not stipulate the type of entity required to establish the claimed writable levels of access. See Appeal Brief 23. Consequently, we find Katagishi discloses the invention recited in claim 1 with the exception of the type of information stored to the memory portions which we determined would have been an obvious modification to one of ordinary skill in the technology. Accordingly, we sustain the Appeal 2019-000199 Application 12/629,383 15 Examiner’s obviousness rejection of independent claims 1, 19, 24 and 28, as well, as dependent claims 2, 3, 6, 7, 9–15, 25, 26, 29, 31 and 35 argued together. See Appeal Brief 25. Appellant argues that, “Katagishi fails to disclose at least ‘wherein the controller is configured to transmit a requested portion of the information associated with the consumer product in response to a query from the receiver,’ (emphasis added) as recited in dependent claim 5.” Appeal Brief 25–26. As we stated above, Katagishi discloses that the, “Controller 14 causes the RFID to send cellular phone 20 only the items of personal information that have been approved for transmission, based on the access control information.” Katagishi ¶ 86 (4th embodiment). Also, as we have determined above, the type of information is inconsequential because it does not alter the physical structure of the memory itself and would be considered an obvious modification to one of ordinary skill in the art. We sustain the Examiner’s obviousness rejection of dependent claim 5. We also sustain the Examiner’s obviousness rejections of dependent claims 4, 8, 36 and 37 as well as, claims 32–34 because Appellant argues that neither Suila nor Vock overcome the deficiencies of the Katagishi/Winkler combination with respect to independent claim 1, as well as, independent claim 32. See Appeal Brief 26. We did not find the Katagishi/Winkler combination to be deficient. Appeal 2019-000199 Application 12/629,383 16 CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–15, 24– 29, 31–37 101 Eligibility 1–15, 24– 29, 31–37 1–3, 5–7, 9– 15, 22, 24– 29, 31, 35 103 Katagishi, Winkler 1–3, 5–7, 9–15, 22, 24–29, 31, 35 4, 8, 36, 37 103 Katagishi, Winkler, Suila 4, 8, 36, 37 32–34 103 Katagishi, Winkler, Vock 32–34 Overall Outcome 1–15, 24– 29, 31–37 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. § 1.136(a)(1)(v). AFFIRMED Appeal 2019-000199 Application 12/629,383 17 ARPIN, Administrative Patent Judge, concurring. I agree with the panel’s affirmance of the obviousness rejections of the pending claims. However, I am persuaded that the pending claims are directed to judicial exception, i.e., a mental process, without significantly more and, therefore, are patent ineligible. Consequently, I respectfully disagree with the reversal of the Examiner’s patent eligibility rejection of the pending claims, and I would also affirm the Examiner’s rejection of claims 1–15, 24–29 and 31–37 under 35 U.S.C. § 101. 1. Claim 1 recites an abstract idea. Claim 1 is representative and broadly recites (1) storage of information associated with a consumer product in different portions of a memory (“a memory, separated into a plurality of memory portions, wherein the memory is configured to establish separate writable levels of access to each of the plurality of memory portions and store different portions of information associated with a consumer product to a respective memory portion according to each writable level of access”); (2) identification of a portion of the stored information for transmission in accordance with its access level and responsive to a received inquiry (“a controller coupled to the memory, wherein each of the controller and the memory are located on the consumer product, and wherein the controller is configured to selectively determine, in accordance with different information levels of access, which of the different portions of information associated with the consumer product to transmit in response to an interrogation received from a receiver separate from the consumer product”); and (3) transmission of the identified information (“a transmitter coupled to the controller and configured to wirelessly transmit the selected portions of information to the receiver, in Appeal 2019-000199 Application 12/629,383 18 accordance with each information level of access”). See Appeal Brief 28 (Claims App.). The Examiner finds claim 1 is “directed to the abstract idea of establishing separate writable levels of access within a memory and transmitting selected portions of information in accordance with the information level of access,” and “[t]hese steps describe the concept of an abstract idea ‘of itself,’ which corresponds to concepts identified as abstract ideas by the courts, such as processes of collecting data, recognizing certain data within the collected data set, and storing that recognized data in a memory (Content Extraction).” Final Action 5. I agree. Appellant contends that the recited system can receive information from different sources, e.g., a user or a manufacturer; store the information separately; and identify and selectively transmit the information based, in part, on the storing entity. Appeal Br. 17–18. However, separate receipt, storage, and release of information are basic to the handling and analysis of information whether accomplished by categorizing and filing information separately in file folder in a file cabinet or in a computer’s memory. The Examiner found, “[u]sing a computer to deliver and receive data, and create some output that might be characterized as being dependent on a level of access amounts to electronic data query and retrieval – one of the most basic functions of a computer.” Answer 5. I agree with the Examiner. The Office explains, “claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions.” October 2019 Update at 7. For example, the Office notes “a claim to ‘collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high Appeal 2019-000199 Application 12/629,383 19 level of generality such that they could practically be performed in the human mind.” Id. (quoting Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)); see Final Action 2 (“Merely requiring the selection and manipulation of information-to provide a ‘humanly comprehensible’ amount of information useful for users, by itself does not transform the otherwise-abstract processes of information collection and analysis.”); see also Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n; 116 F.3d 1343, 1347 (Fed. Cir. 2014) (“collecting data, . . . recognizing certain data within the collected data set, and . . . storing that recognized data in a memory”). Further, as the Office explains: Claims can recite a mental process even if they are claimed as being performed on a computer. . . . The courts have found claims requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind. October 2019 Update at 8. Therefore, I am persuaded that claim 1 recites a mental process. 2. Claim 1 does not integrate the abstract idea into a practical application. I also am persuaded that claim 1 does not integrate the abstract idea into a practical application. Claim 1 recites four components: a memory, a controller coupled to the memory, a receiver for receiving inquiries and providing them to the controller, and a transmitter for transmitting information identified by the controller. Appeal Brief 28 (Claims App.). The Specification makes clear that these are generic components performing Appeal 2019-000199 Application 12/629,383 20 known functions.5 E.g., Specification ¶¶ 26 (describing the “transmitter”), 27 (describing the “memory”), 36 (“The receiver may be a handheld device that is capable of reading the broadcasted information. For example, the handheld device may be a cellular telephone, a smart phone, a handheld personal communication systems (PCS) unit, a portable data unit such as personal data assistant, a portable music player (such as an mp3 player), a portable game device, a point of sale device, a room monitor, GPS/position location device, asset tracking device, meter reading device, etc.”), 63 (generally describing the “controller” and “memory”), 64 (“Examples of the processor readable medium include an electronic circuit, a semiconductor memory device, a ROM, a flash memory, an erasable ROM (EROM), a floppy diskette, a compact disk CD-ROM, an optical disk, a hard disk, a fiber optic medium, etc. The code segments may be downloaded via computer networks such as the Internet, Intranet, etc.”). The components, considered individually, do not link the abstract idea to a particular machine or technology or describe an improvement to the functioning of a computer. Final Action 3–4, 6; Answer 3–4. Viewed as a whole, Applicant[’s] claims simply recite the concept of data collection as performed by a generic computer. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, 5 I acknowledge that some of the considerations at Step 2A, Prong Two, properly may be evaluated under the second part of the Alice/Mayo analysis (Step 2B of the Office guidance). See Final Action 5–6; Answer 3–4. For purposes of maintaining consistent treatment within the Office, I evaluate those considerations under first part of the Alice/Mayo analysis (Step 2A of the Office guidance). See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55 nn.25, 27–32. Appeal 2019-000199 Application 12/629,383 21 the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of collecting data using some unspecified, generic computer. Final Act. 3–4; see Answer 4. Thus, in view of Appellant’s claim recitations and Specification and consistent with the Examiner’s determinations, I am persuaded the rejected claim does not recite: (i) an improvement to the functioning of a computer; (ii) an improvement to another technology or technical field; (iii) an application of the abstract idea with, or by use of, a particular machine; (iv) a transformation or reduction of a particular article to a different state or thing; or (v) other meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. See MPEP § 2106.05(a)–(c), (e)–(h); see also Final Action 3–4 (quoted above); Answer 3–4 (“The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field.”). Thus, I conclude that the pending claim 1 does not integrate the judicial exception into a practical application and that the claims are directed to an abstract idea. 3. Claim 1 does not add significantly more than the abstract idea. Because I find that claim 1 recites an abstract idea and does not integrate that abstract idea into a practical application, I now consider whether claim 1 includes additional limitations, such that the claim amounts to significantly more than the abstract idea. As noted above, applying second part of the Alice/Mayo test, the Examiner concludes: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial Appeal 2019-000199 Application 12/629,383 22 exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claims recite the additional limitations of a “a memory configured to,” “storing means,” and “code” for storing or maintaining the product data, “a controller coupled to the memory,” “means for selectively determining” and “code” programmed to selectively determine which of the product information to transmit, "a transmitter coupled to the controller,” “means for wirelessly transmitting” and “code” configured to transmit the information in accordance with the level of access and a “receiver” separate from the consumer product are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well- understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to transmit information through an unspecified interface such as a receiver does not impose any meaningful limit on the computer implementation of the abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Final Action 5–6. Appellant contends that the Examiner fails to demonstrate that the additional components recited in the claims are well-understood, routine, and conventional, as required by in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Nevertheless, as noted above, the Specification shows the components are well-understood, routine and conventional. Specification ¶¶ 26, 27, 36, 63, 64; see Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP., Inc.), 3–4 (Apr. 19, 2018) (The specification may Appeal 2019-000199 Application 12/629,383 23 evidence that components are well-understood, routine, and conventional.); see also In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 614 (Fed. Cir. 2016) (As specification shows, server that receives data, extracts classification information from the received data, and stores the digital images is insufficient to add an inventive concept.). On this record, I agree with the Examiner that claim 1 recites generic computer components performing generic computer functions, which, considered individually or as an ordered combination, are well-understood, routine, and conventional; and claim 1 does not recite “significantly more” than the identified abstract idea. Final Action 5–6. Appellant does not contest the patent eligibility rejection of the remaining claims separately from claim 1. Consequently, I am not persuaded that the Examiner erred in determining that the pending claims are patent ineligible, and I would sustain that rejection. Copy with citationCopy as parenthetical citation