Ex Parte Canfield et al

Patent Trial and Appeal Board

Feb 22, 2019

12252854 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/252,854 10/16/2008
83811 7590 02/26/2019
AT&T LEGAL DEPARTMENT-TREK
PA TENT DOCKETING
ROOM 2A-212, ONE AT&T WAY
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
L. Russell Canfield
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.
ATT/2007-0967 8208
EXAMINER
LAM, ELIZA ANNE
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/26/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@trbklaw.com
eOfficeActionDocs@att.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte L. RUSSELL CANFIELD and CHRISTOPHER VOLINSKY
Appeal2017-010698
Application 12/252,854
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 4--9, 11, 12, and 14--22, which are all of the
claims pending in this application. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 According to Appellants, the real party in interest is AT&T Intellectual
Property I, L.P. App. Br. 3.
2 Claims 3, 10, and 13 have been canceled. App. Br. 28-32 (Claim App'x).
Appeal2017-010698
Application 12/252,854
INVENTION
Appellants' invention relates to a providing social health tracking over
one or more communication networks. Spec. 1. Claim 1 is illustrative and
reads as follows:
1. A method for providing a social health tracking feature,
the method comprising:
gathering, by a processor of a server deployed within a
core network operated by a service provider, call detail record
data on an interaction for an endpoint device of a customer,
wherein the customer has subscribed to a communication service
having the social health tracking feature, wherein the
communication service is provided by the service provider;
updating, by the processor, a statistical model for the
interaction for the customer using information gathered from the
call detail record data over a period of time, wherein the
statistical model tracks the interaction of the customer on a per
destination basis;
determining, by the processor, a social health status for the
customer from the statistical model, wherein the customer is
notified when the social health status is below a normal level
based on the customer having less interactions with a destination
as compared to an average level of interactions calculated from
historical records, wherein the destination comprises an internet
protocol address; and
providing, by the processor, the social health status via a
network communication comprising a short message service
message over a wireless communication channel to the endpoint
device of the customer in accordance with the communication
service, wherein the social health status is provided as a visual
representation on the endpoint device of the customer, wherein
the visual representation is presented as a numerical score.
App. Br. 28 (Claims App 'x).
2
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Application 12/252,854
REJECTIONS
Claims 1, 2, 4--9, 11, 12, and 14--223 stand rejected under 35 U.S.C.
§ 101 because the claims are directed to a judicial exception, without
significantly more. Final Act. 2.
ANALYSIS
Rejection of Claims 1, 2, 4-12, and 14-22 under 35 U.S.C. § 101
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
3 The Examiner included canceled claim 10 in the rejection heading. Final
Act. 2. Here, we identify the correct claims for clarity.
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Application 12/252,854
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding ... rubber products" (Diamond v. Diehr, 450 U.S. 175,
193 ( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent protection."
( emphasis omitted)).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
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Application 12/252,854
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal quotation marks
omitted). "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]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Guidance"). Under that guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)) (9th ed.
2018).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are
not "well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Guidance. Patent eligibility under 35 U.S.C. § 101 is a question of
law that is reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333 (Fed. Cir. 2012).
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Application 12/252,854
Here, the Examiner concluded the claims are abstract because the
claims are directed to abstract ideas of ( 1) comparing new and stored
information and uses rules to identify options ( comparing customer data to
rules to determine a message); and (2) mental processes (gathering data,
calculating a statistical model, and composing a report of the results).
Ans. 3, 5, Final Act. 3.
Appellants contend "the claims are not properly characterized as
being directed to the alleged abstract ideas of 'comparing customer data to
rules to determine a message."' App. Br. 18.
Step 2A, Prong One - Recited Judicial Exception
Step 2A of the 2019 Guidance is a two-prong inquiry. In Prong One
we evaluate whether the claim recites a judicial exception. For abstract
ideas, under Prong One, we determine whether the claim recites
mathematical concepts, certain methods of organizing human activity, or
mental processes.
We conclude the following limitations of independent claim 1 recite
mental processes, i.e., an abstract idea:
updating, ... a statistical model for the interaction for the
customer using information gathered from the call detail record
data over a period of time, wherein the statistical model tracks
the interaction of the customer on a per destination basis;
determining, . . . a social health status for the customer
from the statistical model, wherein the customer is notified when
the social health status is below a normal level based on the
customer having less interactions with a destination as compared
to an average level of interactions calculated from historical
records, wherein the destination comprises an internet protocol
address.
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Application 12/252,854
App. Br. 28 (Claim App'x). Independent claims 11 and 20 recite similar
limitations reciting mental processes. Id.
In particular, the claimed concepts of updating a statistical model and
determining from the statistical model a social health status are mental
processes that can be performed by pen and paper by a human, which falls
within the "Mental Processes" grouping in the 2019 Guidance.
Because we conclude the independent claims recite an abstract idea,
we proceed to Prong Two to determine whether the claims are "directed to"
the judicial exception, or whether the judicial exception is integrated into a
practical application.
Step 2A, Prong Two - Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception( s ); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites the additional elements of:
gathering, by a processor of a server deployed within a
core network operated by a service provider, call detail record
data on an interaction for an endpoint device of a customer,
wherein the customer has subscribed to a communication service
having the social health tracking feature, wherein the
communication service is provided by the service provider;
providing, by the processor, the social health status via a
network communication comprising a short message service
message over a wireless communication channel to the endpoint
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Application 12/252,854
device of the customer in accordance with the communication
service, wherein the social health status is provided as a visual
representation on the endpoint device of the customer, wherein
the visual representation is presented as a numerical score.
Independent claims 11 and 20 recite commensurate limitations.
Considering claim 1 as a whole, the additional elements do not apply
or use the abstract idea in a meaningful way such that the claims as a whole
are not more than a drafting effort designed to monopolize the exception.
The Supreme Court guides that the "prohibition against patenting abstract
ideas 'cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment' or [by] adding 'insignificant
postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting Diehr, 450 U.S.
at 191-92).
Here, the recited "processor of a server deployed within a core
network operated by a service provider" merely gathers call detail record
data and provides a social health status via a short message service message
over a wireless communication channel as a visual representation. The
Supreme Court has held "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention."
Alice, 134 S. Ct. at 2358; see also BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract
idea on 'an Internet computer network' or on a generic computer is still an
abstract idea.").
In addition, the "gathering" and "providing" limitations add nothing
more than insignificant extra-solution activity to the abstract idea. See
MPEP § 2016.05(g). Data gathering is a classic example of insignificant
extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir.
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Application 12/252,854
2008) (en bane), affd on other grounds sub nom. Bilski v. Kappas, 561 U.S.
593 (2010). Moreover, the "providing" step recited in claim 1 merely adds a
final step of sending data to the endpoint device of the customer and does
not add a meaningful limitation to the process of updating the statistical
model and determining a social health status.
For these reasons, we determine that, because claim 1 does not
integrate the recited abstract idea into a practical application, claim 1 is
directed to an abstract idea. According to the 2019 Guidance, we next
evaluate the additional elements individually and in combination to
determine whether they provide an inventive concept.
Step 2B: Inventive Concept
In Step 2B, we consider whether an additional element ( or
combination of elements) adds a limitation that is not well-understood,
routine, conventional ("WURC") activity in the field or whether the
additional elements simply append WURC activities previously known to
the industry, specified at a high level of generality, to the judicial exception.
2019 Guidance. The Examiner's finding that an additional element ( or
combination of elements) is WURC activity must be supported with a
factual determination. 2019 Guidance ( citing MPEP 2106.05( d), as
modified by the Berkheimer Memorandum)4.
Appellants contend the Examiner erred because "the present claims do
not recite generic computer components that are performing activities that
4 "Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)," April 19, 2018 (hereinafter "Berkheimer Memorandum").
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Appeal2017-010698
Application 12/252,854
are routine, conventional, or previously known in the pertinent industry."
Ans. 25.
The Examiner determined the claims recite the additional limitations
of a "processor" "server" "computer readable medium" and "network
' ' '
communication," and that the "processor," "computer readable medium,"
and "network communication" are recited at a high level of generality and
recited as performing generic computer functions routinely used in computer
applications. Final Act. 3. The Examiner further explained that "[g]eneric
computer components recited as performing generic computer functions that
are well understood, routine and conventional activities amount to no more
than implementing the abstract idea with a computerized system." Id.
Whether the additional elements identified by the Examiner, as well
as the "gathering" and "providing" steps, are WURC activity is a question of
fact. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018)
("Whether something is well-understood, routine, and conventional to a
skilled artisan ... is a factual determination."). Here, the Examiner has not
provided sufficient evidence to support a finding that the additional elements
were WURC to a skilled artisan in accordance with the procedures set forth
in the Berkheimer Memorandum. 5
Therefore, on the record before us, we reverse the§ 101 rejection of
claim 1. For the same reasons, we also reverse the rejection of independent
claims 11 and 20. Dependent claims 2, 4--9, 12, 14--19, 21, and 22 stand
with the claims from which they depend.
5 We leave it to the Examiner to determine whether paragraphs 45 and 46 of
Appellants' Specification provide evidence of sufficient weight and
character to meet the evidentiary requirements of the Berkheimer
Memorandum with respect to Step 2B.
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Application 12/252,854
DECISION
We reverse the Examiner's decision rejecting claims 1, 2, 4--9, 11, 12,
and 14--22 under 35 U.S.C. § 101.
REVERSED
11