Ex Parte de Vries et al

Patent Trials and Appeals Board

Jul 8, 2019

14492597 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/492,597 09/22/2014
127350 7590 07/10/2019
Steptoe & Johnson LLP
1330 Connecticut Avenue NW
Washington, DC 20036
FIRST NAMED INVENTOR
Glen de Vries
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.
20622.0050 (IDF-50) 3537
EXAMINER
PAULSON, SHEETAL R.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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):
hfox@steptoe.com
rgreenfeld@steptoe.com
ipdocketing@steptoe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLEN DE VRIES,
MLADEN LAUDANOVIC, and ANGEL JANEVSKI
Appeal2017-003229
Application 14/492,597 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing ("Request" or "Req.") under
37 C.F.R. § 41.52 for reconsideration of our Decision ("Decision" or
"Dec.") on Appeal mailed March 6, 2019. The Decision affirmed the
Examiner's rejection of claims 6 and 8-14 under 35 U.S.C. § 101 as directed
to non-statutory subject matter. An oral hearing was held on February 14,
2019.
We have jurisdiction over the Request under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Medidata Solutions,
Inc. Appeal Br. 3.
Appeal2017-003229
Application 14/492,597
ANALYSIS
A Request for Rehearing "must state with particularity the points
believed to have been misapprehended or overlooked by the Board."
37 C.F.R. § 4I.52(a)(l). A Request for Rehearing is not an opportunity to
rehash arguments raised in the Briefs. Neither is it an opportunity to merely
express disagreement with a decision without setting forth points believed to
have been misapprehended or overlooked. Arguments not raised in the
briefs before the Board and evidence not previously relied on in the briefs
also are not permitted except in the limited circumstances set forth in
§ 4I.52(a)(2) though (a)(4). Id.
Appellants assert that the Board overlooked Appellants' argument
regarding whether the present invention includes limitations which are not
well-understood, routine, and conventional given that "the Examiner had
deemed the claims 'allowable subject matter' over the prior art" (see Req. 2
(citing Final Act. 2-3)). More particularly, Appellants argue that
the Board made a general reference to the "well-understood,
routine, and conventional" test and its relation to Berkheimer v.
HP, Inc., 890 F.3d 1369 (Fed. Cir. 2018), Decision at 17-18,
without addressing this issue - whether an invention that is novel
and non-obvious can be found to be "well-understood, routine,
and conventional."
Req. 2-3. We are not persuaded by Appellants' argument that the Board
overlooked Appellants' argument regarding whether the invention includes
limitations which are not well-understood, routine, and conventional.
Initially, we note that the question in step two of the Alice framework
is not whether an additional feature is novel, but whether the implementation
of the abstract idea involves "more than performance of 'well-understood,
routine, [and] conventional activities previously known to the industry."'
2
Appeal2017-003229
Application 14/492,597
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n,
776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (quoting Alice Corp. v. CLS Bank
Int'!, 573 U.S. 208,225 (2014)). In this regard, we note that the Decision
stated that "independent claim 6 recites a generic processor that performs the
functions of the abstract idea, i.e., collecting, converting, calculating, and
transmitting data, without particularity" (Dec. 14). 2 More particularly, the
Decision determined that
there is no indication here that the operations, recited in
independent claim 6, require any specialized computer or
inventive computer components - the Specification indicates just
the opposite (see, e.g., Spec. ,r,r 14, 26-34). Here, the only claim
element in independent claim 6 beyond the abstract idea is the
claimed "processor," i.e., a generic component, operating in its
routine and ordinary capacity to collect, convert, calculate, and
transmit data.
(Dec. 18). The Decision further articulated
data can be collected manually (see Spec. ,r,r 27, 56), the
collected data can be converted into aggregated data and
subsequently converted into a first and second progress curves,
either mentally or manually (see Spec ,r,r 26, 28, 51-52), and then
the first and second progress curves can be transmitted to a user
orally or through a written communication (see Spec. ,r,r 29-30).
(Dec. 9). The Decision further stated:
the Specification discloses that "[ t ]here are several ways to
calculate the progress curves," e.g., "calculate and store in real-
time all datapage status rollups and changes at any datapoint state
change," "compute datapage states periodically at regular time
intervals (e.g.[,] daily) and then calculate and store the resulting
progress curves," and by "reconstructing datapage statistics
2 The Decision further noted that "independent claim 11 does not even
recite that the method steps are performed by a processor or a computer"
(Dec. 9, fn. 3).
3
Appeal2017-003229
Application 14/492,597
historically from a historical trail of datapoint state changes (e.g.,
audit trails)" (Spec. ,r 25).
(Dec. 12). Appellants' Request fails to address any of these portions of the
Decision or provide evidence of what particular limitation are meaningful
beyond the face of the claim. In light of the above, we are not persuaded by
Appellants' assertion that the Decision overlooked Appellants' argument
regarding whether the present invention includes limitations which are not
well-understood, routine, and conventional evidenced only by the
Examiner's lack of any prior art rejection.
And, to the extent Appellants maintain that the claimed invention is
patent-eligible, i.e., that the present claims amount to "significantly more"
than an abstract idea, simply because "the Examiner had determined that
Appellants' claimed invention is novel and non-obvious" (Req. 3),
Appellants misapprehend the controlling precedent.
Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent-eligible. Although the second step in the Mayo/Alice framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for "an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 573 U.S. at217-18 (citation omitted).
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188-89
4
Appeal2017-003229
Application 14/492,597
( 1981) ("The '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."). Thus, Appellants have not persuasively established that the claims
are directed to something significantly more than the abstract idea.
For the forgoing reasons, we conclude that Appellants have failed to
show that the Board misapprehended or overlooked points raised in the
appeal or that the Decision to affirm the Examiner was erroneous.
DECISION
We deny the request to reverse the Examiner's rejection under
35 U.S.C. § 101 as to claims 6 and 8-14.
DENIED
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