Ex Parte Karenos et al

Patent Trial and Appeal Board

Feb 16, 2017

12848302 (P.T.A.B. Feb. 16, 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.
12/848,302 08/02/2010 Kyriakos Karenos YOR920100097US1 5674
48813 7590 02/21/2017
LAW OFFICE OF IDO TUCHMAN (YOR)
PO Box 765
Cardiff, CA 92007
EXAMINER
HALE, TIM B
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
02/21/2017 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):
pair@tuchmanlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYRIAKOS KARENOS, HUI LEI, and
WIM DE PAUW
Appeal 2014—006997
Application 12/848,302
Technology Center 3600
Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
AMEE A. SHAH, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Kyriakos Karenos, Hui Lei, and Wim De Pauw (Appellants) seek
review under 35 U.S.C. § 134 of a final rejection of claims 1—20, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 31, 2013) and Reply Brief (“Reply Br.,” filed June 3,
2014), and the Examiner’s Answer (“Ans.,” mailed April 3, 2014), and Final
Action (“Final Act.,” mailed July 19, 2013).
Appeal 2014-006997
Application 12/848,302
The Appellants invented a way to visually represent a network using a
computerized broker to visually represent an edge relationship based upon a
topic provided by the publisher to the subscriber. Specification 3:5—10.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A system comprising:
a computer processor;
a computer readable storage medium;
and
a broker configured to execute on the computer processor
coupled to the computer readable storage medium
and
[1] to visually represent an edge relationship
based upon a topic
provided by a publisher
to a subscriber
on a communications network;
and
[2] wherein the communication network is configured
to link a message publisher and a message subscriber.
The Examiner relies upon the following prior art:
Mclean US 2002/0124115 A1 Sept. 5, 2002
Nov. 17, 2005
Nov. 9, 2006
Feb. 10, 2011
Gruhl US 2005/0256905 A1
Chamock US 2006/0253418 A1
Sharma US 2011/0035455 A1
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Application 12/848,302
Herbrich US 2011/0313832 A1 Dec. 22,2011
Claims 11—16 stand rejected under 35 U.S.C. § 101 as directed to
non—statutory subject matter.
Claims 1—10 and 17—20 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Herbrich.
Claims 1, 2, 9—12, 17, and 18 stand rejected under 35 U.S.C. § 102(e)
as anticipated by Herbrich.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Herbrich and Sharma.
Claims 4—6, 13—15, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Herbrich and Chamock.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Herbrich, Chamock, and Mclean.
Claims 8 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Herbrich and Gmhl.
ISSUES
The issues of statutory subject matter turn primarily on whether
drawing an edge representation is an abstract concept. The issues of
anticipation and obviousness turn primarily on whether Herbrich describes
drawing such a representation.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art - Herbrich
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Application 12/848,302
01. Herbrich is directed to fairly allocating incentives to
participants in a recommendation flow. In one example, a user
may send an email to a friend recommending a product specified
at a particular web site (e.g., identified by a Uniform Resource
Identifier (URI) embedded in the email). Before sending the
email containing the URI, the user submits the URI to a
forwarding service, which associates the recommended URI with
an identifier of the recommending user and returns a new URI that
is mapped to the original URI and to the recommending user. The
recommending user can then recommend the web site by
forwarding the new URI to the friend. If the friend selects the
new URI to review the web site, the forwarding service records
the friend’s decision to review the web site and directs the friend
to the recommended web site. The forwarding service maintains a
database of recommendations made by the recommending user,
recommendations consumed (e.g., acted on) by the friend, whether
the friend visited the recommended web site, etc. Herbrich, para.
3.
02. Figure 1 illustrates an example recommendation flow
employing a forwarding service for recommendations and an ad
service for allocating incentives. Herbrich, para. 6.
03. Figure 6 illustrates a graph of an example recommendation
flow. Herbrich, para. 11.
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Application 12/848,302
ANALYSIS
Claims 11—16 rejected under 35 U.S.C. § 101 as directed to non—statutory
subject matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, . . then ask, “[w]hat else
is there in the claims before us? To answer that question, . . .
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 patent-
eligible application. [The Court] described step two of this
analysis as 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 Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289 (2012)).
We are not persuaded by Appellants’ argument that the claims are not
directed to an abstract idea. App. Br. 5—6. The Examiner finds the claims
are directed to the abstract idea of visually representing on the
communications network an edge relationship between the publisher and the
subscriber. Final Act. 2—3.
In support of this finding, claim 11 is devoid of a preamble that might
describe some non-abstract purpose, and the claim itself results in a visual
representation. The Specification describes the invention as visually
representing a network. Spec. 3 (Summary of the Invention). Thus, the
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Application 12/848,302
focus of the claims is to visually represent something. This idea is as old as
the practice of visual representations in the caves of Lascaux 15,000 years
ago, and, as such, is no more than conceptual advice, the epitome of abstract
ideas. In any event, these claims are decidedly not directed to, in the sense
of focusing on, improvements in technology to so inform one. Accordingly,
the claims do not pass the first A lice/Mayo step.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “to a particular technological environment.”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our §101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at the sole step of the process is purely conventional. Using a
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Application 12/848,302
computer to visually represent something amounts to electronic display —
one of the most basic functions of a computer.
We are not persuaded by Appellants’ argument that “utilizing a
computer processor circuit to link a publisher and a subscriber via a
communication network is not insignificant extra-solution activity or is
merely nominally, insignificantly, or tangentially related to the performance
of the recited step.” App. Br. 6. Using a communication network
configuration to link two devices for communication is done only for its
generic intended purpose. See In re TLI Communications LLC Patent
Litigation, 823 F.3d 607, 612—613 (Fed. Cir. 2016) (Using a generic
telephone for its intended purpose was a well-established “basic concept”
sufficient to fall under Alice step 1.)
Claims 1—10 and 17—20 rejected under 35 U.S.C. § 102(e) as anticipated by
Herbrich
We are persuaded by Appellants’ argument that the claim language is
functional. App. Br. 8. The Examiner does not give the broker component
weight because it is directed to instructions capable of being executed. Final
Act. 4. Display of a visual representation of something is a functional
relationship between the something and the display. When the functional
language is associated with programming or some other structure required to
perform the function, that programming or structure must be present in order
to meet the claim limitation. Typhoon Touch Techs., Inc. v. Dell, Inc., 659
F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement
Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). Claim 1
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requires programming to visually represent an edge relationship based upon
a topic.
Claims 1, 2, 9—12, 17, and 18 rejected under 35 U.S.C. § 102(e) as
anticipated by Herbrich
We are persuaded by Appellants’ argument that Herbrich fails to
describe the visual representing of an edge relationship in the claims. App.
Br. 10. The Examiner cites Herbrich Figures 1 and 6 for such a
representation. Final Act. 6. We agree that both figures show the portrayal
of network paths as edges. The problem for the Examiner is that both
figures are illustrations drawn as part of a patent application and are not the
display output based on the topic recited in the independent claims. Thus,
even were one to say that a computer that displays the Herbrich application
provides the recited visual representation, nothing in Herbrich places such a
computer that displays the application on the network that would provide the
recited basis as otherwise recited in the claims.
Claim 3 rejected under 35 U.S.C. § 103(a) as unpatentable over Herbrich
and Sharma
This claim depends from claim 1.
Claims 4—6, 13—15, 19, and 20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Herbrich and Charnock
These claims depend from the independent claims.
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Application 12/848,302
Claim 7 rejected under 35 U.S.C. § 103(a) as unpatentable over Herbrich,
Charnock, and Mclean
This claim depends from claim 1.
Claims 8 and 16 rejected under 35 U.S.C. § 103(a) as unpatentable over
Herbrich and Gruhl
These claims depend from the independent claims.
CONCLUSIONS OF LAW
The rejection of claims 11—16 under 35 U.S.C. § 101 as directed to
non—statutory subject matter is proper.
The rejection of claims 1—10 and 17—20 under 35 U.S.C. § 102(e) as
anticipated by Herbrich is improper.
The rejection of claims 1, 2, 9—12, 17, and 18 under 35 U.S.C.
§ 102(e) as anticipated by Herbrich is improper.
The rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Herbrich and Sharma is improper.
The rejection of claims 4—6, 13—15, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Herbrich and Charnock is improper.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over Herbrich, Charnock, and Mclean is improper.
The rejection of claims 8 and 16 under 35 U.S.C. § 103(a) as
unpatentable over Herbrich and Gruhl is improper.
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 1—10 and 17—20 are rejected under 35 U.S.C.
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Application 12/848,302
§ 101 as directed to non-statutory subject matter. These claims recite
systems and program products that perform the methods of claims 1—16.
The analysis as to the underlying process performed by these systems and
program products is the same as described supra.
As to the structural claims 1—10 and 17—20, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
DECISION
The rejection of claims 11—16 is affirmed.
The rejection of claims 1—10 and 17—20 is reversed.
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 1—10 and 17—20 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
Our decision is not a final agency action.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
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Application 12/848,302
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can
be found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED-fN—PART; 37 C.F.R, $ 41.50(b)
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