Ex Parte Falodiya et al

Patent Trial and Appeal Board

Dec 10, 2018

13847828 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/847,828 03/20/2013 Aditya Falodiya
119741 7590 12/12/2018
Keller Jolley Preece / Adobe
1010 North 500 East, Suite 210
North Salt Lake, UT 84054
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.
20030.587 9336
EXAMINER
GRIFFIN, TAMARA JEAN
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
docketing@kjpip.com
gjolley@kjpip.com
tmeid@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ADITYA FALODIYA and SARANSH KATARIYA
Appeal2017-009134
Application 13/847,828
Technology Center 3600
Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
BETH Z. SHAW, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1-20, which constitute all the claims pending
in this application. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Embodiments of Appellants' invention generally relate to "rating
techniques and, more particularly, to a method and apparatus for a rating a
1 According to Appellants, the real party in interest is Adobe Systems, Inc.
of San Jose, California. App. Br. 4.
Appeal2017-009134
Application 13/847,828
nmlti-version product." Spec. 1, 11. 4--5.
Exemplary Claim
1. A computer-implemented method comprising:
receiving a request initiated by a user to provide a rating
for a product;
[L 1] accessing, based on the request to provide a rating
for the product, product version information that defines a
plurality of versions of the product, wherein the plurality of
versions of the product comprise an initial version of the product
and one or more modified or updated versions of the product;
[L2] providing, for display to the user on a graphical user
interface, a timeline comprising a plurality of indicators,
wherein a given indicator of the plurality of indicators
corresponds to a given version of the plurality of versions of the
product;
receiving, based on input received in response to the user
interacting with the graphical user interface, an indication of a
selection of an indictor from among the plurality of indicators on
the timeline, wherein the indicator corresponds to an indicated
version of the product;
providing within the graphical user interface, and in
response to the selection of the indicator, a rating element
corresponding to the indicated version of the product;
[L3] receiving, based on the user interacting with the
rating element corresponding to the indicated version of the
product, a rating for the indicated version of the product; and
[L4] updating, by at least one processor, ratings data for
the indicated version of the product.
App. Br. 38 (Claims Appendix) (Contested limitations emphasized).
2
Appeal2017-009134
Application 13/847,828
Rejections
A. Claims 1-20 are rejected under 35 U.S.C. § 101, as being directed
to a judicial exception, without significantly more. Non-Final Act.
3.
B. Claims 1, 2, 4, 8, 9, 11, and 14--17 are rejected under 35 U.S.C.
§ 103 as being obvious over the combined teachings and
suggestions ofBurckart et al. (US 2013/0212039), hereinafter
referred to as Burckart, in view of Smith (US 2011/0087737),
hereinafter referred to as Smith. Non-Final Act. 8.
C. Claim 3, 7, 10, 13, and 18 are rejected under 35 U.S.C. § 103 as
being obvious over the combined teachings and suggestions of
Burckart in view of Smith, and further in view of Benzado (iTunes
App Store now identifies reviews by app version,
http://www.benzado.com/blog/posU215/itunes-reviews, (last
visited June 4, 2015)), hereinafter referred to as Benzado. Non-
Final Act. 27.
D. Claims 5 and 12 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Burckart
in view of Smith, and further in view of Maciocci et al. (US
2012/0078684), hereinafter referred to as Maciocci. Non-Final
Act. 31.
E. Claim 6 is rejected under 35 U.S.C. § 103 as being obvious over
the combined teachings and suggestions of Burckart in view of
Smith, and Maciocci, and further in view of cs.mcgill.ca (Mean),
hereinafter referred to as cs.mcgill.ca. Non-Final Act. 33.
F. Claim 19 is rejected under 35 U.S.C. § 103 as being obvious over
3
Appeal2017-009134
Application 13/847,828
the combined teachings and suggestions of Burckart, Smith, and
Benzado, and in further view ofMaciocci. Non-Final Act. 34.
G. Claim 20 is rejected under 35 U.S.C. § 103 as being obvious over
the combined teachings and suggestions of Burckart, Smith,
Benzado, and Maciocci, and further in view of
cs.mcgill.ca. Non-Final Act. 36.
Issues on Appeal
Did the Examiner err in rejecting claims 1-20 under 35 U.S.C. § 101,
as being directed to a judicial exception, without significantly more?
Did the Examiner err in rejecting claims 1-20 under
35 U.S.C. § 103, as being obvious over the cited combinations of
references?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection A under 35 U.S. C. § 1 OJ
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
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 Banklnt'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
4
Appeal2017-009134
Application 13/847,828
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, though just 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).
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).
5
Appeal2017-009134
Application 13/847,828
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." Enfish, 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 U.S.C. § 101
Regarding the first step of the Alice/ Mayo analysis, the Examiner
concludes that claims 1-20 are directed to a judicial exception, i.e., an
abstract idea ( citing legal authorities in support):
The abstract idea is deemed to be an idea of itself such as an
uninstantiated concept, plan or scheme, as well as a mental
process (thinking) that can be performed in the human mind, or
by a human using pen and paper as product version data may be
collected, calculated and displayed using a pen and paper. This
concept is similar to other concepts that have been identified as
abstract by the courts, such as using categories to organize, store,
and transmit information [ storing ratings based on product
version] (Cyberfone Sys. v. CNN Interactive Grp., 558 Fed.
Appx. 988 (Fed. Cir. 2014)), comparing new and stored
information and using rules to identify options [ calculating
ratings based on an indicated product version] (SmartGene, Inc.
6
Appeal2017-009134
Application 13/847,828
v. Advanced Biological Labs., SA, 555 Fed. Appx. 950 (Fed. Cir.
2014)), orgamzmg information through mathematical
correlations [presenting calculated product ratings via a timeline
of product release date] (Digitech Image Tech., LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)),
and collecting data, recognizing certain data within the collected
data set, and storing that recognized data in a memory [ storing
product ratings based on version] ( Content Extraction &
Transmission v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed.
Cir. 2014)). Furthermore, claims 6 & 20 are directed to the
abstract idea of calculating a consolidated rating using an
equation. The abstract idea is deemed to be a mathematical
relationship/formula such as mathematical algorithms,
relationships,formulas, and calculations. This concept is similar
to other concepts that have been identified as abstract by the
courts, such as a formula for updating alarm limits (Parker v.
Flook, 437 U.S. 584 (1978)) and a mathematical procedure for
converting one form of numerical representation to another
(Benson, 409 U.S. at 63). Therefore, the claims are directed to
multiple abstract ideas.
Non-Final Act. 3--4 (emphasis added). 2
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:
Generic computers (i.e. processor, computer readable storage
medium, database etc.) performing generic computer functions,
alone, do not amount to significantly more than the abstract idea.
Applicants' specification supports the use of mere general
purpose computing equipment for performing the steps of the
claims (see, e.g., [0020] discussing "the server 104 is a type of
computing device, e.g., a desktop computer, laptop, tablet
2 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340--41 (Fed.
Cir. 2013).
7
Appeal2017-009134
Application 13/847,828
computer, smart phone, personal digital assistant, cellular phone,
and the like") that are well understood, routine and conventional
structures known to the industry and which provides evidence
that the claimed computing components are functioning and
processing instructions in a conventional manner known in the
art. The processor, computer readable storage medium, and
database limitations are merely attempting to limit the product
version rating system to a computerized environment rather than
reciting a specific component used in product version rating that
improves the functioning of a computer itself. Therefore, the
limitations are simply a field of use that is an attempt to limit the
abstract idea to a particular technological environment and, so do
not add significantly more.
Non-Final Act. 5---6 (emphasis added). 3
The Examiner cites a number of case authorities in support (Non-Final
Act. 6), and concludes "the claimed invention does not demonstrate a
technologically rooted solution to a computer-centric problem or recite an
improvement to another technology or technical field, an improvement to the
function of any computer itself, applying the exception with, or by use of, a
particular machine, or provide meaningful limitations beyond generally
linking an abstract idea to a particular technological environment such as
computing." Id. at 6-7.
For the aforementioned reasons, the Examiner concludes that all
claims 1-20 on appeal are not patent eligible under 35 U.S.C. § 101.
3 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).
8
Appeal2017-009134
Application 13/847,828
Mayol Alice Analysis - Step 1
Regarding Alice Step 1, Appellant contends:
the pending claims are patent eligible under Alice step one
because: 1) the Office Action fails to identify an abstract idea
that applies to the claims as a whole; 2) the Office Action
erroneously relies on non-precedential decisions; 3) the Office
Action improperly compares past court decisions to the claims;
and 4) the claims recite an invention that improves the
functioning of a computer.
App. Br. 27-28.
In response, the Examiner further explains the basis for the rejection:
The Non-Final Rejection dated 12 July 2016 (hereinafter NFR)
clearly states that the claims are directed to the abstract idea of
"receiving, calculating and presenting ratings for different
product versions such as a series of software application
updates" See NFR p.3. Each of the claim elements
identified under the Step 2A analysis are identified as part of
this single abstract idea. The NFR then goes on to state that the
abstract idea falls under the category of an idea of itself as
product version data may be collected, calculated and displayed
by a human being using a pen and paper. Several court
decisions were then cited in order to support this assertion,
each with a brief explanation of how the identified abstract idea
is similar to the abstract idea identified in the relevant court
decision. These explanations were not meant to be newly
identified abstract ideas, but rather clarifications as to how
the previously identified abstract idea related to the court
decision. For example, the abstract idea of "receiving,
calculating and presenting ratings for different product
versions such as a series of software application updates"
which includes the mathematical calculation of product ratings
which are then organized and presented on a product version
timeline is similar to the abstract idea of organizing information
through mathematical correlations identified in Digitech.
Ans. 3--4 ( emphasis added).
9
Appeal2017-009134
Application 13/847,828
In response to Appellants' objection (App. Br. 27-28), the Examiner
expressly withdraws her reliance on all previously cited non-precedential
Federal Circuit decisions, but continues to "rely on the remaining cited court
decisions (Digitech, Content Extraction, Flook, & Benson) to support her
position." Ans. 4.
In determining whether claims are patent-eligible under Section 101,
our reviewing court guides: "the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were decided."
Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir.
2016). The Federal Circuit also guides that "[E]xaminers are to continue to
determine if the claim recites (i.e., sets forth or describes) a concept that is
similar to concepts previously found abstract by the courts." Id. at 1294 n.2.
Here, we emphasize that under Alice, step one, the Examiner cites to
the following precedential decisions to support the legal conclusion that
Appellants' claims are directed to an abstract idea:
A. Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014).
B. Content Extraction & Transmission v. Wells Fargo Bank, N.A.,
776 F.3d 1343 (Fed. Cir. 2014).
C. Parker v. Flook, 437 U.S. 584 (1978).
D. Gottschalkv. Benson, 409 U.S. 63 (1972).
Non-Final Act. 4.
Appellants urge: "Although the Office Action does cite to two
precedential decisions, Digitech Image Tech., v. Electronics for Imaging,
Inc., 758 F.3d 1344 (Fed. Cir. 2014) and Content Extraction & Transmission
10
Appeal2017-009134
Application 13/847,828
v. Wells Fargo Bank, NA., 776 F.3d 1343 (Fed. Cir. 2014), neither of these
two cases identifies any abstract idea related to the above abstract ideas."
App. Br. 31-32.
On this record, we find Appellants fail to persuasively traverse the
Examiner's legal conclusion (Non-Final Act. 3--4) that the claims on appeal
are directed to multiple patent-ineligible abstract ideas, 4 without more, by
substantively distinguishing the claims on appeal from the subject claims
and the courts' analyses in the four aforementioned cases cited by the
Examiner (Digitech, Content Extraction, Flook (Respondent), and Benson
(Respondent)).
Instead, Appellants cite to Enfzsh in support (App. Br. 28, 29, and
urge, under Alice step 1, that the claims on appeal are directed to a specific
4 For example, the Examiner concludes:
The abstract idea is deemed to be an idea of itself such as an
uninstantiated concept, plan or scheme, as well as a mental
process ( thinking) that can be performed in the human mind, or
by a human using pen and paper as product version data may be
collected, calculated and displayed using a pen and paper. This
concept is similar to other concepts that have been identified as
abstract by the courts, such as using categories to organize,
store, and transmit information [ storing ratings based on
product version] ... The abstract idea is deemed to be a
mathematical relationship/formula such as mathematical
algorithms, relationships, formulas, and calculations. This
concept is similar to other concepts that have been identified as
abstract by the courts, such as a formula for updating alarm
limits (Parker v. Flook, 437 U.S. 584 (1978)) and a
mathematical procedure for converting one form of numerical
representation to another (Benson, 409 U.S. at 63). Therefore,
the claims are directed to multiple abstract ideas.
Non-Final Act. 3--4 (emphasis added).
11
Appeal2017-009134
Application 13/847,828
improvement in computer technology:
by intelligently collecting and displaying information compactly
and comprehensively within a single dynamic graphical user
interface for multiple-version products. For example, a company
wanting to collect and provide product ratings on a per-product-
version basis would have to set up each individual version as its
own stand-alone product in prior rating systems. Thus, a user
would have to access a separate user interface for each individual
version, a technical problem that the current claims overcome.
Accordingly, the claimed invention, like the claims in Enfzsh, are
directed to a specific improvement in computer technology.
App. Br. 33.
Regarding Appellants' arguments analogizing Enfzsh to the claims
before us on appeal (App. Br. 26-27), we note the Enfzsh court (822 F .3d at
1336) concluded that there was no abstract idea under Alice step 1 because
the claims at issue were directed to "a specific improvement to the way
computers operate, embodied in the self-referential table."
Thus, the Enfish court found the claimed self-referential logical table
was a specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Enfzsh, 822 F.3d 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.
Here, Appellants have not persuasively shown that any features of the
claimed invention improve the way the recited generic computer and/or
processor(s) store and retrieve data in a manner analogous to that found by
the court in Enfzsh. Nor have Appellants analogized the "rating database"
recited in independent claim 8 to the self-referential logical table the Enfzsh
court concluded was a specific type of data structure designed to improve the
12
Appeal2017-009134
Application 13/847,828
way a computer stores and retrieves data in memory. Enfzsh, 822 F.3d at
1339.
Therefore, on this record, we are not persuaded that Appellants'
claimed invention improves the functionality or efficiency of the recited
computer, processors, or database, or otherwise changes the way the claimed
generic computer components function, at least in the sense contemplated by
the Federal Circuit in Enfzsh.
Accordingly, we are not persuaded the Examiner erred in concluding
that claims 1-20 are directed to an abstract idea.
Mayol Alice Analysis - Step 2
Because we conclude the claims are directed to an abstract idea for
essentially the same reasons articulated by the Examiner (Non-Final Act. 3-
4), 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: "Even if the pending independent
claims were directed to an abstract idea, which they are not, the claim
limitations set forth an 'ordered combination' that amount to significantly
more than the concept articulated by the Office Action." App. Br. 33.
In support, Appellants cite to BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). App. Br. 34--35.
Appellants urge:
13
Appeal2017-009134
Application 13/847,828
As in BASCOM, the pending claims provide a "specific
technical solution" to a technical problem. Indeed, it is the
"ordered combination" of all elements that comprise a unique
way of collecting and displaying information within a graphical
user interface that transform any of the alleged abstract ideas in
the Office Action into "a particular, practical application" of
intelligently displaying information compactly and
comprehensively within a graphical user interface. See
BASCOM, 827 F.3d at 1352. Indeed, the specific "ordered
combination" of the claim elements in independent claims 1, 8,
and 14 that provides a "technology based solution" (as opposed
to an abstract-idea-based solution) that overcomes existing
problems in the art.
App. Br. 34--35.
The Federal Circuit held in BASCOM that the claimed Internet content
filtering, featuring 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.
Here, however, we are not persuaded that Appellants' purportedly
"unique way of collecting and displaying information within a graphical user
interface" transforms the claimed invention into a particular, practical
application by intelligently displaying "information compactly and
comprehensively within a graphical user interface," as urged by Appellants.
App. Br. 34. In particular, Appellants have not shown any "non-
conventional and non-generic arrangement of known, conventional pieces"
as was found by the BASCOM court. BASCOM, 827 F.3d at 1346, 1350.
We emphasize that BASCOM additionally guides that "[a]n abstract idea on
14
Appeal2017-009134
Application 13/847,828
'an Internet computer network' or on a generic computer is still an abstract
idea." Id. at 1348.
Moreover, we conclude the display of Appellants' claimed updated
"ratings data for the indicated version of the product" ( claim 1) is non-
functional descriptive material (NFDM) merely intended for human viewing.
( emphasis added). Similar language of commensurate scope is recited in
independent claims 8 and 14. 5
In reviewing the record, 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," such as considered by the court
in DDR Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014) (emphasis added).
5 The Manual of Patent Examining Procedure (MPEP) provides applicable
guidance: "where the claim as a whole is directed to conveying a message or
meaning to a human reader independent of the intended computer system,
and/or the computer-readable medium merely serves as a support for
information or data, no functional relationship exists." MPEP § 2111.05
(III.) (9th Ed., Rev. 08.2017, Last Revised Jan. 2018). See also Ex parte
Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) ("[T]he nature of
the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process.").
Therefore, in applying the procedural guidance of the MPEP, and the
controlling guidance of Nehls, we broadly but reasonably construe the
recited "updated "ratings data for the indicated version of the product"
(claim 1) as non-functional descriptive material merely intended for human
perception.
15
Appeal2017-009134
Application 13/847,828
Further regarding the use of the recited generic computer, processor(s)
and database, 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. Our reviewing court provides
additional guidance: See Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016) ("[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."); 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 automatically determine an estimated outcome, and
presenting offers to potential customers found to merely recite "'well-
understood, routine conventional 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 Fin. 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.").
16
Appeal2017-009134
Application 13/847,828
On this record, we are of the view that Appellants' claims do not
operate the recited generic computer components in an unconventional
manner to achieve an improvement in computer functionality. 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
postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting Diehr, 450 U.S.
at 191-92).
Therefore, 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 1-20, 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
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 1-20, as being
directed to a judicial exception, without significantly more. 6
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).
17
Appeal2017-009134
Application 13/847,828
Rejections B-G under 35 U.S.C. § 103
GROUPING OF CLAIMS
Based upon Appellants' arguments (App. Br. 9-23) and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of obviousness
Rejection B of claims 1, 8, and 14--16 on the basis of representative claim 1;
we decide the appeal of obviousness Rejection B of dependent claims 2 and
9 on the basis of representative claim 9; and, we decide the appeal of
obviousness Rejection B of dependent claims 4 and 11 on the basis of
representative claim 4. We address infra obviousness Rejection B of
separately argued dependent claim 17.
Appellants advance no separate, substantive arguments regarding the
remaining claims, which are rejected under§ 103 Rejections C---G.
Therefore, remaining claims 3, 5-7, 10-13, and 18-20, not argued separately
or with specificity, fall with the respective independent claim from which
they depend. 7
7 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
18
Appeal2017-009134
Application 13/847,828
Rejection B of Independent Claim 1 under 35 U.S.C. § 103
Issues: Under 35 U.S.C. § 103, did the Examiner err by finding the
cited combination of Burckart and Smith would have taught or suggested
contested limitations LI, L2, L3, and L4:
[L 1] accessing, based on the request to provide a rating
for the product, product version information that defines a
plurality of versions of the product, wherein the plurality of
versions of the product comprise an initial version of the product
and one or more modified or updated versions of the product;
[L2] providing, for display to the user on a graphical user
interface, a timeline comprising a plurality of indicators,
wherein a given indicator of the plurality of indicators
corresponds to a given version of the plurality of versions of the
product;
[L3] recezvzng, based on the user interacting with the
rating element corresponding to the indicated version of the
product, a rating for the indicated version of the product; and
[L4] updating, by at least one processor, ratings data for
the indicated version of the product[,]
within the meaning of representative claim 1 ?8 ( emphasis added).
We have reviewed Appellants' arguments in the Briefs, the
Examiner's obviousness rejections, and the Examiner's response to
Appellants' arguments. Appellants do not proffer sufficient argument or
evidence for us to find error in the Examiner's findings. See Ex parte Frye,
8 We give the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); see, e.g., Spec.~ 11 ("It should be
understood, that the drawings and detailed description thereto are not
intended to limit embodiments to the particular form disclosed.").
19
Appeal2017-009134
Application 13/847,828
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). For at least the reasons
discussed below, we agree with and adopt the Examiner's underlying factual
findings and legal conclusions of obviousness, as set forth in the Non-Final
Action and Answer.
The Examiner finds Burckart, as modified by the cited features of
Smith, teaches or suggests contested limitations Ll-L4 at paragraphs 40-52,
80, 81, 93, 95-96, and Figure 6B. See Non-Final Act. 8-9.
Appellants disagree, and contend:
First, the combination of Burckart in view of Smith fail to teach
claim elements within the independent claims directed to
accessing and providing product version information that allow
the multi-version product rating system to capture ratings on a
per-product-version basis. Second, neither Burckart or Smith,
whether considered alone or in combination, teach claim
elements directed to receiving ratings on a per-product-version
basis, and updating ratings for a product on a per-product-
version basis. Third, the Office Action errs in alleging that
Burckart teaches "product state information," and in addition, the
Office Action further errs in arguing that "product state
information" is analogous to different versions of a product.
App. Br. 10-1 l(emphasis added).
In response, the Examiner further explains the basis for the rejection:
The Examiner agrees that Burckart does not teach rating different
versions of a product such as various generations of a Honda
Civic. However, Burckart does teach rating products at various
stages of a product's lifecycle. Burckart teaches that any product
or service can be used in the rating system.
Ans. 11.
Turning to the evidence, the Examiner cites to Burckart (i1i123, 25,
and 40) in support. However, we emphasize the Examiner relies on Smith
(i1i1 14, 16, 42), and particularly paragraph 45, for teaching or suggesting
20
Appeal2017-009134
Application 13/847,828
product versions (e.g., updated i-phone app versions). Ans. 12-14. The
Examiner notes:
The category in Burckart is the age of the product. The category
in the instant application is a version of the product ( such as a
generation). While it is true that Burckart does not explicitly
teach rating product versions, the Examiner maintains that the
timeline interface of Burckart is capable of receiving and
displaying ratings corresponding to product versions rather than
product ages when modified by the teachings of Smith. Smith,
which also teaches placing reviews on an opinion timeline,
clearly discusses generating an opinion timeline for an asset
based on an initial review of an asset and a second review of the
same asset which may be provided in response to an update to
the asset (See Smith: [0014] & [0016]).
Ans. 12-13.
Burckart ,r 23 describes, in pertinent part: "In one embodiment, the
user reviews 116 are displayed in a longitudinal fashion based on a customer
ownership lifecycle experience (COLE) model for users of a product or
service so that other consumers may be better informed about how the
customer experience may change or be affected over time." Burckart ,r 32
describes: "In one embodiment, the consumer review system 100 includes a
timeline 114 that includes the user reviews 116 for a particular product or
service. The timeline 114 may display the user reviews 116 in an organized
manner that allows consumers to see the lifecycle 118 for one or more
users." Burckart ,r 40 further describes that the user can add new ratings or
review information to review system 100: "When a user is adding
ratings/review information to the consumer review system 100, the timeline
114 may be re-displayed to present real dates and times for ease of data
entry." Burckart ,r 44 also describes: "The review interface 110 may be
21
Appeal2017-009134
Application 13/847,828
configured to display a ratings diagram 600 with averaged ratings values for
multiple users over a lifecycle 118 for each user."
As for a teaching or suggestion of product versions, the Examiner
relies principally of Smith (i1 45), which describes Apple i-phone software
updates (i.e., suggesting updated, new versions of apps or other software):
For example, a user may purchase an Apple !PHONE TM 3G
immediately after [it] is released, experiencing problems with
dropped calls and accessing the Internet. After
much frustration, the user may submit a poor review of the
product on CNET Reviews. A few weeks later a software
update may be released for the Apple !PHONE TM 3G, which
may resolve those problems. The user may receive a
notification from CNET about the software update, along with a
request to update their review, which the user does. As
additional updates are released, the user may continue to add
information to the review, creating a feedback loop that can be
used for a variety of content and product recommendations.
In addition, the individual product review influences the overall
user rating for the product manufacturer (e.g., Apple).
Smith ,r 45.
We emphasize the Supreme Court guides: "[A] combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 401 (2007).
Here, we find the Examiner combined familiar elements which would
have realized a predictable result at the time of Appellants' invention. See
Non-Final Act. 8-16; Ans. 10-20. After reviewing Appellants' rebuttals in
the Reply Brief (4), we find Appellants' contention unavailing that "[t]he
Examiner's Answer erroneously mischaracterizes the iPhone 3G example of
Smith by alleging that when the software of the iPhone 3G is modified, the
result is another version of the iPhone 3G."
22
Appeal2017-009134
Application 13/847,828
Appellants urge that "Smith's specification . . . describes the iPhone
3G example as reviewing an 'individual product,"' citing Smith at [0045]."
Id. We disagree with Appellants, because we find an iPhone with a new
version of software (such as a new version of an iPhone app or new OS
firmware) teaches, or at least suggests, a new, updated version of the product
(i.e., the iPhone, including its newly updated software). In the alternative,
we find a new, updated version of an iPhone app is a new version of the
software ( e.g., app ), which could be considered as a separate, stand-alone
product.
We also emphasize that the Examiner's ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
Further, "'the question under 35 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.
Given that there is evidence of record (see Benzado, as relied on by
the Examiner for Rejection C; Non-Final Act. 27), that the "iTunes App
Store now identifies reviews by app version" (Title, ( emphasis added)), we
find Appellants' arguments unavailing regarding contested limitations L 1-
L4 of claim 1, especially because Appellants had constructive notice of the
Benzado non-patent document. See PT0-892 "Notice of References Cited,"
mailed June 26, 2015.
Therefore, we disagree with Appellants' additional contention that
"when viewed in light of Smith's specification ... one of ordinary skill in
the art would not consider installing software on the iPhone 3G as
23
Appeal2017-009134
Application 13/847,828
transforming the iPhone 3G to another 'version' of the iPhone." Reply
Br. 5. Although a software update would not physically transform the
structure of an iPhone 3G into an iPhone 4, we find an app or OS update
would transform the iPhone 3G into an improved version of the 3G.
For at least the aforementioned reasons, we find a preponderance of
the evidence supports the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness regarding the contested accessing,
providing, receiving, and updating steps of the method of representative
claim 1, as rejected under rejection B. See Non-Final Act. 8-16; Ans. 10-
20. Therefore, we sustain the Examiner's Rejection B of claim 1, and
Rejection B of grouped claims 8 and 14--16, not argued separately. See
supra, "GROUPING OF CLAIMS."
Rejection B of Dependent Claims 2 and 9 under 35 U.S. C. § 103
Although claims 2 and 9 recite similar limitations having
commensurate scope, Appellants advance arguments regarding claim 9 as
being representative of the group consisting of dependent claims 2 and 9.
See App. Br. 23-24.
Appellants contend the cited combination of Burckart and Smith does
not teach or suggest "updat[ing] the graphical ratings display to be reflective
of the updated ratings data for the indicated version of the product, as recited
in dependent claim 9, and as similarly recited in dependent claim 2.
( emphasis added).
We note Appellants' argument is focused on the Examiner's findings
regarding Burckart. (App. Br. 23-24). As discussed above regarding
24
Appeal2017-009134
Application 13/847,828
Rejection B of claim 1, Appellants fail to consider the Examiner's reliance
on Smith (i1 45) for teaching or suggesting version information.
Because Appellants have failed to address the Examiner's specific
findings (relying upon the combined teachings and suggestions of Burckart
and Smith, and particularly Smith ,r 45 for teaching or suggesting product
versions), we find a preponderance of the evidence supports the Examiner's
underlying factual findings and ultimate legal conclusion of obviousness for
representative claim 9 under§ 103 rejection B. Grouped claim 2 (also
rejected under Rejection B) falls with claim 9. See supra, "GROUPING OF
CLAIMS."
Rejection B of Dependent Claims 4 and 11 under 35 U.S. C. § 103
Although claims 4 and 11 recite similar limitations having
commensurate scope, Appellants advance arguments regarding claim 4 as
being representative of the group consisting of dependent claims 4 and 11.
Appellants contend:
Claim 4 depends from independent claim 1 and recites
"receiving an indication of the selection of the indicator from
among the plurality of indicators on the timeline comprises
detecting that a pointer on the timeline is relocated on the
timeline to refer to the indicator." Claim 11 recites similar
limitations.
App. Br. 24.
Appellants note that the Examiner relies on paragraph 3 6 of Burckart
to teach the contested subject matter:
For example, Burckart states that a "user review 116 may
expand in response to a mouse click on the point or snapshot
300 representing the user review 116." Id. With respect to
paragraph [0036] of Burckart, the Examiner notes that mouse
25
Appeal2017-009134
Application 13/847,828
click equates to the claimed selection, and snapshot equates to
the claimed indicator. See Office Action, p. 17.
App. Br. 24.
Appellants further contend:
The Examiner is incorrect with respect to these interpretations.
To illustrate, Burckart teaches that a snapshot is a truncated
user review. See e.g., id, [0024], [0033], and [0036]. For
example, Burckart states, "snapshots 300 may include the
review title, the rating, a portion of the review text, or any of
the information corresponding to the user review 116 that may
be useful to consumers viewing the timeline 114." Id at [0033].
In contrast, the claimed indicator corresponds to an indicated
product version, not a review. Accordingly, the Examiner errs
in equating Burckart's snapshot with the claimed indicator.
App. Br. 24--25 (emphasis added).
Again, we find the dispositive issue turns upon the product version.
Because Appellants have failed to address the Examiner's specific findings
(relying upon the combined teachings and suggestions of Burckart and
Smith, and particularly Smith ,r 45 for teaching or suggesting product
versions), we find a preponderance of the evidence supports the Examiner's
underlying factual findings and ultimate legal conclusion of obviousness for
representative claim 4 under§ 103 rejection B. Grouped claim 11 (also
rejected under Rejection B) falls with claim 4. See supra, "GROUPING OF
CLAIMS."
Rejection B of Dependent Claim 17 under 35 U.S. C. § 103
Appellants note:
Claim 1 7 depends from independent claim 14 and includes
"receiving an indication to change from the selection of the first
version of the product to the selection of the second version
of the product comprises accessing the ratings data for the
second version of the product, wherein the ratings data for the
26
Appeal2017-009134
Application 13/847,828
second version of the product includes the received rating, and
a rating count for each of a plurality of rating levels on a rating
scale for the second version."
App. Br. 25.
Appellants essentially repeat the same arguments advanced previously
regarding Rejection B of claims 4 and 9 above, and regarding Burckart (i1i1
24, 33, 36). App. Br. 25-26. Appellants assert that the disclosure in
Burckart (id.) is "unrelated to accessing ratings data for a second version of
the product after receiving an indication to change from a first version of a
product to a second version of a product. Accordingly, the Examiner errs in
equating Burckart 's snapshot with the claimed indicator."
Again, we find the dispositive issue turns upon the product version.
Because Appellants have failed to address the Examiner's specific findings
(relying upon the combined teachings and suggestions of Burckart and
Smith, and particularly Smith ,r 45 for teaching or suggesting versions), we
find a preponderance of the evidence supports the Examiner's underlying
factual findings and ultimate legal conclusion of obviousness for claim 17
under rejection B. Accordingly, we sustain rejection B of dependent claim
17.
Rejections C-G under 35 U.S.C. § 103
As indicated above ("GROUPING OF CLAIMS"), Appellants
advance no separate, substantive arguments regarding the remaining claims,
which are rejected under§ 103 Rejections C---G. Arguments not made are
waived. See 37 C.F.R. § 4I.37(c)(l)(iv). Therefore, we sustain the
Examiner's Rejections C---G of remaining claims 3, 5-7, 10-13, and 18-20.
27
Appeal2017-009134
Application 13/847,828
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner's Answer
will not be considered except for good cause. See 37 C.F.R. § 4I.41(b)(2).
In particular, Appellants' have not shown good cause why we should
consider Appellants' untimely allegation that the Examiner has relied upon
impermissible hindsight, which was advanced for the first time in the Reply
Brief (9).
CONCLUSIONS
The Examiner did not err in rejecting claims 1-20 under 35 U.S.C.
§ 101, as being directed to a judicial exception, without significantly more.
The Examiner did not err in rejecting claims 1-20 under 35 U.S.C.
§ 103, as being obvious over the cited combinations of references.
DECISION
We affirm the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
28