Ex Parte Chakra et al

Patent Trial and Appeal Board

Dec 28, 2018

13169998 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/169,998 06/27/2011 AlChakra
46321 7590 01/02/2019
Shutts & Bowen LLP
STEVEN M. GREENBERG
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
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.
CAM920110021US1 (275) 2920
EXAMINER
WALLACE, JOHN R
ART UNIT PAPER NUMBER
2615
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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@crgolaw.com
sgreenberg@shutts.com
aschneider@shutts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AL CHAKRA, LIAM HARPUR,
MARK KELLY, and JOHN RICE
Appeal2018-003885
Application 13/169,998
Technology Center 2600
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
JASON J. CHUNG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The claimed invention on appeal "relates to workgroup printer
management and more particularly to restricting workgroup printing for
categorized print jobs." (Spec. ,r 2.)
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Representative Claim
1. A method for workgroup management of categorized
print jobs, the method comprising:
receiving from an end user a print job designated for
printing in a workgroup printer;
inspecting the print job to determine a context of the print
job based upon an application source of the print job indicating
either an application associated with a work task so as to
determine the print job to be work related or an application
associated with a non-work task so as to determine the print job
to be non-work related and in response to the inspection, and
categorizing the print job as work related or non-work related
based upon the determined context of the print job;
determining in reference to a centralized data store of
printer resource allocations for all end users of the workgroup
printer, a remaining allocation of printer resources established
for the end user;
determining whether or not printing the print job on behalf
of the end user encroaches within a threshold value of the
remaining allocation of printing resources established for the end
user; and,
restricting further processing of the print job when it is
determined both that the print job is non-work related and also
that the printing of the print job on behalf of the end user
encroaches within the threshold value of the remaining
allocation of printing resources established for the end user.
(Emphasis added regarding the contested limitations).
Rejections
A. Claims 1-18 are rejected under 35 U.S.C. § 101 as being directed to a
judicial exception (i.e., an abstract idea), without significantly more.
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B. Claims 1, 3-7, 9-13, and 15-18 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over the combined teachings and
suggestions of Dance et al. (US 2008/0068641 Al, pub. Mar. 20,
2008) ("Dance"), in view of Bartley et al. (US 2002/0175208 Al, pub.
Nov. 28, 2002) ("Bartley"), in further view of Ruggle et al. (US
2006/0059128 Al, pub. Mar. 16, 2006) ("Ruggle"), and in view of
Yoshida (US 2009/0086264 Al, pub. Apr. 2, 2009).
C. Claims 2, 8, and 14 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over the combined teachings and suggestions of
Dance, Bartley, Ruggle, and Yoshida, and further in view of
Munetomo et al. (US 2010/0014110 Al, pub. Jan. 21, 2010)
("Munetomo").
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of all claims
rejected under § 103 rejection B on the basis of representative claim 1. See
37 C.F.R. § 4I.37(c)(l)(iv). We address rejections A and C separately,
infra.
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented.
Rejection A of Claims l-18under § 101
Mayo/Alice Analysis
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
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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 "acts" of a claimed process manipulate only numbers, abstract
concepts or ideas, or signals representing any of the foregoing, the acts are
not being applied to appropriate subject matter. See Gottschalk v. Benson,
409 U.S. 63, 71-72 (1972). "'Phenomena of nature, thoughjust discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work."' In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk, 409
U.S. at 67). Moreover, if a method can be performed by human thought
alone, or by a human using pen and paper, it is merely an abstract idea and is
not patent eligible under § 101. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
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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
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 Id.
The Examiner's Rejection A under 35 USC§ 101
Regarding the first step of the Alice/ Mayo analysis, the Examiner
concludes that claims 1-18 are directed to a judicial exception, i.e., an
abstract idea of organizing human activity. See Final Act. 5. The Examiner
also concludes the claim language can be performed as a series of mental
steps. Id. The Examiner further explains the basis for the rejection,
concluding that the claim language is:
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sufficiently broad to read on a human manager receiving
a paper copy of a print job from a user, the manager deciding if
a particular item is a work related or non-work related item
through personal judgment, determining if the person
requesting a print has printed more than a certain amount
( encroaches on threshold), and preventing the person from
printing if so by telling them they are not allowed to use the
copier/printer.
The added limitation requiring "inspecting the print job
... " is merely related to particular criteria for deciding if the
print job is work-related or not work related. A human manager
could analogously decide whether or not the print job is work or
nonwork related by observing the particular source application
of the print job. The inclusion of a "centralized data store" with
the "printer resource allocations for all end users" is analogous
to a human manager keeping track of how much all of the users
are allowed to print by pen and paper. Such a method is
analogous to the claims found ineligible by the Federal Circuit
in Planet Bingo involving a mental or pen-and-paper
process for managing a Bingo game (See Planet Bingo, LLC v
VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014)).
Final Act. 5-6.
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims do not include additional elements that amount to
significantly more than the judicial exception, because:
The claim language that is separate from the abstract idea
includes the "workgroup printer". However, the workgroup
printer appears to merely be a related object of the invention and
not an active component in the described method/system; print
jobs are designated for a particular workgroup printer, but the
workgroup printer does not perform any action or process in the
claims. Consequently, the identified additional elements taken
into consideration individually and in combination fail to amount
to significantly more than the abstract idea above.
Final Act. 6 ( emphasis added).
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The Examiner turns to independent system claim 7, and concludes the
claim merely includes a processor and a memory that perform
"conventional, generic communication with a printer and client computers
on a network." Final Act. 8. The Examiner concludes these limitations
appear, in essence, to be adding the words "apply it" to the judicial
exception, which are "mere instructions to implement an abstract idea on a
computer." Id. The Examiner finds this is "simply appending well-
understood, routine and conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception." 1
For the aforementioned reasons, the Examiner concludes that all
claims 1-18 on appeal are not patent eligible under 35 U.S.C. § 101.
Mayo/Alice Analysis - Step 1
Appellants recite the claim limitations (App. Br. 9-10), point to the
support in the Specification (App. Br. 10), and contend, inter alia:
Thus, as can be seen, when considering the specific claim
elements of independent claim I as a whole in light of the
teachings of the specification, and the legal holding of Enfish,
McRO and even Electric Power Group LLC v. Alstom S.A. [(830
F.3d 1350 (Fed Cir. 2016))], it is clear that Appellants' claims are
directed to a process driven improvement to computer-related
technology by allowing computer performance of a junction not
1 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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previously performable by a computer. Therefore, under the legal
holding of Enfish, McRO and Electric Power Group, it is
believed that no further analysis under Mayo part 2 is required
and Appellants' claims are indeed directed to patent eligible
subject matter as dictated by Enfish and the Deputy
Commissioner for Patent Examination Policy of the United
States Patent and Trademark Office.
App. Br. 11.
The Examiner disagrees: 2
the rejection cites Ultramercial for the proposition that a
series of purely mental steps constitutes an abstract concept (i.e.
YES at Step 2A of the two part test). Further, the Examiner notes
that the Decision of the Patent Trial and Appeal Board ( dated 17
March 2016) cites CyberSource Corp v. Retail Decisions, Inc.
(654 F.3d 1366, 1375 (Fed. Cir. 2011)) as further precedent that
a purely mental process such as the one of the instant invention
is unpatentable.
Ans. 17.
The Examiner distinguishes the holdings of McRo and Enfish from
Appellants' claims:
Unlike McRO, in which both the specification and claims
recited a technological improvement as the steps claimed were
uniquely computer specific and enabled a new method of
animation not performable by hand, the instant [claims] do not
recite anything uniquely technological as the steps could be
( and likely frequently are) performed by human managers
regularly. Enfzsh is equally not applicable here as the claims in
Enfzsh improved the efficiency of the memory and processor
inside the computer; nothing in the instant claims could be
construed as improving the efficiency of the computer itself.
Ans. 19.
2 See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
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Abstract ideas have been identified by the courts by way of example,
as including fundamental economic practices, certain methods of organizing
human activities, an idea of itself, and mathematical relationships and/ or
formulas. See Alice, 134 S. Ct. at 2355-56. Under the two-part test
articulated by the Supreme Court in Alice, "[ 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. Secondly, "we must examine
the elements of the claim to determine whether it contains an inventive
concept sufficient to transform the claimed abstract idea into a patent-
eligible application." (Id. at 2357, internal quotations omitted).
Regarding part one of the two-part test, we agree with the Examiner
(Ans. 17-19) that claims 1-18 on appeal broadly encompass abstract
methods of organizing human activities, where information ( e.g., a print job)
can be received, categorized, and conditionally processed as a mental
activity if the recited two predicate conditions are both satisfied. 3 Although
"a workgroup printer" is nominally recited in the claims, we find a person
would be capable of performing the recited steps or acts as mental steps, or
with the aid of pen and paper, particularly since no step of printing is
positively recited. See CyberSource Corp. v. Retail Decisions, Inc., 654
3 See claim 1 (predicate condition): "when it is determined both that the
print job is non-work related and also that the printing of the print job on
behalf of the end user encroaches within the threshold value of the
remaining allocation of printing resources established for the end user."
(Emphasis added). We conclude both prongs of the recited "when"
predicate condition of claim 1 may be performed as purely mental steps,
under a broad but reasonable interpretation. See CyberSource, 654 F .3d at
1373.
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F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
Regarding method claims generally, our reviewing court guides: "a
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101." CyberSource, 654 F.3d at 1373.
See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47
(Fed. Cir. 2016) ("While the Supreme Court has altered the § 101 analysis
since CyberSource in cases like Mayo and Alice, we continue to 'treat[]
analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category."' (brackets in original) ( quoting Elec.
Power Grp., 830 F.3d at 1354)).
Here, we conclude claim 1 is directed to an abstract idea because we
conclude the steps of claim 1 can be performed by human thought alone.
For example, the recited step of "receiving from an end user a print job
designated for printing in a workgroup printer" could be performed by a
person who receives a digital photo provided by an end user, who has
mentally designated the photo for printing (i.e., a "print job" is intended).
We emphasize again that method claim 1 does not recite positively any
requirement to actually print anything.
Regarding Appellants' arguments analogizing the subject claim in
Enfzsh to the claims before us on appeal (App. Br. 11 ), we note the Enfzsh
court concluded "the claims at issue in this appeal are not directed to an
abstract idea within the meaning of Alice. Rather, they are directed to a
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specific improvement to the way computers operate, embodied in the self-
referential table." Enfzsh, 822 F.3d at 1336 ( emphasis added).
Thus, the Enfzsh court concluded the self-referential logical table was
a specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Id. at 1339. Because the analysis stops
if there is no abstract idea under Alice step 1, the Enfzsh court concluded the
subject claims were patent eligible. Id.
Here, Appellants have not shown persuasively that any features of the
claimed invention improve the way the recited generic computer components
store and retrieve data in a manner analogous to that found by the court in
Enfish. Moreover, Appellants' claims 1-18 are silent regarding any mention
of a database, much less a self-referential database table similar to the
specific type of logical table arrangement the Enfzsh court found was
designed to improve the way a computer stores and retrieves data in
memory. See Enfzsh, 822 F.3d at 1336.
Therefore, we are not persuaded that Appellants' claimed invention
improves the functionality or efficiency of the recited generic computer
components, or otherwise changes the way the computer components
function, at least in the sense contemplated by the Federal Circuit in Enfzsh.
Nor do we find persuasive Appellants' attempt to analogize the claims
to the subject claims considered by the court in McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). App. Br. 27.
We note the subject claim considered by the McRO court concerned a
method for automatically animating lip synchronization and facial
expressions. McRO, 837 F.3d at 1303. The McRO court concluded the
subject claims did not recite an abstract idea because the computer animation
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improved the prior art through the use of rules, rather than artists, to set
morph weights and transitions between phonemes. Id. at 1308. Thus, the
claimed invention in McRO allowed for computer performance of animation
steps that previously had to be performed by human animators. Id. at 1309.
The subject claims in McRO used "limited rules in a process specifically
designed to achieve an improved technological result" over "existing,
manual 3-D animation techniques." Id. at 1316 (emphasis added).
Here, Appellants claimed invention does not apply positively recited
rules, per se. The invention under appeal merely adapts to a technological
setting ( e.g., a generic workgroup printer, a plurality of client computers,
and a computer communication network) the broad concept of restricting
further processing of a print job, specifically when both of two recited
conditions occur: (1) the print job is non-work related, and (2) a threshold
value of remaining printing resources is encroached. See independent claims
1, and independent claims 7 and 13, which recite similar language of
commensurate scope.
Thus, it is our view that Appellants' claims merely implement generic
computer components to perform the recited functions. We emphasize that
McRO (837 F.3d at 1312) guides that "[t]he abstract idea exception prevents
patenting a result where 'it matters not by what process or machinery the
result is accomplished."' (Quoting O'Reilly v. Morse, 56 U.S. 62, 113
( 1854 ). Emphasis added.
For at least these reasons, we are not persuaded the Examiner erred in
concluding that each of claims 1-18 on appeal is directed at least to the
abstract idea of a method of organizing human activities, similar to the
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abstract ideas identified by our reviewing courts ( as discussed above) that
could additionally be performed as mental steps. See Final Act. 5.
Appellants provide no further substantive arguments regarding Alice
step 1. Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Therefore, we proceed to Alice step 2.
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. 5; Ans.
18-19), 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 (internal quotations
and citation omitted).
Regarding Alice step 2, Appellants address the purported inventive
concept of the claims. Appellants urge:
under the legal holding of Enfish, McRO and Electric
Power Group, it is believed that no further analysis under Mayo
part 2 is required and Appellants' claims are indeed directed
to patent eligible subject matter as dictated by Enfish and the
Deputy Commissioner for Patent Examination Policy of the
United States Patent and Trademark Office.
App. Br. 11 ( emphasis added in italics, underline in original).
Regarding part two of the Alice test, we find merely appending purely
conventional steps to an abstract idea (such as "categorizing" a print job as
work related or not work related and "determining" whether or not to print
the print job based on a set of specified conditions - claim 1) does not
supply a sufficiently inventive concept. See Alice Corp. 134 S. Ct. at 2357-
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5 8. Regarding Appellants' comment that "no further analysis under Mayo
part 2 is required" (App. Br. 11 ), we note that arguments not made are
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
To the extent Appellants' may rely on BASCOM in the Appeal Brief
(5, 8), as support under Alice step 2, we find Appellants' arguments
unavailing. Id.
In BASCOM, the Federal Circuit concluded that the subject claims (a
method and system for filtering Internet content) were directed to an abstract
idea. However, the BASCOM court found the claimed Internet content
filtering, which featured an implementation "versatile enough that it could
be adapted to many different users' preferences while also installed remotely
in a single location," expressed an inventive concept in "the non-
conventional and non-generic arrangement of known, conventional pieces."
BASCOM, 827 F.3d at 1346, 1350 (emphasis added). 4
Here, Appellants fail to identify the particular non-conventional and
non-generic structural arrangement of conventional elements in the claims
that provides the purported technical improvement. Therefore, we are not
persuaded that Appellants' claims provide a technical improvement over
prior systems or methods that provided conditional restrictions on printing.
4 The BASCOM court also concluded the claims did not preempt the use of
the abstract idea of filtering content on the Internet or on generic computer
components performing conventional activities. The court concluded that
the claims carved out a specific location for the filtering system, namely, on
a remote Internet service provider (ISP) server, and required the filtering
system to give users the ability to customize filtering for their individual
network accounts. BASCOM, 827 F.3d at 1352.
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See BASCOM, 827 F.3d at 1348 ("An abstract idea on 'an Internet computer
network' or on a generic computer is still an abstract idea").
On this record, and in light of the guidance of BASCOM, we are of
the view that Appellants' claims do not arrange or operate the recited
generic computer components in an unconventional manner to achieve an
improvement in computer functionality. Further regarding the use of the
recited generic computer components, 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.
Contrary to Appellants' contentions (App. Br. 6), we find the claims
on appeal are silent regarding specific limitations directed to an improved
computer system, processor, memory, network, database, or Internet.
Therefore, we find Appellants' claimed invention does not provide a
solution "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks," as
considered by the court in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014) (emphasis added).
Our reviewing court provides additional guidance: "[T]he use of
generic computer elements like a microprocessor or user interface do not
alone transform an otherwise abstract idea into patent-eligible subject
matter." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096
(Fed. Cir. 2016; OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) ( claims reciting, inter alia, sending messages over a
network, gathering statistics, using a computerized system to determine
automatically an estimated outcome, and presenting offers to potential
customers found to merely recite "'well-understood, routine conventional
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activities'" by either requiring conventional computer activities or routine
data-gathering steps) (internal citation omitted); see also Elec. Power Grp.,
830 F.3d at 1355 ("We have 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 application' of an
abstract idea" (quoting buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353,
1355 (Fed. Cir. 2014))); Intellectual Ventures I LLC v. Capital One
Financial 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, without particularity. This is simply not enough under step two"). 5
The Supreme Court additionally 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 post[-]solution activity."' Bilski v. Kappas, 561 U.S. 593,
610-11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).
Although the functions recited in Appellants' system claims may be
performed faster or more efficiently with the recited "plurality of client
5 See also Accenture Glob. Servs., 728 F.3d at 1344--45 (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" [is] not
patent eligible); 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)).
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computers over a computer communications network" ( claim 7), we find the
resultant speed increase comes from a "general-purpose computer, rather
than from the patented method itself," and does "not materially alter the
patent eligibility of the claimed [invention]." FairWarning, 839 F.3d at
1095 ( citation omitted).
Further, while Appellants' invention is directed to the result of
conditionally restricting further processing of a print job - e.g., see the last
paragraphs of independent claims 1, 7, and 13, we find no language in the
claims on appeal that focuses on a specific means or method that improves
the recited generic workgroup printer, processor, memory, client computer,
or network that is used to perform selected steps or functions of claims 1-18.
Thus, analogous to the court's finding in TL! Communications (823
F.3d at 612), we find Appellants' claims are "directed to the use of
conventional or generic technology in a nascent but well-known
environment, without any claim that the invention reflects an inventive
solution to any problem presented by combining the two." Id.
Because we find Appellants have not established that claims 1-18 are
directed to an improvement in the recited generic computer components, we
conclude that none of the claim limitations, viewed both individually and as
an ordered combination, amount to significantly more than the judicial
exception in order to sufficiently transform the nature of the claims into
patent-eligible subject matter.
In light of the foregoing, we conclude, under the Mayo/Alice analysis,
that each of Appellants' claims 1-18, considered as a whole, is directed to a
patent-ineligible abstract idea (under step one), and under step two, does not
recite something significantly more to transform the nature of the claim into
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a patent-eligible application.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection A under 35 U.S.C. § 101 of claims 1-18, as being
directed to a judicial exception, without significantly more. 6
Rejection B of Representative Claim 1 under§ 103 (a)
Appellants contest the following conditional limitation of
representative independent claim 1:
restricting further processing of the print job when it is
determined both that the print job is non-work related and also
that the printing of the print job on behalf of the end user
encroaches within the threshold value of the remaining
allocation of printing resources established for the end user.
( emphasis added).
Appellants focus on paragraphs 63 and 64 of Ruggle, and contend:
As can be seen, Examiner asserts with particularity that
"Ruggle discloses, in paragraph [0063]-[0064], that the content
to be printed (i.e. the "print job") may not be covered by the work
license and, as such, the content is blocked from being printed
unless the user individually licenses it. Such a restriction is based
on the content being printed being work-related (i.e. covered by
the work license) or not work related (i.e. instead requiring a
separate personal license)." [The] Examiner's statement, though,
appears to be false. Paragraph [0063] on its face teaches only a
"summary report" that notifies the user that the content being
viewed "is either (1) already covered by the user's license so they
can print, e-mail or display the content on their intranet or (2)
instantly licensable as indicated by either a changing of the color
6 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).
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of the dynamic license icon" or by presenting a message to the
user. There is nothing in paragraph [0063] that suggests or
teaches the blocking of content as asserted by Examiner. Second,
paragraph [0064] only refers to the several "licensing options" of
the user without mention of any content blocking despite
Examiner's statement to the contrary. Thus, while Ruggle
teaches the licensability of content for use by end users when site
licensed by the user's company and only for the needs of the
company, Ruggle does not teach what Examiner claims Ruggle
teaches at page 4 of the final office action:
that the content to be printed (i.e. the "print
job") may not be covered by the work license and,
as such, the content is blocked from being printed
unless the user individually licenses it. Such a
restriction is based on the content being printed
being work-related (i.e. covered by the work
license) or not work related (i.e. instead requiring a
separate personal license).
To be clear, Examiner contends that the foregoing
paragraphs of Ruggle expressly teach the blocking of
printing of content unless the user individually licenses the
content. Clearly, this is an erroneous interpretation of what
actually is present in Ruggle. For this reason, Appellants
seek the reversal of the rejections under 35 U.S.C. §
103(a).
App. Br. 16-17.
In response, the Examiner further explains the basis for the rejection:
Regarding [A]ppellants['] argument about the Ruggle
reference specifically, the teachings of Ruggle are far more
extensive than a mere "summary report" as [ A Jppellants suggest
and, contrary to appellants assertion, include a blocking of
content. Specifically, Ruggle teaches that "the user is restricted
from accessing content" and displays a red license icon to
indicate such (paragraph [0062] of the Ruggle reference).
Additionally, Ruggle's content restriction explicitly relates to an
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internal site license for which a "user can only use content for
internal (company) needs" (paragraph [0064] of the Ruggle
reference). The disclosed licensing for company needs only
constitutes the claimed evaluation of whether or not the content
to be printed is "work related". Lastly, Ruggle contemplates
printing specifically as required by claim 1; if the user is licensed,
they are notified that they can print the content (paragraph [0063]
of the Ruggle reference; see also paragraph [0051] noting that
licenses generally allow printing of content). Consequently,
applicants argument to the contrary are found unpersuasive.
Ans. 20-21.
Appellants respond in the Reply Brief:
Thus, as can be seen, while Examiner only relies upon
Ruggle for the teaching of the blocking of printing of content
unless the user individually licenses the content, Examiner
proceeds to demonstrate only that Ruggle teachings the blocking
of access to content without a license and the permission to print
content if licensed.
Reply Br. 7.
In support, Appellants reproduce paragraph 63 of Ruggle, and urge:
In review of paragraph [0063], it is clear that an "icon" that
is found in a "report" includes as a function of its color, a
notification that the content already being viewed by the end user
is able to be printed. More to the point, paragraph [0063] does
not describe any functionality-only the purpose of an icon.
Certainly, the "icon" of paragraph [0063] does not portend to
"block" anything-it is just an icon with a particular color
interpreted by a user to have a certain meaning of reminding a
user that the content to which the user already has access can be
printed.
Reply Br. 7-8.
We emphasize that the Examiner's ultimate legal conclusion of
obviousness is based upon the combined teachings and suggestions of the
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cited references. Particularly with respect to the multiple paragraphs cited
by the Examiner in Ruggle, our reviewing court guides: "[ c ]ombining two
embodiments disclosed adjacent to each other in a prior art patent does not
require a leap of inventiveness." Boston Scientific Scimed, Inc. v. Cordis
Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). An obviousness inquiry is not
limited to the prior art's preferred embodiment. See, e.g., Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1370 (Fed. Cir. 2007).
Here, in response to Appellants' contentions in the Appeal Brief
regarding the contested "restricting further processing" limitation of claim 1,
the Examiner specifically finds and explains: "Ruggle teaches that 'the user
is restricted from accessing content' and displays a red license icon to
indicate such (paragraph [0062] of the Ruggle reference)." Ans. 20-21.
In the Reply Brief, we find Appellants fail to substantively and
persuasively address the Examiner's specific finding (Ans. 20-21) regarding
Ruggle' s paragraph 64 that expressly discloses a "red license icon indicates
that the user is restricted from accessing content," which we find, in
combination with the cited teachings and suggestions of Dance and Bartley,
and Yoshida, teaches or suggests the contested "restricting further
processing" limitation of representative independent claim 1. 7
In the event our reviewing court may disagree, we further emphasize
the conditional language employed in the contested "restricting further
7
"' [T]he question under 3 5 USC 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made."' Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545
F.2d 747, 750 (CCPA 1976)). (Emphasis added); see also MPEP § 2123.
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processing" limitation recited in claim 1. See Ex parte Schulhauser, Appeal
No. 2013-007847, at *9 (PTAB, April 28, 2016) (precedential) (holding
"The Examiner did not need to present evidence of the obviousness of the
remaining method steps of claim 1 that are not required to be performed
under a broadest reasonable interpretation of the claim ( e.g., instances in
which the electrocardiac signal data is not within the threshold
electrocardiac criteria such that the condition precedent for the determining
step and the remaining steps of claim 1 has not been met."); see also Ex
parte Katz, Appeal No. 2010-006083, 2011 WL 514314, at *4--5 (BPAI Jan.
27, 2011).
Applying the controlling guidance of Schulhauser here, we
additionally find the Examiner need not present evidence of the obviousness
of the conditional method step "restricting further processing" of claim 1
that is not required to be performed under a broadest reasonable
interpretation of the claim. 8
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner's underlying
factual findings and ultimate legal conclusion of obviousness for
representative independent claim 1.
8 See, also e.g., Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed.
Cir. 2010) (unpublished) (affirming a district court's interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cybersettle, Inc. v. Nat 'l Arbitration
Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is
of course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.").
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Accordingly, we sustain the Examiner's§ 103 rejection B of
representative independent claim 1. The remaining claims rejected under
rejection B (not argued separately) fall with claim 1. See "Grouping of
Claims" supra.
Rejection C of Claims 2, 8, and 14 rejected under§ 103
Claims 2, 8, and 14 depend from independent claims 1, 7, and 13,
respectively. Appellants advance no further substantive arguments
regarding these claims. Arguments not made are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv). Accordingly, we sustain the Examiner's§ 103 rejection
C of dependent claims 2, 8, and 14, for the reasons discussed above
regarding claim 1.
DECISION
We affirm the Examiner's rejection of claims 1-18 under 35 U.S.C.
§ 101 as being directed to a judicial exception, without significantly more.
We affirm the Examiner's rejections of claims 1-18 under 35 U.S.C.
§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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