Ex Parte Morgia et al

Patent Trial and Appeal Board

Oct 23, 2018

14525701 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/525,701 10/28/2014
22865 7590 10/25/2018
Altera Law Group, LLC
33 South 6th Street, Suite 4200
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Michael A. Morgia
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.
04420.0019-I3-C2 2283
EXAMINER
GEBREMICHAEL, BRUK A
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
patent@alteralaw.com
j armstrong@alteralaw.com
mlasky@alteralaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MICHAEL A. MORGIA, PAT A. FONTANA JR.,
ALEXM. MORGIA, PAT A. FONTANA SR.,
RALPH E. ROLAND, SHAWN M. DA VIS,
MARK M. PIWOWARSKI, and JOHN P. GAUS
Appeal2017-002496
Application 14/525, 701
Technology Center 3700
Before MICHAEL L. HOELTER, PA TRICK R. SCANLON, and
JEREMY M. PLENZLER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final rejection of claims 21-36. App. Br. 1. Claims 1-20 have
been canceled. See Amendment dated April 20, 2015. Appellants' counsel
presented Oral argument on October 4, 2018. We have jurisdiction under
35 U.S.C. § 6(b ). For the following reasons, we AFFIRM the Examiner's
rejection under 35 U.S.C. § 101.
Appeal2017-002496
Application 14/525,701
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "is directed to a system and method of
selection of a consensus from a collection of ideas." Spec. ,r 3. Claims 21,
3 5, and 3 6 are independent. Claim 21 is illustrative of the claims on appeal
and is reproduced below.
21. An improved voting machine computer connected to a
plurality of linked voting terminals capable of rating voting
responses to a massive number of ideas while minimizing the
effect of individual rater bias affecting overall ratings and with
processing throughput being substantially time independent on
the number of ideas to be rated, the number of ideas being
numbered 1 to N, N being the last idea, the voting machine
performing the following tasks:
a. in a first round, the voting computer electronically
distributing a first universe of ideas, divided into idea sets, to a
group of participants at said terminals, in parallel, wherein each
participant at a terminal receives at least one idea set, and
wherein the universe of ideas are divided so that the number of
idea sets generally equals the number of participants and wherein
each idea has a substantially equal and fair probability of being
viewed and voted on by a generally equal number of participants;
b. receiving participant input at said terminals where each
participant select from their idea set, via an input device, at least
one highest ranking idea;
c. the voting computer having a threshold hurdle win rate
which comprises a predetermined number against which said
participant ranking for each idea are compared; segregating the
ideas which exceed said predetermined number as winning ideas
and creating a first subgroup of ideas which exceed said
predetermined number;
d. in a second round, the voting computer electronically
re-distributing the first subgroup of ideas divided into second
idea sets to all participants at terminals in parallel wherein each
participant receives at least one second idea set; wherein the
universe of ideas are divided so that the number of second idea
sets generally equals the number of participants and wherein
2
Appeal2017-002496
Application 14/525,701
each idea has a substantially equal and fair probability of being
viewed and voted on by a generally equal number of participants;
whereby the number of ideas is reduced while the number of
participants is generally not reduced, thereby more participants
are applied to the remaining ideas;
e. receiving input at said terminals from participants
selection from their second idea set, at least one highest ranking
idea;
f. the voting computer having establishing a second
threshold hurdle win rate which comprises a second
predetermined number against which the participant rankings for
each idea are compared; the voting computer segregating the
ideas which exceed said second predetermined number as
winning ideas and creating a second subgroup of ideas which
exceed said second predetermined number;
wherein each of actions (a) and ( d) comprises steps for
dividing plurality of ideas into groups, each group of ideas to be
distributed to each of a plurality of participants by;
the voting computer[,] using a sequence of integers
method of assigning a sequence of idea numbers 1 to N
distributing the ideas to said first sub-group into non-exclusive
subsets
whereby the voting computer terminates further
distribution to terminals and rating or proceeds to subsequent
rounds of redistributing ideas to further increase the accuracy and
throughput to find the group preferred idea and whereby
effectively a large number of ideas is distillable by a mass
participant group and the computer generates an output of a
distilled consensus of ideas.
Ferguson et al.
Jakobson
V ander Mey et al.
REFERENCES
US 7,158,960 B2
US 2007 /0260996 Al
US 7,519,562 Bl
3
Jan.2,2007
Nov. 8, 2007
Apr. 14, 2009
Appeal2017-002496
Application 14/525,701
THE REJECTIONS ON APPEAL
Claims 21-36 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
Claims 21-36 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 35 and 36 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Claims 21-29, 31, 32, 35, and 36 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ferguson.
Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ferguson and Jakobson.
Claims 33 and 34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ferguson and Vander Mey.
ANALYSIS
The rejection of claims 21-36 as being directed to
non-statutory subject matter
Appellants argue claims 21-36 together, focusing primarily on
independent claim 21. App. Br. 25- 41. Throughout these arguments,
Appellants also address independent claims 35 and 36 (see App. Br. 31, 32,
36) but acknowledge, "[e]ach of independent claims 35 and 36 recites
elements similar or analogous to independent claim 21." App. Br. 41.
Accordingly, we select claim 21 for review, with the remaining claims
standing or falling with claim 21. See 37 C.F.R. § 4I.37(c)(l)(iv).
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
4
Appeal2017-002496
Application 14/525,701
thereof." 35 U.S.C. § 101. The U.S. Supreme Court has "long held that this
[statutory] provision 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
Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct.
2107, 2116 (2013)). Notwithstanding that a law of nature or an abstract
idea, by itself, is not patentable, the practical application of these concepts
may be deserving of patent protection. Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94 (2012).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "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. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. 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 application." Id. (quoting Mayo, 132 S.
Ct. at 1298, 1297).
It is not disputed that claim 21 pertains to " [ a ]n improved voting
machine computer" with this "voting machine performing the following
tasks" ( such tasks being fully enumerated above). Suffice it to say that the
enumerated tasks include a first round where "the voting computer
electronically" distributes a plurality of "ideas" ( divided into sets) that are to
be voted on, and then "receiving participant input" at various terminals
5
Appeal2017-002496
Application 14/525,701
which is tabulated to identify those ideas that have passed a "threshold
hurdle win rate." See claim elements a----c above. A "second round" of
voting ensues, which is restricted to those ideas passing the first round, and,
similarly, the voting computer establishes "a second threshold hurdle win
rate." See claim elements d-f above. Claim 21 further recites that these
steps continue "to subsequent rounds" in order "to find the group preferred
idea." Claim 21 also recites that the voting computer "comprises steps for
dividing [the] plurality of ideas into groups" and that the ideas so grouped
are assigned "a sequence of integers" from "1 to N" to aid in their
distribution and/or re-distribution. Figure 1 of Appellants' Specification is a
good visual depiction of the limitations recited. Paragraph 9 of Appellants'
Specification is also a good "Brief Summary of the Invention."
The Examiner determines that claim 1 is directed to organizing human
activity and, more specifically, voting, which is an abstract idea. Final Act.
3. From all of the above, i.e., the claims, the drawings, the description, it is
fair to say that this application for a patent pertains to a computerized
method of voting ( albeit, as Appellants argue, different from previous voting
methodologies). 1 This brings us to whether the claimed computer voting
methodology ( even if unique) is an abstract idea.
Appellants were prescient in stating, "It is apparent that the CAFC is
in the process of modifying its interpretation of sec 101 and will continue to
do so as this case moves toward a decision. It is respectfully requested that
1 Appellants state, "The claim explicitly refers to a massive number of ideas
( and hence a massive number of voters). This is not similar to paper ballots
and voting machines. This system requires multiple rounds of voting in
parallel. Paper voting could not possibly provide a real solution." Reply
Br. 19.
6
Appeal2017-002496
Application 14/525,701
the Board apply the current CAFC case law at the time this case be taken up
for consideration." Reply Br. 19. We will endeavor to do so.
Although Appellants dispute the Examiner's determination that claim
1 is directed to an abstract idea in the Appeal Brief and the Reply Brief
(Appeal Br. 25-36; Reply Br. 19-20), at oral hearing, Appellants appeared
to concede that claim 1 is directed to an abstract idea (See Transcript 24:4--
12 ( stating the argument that the claims are directed to an abstract idea but
that the claims add significantly more is the "most applicable")). Even if
Appellants did not concede that claim 1 is directed to an abstract idea, we
agree with the Examiner that claim 1 is directed to the abstract idea of
voting. This is because our reviewing court recently addressed a matter
"directed to voting methods and systems that provide for 'auto-verification'
of a voter's ballot," and we tum to that case for guidance. See Voter
Verified, Inc., v. Election Systems & Software LLC, 887 F.3d 1376, 1379
(Fed. Cir. 2018). When addressing the eligibility of voting/verification
claim limitations under 35 U.S.C. § 101, the Court, in Voter Verified, stated,
"the claims as a whole are drawn to the concept of voting, verifying the vote,
and submitting the vote for tabulation. Humans have performed this
fundamental activity that forms the basis of our democracy for hundreds of
years." 2 Voter Verified, 887 F.3d at 1385. In this case, the Court reasoned:
These steps are therefore nothing more than abstract ideas. Cf
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 73 (Fed. Cir. 2011) ("[M]ethods which can be performed
entirely in the human mind are the types of methods that embody
the 'basic tools of scientific and technological work' that are free
to all men and reserved exclusively to none." (quoting Gottschalk
2 We note that the claims presently before us lack the verification limitation
found in Voter Verified.
7
Appeal2017-002496
Application 14/525,701
v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273
(1972))).
Voter Verified, 887 F.3d at 1385-86. Thus, according to the first part of the
Alice inquiry, we determine that the presently pending claims are directed to
one of those patent-ineligible concepts. See supra.
Turning to the second part of the patent eligibility inquiry, "Applicant
submits that the claims are directed to technology and recite elements that
include a voting machine, not a general purpose computer." App. Br. 27.
Indeed, claim 21 is directed to a "voting machine computer," however, claim
21 does not recite any specific computer structure that would deviate from
that which one would reasonably expect from a general voting machine
computer/system. As such, Appellants do not identify any limitation that
might take Appellants' machine out of this "general voting machine
computer' realm; instead, Appellants ask a series of question such as "does
the integration of the computer amount to more than a mere instruction to
implement an abstract idea on the computer." App. Br. 37.
In answering that question, Appellants address the claims recited in
Alice and state, "[i]n contrast, the claims at issue in this case recite
terminals/consoles which provide input for the voter" and also allow the
receipt of feedback as well as the ability to participate in later rounds. App.
Br. 37. Providing terminals/consoles, however, for sending/receiving voter
input/feedback is insufficient for one skilled in the art to understand that
Appellants' claimed device is anything other than a general purpose voting
machine computer, and one similar to that addressed in Voter Verified. See
Voter Verified, 887 F.3d at 1386. In other words, as per the Examiner,
"designating a particular name to a generic computer system does not
8
Appeal2017-002496
Application 14/525,701
change the fact regarding the generic computer implementation." Ans. 62.
We agree with the Examiner's analysis.
Appellants also argue, for example, that the claimed arrangement
solves a technological problem, does not include purely conventional
functions, improves the functioning of the computer, and are rooted in
computer technology to overcome a problem specifically arising in a
particular computer realm. Appeal Br. 3 8--41. As the Examiner explains,
however, there is no technological problem addressed by the claimed
arrangement. See Final Act. 8-9. Indeed, the recited tasks could be
performed by a human using pen and paper. Appellants admitted as much at
oral hearing. See Transcript 29:1-10.
Appellants additionally contend that the claimed arrangement does not
preempt all ways of providing voter input. Appeal Br. 40. "While
preemption concerns are "the basis for the judicial exceptions to
patentability ... , the absence of complete preemption does not demonstrate
patent eligibility." BSG Tech v. Buyseasons, 899 F.3d 1281, 1286 (Fed Cir.
2018) (internal citations omitted).
Regarding BSG, that court further held (a) "that claims are not saved
from abstraction merely because they recite components more specific than
a generic computer" and, (b) "[ t ]hese cases reflect that a claim is not patent
eligible merely because it applies an abstract idea in a narrow way." BSG,
899 F.3d at 1286-87. In other words, whether reciting a generic computer
more specifically, or whether seeking protection of an abstract idea in a
narrower manner, neither avenue will suffice to transform a generic
computer/abstract idea into patent-eligible claim language.
9
Appeal2017-002496
Application 14/525,701
Thus, following the guidance provided by our reviewing court above,
we agree with the Examiner that claim 21, as written, is directed to an
abstract idea. See Final Act. 2. Accordingly, we affirm the Examiner's
rejection of claims 21-36 "as being directed to non-statutory subject matter."
Final Act. 3.
Regarding the Examiner's additional rejections under§§ 103 and 112,
we are informed that "[t]he § 101 patent-eligibility inquiry is only a
threshold test." Bilski v. Kappas, 561 U.S. 593, 602 (2010). This means
that if the Section 101 threshold is satisfied, further investigation under other
sections of 35 U.S.C. is still warranted. On the other hand, should the
threshold not be satisfied, there is little merit in pursuing further
investigation into these other sections since the claim language is directed to
ineligible subject matter. The latter situation is the case before us since it
has been determined, via different rationales, that the claim language on
appeal is not patent eligible. Accordingly, we do not reach the Examiner's
additional rejections under§§ 103 and 112.
DECISION
The Examiner's rejection of claims 21-36 as being directed to non-
statutory subject matter is affirmed.
We do not reach the merits of the Examiner's rejections under§§ 103
and 112 for the above reasons.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
10