Ex Parte Kymal et al

Patent Trial and Appeal Board

Dec 18, 2015

13616002 (P.T.A.B. Dec. 18, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/616,002 09/14/2012
22045 7590 12/22/2015
BROOKS KUSHMAN P,C
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Chandran K ymal
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.
OEM0108 Rl 8269
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
12/22/2015 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@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANDRAN KYMAL and GREGORY FRANCIS GRUSKA
Appeal 2015-008130
Application 13/616,002 1
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
BRADLEY B. BA YAT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 2
STi\TE1\1ENT OF THE Ci\.SE
Appellants3 appeal 35 U.S.C. § 134(a) from the Examiner's rejection
of claims 10-24.4 We have jurisdiction under 35 U.S.C. § 6(b).
1 The reissue application on appeal seeks to reissue US Patent 7,818,192 B2
(hereinafter "Patent '192") issued on October 19, 2010, based on application
10/547,254, filed May 30, 2006, which is a national stage entry of
PCT/US04/06227, filed March 1, 2004. "Reissue is based on addition of
claims to capture unclaimed subject matter relating to other aspects of the
invention" (see Reissue Application filed in accordance with MPEP 1414 on
July, 19, 2011).
2 Our decision references Appellants' Appeal Brief ("App. Br.," filed Feb.
16, 2015), Reply Brief ("Reply Br.," filed Sept. 10, 2015), and the
Examiner's Answer ("Ans.," mailed July 10, 2015).
3 Appellants identify the real party in interest as "Omnex Systems, LLC."
App. Br. 2.
Appeal 2015-008130
Application 13/616,002
STATEMENT OF THE DECISION
We AFFIRM.
INVENTION
Appellants' invention "relate[s] generally to enterprise and supply
chain quality management." Patent '192, col. 1, 11. 13-14. Claims 10, 15,
and 20 are the only independent claims. Claim 10, reproduced below (with
numbering in brackets added), is illustrative of the subject matter on appeal.
10. A computer-implemented method comprising:
[a] storing a plurality of documents in a network-accessible
manner, at least two of the documents having access controls
associated therewith;
[b] assigning control rights, by a computer, comprising an
ability to modify and delete a document, over at least a first
document having an access control associated therewith, to at
least a first site;
[ c] assigning control rights, by a computer, comprising an
ability to modify and delete a document, over at least a second
document having an access control associated therewith, to a
second site; and
[ d] assigning non-editorial access to at least the first and
second documents to at least a third user, by a computer,
wherein the control rights of an accessed document are
transparent to an accessing user, wherein, upon document
access, an accessing user may view the document, download
the document, submit a request to a control-right holding user
to modify the document, and solicit a draft request to one or
more other users to modify the document.
App. Br., Claims App 1.
4 Claims 1-9 have been canceled. Id., Claims App.
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Application 13/616,002
REJECTIONS 5
The following rejections are before us for review:
Claims 10-24 stand rejected under 35 U.S.C. § 101.
Claims 10-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Goertzel (US 6,308,273 Bl, iss. Oct. 23, 2001), San Miguel (US
2003/0101086, pub. May 29, 2003), Grainger (US 2002/0111824 Al, pub.
Aug. 15, 2002), and Vainstein (US 8,065,713 Bl, iss. Nov. 22, 2011).
ANALYSIS
Rejection under 35 US.C. § 101
We are not persuaded the Examiner erred in asserting that claims 10-
24 are directed to non-statutory subject matter. In determining whether a
claim falls within the excluded category of abstract ideas, we are guided in
our analysis by the Supreme Court's two-step framework, described in
Mayo 6 and Alice. 7 We first determine whether the claims at issue are
directed to a patent-ineligible abstract idea. "If so, we then ask, ' [ w ]hat else
is there in the claims before us."' Id. (quoting Mayo, 132 S. Ct. at 1297). In
other words, the second step is to search for an "inventive concept"- an
element or combination of elements sufficient to ensure that the claim
amounts to "significantly more" than the abstract idea itself. Id.
To that end, we find that Appellants' claimed invention is directed to
assigning permissions that are granted to a site or user with respect to an
electronic document, or more succinctly, "access rights." The
5 The Examiner withdrew the rejection of claims 10-24 under 35 U.S.C.
§ 112, first paragraph. Ans. 3.
6 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012).
7 Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014).
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Application 13/616,002
implementation of this concept is recited in the limitations of each of the
independent claims. This concept is further supported by various portions of
the Specification. See, e.g., column 10, lines 10-16 ("an administrator may
limit or expand user access and functionality rights with respect to any
information or functionality"); column 10, lines 4 7-51 ("administrator may
define an unlimited number of document levels. By selecting document
level 'Procedures' for example, a user is presented with a table of contents
46 including a plurality of procedure documents to which that user has been
granted access"). We thus find that the concept of "access rights,"
permissions granted to a user or to an application, to read, write and erase
files in the computer (i.e., editorial rights), is a long-standing business
practice, and a patent ineligible abstract concept.
While the Supreme Court has not precisely defined "abstract idea,"
the Federal Circuit since Alice has invalidated patents encompassing a broad
range of abstract ideas. We conclude that claims 10-24 are comparable to
other communication-based patents that have been held to be abstract
after Alice. See, e.g., Content Extraction & Transmission v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1345 (Fed. Cir. 2014) (holding claims drawn to
the "basic concept of data recognition and storage" abstract); Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Circuit 2014) (holding the
"process of receiving copyrighted media, selecting an ad, offering the media
in exchange for watching the selected ad, displaying the ad, allowing the
consumer access to the media, and receiving payment from the sponsor of
the ad all describe an abstract idea").
Turning to the second step of the analysis, we look for additional
elements that can "transform the nature of the claim" into a patent-eligible
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Appeal 2015-008130
Application 13/616,002
application of an abstract idea. Mayo, 132 S. Ct. at 1297. Appellants
contend "if the general idea of right control is assumed, arguendo, to be
abstract, the specific assignment of rights in the manner claimed is not only
not fundamental, but is novel." App. Br. 7. With regards to limitation [a] of
claim 10, Appellants acknowledge "that the steps of generally storing data
are generic functions ... but [argue] all of the solution activity involving
assignment of control rights in a specific, novel and useful fashion is neither
well-understood, routine nor conventional." Reply Br. 6.
On this record, we are not persuaded that claim 10 adds an inventive
concept sufficient to transform the nature of the claim into a patent-eligible
application of the abstract idea. Initially, we note the claim steps do not
recite a specialized algorithm that could move the claims from the abstract to
the concrete, and simply executing an abstract concept on a computer does
not render "a special purpose computer," as argued by Appellants. See
Reply 5 (referring to the inclusion of "computer-implemented" in the
preamble of claim 10). Limitations [b ], [ c ], and [ d] of claim 10 merely
recite assigning control and access rights "by a computer." See App. Br.,
Claims App 1. The use of access rights associated with documents is nothing
more than programming conventiona1 software or hardware to apply rules
goven1ing access to that document-------a routine, conventional practice. The
introduction of a generic element, such as a computer (processor) or storage
medium (database), into a method, apparatus, or article claim, has been
deemed insufficient by the Supreme Court to transform a patent-ineligible
claim into one that is patent-eligible, and it fails to do so in this claim as
well. See Alice, 134 S. Ct. at 2358; see also Ultramercial, 772 F.3d at 712-
713, 717 (determining that representative claim 1 is patent ineligible
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Application 13/616,002
although it recites "a fourth step of restricting general public access").
In DDR Holdings, the Federal Circuit found that the challenged patent was
valid because it "specif[ied] how interactions with the Internet are
manipulated to yield a desired result-a result that overrides the routine and
conventional" aspects of the technology. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir. 2014). Here, claim 10
instead applies conventional computer technology to assign access rights to
a document. Accordingly, the recited claim limitations, both individually
and as an ordered combination, fail to transform the nature of the claim into
a patent-eligible application. Thus, independent claim 10 does not recite any
limitation that, in practical terms, limits the scope of the claim so it does not
fully cover the abstract idea itself.
For the foregoing reasons, we sustain the Examiner's rejection of
claims 10-24 under 35 U.S.C. § 101. 8 As our analysis elaborates
substantially on the underlying basis as to why claims 10-24 are not directed
to statutory subject matter under 3 5 U.S. C. § 101, we exercise our discretion
and denominate it a NEW GROUND of rejection, pursuant to our authority
under 37 C.F.R. § 41.50(b).
Rejection under 35 USC§ 103 (a)
Limitations [b] and [ c] of independent claim 10 require "assigning
control rights ... to at least a first site ... and to a second site." App. Br.,
Claims App 1.
Appellants dispute the Examiner's finding because Goertzel's "access
rights are assigned to a user based on the characteristics of the location at
8 Appellants acknowledge that the analysis for claim 10, "holds and applies
to claims 15 and20 as well." Reply Br. 3.
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Application 13/616,002
which the user is logging in .... The rights are not assigned to a site." Id. at
12.
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted). Appellants' Specification states:
A "site" may be defined as those tangible parts of an enterprise
having administration of local processes and documentation.
Often, sites are defined geographically (e.g., individual plants,
campuses, regions, etc.).
Col. 9, 11. 23-26. We are persuaded by Appellants' argument because the
Examiner's interpretation of the claim language is not consistent with the
Specification. Goertzel's location-based access rights are assigned to a user
and access to resources is restricted based on the location of the user
("location-based discrimination by restricting the access of users connecting
from less trusted locations"). Goertzel, col. 2, 11. 9-10. Limitations [b] and
[ c] of claim 10 however, call for assigning control rights (ability to modify
and delete a document) to a site or location (acting as the "owner"), rather
than restricting user access to resources from "less trusted locations"
(Goertzel, col. 2, 11. 8-10), as proffered by the Examiner. See Ans. 9-10.
Because the Examiner's finding and interpretation of limitations [b] and [ c]
is inconsistent with the plain language of the claim in light of the
Specification, we do not find the preponderance of the evidence supports the
rejection of claim 10 under 35 U.S.C. § 103(a). The Examiner does not rely
on the teachings of San Miguel, Grainger or Vainstein to remedy this
deficiency.
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Application 13/616,002
Therefore, we do not sustain the rejection of independent claim 10.
Independent claims 15 and 20 recite similar limitations and are rejected
based on the same findings as in claim 10. As such, we do not sustain the
rejection of claims 15 and 20 for the same reasons. We also do not sustain
the rejection of dependent claims 11-14, 16-19, and 21-24. 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").
DECISION
The Examiner's decision to reject claims 10-24 under 35 U.S.C.
§ 101 is AFFIRMED.
The Examiner's decision to reject claims 10-24 under 35 U.S.C.
§ 103(a) is REVERSED.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides that "[a] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following 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 ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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Application 13/616,002
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance will be deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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; 37 C.F.R. § 41.50(b)
em
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