Ex Parte Borowski et al

Patent Trial and Appeal Board

Jun 11, 2018

12204517 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/204,517 09/04/2008 Zbigniew J. BOROWSKI
46583 7590 06/13/2018
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
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.
END920080111 US 1 5132
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/13/2018 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):
docketing@rmsc2.com
lga11augher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZBIGNIEW J. BOROWSKI and ROBERT A. PAL0 1
Appeal2017-003423
Application 12/204,517
Technology Center 3600
Before CAROLYN D. THOMAS, IRVINE. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-3, 5, 6, 8-22, and 24--28, all the
pending claims in the present application. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
The present invention relates generally to a situational solution for
collaborative information technology governance (see Spec., Abstract).
1 Appellants name International Business Machines Corporation as the real
party in interest (App. Br. 2).
Appeal2017-003423
Application 12/204,517
Claim 6 is illustrative:
6. A computer implemented method, which is executable on
program code embodied in a computer readable storage medium, for
collaborative governance comprising:
entering a situation using a situational environment
information technology governance (SEIG) tool;
describing the situation;
choosing one or more applicable teams or subject matter
experts using the SEIG tool;
communicating with the one or more applicable teams
and the subject matter experts using a collaborative technology of the
SEIG tool; and
authenticating, using an authentication solution provided
by the SEIG tool, the one or more applicable teams and the subject
matter experts before granting access to the communicating,
wherein the entering, the describing, the choosing, the
communicating, and the authenticating are performed using a
computer device comprising a processor and the describing includes
entering at least one question into a field of an entry screen provided
by the SEIG tool to facilitate the communicating with the one or more
applicable teams and subject matter experts using the collaborative
technology, the field describing one or more of an application contact,
a situation description, major objectives, an application type,
application users, a timeframe for deployment, and questions for the
one or more applicable teams or subject matter experts, and
wherein the SEIG tool is an Web client and configured to
provide links and interfaces to one or more tools that enable decision
making processes in a situational style, and further configured to
enable situational governance capabilities for an on demand
enterprise, and the links are included in a landing page that provides
information for users and a visual representation of the one or more
applicable teams or the subject matter experts,
wherein the choosing includes selecting the one or more
applicable teams from a plurality of teams via a landing page interface
of the SEIG tool,
wherein the landing page interface comprises a virtual
representation of the selected one or more teams using the SEIG tool
and also comprises a design order identifier associated with each of
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the selected one or more applicable teams of the plurality of teams,
and
wherein the design order identifier associated with each
of the selected one or more teams indicates an order in which a design
flow occurs for each of the selected one or more teams.
Appellants appeal the following rejections:
RI. Claims 1-3, 5, 6, 8-22, and 24--28 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to non-statutory subject
matter (Final Act. 2-15);
R2. Claims 1-3, 5, 6, 8-10, 16-22, and 24--28 are rejected under
35 U.S.C. § 112(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. 15-23);
R3. Claims 16 and 17 are rejected under 35 U.S.C. 112(d) or
pre-AIA 35 U.S.C. 112, fourth paragraph, as being of improper dependent
form (Final Act. 23-24);
R4. Claims 1-3, 5, 6, 8-10, 16-22, and 24--28 are rejected under
35 U.S.C. § 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to
comply with the written description requirement (Final Act. 24--31 );
R5. Claims 1-3, 5, 11, 13, 15-18, 20, 21, and 24--28 are rejected
under 35 U.S.C. § 102(b) as being anticipated by Gunasekar (US) (Final
Act. 31-35);
R6. Claims 6, 8-10, 12, 14, 19, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gunasekar (Final Act. 36-42).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
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Application 12/204,517
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
ANALYSIS
Rejection under§ 1 OJ
Issue 1: Did the Examiner err in finding that the claims are directed
to non-statutory subject matter?
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, "[w]e must first determine whether the claims
at issue are directed to a patent-ineligible concept," such as an abstract idea.
Alice, 134 S. Ct. at 2355.
In this regard, with respect to independent method claims 6 and 18,
and similarly, non-transitory computer-readable medium claims 11 and 28
and system claim 1, the Examiner finds that the claims are directed to the
abstract idea of "providing for collaborative information technology
governance" (Final Act. 3) and "is fundamental (foundational or basic) to
the field of business, and represents a method of organizing human
activities" (id. at 5; see also Ans. 4--5 "such as managing communications
between people" and "some methods of organizing human activities can also
be economic practices or 'ideas.'"). The Examiner adds that the "additional
claim element( s) do not provide meaningful limitations( s) to transform the
abstract idea into a patent eligible application ... amounts to reciting that the
method is to applied by a generic computer, nothing more" (id. at 7) and
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merely "reciting tools that are well understood, routine, and conventional in
the field of electronic communications" (id.).
Appellants challenge said findings on four grounds: (a) the claimed
invention does not correspond to a concept that the courts have identified as
an abstract idea; (b) the claims are not similar to concepts involving a
fundamental economic practice; ( c) the claimed invention requires certain
technology; and (d) the claims are rooted in computer technology.
Regarding argument (a), Appellants contend that "as discussed in
the July 2015 Update . .. providing for collaborative information technology
governance does not correspond to any of the enumerated categories of an
idea of 'itself'" (App. Br. 9-10) and "the alleged abstract idea is not similar
to at least one concept that the courts have identified as an abstract idea" (id.
at 10).
In response, the Examiner finds, and we agree, that "the pending
claims were not [actually] discussed or analyzed in the July 2015 guidelines
... [however] the examples given in the July guidance ... is non-limiting
and not an exhaustive list of all abstract ideas" (Ans. 3--4). The Examiner
further finds that "the claimed invention is a method of organizing human
activities, which is evidence by the specification itself' (Ans. 4, citing Spec.
,r 2), "because it is a concept that relates to managing interpersonal and
intrapersonal activities, such as managing communications between people"
(id.).
As identified by the Examiner (see Ans. 5), courts have similarly
determined that various methods of organizing human activity fall "squarely
within the realm of 'abstract ideas."' Alice, 134 S. Ct. at 2357 (discussing
methods for risk hedging and intermediated settlement as non-limiting
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examples of organizing human activity). In addition, recent cases from the
Federal Circuit also have "applied the 'abstract idea' exception to
encompass inventions pertaining to methods of organizing human activity."
In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)
( finding the claimed method of classifying and storing images in an
organized manner was a well-established basic concept analogous to
methods of organizing human activity); see Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (finding the
claim at issue was directed to the abstract idea of budgeting, which was "not
meaningfully different from the ideas found to be abstract in other cases
before the Supreme Court and our court involving methods of organizing
human activity"). See also, e.g., Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(finding claims directed to collecting data, recognizing certain data within
the collected data set, and storing the recognized data drawn to an abstract
idea and noting that "humans have always performed these functions").
Thus, we find unavailing Appellants' contention supra that "the
alleged idea is not similar to at least one concept that the courts have
identified as an abstract idea," given the aforementioned examples.
Regarding argument (b ), Appellants contend that "the claimed
invention accelerates a decision making process ... [and] is not a
fundamental economic practice long prevalent in our system" (App. Br. 11 ).
In response, the Examiner highlights that "the [E]xaminer did not
state that the claimed invention was a fundamental economic practice" (Ans.
7), instead the Examiner relied upon "organizing human activities" (id.). As
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such, we agree with the Examiner that such an argument is "a moot point"
(id.) because it is not directed to the Examiner's specific findings.
Regarding argument (c), Appellants contend that "the presently
claimed invention requires technology to accelerate a decision making
process ... particularly a landing pad to provide visual representations
cannot be a mental process" (App. Br. 12).
In response, the Examiner finds, and we agree, that Appellants are
"mixing step 2A of the analysis (identifying the abstract idea) with step 2B
(significantly more analysis) ... and [this] is not persuasive to show that the
claims are not directed at an abstract idea" (Ans. 7-8). As such, we shall
address this argument with our step 2B analysis below.
Regarding argument ( d), Appellants contend that "the present
claims, like the claims in the DDR case, are clearly 'necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.' ... in order to accelerate the decision
making process" (App. Br. 13).
In response, the Examiner finds, and we agree, that "there is not even
a computer network claimed and nothing is claimed that is unconventional in
nature as was the case in DDR" (Ans. 11 ).
In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259
(Fed. Cir. 2014), the subject claim was held patent-eligible because it
encompassed "an inventive concept" for resolving a "particular Internet-
centric problem." In contrast, we find Appellants' computer implemented
method ( claim 6) does not provide a solution "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR, 773 F.3d at 1257. Because we find
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all claims on appeal merely use generic computer components as tools which
are used in the way such components normally function, we conclude claims
1-3, 5, 6, 8-22, and 24--28 fail to impart any discernible improvement upon
computer technology, nor do Appellants' claims solve "a challenge
particular to the Internet" as considered by the court in DDR, 773 F.3d at
1256-57. Thus, we conclude none of Appellants' claims are like the claim
held patent-eligible by the court in DDR, in which the claimed invention was
directed to the "challenge of retaining control over the attention of the
customer in the context of the Internet," such that:
Instead of the computer network operating in its normal, expected
manner by sending the website visitor to the third-party website that
appears to be connected with the clicked advertisement, the claimed
system generates and directs the visitor to the above-described hybrid
web page that presents product information from the third-party and
visual "look and feel" elements from the host website.
DDR, 773 F.3d at 1258-59. Thus, we find unavailing Appellants'
arguments that the claims "are like the claims in the DDR case" (App. Br.
13), given that no convincing "inventive concept" for resolving a "particular
Internet-centric problem" is identified by Appellants. Thus, we agree with
the Examiner that "the reliance upon DDR appears to be misplaced and is
not persuasive" (Ans. 11) and that "[i]n the pre computer world this issue of
communication and collaboration between people in an enterprise ...
existed before computers" (id. at 12).
We now tum to the second step of the Alice framework: "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."' Alice, 134 S. Ct. at 2355
(citing Mayo Collaborative Servs., 132 S. Ct. at 1294).
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Appellants contend that "the presently claimed invention requires
technology to accelerate a decision making process ... particularly a landing
pad to provide visual representations" (App. Br. 12). Appellants also
generally contend that "the claimed invention qualify as 'significantly more'
than the alleged abstract idea" (App. Br. 16).
The Examiner finds that the claims are "reciting nothing more than
using generic computing technology . . . . This is something that is well
understood, routine, and conventional in the realm of computers ... [ and] is
considered to be an insignificant extra solution activity" (Final Act. 8-9).
The Examiner also finds that Appellants' "argument is not persuasive
because it is nothing more than a general allegation" (Ans. 13). We agree
with the Examiner.
"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]."' Alice, 134 S. Ct. at 2357 (brackets in
original) (quoting Mayo, 132 S. Ct. at 1297). The prohibition against
patenting an abstract idea "cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment or adding
insignificant post-solution activity." Bilski v. Kappas, 561 U.S. at 610-11
( citation and internal quotation marks omitted). The recitations in claim 1
pertaining to "a computer device" are analogous to the recitation of a
conventional "computer" discussed in Alice.
As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." See Alice, 134 S. Ct. at 2359 (concluding claims
"simply instruct[ing] the practitioner to implement the abstract idea of
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intermediated settlement on a generic computer" not patent eligible); see
also Ultramercial, 772 F.3d at 715-16 (claims merely reciting abstract idea
of using advertising as currency as applied to particular technological
environment of the Internet not patent eligible); Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir.
2013) ( claims reciting "generalized software components arranged to
implement an abstract concept [ of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer" not patent eligible); and Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a 'computer aided'
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible" (internal citation omitted)).
Limiting such an abstract concept of "providing for collaborative
information technology governance" to generic components, such as a
computing device, does not make the abstract concept patent-eligible under
35 U.S.C. § 101. Furthermore, Appellants are reminded that "relying on a
computer to perfonn routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible." OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134
S. Ct. at 2359 ("use of a cornputer to create electronic records, track multiple
transactions, and issue simultaneous instructions" is not an inventive
concept)).
Because Appellants' claims 1, 11, 14, 15 are directed to a patent-
ineligible abstract concept and do not recite something "significantly more"
under the second prong of the Alice analysis, we sustain the Examiner's
rejection of these claims as well as respective dependent claims 2, 4, 12, 13,
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and 16-19 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
Rejection under§ 112, second paragraph
Issue 2: Did the Examiner err in finding that the claims are
indefinite?
First, the Examiner finds that "the scope of the claimed processes
[are] not known and appear[] to be unduly broad ... It is not clear what is
required to be considered infringing the claimed processes" (Final Act. 15-
16).
As pointed out by Appellants, and we agree, the breadth of a claim is
not to be equated with indefiniteness (see App. Br. 48). In re Miller, 441
F.2d 689,693 (CCPA 1971).
Accordingly, we believe that the Examiner concern about the "unduly
broad" claims is misplaced because the Examiner has improperly equated
breadth with indefiniteness. It is well established that "breadth is not
indefiniteness." In re Gardner, 427 F.2d 786, 788 (CCPA 1970).
Second, the Examiner finds that, for claim 1, the "claim language is
indefinite and it is not clear as to what statutory class of invention the claim
is directed to ... [because claim 1] is reciting structure to a device and a
method of using the device in the same claim" (Final Act. 16).
Appellants contend that "one of ordinary skill in the art would
understand that claim 1 is directed to a system claim" (App. Br. 49). We are
not persuaded by Appellants' arguments at least because they fail to address
the Examiner's actual rejection. The Examiner's position is that a single
claim which claims both a system (machine) and the method steps of using
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the system (process) is indefinite under 35 U.S.C. § 112, second paragraph.
See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303
(Fed. Cir. 2011). In Katz, a claim directed to "a system with an interface
means for providing automated voice messages ... to certain of said
individual callers, wherein said certain of said individual callers digitally
enter data" was determined to be indefinite because the italicized claim
limitation is not directed to the system, but rather to actions of the individual
callers, which creates confusion as to when direct infringement occurs.
Katz, 639 F.3d at 1318 (emphasis added) (citing IPXL Holdings v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), in which a system
claim that recited "an input means" and required a user to use the input
means was found to be indefinite because it was unclear "whether
infringement ... occurs when one creates a system that allows the user [ to
use the input means], or whether infringement occurs when the user actually
uses the input means.").
Here, there is no dispute that the preamble of claim 1 is directed to a
system (see Appeal Br. 49), but claim 1 also recites, inter alia, the selection
process includes receiving a selection of one or more teams from a plurality
of teams via a landing page interface of the SEIG tool (see claim 1).
In addition to claiming a system, by requiring manual selection of a
team or action from a user via a human machine interface device, claim 1
also invokes the method of using the system, which creates confusion as to
when direct infringement occurs. In other words, it is unclear whether claim
1 requires only a system that allows the user to use the landing page
interface or instead requires that the user actually use the interface. Because
claim 1 recites both a system and the method for using the system, it does
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not apprise one of ordinary skill in the art of its scope, therefore, rendering it
indefinite.
Accordingly, we sustain the rejection of claim 1 under 35 U.S.C.
§ 112, second paragraph, because a single claim which claims both a system
and the method of using the system is indefinite, as well as sustain the
rejection of dependent claims 3, 5, 21, 24--28 for similar reasons.
Third, regarding claim 2, the Examiner finds that "[system] claim 2
appears to be reciting nothing but a method step of performing an action, as
if the claims were method claims" (Final Act. 18). We agree with the
Examiner.
Although Appellants contend that "one of ordinary skill in the art
would understand that the SEIG tool is configured to perform a plurality of
processes including an entry process" (App. Br. 49), again Appellants'
arguments fail to address the Examiner's actual rejection, i.e., a single claim
which claims both a system and the method of using the system as being
indefinite. As such, we find that claim 2 recites both a system and the
method for using the system, which does not apprise one of ordinary skill in
the art of its scope, therefore, rendering it indefinite.
Fourth, also regarding claim 2, 2 the Examiner finds that "[i]t is not
clear how the entry process can be done using the wiki, white board, and
blog at the same time ... [which] does not appear to be consistent with the
original disclosure" (Final Act. 18). In response, Appellants insist that claim
5 is being rejected and argue the same (see App. Br. 49), instead of arguing
2 Here, the Examiner cites claim 3, instead of claim 2, for this rejection.
However, claim 2 includes the claim limitations highlighted by the
Examiner, not claim 3. Therefore, we shall treat this as a rejection regarding
claim 2.
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claim 2 and the relevant "entry process" limitation. As such, we find
Appellants' argument unresponsive to the specific findings presented by the
Examiner. If an appellant fails to present arguments on a particular issue -
or, more broadly, on a particular rejection-the Board will not, as a general
matter, unilaterally review those uncontested aspects of the rejection. Id.
(citing, inter alia, Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008)
(the Board may treat arguments appellant failed to make for a given ground
of rejection as waived)).
Accordingly, we sustain the rejection of claim 2 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
Fifth, regarding claim 6, the Examiner finds that "[i]t is not clear what
kinds of tools are those that enable decision making processes in a
situational style" (Ans. 19) (emphasis omitted). In response, Appellants
direct our attention to paragraphs 19, 30, 32, 61, and 68 in their Specification
and contend that "one of ordinary skill in the art would understand that
providing the links and interfaces enable decision making processes" (App.
Br. 50). We agree with Appellants.
For example, Appellants' Specification notes that a tool may be
implemented as a Web client that facilitate decision making processes by
allowing users to communicate across an enterprise (see Spec. ,r 30). The
test for definiteness under 35 U.S.C. § 112, second paragraph is whether
"those skilled in the art would understand what is claimed when the claim is
read in light of the specification." Orthokinetics, Inc., v. Safety Travel
Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986)(citations omitted). Here, we
find that Appellants' disclosure allows those skilled in the art to understand
what is being claimed.
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Accordingly, we reverse the rejection of claim 6 under 35 U.S.C.
§ 112, second paragraph, as being indefinite, as well as claims 8-10, which
are dependent thereon.
Sixth, regarding claims 16 and 17, the Examiner finds that "it is not
clear what is required to infringe the claim. . .. [because] is it also required
that one must have a service provider perform one of the 'supported,
deployed, maintained, and created' steps" (Final Act. 20), i.e., the step a
human being is going to undertake for the computer program product itself.
In response, Appellants contend that "claims 16 and 1 7 are not reciting acts
performed by people ... a service provider is different from a person" (App.
Br. 51).
Even if we accept Appellants' argument that the service provider is
different from a person, we find that Appellants fail to address the
Examiner's actual rejection. i.e., that a single claim which claims both a
computer program product and the step of a service provider performing
steps is indefinite under 35 U.S.C. § 112, second paragraph. Katz, 639 F.3d
at 1303. For example, claims 16 and 17 include some limitations not
directed to the product itself, but rather to actions of the service provider,
which creates confusion as to when direct infringement occurs. Katz, 639
F.3d at 1318 (citing IPXL Holdings, 430 F.3d at 1384, in which a system
claim that recited "an input means" and required a user to use the input
means was found to be indefinite because it was unclear "whether
infringement ... occurs when one creates a system that allows the user [ to
use the input means], or whether infringement occurs when the user actually
uses the input means.").
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Here, there is no dispute that the preamble of claims 16 and 17 are
directed to a computer program product (see Claims Appendix), but claim
16 also recites, inter alia, at least one of supported, deployed, maintained,
and created by a service provider (see claim 16). Claim 17 includes similar
limitations.
Because claims 16 and 1 7 recite both a computer program product and
a service provider for performing actions, we agree with the Examiner that
claims 16 and 1 7 do not apprise one of ordinary skill in the art of its scope,
therefore, rendering it indefinite.
Accordingly, we affirm the rejection of claims 16 and 17 under
35 U.S.C. § 112, second paragraph, as being indefinite.
Seventh, regarding claim 18, the Examiner finds that "[t]he body of
the claim refers to the application as being 'deployed' but the claim is
supposed to be directed at the method of deploying the application ... claim
language is contradictory" (Final Act. 21 ), also "it is not clear what the
'steps' are that are being claimed ... [because claim 18 is] not reciting
anything about the steps themselves" (id. at 21-22). We agree with the
Examiner.
Although Appellants contend that "the body of the claim is directed to
a computer device having a processor in order to perform the steps of ... "
(App. Br. 51 ), we highlight that claim 18 recites "in order to perform a
plurality of steps to:" not "in order to perform the steps of," as proffered by
Appellants.
In other words, we agree with the Examiner that claim 18, as written,
fails to give any information about the steps themselves, but rather describes
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what the unknown steps achieve, i.e., the end result of the steps (see Ans.
22).
Accordingly, we affirm the rejection of claim 18 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
Eighth, regarding claim 19, the Examiner finds that "[i]t is not clear
what this claim language is requiring in terms of the SEIG tool[, i.e.,] [ w ]hat
structure is defined ... or specific processes" (Final Act. 22). In response,
Appellants contend that "the SEIG tool is used to supplement existing
corporate processes ... by integrating with tools that support existing
processes" (App. Br. 52, citing Spec. 31 ). We agree with Appellants.
We find that Appellants have sufficiently shown that the specification
describes "supplement" as "integrating" with existing processes, thus
describing a specific process for the SEIG tool.
Accordingly, we reverse the rejection of claim 19 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
Ninth, regarding claim 22, the Examiner finds that "there is no
antecedent basis for 'the status indicator havingfirst and second states'"
(Final Act. 22). In response, Appellants merely contend that "claim 22 has
proper antecedent basis" (App. Br. 52), without providing any evidence of
the same.
Given that Appellants have not shown, nor can we find, any
antecedent basis for the claimed "status indicator," we affirm the rejection of
claim 22 under 35 U.S.C. § 112, second paragraph, as being indefinite.
Tenth, regarding claim 26, the Examiner finds that "claim 26 is
inconsistent with the original disclosure ... [is] the submission button[]
used to view the situation" or submit their situation (Final Act. 23). In
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response, Appellants contend that "in the exemplary embodiments,
paragraph [0071] ... the [ submission button 820] allows the submitted
request to be viewable to users" (App. Br. 52). We agree with Appellants.
For example, Appellants' Specification in paragraph 71 states that
"[ o ]nee the situation review request is entered, it can be submitted ... as
submission button 820 [and] [t]his allows the submitted request to be
viewable to users" (i1 71 ). Thus, Appellants' specification clearly spells out
that the claimed submission button acts to both submit requests and view the
same.
Accordingly, we reverse the rejection of claim 26 under 35 U.S.C.
§ 112, second paragraph, as being indefinite, and dependent claim 27 for
similar reasons.
Rejection under§ 112, fourth paragraph
Claims 16 and 17
Issue 3: Did the Examiner err in finding that the claims are in
improper dependent form?
The Examiner finds that "Claim 16 is not further limiting the
computer program product of claim 11, but is reciting acts performed by a
service provider (people) that uses or act upon the computer program
product of claim 11" (Final Act. 23). We agree with the Examiner.
In response, Appellants merely point out what the claims recites (see
App. Br. 53) and reiterate the arguments made supra regarding the § 112,
second paragraph rejection (id. at 54), which we found unpersuasive, and are
irrelevant here.
A statement which merely points out ,vhat a claim recites will not be
considered an argument for separate patentability of the claim. S'ee
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C.F.R. § 4I.37(c)(l)(vii). Here, Appellants fail to persuasively show how
the limitations of claims 16 and 1 7 further limit the computer program
product itself.
Accordingly, we affirm the rejection of claims 16 and 17 under 35
U.S.C. § 112, fourth paragraph.
Rejection under§ 112, first paragraph
Claims 1-3, 5, 6, 8-22, and 24-28
Issue 4: Did the Examiner err in finding that specific
features/functions are genus with no support in the specification as originally
filed for any species that fall within the genus?
First, regarding claim 26, the Examiner finds that "the specification
does not disclose [ a submission button] as being used to view a situation ...
[therefore,] claim 26 is considered to contain new matter" (Final Act. 26).
We disagree with the Examiner for similar reasons presented supra
regarding the § 112, second paragraph rejection of claim 26.
Second, regarding claims 1, 6, 11, 18, and 28, the Examiner finds that
"the claim language of 'wherein the selection process includes ... via a
landing page interface of the SEIG tool' . .. is found to be new matter ...
[because in the original specification] a selection occurred in a general and
generic sense" (Final Act. 26-27). In response, Appellants contend that
"paragraph [0058] ... discloses that a user can identify and select applicable
teams 420 in a landing page 400" (App. Br. 56) ( emphasis added).
Upon reviewing Appellants' paragraph [58], we were unable to find
the exact language quoted by Appellants. Instead, paragraph [58] merely
states "[t]he SEIG Tool allows a user to identify and select applicable teams
420 in which the user can collaborate with and seek advice from" (i1 58).
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What is missing is any reference to using a "landing page interface" to make
this selection. Thus, we agree with the Examiner that such selection is
disclosed generally and in a generic sense using the SEIG Tool.
Third, regarding claims 1, 6, 11, 18, and 28, the Examiner further
finds that "it is noted that nothing is explained about how the authentication
is occurring" (Final Act. 28) in that "[t]he claim is reciting a genus in the
form of any and all manner of authentication ... including those that are not
yet created" (id. at 29). Additionally, the Examiner further finds that
"nothing at all is disclosed in the specification that is setting forth how the
claimed 'communication process' works" (Final Act. 29) in that the
"claimed tools all represent a genus that is reciting any and all social tagging
tools" (id. at 30). The Examiner also finds that "with respect to the claimed
'selection process' ... this is not disclosed in the specification to any extent
that would reasonably convey possession ... it is the user that is making the
selection, not a computing device" (Final Act. 27).
Regarding authentication, Appellants contend that "the specification
does not disclose authentication tools which are not yet created .... the
specified species of the authentication tools would be custom or existing
tools at the filing data of the claimed invention" (App. Br. 57).
We are not persuaded the Examiner erred in asserting that
independent claims 1, 6, 11, 18, and 28 recite aspects that fail to comply
with the written description requirement. Specifically, we conclude that
because the functional claim language "using an authentication solution"
recited in each of the independent claims, is a genus, and the Specification
does not disclose sufficient species to support the genus, the recited
functional claim language does not have sufficient written description
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support to satisfy 35 U.S.C. § 112, first paragraph. Appellants'
Specification specifically states that the authentication may "comprise any
number of authentication solutions known to those in the art" (i163), not
known at the filing date, as proffered by Appellants.
In essence, Appellants assert that the aforementioned functional claim
language has literal support in the Specification at paragraphs [ 51], [ 63], and
[64] (App. Br. 57). However, the fact that the Specification literally repeats
the functional claim language in ipsis verbis is not dispositive. Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en
bane); Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir.
2002).
Given the identified support in the written description, we next must
determine whether the scope of the functional claim language is a genus that
covers all species for performing the claimed function. Ariad, 598 F.3d at
1349. Factors to consider include (a) whether the claim itself recites
limitations as to how the function is performed; and (b) whether the
Specification identifies a way of performing the claimed function, such as a
specific type of microcomputer or an algorithm, that defines the scope of the
functional claim language, without importing limitations from the
Specification into the claim. Lizard Tech, Inc. v. Earth Res. Mapping, Inc.,
424 F.3d 1336, 1343--46 (Fed. Cir. 2005); In re Hayes Microcomputer
Prods., Inc. Patent Litigation, 982 F.2d 1527, 1534 (Fed. Cir. 1992). To that
end, we note that independent claim 1 does not recite how the function is
performed. Accordingly, we find that the scope of "using authentication
solutions" is a genus that covers all species for performing the claimed
authentication function. And as the Specification does not disclose any
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species for "authenticating," independent claims 1, 6, 11, 18, and 28 fail to
meet the written description requirement of 35 U.S.C. § 112, first paragraph.
LizardTech, 424 F.3d at 1346 ("[T]he description of one method for creating
a seamless DWT does not entitle the inventor ... to claim any and all means
for achieving that objective"); Ariad, 598 F.3d at 1349 ("the specification
must demonstrate that the applicant has made a generic invention that
achieves the claimed result and do so by showing that the applicant has
invented species sufficient to support a claim to the functionally-defined
genus"). Similarly, we also find that the claimed "communication process"
and the "selection process" have not been associated with species sufficient
to support a claim to the functionally-defined genus, for the reasons set forth
by the Examiner (see Ans. 27-30).
Fourth, regarding claims 16 and 20, the Examiner find that "nothing
is disclosed about how the service provider performs the acts ... All of these
functions are a genus" (Final Act. 31 ). In response, Appellants direct our
attention to paragraphs [28] and [38] of the Specification and contend that
the Specification shows possession of the claimed invention (see App. Br.
58).
We find that Appellants' broad response fails to specifically address
the species/genus aspect of the Examiner's rejection. If an appellant fails to
present arguments on a particular issue - or, more broadly, on a particular
rejection -the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection. Id. (citing, inter alia, Hyatt v. Dudas,
551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (theBoardmaytreatarguments
appellant failed to make for a given ground of rejection as waived)).
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Accordingly, we affirm the rejection of claims 1-3, 5, 6, 8-22, and
24--28 under 35 U.S.C. § 112, first paragraph. Here, the Examiner has
presented multiple basis for rejecting the claims and because at least one
rejection encompassing all claims is affirmed, the decision of the Examiner
is affirmed.
Rejection under§ 102(b)
Claims 1, 3, 11, 13, 15-18, 20, 21, and 24-28
Issue 5: Did the Examiner err in finding that the claims recite non-
functional descriptive material?
Appellants contend that Gunasekar does not disclose the claimed
design order identifier and that claimed "design order identifier ... are not
printed matter [because] [ o ]ne of ordinary skill in the art would understand
that []the landing page interface comprises a virtual representation of the
selected one or more teams ... [ and] indicates an order in which a design
flow occurs" (App. Br. 60), thus it "performs the function of indicating the
order" (id.).
In response, the Examiner finds that Appellants are "arguing data
makes the claim patentable by virtue of being on the landing page interface[,
however,] [t]his is non-functional descriptive material that can be considered
to be akin to printed matter" (Ans. 34). We agree with the Examiner.
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
Non-functional descriptive material refers to data content that does
not exhibit a functional interrelationship with the substrate and does not
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affect the way the computing processes are performed. See MPEP
§ 2106.01. See Ex parte Nehls, 88 USPQ2d 1883, 1887-1888 (BPAI 2008)
(precedential). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)
( stating that "[ w ]here the printed matter is not functionally related to the
substrate, the printed matter will not distinguish the invention from the prior
art in terms of patentability"; finding no functional relationship where the
printed matter in no way depends on the substrate and the substrate in no
way depends on the printed matter; and holding claimed subject matter
anticipated where such printed matter was the only difference between the
claimed subject matter and the prior art).
Further, the Examiner need not give patentable weight to descriptive
material absent a new and unobvious functional relationship between the
descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1582-
1583 (Fed. Cir. 1994); In re Ngai, 367 F.3d at 1339 (nonfunctional
descriptive material cannot render nonobvious an invention that would have
otherwise been obvious). See also Ex parte Mathias, 84 USPQ2d 1276
(BPAI 2005) (nonprecedential), aff'd, 191 Fed.Appx. 959 (Fed. Cir. 2006).
Here, claim 1 recites, inter alia, "a design order identifier associated
with each of the selected one or more teams of the plurality of teams, and
wherein the design order identifier ... indicates an order in which a design
flow occurs" (see claim 1 ). Independent claims 11, 18, and 28 recite similar
limitations. However, claim 1, as written, fails to recite executing any
design flow. Instead, claim 1 merely indicates/lists an order of a design flow
that is not actually being performed.
As such, we agree with the Examiner that claim 1 's design order
identifier merely recites non-functional descriptive material, amounting to
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printed matter that need not be given patentable weight. Thus, we find
unavailing Appellants' contention that the claimed design order identifier
"performs the function of indicating the order" (see App. Br. 60), given that
the claimed "indicates an order" merely reads on viewing/ describing the
order as opposed to a functional manipulation of the order, i.e., actually
performing the design flow order.
Accordingly, we affirm the Examiner's rejection of claims 1, 3, 11,
13, 15-18, 20, 21, and 24--28 under 35 U.S.C. 102(b) as being anticipated by
Gunasekar.
Claim 2
Appellants contend that although "Gunasekar disclose[ s] using a
collaborative whiteboard ... Gunasekar does not disclose that the entry
process includes entering a situation into the SEIG tool using a wiki and a
blog" also (App. Br. 64).
In response, the Examiner finds "claim [2] to be satisfied by the
whiteboard of Gunasekar, as all three of the wiki, whiteboard, and blog
cannot and are not disclosed as being used at the same time to perform the
entry process" (Ans. 36).
In essence, the Examiner interprets claim 2 as requiring entering a
situation into the SEIG using either a wiki, a white board, or a blog, whereas
Appellants appear to interpret claim 2 as requiring using all three
components. We agree with Appellants.
Although the Examiner emphasizes that all three components "cannot
be used at the same time," which we agree, we highlight that claim 2 does
not recite at the same time, as proffered by the Examiner. We interpret the
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claim as merely having an entry process that is capable of using each of a
wiki, a white board, and a blog, albeit not at the same time.
Given that the Examiner has not shown that Gunasekar is capable of
using each of the wiki, a white board, and a blog, we reverse the Examiner's
rejection of claim 2 under 35 U.S.C. 102(b) as being anticipated by
Gunasekar.
Claim 5
Appellants contend that while Gunasekar discloses video
conferencing, instant messaging, and online communication session (see
App. Br. 65), "Gunasekar does not disclose wikis" (id.).
The Examiner finds that "[b ]roadly claiming a wiki is claiming a
website, which is disclosed by Gunasekar at paragraphs 034---037 ... This
satisfies the broad term of claiming a 'wiki"' (Ans. 37).
In response to the Answer's findings, Appellants contend that "even
assuming arguendo that Gunasekar disclose a website, one of ordinary skill
in the art would understand that a general website is different from wikis"
(Reply Br. 52). We agree with Appellants.
The usual and ordinary meaning of "wiki" is "web pages where all
users can add content and edit the content of others." Dictionary of
Computer and Internet Terms, p. 560 (9th Edition 2006). As such, we agree
with Appellants that the Examiner's proffered general website fails to meet
this definition.
Accordingly, we reverse the Examiner's rejection of claim 5 under
35 U.S.C. § 102(b) as being anticipated by Gunasekar.
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Rejection under§ 103(a)
Claims 6, 8-10, 19, and 22
Because Appellants have not presented separate patentability
arguments or have reiterated substantially the same arguments as those
previously discussed for patentability of claim 1 above (see App. Br. 66-70),
which we find unpersuasive, we are not persuaded the Examiner erred in
rejecting claims 6, 8-10, 19, and 22 for the reasons discussed supra.
Accordingly, the rejection of claims 6, 8-10, 19, and 22 under
35 U.S.C. § 103(a) as being unpatentable over Gunasekar is affirmed.
Claim 12
Because Appellants have reiterated substantially the same arguments
as those previously discussed for patentability of claim 5 above (see App.
Br. 69), which we find persuasive, we are persuaded the Examiner erred in
rejecting claim 12 for the same/similar reasons discussed supra.
Accordingly, the rejection of claim 12 under 35 U.S.C. § 103(a) as
being unpatentable over Gunasekar is reversed.
Claim 14
Because Appellants have reiterated substantially the same arguments
as those previously discussed for patentability of claim 2 above (see App.
Br. 69-70 ), which we find persuasive, we are persuaded the Examiner erred
in rejecting claim 12 for the same/similar reasons discussed supra, as the
Examiner has not shown that all features are suggested in Gunasekar.
Accordingly, the rejection of claim 14 under 35 U.S.C. § 103(a) as
being unpatentable over Gunasekar is reversed.
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DECISION
We affirm the Examiner's rejection of claims 1-3, 5, 6, 8-22, and 24--
28 under 35 U.S.C. § 101.
We affirm the Examiner's§ 112, second paragraph, rejection of
claims 1-3, 5, 16-18, 20-22, and 24--28.
We reverse the Examiner's§ 112, second paragraph, rejection of
claims 6, 8-10, and 19.
We affirm the Examiner's§ 112, fourth paragraph, rejection of claims
16 and 17.
We affirm the Examiner's§ 112, first paragraph, rejection of claims
1-3, 5, 6, 8-10, 16-22, and 24--28.
We affirm the Examiner's § 102(b) rejection of claims 1, 3, 11, 13,
15-18, 20, 21, and 24--28.
We reverse the Examiner's§ 102(b) rejection of claims 2 and 5.
We affirm the Examiner's§ 103(a) rejection of claims 6, 8-10, 19,
and 22.
We reverse the Examiner's§ 103(a) rejection of claims 12 and 14.
Because at least one rejection encompassing each claim on appeal is
affirmed, the decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
28