Rajamani, Nithya et al.Download PDFPatent Trials and Appeals BoardMay 29, 202012824701 - (R) (P.T.A.B. May. 29, 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. 12/824,701 06/28/2010 Nithya Rajamani IN920100053US1(790.068) 1359 89885 7590 05/29/2020 FERENCE & ASSOCIATES LLC 409 BROAD STREET PITTSBURGH, PA 15143 EXAMINER SCHEUNEMANN, RICHARD N ART UNIT PAPER NUMBER 3624 MAIL DATE DELIVERY MODE 05/29/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NITHYA RAJAMANI and ANUPAM SARONWALA Appeal 2018–007685 Application 12/824,701 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and MATTHEW S. MEYERS, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE1 The Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52 of the Decision on Appeal. In the Decision on Appeal, the Board affirmed the rejection of claims 1–25 under 35 U.S.C. § 101 for claiming patent-ineligible subject matter. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). This Decision references the Appellant’s Request for Rehearing (“Req.”), filed Feb. 17, 2020, and the Board Decision (“Dec.”), mailed December 17, 2019. Appeal 2018–007685 Application 12/824,701 2 The Request raises two points believed to have been misapprehended or overlooked. First, the Appellant disagrees with the Board’s determination (Dec. 11) that certain claimed subject matter falls in the “Mental processes” grouping set forth in the 2019 Revised 101 Guidance.2 Dec. 11, referring to Prong One (“Evaluate Whether the Claim Recites a Judicial Exception”) of Step 2A of the 2019 Revised 101 Guidance 84 Fed. Reg. at 543 and 52.4 Req. 1–7. Second, the Appellant disagrees with the Board’s determination that “within the meaning of the 2019 Revised 101 Guidance, we find there is no integration into a practical application.” Dec. 21, referring to Prong Two (“If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application”) of Step 2A of the 2019 Revised 101 Guidance 84 Fed. Reg. at 54. Req. 7–9. Mental processes Appellant begins by stating that “in order to fall within the grouping of mental processes [per the 2019 Revised Guidance], the claims would need to recite ‘an observation, evaluation, judgment, [or] opinion.’ Revised 2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), hereinafter "2019 Revised 101 Guidance." 3 "To determine whether a claim recites an abstract idea in Prong One, examiners are now to: ... (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section 1 of the [2019 Revised 101 Guidance]” 4 “(c) Mental processes - concepts performed in the human mind (including an observation, evaluation, judgment, opinion).” Appeal 2018–007685 Application 12/824,701 3 Guidance, pp. 52 - 53. Applicant respectfully submits that the claims do not recite an observation, evaluation, judgment, or opinion.” Req. 3–4. The Appellant inaccurately represents what the 2019 Revised Guidance actually says, which is “(c) Mental processes - concepts performed in the human mind (including an observation, evaluation, judgment, opinion).” 2019 Revised Guidance, 84 Fed. Reg. at 52 (emphasis added). Accordingly, the “mental processes” grouping for Guidance purposes is not limited to an observation, evaluation, judgment, opinion. It covers other concepts as long as they can be performed in the human mind. That would include, for example, a “mere idea.” See 2019 Revised Guidance, 84 Fed. Reg. at 53 n.15 (quoting In re Brown, 645 F. App’x 1014, 1017 (Fed. Cir. 2016) (non–precedential)). The Appellant then identifies various claim limitations that allegedly “cannot be performed in the mind.” Req. 4. The Appellant argues that “[a] machine-generated network representation cannot be performed in the human mind.” Req. 4. However, the claim (claim 1) does not call for generating a network representation by a machine. It calls for “representing supplier nodes in a supplier side of a machine-generated network representation.” Humans have long been able to make representations using the mind alone. Representing an element “of a machine-generated network representation,” such as supplier nodes in a supplier side, is something a human mind can perform. The Appellant argues that “[n]odes of a machine generated network representation cannot be performed in the human mind, rather, these are Appeal 2018–007685 Application 12/824,701 4 specific to a graph . . . .” Req. 4. But the claim does not call for performing nodes. It calls for “representing” nodes. According to the Appellant, the claims require that “a supplier-client relationship in the network representation” is established and that this relationship identify “at least one interaction between the at least one customer of at least one supplier node and at least one client node and wherein each of the at least one interactions affects the global orientation and the current orientation and wherein an orientation outcome is identified from the at least one interaction, wherein the orientation outcome identifies a level of positive or negative outcome resulting from the at least one interaction.” Claim 1. Req. 4. The Appellant argues that “these are not things that would be performed in the mind” and they “would be very difficult” for a human mind to perform. However, that does not mean these steps cannot be performed in the human mind. On page 5 of the Request, the Appellant identifies other claim limitations that a human mind “would” not perform or it “would be extremely difficult.” Again, that does not mean these steps cannot be performed in the human mind. Finally, the Appellant repeats “that even if possible to perform in the human mind, these limitations are not observations, evaluations, judgments, or opinions, those categories being which Revised Guidance has identified as Mental Processes.” Req. 6. That point is addressed above. Appeal 2018–007685 Application 12/824,701 5 Integration into a practical application The Appellant argues that The claims are drafted in a manner where any judicial exception is very narrowly tailored to a specific application, specifically, an application of representing supplier and client relationships within a network representation and iteratively updating scores associated with nodes within the representation based upon interactions and outcomes of the interactions between suppliers and clients. In the event that the claims do include a judicial exception, this judicial exception is directed toward a very particular application within the claims and does not monopolize the judicial exception. In other words, as argued in the Appeal Brief and Reply Brief, the claims do not “tie up” a particular technological field, but are rather directed toward a very particular application of any judicial exception. Thus, Applicant respectfully submits that, in the event that the PTAB moves to Step 2A: Prong Two, that the claims integrate any judicial exception into a practical application and are, thus, patent eligible per Revised Guidance. Req. 8. The Appellant does not explain, and we are unable to discern, what we have misapprehended or overlooked in applying Step 2A, Prong Two, of the 2019 Revised Guidance in reaching our determinations. The Appellant appears to be arguing that the claim does not preempt an abstract idea. See Req. 8 (“does not monopolize the judicial exception”). It is true that the Supreme Court has characterized pre-emption as a driving concern for patent eligibility. See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014). But characterizing pre-emption as a driving concern for patent eligibility is not the same as characterizing pre-emption as the sole test for patent eligibility. “The Supreme Court has made clear that Appeal 2018–007685 Application 12/824,701 6 the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). However, “[w]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, 788 F.3d at 1379. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir.) (“[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.”) Because we find the claimed subject matter covers patent-ineligible subject matter, the pre-emption concern is necessarily addressed. “Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, . . . preemption concerns are fully addressed and made moot.” Ariosa Diagnostics, 788 F.3d at 1379. CONCLUSION We have carefully considered the Request and, for the foregoing reasons, we do not find it persuasive as to error in the Board’s Decision of December 17, 2019, to affirm the rejection of claims 1–25 under 35 U.S.C. § 101 for claiming patent-ineligible subject matter. Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Basis Granted Denied 1–25 101 Eligibility 1–25 Appeal 2018–007685 Application 12/824,701 7 Final Outcome of Appeal After Rehearing: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–25 101 Eligibility 1–25 DENIED Copy with citationCopy as parenthetical citation