Ex Parte Kogan et al

Patent Trial and Appeal Board

Jul 30, 2018

11612975 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/612,975 12/19/2006
46321 7590 08/01/2018
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Sandra L. Kogan
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.
CAM920060141US1 (161) 7004
EXAMINER
DELI CH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/01/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDRA L. KOGAN, ERIC M. WILCOX, and
CHARLES R. HILL
Appeal2017-004872
Application 11/612,975 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 9-13 and 15-19.2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. (Appeal Br. 2.)
2 Appellants state that they "appeal from the Examiner's rejection of
claims 1 through 20." (Appeal Br. 1.) However, on page 1 of Appellants'
Pre-Appeal Brief Request for Review," filed May 23, 2016, Appellants
acknowledge that "claims 9 through 13 and 15 through 19 are pending in the
Patent Application." Moreover, only claims 9-13 and 15-19 are rejected in
the Final Action from which this appeal is taken. (See Final Action 5-15.)
Therefore, we treat Appellants' statement that this is an appeal from the
rejection of claim 1-20 as inadvertent error.
Appeal2017-004872
Application 11/612,975
CLAIMED SUBJECT MATTER
Appellants' claimed invention relates "to project management in a
collaborative computing environment." (Spec. ,r 1.) More specifically, it
relates to a project management system that can "integrate external ad-hoc
communications among task nodes of an activity hierarchy modeling a
project plan." (Id. ,r 9.)
Claims 9 and 15 are the independent claims on appeal. Claim 9 is
illustrative. It recites:
9. A method for integrating external ad-hoc communications
in a project plan in a project management tool, the method
compnsmg:
selecting an instance of an external ad-hoc communication
in an activity-centric project management tool executing in
memory of a host computing platform;
displaying an activity map in the tool, loading a project
plan into the memory and rendering the project plan in the
activity map, the project plan comprising a display of a hierarchy
of task nodes;
creating a task node in the hierarchy for the selected
instance;
associating the instance of the external ad-hoc
communication with task meta data in the task node; and,
inserting the task node under an associated task in the
hierarchy of task nodes representative of the project plan.
REJECTI0NS 3
Claims 9-13 and 15-19 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
3 The rejections of claims 9-13 and 15-19 under 35 U.S.C. § 103(a) have
been withdrawn. (See Answer 8.)
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Application 11/612,975
Claims 9-13 and 15-19 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
ANALYSIS
The§ 101 reiection o(claims 9-13 and 15-19
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out 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, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if "the elements of the
claim ... contain[] an 'inventive concept' sufficient to 'transform' the
claimed abstract idea into a patent-eligible application." Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
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Application 11/612,975
With regard to step one of the Alice framework, the Examiner
determines that "[ c ]laims 9-13 and 15-19 are ... directed to an abstract idea
of inserting external ad-hoc communications in a project plan." (Final
Action 5.) In particular, the Examiner determines that "[t]he steps related to
selecting, displaying, creating, associating and inserting all illustrate
organizing data for a display in a particular manner." (Id.) The Examiner
further determines that "[t]his ability to select data, display it in a particular
form, create a node hierarchy, associate instances with meta data and insert
the node into a hierarchy ... is similar to the abstract idea ... set forth in
[Cyberfone Sys., L.L.C. v. CNN Interactive Grp., Inc., 558 F. App'x 988
(Fed. Cir. 2014]." (Id. at 6.)
Appellants disagree and argue both that the "Examiner repeats the
claim language of Appellants' claims and concludes that the entirety of the
claim language is directed to the abstract idea of 'organizing human
activities and a method of organizing data"' and that the "Examiner appears
to have succumbed to the very analysis warned against by Enfish and the
Deputy Commissioner for Patent Examination Policy- "describing a claim
at a high level of abstraction untethered from the language of the claim when
determining the focus of the claimed invention .... " (Appeal Br. 7.)
Appellants then argue that claim 1, which is not on appeal, supports these
arguments.
Under step one of the Alice framework, we "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, LLC
v. DIRECTV, 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)).
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Appeal2017-004872
Application 11/612,975
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
"to project management in a collaborative computing environment." (Spec.
,r 1.) More specifically, it relates to a project management system that can
"integrate external ad-hoc communications among task nodes of an activity
hierarchy modeling a project plan." (Id. at ,r 9.) Claim 9 provides further
evidence. Claim 9 recites "[a] method for integrating external ad-hoc
communications in a project plan ... comprising: selecting an instance of
an external communication," "displaying ... the project plan," "creating a
task node ... for the selected instance," "associating the instance ... with
... meta data in the task node," "and, inserting the task node under an
associated task."
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." See
id. at 1241. In view of the above, we do not agree that the Examiner's
determination that "[c]laims 9-13 and 15-19 are ... directed to an abstract
idea of inserting external ad-hoc communications in a project plan" (Final
Action 5), is "untethered" from the language of claim 9.
In this case, as in Alice, we need not labor to delimit the precise
contours of the "abstract ideas" category. It is enough to recognize that
there is no meaningful distinction in the level of abstraction between the
concepts of "using categories to organize, store, and transmit information,"
Cyberfone, 558 F. App'x at 992, and "integrat[ing] external ad-hoc
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Application 11/612,975
communications among task nodes of an activity hierarchy modeling a
project plan" (Spec. ,r 9). Both are squarely within the realm of "abstract
ideas" as the Court has used that term. See Alice, 134 S. Ct. at 2357. Also,
we note that we have treated collecting, analyzing, and displaying
information, without more, such as using a particular tool for presentation,
"as within the realm of abstract ideas." Elec. Power Grp., 830 F.3d at 1353-
54. Moreover, here, the limitations do not recite implementation details.
Instead, they recite functional results to be achieved. In other words, the
claims do not recite "a particular way of programming or designing the
software ... , but instead merely claim the resulting [method]." Apple, Inc.,
842 F.3d at 1240.
In view of the above, we agree with the Examiner that claim 9 is
directed to an abstract idea.
Step two of the Alice framework has been described "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, 134 S. Ct.
at 2355 (quoting Mayo, 566 U.S. at 72-73).
Appellants argue the "claims are directed to a process driven
improvement to the functionality of a computer." (Appeal Br. 9, emphasis
omitted.)
The Examiner determines that
[ n ]either the claims nor the specification expressly disclose how
the activity-centric project management tool impacts the
functioning of the computer in any way. The ability to organize
the tasks in a hierarchy of tasks in a project is directed to
improving the business aspect of project management and does
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not illustrate any improvement to how the computer itself
functions ....
(Answer 10-11.)
Appellants do not explain how, in this instance, the steps of selecting
data, displaying data, creating a task node, associating data, and inserting
data, improves the functionality of a computer. Appellants do not indicate
where the Specification discloses an improvement to the functionality of a
computer itself. Nor do Appellants indicate where in the Specification
anything other than a generic computer programmed to perform the steps of
the invention is disclosed. Indeed, the Examiner finds that Appellants'
Specification discloses that a general purpose computer can be used to
implement the claimed method. (Final Action 6-7, citing Spec. ,r,r 23-27 .)
The claims "do not require an arguably inventive set of components or
methods, such as measurement devices or techniques." Elec. Power Grp.,
830 F.3d at 1355. The introduction of a computing platform to implement
the claimed steps does not alter the analysis at step two. In short, "these
claims in substance [are] directed to nothing more than the performance of
an abstract business practice ... using a conventional computer. Such
claims are not patent-eligible." DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014).
In view of the above, we are not persuaded that the Examiner erred in
determining that claim 9 is directed to a judicial exception without
significantly more. Claims 10-13 and 15-19 are not separately argued and
fall with claim 9. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
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The § 112. first paragraph. rei ection of claims 9-13 and 15-19
With regard to independent claim 9, the Examiner finds that "[ t ]he
specification provides no details of how the instance of an external ad-hoc
communication is selected. Instead the specification merely restates the
claimed step: [0023] 'block 330, the external ad-hoc communications can be
selected for inclusion in the hierarchy'." (Final Action 8.) "[T]he lack of
disclosure of how Applicant's invention was intended to be implemented
would not inform a skilled artisan that Applicant was in possession of the
claimed invention as a whole at the time the application was filed." (Id.
at 9.) The Examiner makes similar findings for the limitations "associating
the instance of the external ad-hoc communication with task meta data in the
task node," and "inserting the task node under an associated task." (Id. at 8-
9.) The Examiner similarly rejects independent claim 15, which contains
similar language, and dependent claims 10-13 and 16-19. (Id. at 10.)
Appellants disagree and argue "that the Examiner has not met the
burden of articulating how the amended claims 9 and 15 ... are not
adequately described in Applicants' specification so as to prevent a person
skilled in the art at the time the application was filed to recognize that the
Appellants were in possession of the claimed invention." (Appeal Br. 12.)
"Indeed, 35 U.S.C. § 112(a) does not require that the Appellants claim a
specific way of achieving a claimed methodology so long as the claimed
methodology itself is disclosed as part of the specification." (Id. at 13,
emphasis omitted.) Appellants further argue that "all three steps are present
in Figure 3 and paragraphs [0023] and [0024] of the originally presented
specification." (Id. at 12.)
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Application 11/612,975
The test for sufficiency of a written description is "whether the
disclosure clearly 'allow[s] persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed."' Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed.Cir.2010) (en bane) (quoting Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562-63 (Fed.Cir.1991 )). The disclosure must
"reasonably convey[] to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing
date." Id. at 1351. Possession means "possession as shown in
the disclosure" and "requires an objective inquiry into the four
comers of the specification from the perspective of a person of
ordinary skill in the art." Id.
Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635
F.3d 1373, 1380 (Fed. Cir. 2011).
If . . . the specification contains a description of the claimed
invention, albeit not in ipsis verb is (in the identical words), then
the examiner or Board, in order to meet the burden of proof, must
provide reasons why one of ordinary skill in the art would not
consider the description sufficient. [In re Wertheim, 541 F.2d
257, 264 (CCP A 1976)]. Once the examiner or Board carries the
burden of making out a prima facie case of unpatentability, "the
burden of coming forward with evidence or argument shifts to
the applicant." [In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992)]. To overcome a prima facie case, an applicant must show
that the invention as claimed is adequately described to one
skilled in the art.
In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
Here, the Examiner has provided a reason why one of ordinary skill
would not have considered the description sufficient, i.e., because "the lack
of disclosure of how Applicant's invention was intended to be implemented
would not inform a skilled artisan that Applicant was in possession of the
claimed invention as a whole at the time the application was filed." (Final
Action 9.) In other words, "because a myriad of ways exist to perform the
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function [ of the claimed invention], one of ordinary skill ... could not have
known how the inventor intended the function to be performed."
(Answer 11; see also Ariad Pharm, Inc., 598 F.3d at 1345 ("A description of
the claimed invention allows the [USPTO] to examine applications
effectively; ... and the public to understand and improve upon the invention
and to avoid the claimed boundaries of the patentee's exclusive rights.").)
Thus, the burden shifts to Appellants to "show that the invention as claimed
is adequately described to one skilled in the art." Alton, 76 F.3d at 1175.
Appellants, however, merely argue that "all three steps are present in
Figure 3 and paragraphs [0023] and [0024] of the originally presented
specification." (Appeal Br. 12.) Appellants do not adequately show or
explain that one of ordinary skill at the time would have considered the
disclosures in Figure 3 and paragraphs 23-24 sufficient to recognize that the
inventors invented what is claimed. In short, Appellants do not address the
Examiner's finding that "the lack of disclosure of how Applicant's invention
was intended to be implemented would not inform a skilled artisan that
Applicant was in possession of the claimed invention as a whole at the time
the application was filed." (See Final Action 9.)
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 9-13 and 15-19 under§ 112, first paragraph.
DECISION
The Examiner's rejection of claims 9-13 and 15-19 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejection of claims 9-13 and 15-19 under 35 U.S.C.
§ 112, first paragraph is affirmed.
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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).
AFFIRMED
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