Ex Parte Gross et al

Patent Trial and Appeal Board

Mar 30, 2018

13355392 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/355,392 01/20/2012
23694 7590 04/03/2018
Law Office of J. Nicholas Gross, Prof. Corp.
POBOX9489
BERKELEY, CA 94709
FIRST NAMED INVENTOR
John Nicholas Gross
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.
PS 2012-6 2846
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
eofficeaction@appcoll.com
j ngross@pac bell. net
anthonygreek@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN NICHOLAS GROSS, KEN SALE, ALAN MEYER,
and KEN BOASS0 1
Appeal2017-004236
Application 13/355,392
Technology Center 3600
Before MARC S. HOFF, JAMES R. HUGHES, and
JOHN D. HAMANN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1---6 and 13-21. Claims 7-12 and 22
have been canceled. Non-Final Act. 1. 2 We have jurisdiction under 35
U.S.C. § 6(b ). We affirm.
1 According to Appellants, the real party in interest is Patent Savant LLC.
App. Br. 5.
2 We refer to Appellants' Specification ("Spec.") filed Jan. 20, 2012
(claiming benefit of US 61/434,588 (filed Jan. 20, 2011) and US 61/442,049
(filed Feb. 11, 2011)); Appeal Brief ("App. Br.") filed Aug. 17, 2016; and
Reply Brief ("Reply Br.") filed Jan. 4, 2017. We also refer to the
Appeal2017-004236
Application 13/355,392
Appellants 'Invention
The invention generally relates to "automated electronic system tools
and methods for modeling and understanding intellectual property rights
proceedings and challenges." Spec. 1:27-29. See Spec. 2:2-6:5; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A method of indirectly analyzing and predicting
behavior of a target organization with a computing system, which
target organization processes input submissions from third
parties using a staff of human personnel in accordance with a first
rule set to generate output events for an intellectual property asset
that includes intellectual property content describing
characteristics of the intellectual property asset, the method
compnsmg:
causing the computing system to access a publicly
accessible database of event records derived from the output
events of the target organization, and which event records
identify at least an event type and event date associated with
processing by the target organization of the input submissions;
wherein each of said input submissions includes one or
more electronic files containing: 1) a first request document with
first request content requesting the target organization to process
a first intellectual property asset and generate a first output with
respect to assessing said first intellectual property asset in
accordance with said first rule set; 2) one or more second
reference documents containing second reference content
identified in said first request document as overlapping
sufficiently with said intellectual property content so as to satisfy
said first rule set;
Examiner's Non-Final Office Action ("Non-Final Act.") mailed Dec. 17,
2015, and Answer ("Ans.") mailed Nov. 4, 2016.
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processing the event records with the computing system to
identify a historical event behavior of the target organization,
including a timing performance parameter and a resolution
parameter associated with the output events;
wherein said processing of said event records includes
natural language processing by the computing system to compare
said first request content, said second reference content and said
intellectual property content to generate said resolution
parameter, said timing performance parameter and a profile of
behavior of said target organization with respect to said first rule
set;
providing a hypothetical submission to be processed by
the target organization;
wherein said hypothetical submission includes
hypothetical request content, hypothetical reference content, and
hypothetical intellectual property content for a hypothetical
intellectual property asset;
generating a prediction with the computing system of an
output expected to be generated by the target organization for
said hypothetical submission for said hypothetical intellectual
property asset based on said historical event behavior for said
first rule set.
Rejections on Appeal
1. The Examiner rejects claims 1---6 and 13-21under35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
2. The Examiner rejects claims 1---6 and 13-21 under pre-AIA 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
3. The Examiner rejects claims 1---6 and 13-21 under pre-AIA 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the applicant regards
as the invention.
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4. The Examiner rejects claims 1, 3, 5, 6, 13-15, 17, and 18 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Holt (US
2008/0016067 Al, published Jan. 17, 2008), Busch et al. (US 2010/0299301
Al, published Nov. 25, 2010) ("Busch"), and Johnson et al. (US
2004/0138936 Al, published July 15, 2004) ("Johnson").
5. The Examiner rejects claim 2 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Holt, Busch, Johnson, and Axford (US
2004/0249739 Al, published Dec. 9, 2004).
6. The Examiner rejects claim 4 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Holt, Busch, Johnson, and Tran
(US 2008/0140786 Al, published June 12, 2008).
7. The Examiner rejects claim 16 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Holt, Busch, Johnson, and Sheets (US
2009/0150326 Al, published June 11, 2009).
8. The Examiner rejects claims 19 and 20 under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Holt, Busch, Johnson, and Gibbs
et al. (US 2007/0294232 Al, published Dec. 20, 2007) ("Gibbs").
9. The Examiner rejects claim 21 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Holt, Busch, Johnson, and Van Luchene
et al. (US 2007/0219816 Al, published Sept. 20, 2007) ("Van Luchene").
RELATED APPEAL
The instant Appeal is related to Appeal No. 2017-007253 for US
13/828,923. In that decision (Appeal No. 2017-007253) ("Decision")
mailed on Feb. 28, 2018, the Board affirmed the Examiner's indefiniteness
rejection of claims 29-32, but reversed the Examiner's rejections under 35
U.S.C. §§ 101 and 103(a).
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ISSUES
Based upon our review of the record, Appellants' contentions, and the
Examiner's findings and conclusions, the issues before us are as follows:
1. Did the Examiner err in finding claims 1---6 and 13-21 were
directed to patent ineligible subject matter under 35 U.S.C. § 101?
2. Did the Examiner err in finding claims 1---6 and 13-21 failed to
comply with the written description requirement under 35 U.S.C. § 112, first
paragraph?
3. Did the Examiner err in finding claims 1---6 and 13-21 were
indefinite under 35 U.S.C. § 112, second paragraph?
4. Did the Examiner err in finding that the combination of Holt,
Busch, and Johnson collectively would have taught or suggested:
processing the event records with the computing system to
identify a historical event behavior of the target organization,
including a timing performance parameter and a resolution
parameter associated with the output events;
wherein said processing of said event records includes
natural language processing by the computing system to compare
said first request content, said second reference content and said
intellectual property content to generate said resolution
parameter, said timing performance parameter and a profile of
behavior of said target organization with respect to said first rule
set
within the meaning of Appellants' claim 1 and the commensurate limitations
of claim 13?
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ANALYSIS
The 35 USC§ 101 Rejection of Claims 1-6 and 13-21
Appellants argue independent claims 1 and 13 (as well as dependent
claims 2-6 and 14--21) together as a group with respect to the § 101
rejection. See App. Br. 11-15. We select independent claim 1 as
representative of Appellants' arguments with respect to claims 1-6 and 13-
21. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner rejects the claims as being directed to patent-ineligible
subject matter in that the claimed invention is "directed to a judicial
exception in the form of an abstract idea"-"analyzing and predicting the
behavior of an organization that processes requests for intellectual
property ... so that an outcome can be predicted for a submission to the
organization" (Non-Final Act. 4) or, in other words, "using information
about an entity or organization to make a prediction about a possible
outcome that involves the entity/organization" (id.). The Examiner further
finds that "[ t ]he claimed abstract idea constitutes an idea of itself' (id.), in
that the claims recite "using behavior information to make predictions about
a possible outcome[, which] is a fundamental concept long recognized by
and used by human beings" (Non-Final Act. 5). Additionally, the Examiner
finds Appellants' claims do "not include additional elements that are
sufficient to amount to significantly more than the judicial exception" (id.).
See Non-Final Act. 3---6; Ans. 3-9.
Appellants contend that the claims are not directed to an improper
judicial exception or abstract idea because the Examiner does not identify
such an abstract idea (App. Br. 11-12), the Examiner misapplies the relevant
precedent by "pigeonhol[ing]" Appellants' claims into an "overly broad
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'humans can do this' exception [that] is not in accordance with modem
precedent" (App. Br. 12), the Examiner misapplied the second part of the
Alice test (App. Br. 13), and the Examiner did not show that the claims
preempt the delineated and purportedly abstract idea (App. Br. 14). See
App. Br. 11-14; Reply Br. 4--13.
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 Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
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, 77-80 (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 23 5 5. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. For example, abstract ideas 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 claims are not directed to an abstract idea, the inquiry ends. Otherwise,
the inquiry proceeds to the second step where the elements of the claims are
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considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 78, 79). This second step is described as "a search for an "'inventive
concept"'-i.e., an element or combination of elements that is ' ...
significantly more than ... the [ineligible concept] itself."' Id. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Alice Step 1 Analysis
Turning to the first step of the eligibility analysis, "[ t ]he first step in
the Alice inquiry ... asks whether the focus of the claims is on the 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 abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting
O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)). "We therefore look
to whether the claims ... focus on a specific means or method that improves
the relevant technology or are instead directed to a result or effect that itself
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is the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314.
The Examiner finds claim 1 is directed to the abstract idea of
collecting and analyzing information similar to Electric Power Group (see
Ans. 6). The Examiner also finds that the collecting and analyzing of
information can be performed mentally or "can be done by a person with pen
and paper" (Ans. 7), and is, therefore, an "idea of itself' (id., citing Electric
Power Group). See Ans. 6-7 (citing Electric Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)). The Examiner also
counters Appellants' arguments concerning narrowness of the invention and
preemption. See Ans. 5---6 (citing buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1353-54 (Fed. Cir. 2014) ("reject[ing] the contention that the very
narrow scope ... [is] a reason to find patent eligibility" id. at 1353 (citing
Mayo, 566 U.S. at 88)) and OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362---63 (Fed. Cir. 2015) ("that the claims do not preempt all price
optimization ... do not make them any less abstract"))). Conversely,
Appellants attack the Examiner's findings on numerous grounds without
explaining why Appellants' claims are not analogous to those in Electric
Power Group. See Reply Br. 4--6.
Instead of using a fixed definition of an abstract idea and analyzing
how claims fit (or do not fit) within the definition, "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) (citing Elec. Power Grp, 830
F.3d at 1353-54). As part of this inquiry, we must "look at the 'focus of the
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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).
Here, Appellants' claims generally, and independent claims 1 and 13
in particular, relate to collecting and analyzing information (collecting
various records and content, analyzing (processing) this information (data)
to determine (identify) behavior and parameters, and generate a prediction-
that is, analyzing and manipulating data utilizing un-recited processes or
algorithms to determine a result (a prediction). Therefore, the claims
broadly recite collecting, analyzing, and manipulating information (data).
See Abstract; Spec. 1 :27-32; 7:20-8:25. This is consistent with how
Appellants describe the claimed invention. See id.; Spec. 76:20-77:2.
Contrary to Appellants' assertions, the present claims are directed to an
abstract idea, in that the instant claims are analogous to a number of cases in
which courts have identified similar claims as encompassing abstract ideas.
See Ans. 6-7 (discussed supra).
Our reviewing court has held that abstract ideas include gathering,
analyzing, and displaying information. See Elec. Power Grp., 830 F .3d at
1354 (finding "gathering and analyzing information of a specified content,
then displaying the results," to be directed to an abstract idea). Similarly,
our reviewing court has held that abstract ideas include gathering, analyzing,
and storing information. See Content Extraction and Transmission LLC v.
Wells Fargo Bank, Nat. Ass 'n., 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014)
(finding the "claims generally recite ... recognizing specific information
from the extracted data, and ... storing that information in a memory" (id. at
1345) and that the "claims are drawn to the basic concept of data recognition
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and storage" (id. at 1347)). Also, collecting, analyzing, and manipulating
information has been found to be a collection of abstract ideas. See
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341
(Fed. Cir. 2017) (holding that the claimed invention is directed to the
abstract idea of "collecting, displaying, and manipulating data of particular
documents"); FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089,
1093-95 (Fed. Cir. 2016) (finding the claims were directed to a combination
of abstract ideas including collecting and analyzing information and utilizing
rules to determine fraud).
Here, the collection and analysis of information to predict a result is
similar to the abstract idea of collecting, analyzing, and manipulating
information discussed in Elec. Power Grp., Content Extraction, Intellectual
Ventures I, and Fair Warning. Accordingly, we agree with the Examiner that
the claims are directed to an abstract idea of collecting, analyzing, and
manipulating information.
We also agree with the Examiner that the steps recited in claim 1
could be "be done by a person with pen and paper." Ans. 7. We find a
person could perform each process (step or function) in Appellants' claim 1,
either mentally, or using pen and paper. See Ans. 6-7. In that regard, our
reviewing court has held that "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, [are]
essentially mental processes within the abstract-idea category." Elec. Power
Grp., 830 F.3d at 1354; see also Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1146 (Fed. Cir. 2016) ("'Methods which can be performed
entirely in the human mind are unpatentable"' (id., quoting Gottschalk v.
Benson, 409 U.S. 63, 67 (1972))); CyberSource Corp. v. Retail Decisions,
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Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson). "[T]he fact that the
required calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed subject matter."
Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (US.), 687 F.3d
1266, 1278 (Fed. Cir. 2012). Thus, we agree with the Examiner that
Appellants' claims are directed to an abstract idea of collecting, analyzing,
and manipulating information, which could be performed by purely mental
processes.
Alice Step 2 Analysis
Having found Appellant's claims are directed to an abstract concept
under Alice's step 1 analysis, we next address whether the claims add
significantly more to the alleged abstract idea. As directed by our reviewing
Court, we search for an "'inventive concept' sufficient to 'transform the
nature of the claim into a patent-eligible application."' McRO, 837 F.3d at
1312 (quoting Alice, 134 S. Ct. at 2355). The implementation of the abstract
idea involved must be "more than performance of 'well-understood, routine,
[and] conventional activities previously known to the industry."' Content
Extraction, 77 6 F .3 d at 134 7--48 (alteration in original) (quoting Alice, 134
S. Ct. at 2359). The "inventive concept" "must be significantly more than
the abstract idea itself, and cannot simply be an instruction to implement or
apply the abstract idea on a computer." Bascom Global Internet Services,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
Here, the Examiner found that Appellants' claims do not add
significantly more. See Non-Final Act. 5---6; Ans. 8-10. Appellants, on the
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other hand, contend that the Examiner's analysis was faulty (see App. Br.
13; Reply Br. 7-11 ), that "there is more than 'an inventive concept'
presented in claim 1" (App. Br. 14), and that "the limitations in combination
... clearly embody an inventive concept .... [and] recite[] significantly
more than an abstract idea" (Reply Br. 11 (internal quotations omitted)).
Appellants fail to persuade us of error in the Examiner's rejection
with respect to the second Alice step. Here Appellants repeat the limitations
of claim I-asserting that the limitations embody an inventive concept, but
do not directly address the Examiner's findings. See Reply Br. 7-11.
Appellants also conflate the Alice two-part analysis. See App. Br. 14; Reply
Br. 11-12. To the extent Appellants' arguments might be interpreted as
invoking DDR Holdings (see Reply Br. 7, 13}-in that the instant claims
improve the operation of a computer system-we disagree. In DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the
court held that a claim may amount to more than an abstract idea recited in
the claims when it addresses and solves problems only encountered with
computer technology and online transactions, e.g., by providing (serving) a
composite web page rather than adhering to the routine, conventional
functioning of Internet hyperlink protocol. See DDR Holdings, 773 F.3d at
1257-59. In contrast, claim 1 performs a process of collecting, analyzing
and manipulating information, utilizing conventional computer networks and
systems. See Ans. 8-10; Spec. 76:20-77:2; Fig 1. Despite Appellants'
arguments to the contrary, nothing in the claim recites a "specific
improvement to the way computers operate" (supra), the analysis of
collected data, is not a solution to a technical problem as discussed in DDR
Holdings. Predicting organizational behavior by data analysis is a
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commercial solution to an efficiency problem, not a technical solution. This
commercial solution may be assisted using a general purpose computer to
perform the data collection, analysis, and manipulation processes, but does
not improve how the computer itself functions. As we previously explained,
the instant claims are more akin to the claims for analyzing information
found to be abstract in Elec. Power Grp, 830 F.3d at 1353.
We agree with the Examiner that the additional limitations, separately,
or as an ordered combination, do not provide meaningful limitations (i.e., do
not add significantly more) to transform the abstract idea into a patent
eligible application. See e.g., Non-Final Act. 5---6; Ans. 8-10. Indeed, the
claim merely recites processes collecting existing data, analyzing the data to
determine other data, and predicting organizational behavior. Such steps are
all routine and conventional and well-understood computer functions of a
general processor. The Specification supports this view in discussing the
processes implemented in software which operates on generic computers to
perform the recited data manipulation steps. See Spec. 76:20-77:2.
To implement the above functions a server computing
system used by the described embodiments is preferably a
collection of computing machines and accompanying software
modules of any suitable form known in the art for performing the
operations described above and others associated with typical
website support.
Spec. 76:20-24. Such conventional computer processes "do not alone
transform an otherwise abstract idea into patent-eligible subject matter."
FairWarning IP, 839 F.3d at 1096 (citing DDR Holdings, 773 F.3d at 1256).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
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Examiner's rejection under§ 101 of independent claims 1 and 13, and also
dependent claims 2-6 and 14--20, which were not argued separately.
The Written Description Rejection of Claims 1-6 and 13-21
The Examiner rejects claims 1---6 and 13-21 as failing to comply with
the written description requirement. See Non-Final Act. 8-18; Ans. 10-18.
Appellants contend that their Specification and claims, as originally filed,
support the disputed claim language. See App. Br. 15-18; Reply Br. 14--19.
For example, Appellants contend that the recited "natural language
processing" in claim 1 is described in the originally filed Specification.
App. Br. 15-16; Reply Br. 14 (citing, e.g., Spec. 12:20-28). The cited
portion of the Specification describes "natural language (NL) logic"
"responsible for collecting and analyzing documents and other associated
metadata associated with the submissions" (Spec. 12:20-28). Appellants
similarly address the other disputed language of claim 1 and claims 2-6 and
13-21. See App. Br. 15-18; Reply Br. 14--19. We agree with Appellants.
Appellants' Specification discusses the disputed language and (in a limited
fashion) its functionality. See id. Accordingly, Appellants persuasively
argue that the Specification describes and supports the disputed language.
The Examiner, on the other hand, seems to base much of the rejection on a
failure of the claims and Specification to explain the specific
implementations of the functionality recited in Appellants' claims-i.e., that
the Specification would not have enabled one of ordinary skill in the art to
make the invention recited in the claims. See Non-Final Act. 8-18; Ans. 10-
18. In conflating the § 112, first paragraph analysis, the Examiner has not
clearly articulated either a§ 112, first paragraph, enablement rejection or a
§ 112, first paragraph, written description rejection. Consequently, we are
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constrained by the record before us to find that the Examiner erred in
rejecting claims 1---6 and 13-21 as failing to comply with the written
description requirement. Accordingly, we reverse the Examiner's § 112,
first paragraph, rejection of claims 1---6 and 13-21.
The Indefiniteness Rejection of Claims 1-6 and 13-21
The Examiner rejects claims 1---6 and 13-21 as being indefinite. See
Non-Final Act. 18-21; Ans. 16-18. Specifically, the Examiner finds there is
no antecedent basis for "said historical event behavior" in claim 1 (see Non-
Final Act. 18-19), the comparison of content in Appellants' claim 1 is
unclear (see Non-Final Act. 19), "said user's" in Appellants' claim 3 lacks
antecedent basis (see Non-Final Act. 19), and claims 6, 17, 18, 20, and 21
are unclear for various reasons (see Non-Final Act. 19-21). Appellants
contend that the recitation of the comparison in claim 1 is broad, but not
indefinite and the Specification supports and further clarifies the various
recited comparisons. App. Br. 18-19; Reply Br. 19-21. Appellants also
contend that the language in claims 3, 6, 17, and 18 is clear and the
Specification and drawings further clarify the disputed language. App. Br.
19-20; Reply Br. 20-21. Additionally, Appellants contend "[t]he Examiner
also rejects claims 3, 6, 17-18 and 20 on new arguments based on what are
really minor informalities that can be rectified easily." App. Br. 19; see also
App. Br. 19-20; Reply Br. 20-21.
The essence of the requirement under 35 U.S.C. § 112, second
paragraph, is that the language of the claims must make clear what subject
matter the claims encompass - i.e., "'whether those skilled in the art would
understand what is claimed when the claim is read in light of the
specification."' Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d
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1364, 1380 (Fed. Cir. 2011) (quoting Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)); see In re Packard,
751F.3d1307, 1310-14 (Fed. Cir. 2014).
"[W]e apply the approach for assessing indefiniteness approved by
the Federal Circuit in Packard, i.e., '[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.' Put differently, 'claims are
required to be cast in clear-as opposed to ambiguous, vague, indefinite-
terms. "' In re McAward, Appeal 2015-006416, 2017 WL 3669566, *5
(PTAB Aug. 25, 2017) (precedential) (quoting In re Packard, 751 F.3d at
1310, 1313-14) (internal citations omitted).
We find claims 1 and 3 have antecedent basis for the disputed
language. Further, the Examiner does not explain why the disputed
language would be unclear to one of ordinary skill in the art. With respect to
the comparisons made in claim 1, Appellants persuade us that the
comparisons would be clear to one of ordinary skill in the art. See App. Br.
18-19; Reply Br. 19-21. As explained by Appellants, "'[b]readth is not
indefiniteness."' App. Br. 19 (quoting In re Gardner, 427 F.2d 786, 788
(1970)). In light of our findings and Appellants arguments, we find the
Examiner, with respect to claims 1---6 and 13-19, fails to sufficiently explain
why one of ordinary skill in the art would not understand what is claimed by
Appellants.
With respect to claims 20 and 21 we agree with the Examiner that the
"output" is a thing (the term is used as a noun), and it is unclear how an
output can include a step (process). See Non-Final Act. 20-21; Ans. 18.
Appellants do not address the Examiner's rejection directly, and concede
that claims 20 and 21 are unclear, stating that the claims 20 and 21 can
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easily be made clear by a simple amendment-that the indefiniteness issues
may be "easily resolved by a minor language change" (App. Br. 20). See
App. Br. 20; Reply Br. 21. Therefore, we find Appellants do not dispute the
substance of the Examiner's rejection and, thus, do not persuade us of error
in the Examiner's indefiniteness rejection with respect to claims 20 and 21.
Accordingly, we sustain the Examiner's indefiniteness rejection of claims 20
and 21, but do not sustain the Examiner's indefiniteness rejection of claims
1---6 and 13-19.
The 35 US. C. § 103 Rejection of Claims 1, 3, 5, 6, 13-15, 17, and 18
The Examiner rejects independent claims 1 and 13 as being obvious in
view of Holt, Busch, and Johnson. See Non-Final Act. 21-35; Ans. 18-22.
Appellants contend that Holt, Busch, and Johnson do not teach the disputed
features of claim 1 (or claim 13). See App. Br. 20-26; Reply Br. 22-27.
More specifically, Appellants contend that Holt fails to teach a key feature
of claim I-that the claim "is directed to a particular method in which input
submissions from third parties to a target organization are processed to
derive a historical event behavior, and timing and resolution parameters for
the organization" and that "it is the behavior of the organization relative to
the first rule set that is being analyzed to determine these parameters" (Reply
Br. 22). According to Appellants, the Examiner's citation of Holt and
related discussion of the reference "failed to account for the fact that this
reference is much more limited: it only teaches processing materials
produced by the organization itself' (Reply Br. 22). See App. Br. 21-22;
Reply Br. 22-23.
The Examiner relies on Holt to teach processing the records to
identify historical event behavior and generate the various parameters. See
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Non-Final Act. 22-27; Ans. 18-19. In particular, the Examiner finds that
much of the terminology in the disputed limitations is non-functional
descriptive material and that the rule set does not further limit Appellants'
claim 1. See Non-Final Act. 24--26.
We disagree with the Examiner's interpretation of claim 1, which fails
to give weight to, or properly consider, the terminology recited in the claim.
We further agree with Appellants that the Examiner-cited portions of Holt,
at best, generally describe US Patent and Trademark Office (USPTO)
databases and extracting data from the USPTO databases. See App. Br. 21-
22; Reply Br. 22-23.
Appellants' claim 1 (and claim 13) recite "analyzing and predicting
behavior of a target organization with a computing system, which target
organization processes input submissions from third parties using a staff of
human personnel in accordance with a first rule set to generate output
events" by "processing the event records" "to identify a historical event
behavior of the target organization, including a timing performance
parameter and a resolution parameter associated with the output events"
including using "natural language processing" "to compare said first request
content, said second reference content and said intellectual property content
to generate said resolution parameter, said timing performance parameter
and a profile of behavior of said target organization with respect to said first
rule set" (claim 1). As explained by Appellants (supra), the claim language
requires evaluation of the input submissions (which are processed according
to the first rule set to generate output events), the first rule set, and the event
records (records of the output events) in processing of the event records to
determine the historical behavior and various parameters. The Examiner
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cited portions of Holt only teach collecting data from databases. The
Examiner has not provided a sufficient explanation of how Holt (in
combination with Busch, and Johnson) teaches the disputed features of claim
1.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Holt, Busch, and Johnson teach the disputed
features of Appellants' claim 1. Independent claim 13 includes limitations
of commensurate scope. Dependent claims 3, 5, 6, 14, 15, 17, and 18
depend on and stand with independent claims 1 and 13, respectively.
Accordingly, we do not sustain the Examiner's obviousness rejection of
claims 1, 3, 5, 6, 13-15, 17, and 18.
The 35 US. C. § 103 Rejection of Claims 2, 4, 16, 19, and 20
The Examiner rejects dependent claim 2 as obvious in view of Holt,
Busch, Johnson, and Axford. See Non-Final Act. 47-50. The Examiner
rejects claim 4 as obvious in view of Holt, Busch, Johnson, and Tran. See
Non-Final Act. 50---51. The Examiner rejects claim 16 as obvious in view of
Holt, Busch, Johnson, and Sheets. See Non-Final Act. 52-54. The
Examiner rejects claims 19 and 20 as obvious in view of Holt, Busch,
Johnson, and Gibbs. See Non-Final Act. 54---62. The Examiner rejects claim
21 as obvious in view of Holt, Busch, Johnson, and Van Luchene. See Non-
Final Act. 62---65. The Examiner does not suggest, and we do not find, that
the additional references cure the deficiencies of Holt, Busch, and Johnson
(supra). We reverse the Examiner's obviousness rejections of dependent
claims 2, 4, 16, 19, and 20, for the same reasons set forth with respect to
claim 1 (supra).
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CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1---6 and 13-21under35 U.S.C. § 101.
Appellants have shown that the Examiner erred in rejecting claims 1-
6 and 13-21under35 U.S.C. § 112, first paragraph.
Appellants have not shown that the Examiner erred in rejecting claims
20 and 21under35 U.S.C. § 112, second paragraph.
Appellants have shown that the Examiner erred in rejecting claims 1-
6 and 13-19 under 35 U.S.C. § 112, second paragraph.
Appellants have shown that the Examiner erred in rejecting claims 1-
6 and 13-21under35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejection of claims 1-6 and 13-21.
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).
AFFIRMED
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