Ex Parte Fritsch et al

Patent Trial and Appeal Board

Feb 16, 2018

13196276 (P.T.A.B. Feb. 16, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/196,276 08/02/2011 Juergen Fritsch MDL.1015C1 3496
144359 7590 02/21/2018
Rlnechift TP T T C
EXAMINER
1 Broadway, 14th Floor
Cambridge, MA 02142
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
02/21/2018 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):
mail@blueshiftip.com
eofficeaction @ appcoll.com
docketing@blueshiftip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUERGEN FRITSCH, DETLEF KOLL,
KJELL SCHUBERT, CHRISTOPHER M. CURRIVAN
Appeal 2016-001721
Application 13/196,276
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant(s) seek our review under 35 U.S.C. § 134 of the Examiner’
final decision rejecting claims 1—6. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-001721
Application 13/196,276
BACKGROUND
Appellants’ invention is directed to a method for monitoring user
interaction with a document editing system. Spec. 21.
Claim 1 is illustrative:
1. (previously presented) A method performed by at least
one computer processor executing computer program instructions
stored on at least one non-transitory computer-readable medium,
wherein the computer program instructions are executable by the at
least one computer processor to perform a method for use with a
document editing system and a plurality of documents, the method
comprising:
(A) identifying, during editing of the plurality of documents,
actual editing behavior applied by a user to the document editing
system to edit the plurality of documents; and
(B) identifying a modification to the document editing system
based on the actual editing behavior, comprising:
(B) (1) deriving a statistic from the actual editing
behavior;
(B) (2) determining whether a value of the statistic is
below a minimum value;
(B) (3) if the value of the statistic is determined to
be below the minimum value, then identifying the
modification as a modification that increases
the value of the statistic; and
1 We refer to the Specification filed Aug. 2, 2011 (“Spec.”); [the Second]
Non-Final Office Action mailed Nov. 28, 2014 (“Non-Fin. Act.”); Appeal
Brief filed Apr. 27, 2015 (“App. Br.”); and the Examiner’s Answer mailed
Sept. 21, 2015 (“Ans.”). (ft is noted that a Reply Brief was filed on Nov. 23,
2015.)
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Application 13/196,276
(B) (4) if the value of the statistic is determined to
be higher than the minimum value, then
identifying the modification as a modification
that decreases the value of the statistic.
(App. Br., Claims App’x, 25—26.)
The Examiner relies on the following prior art reference as evidence of
unpatentability:
Halverston, C., et al., The Beauty of Errors: Patterns of error connection in
desktop speech systems [PDF], umich.edu; Proceedings of
INTERACT...1999 books.google.com
Vemuri, S., et al., Improving Speech Playback Using Time-Compression and
Speech Recognition, [PDF], uio.no ...Proceedings of the 2004 — di.acm.org
Appellant(s) appeal the following rejection(s):
Claims 1—6 under 35 U.S.C. § 101 because the claimed invention is
directed to non-statutory ideas.
Claims 1—6 under 35 U.S.C. § 103(a) as unpatentable over Halverston,
C., et al., The Beauty of Errors: Patterns of error connection in desktop
speech systems [PDF], umich.edu; Proceedings of INTERACT... 1999
books.google.com; in view of Vemuri, S., et al., Improving Speech Playback
Using Time-Compression and Speech Recognition, [PDF],
uio.no ...Proceedings of the 2004 — di.acm.org
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Appeal 2016-001721
Application 13/196,276
PRINCIPLES OF LAW
An invention is patent-eligible if it 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 implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S.Ct. 2347,
2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
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Application 13/196,276
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
ANALYSIS
Rejection under 35 U.S.C. §101
The Examiner held that the claims are directed to managing editing
behavior of a user which is a way of organizing human activities. (Non-Fin.
Act. 3.) The Examiner further explains that the abstract idea is calculating a
statistic of a user’s job performance and then comparing that to a threshold
as to whether the job performance can be improved and this is a way of
organizing human activity (i.e. if the person’s job performance with respect
to a particular aspect is below par, then identifying how they can improve it.)
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The Examiner finally held that the abstract idea is merely comparing the
amount or type of work that a user is doing with what they could be doing.
Ans. 5.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the method is performed by a computer and not a
human and thus is not directed to an abstract idea of organizing human
activities. We agree with the Examiner that the claims are directed to
comparing the amount or type of work that a user is doing with what they
could be doing. In this regard, claim 1 is directed to the abstract idea of
identifying actual editing behavior of a user and deriving a statistic
therefrom and comparing the statistic regarding the actual editing behavior
of a user to a value and identifying modifications to the system that will
increase the statistic. The fact that the various steps are performed by a
computer does not change the basic character of a method of claim 1. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) {citing In reAbele, 684 F.2d 902 (CCPA 1982)).
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the Examiner’s rejection is conclusory and has
not addressed each element of claim 1. We conclude that the Examiners
statement is sufficient to place Appellants on notice as to step 1 of Alice as
required under 35 U.S.C. § 132. Further, Appellants' understanding of the
Examiner's rejection on this point was manifested by their response to the
Office Action. Appellants did not respond by asserting that they did not
understand the Examiner's rejection. Instead, Appellants presented
arguments in response to the rejection. See In re Jung, 637 F.3d 1356 (Fed.
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Application 13/196,276
Cir. 2011). On the issue of prima facie notice, particularly to anticipation but
also generally, our reviewing court was clear in Jung that:
There has never been a requirement for an examiner to make an
on-the-record claim construction of every term in every rejected
claim and to explain every possible difference between the prior
art and the claimed invention in order to make out a prima facie
637 F.3d at 1363.
The Federal Circuit further stated:
Section 132] does not mandate that in order to establish prima
facie anticipation, the PTO must explicitly preempt every
possible response to a section 102 rejection. Section 132 merely
ensures that an applicant at least be informed of the broad
statutory' basis for the rejection of his claims, so that he may
determine what the issues are on which he can or should
produce evidence.” Chester, 906 F.2d at 1578 (internal citation
omitted). As discussed above, all that is required of the office to
meet its prima facie burden of production is to set forth the
statutory' basis of the rejection and the reference or references
relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of § 132. As the statute itself
instructs, the examiner must “notify the applicant,” “stating the
reasons for such rejection,” “together with such information and
references as may be useful in judging the propriety of
continuing prosecution
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Jung, 637 F.3d at 1363,
The Examiner's discussion was more than sufficient to meet this burden as to
Alice step 1.
Appellants’ argument that the Examiner erred in rejecting claim 1 as
being directed to patent ineligible subject matter because claim 1 expressly
recites a modification to the document editing system itself not changi ng the
behavior of the user, is likewise unpersuasive. As stated above, in our view,
claim 1 is directed to comparing the amount or type of work that a user is
doing with what they could be doing i.e. identifying an actual editing
behavior of a user and deriving a statistic therefrom and comparing the
statistic regarding the actual editing behavior of a user to a value. The
recitation of identifying a modification to the document editing system is
part of the abstract idea itself.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 101. We will also sustain the rejection as it is
directed to claims 2—6 because the Appellants have not argued the separate
patent eligibility of these claims.
Rejection under 35 U.S.C. £103
We are not persuaded of error on the part of the Examiner by
Appellants' argument that Halverston does not disclose identifying during
editing of the plurality of documents actual editing behavior applied by the
user to the document editing system to edit the documents (App. Br. 20—21).
Appellants argue that Halverson does not identify editing behavior until after
the subjects have completed dictating. App. Br. 21.
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Application 13/196,276
We agree with the Examiner that Halverson teaches that the step of
identifying behaviors is done by videotaping the editors actually editing a
document (3.3-3.4). As such, Halverson does disclose identifying editing
behaviors during editing as recited in claim 1.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We will also sustain the rejection as it is
directed to claims 2—6 because the claims do not argue the separate
claims.
DECISION
We affirm the Examiner’s § 101 rejection,
We affirm the Examiner’s § 103(a) rejection.
TIME PERIOD
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)(1) (2009).
ORDER
AFFIRMED
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