Ex Parte Kaundinya et al

Patent Trial and Appeal Board

Nov 14, 2017

12949668 (P.T.A.B. Nov. 14, 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.
12/949,668 11/18/2010 Muthukumar G. Kaundinya 85758-793606 (106020US) 6228
20350 7590 11/16/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
GOLDBERG, IVAN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MUTHUKUMAR G. KAUNDINYA and EDWARD WANG
Appeal 2016-0009171
Application 12/949,6682
Technology Center 3600
Before NINA L. MEDLOCK, CYNTHIA L. MURPHY and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 45—59, 61—65, 67, and 68. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
March 27, 2015) and Reply Br. (“Reply Br.,” filed October 26, 2015), and
the Examiner’s Answer (“Ans.,” mailed August 25, 2015) and Final Office
Action (“Final Act.,” mailed December 2, 2014).
2 Appellants identify Charles Schwab & Co., Inc. as the real party in
interest. App. Br. 3.
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CLAIMED INVENTION
Appellants’ claimed invention “relates to a system and method of
providing for the generation, and management of alerts which can be utilized
by customer representatives, and which provides for tracking the customer
representatives activities in connection with the generated alerts” (Spec. 1,
11. 15-18).
Claims 45, 52, and 62 are the independent claims on appeal.
Claim 45, reproduced below, is illustrative of the claimed subject matter:
45. In a computer network a method for utilization and
tracking of alerts, the method comprising:
analyzing, using one or more processors, customer data of
a customer at a first point in time;
automatically generating a first alert identifying potential
business opportunities based on customer initiated actions in
response to analyzing the customer data, the first alert belonging
to a first type of alert from a plurality of different types of alert,
the first type of alert being associated with a run cycle time, an
expiration time, and a suppression time that are all different from
one another;
storing the first alert in an alert tracking database;
providing the first alert to a customer representative;
when no action is taken for the first alert before the
expiration time expires:
automatically removing the first alert from being
provided to the customer representative, and
updating the alert tracking database to indicate the
first alert has expired; and
when a customer representative input is received to
indicate an action resulting in closing of the first alert has been
taken for the first alert before the expiration time expires:
updating an action status of the first alert in the alert
tracking database based on the customer representative
input,
analyzing the customer data at a second point in
time that is a run cycle time after the first point in time,
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determining that a second alert belonging to the first
type of alert is triggered by the customer data at the second
point in time, and
preventing the second alert from being provided to
the customer representative for an amount of the
suppression time.
REJECTIONS
Claims 45—59, 61—65, 67, and 68 are rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
Claims 45, 52—54, 61—63, and 67 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rothermel et al. (US 2006/0143034 Al, pub.
June 29, 2006) (hereinafter “Rothermel”) and Cheung et al.
(US 2004/0061716 Al, pub. Apr. 1, 2004) (hereinafter “Cheung”).
Claims 46—51, 55, and 64 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rothermel, Cheung, and Donoho et al.
(US 2004/0177053 Al, pub. Sept. 9, 2004) (hereinafter “Donoho”).
Claims 56 and 65 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rothermel, Cheung, Donoho, and Melchione et al.
(US 5,930,764, iss. July 27, 1999) (hereinafter “Melchione”).
Claims 57—59 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Rothermel, Cheung, and Voudrie (US 2005/0273409 Al, pub. Dec. 8,
2005).
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
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to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CIS
BankInt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered “individually and ‘as an ordered
combination”’ to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Alice
Corp., 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enflsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, in rejecting the pending claims under § 101, the Examiner
analyzed the claims using the Mayo!Alice two-step framework, in
accordance with the guidance set forth in the PTO’s June 25, 2014
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“Preliminary Examination Instructions in view of the Supreme Court
Decision in Alice Corporation Pty. Ltd. v. CIS Bank International, et alin
effect at the time the Final Office Action was mailed. Specifically, the
Examiner found that the claims are directed to “tracking and generating
alerts, deciding when alerts expire, and deciding when alerts should be
suppressed,” i.e., “a method of [organizing] human activity,” and, therefore,
an abstract idea; and that the additional elements or combinations of
elements beyond the abstract idea do not amount to “significantly more”
than the abstract idea itself (Final Act. 5—6).
Independent Claims 45 and 52 and Dependent Claims 46—51, 53—59, and 61
We are not persuaded, as an initial matter, by Appellants’ argument
that the Examiner erred in rejecting claim 45 under 35U.S.C. § 101 because
“the claims recite a very specific way of managing alerts, and clearly do not
seek to preempt others from tracking and generating alerts using other
techniques” (App. Br. 8; see also Reply Br. 2-4).
There is no dispute that the Supreme Court has described “the concern
that drives this exclusionary principle [i.e., the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption.” See Alice Corp.,
134 S. Ct. at 2354. However, characterizing preemption as a driving
concern for patent eligibility is not the same as characterizing preemption as
the sole test for patent eligibility. “The Supreme Court has made clear that
the principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct.
at 2354). Although “preemption may signal patent ineligible subject matter,
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the absence of complete preemption does not demonstrate patent eligibility.”
Id.
We also are not persuaded of Examiner error by Appellants’ argument
that the claimed features improve the functioning of the computer itself
(App. Br. 9—11; see also Reply Br. 4—5). Appellants assert that “suppressing
alerts can reduce the number of alerts that are tracked and managed, because
subsequent alerts on similar issues that a customer representative has already
contacted the customer about would not be generated” and that “[d]ue to the
reduced number of alerts that are tracked and managed, the computational
load on the alert computer is also reduced,” thereby “improving the alert
computer’s operational efficiency” (App. Br. 10). But, even accepting
Appellants’ argument, there is a fundamental difference between computer
functionality improvements, on the one hand, and uses of existing computers
as tools to perform a particular task, on the other. Indeed, the Federal
Circuit applied this distinction in Enfish in rejecting a § 101 challenge at the
step one stage in the Alice analysis because the claims at issue focused on a
specific type of data structure, i.e., a self-referential table for a computer
database, designed to improve the way a computer carries out its basic
functions of storing and retrieving data, and not merely on asserted advances
in uses to which existing computer capabilities could be put. Enfish, 822
F.3d at 1335-36.
We find no parallel here between independent claim 45 and the claims
in Enfish nor any comparable aspect in claim 45 that represents “an
improvement to computer functionality,” i.e., an improvement in the way a
computer carries out its basic functions. The alleged advantages that
Appellants tout do not concern an improvement to computer capabilities but
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instead relate to an alleged improvement in tracking the utilization of alerts
for which a computer is used as a tool in its ordinary capacity.3
To the extent that Appellants maintain that the limitations of claim 45
necessarily amount to “significantly more” than an abstract idea because the
claimed apparatus is allegedly patentable over Cheung (App. Br. 11),
Appellants misapprehend the controlling precedent. Although the second
step in the Mayo/Alice framework is termed a search for an “inventive
concept,” the analysis is not an evaluation of novelty or non-obviousness,
but rather, a search for “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, 134 S. Ct. at 2355.
A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
3 Referencing the USPTO’s January 27, 2015 Examples: Abstract Ideas
(available at https://www.uspto.gov/sites/default/files/documents/
abstract_idea_examples.pdf), Appellants point to claim 1 in Example 3 as an
instance in which a claim was deemed patent-eligible because the claim
“‘allows the computer to use less memory than required for prior masks,
[and] results in faster computation time without sacrificing the quality of the
resulting image as occurred in prior processes’” (Reply Br. 4—5). However,
claim 1 is a hypothetical claim modeled after the technology in Research
Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir.
2010), not an actual claim at issue in that case. The Federal Circuit
determined, in Research Corporation, that the claims were patent-eligible,
not because they allowed the use of less computer memory or resulted in
faster computation time, but instead because the claimed invention presented
“functional and palpable applications in the field of computer technology”
and addressed “a need in the art for a method of and apparatus for the
halftone rendering of gray scale images in which a digital data processor is
utilized in a simple and precise manner to accomplish the halftone
rendering.” Id. at 868—69.
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The USPTO’s “July 2015 Update: Subject Matter Eligibility,”
instructs examiners to refer to the body of case law precedent in order to
identify abstract ideas by way of comparison to concepts already found to be
abstract” (July 2015 Update at 3). And the Update further states that “[t]his
discussion is meant to . . . ensure that a claimed concept is not identified as
an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea (id. ).
Appellants ostensibly argue that the rejection under § 101 cannot be
sustained because “the Examiner has failed to show how the claims as a
whole are similar to a concept that the courts have identified as a patent
ineligible abstract idea” (Reply Br. 5—6). However, an Examiner’s failure to
follow the Director’s guidance is appealable only to the extent that the
Examiner has failed to follow the statutes or case law. To the extent the
Director’s guidance goes beyond the case law and is more restrictive on the
Examiner than the case law, that failure of the Examiner to follow those
added restrictions is a matter for petition to the Director. We are aware of
no controlling precedent, nor do Appellants identify any controlling case
law, that precludes an examiner from finding a claimed concept patent-
ineligible unless it is similar to a concept that a court has identified as
patent-ineligible.
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting independent claim 45 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection of independent claim 45 and
dependent claims 46—51, which are not argued separately.
Appellants argue that independent claim 52 and its dependent
claims 53—59, and 61 are patent-eligible for the same reasons set forth with
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respect to independent claim 45. Therefore, we also sustain the Examiner’s
rejection of those claims under § 101.
Independent Claim 62 and Dependent Claims 63—65, 67, and 68
Appellants argue that claim 62 is patent-eligible because it provides
an improvement to the functioning of the computer itself (App. Br. 11—12).
That argument is substantially similar to the argument set forth with respect
to claim 45 and is similarly unpersuasive. Therefore, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of independent claim 62 and
dependent claims 63—65, 67, and 68, which are not argued separately.
Obviousness
Independent Claim 45
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 45 under 35 U.S.C. § 103(a) because the
combination of Rothermel and Cheung fails to disclose or suggest
“preventing the second alert from being provided to the customer
representative for an amount of the suppression time,” as recited in claim 45
(App. Br. 13—15).
In rejecting claim 45 under 35 U.S.C. § 103(a), the Examiner cites
Rothermel as disclosing substantially all of the limitations of the claim
(Final Act. 8—15). However, the Examiner acknowledges that Rothermel
does not explicitly disclose “preventing the second alert from being provided
to the customer representative for an amount of the suppression time” (id.
at 13). And the Examiner cites Cheung to cure the deficiency of Rothermel
(id. at 13—14 (citing Cheung || 30, 35, and 43; Figs. 5A and 8A; claim 10)).
The Examiner further notes that because claim 45 includes conditional
language, i.e., suppression of the second alert only occurs “when a customer
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representative input is received to indicate an action resulting in closing of
the first alert has been taken for the first alert before the expiration time
expires,” the step of “preventing the second alert from being provided to the
customer representative for an amount of the suppression time” need not be
found in the prior art because the step is not performed if no action is taken
for the first alert before the expiration time expires (Ans. 7—8).
During examination before the USPTO, claims are given their
broadest reasonable interpretation consistent with the specification. In re
Abbott Diabetes Care, Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012); In re
Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). Moreover, conditional steps
employed in a method claim need not be found in the prior art if, under the
broadest reasonable interpretation, the method need not invoke those steps.
See Ex Parte Schulhauser, No. 2013-007847, 2016 WL 6277792 (PTAB
April 28, 2016) (precedential).
Here, the “suppression” step that Appellants maintain is not disclosed
or suggested by the cited references is a conditional method step, and is
performed only “when a customer representative input is received to indicate
an action resulting in closing of the first alert has been taken for the first
alert before the expiration time expires.” The broadest reasonable
interpretation of claim 45 includes situations that fail to satisfy this condition
precedent, and in those situations, the disputed conditional method step is
not performed. See Schulhauser, 2016 WL 6277792, at *3—6 (concluding
that the broadest reasonable interpretation of a claim encompassed situations
in which conditional method steps “need not be reached”). Because the
broadest reasonable interpretation of claim 45 does not require performing
the conditional “suppression” step at issue, the Examiner is not required to
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present evidence of the obviousness of this step. See Schulhauser, 2016 WL
6277792, at *4 (“The Examiner did not need to present evidence of the
obviousness of the remaining method steps of claim 1 that are not required
to be performed under a broadest reasonable interpretation of the claim.”).
This notwithstanding, we agree with Appellants that even if
suppression of the second alert is considered a conditional step, claim 45
requires determining whether an action resulting in the closing of the first
alert has been taken before the expiration time expires (Reply Br. 7). The
Examiner cites paragraph 77 of Rothermel as disclosing that an alert is
deleted after the expiry time (Final Act. 9). But we find nothing in the cited
portions of Rothermel that discloses or suggests that the Rothermel system
checks whether an action resulting in the closing of the first alert has been
taken before the expiration time expires.
Moreover, even putting the conditional language aside, we are
persuaded by Appellants’ argument that the snooze time interval in Cheung
is “fundamentally different” from the claimed suppression time (App.
Br. 14).4 In this regard, we agree with Appellants that rather than preventing
a second alert from being presented to a user, “Cheung simply takes an
4 Cheung is directed to a centralized notification system in which reminders
and alerts from different source applications are presented to a user in a
uniform format (Cheung, Abstract, 14). For example, Cheung discloses that
alerts from MESSENGER™, OFFICE™, and OUTLOOK™ applications
can be detected by a central notification manager and be presented as a pop­
up window on a user interface {id. H 27—30). Cheung further discloses that
“[f]or notifications or tasks that are to be performed by a particular date and
time, the user can select snooze control button 132 to defer the reminder to a
later date/time” {id. 140). The user can also select a snooze time interval to
indicate how long the reminder is deferred {id. 19).
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existing alert that has already been generated (i.e.[,] a first alert), and delays
that first alert from being displayed on a user interface until after the snooze
time interval” {id.). In other words, Cheung takes an alert that is already
being displayed on a user interface, and hence already provided to a user,
and hides it from view until a later time at which the same alert will reappear
on the user interface (Reply Br. 7); this, in our view, is different from
“preventing [a] second alert [triggered by customer data at a second point in
time] from being provided to the customer representative for an amount of
the suppression time,” as recited in claim 45.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 45 under 35 U.S.C. § 103(a).
Independent Claims 52 and 62 and Dependent Claims 53, 54, 63, and 67
Independent claims 52 and 62 include language substantially similar
to the language of claim 45, and stand rejected based on the same rationale
applied with respect to claim 45 (see Final Act. 20, 26—28). Therefore, we
do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of
independent claims 52 and 62 for the same reasons set forth above with
respect to claim 45. For the same reasons, we also do not sustain the
rejection of dependent claims 53, 54, 63, and 67. Cf. In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the
independent claims from which they depend are nonobvious”).
Dependent Claims 46—51, 55—59, 64, and 65
Each of claims 46—51, 55—59, 64, and 65 depends, directly or
indirectly from one of independent claims 45, 52, and 62. The rejections of
these dependent claims do not cure the deficiency in the Examiner’s
rejection of independent claims 45, 52, and 62. Therefore, we do not sustain
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the Examiner’s rejection of dependent claims 46—51, 55—59, 64, and 65
under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to
the independent claims.
DECISION
The Examiner’s rejection of claims 45—59, 61—65, 67, and 68 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 45—59, 61—65, 67, and 68 under
35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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