Ex Parte Courson et al

Patent Trial and Appeal Board

Sep 24, 2018

13014001 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/014,001 01/26/2011
29855 7590 09/26/2018
Blank Rome LLP - Houston General
717 Texas Avenue, Suite 1400
Houston, TX 77002
FIRST NAMED INVENTOR
Gardner G. Courson
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.
1576-0002USC 9784
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
houstonpatents@blankrome.com
mbrininger@blankrome.com
smcdermott@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARDNER G. COURSON,
VINCENT J. MIRAGLIA, BLANE A. ERWIN, and
PATRICK T. O'DONNELL
Appeal2017-005910
Application 13/014,001 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN,
and JOSEPH A. FISCHETTI, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gardner G. Courson, et al. (Appellants) seek our review under
35 U.S.C. § 134(a) of the Final Rejection of claims 1--4. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 The Appellant identifies Mitratech Holdings Inc. and Gardner G. Courson
as the real party in interest. App. Br. 3.
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Application 13/014,001
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A tool for developing litigation discovery materials, the tool
compnsmg:
an entry field to request collection of discovery requests,
the entry field available on a plurality of screens of a graphical
user interface of a computer, the plurality of screens being not
directly related to discovery;
a menu available on a graphical user interface of a
computer for gathering discovery related information, said
menu provided in response to a request using said entry field;
storage of discovery related information gathered from
said menu;
form discovery materials; and
a computer implementing a discovery production
mechanism to combine stored discovery related information
and form discovery materials to produce discovery items for
use in the litigation.
THE REJECTION
The following rejection is before us for review:
1. Claims 1--4 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
ISSUE
Did the Examiner err in rejecting claims 1--4 under 35 U.S.C. §101 as
being directed to judicially-excepted subject matter?
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ANALYSIS
The rejection of claims 1-4 under 35 US.C. §101 as being directed to
judiciallyl-excepted subject matter.
Alice Corp. Proprietary 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
35 U.S.C. § 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 that regard, the Examiner determined that
Claims 1-4 are directed to an abstract idea of litigation case
assessment, specifically, directed towards creating a task for
inclusion in an existing process, accessing the process, and
adding the task to the existing process.
Non-final Rej. 4. See also Ans. 2 ("Appellant ... argues that the claims are
not directed to or related to "litigation case assessment." Examiner
respectfully disagrees.")
The Examiner's articulation of the abstract idea does not square with
what is claimed as a whole.
"The § 101 inquiry must focus on the language of the Asserted Claims
themselves." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149
(Fed. Cir. 2016). See Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (admonishing that "the
important inquiry for a § 101 analysis is to look to the claim"); see also
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n,
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Application 13/014,001
776 F.3d 1343, 1346 (Fed. Cir. 2014) ("We focus here on whether the claims
of the asserted patents fall within the excluded category of abstract ideas.").
Before determining whether the concept to which the claims at issue
are directed to is an abstract idea, one must first determine what that concept
is, if it is a concept.
The "directed to" inquiry [ ] cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon-after all, they take place in the physical world.
See Mayo, 132 S. Ct. at 1293 ("For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.") Rather, the "directed to"
inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether "their character as a
whole is directed to excluded subject matter." Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015); see Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1375, 2016 WL 1393573, at *5 (Fed. Cir. 2016) (inquiring into
"the focus of the claimed advance over the prior art").
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
With respect to computer-enabled claimed subject matter, it can be
helpful to determine whether "the claims at issue in [ ] can readily be
understood as simply adding conventional computer components to well-
known business practices" or not. Id. at 1338. See also Affinity Labs of
Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). In
Enfish, the court found that the "plain focus of the claims" there was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id at 1336.
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"In determining the eligibility of respondents' claimed process for
patent protection under § 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether the
claims as a whole "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
In this case, the claims as a whole are focused on a particular "tool"
for producing a certain type of information ("discovery items for use in the
litigation" ( claim 1)).
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter."' Affinity Labs
of Texas v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016), quoted in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241
(Fed. Cir. 2016).
In that regard, the Background section of the Specification discusses
the problem, which is "it is desirable to reduce the costs of gathering the
information and assessing a case but at the same time not lose any of the
knowledge provided by the skilled lawyers." Para. 7. According to the
Specification, the inventors solved the problem via "an early case
assessment tool." Para. 8 (emphasis added). "This tool is designed to
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achieve the following goals: cost savings, better results, increased client
satisfaction, better litigation management, and more efficient lawyering."
Para. 8. "The tool provides counsel with a data collection mechanism."
Para. 10.
In light of the Specification's description of the problem and solution,
the advance over the prior art by the claimed invention is in employing a
particular data-collection tool. This is the heart of the invention.
Given the focus of the claims as a whole is on producing a certain
type of information via a "tool" and, in light of the Specification, the heart of
the invention is in employing a particular data-collection tool, the claims are
reasonably characterized as being "directed to" a data-collection tool for
producing a certain type of information, i.e., "discovery items for use in the
litigation" ( claim 1 ).
"Litigation case assessment" is not what the claims are reasonably
characterized as being "directed to." Nor is the difference between that
characterization and what the claims are reasonably characterized as being
directed to a matter of the degree of abstraction to which the characterization
is described.
For the foregoing reasons, the Examiner's determination under Alice
step one is not sustainable. Consequently, we do not reach the merits of
Examiner's determination under Alice step two.
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DECISION
The decision of the Examiner to reject claims 1--4 under 35 U.S.C. §
101 as being directed to judicially-excepted subject matter is reversed.
REVERSED
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