Ex Parte Holou

Patent Trial and Appeal Board

Jul 17, 2017

14181610 (P.T.A.B. Jul. 17, 2017)

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.
14/181,610 02/14/2014 Roland Ahouelete Yaovi HOLOU TUP16576 1099
62439 7590
SINORICA, LLC
20251 Century Blvd.
Suite 140
Germantown, MD 20874
07/19/2017 EXAMINER
OFORI-AWUAH, MAAME
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
07/19/2017 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):
SINORICA@GMAIL.COM
sinorica@outlook.com
pair @ sinorica.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLAND AHOUELETE YAOVI HOLOU
Appeal 2016-005669
Application 14/181,61c1
Technology Center 3600
Before ELENI MANTIS MERCADER, TERRENCE W. McMILLIN, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1 and 6—18, which constitute all of the claims pending in this
application. Claims 2—52 have been cancelled. Br. 33. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the applicant as the real party in interest. Br. 2.
2 Although the Final Action rejects claims 4 and 5, those claims were
cancelled in the Amendment filed April 1, 2015. Accordingly, the
Examiner’s rejection of those claims is moot and not the subject of the
instant appeal.
Appeal 2016-005669
Application 14/181,610
THE INVENTION
According to Appellant, the disclosed and claimed invention is
directed to a website platform to locate and engage with international
diasporas. Spec 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of locating, engaging, and networking diasporas
by executing computer-executable instructions stored on a non-
transitory computer readable medium, the method comprises the
steps of:
providing a plurality of user accounts, wherein each of
said user accounts includes a user profile and a plurality of
contacts;
wherein said user profile includes a residence location and
an origination location; and wherein said user profile further
includes a name, an address, an email, a telephone number,
education, a country of origin, a duration at origin, a country of
residence, a duration at residence, a country of citizenship, a tribe
or culture, areas of interest, a language, an expertise, a job title,
an age, and a resume, and information a user is looking for in
other users: education completed of match, fields of expertise of
match, areas of interest/needs/offers of match, languages of
match, country of residence of match, job title of match, years of
experience of match, registration category of match, country of
origin of match, and the need and offer that the user posts;
displaying a plurality of communication resources through
a graphic user interface to each of said plurality of user accounts:
optimizing interconnectivity between users accounts with
similar residence locations and with similar origination locations
by implementing said plurality of communication resources;
enabling said plurality of user accounts to send and receive
messages amongst each other as one of said plurality of
communication resources;
enabling each of said plurality of user accounts to view,
organize, and manage its plurality of contacts as one of said
plurality of communication resources;
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enabling said plurality of user accounts to add need/offer
posts to a common board as one of said plurality of
communication resources;
enabling said plurality of user accounts to create a plurality
of networking groups amongst each other as one of said plurality
of communication resources;
executing a matching process for each of said plurality of
user accounts as one of said plurality of communication
resources, wherein an arbitrary account from the plurality of user
accounts is enabled to add a specific need/offer post to said
common board;
prompting said arbitrary account to select a category type
for said specific need/offer post;
extracting user information for said specific need/offer
post from said user
profile of said arbitrary account;
retrieving description information and location
information for said specific need/offer post from said arbitrary
account; and
adding said specific need/offer post with said category
type, user information, said description information, and location
information to said common board.
wherein said category type is selected from the group
consisting of a recruiter, a salesperson, a job seeker, a buyer, a
volunteer, a philanthropist/donor, and a receiver, a diaspora
seeking a government, a diaspora seeking a home country, a
diaspora seeking a host country, a diaspora seeking an
organization, a diaspora seeking an individual, and a diaspora
seeking opportunities with one of the foregoing categories, and
wherein said description information is selected from the group
consisting of a descriptive summary, fields of expertise of the
need/offer, areas of interest of the need/offer, the length of
service, an availability date of the need/offer, an expiration date
of the need/offer if applicable, a compensation type, location of
the need/offer, user registration category, user country of origin,
user areas of interest, user country of residence, duration of user
residence in host country, user language preference, user
profession, field of expertise, user job title, user age, and
combinations thereof.
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REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Brown US 2010/0313142 A1 Dec. 9, 2010
Baldwin et al. (Baldwin”) US 8,522,152 B2 Aug. 27, 2013
REJECTIONS
Claims 10-15 and 17 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 2—3.
Claims 1 and 6—18 stand rejected under 35 U.S.C. § 101 as being
directed to patentable-ineligible subject matter. Final Act. 3^4.
Claims 1 and 6—18 stand rejected under 35 U.S.C. §103 as being
unpatentable over Brown in view of Baldwin. Final Act. 4—12.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants’ arguments regarding the rejection
under sections 101 and 103. However, as discussed below, we are
persuaded that the Examiner erred in rejecting the claims as indefinite.
Section 112 Rejection
Claims 10, 12—14, and 17 contain conditional method steps. Br. 35—
36, 37, and 39. The Examiner concludes the claims are indefinite because
they do not state what happens when the condition is not satisfied. Final Act
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2—3; Ans. 16 (“Appellant has not explained what occurs in the alternative,
for example, when a user does NOT accept said join-request.”).
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad, of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We have previously
held that when applying the broadest reasonable interpretation to conditional
method steps, the claim covers two alternative methods, one where the
limitation is satisfied and one where it is not. Ex parte Schulhauser, Appeal
2013-007847, 2016 WL 6277792, *3-5 (PTAB April 28, 2016)
(precedential) (discussing construction of conditional limitations in method
claims). Accordingly, we construe the disputed claims to cover two
different alternatives.
“A claim is indefinite if, when read in light of the specification, it
does not reasonably apprise those skilled in the art of the scope of the
invention.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1342 (Fed. Cir. 2003). “As the statutory language of ‘particularity] ’ and
‘distinctness]’ indicates, claims are required to be cast in clear—as opposed
to ambiguous, vague, indefinite—terms. It is the claims that notify the
public of what is within the protections of the patent, and what is not.” In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Because the conditional
claim limitations, when construed according to Schulhauser, appraise those
of skill in the art of the scope of the claims, we are constrained on the
current record to not sustain the Examiner’s rejection of claims 10, 12—14,
and 17, along with the rejections of dependent clams 11 and 15
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Section 101
The Examiner rejects claims 1 and 6—18 under 35 U.S.C. § 101 as
directed to patentable-ineligible subject matter. Final Act. 2—3; Ans. 12—15.
Specifically, the Examiner concludes that the claims are directed to a
judicial exception. Final Act. 2—3; Ans. 12—5. That is, the claims are
directed to the abstract idea of “locating, engaging and networking
diasporas, which is an example of a method of organizing human activities,”
and the claim limitations, either individually or collectively, do not “amount
to significantly more than the judicial exception because the steps for routine
data gathering of profile information to match users and provide means to
communicate with one another would be routinely used by those of ordinary
skill in the art for networking.” Final Act. 2—3; see also Ans. 12—15.
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012). Although an abstract idea, itself, is
patent-ineligible, an application of the abstract idea may be patent-eligible.
Alice, 134 S. Ct. at 2355. Thus, we must consider “the elements of each
claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
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patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at 1297—98). The
claim must contain elements or a combination of elements that are
“sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [abstract idea] itself.” Id. (citing Mayo, 132 S. Ct. at
1294).
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim's
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
“abstract idea.” Rather, the Federal Circuit has explained that “both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases.” Enfish, 822 F.3d 1327, 1334 (Fed. Cir. 2016); see also Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
(explaining that, in determining whether claims are patent eligible under
§101, “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”).
As discussed in detail infra, we are not persuaded by Appellant’s
argument that the Examiner erred. Instead, we agree with and adopt the
Examiner’s conclusions regarding the claims being directed to patentable-
ineligible subject matter as our own.
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Although Appellant does not explicitly address the Alice!Mayo
framework, Appellant’s argument is directed to the first prong of the
framework. First, Appellant argues the Examiner erred in concluding that
the claim is directed to an abstract idea: “The Applicant submits that the
present invention is not a method of organizing human activities. There is
no human action involved in the present invention as claimed. Each claimed
step has been executed by an electronic device through electronic signals.”
Br. 5.
We are not persuaded by Appellant’s argument that the Examiner
erred. Appellant’s argument does not address the Examiner’s rejection. The
rejection is not based on whether the claimed method is performed in a
human mind or by a computer. Instead, the rejection is based on the premise
that the claimed method—however it is performed—is directed to the
abstract idea of organizing human activities. Merely using a computer
readable medium is not sufficient to transform an abstract idea to patentable
subject matter. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373—77 (Fed. Cir. 2011); see also Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709 (Fed. Cir. 2014) (finding a method for distribution of products over
the Internet directed to unpatentable under the Alice!Mayo framework).
Appellant’s remaining argument is directed to whether the claim is
directed to a method or an apparatus. Br. 5—6. However, as the Examiner
recognized, it is irrelevant which particular statutory category the claimed
invention is directed to. See Final Act. 13—14. The Examiner’s rejection
was not based on the claim not being directed to a statutory category under
section 101; instead, the rejection as based on it being subject to the judicial
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exception to section 101. See Final Act. 2—3. Accordingly, whatever
statutory category the claims are directed to are not relevant to the analysis.
Accordingly, we sustain the Examiner’s rejection of claims 1 and 6—
18 under 35 U.S.C. § 101 as being directed to patentable-ineligible subject
matter.
Section 103 (Claims 1 and 7—18)
Appellant argues the Examiner erred in finding the prior art teaches
the need/offer limitation recited in claim 1. Br. 10—12. Specifically,
Appellant argues “that the feature of ‘need/ off is a unique key feature of
the present invention” and that “none of the cited prior art reference has
disclosed a feature of need/offer that is able to recite the limitations claimed
in claim 1 of the present application.” Id. at 12.
Although Appellant quotes from the claim and discusses the
importance of the need/offer function as discussed in the Specification,
Appellant offer no more than a general denial that the prior art contains the
limitations without discussing the specific findings made by the Examiner or
how the sections of the prior art cited by the fail to teach or suggest the
disputed limitation. A general denial that fails to address the Examiner's
findings is insufficient to be considered an argument for patentability. See
37 C.F.R. § 41.37(c)(l)(iv) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”); In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold
that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
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a naked assertion that the corresponding elements were not found in the
prior art.”). Accordingly, we are not persuaded that the Examiner erred.
Appellant further argues the Examiner erred in finding Brown teaches
various claim limitations because Brown does not recite the words
“‘locating’, ‘engaging’, ‘instructions’, ‘medium’ and so on.” Br. 15; see
also Br. 13—17. However, there is no requirement in an obviousness
analysis for the prior art to “contain a description of the subject matter of the
appealed claim in ipsissimis verbis.'1'’ In re May, 574 F.2d 1082, 1090
(CCPA 1978). Accordingly, we are not persuaded that the Examiner erred.
Moreover, although Appellant states that “[t]he Applicant has
carefully read the entire” Brown application, and contends that it does not
teach or suggest various limitations, the Appellant does not specifically state
how the Examiner’s fact finding was erroneous. As discussed above,
general denials are not sufficient to be an argument for patentability.
Finally, Appellant argues the Examiner erred in finding Brown
teaches an origination location and recited in the claims. Br. 17—21.
Specifically, Appellant argues that Examiner identifies Brown Figure 15,
which discusses a college attended, which is not the same as origin location.
Id.
The Examiner finds “Brown teaches in Figs. 8 and 15, a user profile,
with a plurality of fields which will include user data that include location
information and origin-related information.” Ans. 18; see also Final Act. 5—
7. The Examiner further finds that although “Brown may not disclose each
particular data element claimed in the instant application’s user profile,
Brown teaches a plurality of data to be collected from a user for the user
profile.” Ans. 18; see also Final Act. 5—7. The Examiner further determines
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that “[a]ny differences related merely to the meaning and information
conveyed through labels (i.e., the specific type of profile data) which does
not explicitly alter or impact the steps of the method does not patentably
distinguish the claimed invention from the prior art.” Ans. 18; see also Final
Act. 5—7; Ans 18—19 (discussing how Brown meets the claim limitation
under In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983)).
We are not persuaded by Appellant’s argument that the Examiner
erred. Our reviewing court guides that the patentability of an apparatus
claim “depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Marketing Int 7., Inc. v. Coolsavings.com, Inc., 289
F.3d 801, 809 (Fed. Cir. 2002). “It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations
omitted).
Because Appellant has not contested any of the specific differences
between the data manipulation recited in claim 1—using origin location data
to optimize interconnectivity—and the corresponding data manipulation
found in the cited references, the only purported differences between the
claim 1 and the prior art turns on the specific type of data used. Our
reviewing court has held that nonfunctional descriptive material cannot lend
patentability to an invention that would have otherwise been anticipated by
the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when descriptive
material is not functionally related to the substrate, the descriptive material
will not distinguish the invention from the prior art in terms of patentability);
King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
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(“[T]he relevant question is whether ‘there exists any new and unobvious
functional relationship between the printed matter and the substrate.’”)
(citations omitted); 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.”); Ex parte Mathias, 84 USPQ2d 1276,
1279 (BPAI 2005) (informative), aff’d, 191 Fed. App’x 959 (Fed. Cir. 2006)
(“[Nonfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art.”); Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), aff’d,
(Federal Circuit 2006-1003) (June 12, 2006) (“Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious.”). Although we will not disregard any claim limitations and
will assess the claimed invention as a whole, we will follow the Federal
Circuit’s guidance from the Gulack decision and will “not give patentable
weight to printed matter absent a new and unobvious functional relationship
between the printed matter and the substrate.” In re Lowry, 32 F.3d 1579,
1582 (Fed. Cir. 1994) (discussing Gulack).
“The first step of the printed matter analysis is the determination that
the limitation in question is in fact directed toward printed matter.” In re
Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Material is printed matter if
it is “claimed for what it communicates.” Id. at 850. Because the origin
location recited in claim 1 is being claimed for what it communicates about
the user, we find the user profile including origin location to be printed
material.
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If a claim in a patent application claims printed material, “one must
then determine if the matter is functionally or structurally related to the
associated physical substrate, and only if the answer is ‘no’ is the printed
matter owed no patentable weight.” Distefano, 808 F.3d at 851. In this
case, Appellant focuses on the difference between a college location and the
origin location and how they are different. See Br. 20. However, Appellant
does not argue that the prior art reference does not use the college location in
the same way as the claimed invention uses the origin location. This is
analogous to Curry, where we found the type of data to be nonfunctional
descriptive material when it “does not functionally change either the data
storage system or communication system used in the method of claim 81.”
84 USPQ2d at 1274 (BPAI 2005).
As we recognized in Curry, “if the prior art suggests storing a song on
a disk, merely choosing a particular song to store on the disk would be
presumed to be well within the level of ordinary skill in the art at the time
the invention was made.” Id. at 1275. Choosing the type of location—
whether college or origin—to use in social network program is no different.
Concluding otherwise would result not only in Appellant’s identified
origin location distinguishing over the prior art, but equally would
distinguish every other unique set of information for display on a package.
To give effect to Appellants’ argument, we would need to ignore our review
court’s concerns with repeated patenting. See King Pharm. Inc. v. Eon
Labs., Inc., 616 F3d 1267, 1279 (Fed. Cir. 2010) (“The rationale behind this
line of cases is preventing the indefinite patenting of known products by the
simple inclusion of novel, yet functionally unrelated limitations.”); cf. Ngai,
367 F.3d at 1339 (“If we were to adopt Ngai’s position, anyone could
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continue patenting a product indefinitely provided that they add a new
instruction sheet to the product.”). We decline to do so.
Accordingly, we sustain the Examiner’s rejection of claim 1 as
unpatentable under 35 U.S.C. § 103, along with the similar rejections of
claims 7—18, which are not argued separately.
Section 103 (Claim 6)
Similar to the argument discussed above for claim 1, Appellant
contends the Examiner erred in finding the combination of Brown and
Baldwin teach the additional limitation recited in dependent claim 6 relating
to the offer/need. Br. 22—30.
We are not persuaded by Appellant’s arguments that the Examiner
erred. Although Appellant focuses on how the recited feature works and its
advantages, Appellant does not address the sections of the prior art cited by
the Examiner. See Br. 22—30. Instead, Appellant appears to ignore the cited
sections and requests the Examiner “[t]o point out the location of the alleged
teaching in Brown and/ or Baldwin's prior art reference, which taught the
above identified limitations claimed in claim 6 of the present application.”
Br. 24.
However, the Examiner did identity the specific sections of the prior
art being relied on. See Final Act. 15—17 (citing Baldwin 2:19-25, 5:25—49,
6:59-61, 9:63—67, 30:32—37, Fig. 6); Adv. Act. 2—3 (citing same); Ans.
(citing same). By not discussing the specific sections that support the
Examiner’s fact findings, Appellant has not identified any errors in the
Examiner’s findings. “If an appellant fails to present arguments on a
particular issue — or, more broadly, on a particular rejection — the Board
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will not, as a general matter, unilaterally review those uncontested aspects of
the rejection.” Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
Therefore, we summarily sustain the Examiner’s rejection of claim 6
is unpatentable under 35 U.S.C. § 103.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1 and 6—18 under 35 U.S.C. § 101.
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1 and 6—18 under 35 U.S.C. § 103.
For the above reasons, we reverse the Examiner’s decisions rejecting
claims 10-15 and 17 under 35 U.S.C. § 112(b).
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(f).
AFFIRMED
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