Ex Parte DARRAGH et al

Patent Trial and Appeal Board

Dec 17, 2018

13724297 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/724,297 12/21/2012
149379 7590 12/19/2018
Clarivate Analytics, Legal Department
(C/0 Janice Read)
1500 Spring Garden Street
4th Floor
Philadelphia, PA 19130
FIRST NAMED INVENTOR
RENEE M DARRAGH
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.
501235US 9970
EXAMINER
YOUNG, MICHAEL C
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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):
clarivate.docketing@clari vate. com
oblonpat@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RENEE M. DARRAGH, ADAME. KENNEY, JOHNS. RYAN,
JOSEPH W. KA YE JR., JEFFREY A. KESEK, SHILP A KOMMIDI, and
BRANDON E. V ARILONE
Appeal2017-06252
Application 13/724,297 1
Technology Center 3600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The Applicant is Camelot UK Bidco Limited and Appellants identify
Thomson Reuters Global Resources as the real party in interest. App. Br. 2.
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Application 13/724,297
BACKGROUND
THE INVENTION
According to Appellants, the invention relates to "an automated
computer implemented system and method that eliminates or at least reduces
the possibility that rights associated with a piece of IP, such as a patent,
trademark, patent application, and/or trademark application will be forfeited
due to failure to pay a maintenance fee or annuity." Abstr.
Exemplary independent claim 1 is reproduced below.
1. An automated computer implemented method comprising:
identifying a time period;
generating a set of payment questions for which at least
some of a set of payment answers are due and are associated with
the time period, the set of payment questions being associated
with a set of intellectual property;
identifying a subset of payment questions of the set of
payment questions, the subset of payment questions being
associated with a subset of intellectual property of the set of
intellectual property and a subset of payment answers
affirmatively indicating a desire to prevent the subset of
intellectual property from lapsing;
generating an electronic non-transitory signal indicative of
the set of payment questions, the electronic non-transitory signal
being characterized in that the electronic non-transitory signal
prohibits entry of an instruction permitting the lapsing of a piece
of intellectual property from the subset of intellectual property
and the electronic non-transitory signal requests a second subset
of payment answers associated with a second subset of payment
questions, the second subset of payment questions being
associated with a second subset of intellectual property, the
subset of intellectual property being mutually exclusive from the
second set of intellectual property; and
transmitting the electronic non-transitory signal.
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REFERENCES AND REJECTIONS
1. Claims 1-26 stand rejected under 35 U.S.C. § 101. Final Act.
7-12.
2. Claims 1-10 and 14--23 stand rejected under 35 U.S.C. § I02(b)
as anticipated by Grainger (WO 02/43306 A2, May 30, 2002). Final Act.
12-18.
3. Claims 11-13 and 24--26 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Grainger, Gunning (US 2009/0133027 Al,
May 21, 2009) and Zee (US 2002/0178015 Al, Nov. 28, 2002). Final Act.
19-24.
4. Claims 1-26 stand rejected under 35 U.S.C. § 112, first
paragraph (pre-AIA) for failing the written description requirement. Ans. 2-
3.
5. Claims 1-26 stand rejected under 35 U.S.C. § 112, second
paragraph (pre-AIA) as being indefinite. Ans. 3.
DISCUSSION
REJECTIONUNDER35 U.S.C. § 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
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set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (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. The Court
acknowledged in Mayo that "all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas." Mayo, 5 66 U.S. at 71. We, therefore, look to whether the claims
focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). If the claims are
not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry
proceeds to the second step where 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 78-79).
Step One of Alice/Mayo Framework
Under the first step of the Alice/Mayo framework, the Examiner finds
the claims are directed to a "method for scheduling and making annuity and
maintenance payments on intellectual property portfolios," which the
Examiner finds is an abstract idea falling in the categories of a fundamental
economic practice, a method of organizing human activities, and a method
that can be performed by mental processes. Final Act. 8. The Examiner
additionally finds the claims abstract because they are directed to
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"generating tasks based on rules to be completed upon the occurrence of an
event" or to "comparing and stored [sic] information and using rules to
identify options." Final Act. 9 ( citing Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013); Smartgene, Inc. v.
Advances Biological Labs., SA, 555 Fed. Appx. 950 (Fed. Cir. 2014)).
Appellants argue that by characterizing the claims as "scheduling and
making payment of annuity an[d] maintenance fees" (App. Br. 8 (quoting
Final Act. 10)) the "Examiner has oversimplified the claim and its
limitations" (App. Br. 8). Instead, Appellants describe their invention as
"focus[ing] on an automated computer implemented method and an annuity
management system for ensuring pieces of IP does not mistakenly become
abandoned." App. Br. 8. Appellants also argue the claims are directed to an
improvement of existing technology that addresses technical problems and
prevents IP lapsing due to a mistake. App. Br. 8.
We are unpersuaded by Appellants' arguments and instead agree with
the Examiner's finding that the claims are directed to the abstract idea of
"scheduling and making annuity and maintenance payments on intellectual
property portfolios." Final Act. 8. Appellants' own characterization of the
claimed invention, as "an automated computer implemented method and an
annuity management system for ensuring pieces of IP does not mistakenly
become abandoned" supports the Examiner's finding that the claims are
directed to an abstract idea. For example, "ensuring pieces of IP does not
mistakenly become abandoned," as Appellants characterize their invention,
is consistent with the Examiner's finding that the claims are directed to
"scheduling and making annuity and maintenance payments on intellectual
property portfolios." Further the fact that the method is "automated" or
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"computer implemented" is not, on its own, sufficient to indicate the claims
are patent eligible. See Alice, 134 S. Ct. at 2358 ("[I]f a patent's recitation
of a computer amounts to a mere instruction to 'implemen[t]' an abstract
idea 'on ... a computer,' ... that addition cannot impart patent eligibility");
see also OIP Techs. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015) ("relying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible").
Although Appellants contend the claims are directed to improvements
in existing technology or that they address technical problems, Appellants
description of the problem addressed by their invention, that of managing
large IP portfolios so as to prevent the lapse of IP due to a mistake (see App.
Br. 9), is not technical in nature. And the claimed solution of an automated
computer implement method for "prohibit[ing] entry of an instruction
permitting the lapsing of a piece of intellectual property" is, as the Examiner
finds, directed to a method of organizing human activity rather than a
technical improvement.
Step Two of Alice/Mayo Framework
Under step two the Examiner finds claims 1-13 "do not include any
additional elements to add structure to the claimed invention." Final Act.
10. As for claims 14--26, the Examiner finds these claims "include the
additional elements of a processor and a memory" but that these "elements
serve to perform generic computer functions such as data gathering and
storing, display, and transmission .... " Final Act. 10-11. Thus, the
Examiner finds the claims do not offer "significantly more" than the abstract
idea. Final Act. 11.
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Appellants analogize the claims to those in Diamond v. Diehr, 450
U.S. 175 (1981) and argue the claims are directed to significantly more
because they involve the "input of data and performance of a calculation of
that data by a computer to transform a patent ineligible abstract idea into a
patent eligible application of that idea." App. Br. 11.
We disagree. The fact that the claims require inputting of data and
performance of calculations on that data is not sufficient to transform the
claim to something significantly more than an abstract idea. Indeed claims
that involve the collection of data and subsequent analysis of that data,
similar to Appellants' characterization here about their own claims, have
been found by the Federal Circuit to be patent ineligible. See Electric Power
Group, LLC, v. Alstom, 830 F.3d 1350, 1353 (Fed. Cir. 2016) ("The focus of
the asserted claims ... is on collecting information, analyzing it, and
displaying certain results of the collection and analysis.")
Accordingly, we sustain the Examiner's rejection of claimsl-26 under
35 U.S.C. § 101.
REJECTIONUNDER35 U.S.C. §§ 102 AND 103
The Examiner finds Grainger teaches or suggests an "electronic non-
transitory signal prohibits entry of an instruction permitting the lapsing of a
piece of intellectual property." Final Act. 14 (emphasis omitted).
Specifically, the Examiner finds Grainger discloses an annuity management
system that allows the user to select via certain user interface fields, options
to instruct the system to pay the annuity or maintenance fee for intellectual
property. Final Act. 12-15. By allowing the user to "pay the fee," the
Examiner finds Grainger teaches prohibiting the entry of an instruction
permitting the lapsing of a piece of IP. Final Act. 15.
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Appellants argue that "the ability to pay an annuity fee is [not]
analogous to a prohibited instruction that is intended to prevent the lapsing
of a set of intellectual property." App. Br. 13. Appellants indicate that
Grainger gives the user options to either "pay the fee, not pay the fee or put
the decision on hold until a later date." App. Br. 13 (quoting Grainger
,r 153). According to Appellants, the ability of the system to not pay the fee
demonstrates that Grainger' s system allows the IP to lapse by not paying the
fee. App. Br. 13.
We are persuaded by Appellants' arguments. The Examiner relies on
paragraph 153 of Grainger as teaching that Grainger "prohibits entry of an
instruction permitting the lapsing of a piece of intellectual property." Final
Act. 14--15. Paragraph 15 3 of Grainger states that "the client system can
select via fields 183 8 to pay the fee, not pay the fee or put the decision on
hold until a later date." We agree with the Appellants that the ability to pay
a fee is not analogous to prohibiting entry of an instruction permitting the
lapsing of a piece of intellectual property. Although selecting the "pay the
fee" option will lead to the payment of maintenance fees and thus prevent IP
from lapsing, there is no evidence that it will prevent the entry of an
instruction to not pay the maintenance fee. In other words, the user appears
to still be able to select the do not pay option even after selecting the pay
option, thus allowing for inadvertently missing payment.
Accordingly, we do not sustain the Examiner's rejection of claims 1-
10 and 14--23 under 35 U.S.C. § 102. For the same reasons, we also do not
sustain the Examiner's rejection of dependent claims 11-13 and 24--26
under 35 U.S.C. § 103, which were made on the same basis. See Final Act.
19.
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REJECTION UNDER 35 U.S.C. § 112
The Examiner finds "there is no support in the original disclosure" for
the recitation of "non-transitory signals." Ans. 3--4. Therefore, the
Examiner finds, the Appellants did not have possession of the invention as
claimed and have not satisfied the written description requirement of 35
U.S.C. § 112. Further the Examiner finds that the term "non-transitory
signal" is contradictory because "non-transitory" refers to tangible media
and not propagating signals. Ans. 4--5. The Examiner, therefore, finds the
term "non-transitory signal" would not be readily understood by the ordinary
artisan and is thus indefinite under 35 U.S.C. § 112.
Appellants point to the Specification's disclosure of the Annuity
Management System being comprised of a processor, memory, as well as a
communication bus and database, as providing "a written description of how
to generate, store and transmit an 'electronic non-transitory signal' .... "
Reply Br. 3--4. Based on this description, Appellants also argue that one of
ordinary skill in the art would have understood the term "non-transitory
signal."
We are unpersuaded by Appellants' arguments. Claim 1, for example,
recites "generating an electronic non-transitory signal" and "transmitting the
electronic non-transitory signal." Thus, as claimed, the electronic signal
appears to be a propagating electronic signal capable of transmission. This
is supported by Appellants' citations to the Specification summarizing the
claimed subject matter, describing the transmission of the electronic signal
as sending an extraction file via email or other technique. See App. Br. 4
( citing Spec. 10: 19-25; 11: 19-23). One of ordinary skill in the art would
understand such a signal to be transitory. Thus, we agree that one of
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ordinary skill in the art would not be able to discern from the claimed
language the meaning and bounds of the term "non-transitory signal."
Similarly, we agree with the Examiner that the Specification does not
support the recitation of non-transitory signals. The disclosure of a
processor, memory, communication bus, and database would not be
understood by one of ordinary skill in the art as describing non-transitory
signals. Memory itself is non-transitory, but it is not understood to be a
signal. Similarly, signals transmitted over the communication bus would be
considered transitory rather than non-transitory.
Accordingly, we sustain the Examiner's rejection of claims 1-26
under 35 U.S.C. § 112, first and second paragraphs.
DECISION
The Examiner's rejection of claims 1-26 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1-10 and 14--23 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner's rejection of claims 11-13 and 24--26 under 35 U.S.C.
§ 103(a) is reversed.
The Examiner's rejection of claim 1-26 under 35 U.S.C. § 112, first
paragraph is affirmed.
The Examiner's rejection of claim 1-26 under 35 U.S.C. § 112,
second paragraph is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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