Ex Parte Man et al

Patent Trial and Appeal Board

Dec 27, 2018

13046417 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/046,417 03/11/2011
63675 7590 12/31/2018
PATTERSON & SHERIDAN, LLP/IBM SVL
24 Greenway Plaza
SUITE 1600
HOUSTON, TX 77046-2472
FIRST NAMED INVENTOR
KwaiH.Man
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.
S VL9201 l 0005US 1 4860
EXAMINER
SURVILLO, OLEG
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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):
P AIR_eofficeaction@pattersonsheridan.com
PSDocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KW AI H. MAN and WAI K. SO 1
Appeal2018-004033
Application 13/046,417
Technology Center 2400
Before JOSEPH L. DIXON, MICHAEL J. STRAUSS, and
JOHN R. KENNY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is International Business
Machines Corporation. See App. Br. 3.
Appeal2018-004033
Application 13/046,417
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
9, 10, 13-18, 21-24, 26, 28-30, and 33--41. Claims 1-8, 11, 12, 19, 20, 25,
27, 31, and 32 are canceled. Final Act. 2. This appeal is related to
Application Serial No. 13/553,199 (Appeal No. 2018-004006) a decision in
which is being issued contemporaneously with the instant decision. Br. 4.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm. 2
THE INVENTION
The claims are directed to auto-updating documents within content
management systems. Spec., Title, Abstract. Claim 33, reproduced below,
is illustrative of the claimed subject matter:
3 3. A system for document updates in a content
management system to trigger document updates to other
documents determined as related, the system comprising:
one or more computer processors;
and a memory containing a program of a content
management system, the program executable by the one or more
computer processors to perform an operation comprising
automatically:
analyzing, by the content management system, each of a
plurality of documents in order to determine one or more
characteristics of the respective document, wherein the plurality
of documents is stored electronically in the content management
system;
generating, by the content management system, a
respective similarity value for each of a plurality of combinations
of documents selected from the plurality of documents, wherein
the respective similarity value is generated based on the
2 We refer to the Specification, filed March 11, 2011 ("Spec."); the Final
Office Action, mailed May 30, 2017 ("Final Act."); Appeal Brief, filed Nov.
8, 2017 ("Br."); and the Examiner's Answer, mailed Dec. 28, 2017 ("Ans.").
2
Appeal2018-004033
Application 13/046,417
determined one or more characteristics of the respective
combination of documents, wherein a respective auto-update
relationship is established between source and target documents
of the respective combination of documents based on the
respective similarity value and based further on a predefined
similarity threshold;
enforcing, by the content management system, each auto-
update relationship by monitoring changes to the respective
source document and automatically updating the respective
target document based on the monitored changes; and
outputting each automatically updated target document.
REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Bates et al.
McChrystal
Cragun et al.
Tanaka et al.
Parikh
us 6,088,707
US 2005/0198565 Al
US 2009/0083247 Al
US 2011/0239102 Al
US 2013/0024185 Al
REJECTIONS
The Examiner made the following rejections3:
July 11, 2000
Sept. 8, 2005
Mar. 26, 2009
Sept. 29, 2011
Jan.24,2013
Claims 9, 10, 13-18, 21-24, 26, 28-30, and 33--41 stand rejected
under § 101 as directed to non-statutory subject matter. Final Act. 5-9; Ans.
2---6.
Claims 9, 10, 13-18, 21-24, 26, 29, 30, 33, and 34 stand rejected
under 35 U.S.C. § I03(a) as being unpatentable over Cragun, McChrystal,
and Parikh. Final Act. 7-17.
3 The rejection of claims 36--40 under 35 U.S.C. § 112, first paragraph, has
been withdrawn. Ans. 23.
3
Appeal2018-004033
Application 13/046,417
Claims 35-37 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cragun, McChrystal, Parikh, and Bates. Final Act. 17-
19.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cragun, McChrystal, Parikh, and Tanaka. Final Act. 19-
20.
Claims 38 and 39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cragun, McChrystal, Parikh, Bates, and Tanaka. Final
Act. 20-23.
ANALYSIS
35 us.c. § 101
In Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208
(2014), the Supreme Court reiterated an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (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, 573 U.S. at 217.
The first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts," such as an abstract idea.
Id. If the claims are directed to eligible subject matter, the inquiry ends.
Thales Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
4
Appeal2018-004033
Application 13/046,417
application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "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."' Id. at 217-18 (alteration in original) ( quoting
Mayo, 566 U.S. at 72-73).
In rejecting the claims under 35 U.S.C. § 101, the Examiner
determines these claims are directed to "comparing new and stored
information and using rules to identify options, which amounts to a basic
manipulation of existing information, such as identifying changes in a source
document and making corresponding changes in the related document based
on pre-defined rules, which is an abstract idea." Final Act. 5; Ans. 2. The
Examiner analogizes the pending claims to those addressed in Electric
Power Grp, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) and
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344 (Fed.
Cir. 2014). Ans. 28. Further, the Examiner determines that the additional
elements of the claimed content management system are insufficient to
transform the abstract idea into a patent-eligible invention. Final Act. 5-7.
Alice Step One
Appellants contend claim 33 is not directed to an abstract idea,
analogizing the claim to those found to be patent eligible in McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016).
Appellants argue claim 33 permits alternative approaches for achieving the
desired results, i.e., "recites a novel process and limits itself to specific
features in a way that does not preempt other approaches of achieving
desired results [ and, therefore], the instant claim is not abstract." Br. 24.
5
Appeal2018-004033
Application 13/046,417
The Examiner replies, finding automatic updating of documents is "well-
known from pre-computer era and is not rooted in computer technology."
Ans. 28-29. The Examiner distinguishes Appellants' claims over the claims
in McRO which were directed to a different way of accomplishing lip
syncing. Id at 29. In contrast, according the Examiner, Appellants' claimed
auto-update relationships "implement an old practice of linking similar
documents such that one document is updated the related document is
updated in the same way." Id. Appellants do not reply.
We are not persuaded by Appellants' arguments. We agree with the
Examiner that claim 13 is not analogous to those in McRO. In contrast to
McRO, we are unpersuaded the rejected claims produce an improvement in
computer-related technology. The claims in McRO recited a "specific ...
improvement in computer animation" using "unconventional rules that
relate[d] sub-sequences of phonemes, timings, and morph weight sets."
McRO, 837 F.3d at 1302---03, 1307---08, 1314--15. Moreover, it was not the
mere presence of unconventional rules in McRO that led to patent eligibility;
rather, it was that the rules were used "in a process specifically designed to
achieve an improved technological result." Id. at 1316. Here, Appellants
have not shown how the claimed document analysis and updating are used in
a process to achieve improved technological results.
We are also unpersuaded the claims would not be abstract based on
any novel aspects argued by Appellants. Br. 24. Whether the subject matter
of claim 33 is novel is irrelevant for the patent eligibility inquiry. Mayo, 566
U.S. at 78, 88 (even a truly groundbreaking abstract idea, like Einstein's
theory of relativity, cannot make a claim patent-eligible); Affinity Labs of
Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (novelty
6
Appeal2018-004033
Application 13/046,417
"does not avoid the problem of abstractness"); Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) ("a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility"); buySAFE, 765 F.3d at 1352 (abstract ideas are
unpatentable "no matter how '[g]roundbreaking, innovative, or even
brilliant"' they may be); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014) (the fact that a method was "not previously employed in this
art is not enough-standing alone-to confer patent eligibility upon the
claims").
Appellants' argument regarding preemption is also misplaced. Br. 24.
Although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). "Where a patent's claims are deemed only to disclose patent ineligible
subject matter" under the Alice/Mayo framework, "preemption concerns are
fully addressed and made moot." Id.
Accordingly, we agree with the Examiner that the pending claims are
directed to an abstract idea of comparing new and stored information and
using rules to identify options.
Alice Step Two
Appellants contend the claimed combination of components amounts
to significantly more that an abstract idea. Br. 24. Appellants argue "the
recited process solves the technological problem of establishing automatic
updates for documents automatically determined to be related to one another
in a content management system." Id. The Examiner responds, finding the
7
Appeal2018-004033
Application 13/046,417
"[r ]ecited 'content management system' is a program executed by a generic
processor and stored in a generic memory that merely 'automates' a manual
activity." Ans. 29. According to the Examiner, updating similar documents
is not a technical solution to a problem and, therefore, unlike the claims in
Enfzsh, cited by Appellants. Id at 30.
We are not persuaded by Appellants' argument. Appellants fail to
identify any technological improvement addressed by the claims. Prior
cases have made clear that mere automation of manual processes using
generic computers does not constitute a patentable improvement in computer
technology. In those cases, "the focus of the claims is not on such an
improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools." Credit Acceptance Corp. v. Westlake
Svcs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (quoting Elec. Power Grp., 830
F.3d at 1354).
Accordingly, we sustain the rejection of claim 33 under 35 U.S.C.
§ 101 and, for the same reasons, the rejection of independent claims 9 and
17 which are argued on the basis of claim 33 together the rejection of
dependent claims 10, 13-16, 18, 21-24, 26, 28-30, and 34--41 which are not
argued separately. See Br. 25.
35 USC§ 103(a)
The Examiner finds Cragun's Content Management System (CMS)
teaches establishing an auto-update relationship based on rules between
portions of documents. Final Act. 1 7. The Examiner applies McChrystal for
teaching comparing changes between separate source and target documents
rather than changes within a single document as disclosed by Cragun. Id at
1 7-18. Except for establishment of the auto-update relationship taught by
8
Appeal2018-004033
Application 13/046,417
Cragun and document-to-document comparison taught by McChrystal, the
Examiner finds the remainder of the generating step is taught by Parikh's
text input prediction and completion system which bases predictions on
extracting words from a plurality of unstructured documents and identifying
similar documents based on vectors representing the extracted words. Final
Act. 19. See also Parikh, Abstract. Thus, the Examiner relies on the
combination of Cragun, McChrystal, and Parikh for teaching or suggesting
the generating step of claim 33.
Appellants contend the rejection is improper because Parikh is
deficient. Br. 13. According to Appellants:
Id.
Parikh simply does not contemplate the notion of any auto-
update relationship being established between source and target
documents - let alone any such auto-update relationship being
enforced by the content management system by monitoring
changes to the source document and automatically updating the
target document based on the monitored changes. Further,
Cragun and McChrystal do not cure these deficiencies of Parikh.
Because Cragun, even in view of McChrystal and Parikh, does
not teach or suggest at least the underlined limitations above,
Applicants respectfully request withdrawal of the rejection of
independent claim 3 3.
The Examiner responds, explaining that aspects of the limitation
argued to be missing from Parikh are instead taught by Cragun and
McChrystal. Ans. 24. In particular, the Examiner identifies the auto-
updating and content management system features of the claims, rather than
being taught by Parikh, are taught by Cragun and McChrystal. Id. at 25-25.
Thus, the Examiner urges Appellants' argument is an improper attack on the
references individually when the rejection is based on combinations of
9
Appeal2018-004033
Application 13/046,417
references. Id at 24 citing In re Keller, 642 F.2d 413,426 (CCPA 1981); In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants do
not reply.
We agree with the Examiner. The features argued by Appellants to be
missing from Parikh are found in Cragun and McChrystal, notwithstanding
Appellants' generalized allegation to the contrary. See Br. 12 ("Cragun and
McChrystal do not cure these deficiencies of Parikh."). Thus, other than the
naked contention the Cragun and McChrystal references fail to teach aspects
of the disputed limitation, Appellants fail to address the Examiner's findings
applying those references in combination with Parikh. Merely reciting a
claim limitation and asserting it is not present falls short of identifying an
error in the Examiner's rejection as required on appeal. Arguments must
address the Examiner's action. 37 C.F.R. § 4I.37(c)(l)(iv) ("The arguments
shall explain why the examiner erred as to each ground of rejection
contested by appellant."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("[T]he Board reasonably interpreted Rule 41.3 7 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art"). Accordingly, we sustain the rejection of independent claim 33
and, for the same reasons, the rejection of independent claims 9 and 17
under 35 U.S.C. § 103(a) together with the rejections of dependent claims
10, 13-16, 18, 21-24, 26, 28-30, and 34--384 which are not argued
separately with particularity.
4 Neither claim 40, which depends from independent claim 33 and
intermediate claim 39 (discussed below), nor claim 41, which depends from
independent claims 17, is rejected under 35 U.S.C. § 103(a). Final Act. 26.
10
Appeal2018-004033
Application 13/046,417
Appellants also contend error in the rejection of dependent claim 39,
arguing the references fail to teach or suggest all four auto-update actions of
(i) modifying content without annotating, (ii) augmenting content without
annotating, (iii) annotating without updating or augmenting, and (iv)
deleting content. Br. 19. Appellants further argue the Examiner's rationale
for combining the teachings of the references is inadequate as merely
conclusory. Id at 20. The Examiner responds, explaining why each of the
actions is taught or suggested by the applied references. Ans. 26.
According to the Examiner "the recited four actions are not distinct because
'augmenting', 'annotating', and 'deleting' are specific types of a generic
'modifying'." Id. Finding each of the actions to be taught or suggested by
the references, the Examiner explains
[O]ne of ordinary skill in the art would be motivated to monitor
for changes and perform each of these four actions when changes
are determined in order to ensure that both documents contain
same information by virtue of additions, deletions,
augmentations, and annotations, where annotations can include
summary of what has been added, deleted, or otherwise modified
in the other related document.
Id at 27.
Appellants' contentions are unpersuasive of Examiner error.
Appellants fail to persuade us the references are deficient in teaching each of
the recited actions. In connection with the combination, the Federal Circuit
has "[held] that while an analysis of obviousness always depends on
evidence that supports the required Graham factual findings, it also may
include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference or expert opinion." Peifect Web Techs., Inc. v. InfoUSA, Inc., 587
11
Appeal2018-004033
Application 13/046,417
F.3d 1324, 1329 (Fed. Cir. 2009); see also Nat'! Steel Car, Ltd. v. Canadian
Pacific Ry., Ltd., 357 F.3d 1319, 1337 (Fed. Cir. 2004) ("It has long been the
law that the motivation to combine need not be found in prior art references,
but equally can be found 'in the knowledge generally available to one of
ordinary skill in the art."' (Quoting In re Jones, 958 F.2d 347,351 (Fed.
Cir. 1992))). The Court further instructs that
[ w ]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
The Examiner finds the reason for combining the teachings of Cragun,
McChrystal, Parikh, Bates, and Tanaka is to ensure that documents contain
the same information by virtue of additions, deletions, augmentations, and
annotations. Ans. 27. In the absence of sufficient evidence or argument to
the contrary, we find the Examiner has articulated reasoning with rational
underpinnings sufficient to justify the legal conclusion of obviousness and
are unpersuaded by Appellants' contention that the Examiner's combination
of references is inadequate or improper. Accordingly, we sustain the
rejection of claim 39 under 35 U.S.C. § 103(a).
DECISION
We affirm the rejection of claims 9, 10, 13-18, 21-24, 26, 28-30, and
33--41 under 35 U.S.C. § 101.
We affirm the rejection of claims 9, 10, 13-18, 21-24, 26, 28-30, and
33-39 under 35 U.S.C. § 103(a).
12
Appeal2018-004033
Application 13/046,417
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
13