Social Dental, LLCDownload PDFPatent Trials and Appeals BoardMay 27, 20202019005655 (P.T.A.B. May. 27, 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. 14/334,423 07/17/2014 Thomas Steelman Clark 85283.0003 2114 57600 7590 05/27/2020 HOLLAND & HART 222 South Main Street, Suite 2200 P.O. Box 11583 Salt Lake City, UT 84110 EXAMINER KANAAN, MAROUN P ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 05/27/2020 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): PATENTDOCKET@HOLLANDHART.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS STEELMAN CLARK ____________ Appeal 2019-005655 Application 14/334,423 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and TARA L. HUTCHINGS, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 3–19. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Social Dental, Inc. (Appeal Br. 3). Appeal 2019-005655 Application 14/334,423 2 CLAIMED SUBJECT MATTER The Appellants’ claimed invention relates to obtaining consent to use media (Spec., para. 4). Claim 1, reproduced below with the italics added, is representative of the subject matter on appeal. 1. A computer-implemented method for obtaining digital consent to use dental related media, comprising: generating, via a processor of a mobile computing device, dental related media related to at least one person in a dental office setting using a camera of the mobile computing device, the mobile computing device including the camera and a display, the media including at least one of a digital image of the at least one person, or a video clip of the at least one person, or an audio recording of the at least one person, or any combination thereof; upon generating the media, displaying, via the processor, a consent form on the display, the consent form being for the at least one person to provide a digital consent for a third party to use the media; receiving, via the processor, the at least one person's digital consent on the consent form shown on the display, wherein the media is released for use by the third party only upon receiving the digital consent; linking, via the processor, the media to the consent form with the digital consent, wherein the linking comprises assigning a same electronic identifier to both the media and to the consent form with the digital consent; delivering, via the processor, the consent form with the digital consent to a storage location; presenting on the display, via the processor, at least one social media site option for posting the media; receiving on the display, via the processor, at least one social media site selection; and delivering, via the processor, the media to the at least one selected social media site using the media generating device. Appeal 2019-005655 Application 14/334,423 3 THE REJECTIONS The following rejections are before us for review: 1. Claims 1 and 3–19 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 1, 5–13, and 5–19 are rejected under 35 U.S.C. § 103 as being unpatentable over Padmanabhan (US 2013/0117692, Al pub. May 9, 2013) and Gauss (US 2015/0332318, Al pub. Nov. 19, 2015).2 3. Claims 3, 4, and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Padmanabhan, Gauss, and Brink (US 2012/0035949 Al, pub. Feb. 9, 2012). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.3 ANALYSIS Rejection under 35 U.S.C. § 101 The Appellants argue that the rejection of claim 1 is improper because the claim is not directed to an abstract idea (Appeal Br. 11–14). The Appellants argue further that the claim is “significantly more” than the alleged abstract idea (Appeal Br. 14–18; Reply Br. 4–6). 2 The rejections made under 35 U.S.C. § 103 were made in the Non-Final Action mailed December 28, 2017 at pages 5–10. The Answer did not list the rejections as being withdrawn, and thus these rejections are considered still pending. 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2019-005655 Application 14/334,423 4 In contrast, the Examiner has determined that the rejection of record is proper (Final Action 3–5; Ans. 3–8). We agree with the Examiner. 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 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 Supreme Court’s two-step 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, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India Appeal 2019-005655 Application 14/334,423 5 rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); 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 Supreme 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 Supreme 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. (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.”). The PTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, 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); and (2) additional elements that integrate the judicial exception into a practical application, i.e., evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to Appeal 2019-005655 Application 14/334,423 6 monopolize the judicial exception.” (see Guidance, 84 Fed. Reg. at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look 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. See Guidance. If the claim is “directed to” an abstract idea, we turn to the second step 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 (citation 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. The Specification at paragraph 4 states that the invention generally relates to obtaining consent to use media. Here, the Examiner has determined that the claim sets forth receiving digital consent, linking the media consent with the digital consent, and displaying the media on the social media site and which is drawn to an abstract concept (Ans. 3, 4). We substantially agree with the Examiner. We determine that the claim sets forth the subject matter in italics above which describes the concept of Appeal 2019-005655 Application 14/334,423 7 generating a consent form and obtaining consent for using media, and then publishing the media which is a certain method of organizing human activity, i.e. a judicial exception. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it, and displaying results from certain results of the collection and analysis was held to be an abstract idea. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (in which “classifying and storing digital images in an organized manner” was held to be an abstract concept). In Intellectual Ventures I LLC v. Capital One Financial, 850 F.3d 1332, 1340 (Fed. Cir. 2017) it was held that collecting, displaying, and manipulating data was directed to an abstract idea. We next determine whether the claim recites additional elements to integrate the judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h). Here, the claim does not improve computer functionality, improve another field of technology, utilize a particular machine, or effect a particular physical transformation. Rather, we determine that nothing in the claim imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort to monopolize the judicial exception. For example, in claim 1 the steps of [1] “generating . . . dental related media;” [2] “upon generating the media, displaying . . . a consent form;” [3] “receiving . . . at least one person's digital consent on the consent form;” [4] “linking . . . the consent form with the digital consent;” [5] “delivering . . . the consent form with the digital consent to a storage location;” [6] “presenting . . . at least one social media site option for posting the Appeal 2019-005655 Application 14/334,423 8 media;” [7] “receiving . . . at least one social media site selection;” and [8] “delivering . . . the media to the at least one selected social media site” are merely steps performed by a generic computer that do not improve computer functionality. That is, these recited steps [1]–[8] “do not purport to improve the functioning of the computer itself” but are merely generic functions performed by a conventional processor. Likewise, these same steps [1]–[8] listed above do not improve the technology of the technical field and merely use generic computer components and functions to perform the steps. Also, the recited method steps [1]–[8] above do not require a “particular machine” and can be utilized with a general purpose computer, and the steps performed are purely conventional. In this case the general purpose computer is merely an object on which the method operates in a conventional manner. Further, the claim as a whole fails to effect any particular transformation of an article to a different state. The recited steps [1]–[8] fail to provide meaningful limitations to limit the judicial exception and rather are mere instructions to apply the method to a generic computer. Considering the elements of the claim both individually and as “an ordered combination” the functions performed by the computer system at each step of the process are purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. Thus, the claimed elements have not been shown to integrate the judicial exception into a practical application as set forth in the Revised Guidance which references the MPEP §§ 2106.05(a)–(c) and (e)–(h). Appeal 2019-005655 Application 14/334,423 9 Turning to the second step of the Alice and Mayo framework, we determine that the claim does not contain an inventive concept sufficient to “transform” the abstract nature of the claim into a patent-eligible application. Considering the claim elements both individually and as an ordered combination fails to add subject matter beyond the judicial exception that is not well-understood, routine, and conventional in the field. Rather the claim uses well-understood, routine, and conventional activities previously known in the art and they are recited at a high level of generality. The Specification at paragraphs 38 and 73, for example, describes using conventional computer components, such as a smartphone, controller, processor, and memory, in a conventional manner. The claim specifically includes recitations for computers to implement the method, but these computer components are all used in a manner that is well-understood, routine, and conventional in the field. Here, the claimed generic computer components, which are used to implement the claimed method, are well understood, routine, or conventional in the field. Here, the claim has not been shown to be “significantly more” than the abstract idea. For the above reasons, the rejection of claim 1 is sustained. The Appellant has provided the same arguments for the remaining claims which are drawn to similar subject matter, and the rejection of these claims is sustained for the same reasons given above. Rejections under 35 U.S.C. § 103 The Appellants have not provided any arguments for the rejections made under 35 U.S.C. § 103. Accordingly, these rejections are summarily affirmed. Appeal 2019-005655 Application 14/334,423 10 CONCLUSIONS OF LAW We conclude that Appellants have not shown that the Examiner erred in rejecting the claims under 35 U.S.C. § 101 and 35 U.S.C. § 103 as listed in the Rejections section above. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–19 101 Eligibility 1, 3–19 1, 5–13, 15– 19 103 Padmanabhan, Gauss 1, 5–13, 15– 19 3, 4, 14 103 Padmanabhan, Gauss, Brink 3, 4, 14 Overall Outcome 1, 3–19 TIME PERIOD FOR RESPONSE 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)(iv). AFFIRMED Copy with citationCopy as parenthetical citation