Ex Parte Gruber et al

Patent Trial and Appeal Board

Feb 27, 2018

13251088 (P.T.A.B. Feb. 27, 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.
13/251,088 09/30/2011 Thomas R. Gruber PI 1337US1/77870000124101 1357
150004 7590 03/01/2018
DFNTONS T TS TIP. Annie
EXAMINER
P.O. Box 061080 SWARTZ, STEPHEN S
Wacker Drive Station, Willis Tower
Chicago, IL 60606 ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/01/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents.us@dentons.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS R. GRUBER, ALESSANDRO F. SABATELLI, and
DONALD W. PITSCHEL
Appeal 2017-001924
Application 13/251,088
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—31. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). Appellants appeared for hearing on January 30,
2018.
Appeal 2017-001924
Application 13/251,088
We REVERSE.
Claim 1 is illustrative:
1. A method comprising:
at an electronic device comprising one or more
processors and memory storing one or more programs for
execution by the one or more processors, the method
comprising:
receiving, from a user, input that expressly specifies one
or more first attributes of a task;
based on the input, generating a task item for the task;
automatically without user intervention, retrieving
context data that is separate from the input;
deriving from the context data one or more second
attributes of the task; and
causing a plurality of attributes to be stored in association
with the task item, wherein the plurality of attributes includes
the one or more first attributes and the one or more second
attributes, and wherein the task item is stored in a list of task
items to be displayed to and performed by the user.
App. Br. 61 (Claims Appendix).
Appellants appeal the following rejections:
1. Claims 1—31 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
2. Claim 1—31 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Upton (US 7,541,940 B2, iss. June 2, 2009) in view of
Cleary et al. (US 2008/0294418 Al, pub. Nov. 27, 2008).
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
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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. CLSBankInt’l, 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 ... 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.”).
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
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Application 13/251,088
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 the abstract idea of
gathering user information related to tasks that are based on user input and
contextual data to display and assign tasks to a user, which is viewed as the
comparing of new and stored information, and using rules to identify
options, which are the mental steps, although done on a computer. Fin. Act.
10—11. The Examiner found that the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because receiving, retrieving, deriving, storing, and displaying are
viewed as using a computer program that is merely a set of instructions to
determine the mathematical relationship/formula to govern the organizing of
human activities, on a generic computer. The Examiner found that it is not
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clear that there is any meaningful improvement to the technology or to the
technological environment. Ans. 11. The Examiner did not address the
specific recitations of claim 1 or the recitations of any of the other claims
subject to this rejection.
Appellants argue that the claimed invention recites the intelligent use
of context data, which improves the accuracy, relevance, and usefulness of
tasks generated for electronic lists. Among the improvements to the digital
assistant field the Appellants list are fewer interactions between digital
assistant and the user, which enhances the computing efficiency and battery
life of electronic devices, and improves the user experience. App. Br. 55.
These improvements flow from the fact that context data are retrieved, and
second attributes derived therefrom, without user intervention. This feature
of the claim relieves the user of making further input of context data after
the first attribute of the task is received.
We will not sustain this rejection because the Examiner has not
established or explained why the derivation of context data without user
intervention is not a technical improvement to the process of gathering user
information. In this regard, the Examiner has not addressed why the
improvements that flow from retrieving context data and deriving second
attributes therefrom without user intervention does not amount to
significantly more than the abstract idea. In fact, the Examiner does not
specifically address this feature of the claim.
In view of the foregoing, we will not sustain the rejection as it is
directed to claim 1 and the claims dependent therefrom. We will also not
sustain the rejection of independent claims 12 and 14 and their dependent
claims for the same reason.
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Rejection under 35 U.S.C. §103(a)
The Appellants argue that the Examiner’s rationale to combine Upton
and Cleary is without merit. App. Br. 27. We agree.
We find that Upton discloses a system and method to provide
proximity-based task alerts in a mobile computing device (col. 1,11. 54—56).
This allows a user to receive a reminder to perform a task associated with a
particular location when the user is within the proximity or vicinity of that
location (col. 6,11. 57—60). The Examiner recognizes that Upton does not
disclose deriving from the context data a second attribute of the task. The
Examiner relies on paragraphs 60 and 65 of Cleary for teaching this subject
matter.
We find that Cleary discloses a method for network management
comprising a configuration of control protocols between network elements
in a network represented through a current, static, network element managed
object model comprising a number of managed objects (Cleary 11).
Paragraphs 60 and 65 of Cleary relate to tasks to be done in a network
configuration. The Examiner has not established that a person of ordinary
skill in the art at the time of the invention would have had a reason to
combine the teachings of Upton which is directed to proximity-based task
alerts in a mobile computing device with network configuration tasks as
taught by Cleary. In this regard, although Upton and Cleary disclose old
elements, it is not apparent how the result of the combination would have
been predictable. In fact, as Upton and Cleary relate to such disparate tasks,
it is not clear how one would combine these teachings.
In view of the foregoing, we will not sustain this rejection.
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DECISION
We reverse the Examiner’s decision.
ORDER
REVERSED
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