Ex Parte Nudd

Patent Trial and Appeal Board

Aug 16, 2017

13420506 (P.T.A.B. Aug. 16, 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.
13/420,506 03/14/2012 Geoffrey Howard Nudd 10277-05619 US 7960
93219 7590 08/1
Patent Law Works, LLP
201 South Main Street, Suite 250
Salt Lake City, UT 84111
EXAMINER
YOUNG, ASHLEY YA-SHEH
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/18/2017 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):
docketing @patentlawworks.net
patents @ patentlawworks .net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFREY HOWARD NUDD
Appeal 2016-004256
Application 13/420,506
Technology Center 3600
Before THU A. DANG, JUSTIN BUSCH, and STEVEN M. AMUNDSON,
Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1—5 and 7—18, i.e., all pending claims. Claim 6 has been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to an “approach
to managing work tasks,” e.g., using “digital calendaring.” Spec. 117,
1 Appellant identifies the real party in interest as ClearCare Inc. App. Br. 1.
Appeal 2016-004256
Application 13/420,506
Abstract.2 The Specification explains that “a computer implemented method
for managing tasks in a work management system . . . provides a digital
calendar system configured to receive calendar entries,... to receive data to
establish non-event tasks for use in the digital calendar, and to also receive
status updates to the non-event task.” Spec. 117.
Exemplary Claim
Independent claim 1 exemplifies the subject matter of the claims
under consideration and reads as follows:
1. A computer implemented method for managing tasks in a
work management system comprising performing, by a
computer system:
providing a digital calendar system configured to receive
calendar entries;
receiving data to establish a plurality of non-event tasks
for use in the digital calendar;
receiving a first phone call from a worker over a
telephone line during a shift;
determining that the first phone call is an initial clock-in
call for the shift that is not preceded by another call for the
shift;
in response to determining that the first phone call is an
initial clock-in call that is not preceded by another call for the
shift, invoking a first reading of a portion of the non-event
tasks, the first reading including a first voice reading of each
non-event task of the portion of the non-vent [sic] tasks, the
first reading of the each non-event tasks not including a prompt
to update a status of the each non-event task;
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed March 14, 2012; “Final Act.” for the Final Office Action,
mailed February 11, 2015; “App. Br.” for the Appeal Brief, filed
September 14, 2015; “Ans.” for the Examiner’s Answer, mailed January 4,
2016; and “Reply Br.” for the Reply Brief, filed March 4, 2016.
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receiving a second phone call from the worker over the
telephone line; and
in response to receiving the second phone call subsequent
to the first phone call, a) invoking a second reading of the
portion of the non-event tasks, the second reading including a
second voice reading of each non-event task of the portion of
the non-event tasks, each second voice reading including a
voice prompt to update the statuses of the non-event tasks and
b) receiving updates to one or more non-event tasks of the
portion of the non-event tasks for one or more of the prompts.
App. Br. 12 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
Clockspot.com (July 23, 2010), web.archive.org/web/20100723052232/
http://www.clockspot.com/phoneTimeClock.php et seq. (“Clockspot”)
Claims 1—5 and 7—18 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Final Act. 8—9.
Claims 1, 2, 4, 13, 14, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Weber, Clockspot, and Forth. Final Act. 9-17.
Claims 3,5, 7—12, and 15—17 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Weber, Clockspot, Forth, and Rosse. Final Act. 17—31.
prior art:
Rosse
Forth
Weber et al. (“Weber”)
US 6,640,212 B1 Oct. 28, 2003
US 2007/0282660 Al Dec. 6, 2007
US 2008/0155547 Al June 26, 2008
The Rejections on Appeal
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Application 13/420,506
ANALYSIS
We have reviewed the rejections of claims 1—5 and 7—18 in light of
Appellant’s arguments that the Examiner erred. For the reasons explained
below, we concur with the Examiner’s conclusion that the claims recite
patent-ineligible subject matter but disagree with the obviousness
determination. We adopt the Examiner’s findings and reasoning in the Final
Office Action (Final Act. 2—3, 8—9) and Answer (Ans. 2—5) that relate to the
§101 rejection. We add the following to address and emphasize specific
findings and arguments.
The §101 Rejection of Claims 1—5 and 7—18
Introduction
The Patent Act defines patent-eligible subject matter broadly:
“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. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme
Court explained that § 101 “contains an important implicit exception” for
laws of nature, natural phenomena, and abstract ideas. See Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter:
First, “determine whether the claims at issue are directed to” a patent-
ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If so,
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements” add enough to
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transform the “nature of the claim” into “significantly more” than a patent-
ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016).
Step one in the Mayo!Alice framework involves looking at the “focus”
of the claims at issue and their “character as a whole.” Elec. Power Grp.,
LLC v. Alstrom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two
involves the search for an “inventive concept.” Alice, 134 S. Ct. at 2355;
Elec. Power Grp., 830 F.3d at 1353. An “inventive concept” requires more
than “well-understood, routine, conventional activity already engaged in” by
the relevant community. RapidLitig. Mgmt. Ltd. v. CellzDirect, Inc.,
827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80).
Mayo!Alice Step One
Appellant contends that the Examiner erred in rejecting claim 1 under
§ 101 because the claim “meet[s] several of the tests provided” in the “2014
Interim Guidance on Patent Subject Matter Eligibility,” 79 Fed. Reg. 74618
(Dec. 16, 2014) (“2014 Guidance”). App. Br. 5. For Mayo!Alice step one,
however, Appellant fails to identity any such test allegedly met by the
claims. Id. at 5—7; see Reply Br. 1—2. For step one, the Examiner
determines, and we agree, that the claims are directed to the abstract ideas of
“managing tasks in a work management system” and “receiving data/call
information and invoking readings accordingly.” Ans. 2—3; see Final
Act. 2—3, 8. Using conventional computer technology as a tool to
accomplish abstract-idea processes does not make the ideas any less abstract.
See Elec. Power Grp., 830 F.3d at 1354. Consequently, Appellant’s
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contention does not persuade us of Examiner error with respect to
Mayo!Alice step one.
Mayo!Alice Step Two
Appellant asserts that the Examiner erred in rejecting claim 1 under
§ 101 because the steps after claim 1 ’s preamble are “more specific than
simply ‘managing tasks in a work management system’” and instead “recite
specific computer-implemented steps that go beyond this ‘idea itself.’” App.
Br. 6. Appellant also asserts that “the abstract idea of ‘receiving data/call
information and invoking readings according’ [sic] does not inherently
include the ordered listing of steps” in claim 1. Reply Br. 1.
Appellant’s assertions regarding the “ordered listing of steps” in
claim 1 do not persuade us of Examiner error because they identify the
features constituting the abstract ideas. See Ans. 2-4; see also Intellectual
Ventures ILLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340-41
(Fed. Cir. 2017) (noting that “the underlying concept embodied by the
limitations [alleged to provide a concrete solution] merely encompasses the
abstract idea itself’). As the Examiner explains, claim 1 “recite[s] specific
steps of the abstract idea, [but] those steps are still directed to an abstract
idea.” Ans. 4.
Further, we agree with the Examiner that: (1) claim 1 “requires no
more than a general purpose computer to perform generic computer
functions that are well-understood in the art of task management”; and
(2) “the receiving of calls and invoking of subsequent readings was a well-
known, routine and conventional means of representing data in a generic
manner, as applied to a telephonic environment.” Final Act. 8; Ans. 4. The
Examiner points out that the Specification discloses a conventional tablet
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computer, in particular, an Apple iPad. Final Act. 2 (citing Spec. 1 52); see
also Spec. Tflf 14, 28—29, 51—52. The Specification discusses method
implementation using “a computer connectable to the Internet, a mobile
tablet connectable to the Internet, and/or telephony” and admits that “[s]uch
computer systems ... are well known and are widely distributed and sold,
including by way of example the Apple iPad.” Spec. 28, 52.
Consequently, we agree with the Examiner that the additional
elements in claim 1 considered as an ordered combination do not transform
the nature of the claim into significantly more than a patent-ineligible
concept. Final Act. 9; Ans. 3^4.
Appellant argues that the “ordered listing of steps” in claim 1 “is not
common knowledge” and that Appellant “is active in this field and is aware
of no such system that was in widespread or even limited use at the time of
invention or filing.” Reply Br. 1. But “under the Mayo!Alice framework, 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.” Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (noting that
“a claim for a new abstract idea is still an abstract idea”). Further, the
Federal Circuit has expressly rejected the notion that “abstract ideas remain
patent-eligible under § 101 as long as they are new ideas not previously well
known, and not routine activity.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 714—16 (Fed. Cir. 2014).
Appellant asserts that the Examiner erred in rejecting claim 1 because
the Examiner cited no evidence to support the determinations that the
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additional elements in claim 1 are “mere instructions to implement the idea
on a computer” and/or “generic computer structure that serves to perform
generic computer functions that are well-understood routine, and
conventional activities previously known in the pertinent industry.” App.
Br. 6—7 (quoting Final Act. 8). Appellant asserts that “[^ejections must be
supported by evidence not merely opinion.” App. Br. 7; see Reply Br. 1.
To support that assertion, Appellant cites In re Zurko, 258 F.3d 1379
(Fed. Cir. 2001), and the Manual of Patent Examining Procedure (MPEP)
§ 2144.03 (9th ed. Rev. 11.2013 Mar. 2014). App. Br. 7; see Reply Br. 1—2.
Appellant’s assertions regarding the absence of evidence do not
persuade us of Examiner error. “Patent eligibility under § 101 presents an
issue of law.” Accenture Glob. Servs., GmbH v. Guidewire Software, Inc.,
728 F.3d 1336, 1340 (Fed. Cir. 2013). There is no requirement that an
examiner cite evidentiary support to conclude that a claim fails to satisfy
§ 101 ’s requirements. Although Appellant cites the 2014 Guidance,
Appellant neglects to address the “July 2015 Update: Subject Matter
Eligibility” (“2015 Update”). The 2015 Update notes that “courts do not
rely on evidence that a claimed concept is a judicial exception, and in most
cases resolve the ultimate legal conclusion on eligibility without making any
factual findings.” 2015 Update 6. Further, it instructs that a § 101 rejection
may rest on “the knowledge generally available to those in the art, on the
case law precedent, on applicant’s own disclosure, or on evidence.” Id.
In the Answer, the Examiner notes that the 2015 Update explains that
courts treat the determination that “additional elements were well-
understood, routine or conventional” as “a matter appropriate for judicial
notice.” Ans. 4 (quoting 2015 Update 7). In the Reply Brief, Appellant
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“objects to the Examiner’s taking of Official Notice” but does not
demonstrate error in the Examiner’s determinations regarding the § 101
rejection. Reply Br. 1—2. Among other things, Appellant does not address
the Specification’s admission that computer systems for implementing the
claimed method “are well known and are widely distributed and sold.”
Spec. 1 52.
Moreover, Appellant misplaces his reliance on MPEP § 2144.03 and
Zurko. MPEP § 2144.03 concerns “Reliance on Common Knowledge in the
Art or ‘Well Known’ Prior Art” to support an obviousness rejection. Zurko
also concerns an obviousness rejection. 258 F.3d at 1381, 1386.
Summary for Independent Claim 1
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claim 1 under § 101.
Hence, we sustain the rejection of claim 1.
Independent Claim 18 and
Dependent Claims 2-5 and 7-17
Appellant does not make any separate substantive patentability
arguments for independent claim 18 or dependent claims 2—5 and 7—17.
App. Br. 5—7; Reply Br. 1—2. Because Appellant does not argue the claims
separately, we sustain the § 101 rejection of claims 2—5 and 7—18 for the
same reasons as claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The § 103(a) Rejection of Claims 1, 2, 4, 13, 14, and 18
Appellant argues that the Examiner erred in rejecting claim 1 under
§ 103(a) because the references do not disclose (1) “a first reading of a
portion of the non-event tasks . . . not including a prompt to update a status
of the each non-event task” in response to “a first phone call from a worker”
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and (2) “a second reading of the portion of the non-event tasks . . . including
a voice prompt to update the statuses of the non-event tasks” in response to
“a second phone call from the worker.” App. Br. 7—10; Reply Br. 2-4. In
particular, Appellant contends that “Clockspot does not disclose the menu
being presented or processed any differently for a first call or a second call.”
App. Br. 9. In addition, Appellant contends that “Forth discloses a similar
system in which all calls are responded to in the same way.” Id. at 10.
According to Appellant, “Forth does not describe any instance where the call
is made and does not include a prompting to update the status of tasks.”
Reply Br. 3; see App. Br. 10. Further, Appellant asserts that Forth differs
from claim 1 because Forth “refers to a call initiated by the automated
system (‘an automated system can dial the number . . .’) rather than a first or
second phone call ‘from a worker’ as required by claim 1.” Reply Br. 3.
The Examiner relies on Clockspot and Forth for the disputed
limitations in claim 1. Final Act. 4—5, 10—14. In particular, the Examiner
finds that Clockspot teaches “tracking the clock-in and clock-out
information for an employee, which may be done via a telephone line.”
Ans. 6; see Final Act. 10-12; Clockspot 2—3, 9. In addition, the Examiner
finds that Forth teaches “first and second readings that are different and are
invoked in response to different circumstances,” i.e., an initial notification
call without a status-update prompt and a subsequent reminder call with a
status-update prompt. Ans. 6—7; see Final Act. 12—14; Forth | 83. While we
agree with those findings, we also agree with Appellant that the calls in
Forth go from “an automated system” to the worker. See Forth | 83.
Based on the record before us, the Examiner has not adequately
explained how the cited portions of Clockspot and Forth teach or suggest the
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claimed first and second readings “in response to” respective first and
second calls from the worker. See Final Act. 4—5, 10-14; Ans. 5—9. Thus,
we do not sustain the obviousness rejection of claim 1 based on Weber,
Clockspot, and Forth. Claims 2, 4, 13, and 14 depend from claim 1. Like
claim 1, independent claim 18 includes limitations requiring calls from the
worker. For the reasons discussed regarding claim 1, we do not sustain the
obviousness rejection of claims 2, 4, 13, 14, and 18 based on Weber,
Clockspot, and Forth.
The § 103(a) Rejection of Claims 3, 5, 7—12, and 15—17
Claims 3,5, 7—12, and 15—17 depend directly or indirectly from
claim 1. Based on the record before us, the Examiner has not shown how
the additionally cited Rosse reference overcomes the deficiency in Clockspot
and Forth for claim 1 discussed above. Thus, we do not sustain the
obviousness rejection of claims 3, 5, 7—12, and 15—17.
DECISION
We affirm the Examiner’s decision to reject claims 1—5 and 7—18
under 35 U.S.C. § 101, but reverse the Examiner’s rejection of these claims
under 35 U.S.C. § 103(a). Because we affirm at least one ground of
rejection with respect to each claim on appeal, we affirm the Examiner’s
decision to reject all of the pending claims.
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(f).
AFFIRMED
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