Ex Parte Eisenberger et al

Patent Trial and Appeal Board

Jun 8, 2018

12147119 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/147,119 06/26/2008
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
06/12/2018
FIRST NAMED INVENTOR
George Eisenberger
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.
RSW920040 l 96US2 6371
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE EISENBERGER, EDGAR H. MCCULLOCH, III, and
THOMAS L. RICHARDS, II
Appeal2016-003450 1
Application 12/147,1192
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY,
and KEVIN W. CHERRY, Administrative Patent Judges.
CHERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
George Eisenberger et al. (Appellants) seek review under
35 U.S.C. § 134(a) of the Final Rejection of claims 3-12, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b ).
1 Our decision references the Appellants' Appeal Brief ("Appeal Br."), filed
July 20, 2015, Appellants' Reply Brief ("Reply Br."), filed February 15,
2016, the Final Action ("Final Act."), mailed February 26, 2015, and the
Examiner's Answer ("Ans."), mailed December 23, 2015.
2 Appellants identify International Business Machines Corporation, as the
real party in interest for this appeal (Appeal Br. 2).
Appeal 2016-003450
Application 12/ 147,119
We AFFIRM.
Appellants' claimed invention relates to data sharing using a computer
network (Spec. i-f 4).
Claim 4 is the sole independent claim. Claim 4 is illustrative of the
subject matter on appeal and are reproduced below.
4. A system for allowing a Subscriber to electronically
obtain data of interest from participating Publishers, comprising:
an Administrative Server, implemented by at least one
processor, configured to allow the Subscriber to electronically
provide an electronic topic data request to the Administrative
Server using a web portal and a computer network,
wherein the Administrative Server is further configured to
periodically electronically search a plurality of non-public
repositories in a respective plurality of Publishers to identify data
records relevant to the electronic topic data request and publish
the relevant data records to the Subscriber on an ongoing basis
as the relevant data records become available from the non-
public repositories of said Publishers;
wherein the web portal comprises a user input screen that
displays user entry fields for generating electronic topic requests,
the user entry fields configured to allow the Subscriber to define
a new and/ or select an existing at least one electronic topic
request with at least one associated data element of interest that
is electronically forwarded to Publishers using the computer
network;
wherein the Administrative Server is in communication
with an electronic topics catalog comprising different data
elements and different topic titles associated with electronic topic
data requests, wherein topics in the electronic topics catalog are
electronically selectable by authorized participating Subscribers
using the web portal.
(Appeal Br. 15-16, Claims App.)
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Rejection
Claims 3-12 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
ANALYSIS
The Appellants argue these claims as a group. See Reply Br. 4--11.
We select claim 4 as the representative claim for this group, and the
remaining claims 3 and 5-12 stand or fall with claim 4. 37 C.F.R.
§ 41.37(c)(l)(iv).
Under 35 U.S.C. §101, an invention is patent-eligible ifit claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
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." Id. If the
claims are not directed to a patent-ineligible concept, e.g., 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
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"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
Applying the framework in Alice, and as the first step of that analysis,
the Examiner determined that the claims are "directed to the abstract idea of
using categories to organize, store, and transmit information" (Ans. 3; see
also Final Act. 3). The Examiner argues that "[ w ]hile the claims may not
explicitly recite 'using categories to organize, store, and transmit
information', the abstract idea of 'using categories to organize, store, and
transmit information' is described, for example, by the configuration of the
Administrative Server, which allows it to provide an electronic data request,
periodically electronically search repositories, and publish relevant data
records as described in the components of the system recited in independent
Claim 4" (Ans. 3; see also Final Act. 3). Thus, the Examiner determined
that the Appellants' claims are in fact directed to an abstract idea (id.).
Proceeding to the second step of Alice, after noting the disclosure in the
Specification that the data processing system was "conventional," the
Examiner determined that "the computer(s), as recited, is a generic computer
component that performs functions (i.e., electronically provide an electronic
topic data request ... , electronically search a plurality of repositories ... ,
publish relevant data records ... )" (Ans. 4). The Examiner further
determined that "[t]hese are all generic computer functions (i.e., requesting
data, searching data, and publishing data) that are well-understood, routine,
and conventional activities previously known to the industry" (id.). The
Examiner noted that the claim also recites at least one processor, a web
portal, a computer network, non-public repositories, a Subscriber,
Publishers, and an electronic topics catalog, "which do NOT add meaningful
limitations to the idea of using categories to organize, store, and transmit
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information beyond generally linking the system to a particular
technological environment, that is, implementation via computers" (id.).
The Appellants contend that the Examiner erred and that claim 4 is
not directed to an abstract idea. (Appeal Br. 10-12; Reply Br. 7-10).
According to the Appellants, just as in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014), the subject matter of claim 4 is also
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks" (Appeal Br. 11;
Reply Br. 7-9). Thus, the Appellants argue that "the subject matter of claim
4 should not be considered a non-patent eligible abstract idea" (Appeal Br.
11 ). The Appellants also argue that claim 4 is directed to "an Administrative
Server," which is a machine, and therefore, eligible subject matter (Appeal
Br. 11; Reply Br. 9). Finally, the Appellants contend that the claims do not
recite the abstract idea, so they should not be considered to be directed to an
exception from patent-eligible subject matter (Appeal Br. 12; Reply Br. 9-
10).
The Appellants also argue that claim 4 recites "significantly more than
the articulated abstract idea" (Appeal Br. 12-14; Reply Br. 10-11). The
Appellants assert that the claims do not recite generic computer components,
as evidenced by the failure of the Examiner to cite any prior art against the
claims (Appeal Br. 13). The Appellants contend that claim 4 has more than
"a mere instruction to apply the idea of 'using categories to organize, store,
and transmit information" (Appeal Br. 13-14; Reply Br. 10-11).
We are not persuaded of error in the Examiner's rejection.
Beginning with Step 1 of the Alice framework, the "directed to"
inquiry in the claims applies a stage-one filter to the claims, considered in
light of the Specification, based on whether "their character as a whole is
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directed to excluded subject matter." Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see also Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); Enfzsh, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (Inquiring into "'the
focus of the claimed advance over the prior art."').
Here, claim 4 calls for gathering and storing information, and using
search criteria, including pre-defined categories, and delivering relevant
content based on the search criteria. Claim 4 recites a system with "an
Administrative Server" configured to perform various functions including
allowing a search request using a web portal, searching for relevant data
records, publishing the data records to the user, where the web portal
displays data entry fields on the web portal and the "Administrative Server"
is in communication with an "electronic topics catalog" that includes data
elements and topic titles associated with the data requests that can be
selected by the user on the web portal.
The court in Enfzsh put the question as being "whether the focus of the
claims is on [a] specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, 822 F.3d at 1335-36. 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. "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, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
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The claims in this case fall into a familiar class of claims "directed to"
a patent-ineligible concept. The focus of the asserted claims, as illustrated
by claim 4 quoted above, is on using categories to collect information,
analyze it, and display certain results of the collection and analysis. See
Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1328
(Fed. Cir. 2017) ("the heart of the claimed invention lies in creating and
using an index to search for and retrieve data ... an abstract concept");
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016)
(finding rules for categorizing transaction data as fraudulent or not, as
abstract); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1314 (Fed. Cir. 2016) (characterizing materials "based on a known list of
identifies" is an abstract idea); Elec. Power Grp., 830 F.3d at 1353-54
(explaining that "realm of abstract ideas" includes "collecting information,
including when limited to particular content" and "treat[ing] 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" and "merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis").
In that regard, the Background section of the Specification discusses
the problem, which is that "[h ]ealthcare communication systems are
typically limited and generally non-standard between institutions and it is
difficult to access, track, monitor and/or alert healthcare data across multiple
healthcare providers" (Spec. i-f 5). According to the Specification, the
inventors solved the problem by providing an Administrative Server that can
be configured to "allow Subscribers to electronically define, select and/or
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request an electronic topic data request with data elements of interest from a
plurality of Publishers having non-public respective electronic repositories
of source data using a web portal and a computer network" (id. i-f 7). The
Specification explains that "exemplary data processing systems or database
environment that may be included in devices operating in accordance with
some embodiments of the present invention .... [A] data processing system,
which can be used to carry out or direct operations of the hub and/ or web
application (Administrative Server) and/or Message Flow Server, includes a
processor, a memory and input/output circuits. The data processing system
may be incorporated in ... one or more of a personal computer, server,
router or the like. These components may be conventional components such
as those used in many conventional data processing systems, which may be
configured to operate as described herein" (id. i-f 72). The Appellants'
specification further explains that "the processor can be commercially
available or custom microprocessor, microcontroller, digital signal processor
or the like. The memory may include any memory devices and/or storage
media containing the software and data used to implement the functionality
circuits or modules used in accordance with embodiments of the present
invention (id. i-f 74). The Appellants' Specification also states "the operating
system may be any operating system suitable for use with a data processing
system (id. i-f 75). Thus, the Specification represents that the solution relies
on existing technology. In light of the Specification's description of the
problem and solution, the advance over the prior art by the claimed
invention is retrieving information from a variety of sources based on pre-
defined categories and collecting, analyzing, and displaying that
information.
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We also cannot agree with the Appellants' contention that the claims
before us are similar to the claims held eligible in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (Appeal Br. 10-11; Reply
Br. 7-8). According to the Appellants, the claims are similar because the
claimed system is "necessarily rooted in a computer network to
'electronically' provide data of interest to Subscribers from participating
Publishers" (Reply Br. 8). In particular, the Appellants point to the
"Administrative Server," "web portal," and "computer network," recited in
claim 4 as support for the proposition that the claims are necessarily rooted
in computer technology (id.).
In DDR Holdings, the Federal Circuit determined that although the
patent claims at issue involved conventional computers and the Internet, the
claims nevertheless addressed the problem of retaining website visitors who,
if adhering to the routine, conventional functioning of the Internet hyperlink
protocol, would be transported instantly away from a host's website after
"clicking" on an advertisement and activating a hyperlink. DDR Holdings,
7 7 3 F. 3 d at 12 5 7. The court determined that those claims were directed to
statutory subject matter because they claim a solution "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." Id.
No such technological advance is evident in the claimed invention.
Unlike the situation in DDR Holdings, the Appellants do not identify any
problem particular to computer networks and/or the Internet that claim 4
allegedly overcomes. Here, the claimed computer components operate
precisely in the expected manner of storing data in association with other
data, and selecting and sending content via a conventional network (see
Spec. i-f 42 (defining "computer network" as including "local area networks
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(LAN), wide area networks (WAN) and may, in certain embodiments,
include a private intranet and/or the public Internet (also known as the
World Wide Web or 'the web'))." See buySAFE, Inc. v. Google, Inc., 7 65
F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer receives and sends the
information over a network-with no further specification-is not even
arguably inventive"). Nothing in the claim, understood in light of the
Specification, requires anything more than conventional computer
implementation and user interface. See FairWarning IP, 839 F.3d at 1096
(holding "the use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter"). Nor does the fact that claim 4 is a system claim
alone transform it into patent-eligible subject matter. Id. (noting the mere
fact that a claim is a system claim is insufficient).
In view of the above, we see no error in the Examiner's determination
that claim 4 is directed to an abstract idea.
We now tum to the second step of the Alice framework: "a search for
an 'inventive concept'-i.e., 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, 134 S. Ct. at 2355
(citing Mayo, 566 U.S. at 72-73). Neither of the arguments the Appellants
raise regarding the second step of the Alice analysis are persuasive. First,
there is no need for the Examiner necessarily to cite art against the claims
because a finding of novelty or nonobviousness does not necessarily lead to
the conclusion that subject matter is patent-eligible. See Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016)
(noting "[t]he '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
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of a claim falls within the § 101 categories of possibly patentable subject
matter"). Indeed, as the Supreme Court explained, "[g]roundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct.
2107, 2117 (2013 ). Second, we disagree with the Appellants' contention
that the claims are more than an instruction to apply the abstract idea
(Appeal Br. 13-14; Reply Br. 10-11). We agree with the Examiner that,
with respect to the claims at issue, there is nothing that transforms the
abstract idea of "using categories to organize, store, and transmit
information." Rather, the claims recite the generic computer elements-a
server, a processor, a web portal, and a computer network---configured to
perform generic computer functions of allowing data entry, searching,
identifying, retrieving, and displaying data. As the Examiner found, and we
agree, the Specification identifies these elements as "conventional
components" and "commercially available" (Ans. 4 (citing Spec. i-fi-172, 74,
75)); see also Intellectual Ventures I, 850 F.3d at 1342--43 (noting "the
recited dynamic document provides little more than an unspecified set of
rules for displaying and organizing MR Ts in a user interface akin to the
generic interfaces we have elsewhere explained impart no inventive
concept"); FairWarning IP, 839 F.3d at 1096-97 (finding system claim with
"user interface" and "microprocessor" to contain no inventive concept). The
Appellants identify no error in the Examiner's findings. Thus, we agree
with the Examiner that claim 4 fails to recite inventive concept.
The remaining arguments are unpersuasive as to error in the rejection.
We have fully considered the Appellants' arguments. For the foregoing
reasons, they are unpersuasive as to error in the rejection of claim 4, and
claims 3 and 5-12, which fall with claim 4.
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The rejection is sustained.
DECISION
The Examiner's decision to reject claims 3-12 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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