Ex Parte Roberts

Patent Trial and Appeal Board

Feb 27, 2018

13693917 (P.T.A.B. Feb. 27, 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.
13/693,917 12/04/2012 Michael Roberts PARC-20110017-US-NP 2711
35699 7590
PVF - PARC
c/o PARK, VAUGHAN, FLEMING & DOWLER LLP
2820 FIFTH STREET
DAVIS, CA 95618-7759
EXAMINER
TORRICO-LOPEZ, ALAN
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
sy_incoming @parklegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL ROBERTS
Appeal 2016-0001921
Application 13/693,9172
Technology Center 3600
Before HUBERT C. LORIN, SHEILA F. McSHANE, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1—23. We have jurisdiction under
§ 6(b). We AFFIRM.
1 Our Decision references Appellant’s Specification (“Spec.,” filed Dec. 4,
2012), Appeal Brief (“Appeal Br.,” filed Mar. 9, 2015), and Reply Brief
(“Reply Br.,” filed Sept. 25, 2015), as well as the Examiner’s Final Office
Action (“Final Act.,” mailed Oct. 10, 2014) and Answer (“Ans.,” mailed
July 29, 2015).
2 Appellant identifies Palo Alto Research Center Incorporated as the real
party in interest. Appeal Br. 4.
Appeal 2016-000192
Application 13/693,917
SUBJECT MATTER ON APPEAL
The invention “is generally related to a system for providing
interactive technical support to consumers,” and, more specifically, to “a
web-based servicing portal that allows consumers to receive support by
remote interaction with a technician and charges the consumers on a per-use
basis.” Spec. 11. Claims 1, 9, and 16 are the independent claims on appeal.
Independent claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-executable method, the method comprising:
receiving a textual description of a problem uploaded by a
user, wherein the textual description describes a problem
associated with a product;
generating, by one or more computers, a list of experts
based on the textual description of the problem;
receiving a selection of an expert in the list;
establishing, by the one or more computers, an online
session between the user and the selected expert to facilitate the
expert in helping the user to solve the problem;
selecting, from a model library data structure by the one or
more computers, a 3-dimensional (3-D) model for the product
associated with the user’s uploaded textual description of the
problem, wherein the 3-D model contains topographical
information and movement constraints corresponding to the
product; and
providing the 3-D model to the user and the expert during
the online session, by the one or more computers, so that the 3-D
model is collaboratively manipulated by the user and the expert.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Thackston US 6,295,513 B1
2
Sept. 25, 2001
Appeal 2016-000192
Application 13/693,917
Kemp
Deep
Park et al. (“Park”)
Hibbets et al. (“Hibbets”)
Meunier et al. (“Meunier”)
US 2001/0047251 Al
US 2003/0023508 Al
US 2007/0219958 Al
US 2009/0063175 Al
US 2011/0175901 Al
Nov. 29, 2001
Jan. 30, 2003
Sept. 20, 2007
Mar. 5, 2009
July 21, 2011
REJECTIONS3
The Examiner rejects the claims on appeal as follows:
I. claims 1—23 under 35 U.S.C. § 101 as non-statutory subject
matter;
II. claims 1,9, 16, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Hibbets, Meunier, and Thackston;
III. claims 2, 3, 10, 11, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Hibbets, Meunier, Thackston, and Kemp;
IV. claims 4, 12, and 19 under 35 U.S.C. § 103(a) as unpatentable
over Hibbets, Meunier, Thackston, and Park;
V. claims 5, 8, 13, 15, 20, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Hibbets, Meunier, Thackston, and Deep;
VI. claims 6, 14, and 21 under 35 U.S.C. § 103(a) as unpatentable
over Hibbets, Meunier, Thackston, Deep, and Park; and
VII. claim 7 under 35 U.S.C. § 103(a) as unpatentable over Hibbets,
Meunier, Thackston, Deep, and Kemp.
3 The Examiner has withdrawn the rejection of claims 1—8 under 35 U.S.C.
§112, first paragraph. Ans. 2. In the original rejection, the Examiner
rejected claims 2—8 and 23 solely due to their dependency on independent
claim 1. Final Act. 4. Therefore, by the withdrawal of the § 112 rejection of
claim 1, we understand the rejection of claim 23 is similarly withdrawn.
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ANALYSIS
Rejection I
Appellant argues claims 1—23 as a group. Appeal Br. 16--18;
Reply Br. 7—8. We select independent claim 1 as representative. The
remaining claims of the group stand or fall with independent claim 1.
37 C.F.R. §41.37(c)(l)(iv).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). To “distinguish[] patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts,” the Supreme Court, in
Alice, reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), which, in the first step, considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea, and, if so, considers, in the
second step, whether the elements the claim, individually and as an ordered
combination, recite an inventive concept—an element or combination of
elements sufficient to ensure the claim amounts to significantly more than
the abstract idea and transform the nature of the claim into a patent-eligible
concept. Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1294, 1296—
98).
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In rejecting independent claim 1 under 35 U.S.C. § 101 as
non-statutory subject matter, i.e., subject matter judicially-excepted from
statutory subject matter, the Examiner analyzes the claim using this two-step
analysis for determining patent-eligibility. Final Act. 5; Ans. 2—3. Pursuant
to the first step, the Examiner determines the claim is directed to “interactive
technical support,” which is a method of organizing human activities, and
therefore an abstract idea. Final Act. 5; Ans. 2. Under the second step, the
Examiner determines the additional elements, considered individually and as
an ordered combination, amount to no more than mere instructions to
implement the idea on a computer. Final Act. 5. The Examiner further
determines that the claimed generic computer elements do not add a
meaningful limitation to the abstract idea because these elements are being
used in conventional ways. Ans. 3.
Appellant argues that independent claim 1 is not directed to an
abstract idea because the claimed method is realized by a computer.
Appeal Br. 16. Appellant similarly contends that claimed invention is not an
idea performed entirely in the human mind, but rather includes subject
matter that is concrete, such as server-client architecture. Id. at 17.
Appellant’s arguments are not persuasive of Examiner error.
The mere recitation of a tangible component, such as a computer, does
not preclude a determination that a claim is directed to an abstract idea. See,
e.g., In re TLI Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016) (citations omitted) (“[N]ot every claim that recites concrete, tangible
components escapes the reach of the abstract-idea inquiry.”). Although
independent claim 1 recites that the steps for interactive technical support
are performed by one or more computers, we fail to see how the claimed
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computer hardware separates the claim from the abstract idea of “interactive
technical support.” The claimed invention is not an improvement in
computer capabilities. Rather, independent claim 1 recites that the steps for
consulting with an expert are performed by one or more computers such that
the claimed invention simply uses the computer hardware to carry out the
abstract idea of “interactive technical support.” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016) (“[T]he first step
in the Alice inquiry in this case asks whether the focus of the claims is on the
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 tool.”). Furthermore, there is no indication that the recited
computing components are something other than generic computing
components. To the contrary, Appellant’s Specification explains:
Furthermore, methods and processes described herein can
be included in hardware modules or apparatus. These modules
or apparatus may include, but are not limited to, an
application-specific integrated circuit (ASIC) chip, a
field-programmable gate array (FPGA), a dedicated or shared
processor that executes a particular software module or a piece
of code at a particular time, and/or other programmable-logic
devices now known or later developed.
Spec. 146 (emphasis added). Accordingly, the claimed computer hardware
does not apprise us of error in the Examiner’s determination that
independent claim l is directed to an abstract idea. See DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
there can remain no doubt: recitation of generic computer limitations does
not make an otherwise ineligible claim patent-eligible.”).
Appellant also asserts that the claimed invention is not a method of
organizing human activities because the method steps facilitate remote
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technical support and teleconferencing, which are inextricably tied to
computer technology. Reply Br. 7. We disagree.
As set forth above, the claims are directed to “interactive technical
support.” “Interactive technical support” is not a computer function or an
improvement to computer technology. Moreover, “interactive technical
support” is not unique to computers, nor does “interactive technical support”
require the use of computers. Rather, the concept of “interactive technical
support” is similar to other concepts that the courts have held to be abstract
ideas. See Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016) (“[T]he decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen—what prior cases were about, and which way they were decided.”).
For example, we see no meaningful distinction between the concept of
“interactive technical support” and the abstract ideas of “processing
information through a clearinghouse” in Dealertrack, Inc. v. Huber, 674
F.3d 1315, 1333 (Fed. Cir. 2012) and “managing a stable value protected life
insurance policy” in Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Accordingly,
Appellant does not apprise us of error in the Examiner’s determination that
“interactive technical support” is an abstract idea.
Appellant additionally argues that, similar to the claims in Diamond v.
Diehr, 101 S. Ct. 1048 (1981), independent claim 1 improves a
technological process, namely the technological process under which users
remotely consult with experts online. Appeal Br. 18; Reply Br. 7. The act
of consulting with experts, however, is not a technological process.
Furthermore, as set forth above, independent claim 1 simply recites that the
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steps for remotely consulting with an expert are performed by one or more
computers. As such, we fail to see how the claimed invention is something
other than the generic computer implementation of an abstract idea of
“interactive technical support,” which is not patent-eligible.
In view of the foregoing, Appellant does not persuade us that the
Examiner erred in determining independent claim 1 is patent-ineligible for
being judicially-excepted subject matter. We, therefore, sustain the
Examiner’s rejection of claims 1—23 under 35 U.S.C. § 101.
Rejection II
Appellant argues claims 1, 9, 16, and 23 as a group. Appeal Br. 24.
We select independent claim 1 as representative. The remaining claims of
the group stand or fall with independent claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
In rejecting independent claim 1, the Examiner finds Hibbets discloses
the invention substantially as claimed, except for the last two steps, namely
the “selecting” and “providing” steps. Final Act. 5—7. The Examiner further
finds Meunier teaches the “selecting” step, and determines it would have
been obvious to one of ordinary skill in the art to combine the teachings of
Hibbets and Meunier to provide assistance to users performing repair
procedures. Id. at 7—8. The Examiner also finds Thackston teaches the
“providing” step, and determines it would have been obvious to combine the
teachings of Hibbets and Thackston for collaboratively designing,
developing, and evaluating 3-D models. Id. at 9—10.
Appellant argues that combined teachings of the prior art would not
have resulted in the claimed “selecting” step of independent claim 1.
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Appeal Br. 25—30; Reply Br. 8—9. In particular, Appellant contends that
Meunier does not teach selecting a 3-D model for the product associated
with the user’s uploaded textual description of the problem, as recited in the
“selecting” step, because Meunier’s system does not allow a user to upload a
textual description of a problem. Appeal Br. 26; Reply Br. 8. To the
contrary, Meunier teaches that a user selects a problem from a searchable
knowledge base of known problems. Appeal Br. 26; Reply Br. 8.
Appellant’s argument is not persuasive of Examiner error.
Although Appellant may be correct that neither Hibbets nor Meunier
discloses the subject matter of the “selecting” step in its entirety, the
Examiner is relying on the combined teachings of these references for this
step. More specifically, the Examiner finds Hibbets discloses a user
uploading a textual description of a problem. Final Act. 6 (citing Hibbets
H 22, 45). The Examiner further finds Meunier teaches selecting a 3-D
model for the product associated with a user’s problem. Id. at 7. (citing
Meunier || 7, 44, 47, 50). Appellant does not explain, and we fail to see,
why the Examiner’s proposed combination of Meunier’s teaching of
selecting a 3-D model for a product associated with a problem and Hibbets’
disclosure of a user uploading a textual description of a problem would not
have resulted in “selecting ... a 3-dimensional (3-D) model for the product
associated with the user’s uploaded textual description of the problem,” as
claimed. See KSR Inti Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007)
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”).
Appellant also argues the Examiner’s proposed combination would
change the principle of operation of the prior art. Appeal Br. 31— 32;
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Reply Br. 9—10. More specifically, Appellant contends that Meunier
requires a user to choose from a limited number of available problems and
solutions such that combining the teachings of Hibbets and Meunier would
have resulted in Hibbets’ system requiring a user to search from a
knowledge base of known problems and solutions. Reply Br. 9—10.
Appellant similarly asserts that Thackston requires a session mediator to
select a model such that combined teachings of Hibbets and Thackston
would have resulted in Hibbets’ system requiring a person to select a model.
Id. at 10. Appellant’s arguments are not persuasive of error at least because
they do not address the Examiner’s proposed combination.
Contrary to Appellant’s argument, the Examiner is not proposing to
modify Hibbets’ teachings to include Meunier’s teaching of selecting from a
knowledge base of known problems and solutions or Thackston’s teaching
of session mediator that selects a model. Rather, the Examiner is proposing
to modify the teachings of Hibbets’ technical support system to include a
3-D model, as taught by Meunier and Thackston. Final Act. 5—10. The
Examiner finds, and we agree, the addition of a 3-D model to Hibbets’
system would not compromise the technical support functions of the system.
Ans. 5—6.
In view of the foregoing, Appellant does not persuade us that the
Examiner erred in determining independent claim 1 is unpatentable over
Hibbets, Meunier, and Thackston. We, therefore, sustain the Examiner’s
rejection of claims 1,9, 16, and 23.
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Rejections III—VII
Appellant does not present arguments for claims 3, 4, 6, 8, 10-15, and
17—22. Accordingly, we summarily sustain the Examiner’s rejections of
these claims.
For the first time in the Reply Brief, Appellant presents arguments for
claims 2,5, and 7 that were not previously presented. These arguments are
untimely and are waived here in the absence of any showing of good cause
why the arguments could not have been timely presented in Appellant’s
Appeal Brief. 37 C.F.R. § 41.41(b)(2); see also In re Hyatt, 211 F.3d 1367,
1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to
the Board is waived on appeal). We, therefore, summarily sustain the
Examiner’s rejections of claims 2, 5, and 7.
DECISION
The Examiner’s decision to reject claims 1
is affirmed.
The Examiner’s decision to reject claims 1
§ 103(a) 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). 37 C.F.R.
§ 1.136(a)(l)(iv).
—23 under 35 U.S.C. § 101
—23 under 35 U.S.C.
AFFIRMED
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