Tolga Oral et al.

Patent Trials and Appeals Board

Jun 29, 2020

2018006769 (P.T.A.B. Jun. 29, 2020)

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.
12/141,435 06/18/2008 Tolga Oral CAM920070243US1_8150-0059 5350
52021 7590 06/29/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
GOLDBERG, IVAN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
06/29/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOLGA ORAL and ANDREW L. SCHIRMER
____________

Appeal 2018-006769
Application 12/141,435
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, 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 rejection of claims 21–40. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a computer-implemented method of processing a
plurality of events within a calendar application. (Spec. ¶ 4, Title).
Claim 21 is representative of the subject matter on appeal.
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21. A computer-implemented method of processing an
event within a calendar application executing within a computer
hardware system, comprising:
detecting that the event occurs with a period of time,
specified by a user, within a calendar data structure associated
with the user;
identifying, for the detected event, an attribute;
applying, based upon the identified attribute, a
classification to the event;
selecting, after the event is detected and by the calendar
application, an event clearing technique from a plurality of
event clearing techniques; and
applying, by the calendar application and to the calendar
data structure, the selected event clearing technique to the
event, wherein the selecting is based upon the classification of
the event.

THE REJECTIONS
Claims 21–40 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 21–23, 27–33, and 37–40 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Doss (US 2004/0064585 A1, published
Apr. 1, 2004) in view of Curbow (US 2004/0088362 A1, published May 6,
2004).
Claims 24 and 34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable Doss in view of Curbow as applied to claims 21–23, 27–33,
and 37–40 above, and further in view of Lyle (US 2008/0091504 A1,
published Apr. 17, 2008).
Claims 25 and 35 are rejected under 35 U.S.C. § 103(a) as being
unpatenltable Doss in view of Curbow, as applied to claims 21–23, 27–33,
and 37–40 above, and further in view of Gauger (US 2007/0288292 A1,
published Dec. 13, 2007).
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Claims 26 and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable Doss in view of Curbow, as applied to claims 21–23, 27–33,
and 37–40 above, and further in view of Record (US 2007/0136119 A1,
published June 14, 2007).

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 21–40 under 35 U.S.C. § 101.
The Appellant argues independent claims 21 and 31 together. Appeal
Br. 7. We select claim 21 as representative. Claim 31 stands or falls with
claim 21. See 37 C.F.R. § 41.37(c)(1)(iv).
The Supreme Court
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . . determine
whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then
ask, “[w]hat else is there in the claims before us?” .
. . To answer that question, . . . consider the
elements of each claim both individually and “as
an ordered combination” to determine whether the
additional elements “transform the nature of the
claim” into a patent-eligible application. . . . [The
Court] described step two of this analysis as a
search for an “‘inventive concept’”—i.e., an
element or combination of elements that is
“sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon
the [ineligible concept] itself.”
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Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claims are directed to collecting and
analyzing information. (Final Act. 3–5). The Examiner finds that the claims
do not include additional elements that are sufficient to amount to
significantly more than the judicial exception. (Final Act. 5).
The Specification discloses a computer-implemented method of
processing a plurality of events within the calendar application which
includes receiving a user input (information), specifying a period of time
within a calendar associated with a user, detecting a plurality of events
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occurring within the period of time (analyzing information), and determining
at least one attribute for each of the plurality of events (analyzing
information). (Spec. ¶ 4). The method also includes the step of selecting an
event clearing technique for each of the plurality of events according to the
at least one attribute of each respective event (analyzing information), and
the step of executing the selected event clearing technique for each of the
plurality of events (analyzing information). (Id).
Consistent with this disclosure, claim 21 recites detecting that the
event, specified by a user, occurs within a period of time (receiving and
analyzing information), “identifying . . . an attribute” (analyzing
information), “applying . . . a classification to the event” (analyzing
information), “selecting, . . . an event clearing technique” (analyzing
information), and “applying . . . the event clearing technique” (analyzing
information).
We thus agree with the Examiner’s findings that the claims are
directed to collecting and analyzing information. The steps of claim 21 are
steps that “people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving
contractual relations are directed to abstract ideas). Thus, we find that the
claims recite an abstract idea of a mental process.
Turning to the second prong of the “directed to test”, claim 21
requires a “computer hardware system.” The recitation of a “computer
hardware system” does not impose “a meaningful limit on the judicial
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exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 52. We find
no indication in the Specification, nor do Appellant directs us to any
indication, that the operations recited in independent claim 21 invoke any
inventive programming, require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the judicial exception into a “practical
application,” as that phrase is used in the revised Guidance. See Guidance,
84 Fed. Reg. at 55.
In this regard, the recitation does not affect an improvement in the
functioning of a computer hardware system or other technology, does not
recite a particular machine or manufacture that is integral to the claim, and
does not transform or reduce a particular article to a different state or thing.
Id. Thus, claim 21 is directed to a judicial exception that is not integrated
into a practical application and thus is directed to an “abstract idea.”
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Turning to the second step of the Alice analysis, because we find that
claim 21 is directed to 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. See Alice, 573
U.S. at 217–18 (alteration in original) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The introduction of a computer hardware system into the claims does
not alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
“while adding the words ‘apply it’” is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while
adding the words “apply it with a computer”
simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to
“implemen[t]” an abstract idea “on . . . a
computer,” that addition cannot impart patent
eligibility. This conclusion accords with the
preemption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers,
wholly generic computer implementation is not
generally the sort of “additional featur[e]” that
provides any “practical assurance that the process
is more than a drafting effort designed to
monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
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Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 21 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
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allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
Claim 21 does not, for example, purport to improve the functioning of
the computer hardware system itself. As we stated above, the claims do not
affect an improvement in any other technology or technical field. In fact, the
Specification spells out different generic equipment and parameters that
might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of information
access under different scenarios. (See, e.g., Spec. ¶¶ 12–14). Thus, claim 21
at issue amounts to nothing significantly more than instructions to apply the
abstract idea of information access using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 7–12; Reply Br. 2–
5) Appellant has submitted concerning the patent eligibility of claim 21. We
find that our analysis above substantially covers the substance of all the
arguments. However, for purposes of completeness and emphasis, we will
address various arguments in order to make individual rebuttals of same.
We agree with Appellant that the fact that one aspect of the claimed
invention involves receiving and analyzing data does not render the claimed
invention as a whole directed to an abstract idea. (Appeal Br. 10). As
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explained in the Guidance, 84 Fed. Reg. at 53, a claim that involves or
recites a judicial exception or abstract idea is not “directed to” an abstract
idea unless the judicial exception recited in the claim is not integrated into a
practical application. As claim 21 does not recite an improvement to the
computer hardware system recited or any other technology, does not recite a
particular machine or manufacture that is integral to the claims, and does not
transform or reduce a particular article to a different state, the judicial
exception of collecting and analyzing information is not integrated into a
practical application. Therefore, as we determined above, claim 21 is
directed to an abstract idea.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claimed invention involves an improvement to
the technology by providing classification-specific clearing techniques that
ensure that important tasks or events subject to event clearing are properly
addressed. In making this argument, Appellant references paragraph 41 of
the Specification. Paragraph 41 of the Specification describes an example in
which a project member is going to be on vacation when a tasks is scheduled
to be performed. In this situation, the system assigns the task to another
project member. Although this is an improvement to how information is
analyzed, it is not an improvement to the computer hardware system of the
invention. As such, the alleged improvement lies in the abstract idea itself,
not to any technological improvement. See BSG Tech LLC v. Buyseasons,
Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that there was no finding of preemption. (Reply Br.
4). While preemption may signal patent ineligible subject matter, the
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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 are fully addressed and made moot.” Ariosa,
788 F.3d at 1379.
Therefore, we sustain the rejection under 35 U.S.C. § 101 of claim 21.
We also sustain the rejection of claim 31, which falls with claim 21.
Appellant argues the patent-eligibility of dependent claims 22–30 and
32–40 as a group. Appeal Br. 7 (“[C]laims 22-30 and 32-40 stand or fall
together with dependent claim 22[.]”). We select claim 22 as representative,
and claims 23–30 and 32–40 stand or fall with claim 22.
Appellant argues that the Examiner fails to establish a prima facie
rejection of dependent claim 22, because the Examiner does not separately
reject dependent claim 22 by identifying its limitations and explaining why
its limitations are not substantially more than the abstract idea. (Appeal Br.
12–13). However, consideration of each claim individually does not require
a separate written analysis for each individual claim. See Content Extraction
& Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1348
(Fed. Cir. 2014) (explaining that when all claims are directed to the same
abstract idea, “addressing each claim of the asserted patents [is]
unnecessary.”).
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Appellant’s argument suggests that claim 22 recites additional
elements beyond the abstract idea. But we find none. For example, claim
22 further defines the method of claim 21 by reciting that the plurality of
attributes are identified for the detected event and that the classification is
based upon all of the identified attributes. But these limitations further
specify the type of datacollected and analyzed. Put simply, the additionally
limitations further narrow the abstract idea of collecting and analyzing
information and, thus, are directed to the same abstract idea as claim 21.
We decline to find error in the Examiner’s decision to not address the patent-
eligibility of claim 22 separately inasmuch as we agree with the Examiner
that it is directed to the same abstract idea as claim 21. Therefore, we
sustain the rejection of claim 22 under 35 U.S.C. § 101. We also sustain the
rejection under 35 U.S.C. § 101 of claims 23–30 and 32–40, which fall with
claim 22.

35 U.S.C. §103(A) REJECTIONS
We will not sustain this rejection because we agree with Appellant
that the prior art does not describe the step of “selecting, after the event is
detected . . . an event clearing technique.” The Examiner in the Final Action
relies on paragraphs 30, 32, and 35–36 of Doss for teaching that a user can
set up rules for employing various clearing techniques. We find that Doss
discloses the rules for selecting a clearing technique are established by the
user before the event is detected. In this regard, Doss teaches that when an
event that meets the selection criteria occurs, the specific clearing technique
has already been selected by the previously established rules. We note that
the Examiner indicates on page 36 of the Final Action that the event clearing
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event (i.e. deleting) occurs after the event is detected in Doss. However,
claim 21 requires that the selection of the event clearing technique occurs
after the event has been detected. The selection of the event clearing
technique occurs before the event is detected in Doss because the user sets
up the rules for selecting the event clearing technique prior to the event
being detected.
In the Answer, the Examiner finds that Curbow at paragraph 33 and
claims 18 and 27 also discloses selecting an event clearing technique after
the event is detected. Paragraph 33 of Curbow describes a set of rules that
define characteristics of events and based on those characteristics and rules
performs actions. Curbow, like Doss, describes rules that are used to select
actions on events that have been selected prior to detecting the events.
While claim 18 of Curbow recites canceling attendance of any previously
accepted meetings that conflict with a calendar invitation and claim 27
recites taking action on events in accordance with a rule, neither claim
recites selecting an event clearing technique after the event has been
selected.
In view of the foregoing, we will not sustain the Examiner’s rejection
of independent claim 21 and claims 22–30 dependent therefrom under 35
U.S.C. §103(a). We will not sustain the rejection of independent claim 31
and claims 32, 33 and 37-40 for the same reason because each of these
claims requires selecting the event clearing technique after the event is
detected.
We will not sustain the remaining 35 U.S.C. §103(a) rejections of the
remaining claims for the same reason.
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CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 21–40 under
35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 21–40 under
35 U.S.C. §103(a).

CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–40 101 Eligibility 21–40
21–23, 27–
33, 37–40
103(a) Doss, Curbow 21–23, 27–
33, 37–40
24, 34 103(a) Doss, Curbow,
Lyle
24, 34
25, 35 103(a) Doss, Curbow,
Gauger
25, 35
26, 36 103(a) Doss, Curbow,
Record
26, 36
Overall
Outcome
21–40
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