Ex Parte Holt et al

Patent Trials and Appeals Board

Apr 9, 2019

11801799 - (D) (P.T.A.B. Apr. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/801,799 05/11/2007
146524 7590
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
04/10/2019
FIRST NAMED INVENTOR
Christopher L. Holt
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.
31547-358 / LEN 0081 IA 5581
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
04/10/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER L. HOLT and JOSEPH R. KELLY
Appeal2017-005754
Application 11/801,799 1
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges
LORIN, Administrative Patent Judge
DECISION ON APPEAL
An oral hearing was held on March 14, 2019.
STATEMENT OF THE CASE
Christopher Holt, et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 1, 5-13 and 18-27. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies Reed Technology and Information Services, Inc.,
as the real party in interest. App. Br. 2.
Appeal2017-005754
Application 11/801,799
THE INVENTION
Claim 25, reproduced below, is illustrative of the subject matter on
appeal.
25. A computer-implemented method comprising:
storing an office action issued by a patent Examiner in a
database of a computer;
extracting a statutory basis of rejection associated with the
office action;
indexing the office action with the statutory basis of rejection;
generating a graphical user interface comprising a statutory
basis of rejection user interface element associated with a statutory
basis of rejection search parameter, wherein the statutory basis of
rejection search parameter is indicative of a particular statutory basis
for which a claim in an office action may be rejected in the office
action;
receiving input indicative of a user selection of the statutory
basis of rejection user interface element;
generating a search query based on the statutory basis of
rejection search parameter associated with the statutory basis of
rejection user interface element;
executing the search query to search the database;
identifying the office action as satisfying the search query when
the statutory basis of rejection search parameter matches the statutory
basis of rejection with which the office action is indexed;
generating results that include the office action when the
selected statutory basis of rejection search parameter matches the
statutory basis of rejection with which the office action is indexed;
and
updating the graphical user interface to include the results.
2
Appeal2017-005754
Application 11/801,799
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Lee
Defelice
Slovak
Ritchey
Van Luchene
Vincent
US 2003/0220897 Al
US 2004/0193596 Al
US 2006/0129593 Al
US 2006/0190490 Al
US 2007/0219853 Al
WO 02/003250 Al
Nov. 27, 2003
Sep.30,2004
Jun. 15,2006
Aug. 24, 2006
Sep.20,2007
Jan. 10,2002
Iain Cockburn, et al., "Are All Patent Examiners Equal? The Impact
of Characteristics On Patent Statistics and Litigation Outcomes,"
NBER Working Paper Series, Working Paper 8980, National Bureau
of Economic Research, June 2002. ("Cockburn").
David Burnham & Susan Long, "Tracking Judges," Federal
Sentencing Reporter, Vol. 16, No. 1, pp. 26-30, 2003. ("Burnham")
United States Patent and Trademark Office, "USPTO Should Reassess
How Examiner Goals, Performance Appraisal Plans, and the Award
System Stimulate and Reward Examiner Production", Public Report
Sept. 2004. ("USPTO")
The following rejections are before us for review:
Claims 1, 5-13 and 18-27 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-10, 12, 14--18, 20, and 21 of co-pending Application No.
11/823,557.
Claims 1, 5-13 and 18-27 are rejected under 35 U.S.C. § 112(b) as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the inventors regard as their invention.
3
Appeal2017-005754
Application 11/801,799
Claims 1, 5-13 and 18-27 are rejected under 35 U.S.C. § 101 for
claiming patent-ineligible subject matter.
Claims 1 and 22-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Slovak, Cockburn, and Defelice.
Claims 5, 9-12, and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, and Van Luchene.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Slovak, Cockburn, Defelice, Van Luchene, and Burnham.
Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Slovak, Cockburn, Defelice, Van Luchene, and USPTO.
Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Slovak, Cockburn, Defelice, Van Luchene, and Vincent.
Claims 13 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, and Lee.
Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, and Ritchey.
Claim 25 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Slovak, Cockburn, Defelice, and Spencer.
Claim 26 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Slovak, Cockburn, Defelice, Spencer, and Lee.
Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Slovak, Cockburn, Defelice, Spencer, and Lee.
4
Appeal2017-005754
Application 11/801,799
ISSUES
Did the Examiner err in provisionally rejecting 1, 5-13 and 18-27 on
the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-10, 12, 14--18, 20, and 21 of co-pending
Application No. 11/823,557?
Did the Examiner err in rejecting claims 1, 5-13 and 18-27 under
35 U.S.C. § 112(b) as being indefinite for failing to particularly point out
and distinctly claim the subject matter which the inventors regard as their
invention.
Did the Examiner err in rejecting claims 1, 5-13 and 18-27 under
35 U.S.C. §101 for claiming patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1 and 22-24 under 35 U.S.C.
§ 103(a) as being unpatentable over Slovak, Cockburn, and Defelice?
Did the Examiner err in rejecting claims 5, 9-12, and 21 under
35 U.S.C. § 103(a) as being unpatentable over Slovak, Cockburn, Defelice,
and Van Luchene?
Did the Examiner err in rejecting claim 6 under 35 U.S.C. § 103(a) as
being unpatentable over Slovak, Cockburn, Defelice, Van Luchene, and
Burnham?
Did the Examiner err in rejecting claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Slovak, Cockburn, Defelice, Van Luchene, and
USPTO?
Did the Examiner err in rejecting claim 8 under 35 U.S.C. § 103(a) as
being unpatentable over Slovak, Cockburn, Defelice, Van Luchene, and
Vincent?
5
Appeal2017-005754
Application 11/801,799
Did the Examiner err in rejecting claims 13 and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Slovak, Cockburn, Defelice, and Lee?
Did the Examiner err in rejecting claims 19 and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Slovak, Cockburn, Defelice, and
Ritchey?
Did the Examiner err in rejecting claim 25 under 35 U.S.C. 103(a) as
being unpatentable over Slovak, Cockburn, Defelice, and Spencer?
Did the Examiner err in rejecting claim 26 under 35 U.S.C. 103(a) as
being unpatentable over Slovak, Cockburn, Defelice, Spencer, and Lee?
Did the Examiner err in rejecting claim 27 under 35 U.S.C. § 103(a)
as being unpatentable over Slovak, Cockburn, Defelice, Spencer, and Lee?
ANALYSIS
The provisional rejection of claims 1, 5-13 and 18-27 under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 1-10, 12, 14-18, 20, and 21 of co-pending Application No.
11/823,557.
Notwithstanding that the Appellants contest this rejection, we do not
reach it.
Ex parte Moncla, 95 USPQ2d 1884 (BP AI 201 O)(precedential) gives
panels flexibility to reach or not reach provisional obviousness-type double
patenting rejections. In Ex parte Jerg, (PTAB 2012) (informative),
[http://www.uspto.gov/ip/boards/bpai/decisions/inform/fd2011000044.pdfJ,
the panel declined to reach provisional obviousness-type double patenting
rejections because the claims had changed since the rejection was initially
made. That is the case here.
6
Appeal2017-005754
Application 11/801,799
The rejections were initially made in the first office action mailed Jul.
13, 2010. The claims have since been amended, for instance, via an
amendment filed Nov. 22, 2010. We decline to reach the provisional
obviousness-type double patenting rejection because "the claims now relied
upon are not clearly the same as those originally considered by the Examiner
when the rejections were initially made" (Id., pp. 5-6).
The rejection of claims 1, 5-13 and 18-27 under 35 US.C. § 112(b) as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the inventors regard as their invention.
The Examiner states:
Claim 1 recites "a user interface system generating selectable
user interface elements for receiving user selection of search
parameters"" "identifying search parameters as identifying a statutory
basis of a rejection in the substantive portion of the office actions" and
"searching the search parameters". It is unclear if the search
parameters are limited to the statutory basis of rejection, or if there are
other search parameters identified and searched, the statutory basis of
rejection merely one of the search parameters. For examination
purposes, the examiner interprets the claim as including other search
parameters, especially in light of claim 13 which further defines a
search parameter that is not a statutory basis of rejection. Claims 5-13
and 18-24 are rejected because they depend from claim 1.
Final Act. 9-10.
We agree with the Appellants:
Appellant asserts that the search parameters are not merely limited to
the statutory basis of rejection. Rather, the plain language of the
claim, "identifying search parameters as identifying a statutory basis
of a rejection in the substantive portion of the office actions", simply
means that those search parameters which identify a statutory basis of
a rejection are themselves identified from among other search
parameters. The Office Action appears to acknowledge this, by stating
7
Appeal2017-005754
Application 11/801,799
that 11 [ f]or examination purposes, the examiner interprets the claim as
including other search parameters, especially in light of claim 13
which further defines a search parameter that is not a statutory basis of
rejection. 11 By the language of the claim, along with the interpretation
of the Examiner, Appellant asserts that claim 1 is definite.
App. Br. 10.
The Examiner has made a case for the breadth of claim 1, not
indefiniteness. "However, '[b ]readth is not indefiniteness."' In re Robins,
429 F.2d 452,458 (CCPA 1970)(citations omitted). Cf In re Goffe, 526
F.2d 1393, 1398 (CCP A 1975) ("The mere fact that the claims cover a large
number of possible process steps and imaging member materials does not in
and of itself make the claims indefinite.") Even so, as the Appellants point
out, the Examiner concedes the claim is broader than the scope the Examiner
initially articulates it could be.
For the foregoing reasons, the rejection is not sustained.
The rejection of claims 1, 5-13 and 18-27 under 35 US.C. §101 for
claiming patent-ineligible subject matter.
The Appellants argued these claims as a group. See App. Br. 10-21.
We select claim 25 as the representative claim for this group, and the
remaining claims 1, 5-13 and 18-24, 26, and 27 stand or fall with claim 25.
37 C.F.R. § 4I.37(c)(l)(iv).
Preliminary comment
The Appellants refer to "recent USPTO guidance on patent eligible
subject matter" (App. Br. 10) that was effective at the time the Appeal Brief
was filed (Nov. 16, 2016) as well as the "Deputy Commissioner's Memo
8
Appeal2017-005754
Application 11/801,799
from November 2, 2016 entitled 'Recent Subject Matter Eligibility
Decisions"' (Reply Br. 6).
That guidance and memo have been superseded by the 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019),
hereinafter "2019 Revised 101 Guidance". Id. at 51 ("Eligibility-related
guidance issued prior to the Ninth Edition, R---08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.")
Accordingly, our analysis will not address the sufficiency of the
Examiner's rejection against said earlier guidance and memo.
Rather, our analysis will comport with the 2019 Revised 101
Guidance.
Introduction
35 U.S.C. § 101 provides that "[w]hoever 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."
In that regard, claim 25 covers a "process" and is thus, statutory
subject matter for which a patent may be obtained. 2 This is not in dispute.
However, the § 101 provision "contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208,216
2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether "a claim is to a statutory category." Id. at 53.
See also sentence bridging pages 53 and 54 ("consider[] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. 101 .... ").
9
Appeal2017-005754
Application 11/801,799
(2014). (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589 (2013)).
In that regard, notwithstanding claim 25 covers statutory subject
matter, the Examiner has raised a question of patent-eligibility on the
ground that claim 25 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Id. at 217.
Alice step one - the "directed to" inquiry
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept." Id. at 218
( emphasis added).
The Examiner determined that claim 25 is "directed towards the
concept of aggregating data, extracting search parameters from the data,
receiving search parameters, formulating a query, searching documents
matching the search query, retrieving search results, and displaying search
results." Final Act. 12-13.
The Appellants contend that claim 10 is
directed to specific applications of computer-implemented patent data
accessing systems and computer-implemented methods of providing
information to new and useful ends. Such computer-implemented
systems and methods are inextricably tied to computer technology and
distinct from the types of concepts typically found as abstract.
App. Br. 12. The Appellants further argue that
[ s ]imilar to the claims at issue in Enfzsh, which are directed to
steps of configuring a computer memory in accordance with a self-
referential table, the claims of the present application are not claims
"where a general-purpose computer components are added post-hoc
10
Appeal2017-005754
Application 11/801,799
to a fundamental economic or mathematical equation." Id.
Particularly, the claims of the present application solve a problem in
the software arts ( existing programs do not provide a user with an
ability to gather information on an examiner-specific basis (see
present application at page 1 line 1 - page 2 line 21) that affect a real
world result (users' inability to have information regarding an
examiner with whom they are interacting (see id. at page 2 line
15 - page 2 line 21) ). As such, the claims are patent eligible as were
the claims held patent eligible in Enfzsh.
App. Br. 12-13.
Accordingly, there is a dispute over what claim 25 is directed to. Is it
directed to "the concept of aggregating data, extracting search parameters
from the data, receiving search parameters, formulating a query, searching
documents matching the search query, retrieving search results, and
displaying search results" (Final Act. 12-13) or "solv[ing] a problem in the
software arts" (App. Br. 12)?
Claim Construction3
3 "[T]he important inquiry for a § 101 analysis is to look to the claim."
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). "In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
'claim construction is not an inviolable prerequisite to a validity
determination under § 101.' However, the threshold of§ 101 must be
crossed; an event often dependent on the scope and meaning of the claims."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347--48
(Fed. Cir. 2015).
11
Appeal2017-005754
Application 11/801,799
We consider the claim as a whole 4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the specification 6 at the time of filing.
Claim 25 involves a computer ("computer-implemented method"), a
database ("a database of a computer"); a GUI ("a graphical user interface");
and a GUI element ("statutory basis of rejection user interface element").
These elements are generic. 7
4 "In determining the eligibility of respondents' claimed process for patent
protection under § 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
5 2019 Revised 101 Guidance, page 53, footnote 14 (If a claim, under its
broadest reasonable interpretation .... ") ( emphasis added.)
6 "First, it is always important to look at the actual language of the claims .
. . . Second, in considering the roles played by individual limitations, it is
important to read the claims 'in light of the specification."' Smart Systems
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed.
Cir. 2017) (J. Linn, dissenting in part and concurring in part), citing Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among
others.
7 Cf Intellectual Ventures I LLC v. Capital One Financial Corporation, 850
F.3d 1332, 1341 (Fed. Cir. 2017) ("the claims recite [] a generic computer
element-a processor- ... "); Planet Bingo, LLC v. VKGS LLC, 576 Fed.
Appx. 1005, 1008 (Fed. Cir. 2014) (nonprecedential). ("the claims at issue [
] require 'a computer with a central processing unit,' 'a memory,' 'an input
and output terminal,' 'a printer,' in some cases 'a video screen,' and 'a
program ... enabling' the steps of managing a game of bingo ... the claims
recite a generic computer implementation of the covered abstract idea.");
and, Smariflash LLC v. Apple Inc., 680 Fed. Appx. 977, 984 (Fed. Cir. 2017)
12
Appeal2017-005754
Application 11/801,799
Only the "storing ... in a database", "generating a graphical user
interface", "executing a search query to search the database," and "updating
the graphical user interface" steps involve a device; that is, a database and a
GUI, respectively.
We reasonably broadly construe claim 25 as being directed to a data-
gathering and displaying scheme comprising storing information in a generic
database, displaying information on a generic user interface, searching the
generic database, and updating the information displayed on the generic user
interface, implemented on a generic computer system.
The Abstract Idea8
We reproduce claim 25, identifying in italics the limitations we
believe recite an abstract idea. 9
25. A computer-implemented method comprising:
storing an office action issued by a patent Examiner in a
database of a computer;
extracting a statutory basis of rejection associated with the
office action;
(nonprecedential) ("we find here that 'interfaces,' 'program stores,' and
'processors' are all generic computer components.")
8 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines "whether a claim is 'directed to' a judicial exception," such as an
abstract idea. Step 2A is two prong inquiry.
9 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. "To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the claim
under examination (individually or in combination) that the Examiner
believes recites an abstract idea .... " Id. at 54.
13
Appeal2017-005754
Application 11/801,799
indexing the office action with the statutory basis of rejection;
generating a graphical user interface comprising a statutory
basis of rejection user inteiface element associated with a statutory
basis of rejection search parameter, wherein the statutory basis of
rejection search parameter is indicative of a particular statutory basis
for which a claim in an office action may be rejected in the office
action;
receiving input indicative of a user selection of the statutory
basis of rejection user interface element;
generating a search query based on the statutory basis of
rejection search parameter associated with the statutory basis of
rejection user interface element;
executing the search query to search the database;
identifying the office action as satisfying the search query when
the statutory basis of rejection search parameter matches the
statutory basis of rejection with which the office action is indexed;
generating results that include the office action when the
selected statutory basis of rejection search parameter matches the
statutory basis of rejection with which the office action is indexed;
and
updating the graphical user interface to include the results.
The recited italicized limitations, individually and collectively,
describe mental processes; even more so for the "extracting," "indexing,"
"receiving input," "generating a search query," "identifying the office
action," and "generating results" steps, which are not tied to any apparatus.
These concepts are akin to making observations and evaluations that can be
performed in the human mind and thus are matters that fall within the
14
Appeal2017-005754
Application 11/801,799
"Mental processes" enumerated grouping of abstract ideas, both as to each
claim limitation and the claim as a whole. 10
Improvement In the Functioning of a Computer 11 (Appellants'
Argument)
The Examiner's characterization of what the claim is directed to is
similar to our own. Presumably, the Appellants would challenge our
characterization in a way similar to the Appellants' challenge of the
Examiner's characterization as set forth in the briefs.
10 This corresponds to Prong One ["Evalutate Whether the Claim Recites a
Judicial Exception"] (b) of Step 2A of the 2019 Revised 101 Guidance. "To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: ... (b) determine whether the identified limitation( s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance]." Id. at 54. This case implicates subject matter
grouping "( c )":
( c) Mental processes - concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Id. at 52.
11 This corresponds to Prong Two ["If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application"] of Step 2A of the 2019 Revised 101 Guidance. "A
claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception." Id. at 54. One
consideration, implicated here, that is "indicative that an additional element
( or combination of elements) may have integrated the exception into a
practical application" (id., at 55) is if"[ a ]n additional element reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field" (id. at 55).
15
Appeal2017-005754
Application 11/801,799
We have reviewed the record and are unpersuaded as to error in our or
the Examiner's characterization of what claim 25 is directed to.
The Appellants argue claim 25 is
directed to specific applications of computer-implemented patent data
accessing systems and computer-implemented methods of providing
information to new and useful ends. Such computer-implemented
systems and methods are inextricably tied to computer technology and
distinct from the types of concepts typically found as abstract.
App. Br. 12. Citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016), the Appellants argue that "claims directed to a specific
implementation of a solution to a problem in the software arts are not
directed to an abstract idea." App. Br. 12.
Similar to the claims at issue in Enfish, which are directed to
steps of configuring a computer memory in accordance with a self-
referential table, the claims of the present application are not claims
"where a general-purpose computer components are added post-hoc
to a fundamental economic or mathematical equation." Id.
Particularly, the claims of the present application solve a problem in
the software arts ( existing programs do not provide a user with an
ability to gather information on an examiner-specific basis (see
present application at page 1 line 1 - page 2 line 21) that affect a real
world result (users' inability to have information regarding an
examiner with whom they are interacting (see id. at page 2 line
15 - page 2 line 21 ). As such, the claims are patent eligible as were the
claims held patent eligible in Enfzsh.
App. Br. 12-13.
We are unpersuaded that claim 25 is directed to a problem in the
software arts. To the extent that the Appellants mean to argue that the recited
steps functionally improve the "database" and/or "graphical user interface",
it is true that specific asserted improvements in computer capabilities, when
16
Appeal2017-005754
Application 11/801,799
claimed, can render claimed subject matter not directed to an abstract idea.
Cf McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316
(Fed. Cir. 2016) ("When looked at as a whole, claim 1 is directed to a
patentable, technological improvement over the existing, manual 3-D
animation techniques.") But there is insufficient evidence in the record
before us that the claimed subject matter reflects any such improvement.
"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 Texas 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 Enfzsh, 822 F.3d at 1335. See also Ancora Techns., 908 F.3d
at 1347:
We examine the patent's "'claimed advance' to determine
whether the claims are directed to an abstract idea." Finjan, Inc. v.
Blue Coat System, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018). "In
cases involving software innovations, this inquiry often turns on
whether the claims focus 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."'
Id. (quoting Enfzsh, 822 F.3d at 1335-36); see BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1285-86 (Fed. Cir. 2018).
Computers are improved not only through changes in hardware;
"[ s ]oftware can make non-abstract improvements to computer
technology .... "Enfish, 822 F.3d at 1335; see Finjan, 879 F.3d at
1304. We have several times held claims to pass muster under Alice
step one when sufficiently focused on such improvements.
The Specification's description of the problem and solution shows the
advance over the prior art by the claimed invention is in how to gather
17
Appeal2017-005754
Application 11/801,799
certain information from available resources, not on any improvement in
computer functionality ..
The Specification states that "[i]t is natural for a person who is tasked
with influencing a decision-maker to be curious about the decision-maker's
background." 1 : 10-11.
Under the circumstances, it is natural for a person who is tasked
with interacting with a patent examiner to be curious about the
examiner's background and/or previous decisions. Unfortunately, at
least in the United States, there is currently no convenient way to
efficiently gather information on an examiner-specific basis. In fact, it
is not uncommon for an inventor or an advocate to know very little
about the examiner with whom they are interacting during the process
of moving a patent application through the patenting process.
2:15-21. To overcome this lack of information about a patent examiner's
decision-making process, "[a] patent Examiner information accessing
system is [provided] for accessing patent Examiner information from a
Patent and Trademark Office, or other, database. A search system is
provided so that a user can search information aggregated by the Examiner
information accessing system." 2:23-26. The search system itself is said to
comprise various well known computer components, such as the USPTO
database. See Fig. 1 A and 4: 13-15 ("The data search system 118 may
illustratively be a conventional search engine or another type of searching
system that searches through aggregated Examiner data 106.") The
Specification describes using said system to obtain certain information about
a Patent Examiner's work product.
Thus, the heart of the invention is in the data-gathering/displaying
scheme by which certain patent examiner-specific information is gathered
(i.e., the steps recited in claim 25), not the "database" or "graphical user
18
Appeal2017-005754
Application 11/801,799
interface" which are plainly generic and do not change upon implementation
of said scheme. Cf Intellectual Ventures I LLC v. Erie Indemnity Company,
850 F.3d at 1328 ("the heart of the claimed invention lies in creating and
using an index to search for and retrieve data ... an abstract concept.")
We have carefully reviewed the Specification but can find no
disclosure of a technical improvement, let alone to the devices that are
employed to implement the claimed scheme, i.e., the "database" and
"graphical user interface". There is no suggestion in the Specification that
the claimed subject matter means to solve a problem in the software arts as
the Appellants have argued.
The Specification attributes no special meaning to "storing" or
"executing a search query" with respect to the database and no special
meaning to "generating" and "updating" with respect to the GUI. In our
view, consistent with the Specification, these are common processing
functions one of ordinary skill in the art at the time of the invention would
have associated with generic databases and GUis. Cf OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015):
Beyond the abstract idea of offer-based price optimization, the claims
merely recite "well-understood, routine conventional activit[ies],"
either by requiring conventional computer activities or routine data-
gathering steps. Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at
1294) (alterations in original) .... For example, claim 1 recites
"sending a first set of electronic messages over a network to devices,"
the devices being "programmed to communicate," storing test results
in a "machine-readable medium," and "using a computerized system
... to automatically determine" an estimated outcome and setting a
price. Just as in Alice, "all of these computer functions are 'well-
understood, routine, conventional activit[ies]' previously known to the
industry." Alice, 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)
19
Appeal2017-005754
Application 11/801,799
(alterations in original); see also buySAFE[, Inc. v. Google, Inc}, 765
F.3d [1350,] 1355 [(Fed. Cir. 2014)] ("That a computer receives and
sends the information over a network-with no further specification-
is not even arguably inventive.").
Claim 25 describes a method whereby information stored in a
database is searched and based on the information retrieved, information
displayed on a GUI is updated. The database and GUI are merely generic,
distinguishing over other generic databases and user interfaces by certain
types of information stored and are searched for, and displayed and updated,
respectively. But that informational content difference alone is not
patentably consequential. This is so because "[ c ]laim limitations directed to
the content of information and lacking a requisite functional relationship are
not entitled to patentable weight because such information is not patent
eligible subject matter under 35 U.S.C. § 101." Praxair Distribution, Inc. v.
Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir.
2018).
The data-gathering and displaying scheme as claimed does not ask the
"database" and user interface to go beyond its common functions. While
instructions a computer must follow to invoke the performance of certain
steps can be patentably significant (see Enfzsh, LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016) and Ancora Technologies, Inc. v. HTC America,
Inc., 908 F.3d 1343 (Fed. Cir. 2018)), here the instant record does not
sufficiently support the view that the recited steps are caused to be
performed by computer-executable instructions having a non-generic effect
on the "database" and/or GUI. To the contrary, the record supports viewing
the "database" and GUI as themselves amounting to a mere instruction to
implement the recited data-gathering and displaying scheme on a generic
20
Appeal2017-005754
Application 11/801,799
computer. Cf Alice 573 U.S. at 225-26 ("Instead, the claims at issue
amount to 'nothing significantly more' than an instruction to apply the
abstract idea of intermediated settlement using some unspecified, generic
computer.")
Rather than being directed to any specific asserted improvement in
computer capabilities, the record supports the view that the claimed subject
matter is directed to a data gathering and displaying scheme comprising
receiving a particular search request, filtering content in a database to
identify certain information, and presenting the identified information for
review, using a generic processor and database as tools. 12
The claim provides no additional structural details 13 that would
distinguish the claimed computer, database, GUI, and GUI element from
those that were well known as being generic at the time the application was
filed.
12 See the 2019 Revised 101 Guidance at 55:
The courts have also identified examples in which a judicial exception
has not been integrated into a practical application:
• An additional element merely recites the words "apply it" ( or an
equivalent) with the judicial exception, or merely includes
instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea;
13 Cf Move, Inc. v. Real Estate Alliance Ltd., 721 Fed. Appx. 950, 954 (Fed.
Cir. 2018) (Nonprecedential). "Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court."
21
Appeal2017-005754
Application 11/801,799
Rather, claim 25 describes them functionally, by describing certain
resulting steps.
First, claim 25 calls for "storing an office action issued by a patent
Examiner in a database of a computer." In this step, the database is used to
store a certain type of information, i.e., "an office action issued by a patent
Examiner." Databases were known to store information.
Second, claim 25 calls for "extracting a statutory basis of rejection
associated with the office action." This step is not attached to any device.
Extracting information can be performed mentally.
Third, claim 25 calls for "indexing the office action with the statutory
basis of rejection." This step is not attached to any device. Indexing (i.e.,
making an indication) can be performed mentally.
Fourth, claim 25 calls for "generating a graphical user interface
comprising a statutory basis of rejection user interface element associated
with a statutory basis of rejection search parameter, wherein the statutory
basis of rejection search parameter is indicative of a particular statutory basis
for which a claim in an office action may be rejected in the office action."
This step calls for generating a GUI but is reasonably broadly construed to
mean displaying information. Neither the claim nor the specification
provides any details about the GUI or how to generate it. The Specification
provides examples of GUis, but they simply show the display of certain
information. See e.g., Fig. 4 which shows a "user interface" (508) (Spec.
15:11).
22
Appeal2017-005754
Application 11/801,799
\VBAT \VOOLD YOU LlK.E TO DO REL<\TIVE TO
EXAMINER/ART 1:TNTT ...................... !
o ReYic:w Examiner Bio,!nfo
o Review Pcrfomrn.rn;.1:; Statistics
o Search Office Acuons
o Semd1 Resp@s!l, 10 Office Actfom
o Request Conm1Jtati.cm
FIG. 4
Fig. 4 depicts a user interface (508).
508
User interfaces to display information were conventional at the time of
filing. Here, as reflected by Fig. 4, the "generating" refers to the displaying
of certain information on the user interface, not the actual physical
manufacturing of the interface itself.
Fifth, claim 25 calls for "receiving input indicative of a user selection
of the statutory basis of rejection user interface element." This step is not
attached to any device. Receiving input can be performed mentally.
Sixth, claim 25 calls for "generating a search query based on the
statutory basis of rejection search parameter associated with the statutory
basis of rejection user interface element." This step is also not attached to
any device. Generating a search query based on particular information can
be performed mentally.
Seventh, claim 25 calls for "executing the search query to search the
database." Here the database is used for a search. It is generic. See
23
Appeal2017-005754
Application 11/801,799
Intellectual Ventures I LLC v. Erie Indemnity Company, 850 F.3d 1315 (Fed.
Cir. 21017).
Eighth, claim 25 calls for "identifying the office action as satisfying
the search query when the statutory basis of rejection search parameter
matches the statutory basis of rejection with which the office action is
indexed." This step is also not attached to any device. Identifying particular
information can be performed mentally.
Ninth, claim 25 calls for "generating results that include the office
action when the selected statutory basis of rejection search parameter
matches the statutory basis of rejection with which the office action is
indexed." This step is also not attached to any device. Generating results
based on particular information can be performed mentally.
And, tenth, claim 25 calls for "updating the graphical user interface to
include the results." This step calls for changing the information on the GUI
(see e.g., Fig. 4 reproduced above). Changing information on a GUI was a
generic computer function at the time of filing.
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration into a practical application.
We have considered all the Appellants' arguments challenging the
Examiner's determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner's determination that claim 25 is directed to an abstract idea.
24
Appeal2017-005754
Application 11/801,799
Alice step two-Does the Claim Provide an Inventive Concept? 14
Step two is "a search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 573 U.S. at 221 ( quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined that:
claim 25 recites the additional elements of a "database", "computer",
and "graphical user interface". These components are recited at a high
level of generality and are recited to perform functions that are well-
understood, routine and conventional. The functions storing,
extracting, indexing, generating, receiving, generating, executing,
identifying, generating, and updating are functions that have been
identified as well-understood, routine and conventional. ... The claim
elements, considered separately, amount to no more than applying an
abstract idea using some unspecified generic computer and in which
each step does no more than require a generic computer to perform
generic computer functions. The claim, when considered as a whole,
does not amount to more than the limitations considered separately
but merely recites the application of an abstract idea to a generic
computing environment. Therefore, claim 25 does not recite
significantly more than the abstract idea.
Final Act. 15.
14 This corresponds to Step 2B of the 2019 Revised 101 Guidance (seep.
56).
[I]f a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).
25
Appeal2017-005754
Application 11/801,799
We addressed the Appellants' argument as to purported specific
asserted improvements in computer capabilities under step one of the Alice
framework. This is consistent with the case law. See Ancora, 908 F.3d at
134 7 ("We have several times held claims to pass muster under Alice step
one when sufficiently focused on such improvements.") Such an argument
can also challenge a determination under step two of the Alice framework -
as the Appellants have done here (see App. Br. 17-21; e.g., 20: "a solution
to a technological problem"). See buySAFE, 765 F.3d at 1354--55.
"[R ]ecent Federal Circuit jurisprudence has indicated that eligible subject
matter can often be identified either at the first or the second step of the
Alice/Mayo [framework]." 2019 Revised 101 Guidance at 53; see also id. n.
17.
Be that as it may, we are unpersuaded that claim 25 presents an
element or combination of elements indicative of a specific asserted
improvement in computer capabilities, thereby rendering the claimed subject
matter sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the data-gathering scheme itself.
We have reviewed the Specification and, as explained above, we can
find no suggestion of any technical improvements associated with the
performance of the recited steps. The Specification is focused on obtaining
certain patent examiner-related information, not on the "database" or
"graphical user interface." Rather than focusing on the "database" and/or
"graphical user interface," the Specification focuses on the information to be
retrieved, the database and user interface acting merely as conduits for its
retrieval. Cf In re TL! Communications LLC Patent Litigation, 823 F .3d at
26
Appeal2017-005754
Application 11/801,799
612 (Fed. Cir. 2016) ("Put differently, the telephone unit itself is merely a
conduit for the abstract idea of classifying an image and storing the image
based on its classification. Indeed, the specification notes that it 'is known'
that 'cellular telephones may be utilized for image transmission,' [U.S.
Patent 6,038,295,] col. 1 11. 31-34, and existing telephone systems could
transmit pictures, audio, and motion pictures and also had 'graphical
annotation capability,"' id. at col. 111. 52-59.")
The Appellants cite DDR Holding LLC, 773 F.3d 1245 (Fed. Cir.
2014) as matching this case. App. Br. 17. We disagree. There "the claims at
issue [ ] specify how interactions with the Internet are manipulated to yield a
desired result-a result that overrides the routine and conventional sequence
of events ordinarily triggered by the click of a hyperlink," Id., at 1258.
Unlike in that decision, here no improvement in computer functionality over
what is conventional has been shown.
We are unpersuaded that the record supports interpreting the steps
recited in the claim as resulting in an improved software as the Appellants
have argued. As discussed above, databases and graphical user interfaces
were notoriously well-known, and the recited steps they perform ask
nothing more of them than to use them for their commonly-associated
information-processing functions. Much like the "data storage unit" and
"computer, coupled to said storage unit" in the claims of Alice (U.S. Patent
7,149,720, claim 1), "the claims here do [not do] more than simply instruct
the practitioner to implement the abstract idea[ ... ] on a generic computer."
Alice, 573 U.S. at 225.
27
Appeal2017-005754
Application 11/801,799
For the reasons discussed above, we are unpersuaded that the record
supports interpreting the steps recited in the claim as yielding any
improvement in technology.
We cited various decisions that indicate that the claimed elements
"database" and "graphical user interface" are conventional. In doing so, we
have followed "Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)]," USPTO Memorandum, Robert
W. Bahr, Deputy Commissioner For Patent Examination Policy, April 19,
2018 ( the "Berkheimer Memo")).
The court in Berkheimer held that "[t]he patent eligibility inquiry may
contain underlying issues of fact." Berkheimer, 881 F.3d at 1365 (quoting
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016) ("The§ 101 inquiry 'may contain underlying factual
issues."')). But the court also held that "[ w ]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
law." Id. at 1368 (emphasis added). This qualification has been
subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires
that summary judgment be denied. In Berkheimer, there was
such a genuine dispute for claims 4--7, but not for claims 1-3
and 9 . . . . [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
28
Appeal2017-005754
Application 11/801,799
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371-73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en bane, May 31, 2018); see also Aatrix Software, Inc.
v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018) ("A
factual allegation or dispute should not automatically take the determination
out of the court's hands; rather, there needs to be justification for why
additional evidence must be considered-----the default being a legal
determination."). Here, the case law indisputably shows the claimed
"database" and "graphical user interface" were conventional at the time of
filing. Accordingly, no genuine issue of material fact exists as to the well-
understood, routine, or conventional nature of the claimed elements
"database" and "graphical user interface" as claimed.
Finally, as to the question of preemption, the Appellants assert "that
the pending claims, which recite specific applications of computer-
implemented patent data accessing systems and computer-implemented
methods of providing information that all include a number of detailed and
specific features, do not preempt basic tools of science or technology." App.
Br. 13.
With respect to the pre-emption concern, "[ w ]hat matters is whether a
claim threatens to subsume the full scope of a fundamental concept, and
when those concerns arise, we must look for meaningful limitations that
prevent the claim as a whole from covering the concept's every practical
application." CLS Bank Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281
(Fed. Cir. 2013) (Lourie, J., concurring). Pre-emption is not a separate test.
29
Appeal2017-005754
Application 11/801,799
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted with
every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather, the
animating concern is that claims should not be coextensive with a
natural law, natural phenomenon, or abstract idea; a patent-eligible
claim must include one or more substantive limitations that, in the
words of the Supreme Court, add "significantly more" to the basic
principle, with the result that the claim covers significantly less. See
Mayo 132 S. Ct. at 1294. Thus, broad claims do not necessarily raise
§ 101 preemption concerns, and seemingly narrower claims are not
necessarily exempt.
Id. See also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
13 79 (Fed. Cir. 2015) ("[ w ]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. "Where a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, [] preemption concerns
are fully addressed and made moot." Ariosa Diagnostics, 788 F.3d at 1379.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 25 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
We have considered all of the Appellants' remaining arguments
(including those made in the Reply Brief) and find them unpersuasive.
We note the Appellants' discussion of independent claim 1 (App. Br.
19). However, the discussion simply repeats what claim 1 recites and
30
Appeal2017-005754
Application 11/801,799
generally argues for its patent-eligibility. A general allegation that claimed
subject matter is patent-eligible is no more than merely pointing out the
claim limitations. A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.
37 C.F.R. 4I.37(c)(l)(iv).
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 25, and claims 1, 5-13 and 18-24,
26, and 27 which stand or fall with claim 25, are directed to an abstract idea
and do not present an "inventive concept," we sustain the Examiner's
conclusion that they are directed to patent-ineligible subject matter for being
judicially-excepted from 35 U.S.C. § 101. Cf LendingTree, LLC v. Zillow,
Inc., 656 Fed. Appx. 991, 997 (Fed. Cir. 2016) ("We have considered all of
Lending Tree's remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an 'inventive concept,' we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101."); see, e.g.,
OIP Techs., 788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1098 (Fed. Cir. 2016).
The rejection of claims 1 and 22-24 under 35 USC§ 103(a) as being
unpatentable over Slovak, Cockburn, and Defelice.
Claim 1 calls for "the data aggregation system identifying search
parameters as identifying a statutory basis of a rejection in the substantive
portion of the office actions and storing the search parameters identified."
The Examiner states that this claim limitation is disclosed in Slovak
31
Appeal2017-005754
Application 11/801,799
at [0133-142] ("each night, new case data is obtained from the courts
(step 10). Case data can be obtained from the courts by automated
"dialer" programs, via the Internet web sites of the courts, or by dialup
facilities provided by the courts, or can be delivered by the courts.
The new case data obtained from the courts are captured and stored on
a case-by-case basis as text on a host server. New case data obtained
from some courts is already parsed into data fields. In the case of new
case data that is not already parsed, a parsing program reads these data
and parses (separates) the data into component data fields (step 20).
These parsed data are then stored in a database in a series of database
tables that are queried when Strategic Profiles are generated (step 30).
These tables are as follows: Docket table-contains basic information
about the case ( court, docket number, nature of suit, date filed, statute,
cause of action, etc.)"; other tables include a Litigant Table, a Judge
Table, and Attorney Table, where the examiner interprets these
identified case data are search parameters since they are queried when
profiles are generated).
Final Act. 18-19.
The Appellants disagree. "[NJ one of these portions of Slovak teach or
fairly suggest the identifying search parameters which themselves in tum
identify anything, much less a statutory basis of a rejection in the substantive
portion of the office actions and storing the search parameters identified."
App. Br. 23.
We agree. The difficulty with the cited disclosure is that it simply
describes parsing data and storing the parsed data in a database. While the
data can be parsed (separated) into component data fields and queried, said
Slovak disclosure does not disclose "identifying search parameters as
identifying" a certain type of information and storing those parameters, as
claimed. Disclosure of information that can be queried is alone insufficient
to meet the claim requires; that is, identifying search parameters that
themselves identify other information. Furthermore, the disclosed parsed
32
Appeal2017-005754
Application 11/801,799
data are not search parameters. The parsed data are the subject of a search
rather than parameters that determine the search. There is insufficient
explanation showing how the parsed data of Slovak would lead one to
identify search parameters as identifying certain information as claimed.
The rejection of independent claim 1 is not sustained.
We reach the same conclusion for the rejection of dependent claims
22-24. See In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988):
Claims 62, 68, 69, 79, 85 and 86 relate to the oxygen-rich flame
conversion means of the claimed invention. These "flame" claims
depend from either apparatus claim 60 or method claim 77.
Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonobvious. Hartness
Int'!, Inc. v. Simplimatic Eng'g Co., 819 F.2d 1100, 1108, 2 USPQ2d
1826, 1831 (Fed. Cir. 1987); In re Abele, 684 F.2d 902,910,214
USPQ 682, 689 (CCPA 1982); see also In re Sernaker, 702 F.2d 989,
991,217 USPQ 1, 3 (Fed. Cir. 1983). In view of our conclusion that
claims 60 and 77 are nonobvious, the dependent "flame" claims are
also patentable.
The rejection of claims 5, 9-12, and 21 under 35 US.C. § 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, and Van Luchene.
The rejection of claim 6 under 35 US.C. § 103(a) as being unpatentable
over Slovak, Cockburn, Defelice, Van Luchene, and Burnham.
The rejection of claim 7 under 35 US.C. § 103(a) as being unpatentable
over Slovak, Cockburn, Defelice, Van Luchene, and USPTO.
The rejection of claim 8 under 35 US.C. § 103(a) as being unpatentable
over Slovak, Cockburn, Defelice, Van Luchene, and Vincent.
The rejection of claims 13 and 18 under 35 US.C. § 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, and Lee.
The rejection of claims 19 and 20 under 35 US.C. § 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, and Ritchey.
33
Appeal2017-005754
Application 11/801,799
These rejections are directed to claims dependent on claim 1, whose
rejection we have reversed above. For the same reasons, we will not sustain
the rejections of the claims here rejected over the cited prior art. Cf In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious. ").
The rejection of claim 25 under 35 US.C. 103(a) as being unpatentable over
Slovak, Cockburn, Defelice, and Spencer.
The Appellants observe that "[a]s a preliminary matter, although
Slovak is referenced in the rejection heading, Slovak is not actually utilized
in this rejection." App. Br. 28. That is an accurate observation.
Be that as it may, we are unpersuaded as to error in the rejection of
claim 25 over the cited prior art combination.
The Appellants challenge the rejection on the ground that the claimed
process involves a certain content of information that the prior art does not
disclose. For example, claim 25 calls for "storing an office action issued by a
patent Examiner in a database of a computer." The Appellants argue that
Defelice does not disclose an office action issued by a patent Examiner.
App. Br. 29. Rather, Defelice discloses "documents within [a] law firm's
database." Para. 38 (as cited by the Examiner, Final Act. 47). The Appellants
focus on the fact that claim 25 requires "an office action issued by a patent
Examiner" and "a statutory basis of rejection associated with the office
action" and argue that these limitations should be accorded patentable
weight. App. Br. 32-33.
34
Appeal2017-005754
Application 11/801,799
The argument is unpersuasive as to error in the rejection because the
limitations in question are limited to claiming the content of the information.
When it is a matter claimed for what it communicates, it is properly
characterized as printed matter. Printed matter is not given patentable
weight. The argued-over distinction between the Appellants' "office action
issued by a patent Examiner" and Defelice' s legal documents in terms of the
type of content the database stores is a distinction over the content of the
information stored and as such is patentably inconsequential. Cf In re
DiStefano, No. 2015-1453 (Fed. Cir. 2015). See also In re Xiao, 462 Fed.
Appx. 947, 950-52 (Fed. Cir. 2011) (non-precedential):
[T]he Board did not create a new "mental distinctions" rule in
denying patentable weight. ... On the contrary, the Board
simply expressed the above-described functional relationship
standard in an alternative formulation----consistent with our
precedents-when it concluded that any given position label's
function ... is a distinction "discemable only to the human
mind." [See] In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
( describing printed matter as "useful and intelligible only to the
human mind") (quoting In re Bernhart, 417 F.2d 1395, 1399
(CCPA 1969)).
Xiao, 462 Fed. Appx. at 951-952. "Thus non-functional descriptive
material, being useful and intelligible only to the human mind, is given no
patentable weight." Ex parte Graf, Appeal 2012-003941, slip op. at 7
(PTAB July 23, 2013) (non-precedential), aff'd, In re Graf, 585 Fed. Appx.
1012 (Fed. Cir. 2014) (Fed. Cir. 2014) (non-precedential). "The rationale
behind this line of cases is preventing the indefinite patenting of known
products by the simple inclusion of novel, yet functionally unrelated
35
Appeal2017-005754
Application 11/801,799
limitations." King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279
(Fed. Cir. 2010) (citation omitted).
We reach the same conclusion for the limitations "an office action
issued by a patent Examiner" and "a statutory basis of rejection associated
with the office action" in the other steps, many of which are so broad as to
reasonably broadly cover mental processes (see earlier discussion with
regard to patent-eligibility) notwithstanding the patentable insignificance of
the particular content of the information being communicated.
We have reviewed the remaining arguments but find them
unpersuasive as to error in the rejection.
The rejection of claim 26 under 35 US.C. 103(a) as being unpatentable over
Slovak, Cockburn, Defelice, Spencer and Lee.
The rejection of claim 27 under 35 US.C. § 103(a) as being unpatentable
over Slovak, Cockburn, Defelice, and Spencer.
The Appellants challenge these rejections for reasons similar to those
used to challenge the rejection of claim 25; namely, they focus on the
claimed content of the information. See e.g., App. Br. 39 (Regarding claim
26, the cited prior art "fail to even mention a patent examiner.") and 42
(Regarding claim 27, "Lee only vaguely relates to patent examiner queries.")
For the reasons discussed above, we are unpersuaded as to error in the
rejection because the limitations in question only claim the content of
information. When it is a matter claimed for what it communicates, it is
properly characterized as printed matter. Printed matter is not given
patentable weight.
36
Appeal2017-005754
Application 11/801,799
We have reviewed the remaining arguments but find them
unpersuasive as to error in the rejection.
CONCLUSIONS
The provisional rejection of claims 1, 5-13 and 18-27 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1-10, 12, 14--18, 20, and 21 of co-pending
Application No. 11/823,557 is not reached.
The rejection of claims 1, 5-13 and 18-27 under 35 U.S.C. § 112(b)
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the inventors regard as their invention is reversed.
The rejection of claims 1, 5-13 and 18-27 under 35 U.S.C. §101 for
claiming patent-ineligible subject matter is affirmed.
The rejection of claims 1 and 22-24 under 35 U.S.C. § 103(a) as
being unpatentable over Slovak, Cockburn, and Defelice is reversed.
The rejection of claims 5, 9-12, and 21 under 35 U.S.C. § 103(a) as
being unpatentable over Slovak, Cockburn, Defelice, and Van Luchene is
reversed.
The rejection of claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, Van Luchene, and Burnham
is reversed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, Van Luchene, and USPTO is
reversed.
37
Appeal2017-005754
Application 11/801,799
The rejection of claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, Van Luchene, and Vincent is
reversed.
The rejection of claims 13 and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, and Lee is reversed.
The rejection of claims 19 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, and Ritchey is reversed.
The rejection of claim 25 under 35 U.S.C. 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, and Spencer is affirmed.
The rejection of claim 26 under 35 U.S.C. 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, Spencer, and Lee is affirmed.
The rejection of claim 27 under 35 U.S.C. § 103(a) as being
unpatentable over Slovak, Cockburn, Defelice, Spencer, and Lee is affirmed.
DECISION
The decision of the Examiner to reject claims 1, 5-13 and 18-27 is
affirmed.
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
38