Ex Parte Olexa

Patent Trials and Appeals Board

Mar 29, 2019

13691692 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/691,692 11/30/2012
128144
RimonPC
7590
One Embarcadero Center
Suite 400
San Francisco, CA 94111
04/02/2019
FIRST NAMED INVENTOR
Vladimir Olexa
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.
10-499-US-C 1529
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
eofficeaction@appcoll.com
docketing.rimonlaw@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VLADIMIR OLEXA
Appeal2017-009968
Application 13/691,692 1
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 2-8 and 10-21, which are all of the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ). Claims 1 and 9 have been
cancelled.
We REVERSE.
1 According to Appellant, the real party in interest is CBS Interactive Inc.,
the assignee of record (App. Br. 2).
Appeal2017-009968
Application 13/691,692
CLAIMED SUBJECT MATTER
According to Appellant, the claims are directed to a system and
method for electronically navigating through content and related content
(Spec. ,r 41, Abstract, Fig. 2A). Claim 2, reproduced below, is
representative of the claimed subject matter:
2. A method, performed by one or more computing devices,
for delivering browsable content over a computer network, said
method comprising:
receiving, by at least one of the one or more computing
devices, a query for a content item based on identification of at
least one of a product and a service, the content item including at
least one editorial review describing one of the product and the
service;
aggregating, by at least one of the one or more computing
devices, a first plurality of related content items, each content
item in the first plurality of related content items having at least
one attribute in common with the content item;
transmitting, by at least one of the one or more computing
devices, for display on one of the computing devices the content
item in a first user interface portion and at least two content items
in the first plurality of related content items in a second user
interface portion adjacent to the first user interface portion;
providing, by at least one of the one or more computing
devices, one or more browsing user interface controls on one of
the computing devices configured to allow the user to navigate
among the first plurality of related content items without
selecting one of the content items;
providing, by at least one of the one or more computing
devices, a selection user interface control on one of the
computing devices configured to facilitate selection of one of the
content items in the first plurality of related content items;
receiving, by at least one of the one or more computing
devices, a selection of one of the content items in the first
plurality of related content items;
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Application 13/691,692
aggregating, by at least one of the one or more computing
devices, a second plurality of related content items in response to
receiving the selection of one of the content items in the first
plurality of content items, each content item in the second
plurality of related content items having at least one attribute in
common with the selected content item; and
transmitting, by at least one of the one or more computing
devices, for display on one of the computing devices the selected
content item in the first user interface portion and at least two
content items in the second plurality of related content items in
the second user interface portion.
REJECTION
Claims 2-8 and 10-21 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter (Final Act. 3---6).
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter" (35 U.S.C. § 101).
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable, e.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice (id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012))). In accordance with that
framework, we first determine what concept the claim is "directed to" (see
Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the
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Application 13/691,692
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010)
("Claims 1 and 4 in petitioners' application explain the basic concept of
hedging, or protecting against risk.")).
Concepts determined to be abstract ideas, and thus, patent-ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent-eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim
at issue recited a mathematical formula, but the Supreme Court held that "[a]
claim drawn to subject matter otherwise statutory does not become
nonstatutory simply because it uses a mathematical formula" (Diehr, 450
U.S. at 176; see also id. at 192 ("We view respondents' claims as nothing
more than a process for molding rubber products and not as an attempt to
patent a mathematical formula.")). Having said that, the Supreme Court also
indicated that a claim "seeking patent protection for that formula in the
abstract ... is not accorded the protection of our patent laws, ... and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment" (id. ( citing Benson and
Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a
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Application 13/691,692
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.")).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application" (Alice, 573 U.S. at 221 (quotation marks omitted)). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]"' (id. (quoting Mayo, 566 U.S. at 77)).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention" (id.).
USPTO January 7, 2019 Revised Section 101 Memorandum
The USPTO recently published revised guidance on the application of
§ 101 (see 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("2019 Eligibility Guidance")). Under the 2019
Revised Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim ( 1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
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Application 13/691,692
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
ISSUE
35 US.C. § 101: Claims 2---8 and 10-21
The Examiner concluded claims 2-8 and 10-21 are directed to patent-
ineligible subject matter (Final Act. 3---6). Appellant argues the invention as
recited in claims 2-8 and 10-21, is directed to patent-eligible subject matter
(App. Br. 5-10). Therefore, the issue presented by the arguments is whether
the Examiner erred in concluding the invention as recited is patent-
ineligible.
ANALYSIS
We do not agree with the Examiner, for the reasons discussed in
greater detail below. We analyze the claims under the 2019 Revised Patent
Subject Matter Eligibility Guidance and adopt the nomenclature for the steps
it uses.
STEP 1
Section 101 provides that "[ w ]hoever 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. We
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determine that independent claim 2 recites a method, independent claim 11
recites a system, and independent claim 16 recites a non-transitory
computer-readable medium. As such, the claims are directed to statutory
classes of invention within 35 U.S.C. § 101, i.e., methods and machines.
STEP 2A, Prong 1
Under Step 2A, Prong 1 of the 2019 Eligibility Guidance, we must
determine whether the claims, being directed to statutory classes of
invention, nonetheless fall within a judicial exception.
The Examiner determines that the claims are directed to "the abstract
practice of presenting information to users" (Adv. Act. 2) or "providing
content to users" (Final Act. 4), both of which the Examiner determines are
"method[s] of organizing human activities" (Adv. Act. 2; Final Act. 4).
Appellant argues that the "claimed invention is directed to more than
an 'abstract idea,"' and the invention "allow[ s] a user to efficiently navigate
a collection of editorial content associated with products in a computing
environment" (App. Br. 5).
We determine that the Examiner fairly characterizes the claims as
presenting information and providing content, i.e., methods of organizing
human activities. Turning to the portions of the claims reciting the
Examiner's identified abstract idea, claim 2, for example, recites aggregating
various types of content to "display ... the content item in a first user
interface portion and at least two content items in the first plurality of related
content items in a second user interface portion adjacent to the first user
interface portion" and to also "display ... the selected content item in the
first user interface portion and at least two content items in the second
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plurality of related content items in the second user interface portion."
Those limitations, under their broadest reasonable interpretation, describe
presenting information in the form of content and placing the content in
particular positions. For example, content items may be placed at a first
position, i.e., a "first user interface portion," or content items may be placed
at a second "adjacent" position, i.e., a "second user interface portion."
Laying out content in a logical manner is a practice that humans have long-
engaged in, e.g., arranging content in newspapers and magazines. As such,
we agree with the Examiner that claim 2 recites laying out content, which is
managing personal behavior by following rules or instructions, which is one
of certain methods of organizing human activities as identified in the 2019
Revised Patent Subject Matter Eligibility Guidance, and thus is directed to
an abstract idea.
Appellant's arguments discussing the implementation and benefits of
the claimed invention (see App. Br. 5; see also Reply Br. 2) do not
persuasively address the Examiner's identification of the claimed content
presentation features and so do not persuade us of error in Examiner's
determination that the claims recite an abstract idea. Appellant's arguments
are better suited to our analysis of whether the claims integrate the identified
abstract idea into a practical application or are directed to significantly more
than the abstract idea, which we discuss below.
STEP 2A Prong 2
Next, we determine whether the claims are directed to the abstract
concept itself or whether the claims are instead directed to some
technological implementation or application of, or improvement to, the
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Application 13/691,692
recited concept, i.e., integrated into a practical application (see, e.g., Alice,
573 U.S. at 223, discussing Diehr, 450 U.S. at 175).
The Examiner determines the claimed "improvements are not of a
technical nature" and do not address a "problem specifically aris[ing] in the
context of computer systems" (Adv. Act. 2; Ans. 3).
Appellant argues the claimed invention "allow[ s] a user to efficiently
navigate a collection of editorial content associated with products in a
computing environment" (App. Br. 5; Reply Br. 2).
We agree with Appellant. Our reviewing court has held that claims
"directed to a particular manner of summarizing and presenting information
in electronic devices ... recite a specific improvement over prior systems,
resulting in an improved user interface for electronic devices" ( Core
Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362-63
(Fed. Cir. 2018); see also Data Engine Techs. LLC v. Google LLC, 906 F.3d
999, 1008 (Fed. Cir. 2018) ("a specific method for navigating through three-
dimensional electronic spreadsheets ... provides a specific solution to then-
existing technological problems in computers and prior art electronic
spreadsheets.")).
Here, like in Core Wireless, the claims recite a particular manner of
presenting information for navigating an electronic environment. For
example, claim 2 recites "aggregating ... a first plurality of related content
items ... having at least one attribute in common with the content item" and
then "providing ... browsing user interface controls ... configured to allow
the user to navigate among the first plurality of related content items without
selecting one of the content items" and "a selection user interface control ...
to facilitate selection of one of the content items in the first plurality of
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related content items." The claim further recites, after a related content item
is selected, "aggregating ... [a] second plurality of related content items
having at least one attribute in common with the selected content item" and
"display[ing] ... the selected content item in the first user interface portion
and at least two content items in the second plurality of related content items
in the second user interface portion." Accordingly, the claims recite
graphical user interface controls used to navigate through content and so
provide "an improved user interface for electronic devices" ( Core Wireless,
880 F.3d at 1363).
The Specification describes that prior content navigation and
comparison interfaces, e.g., "review websites[,] require that a user search for
different product models individually, then toggle or navigate back and forth
between the reviews" or create "a sizeable matrix ... that is either jammed
into a single page for display, or broken up into multiple pages, which again
requires toggling and navigation between different products" (Spec. ,r,r 12-
13). The Specification further describes that prior interfaces "provide little
guidance as to which of the displayed products are most similar to a selected
product" and "even if additional products are later identified as comparable
by the user, they cannot be added to the comparison without running a new
search" (id.). The claimed invention addresses these purported electronic
content navigation problems by allowing users to "advance from one
product review to another by selecting navigational buttons representing the
previous and next product reviews from within a product review being
currently viewed" and so "simplifies the user experience by eliminating the
need to go back to a listing or search page to research products similar to the
product whose review is being viewed" (id. ,r 15). As such, because, as
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claimed, the "disclosed invention improves the efficiency of using the
electronic device," we determine that the claimed invention integrates the
abstract idea into a practical application (see Core Wireless, 880 F.3d at
1363). And because the claims integrate the abstract idea into a practical
application, the claims are patent-eligible under Step 2A of the 2019
Eligibility Guidance, and we need not address whether the claims recite
additional elements that amount to significantly more than the exception
itself, as described in Step 2B of the 2019 Eligibility Guidance (84 Fed. Reg.
at 54).
Accordingly, we do not sustain the Examiner's rejection of
independent claims 2, 11, and 16 which all similarly recite an improved
graphical user interface for navigating electronic content, as discussed
above. It follows that we also do not sustain the rejections of dependent
claims 3-8, 10, 12-15, and 17-21 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 2-8 and 10-21 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter is reversed.
REVERSED
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