Ex Parte Pace

Patent Trial and Appeal Board

Nov 28, 2018

14592754 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/592,754 01/08/2015
29989 7590 11/30/2018
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
Rob Pace
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.
60353-0017 1084
EXAMINER
ROTARU, OCTAVIAN
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROB PACE
Appeal2017-009437
Application 14/592,754
Technology Center 3600
Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH and
JOHN R. KENNY, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1, 3, 4, 6, and 13-
16 under 35 U.S.C. § 134(a). Appeal Brief 1. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Introduction
The invention is directed to, "computer user interface display
techniques for computer generation of visual or graphical feedback matrices
that accept computer input selection of both positive and negative feedback
options and generating additional feedback matrices in computer device
displays based on the selection of both positive and negative feedback
options." Appeal Brief 2.
Appeal2017-009437
Application 14/592,754
Illustrative Claim
1. A computer implemented method comprising:
displaying, by at least one of one or more hardware processors of a
mobile computing device, on a video display of the computing device, one
or more selectable items;
wherein each of the one or more selectable items relates to a business
or entity to provide feedback on;
obtaining, by the at least one of the hardware processors, first user
input selecting an item of the one or more selectable items;
after obtaining the first user input, displaying on the video display of
the computing device, by the at least one of the hardware processors, a
matrix of first-level binary selectable choices of positive and negative
feedback for providing initial feedback on the one or more aspects related to
the business or entity;
obtaining, by the at least one of the hardware processors, second user
input selecting, on the matrix of first-level binary selectable feedback
choices of positive and negative feedback, both the positive and the negative
binary selectable feedback choices for a particular aspect of the one or more
aspects related to the business or entity;
generating, by the at least one of the hardware processors, a set of
expanded matrices of second-level feedback choices based, at least in part,
on the first user input selecting the item of the one or more selectable items,
the second level input selecting the positive selectable feedback choice for
the particular aspect, and the second level input selecting the negative binary
selectable feedback choice for the particular aspect;
displaying, by the at least one of the hardware processors, by the
video display of the mobile computing device, subsequent to obtaining the
second user input, the set of expanded matrices of second-level feedback
choices resulting from the previous selection of both the positive and
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negative binary selectable feedback choices for the particular aspect of the
one or more aspects related to the business or entity,
obtaining, by the at least one of the hardware processors, third user
input selecting additional feedback from the set of expanded matrices of
second-level feedback choices;
sending, by the at least one of the hardware processors, to a server via
a data network, structured data representing the second user input and the
third user input.
Rejection on Appeal
Claims 1, 3, 4, 6 and 13-16 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
The claimed invention is directed to non-statutory subject matter because the
claims as a whole, considering all claim elements both individually and in
combination, do not amount to significantly more than an abstract idea.
Final Action 4--20.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Briefs (filed January 9 and February 16, 2017), the
Reply Brief (filed June 23, 2017), the Answer (mailed May 1, 2017) and the
Final Action (mailed September 8, 2016) for the respective details.
35 U.S.C. § 101 Rejection
Section 101 defines patentable subject matter: "Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
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obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court, however, has "long held that
this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable." Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
( quotation omitted). To determine patentable subject matter, the Supreme
Court has set forth a two-part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347,
2355 (2014). "The inquiry often is whether the claims are directed to 'a
specific means or method' for improving technology or whether they are
simply directed to an abstract end-result." RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (citation omitted). A court must
be cognizant that "all inventions at some level embody, use, reflect, rest
upon, or apply laws of nature, natural phenomena, or abstract ideas" (Mayo,
566 U.S. at 71 ), and "describing the claims at ... a high level of abstraction
and untethered from the language of the claims all but ensures that the
exceptions to § 101 swallow the rule" (Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1337 (Fed. Cir. 2016)). Instead, "the claims are considered in
their entirety to ascertain whether their character as a whole is directed to
excluded subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
The Supreme Court has identified as abstract ideas claims employing
mathematical relationships or formulas, which are similar to the instant
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claimed invention. Specifically, the Supreme Court stated that the concept
of applying a mathematical formula to hedging risk and the application of
that concept to energy markets was not patentable because of similarities to
Gottschalkv. Benson, 409 U.S. 63 (1972), Parker v. Flook, 437 U.S. 584
(1978), and Diamond v. Diehr, 450 U.S. 175 (1981). Bilski v. Kappas, 561
U.S. 593, 611-12 (2010). Further, the Supreme Court noted that the claims,
like those in Flook, were unpatentable because "Flook established that
limiting an abstract idea to one field of use or adding token postsolution
components did not make the concept patentable." Bilski, 561 U.S. at 612.
Additionally, the Federal Circuit has identified abstract ideas that do
not describe an inventive concept that is more than an abstract idea, even
when embodied in specific system or structure. Specifically, the Federal
Circuit stated "not every claim that recites concrete, tangible components
escapes the reach of the abstract-idea inquiry," including a finding that
"claims reciting an 'interface,' 'network,' and a 'database' are nevertheless
directed to an abstract idea." In re TL! Commc 'ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016) (citing Mortg. Grader, Inc. v. First Choice
Loan Serv. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016)). The Federal
Circuit found the "eleven steps for displaying an advertisement in exchange
for access to copyrighted media" was directed to an abstract idea, despite the
claim at issue reciting "certain additional limitations ... [that] add a degree
of particularity." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--15
(Fed. Cir. 2014). Further, the Federal Circuit noted "the concept embodied
by the majority of the limitations describes only the abstract idea of showing
an advertisement before delivering free content," and the addition of novel
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or non-routine components did not "necessarily tum[] an abstraction into
something concrete." Id. at 715.
In contrast, the Federal Circuit has found claims that "are not simply
directed to any form of storing tabular data, but instead are specifically
directed to a self-referential table for a computer database" are "directed to
an improvement of an existing technology ... achiev[ing] other benefits
over conventional databases, such as increased flexibility, faster search
times, and smaller memory requirements." Enfish, 822 F.3d at 1337.
However, the heart of the claimed invention must be focused on the
underlying technology itself and how the underlying technology is altered
"in a way that leads to an improvement in the technology." Intellectual
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed. Cir. 2017)
(citing Enfish, 822 F.3d 1327); see also TL! Commc 'ns, 823 F.3d at 612.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. Otherwise, the inquiry proceeds to the second step, where we
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). The Supreme Court has
"described step two of this analysis as a 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. (brackets and quotation omitted). For
computer-related technology, the Federal Circuit has held that a claim may
pass the second step if "the claimed solution is necessarily rooted in
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computer technology in order to overcome a problem specifically arising in
the realm of computer [technology]," e.g., "a challenge particular to the
Internet." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014).
In Bilski, the Supreme Court rejected the machine-or-transformation
test as the exclusive test for determining patentability, but nonetheless held
the claims were ineligible because the claims were preemptory of risk
hedging in all fields. 561 U.S. at 612-13 (citing Flook, 437 U.S. 584;
Benson, 409 U.S. 63). The Federal Circuit has also identified when abstract
ideas do not amount to significantly more than the judicial exception. The
Federal Circuit held the abstract idea of classifying and storing digital
images in an organized manner was not significantly more than an abstract
idea because "the recited physical components behave exactly as expected
according to their ordinary use" and the claimed invention "fails to provide
the requisite details necessary to carry out th[ e] idea." TL! Commc 'ns, 823
F.3d at 615. Moreover, the Federal Circuit held the idea 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" was not
significantly more than the abstract idea because "the claims simply instruct
the practitioner to implement the abstract idea with routine, conventional
activity." Ultramercial, Inc., 772 F.3d at 715. Additionally, the Federal
Circuit noted "[ n Jone of these eleven individual steps, viewed 'both
individually and "as an ordered combination,"' transform the nature of the
claim into patent-eligible subject matter." Id. ( citations omitted).
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In contrast, the Federal Circuit held claims directed to methods of
organizing human activity may be significantly more "when the claim
limitations were considered individually and as an ordered combination,
they recited an invention that is not merely the 'routine or conventional use'
of technology." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1301---02 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1259;
BASCOM Global Internet Serv., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016)). Additionally, the Federal Circuit held the ordered
combination of the claim limitations recited an inventive concept because
"the distributed, remote enhancement that produced an unconventional
result," which represented "a technical improvement over prior art
technologies and served to improve the performance of the system itself."
Amdocs, 841 F.3d at 1302 (emphasis added); see also BASCOM, 827 F.3d at
1352 ("an inventive concept can be found in the ordered combination of
claim limitations that transform the abstract idea of filtering content into a
particular, practical application").
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Appellant argues:
In the present case, the analysis of the Office is clearly
directed towards determining if the claims involve a patent
ineligible concept without performing a determination whether
the claims are directed to a patent ineligible concept. Instead, the
claims are described at high levels of abstraction completely
separated from their actual elements.
Appeal Brief 6 ( emphasis omitted).
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The Federal Circuit has repeatedly noted that "the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the Office carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, "together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application." See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011).
All that is required of the Office is that it set forth the statutory basis
of the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990) (noting that section 132 "is violated when a
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection").
Appellant argues, "[t]he claims are not simply directed to any form of
'customer feedback on product or service aspects of a business entity.'
Instead, the claims are directed to an improvement of a graphical user
interface for displaying feedback options in a way to allows for more
nuanced feedback." Appeal Brief 6.
Despite characterizing the claimed invention as using computer
technology to overcome a problem specific to the operation of a computer or
a computer network per se, Appellant does not present sufficient persuasive
evidence or argument that the claims are directed to an improvement specific
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to a computer network or the Internet itself (e.g., improving the network's
operation or configuration, or retaining website visitors). Compare, e.g.,
Elec. Power, 830 F.3d 1350, 1354 (Fed. Cir. 2016) with DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d at 1257.
Appellant contends the claims:
[ A ]re directed to a specific improvement to the way computers
operate. With the claimed method, a computer is capable of
obtaining data using a smaller number of data prompts, thereby
reducing the required processing power to receive the same
amount of data. Additionally, the claimed invention improves the
ability of the computer system to obtain data that was not
available under prior methods.
Appeal Brief 7.
Appellant further argues:
Claim 1 improves on the method by reciting specific rules for
generating secondary feedback matrices based on selections of
both positive and negative feedback options. The rules
themselves for creating the secondary feedback matrices are
unconventional. These rules allow generation of unique
graphical user interfaces that have not been found to exist in any
prior setting. Thus, the claims are not directed to an abstract idea
because they do not merely use a computer as a tool to automate
conventional activity, but instead recite unconventional methods
of generating graphical user interfaces based on user selections.
Appeal Brief 8.
Our reviewing court has said that abstract ideas include the concepts
of collecting data, recognizing certain data within the collected data set, and
storing the data in memory. Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014).
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Additionally, the collection of information and analysis of information ( e.g.,
recognizing certain data within the dataset) are also abstract ideas. Elec.
Power, 830 F.3d at 1353. Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Financial Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
At least the following decisions from our reviewing court have found
many similar types of fundamental commercial practices patent ineligible:
American Needle, Inc. v. Zazzle Inc., 670 Fed. Appx. 717 (Fed. Cir. 2016)
(Mem.) (affirming the district court's holding that showing merchandise to
potential customers is patent ineligible.); Cyberfone Sys., LLC v. CNN
Interactive Grp., 558 Fed. Appx. 988 (Fed. Cir. 2014) (affirming the district
court's holding that using categories to organize, store, and transmit
information is well-established and the idea of collecting information and
then separating and transmitting that information according to its
classification is patent ineligible.); Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343 (cert. denied, 136 S.Ct.
119 (2015) (data collection, recognition, and storage is undisputedly well-
known and collecting data, recognizing certain data within the collected data
set, and storing that recognized data in a memory is patent ineligible.);
Concaten, Inc. v. AmeriTrak Fleet Solutions, LLC, 669 Fed. Appx. 571 (Fed.
Cir. 2016) (Mem.) (cert. denied), 137 S.Ct. 1604 (2017) (receiving,
processing, and transmitting data is patent ineligible.); Elec. Power Group,
LLC v. Alstom S.A., 830 F.3d 1350 (holding that collecting information,
analyzing it, and displaying certain results of the collection and analysis is
patent ineligible.).
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Regardless of the specificity (or alleged novelty) of Appellant's
claims, we agree with the Examiner's determination that the claims here are
directed to abstract ideas. In particular, as the Examiner determines, and we
agree, Appellant's claims are directed to performing fundamental economic
practices more efficiency by organizing human activity such as user
feedback. See Final Action 15-17.
We agree with the Examiner's finding that at step one of the Alice
analysis, the claims are directed to one or more abstract ideas, we tum to the
second step of the Alice analysis, in which we must determine whether the
additional elements of the claims transform them into patent-eligible subject
matter.
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
Appellant contends, "[t]he Office Action gives no hint that the
Examiner actually considered the claims as ordered combinations in any
meaningful way, as required by Bascom v. AT&T, supra, slip op. at 12, 15-
19 (noting that an ordered combination supported eligibility both in the case
at bar and in DDR, 773 F.3d at 1259)." Appeal Brief 8. However, the
Examiner finds that claims 1, 3, 4, 6, and 13-16 do not "include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional element(s) or combination of
elements in the claim(s) amount(s) to no more than recitation of generic,
computer structure." Final Action 17. The Examiner determines that none
of the claim limitations, considered individually and as a combination,
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improve another technology or technical field, or the functioning of a
computer. See Final Action 17-18.
Appellant further contends, "Li]ust as the DDR patent claims related to
a business challenge yet were not directed to an abstract idea under the Alice
test, the present claims have some relationship to customer, but ultimately
involve generating graphical user interfaces based on user selection and a set
of rules." Appeal Brief 9. As we stated above, we find Appellant's claims
are distinguished from those claims that our reviewing court has found to be
patent eligible by virtue of reciting technological improvements to a
computer system. See, e.g., DDR Holdings, 773 F.3d at 1249, 1257 (holding
that claims reciting computer processor for serving "composite web page"
were patent eligible because "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks"); Enfzsh, 822 F.3d at 1338 (holding that
claims directed to a self-referential table for a computer database were patent
eligible because the claims were directed to an improvement in the
functioning of a computer); Visual Memory LLC v. NVIDIA Corp., 867 F.3d
1253, 1259 (Fed. Cir. 2017) (holding that claims directed to "an improved
computer memory system" having many benefits were patent eligible).
Appellant argues, "[ c ]laim 1 recites unconventional steps that confine
the claim to a particular useful application, as evidenced by the withdrawal
of the rejection under 35 U.S.C. §103." Appeal Brief 11. As the Federal
Circuit has explained, a "'claim for a new abstract idea is still an abstract
idea."' SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016, 1018 (Fed. Cir.
2018) (quoting Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
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1151 (Fed. Cir. 2016) ). Even assuming the technique claimed was
"'innovative, or even brilliant,"' that would not be enough for the claimed
abstract idea to be patent eligible. See SAP Am., 890 F.3d at 1018.
We agree with the Examiner's determination and, therefore, we do not
find that the claims recite significantly more to transform the abstract idea
into a patent-eligible application. We sustain the Examiner's 35 U.S.C.
§ 101 rejection of claims 1, 3, 4, 6, and 13-16.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1, 3, 4, 6, and 13-
16 is affirmed.
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 ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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