Ex Parte Bruich et al

Patent Trial and Appeal Board

Jun 20, 2018

13398714 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/398,714 02/16/2012
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
06/22/2018
FIRST NAMED INVENTOR
Sean Michael Bruich
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.
26295-19520/US 8673
EXAMINER
PATEL,DIPENM
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
06/22/2018 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN MICHAEL BRUICH and FREDERICK ROSS LEACH
Appeal2017-003773
Application 13/398,714
Technology Center 3600
Before ST. JOHN COURTENAY III, JOHN P. PINKERTON, and
JASON M. REPKO, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 8, 12-15, 18-20, and 24--42, which are all the claims pending in
this application. Claims 3-7, 9-11, 16, 17, and 21-23 are cancelled. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We Affirm.
STATEMENT OF THE CASE
Introduction
Appellants' invention "relates to distributing electronic offers using a
social networking system, and in particular to selecting a whisper code to
1 According to Appellants, the real party in interest is Facebook, Inc., of
Menlo Park, California. App. Br. 1.
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include with an offer when delivering the offer to users of the social
networking system" (Spec. ,r 1 ).
Exemplary Claim
1. A method comprising:
receiving from an advertiser at a social networking
system an offer for redemption at a merchant establishment
associated with the advertiser;
receiving a set of rules for selecting a whisper code from
a plurality of whisper codes to be presented with the offer, the
rules determining the whisper code to be presented based on a
source of the offer to a viewing user;
receiving, from a plurality of users of the social
networking system, a plurality of actions with digital content
that includes the offer;
determining, based on the actions, a content item for
display to a viewing user of the social networking system, the
content item containing the offer;
determining a source of the content item that contains the
offer, the source determined from the action on which the
content item is based;
selecting, by a computer processor, a first whisper code
from the plurality of whisper codes, the selecting based on
applying the set of rules to the determined source of the content
item;
generating a page of content including the content item
that contains the offer and the selected whisper code in
connection with the content item; and
sending the page of content for display to the viewing
user.
App. Br. 18 ( emphasis added to contested limitation).
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Rejections
A. Claims 1, 2, 8, 12-15, 18-20, and 24--42 are rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act.
5.
B. Claims 1, 2, 8, 12-15, 18-20, and 24--42 are rejected under pre-AIA
35 U.S.C. § I03(a) as being obvious over the combined teachings and
suggestions of Higgins et al. (US 8,280,766 B2, issued Oct. 2, 2012)
(hereinafter "Higgins") in view of Fordyce, III et al. (US
2011/0035278 Al, pub. Feb. 10, 2011) (hereinafter "Fordyce").
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of rejection A
of claims 1, 2, 8, 12-15, 18-20, and 24--42 on the basis of representative
claim 1. We address the§ 103 rejection B, infra. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2012).
Issues on Appeal
Did the Examiner err in rejecting claims 1, 2, 8, 12-15, 18-20, and
24--42 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter?
Did the Examiner err in rejecting claims 1, 2, 8, 12-15, 18-20, and
24--42 under pre-AIA 35 U.S.C. § I03(a) as being obvious over the cited
combination of references?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
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See 37 C.F.R. § 4I.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Mayo/Alice Analysis under 35 USC§ 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
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nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
The Examiner's Rejection A under 35 USC§ 101
Regarding the first step of the Alice/ Mayo analysis, the Examiner
concludes claims 1, 2, 8, 12-15, 18-20, and 24--42 are directed to an abstract
idea: 2
Independent claims 1, 14, and 3 0 are directed to the abstract
idea of tracking distribution of offers with codes, which is a
fundamental economic activity commonly used in the industry
for increasing sales and/ or accounting purposes, wherein
distribution takes place between several different entities, which
is a method of organizing human activities.
Final Act. 4 ( emphasis added).
2 "Patent eligibility under§ 101 presents an issue of law .... " Accenture
Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed.
Cir. 2013).
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Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception:
Here, the additional element(s) or combination of elements in
the claims other than the abstract idea per se amount to no more
than: (i) mere instructions to implement the idea on a computer,
and (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry. [3] Viewed as a whole, these additional claim
element( s) do not provide meaningful limitation( s) to transform
the abstract idea into a patent eligible application of the abstract
idea such that the claim( s) amounts to significantly more than
the abstract idea itself.
Final Act. 4--5 ( emphasis added).
For the aforementioned reasons, the Examiner concludes that all
claims 1, 2, 8, 12-15, 18-20, and 24--42 on appeal are not patent-eligible
under 35 U.S.C. § 101.
Mayo/Alice Analysis - Step 1
Regarding Alice Step 1, Appellants argue the Examiner's assertion
that the claims are directed to "a fundamental economic practice and a
method of organizing human activities is a rather generic view of the claims
that ignores whole aspects of the claimed invention." App. Br. 7.
3 The patent eligibility inquiry may contain underlying issues of fact. Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed.
Cir. 2016). In particular, "[ t ]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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In support, Appellants contend, inter alia:
The claims as a whole are drawn to a specific way to select a
whisper code included in a content item containing an offer
when the content item is presented. For example, claim 1
receives "a set of rules for selecting a whisper code from a
plurality of whisper codes to be presented with the offer, the
rules determining the whisper code to be presented based on a
source of the offer to a viewing user," receives "from a plurality
of users of the social networking system, a plurality of actions
with digital content that includes the offer, determines "based
on the actions, a content item for display to a viewing user of
the social networking system, the content item containing the
offer," and selects "by a computer processor, a first whisper
code from the plurality of whisper codes, the selecting based on
applying the set of rules to the determined source of the content
item." Accordingly, claim 1 does not merely track distribution
of offers with codes, but uses specific information, "a source of
the content item that contains the offer" that is "determined
from the action on which the content item is based" and "a set
of rules for selecting a whisper code from a plurality of whisper
codes" based on the "source of the offer" to select a whisper
code that is included in a content item including the offer.
App. Br. 7 ( emphasis added).
Appellants urge that "[t]he Final Office Action thus errs by failing to
explain why the [E]xaminer' s proposed abstract idea is directed to an
exception." App. Br. 8.
Our reviewing court guides that "collecting information, including
when limited to particular content ( which does not change its character as
information), [is] within the realm of abstract ideas" and that "analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [is] essentially [a] mental process[] within the
abstract-idea category." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353-54 (Fed. Cir. 2016); see also Synopsys, Inc. v. Mentor Graphics
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Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (holding that "analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] mental processes within the abstract-idea
category" ( citation omitted)). As in Electric Power, the combination of
various abstract ideas relating to data collection and analysis is itself an
abstract idea.
Applying this guidance to the claims on appeal, we conclude at least
the recited step of "receiving, from a plurality of users of the social
networking system, a plurality of actions with digital content that includes
the offer," is merely a method of collecting information to determine, "based
on the actions, a content item for display to a viewing user of the social
networking system, the content item containing the offer." Claim 1.
Turning to the Specification for context, we note paragraph 25
expressly describes: "Offer objects 106 may further include whisper codes
124, and targeting characteristics 108 specifying a set of rules to apply a
context in which the social networking system selects whisper code 124 to
present with the offer to the viewing user." Thus, we conclude the claim
language interpreted in a manner consistent with the Specification is directed
to data collection and analysis.
Because the offer can be redeemed at a merchant ( e.g., see Spec. ,r,r 5,
21) and the offers may be, for example, coupons (Spec. i-f25), we agree with
the Examiner that "[i]ndependent claims 1, 14, and 30 are directed to the
abstract idea of tracking distribution of offers with codes, which is a
fundamental economic activity commonly used in the industry for increasing
sales and/or accounting purposes." Final Act. 4 ( emphasis added).
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Therefore, on this record, we find Appellants' contentions regarding Alice
Step 1 are not persuasive.
Mayo/Alice Analysis-Step 2
Because we conclude the claims are directed to an abstract idea for
essentially the same reasons articulated by the Examiner (Final Act. 4--5;
Ans. 5), we tum to the second part of the Alice/ Mayo analysis. We analyze
the claims to determine if there are additional limitations that individually,
or as an ordered combination, ensure the claims amount to "significantly
more" than the abstract idea. Alice, 134 S. Ct. at 2357.
Regarding Alice Step 2, Appellants address the purported inventive
concept of the claims:
The claimed features, which are not found in any of the
previously cited references, enable the social networking
system to measure performance of a presented offer in different
dimensions. Hence, the claims provide an inventive concept
that improves on, and does not preempt, the alleged abstract
idea of "tracking distribution of offers with codes" where
"distribution takes place between several different entities."
App. Br. 11 ( emphasis added).
We find unavailing Appellants' contention that "[t]he claimed
features, which are not found in any of the previously cited references,
enable the social networking system to measure performance of a presented
offer in different dimensions." Id. (emphasis added).
Regarding the argued purported point of novelty (id.), the Supreme
Court emphasizes that "[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)
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( emphasis added). Our reviewing court further guides that "[ e ]ligibility and
novelty are separate inquiries." Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016)
(holding that "[ e ]ven assuming" that a particular claimed feature was novel
does not "avoid the problem of abstractness").
Similarly, we find unpersuasive Appellants' contention that the claims
"provide an inventive concept that improves on, and does not preempt, the
alleged abstract idea of 'tracking distribution of offers with codes' where
'distribution takes place between several different entities."' App. Br. 11
( emphasis added). Our reviewing court provides applicable guidance:
"[ w ]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Therefore, we are not persuaded by Appellants' argument regarding the
absence of complete preemption.
Appellants' arguments in the Appeal Brief essentially enumerate the
claim limitations without any persuasive explanation of how the limitations
either individually, or as an ordered combination, amount to an inventive
concept that converts the abstract idea into patent-eligible subject matter.
We note each independent claim 1, 14, and 30 recites "selecting, by a
computer processor" ( emphasis added). We find none of Appellants' claims
on appeal is directed to an improvement in a processor, database, or other
computer/network component. Our reviewing court has "repeatedly held
that such invocations of computers and networks that are not even arguably
inventive are 'insufficient to pass the test of an inventive concept in the
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application' of an abstract idea." Elec. Power, 830 F.3d at 1355 (citation
omitted); see also Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Rather, the claims recite both a
generic computer element-a processor-and a series of generic computer
'components' that merely restate their individual functions .... That is to
say, they merely describe the functions of the abstract idea itself .... ").
And the Supreme Court provides further guidance in Bilski v. Kappas,
561 U.S. 593 (2010), that a "prohibition against patenting abstract ideas
'cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment."' Id. at 610 ( citation omitted).
Therefore, we find none of the claim limitations, viewed "both
individually and 'as an ordered combination,"' amounts to significantly
more than the judicial exception in order to sufficiently transform the nature
of the claims into patent-eligible subject matter. Alice, 134 S. Ct. at 2355
(quoting Mayo, 566 U.S. at 79).
Applying the aforementioned guidance from our reviewing courts to
the claims before us on appeal, we conclude, in our Mayol Alice analysis, that
each of Appellants' claims 1, 2, 8, 12-15, 18-20, and 24--42, considered as a
whole, is directed to (under step one), a patent-ineligible abstract idea, and
under step two, does not recite something "significantly more" to transform
the nature of the claim into a patent-eligible application.
Accordingly, for at least the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of claims 1, 2, 8, 12-15, 18-20,
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and 24--42, as being directed to patent-ineligible subject matter in light of
Alice and its progeny. 4
Rejection B of Independent Claim 1 under§ 103(a)
Issues: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by
finding that Higgins and Fordyce would have collectively taught or
suggested the contested limitation: selecting, by a computer processor, a
first whisper code from the plurality of whisper codes, the selecting based on
applying the set of rules to the determined source of the content item[,]
within the meaning of representative independent claim 1 ?5 Emphasis
added.
As an initial matter of claim construction, we tum to Appellants'
Specification for context regarding the intended meaning and broadest
reasonable interpretation of the claim 1 term "whisper code." We
particularly note the non-limiting, exemplary description for a "whisper
code" found at paragraph 26 of the Specification:
Whisper code 124 may be a unique code associated with an
offer that when presented to merchant 110 enables user 104 to
redeem the offer. Whisper code 124 may be a term, phrase, one
or more letters, numbers, characters, or symbols suitable to
uniquely identify offer 122. The social networking system
selects whisper code 124 for each viewing user by applying a
set of rules to a context in which social networking system 100
presents the offer to user 104. Whisper code 124 may be
4 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
5 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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presented to merchant 110 visually or audibly. Whisper code
124 may be provided to social networking system 100 by
advertiser 102 or merchant 110. Alternatively or additionally,
whisper code 124 may be generated by social networking
system 100, or a third party ( e.g., marketing analytics service).
In reviewing the record, we note the Examiner has not indicated any
particular claim interpretation for the claim term "whisper code" as recited
in each independent claim on appeal. See claims 1, 14, 30.
However, our reviewing court guides that "[b ]oth anticipation under
§ 102 and obviousness under § 103 are two-step inquiries. The first step in
both analyses is a proper construction of the claims .... The second step in
the analyses requires a comparison of the properly construed claim to the
prior art." Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.
2003) ( citations omitted).
Here, the Examiner has overlooked the first critical step of the
obviousness inquiry: claim construction of the contested claim term(s). We
additionally note the Examiner relies on Fordyce ,r,r 36-40, 104, 105, 110,
111, and 257, in combination with Higgins, for teaching or suggesting the
contested "selecting" limitation of representative claim 1. Final Act. 8.
Appellants contend the "selecting" limitation (recited in independent
claims 1, 14, 30) is not taught or suggested by Higgins and Fordyce for at
least the following reasons:
Fordyce correlates online transaction activity with offline
activity related to the same transaction. See Fordyce, Abstract.
As disclosed by Fordyce, an offer presented to a customer
includes an identifier (e.g., a "coupon code") that is stored in
association with an account of the customer. See Fordyce,
,r [0037]. Via online tracking, the identifier of the offer is also
associated with online activity of a user, "such as viewing an
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advertisement, performing online searches, browsing web
pages, or any other kind of online activities." See Fordyce,
,r [0037]. Hence, Fordyce associates an offer identifier with
information about a customer to whom an offer corresponding
to the offer identifier was presented. However, the steps
disclosed by Fordyce relate to associating an offer identifier of
an off er with a customer to whom the offer was presented, and
are silent regarding selection the offer from multiple offers. In
contrast, the claimed invention selects "a first whisper code
from the plurality of whisper codes" by "applying the set of
rules to the determined source of the content item." The
selected whisper code is subsequently included in a page of
content that is sent for display. No such application of rules to
select the offer that is presented to a customer and subsequently
stored in associated with the customer is disclosed or suggested
by Fordyce.
App. Br. 14.
Based upon our review of the record, we find a preponderance of the
evidence supports Appellants' arguments regarding rejection B under
§ 103(a). See Id.
At best, we find the multiple portions of Fordyce (i1i136-40, 104, 105,
110, 111, and 257) cited by the Examiner (Final Act. 8) only teach
associating "an offer identifier with information about a customer to whom
an offer corresponding to the offer identifier was presented," as argued by
Appellants. App. Br. 14. Appellants also contend that Fordyce is silent
regarding selection of the offer from multiple offers, and there is no
application of rules in Fordyce to select the offer that is presented to a
customer." Id. However, we note that selection of an "offer" is not the
same as selecting a "whisper code" ( as claimed), because these claim terms
have different meanings.
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In response, the Examiner further explains the basis for the rejection:
[W]ithout selecting an identifier out of plurality of identifiers
associated with numerous activities as described in para. [0037]
of Fordyce, one would not be able to determine which online
activity should be given the credit for resulting in an offline
transaction, note the entire Abstract of Fordyce. Thus,
Fordyce' s identifier selection rules associate the selected
identifier with corresponding online activity of a user to
determine the source or activity that resulted in selection of the
offer.
Ans. 10.
Even if the Examiner is correct that there is a teaching or suggestion
of selection of an identifier (i.e., whisper code) from a plurality of identifiers
in Fordyce, we find the Examiner has not fully developed the record to
establish Fordyce teaches or suggests "the selecting [is] based on applying
the set of rules to the determined source of the content item" ( claim 1 ), as
also recited using commensurate language in each of the remaining
independent claims 14 and 30. Emphasis added.
In particular, we find no clear teaching or suggestion of specific rules
in paragraph 37 of Fordyce. Therefore, we find the Examiner has not clearly
mapped the contested claimed rules to the corresponding specific feature
found in Fordyce. 6
Appellants further respond in the Reply Brief:
Fordyce's disclosure discusses how an identifier may be used in
conjunction with an offer, but is silent regarding selection of the
identifier that is used in conjunction with the offer. Rather,
6 See 37 C.F.R. § 1.104(c)(2) ("When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence
of each reference, if not apparent, must be clearly explained and each
rejected claim specified." ( emphasis added)).
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Fordyce merely provides that "the offer includes an identifier,"
with no disclosure or suggestion of how the identifier is
included in the offer. Fordyce, ,r [0037]. In contrast, the
claimed invention specifically recites that a first whisper code
for distribution with an offer is selected from a plurality of
whisper codes "based on applying the set of rules to the
determined source of the content item."
The Answer references "Fordyce' s identifier selection
rules associate the selected identifier with corresponding online
activity of a user to determine the source or activity that
resulted in selection of the offer." Answer, p. 10. However,
nowhere does Fordyce disclose or suggest "identifier selection
rules." While Fordyce provides that an IP address used by a
user to make a transaction is correlated with IP addresses
associated with consumer accounts to identify the consumer
account of the user who made the online transaction, such a
correlation does not select an identifier. See Fordyce,
[i1Ji1 [0104], [0105], [0257]. Fordyce's matching of IP
addresses identifies users who performed a transaction from IP
address information, but does not apply a set of rules to a
determined source of a content item to select a first whisper
code that is included in a page of content sent to a user. Rather,
Fordyce uses IP address information to identify a consumer
account that made a transaction. This does not select a whisper
code from a plurality of whisper codes boy applying "the set of
rules to the determined source of the content item," as claimed,
but instead to select "a first whisper code from the plurality of
whisper codes" that is included in a page of content sent to a
user, as claimed.
Reply Br. 13.
To the extent the Examiner has mapped the claimed set of rules to
Higgins (Final Act. 6), we find it is unclear how the selecting of identifiers
(i.e., "whisper codes") in Fordyce is based on the purported rules found in
Higgins. We note the Examiner (id.) cites to multiple portions of columns
11-15 in Higgins without providing any clear explanation of the mapping of
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the contested claim language to a specific set of rules found in Higgins. See
supra note 6.
The Examiner paints with a broad brush, and invites the panel to
perform de nova examination, searching through the many cited portions of
Higgins. We find the Examiner provides insufficient explanations regarding
the reading of particular contested claim terms on the specific corresponding
features found in Higgins. We decline the Examiner's invitation to perform
de nova examination.
We note that the Board is a reviewing body that does not perform
initial examination. To show obviousness ( or anticipation), the Examiner
should provide a clear mapping of each claim limitation to the
corresponding specific feature found in the reference, which the Examiner
must identify with particularity. See 37 C.F.R. § 1.104(c)(2).
The prima facie burden has not been met and the rejection does not
adhere to the minimal requirements of 35 U.S.C. § 132(a) "when a rejection
is so uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection." Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990).
Therefore, given the absence of clear mappings by the Examiner, we
find some degree of speculation would be required to affirm the Examiner
on this record. We decline to engage in speculation. "A rejection ... must
rest on a factual basis .... " In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). "The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not ... resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies in its factual basis." Id.
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Accordingly, we are constrained on this record to reverse the
Examiner's§ 103(a) rejection B of independent claim 1, and for the same
reasons, we also reverse rejection B of the remaining independent claims 14
and 30, which also recite the contested "selecting" limitation using similar
language having commensurate scope. Because we have reversed
rejection B of all independent claims, for the same reasons, we reverse the
Examiner's§ 103(a) rejection B of all dependent claims on appeal.
Conclusions
The Examiner did not err in rejecting claims 1, 2, 8, 12-15, 18-20,
and 24--42, under 35 U.S.C. § 101, as being directed to patent-ineligible
subject matter.
The Examiner erred in rejecting claims 1, 2, 8, 12-15, 18-20, and
24--42, under pre-AIA 35 U.S.C. § 103(a), as being obvious over the
combined teachings and suggestions of the cited references.
18
Appeal2017-003773
Application 13/398,714
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 8, 12-15,
18-20, and 24--42, under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1, 2, 8, 12-15,
18-20, and 24--42, underpre-AIA 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 4I.50(a)(l).
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
19