Ex Parte Pirlet et al

Patent Trial and Appeal Board

Mar 8, 2018

13341665 (P.T.A.B. Mar. 8, 2018)

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.
13/341,665 12/30/2011 Jeremy Pirlet 201105149 3433
67260 7590 03/12/2018
TARGET BRANDS, INC.
1000 NICOLLET MALL, TPS-3165
MINNEAPOLIS, MN 55403
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/12/2018 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):
USPTO.MAIL@TARGET.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY PIRLET, ANDREW JOHNSON,
and KIM UYEN PHAM
Appeal 2016-006518
Application 13/341,665
Technology Center 3600
Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 35—54, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this decision, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Dec. 4, 2015), Reply Brief (“Reply Br.,” filed June 13,
2016), and Specification (“Spec.,” filed Dec. 30, 2011), and to the
Examiner’s Answer (“Ans.,” mailed Apr. 22, 2016) and Final Office Action
(“Final Act.,” mailed June 8, 2015).
2 According to the Appellants, the real party in interest is Target Brands,
Inc. Appeal Br. 2.
Appeal 2016-006518
Application 13/341,665
STATEMENT OF THE CASE
The Appellants’ invention is “directed to a knowledge base system
that integrates with one or more ticketing systems.” Spec. 125.
Claims 35, 46, and 49 are the independent claims on appeal. Claim 35
(Appeal Br. 28 (Claims App.)) is illustrative of the subject matter on appeal
and is reproduced below (bracketing added for reference):
35. A computer-implemented method of utilizing a
knowledge base containing stored information for a service
ticketing system, comprising the steps of:
[(a)] using a ticketing application to generate a computer
interface operable by a support technician to input data for
creating a service ticket in response to a customer contact;
[(b)] displaying on the computer interface an identifier for
a current knowledge base item containing stored information
related to the service ticket wherein said identifier is viewable by
a support technician;
[(c)] determining, by a computer, in response to a selection
by the support technician of a knowledge link button displayed
on the computer interface, whether or not said current knowledge
base item related to said service ticket has been previously
displayed on the computer interface for viewing by the support
technician;
[(d)] upon a determination by said computer that the
current knowledge base item has not been previously displayed
on the computer interface for viewing by the support technician,
displaying on said computer interface said identifier and a new-
item graphical element and preventing the ticketing application
from applying the current knowledge base item to the service
ticket until said stored information has been displayed on said
computer interface for viewing by said support technician; and,
[(e)] when said current knowledge base item has been
previously displayed on the computer interface for viewing by
the support technician, displaying on said computer interface
said identifier and an apply-item graphical element and allowing
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Application 13/341,665
the ticketing application to apply the current knowledge base
item to the service ticket.
REJECTIONS3
Claims 35—54 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 3.
Claims 37-47 and 49-54 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schneider (US 2008/0262860 Al,
pub. Oct. 23, 2008) and Sattler (US 2006/0259272 Al, pub. Nov. 16,
2006). Id. at 7.
Claim 48 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schneider, Sattler, and Official Notice. Id. at 24.
ANALYSIS
Non-Statutory Subject Matter4
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 588—89
(2013)).
3 We note that the rejection under 35 U.S.C. § 112, first paragraph, has been
withdrawn by the Examiner. Advisory Action, mailed Sept. 17, 2015.
4 The rejections are addressed in the order presented in the Final Action.
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The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78—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, 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. (citing
Mayo, 566 U.S. at 79) (emphasis added). If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether the additional elements “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (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. (alteration in original) (quoting
Mayo, 566 U.S. at 12—IS). The Court acknowledged in Mayo, 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. We,
therefore, look to whether the claims focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea, and merely invoke generic processes and
machinery, i.e., “whether the focus of the claims is on [a] specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
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tool.” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335—36
(Fed. Cir. 2016).
Under the first step of the Mayo/Alice framework, the Examiner looks
to the language of the independent claims and determines that the claims are
directed to “the abstract idea of utilizing a knowledge base,” a fundamental
economic/business practice, method of organizing human activity, and idea
of itself. Final Act. 3. The Appellants ostensibly do not contest that the
claims are directed to utilizing a knowledge base, but argue that “there is no
support for this assertion anywhere in this record.” Appeal Br. 24. We
disagree.
The Specification provides that the invention is “directed to a
knowledge base system that integrates with one or more ticketing systems,”
i.e., helpdesks or support centers. Spec. Tflf 1, 25. The preamble of
independent claim 35 provides for “[a] computer-implemented method of
utilizing a knowledge base containing stored information for a service
ticketing system,” and recites limitations of using an application to generate
an interface, display identifier data on the interface, determine, in response
to a selection of data, whether item data has been previously displayed, and
based on the determination, display new and graphic data and prevent or
allow the application to apply the item. Appeal Br. 28 (Claims App.). The
preamble of independent claims 46 similarly provides for a system with a
computer, interface, and memory “for utilizing a knowledge base containing
stored information for a service ticketing system” to perform the functions of
the method of claim 35 and the functions of retrieving date data and
displaying data including the date. Id. at 30-31. And the preamble of
independent claim 49 also provides for a program product “for utilizing a
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knowledge base containing stored information ... for a service ticketing
system” to perform the functions of the method of claim 35 and the
functions of generating a web page and forwarding the item data. Id.
at 32—33. The dependent claims recite further limitations that define the data
in the knowledge base, add functions of retrieving, accessing, storing,
identifying, and displaying data, add further data in the system, and add a
search component. See id. at 29—34. The limitations are performed by
generic devices and computers. See id. 1163-70.
In that context, considering the claims in light of the specification and
on their “their character as a whole” (Enfish, 822 F.3d at 1335), the claims
are directed to utilizing information in a knowledge base for a service
ticketing, i.e. support center, system.5 The claims are similar to those found
to be abstract ideas by our reviewing court in Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (process of gathering and
analyzing information of a specified content and displaying the result),
Intellectual Venture I LLC v. Capital One Financial Corp., 850 F.3d 1332,
1341 (Fed. Cir. 2017) (“organizing, displaying, and manipulating data of
particular documents”), and Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1367, 1369 (Fed. Cir. 2015) (customizing web page
content and budgeting using a communication medium). Here, the claims
involve nothing more than generating an interface, determining and
displaying data, and conditionally applying item data in the helpdesk/support
5 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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center area, without any particular inventive technology — an abstract idea.
See Electric Power, 830 F.3d at 1354.
We find unpersuasive the Appellants’ argument that the Examiner’s
rejection is in error because “there is no evidence or case law cited in the
Final Rejection dated June 8, 2015 that in any way supports an assertion that
any pending claim is directed to an abstract idea within the meaning of
Alice.” Appeal Br. 24; see also Reply Br. 8—9. The Examiner cites to the
intrinsic evidence of the claim language in determining that the claims are
directed to an abstract idea. See Final Act. 3. There is no requirement that
Examiners must provide case law in every case before a conclusion can be
made that a claim is directed to an abstract idea. Evidence may be helpful in
certain situations where, for instance, facts are in dispute. But it is not
always necessary, and is not necessary here. See Mortgage Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) (“[I]t is
also possible, as numerous cases have recognized, that a § 101 analysis may
sometimes be undertaken without resolving fact issues.”). And, as the
Examiner notes (Ans. 10—11), the guidelines are not legal requirements.
Intellectual Ventures ILLC v. Erie Indemnity Co., No. 2017-1147, 2017 WL
5041460, at *4 (Fed. Cir. 2017); In re Fisher, 421 F.3d 1365, 1372 (Fed.
Cir. 2005) (“The MPEP and Guidelines ‘are not binding on this court’”)
(internal citations omitted); MPEP, Foreword (“The Manual does not have
the force of law or the force of the rules in Title 37 of the Code of Federal
Regulations”); and 2014 Interim Eligibility Guidance at 74619 (“This
Interim Eligibility Guidance does not constitute substantive rulemaking and
does not have the force and effect of law .. . and is not intended to create
any right or benefit, substantive or procedural, enforceable by any party
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against the Office”). We decline to find error in the Examiner’s decision not
to recite a judicial decision.
There is also no specific requirement that requires that each claim be
examined individually by the Examiner (Appeal Br. 26) in determining that
the claims are directed to an abstract idea. See Alice, 134 S. Ct. at 2355—57.
We decline to find error in the Examiner’s decision not to recite each
dependent claim limitation and address its patent-eligibility separately. The
Examiner’s discussion in the Final Office Action appears under the heading
“Claims 35—54 are rejected under 35 U.S.C. 101 because the claimed
invention is directed to non-statutory subject matter.” Final Act. 3
(emphasis omitted). There is no indication that the Appellants were not put
on notice of the Examiner’s rejection regarding the dependent claims or that
the rejection otherwise failed to satisfy the requirements of 35 U.S.C. § 132.
We find unpersuasive the Appellants’ argument that the claimed
invention is not directed to an abstract idea because “the claim is not a
drafting effort to monopolize the abstract idea.” Reply Br. 9. Although
monopolization, i.e., preemption, “might tend to impede innovation more
than it would tend to promote it, ‘thereby thwarting the primary object of the
patent laws’” {Alice, 134 S. Ct. at 2354 (quoting Mayo, 132 S. Ct. at 1293)),
“the absence of complete preemption does not demonstrate patent
eligibility” (Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015), cert, denied, 136 S. Ct. 2511 (2016); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir.), cert, denied,
136 S. Ct. 701 (2015) (“[Tjhat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”)).
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We also find unpersuasive the Appellants’ argument that the claims
are not directed to an abstract idea because, like Enfish, the claims are not
merely directed to generic computer components performing an abstract idea
but are directed to an improvement in computer functionality.6 See Reply
Br. 9-11. The claims at issue in Enfish were directed to a specific type of
data structure, i.e., a self-referential table for a computer database, designed
to improve the way a computer carries out its basic functions of storing and
retrieving data. Enfish, 822 F.3d. at 1335—36. There, in rejecting a § 101
challenge, the court held that “the plain focus of the claims is on an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity.” Id. at 1336. The
Appellants have not adequately explained here how the court’s holding in
Enfish impacts the present analysis under the Mayo/Alice framework. For
example, the Appellants do not point to anything in the claims that
resembles the inventive self-referential data structure at issue in Enfish. We
also find nothing in the Appellants’ Specification, nor do the Appellants
direct us to anything in the Specification, to indicate that the invention
provides an improvement in computer functionality.
Under the second step of the Mayo/Alice framework, we adopt and
find supported the Examiner’s determination that the claim limitations, taken
individually or as an ordered combination, do not recite an inventive
concept. See Final Act. 3^4 (citing to Spec. ]Hf 63—70 that provides for the
functions to be performed by generic devices/computers operating in their
6 The Appellants may present a new argument based on a recent relevant
decision of either the Board or a federal court.
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normal capacities). We are unpersuaded by the Appellants’ arguments to the
contrary. See Appeal Br. 25—26; Reply Br. 11—12.
In response to the Appellants’ argument that the claims are patent-
eligible under § 101 because they recite limitations that are novel and
unobvious (Appeal Br. 25—26), an abstract idea does not transform into an
inventive concept just because the prior art does not disclose or suggest it.
See Mayo, 132 S. Ct. at 1304. “Groundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass ’n for
Molecular Pathology, 133 S. Ct. at 2117. Indeed, “[t]he ‘novelty’ of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v. Diehr,
450 U.S. 175, 188—89 (1981); see also Mayo, 132 S. Ct. at 1304 (rejecting
“the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for
the better established inquiry under § 101”).
Based on the foregoing, we are not persuaded that the Examiner erred
in rejecting claims 35—54 under 35 U.S.C. § 101, and we sustain the
rejection.
Obviousness
Claims 35, 46, and 49
The Appellants contend that the Examiner’s rejection of independent
claims 35, 46, and 49 is in error because the prior art does not teach
limitation (d) of claim 35, and similarly recited in claims 46 and 49, of
displaying an identifier and graphic element and preventing the application
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from applying the item to the service technician until stored information has
been displayed. See Appeal Br. 9-11, 14—19. We disagree.
We find unpersuasive the Appellants’ arguments that Sattler does not
teach preventing the application from applying the based item until stored
information is displayed for viewing by the technician, as opposed to a user,
i.e., customer, nor displaying the claimed data in response to a
determination. Reply Br. 3^4; Appeal Br. 10—11. We find the Appellants’
arguments unpersuasive because the Appellants argue against each reference
individually when the Examiner relies on the combination of the art for the
cited limitation. See Final Act. 9—10; Ans. 4. The test for obviousness is not
what any one reference would have suggested, but rather what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). “[0]ne cannot
show non-obviousness by attacking references individually were, as here,
the rejections are based on combinations of the references.” Id.
Here, the Examiner finds that Schneider discloses displaying, upon a
determination that the base item has not been previously displayed for
viewing by a support technician, the identifier and a new-item graphical
element, as partially recited by the limitation. Id. at 9 (citing Schneider
1 50). The Examiner acknowledges that Schneider does not disclose
preventing the application from applying the base item to the ticket until
stored information has been displayed, and relies on Sattler for curing that
deficiency. Id. at 9-10 (citing Sattler || 23, 24, Fig. 2). Specifically, the
Examiner finds that Sattler discloses that if notes, i.e., the current knowledge
base item, are not reviewed, then the selection, i.e., application, step is
bypassed, thereby preventing the application from applying the note to the
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service ticket. Ans. 2—3. The Examiner determines it would have been
obvious to one of skill in the art to incorporate Sattler’s teaching of
preventing with Schneider’s system and method because doing so “would
provide a manner for allowing the user to choose a note once it is reviewed
(Sattler [0023]), thus aiding the client by providing an indication of whether
a not resolves a problem.” Id. at 10.
We find unpersuasive the Appellants’ argument that Sattler does not
teach preventing the application from applying the base item to the service
ticket until the stored information is displayed. See Appeal Br. 9—10; Reply
Br. 4. Sattler discloses a customer support application that identifies
relevant notes to a question and, if no notes are found, the question is sent to
a team to prepare a new solution. Sattler, Abstract. Identified notes are
displayed to the user for selection. Id. 123. If a note is not selected, then
the user may seek assistance from the developer and the remaining notes are
eliminated. Id. Fig. 2,123. The user can decide whether to not to review
notes that might be solutions. Id. “If wizard receives an indication from the
user interface 410 that user wishes to review the notes (170), the notes or a
summary of the notes are output (172) via the user interface 410.” Id. 123.
If the user chooses not to review the note {id. Fig. 2, “no” to step 170), the
application performs statistical analyses (step 200), outputs a question
(step 210), adds the answer to the ticket (step 220), and repeats the process
beginning with comparing the ticket data with attributes (step 120). Id.
Fig. 2. As such, we find supported the Examiner’s finding that Sattler
discloses that if notes are not reviewed, then the selection step is bypassed,
thereby preventing the application from applying the note (base item) to the
service ticket until the note has been displayed.
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Based on the foregoing, we are not persuaded that the Examiner erred
in rejecting independent claims 35, 36, and 49 under 35 U.S.C. § 103, and
we sustain the rejection.
Claims 36-41
The Appellants contend that the Examiner’s rejection of dependent
claim 36 is in error because the prior art Schneider, upon which the
Examiner relies, does not teach limitation of the knowledge base including a
homepage, as recited in the claim. Appeal Br. 11; Reply Br. 5. We agree.
The Examiner cites paragraphs 40 and 41 and Figure 3 of Schneider
for disclosing this limitation. Final Act. 10—11; Ans. 4. The cited portions
of Schneider disclose a web page, i.e., an interface or homepage, of the
business support application. However, the claim requires that the
knowledge base contains stored information of a homepage, not that the
application has a homepage. The Examiner has not adequately shown that
the stored information includes the data of a homepage.
As such, we are persuaded that the Examiner erred in rejecting
dependent claim 36 under 35 U.S.C. § 103, and we do not sustain the
rejection. We also do not sustain the rejection of claims 37-41, which
depend from claim 36 and rely on the same inadequately supported finding.
Claims 42 and 43
The Appellants contend that the Examiner’s rejection of dependent
claim 42 is in error because the prior art Schneider, upon which the
Examiner relies, does not teach limitation of retrieving and storing data from
a ticketing database, as required by the claim. Appeal Br. 13; Reply Br. 7.
We agree.
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The Examiner cites paragraphs 39 through 42 of Schneider for
disclosing this limitation. Final Act. 12; Ans. 6. The cited portions of
Schneider disclose memory 164 at server 140 storing solved incident, FAQ,
and update repositories 168, 172, and 176, in communication with business
configuration repository 184 that includes static context information
repository 186. Schneider 140, Fig. IB. These repositories store and
provide information. Id. 40, 41. However, the Examiner does not
identify which repository meets the claimed ticketing database. The
Examiner appears to find that the interface retrieves data from the
repositories (Final Act. 12), but does not indicate that the interface stores
data as well. The Examiner has not adequately explained what component
or how Schneider discloses storing data from a database.
As such, we are persuaded that the Examiner erred in rejecting
dependent claim 42 under 35 U.S.C. § 103, and we do not sustain the
rejection. We also do not sustain the rejection of claim 43, which depends
from claim 42 and relies on the same inadequately supported finding.
Claims 44, 45, 47, 48, and 50-54
The Appellants contend that the Examiner’s rejections of dependent
claims 44, 45, 47, 48, and 50-54 are in error for the same reasons as set forth
with respect to claims 35, 46, and 49. See Appeal Br. 14, 16, 17, 19, 20.
Because we find not persuaded of error in the Examiner’s rejection of the
independent claims, we sustain the rejection of the dependent claims 44, 45,
47, 48, and 50-54 for the same reasons we sustain the rejection of
independent claims 36, 46, and 49.
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DECISION
The Examiner’s rejection of claims 35—54 under 35 U.S.C.
§ 101 is AFFIRMED.
The Examiner’s rejections of claims 35 and 44—54 under
35 U.S.C. § 103(a) are AFFIRMED.
The Examiner’s rejection of claims 36-43 under 35 U.S.C.
§ 103(a) is REVERSED.
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).
AFFIRMED
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