Ex Parte Adkins et al

Patent Trial and Appeal Board

Mar 29, 2018

13275560 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/275,560 10/18/2011 Christopher Alan Adkins
21972 7590 04/02/2018
LEXMARK INTERNATIONAL, INC.
INTELLECTUAL PROPERTY LAW DEPARTMENT
740 WEST NEW CIRCLE ROAD
BLDG. 004-1
LEXINGTON, KY 40550-0999
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2002-0857.07 9088
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
iplaw@lexmark.com
nrkahle@lexmark.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER ALAN ADKINS,
TIMOTHY P. CRAIG, STEPHEN KELLY CUNNAGIN,
TIMOTHY LOWELL STRUNK, and MICHAEL SHAYNE WILSON
Appeal2016-004174
Application 13/275,560 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 7-11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The Appellants identify Lexmark International, Inc. as the real party in
interest. Appeal Br. 2.
Appeal 2016-00417 4
Application 13/275,560
ILLUSTRATIVE CLAIM
7. A method for licensing a customer after an initial
transaction of said customer purchasing a current supply item in
a multi-pack plurality of supply items for use in an imaging
apparatus, the current supply item having a memory attached
thereto, comprising:
prompting said customer to acquire on a computing
device a usage license for said current supply item, said current
supply item containing an ink or toner imaging substance to
form a visible image on a print media in said imaging apparatus
and said usage license of said current supply item
corresponding to an amount of ink or toner imaging substance
that is half or less than an entirety of said ink or toner imaging
substance in said current supply item such that an initial amount
of ink or toner imaging substance in said current supply item is
at least two times greater than said amount of ink or toner
imaging substance corresponding to the usage license so that
any single supply item of the multi-pack of supply items can
accommodate one or more license renewals by the customer
before depletion of the initial amount of said ink or toner
imaging substance while the customer retains in their
possession said any single supply item, the memory recording
depletion of the initial amount of said ink or toner imaging
substance over a lifetime of the current supply item;
determining whether said amount of ink or toner imaging
substance corresponding to the usage license is nearer to
depletion or not;
if said amount of ink or toner imaging substance of the
usage license is said nearer to depletion, notifying said
customer to obtain another usage license for an additional
amount of ink or toner imaging substance in said current supply
item, whereby said additional amount of ink or toner imaging
substance is at least as much as said initial amount of ink or
toner imaging substance in said current supply item less the
amount of ink or toner imaging substance corresponding to the
usage license, the memory recording the another usage license
if obtained by the customer; and
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Application 13/275,560
prompting said customer to obtain a second usage license
for a second supply item of said purchased multi-pack plurality
of supply items.
REJECTIONS
I. Claims 7-11 are rejected under 35 U.S.C. § 101 as ineligible
subject matter.
II. Claims 7-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nagata (US 2002/0077979 Al, pub. June 20, 2002).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
According to the rejection, applying the first step of the methodology
delineated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct.
2347, 2355 (2014), the claims are directed to an abstract idea, described
variously as "checking whether a printer or toner cartridge is running low,
and when it is running low telling the user to buy a new cartridge and use it
to replace the old cartridge" (Final Action 7) and "noticing that resources
have been modified which allow a human being to make changes based on
the modifications" (Answer 2). Regarding the second Alice step, the
rejection further states that, aside from the identified abstract idea itself, the
recited elements, individually or in combination, amount to no more than
instructions to implement the abstract idea on a computer and/or generic
computer functionality performing well-understood, routine, and
conventional activities. Final Action 7. See also Answer 2 ("The steps
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Application 13/275,560
appear to be directed towards the computer merely assisting human
activity.").
Asserting error in the rejection, the Appellants argue claims 7-11 as a
group. Appeal Br. 6-7. We select claim 7 for analysis herein, in accord
with 37 C.F.R. § 41.37(c)(l)(iv).
Without alleging a specific error in the Examiner's characterization of
the abstract idea, the Appellants contend that "[ t ]here exists no 'pen and
paper' counterpart to" the method of claim 7. Appeal Br. 7. Although
courts have regarded subject matter that "can be performed in the human
mind, or by a human using a pen and paper" as an abstract idea,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011 ), this is not the sole test for making such a determination. Indeed,
"[t]he Supreme Court has not established a definitive rule to determine what
constitutes an 'abstract idea."' Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1334 (Fed. Cir. 2016). Rather, the Supreme Court and the Federal
Circuit have identified various categories of subject matter as abstract ideas.
See MPEP § 2106.04(a)(2) (9th ed,~ Rev. 8, Jan. 2018) (collecting cases).
Therefore, the Appellants' contention that claim 7 cannot be performed with
pen and paper, is not persuasive of error in the rejection.
In addition, the Appellants, with respect to the second Alice step,
contend that claim 7 is patent-eligible, because the recited claim elements do
not "represent mere computer structure that performs 'well-understood,
routine and conventional activities' in the art," as set forth in the rejection,
because the Examiner presents no anticipatory prior art. Appeal Br. 7
(quoting Final Action 7). Rather, "[t]he claims sufficiently define
themselves over the unpatentable subject-matter types noted in Alice ... and
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Bilski v. Kappas, 561 U.S. 593 (2010)." Id. These assertions also are not
persuasive of error in the rejection, as they conflate subject-matter eligibility
and novelty. Yet, "[t ]he 'novelty' of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89
(1981 ). "Groundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
In view of the foregoing, the Appellants' arguments do not persuade
us of error in the rejection of claim 7 - or of claims 8-11, per 37 C.F.R.
§ 41.37(c)(l)(iv). Therefore, we sustain the rejection of claims 7-11 under
35 U.S.C. § 101.
Obviousness
The Appellants contend that independent claim 7 was rejected
erroneously, because Nagata fails to teach or suggest the recited "execution
of two or more licenses (initial usage license and renewal license) by the
customer before depletion of the initial amount of ink or toner in the
single, same exact, current supply item." Appeal Br. 9.
The language of claim 7 that describes this feature recites: "a usage
license for said current supply item ... corresponding to an amount of ink or
toner imaging substance" and "notifying said customer to obtain another
usage license for an additional amount of ink or toner imaging substance in
said current supply item."
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The rejection regards Nagata's disclosure of replacing an original
cartridge with another cartridge as a "renewal license." Answer 3 (citing
Nagata i-fi-1780, 960). However, such disclosure in Nagata does not satisfy of
claim 7 's recitation that the "another usage license" is "for an additional
amount of ink or toner imaging substance in said current supply item."
(Emphasis added). As the Appellants explain, "Nagata gives licenses to
toner in cartridges, but only gives one license per one cartridge." Appeal
Br. 8. Indeed, Nagata states that "service provider 10 replaces the toner
cartridge 60 with a new one which is provided as a spare." Nagata i1780
(emphasis added).
Further, the rejection states that claim 7's "recitation 'such that ... so
that ... can accommodate ... [ ] while the customer retains ... current
supply item' does not serve to further distinguish from the prior art"; "the
recitation does not have weight as it merely describes a result or intended
use of the 'prompting' step." Answer 3. However, the portion of claim 7,
thus identified in the rejection, does not correspond to the feature of claim 7
that the Appellants recognize as the basis for the asserted deficiency of
Nagata.
Therefore, the Appellants' argument persuades us of error in the
rejection of claim 7. Accordingly, we do not sustain the rejection of
independent claim 7, and claims 8-11 depending therefrom, under 35 U.S.C.
§ 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 7-11 under 35
U.S.C. § 101.
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We REVERSE the Examiner's decision rejecting claims 7-11 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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