13741817 - (R) (P.T.A.B. Dec. 19, 2019)

Anahita Hassanzadeh et al.

Patent Trials and Appeals BoardDec 19, 2019

13741817 - (R) (P.T.A.B. Dec. 19, 2019)

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. 13/741,817 01/15/2013 Anahita HASSANZADEH 2011-0094US01 1886 74739 7590 12/19/2019 Potomac Law Group, PLLC (Oracle International) 8229 Boone Boulevard Suite 430 Vienna, VA 22182 EXAMINER SWARTZ, STEPHEN S ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 12/19/2019 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): bgoldsmith@potomaclaw.com eofficeaction@appcoll.com patents@potomaclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANAHITA HASSANZADEH, ANDREW VAKHUTINSKY, and KIRAN PANCHAMGAM1 ____________ Appeal 2017-010683 Application 13/741,817 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, AMEE A. SHAH, and MATTHEW S. MEYERS, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellant has filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated September 30, 2019. The Request seeks reconsideration of our Decision (hereinafter “Decision”), mailed July 30, 2019, affirming the Examiner’s rejection of claims 1, 3–7, 9–13, 15–18, and 22–24 under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. 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 Oracle International (App. Br. 2). Appeal 2017-010683 Application 13/741,817 2 We have jurisdiction under 35 U.S.C. § 6(b). Requests for Rehearing are limited to matters misapprehended or overlooked by the Board in rendering the original decision, or to responses to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R. § 41.52. Appellant may also presents a new argument based upon a recent relevant decision of either the Board or a Federal Court. 37 C.F.R. § 41.52 (a)(2). ANALYSIS The Appellant’s Request first argues that the Decision failed to address the issue of the claimed invention being “integrated into a practical application” (Request 2–4). The Request asserts that the Decision fails to mention the analysis for being “integrated into a practical application” and that such an analysis was not performed (Request 2). We have considered but reject this argument. The Decision at page 5, lines 27 and 28 specifically mentions that analysis for “integrat[ion] of the judicial exception into a practical application" was a factor in the analysis. This portion of the Decision also included a citation to MPEP § 2106.05 (a)- (c), and (e)-(h) which addresses those factors. The analysis in the Decision at pages 7 and 8 considered the factors in this analysis. For example, after considering each of the limitations individually and in combination of independent claim 7, the Decision states that “steps [l]–[5] ‘do not purport to improve the functioning of the computer itself’ but are merely generic functions performed by a conventional processor.” Decision 7. The Decision further states that steps [1]–[5] listed above do not improve the technology of the technical field and merely use generic computer components Appeal 2017-010683 Application 13/741,817 3 and functions to perform the steps. Also, the recited method steps [1]–[5] above do not require a “particular machine” and can be utilized with a general purpose computer, and the steps performed are purely conventional. Id. at 7–8. The Request at pages 3 and 4 provides arguments that the invention allows problems “to be solved by a computer that were not previously practically solvable” but this argument is not deemed persuasive. The Appellants next argue that the Decision fails to provide evidence that the claimed invention was “well-understood, routine, and conventional” (Request 4–5). We have considered but reject this argument. The Decision at pages 8 and 9 addressed this analysis and cited to paragraphs 22–25 of the Specification as disclosing the use of conventional computer components such as a processor, memory, and a network used in a conventional manner to implement the claimed invention. Here, the cited technology used and cited in the Specification is used in a manner that is “well-understood, routine, and conventional,” and this argument is not deemed persuasive. DECISION The Appellant’s Request has been granted to the extent that we have reconsidered our Decision in light of the Appellant’s Request, but is denied in all other respects. Appeal 2017-010683 Application 13/741,817 4 CONCLUSION Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 3–7, 9– 13, 15–18, 22–24 101 Non-statutory 1, 3–7, 9– 13, 15–18, 22–24 Final outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–7, 9– 13, 15–18, 22–24 101 Non-Statutory 1, 3–7, 9– 13, 15–18, 22–24 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). REHEARING DENIED