Apple Inc.

Patent Trials and Appeals Board

Sep 3, 2020

2019004737 (P.T.A.B. Sep. 3, 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.
14/826,972 08/14/2015 Jody AKANA 2607.8770000(P26927US1) 2690
63975 7590 09/03/2020
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
ALHIJA, SAIF A
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
09/03/2020 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):
Apple-eOA@sternekessler.com
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JODY AKANA, BARTLEY K. ANDRE, SHOTA AOYAGI,
ANTHONY MICHAEL ASHCROFT, JEREMY BATAILLOU,
DANIEL J. COSTER, DANIELE DE IULIIS, M. EVANS HANKEY,
JULIAN HOENIG, RICHARD P. HOWARTH, JONATHAN P. IVE,
DUNCAN ROBERT KERR, MARC A. NEWSON,
MATTHEW DEAN ROHRBACH, PETER RUSSELL-CLARKE,
BENJAMIN ANDREW SHAFFER, MIKAEL SILVANTO,
CHRISTOPHER J. STRINGER, EUGENE ANTONY WHANG, and
RICO ZÖRKENDÖRFER
Appeal 2019-004737
Application 14/826,972
Technology Center 2100
Before THU A. DANG, ELENI MANTIS MERCADER, and
BETH Z. SHAW, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
Appeal 2019-004737
Application 14/826,972
2
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 3–12. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). We conducted an oral hearing for this
case on August 4, 2020.
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a “non-transitory computer-readable
medium comprising a file” as described below. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A non-transitory computer-readable medium comprising a file
that when acted upon by a computing device produces a digital
representation for generating a three-dimensional article as
shown in solid lines in FIGS. 1–9.
REJECTIONS
Claims 1 and 3–12 are rejected under 35 U.S.C. § 101. Final Act.2.
Claims 1 and 3–12are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 4.
Claims 1 and 3–12 are rejected under 35 U.S.C. § 102(a)(l) as being
anticipated by Kahn, US 8,587,601 B1. Final Act. 5.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as APPLE INC. Appeal
Br. 3.
Appeal 2019-004737
Application 14/826,972
3
OPINION
Appellant argues the pending claims as a group. As permitted by
37 C.F.R. § 41.37, we decide this issue based on claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv)(2016).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. However,
the Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “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.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “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.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office has issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Eligibility Guidance”). Under the guidance, to decide
Appeal 2019-004737
Application 14/826,972
4
whether a claim is “directed to” an abstract idea, we evaluate whether the
claim (1) recites an abstract idea grouping listed in the guidance and (2) fails
to integrate the recited abstract idea into a practical application. See 2019
Eligibility Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an
abstract idea, as noted above, we then determine whether the claim recites an
inventive concept. The 2019 Eligibility Guidance explains that when
making this determination, we should consider whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
With these principals in mind, we turn to the Examiner’s § 101
rejection.
Abstract Idea
Turning to Step 2A, Prong 1, the claim includes the following
limitations: “[a] non-transitory computer-readable medium comprising a file
that when acted upon by a computing device produces a digital
representation for generating a three-dimensional article as shown in solid
lines in FIGS. 1–9.”
Claim 1 recites an abstract idea grouping listed in the 2019 Eligibility
Guidance: “mental processes.” See 2019 Eligibility Guidance, 84 Fed. Reg.
at 52, 53 (listing “[m]ental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion)” as one of
the “enumerated groupings of abstract ideas” (footnote omitted)). The
guidance explains that “mental processes” include acts that people can
perform in their minds or using pen and paper, even if the claim recites that
a generic computer component performs the acts. See 2019 Eligibility
Appeal 2019-004737
Application 14/826,972
5
Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”); see
also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”), quoted in
2019 Eligibility Guidance, 84 Fed. Reg. at 52 n.14; Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016)
(holding that computer-implemented method for “‘anonymous loan
shopping’” was an abstract idea because it could be “performed by humans
without a computer”); quoted in 2019 Eligibility Guidance, 84 Fed. Reg. at
52 n.14.
Under the broadest reasonable interpretation of the claim,2 the method
recited in claim 1 executes steps that people can perform in their minds or
using pen and paper. A person can mentally determine (i.e., visualize) that a
digital representation for generating a three-dimensional article is as shown
in solid lines in FIGS. 1–9.
Turning to Step 2A, Prong 2, the remaining elements recited in claim
1 do not integrate the abstract idea into a practical application. In addition to
the steps discussed above, claim 1 recites “a non-transitory computer-
readable medium.” The recited computer-readable medium is a generic
component. See, e.g., Spec. ¶¶ 2–3 (“Such computer-readable files may be
accessed by a device with computational capacity.”). See 2019 Eligibility

2 We note that, as discussed in more detail below, claims 1–12 are indefinite.
Appeal 2019-004737
Application 14/826,972
6
Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to
implement an abstract idea on a computer” as an example of when an
abstract idea has not been integrated into a practical application).
To the extent that Appellant contends that the claimed invention is
directed to such improvements in computer capabilities, there is no
persuasive evidence on this record to substantiate such a contention.
Thus, the claims do not integrate the judicial exception into a practical
application. The claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine (except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h). We, therefore, agree with the Examiner that
claim 1 is directed to an abstract idea.
Inventive Concept
Because we determine claim 1 is “directed to” an abstract idea, we
consider whether claim 1 recites an “inventive concept.” The Examiner
determined claim 1 does not recite an inventive concept because the
additional elements in the claim do not amount to “significantly more” than
an abstract idea. See Ans. 6.
We agree with the Examiner’s determination. As noted above, the
claimed invention merely uses generic computing components to implement
the recited abstract idea. The additional elements recited in the claim
include the “non-transitory computer readable medium.” The claim recites
this element at a high level of generality, and the written description
Appeal 2019-004737
Application 14/826,972
7
indicates that these elements are generic computer components. See, e.g., ¶¶
2, 3. Using generic computer components to perform abstract ideas does not
provide the necessary inventive concept. See Alice, 573 U.S. at 223 (“[T]he
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention.”). Thus, these elements, taken
individually or together in combination, do not amount to “significantly
more” than the abstract ideas themselves.
The recited “computer-readable medium” is the additional recited
element whose generic computing functionality is well-understood, routine,
and conventional. See Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1368 (Fed. Cir. 2015) (noting that a recited user
profile (i.e., a profile keyed to a user identity), database, and communication
medium are generic computer elements); Mortg. Grader, 811 F.3d at 1324–
25 (noting that components such an “interface,” “network,” and “database”
are generic computer components that do not satisfy the inventive concept
requirement). Appellant’s arguments do not persuade us claim 1 is “directed
to” a patent-eligible inventive concept.
Accordingly, we sustain the rejection of claims 1 and 3–12 under 35
U.S.C. § 101.

Indefiniteness
The Examiner rejected claims 1 and 3–12 under 35 U.S.C. l 12(b) or
35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention. Final Act. 4. The Examiner determines that (i) the claim is an
omnibus type claim and the claims are therefore vague and indefinite and (ii)
Appeal 2019-004737
Application 14/826,972
8
the claims reference figures. Id. “Applicants have not shown that there is no
practical way to define the invention and therefore the reference to figures
appears inappropriate.” Id. (citing M.P.E.P. 2173.05(s) and Ex parte
Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations
omitted)). We agree with and adopt the findings and conclusions of the
Examiner in the Final Rejection and Answer.
First, Appellant argues “[t]he visual aspect of the claims, defined by
Figures 1–9, is part of the subject matter that the inventors regard as their
invention.” Appeal Br. 10. “And because—as regarded by the inventors—
their invention’s subject matter has a visual aspect defined by the figures, 35
USC § 112 effectively mandates that the figures be included in the claim.”
Id. We are not persuaded by this argument because what an inventor regards
as their invention, while relevant, is not the only determinative standard for
finding indefiniteness.
Second, Appellant argues, “there is no practical way to define that
subject matter in words, and it is more concise to incorporate the figures by
reference than to duplicate them into the claims.” Id. at 11. We agree with
the Examiner that “Appellants have yet to show that there is no practical
way to define the invention and therefore the reference to figures appears
inappropriate.” Ans. 7. To the extent Appellant contends, without any
explanation, that “these are exactly the circumstances” as where
incorporating figures by reference is permitted in Ex Parte Fressola, we are
unpersuaded. Appeal Br. 11. There, the claim on appeal read: “A system for
the display of stereographic three-dimensional images of celestial objects as
disclosed in the specification and drawings herein.” Ex Parte Fressola, 27
USPQ2d 1608. The appealed claim was rejected and the rejection upheld on
appeal under 35 U.S.C. § 112 ¶ 2 as failing to particularly point out and
Appeal 2019-004737
Application 14/826,972
9
distinctly claim the subject matter which applicant regards as his invention.
Appellant fails to explain why “these are exactly the circumstances” as
where incorporating figures by reference is permitted. Rather, the claims on
appeal in this case appear to be quite similar to Ex Parte Fressola, where the
Board held “claim 42 does not comply with the requirement of § 112 ¶ 2 that
the claims particularly point out and distinctly describe the invention
because it relies entirely on incorporation by reference of the specification
and drawings.” Id. (emphasis in original).
Third, Appellant argues the claims “could hardly be more specific and
clear than to provide the actual visual representation of the visual features
claimed.” Appeal Br. 12. We are not persuaded by this unsupported attorney
argument.
Fourth, Appellant argues “[s]ince those of skill in the art are
understood to routinely be able to interpret design claims that incorporate
drawings, they should also be understood to be able to interpret utility claims
under the same standards.” Appeal Br. 12, 13. In addition to failing to
provide any support for this argument, we find this argument unavailing
because Title 35 explicitly differentiates between design and utility patents.
For example, in Title 35, utility patents are provided for in Chapter 10, titled
“Patentability of Inventions.”
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
35 U.S.C. § 101. Design patents are provided for in a different chapter,
Chapter 16, titled “Designs.”
Appeal 2019-004737
Application 14/826,972
10
Whoever invents any new, original and ornamental design for an
article of manufacture may obtain a patent therefor, subject to the
conditions and requirements of this title.
35 U.S.C. § 171(a).
In addition to the statutes’ distinction between usefulness and
ornamental aspects, there are several differences between utility patents and
design patents. For example, the statutory term of utility and design patents
are different. The term of a utility patent generally is from issuance to
twenty years from the filing date, 35 U.S.C. § 154, while “[p]atents for
designs shall be granted for the term of 15 years from the date of grant,” 35
U.S.C. § 173.3 Maintenance fees are required for utility patents, but not for
design patents. 35 U.S.C. § 41(b); see also 35 U.S.C. § 41(a)(1) (setting
forth different filing fees for “an original patent, except for design, plant, or
provisional applications” and for an “original design patent”); id. at (a)(3)
(different examination fees); id. at (a)(4) (different issue fees). Title 35 also
contains an infringement damages remedy specific to design patents.
Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429, 432 (2016); compare 35
U.S.C. § 289 (titled “Additional remedy for infringement of design patent”)
with 35 U.S.C. § 284 (infringement damages generally).
Fifth, Appellant argues that the dependent claims 6, 8, 9, and 10
“explicitly include standards for interpreting their visual aspects.” Appeal
Br. 13. Claim 6 recites “[t]he non-transitory computer-readable medium of
claim 5, wherein the digital representation has substantially the same overall
appearance as the ornamental design shown in solid lines in FIGS. 1–9.” We
are not persuaded by Appellant’s general allegations regarding claims 6, 8,

3 The term for a design patent recently was increased from 14 to 15 years.
Pub.L. No. 112-211, Title I, § 102(7), Dec. 18, 2012.
Appeal 2019-004737
Application 14/826,972
11
9, and 10. Without specifically addressing the Examiner’s findings, the
Appellant’s response regarding claims 6, 8, 9, and 10 amounts to a general
allegation that the claims are not indefinite. It shows no error in the
Examiner’s findings.
Sixth, Appellant generally argues the claims are not “omnibus
claims.” Appeal Br. 13, 14. Appellant argues the claims “reference only the
specific portion of the application necessary for a definition description of
the invention.” Id. at 14. We are not persuaded by this argument because
claim 1 refers to nine out of ten figures in the Specification.
Finally, Appellant argues that claim 12 does not rely on incorporation
of figures by reference. Appeal Br. 14–15. We note that claim 12 includes a
cut and paste of all of the figures, i.e., “duplicating the drawings into the
claim.” Id. Although claim 12 does not rely on an “incorporation of figures
by reference,” the claim incorporates the actual figures themselves. Ans. 7.
Therefore, we conclude that the Examiner did not err in concluding
that claims 1 and 3–12 are indefinite.

Section 102
Appellant’s only argument with respect to the § 102 rejection is a
statement that the article depicted in Figures 1–9 “is clearly dissimilar to the
cuboid representations of Kahn.” Appeal Br. 18. We are not persuaded by
this argument because, as the Examiner finds, Kahn teaches the non-
transitory computer readable file that when executed produces a digital
representation. Final Act. 5, 6; Ans. 8–9 (citing Kahn, 6:17–24; Fig. 6B;
8:28–31). Accordingly, we sustain the rejection of claims 1–12 under § 102.
Appeal 2019-004737
Application 14/826,972
12
CONCLUSION
The Examiner’s rejections are affirmed.
More specifically, we affirm the rejection of claims 1 and 3–12 under
35 U.S.C. § 101; claims 1–12 under 35 U.S.C. § 112, second paragraph, as
being indefinite; and claims 1–12 under 35 U.S.C. § 102(a)(l) as being
anticipated by Kahn.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–12 112, second
paragraph
1, 3–12
1, 3–12 101 1, 3–12
1, 3–12 102 Kahn 1, 3–12
Overall
outcome:
1, 3–12

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