Ex Parte Rowse et al

Patent Trial and Appeal Board

Sep 8, 2017

13284210 (P.T.A.B. Sep. 8, 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.
13/284,210 10/28/2011 William T. Rowse 83214484 7159
28395 7590 09/12/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER OUELLETTE, JONATHAN P
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/12/2017 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 @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM T. ROWSE, BARRY M. INMAN,
DEBRA L. MAYBERRY, DAVID GARY PARK,
HENRY THOMAS UBIK, PAUL W. MASHNI,
and ROBERT P. JACKSON
Appeal 2016-001112
Application 13/284,210
Technology Center 3600
Before ELENI MANTIS MERCADER, KRISTEN L. DROESCH, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 3, 5—7, and 9-15, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Ford Motor Company.
App. Br. 2.
Appeal 2016-001112
Application 13/284,210
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention “relates generally to
electronic communication and, more particularly, to a method and system
for transmitting digital media between remote locations.” Spec. 1:10—14.2
The Specification explains that when implemented in a method and a system
for processing an automotive warranty claim, a digital camera device
captures at least one digital image of a vehicle-related customer concern, and
a barcode scanning device scans a barcode identifying the vehicle. Abstract.
The Specification also explains that: (1) the at least one digital image and the
barcode information are automatically downloaded into a first computer;
(2) dialog is input into the first computer requesting warranty coverage for
the customer concern; and (3) a claimset comprising the digital images,
barcode, and request for warranty coverage is transmitted to a second
computer via a communication network. Id-
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A method for transmitting digital media between remote
computers via a communication network, the method
comprising:
detecting light reflected from an item and light reflected
from a barcode identifying the item;
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed October 28, 2011; “Final Act.” for the Final Office
Action, mailed January 12, 2015; “App. Br.” for the Appeal Brief, filed
June 15, 2015; “Ans.” for the Examiner’s Answer, mailed August 28, 2015;
and “Reply Br.” for the Reply Brief, filed October 28, 2015.
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Application 13/284,210
generating electronic data representing a digital image of
the item based on the light reflected from the item and
electronic data representing the barcode based on the light
reflected from the barcode;
automatically loading the electronic data representing the
digital image and electronic data representing the barcode into a
first computer;
receiving input indicative of a first dialog associated with
the digital image and barcode into the first computer; and
transmitting, by the first computer, signals including data
indicative of the digital image, barcode and first dialog from the
first computer to a second computer via a communication
network.
App. Br. Claims App. 1.
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Bunte et al. (“Bunte”) US 6,330,975 B1 Dec. 18, 2001
Chainer et al. (“Chainer”) US 6,397,334 B1 May 28, 2002
Xactware.com (June 29, 1998), http://web.archive.org/web/*/http://
www.xactware.com (“Xactware”)
The Rejections on Appeal
Claims 1,3, 5—7, and 9—15 stand rejected under 35U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 2—3; Ans. 2.
Claims 1, 3, 5, 7, and 9—14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bunte and Xactware. Final Act. 3—6; Ans. 2.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Bunte and Chainer. Final Act. 6; Ans. 2.
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Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bunte, Chainer, and Xactware. Final Act. 6—8; Ans. 2.
ANALYSIS
We have reviewed the rejections of claims 1, 3, 5—7, and 9-15 in light
of Appellants’ arguments that the Examiner erred. For the reasons explained
below, we disagree with Appellants’ assertions regarding Examiner error.
We concur with the Examiner’s conclusions concerning unpatentability
under § 101 and § 103(a). We adopt the Examiner’s findings and reasoning
in the Final Office Action (Final Act. 2—8) and Answer (Ans. 2—5). We add
the following to address and emphasize specific findings and arguments.
The §101 Rejection of Claims 1, 3, 5—7, and 9—15
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,
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“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements” add enough to
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. Alstom 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
Appellants assert that the Examiner erred in rejecting independent
claims 1, 7, and 15 under § 101 because the claims “contemplate a
transformation recognized to satisfy” § 101 ’s requirements. App. Br. 4;
Reply Br. 2. In particular, Appellants contend that “[ljight reflected from an
item and light reflected from a barcode ... is detected and transformed into
signals indicative of the item and barcode,” and therefore “[t]he signals have
a function and use different than that of the light.” App. Br. 4. Appellants
quote the Manual of Patent Examining Procedure (.MPEP)
§ 2106(II)(B)(l)(b) (9th ed. Rev. 11.2013 Mar. 2014) as support for the
contention concerning signals having a different function and use satisfying
§ 101’s requirements. App. Br. 3^4. That section states, “A new or
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different function or use can be evidence that an article has been
transformed.” MPEP § 2106(II)(B)(l)(b); see App. Br. 4.
Appellants’ arguments do not persuade us of Examiner error because
the Examiner determines that the claims are directed to the abstract idea of
“recording/receiving, saving, and transmitting data.” Final Act. 2; see
Ans. 3. Appellants misplace their reliance on MPEP § 2106(II)(B)(l)(b)
because the portions Appellants quote predate the Supreme Court’s decision
in Alice.
After the Supreme Court’s decision in Alice, various courts have held
that claims covering light reflected from an object and transformed into
signals indicative of the object were directed to abstract ideas. As an
example, in In re TLI Communications LLC Patent Litigation, 823 F.3d 607,
610-13 (Fed. Cir. 2016), the Federal Circuit decided that claims reciting a
“digital pick up unit” for “recording images,” i.e., a digital camera, were
directed to an abstract idea and failed to satisfy § 101 ’s requirements. As
another example, in Content Extraction & Transmission LLC v. Wells Fargo
Bank, 776 F.3d 1343, 1347 n.l, 1347^19 (Fed. Cir. 2014), the Federal
Circuit decided that claims requiring a “scanner” were directed to an abstract
idea and failed to satisfy § 101 ’s requirements. As a further example, in
IPLearn-Focus, LLC v. Microsoft Corp., 2015 WF 4192092, at *2, 4—6
(N.D. Cal. July 10, 2015), affd, 667 F. App’x 773 (Fed. Cir. 2016), the
district court ruled that claims requiring an optical sensor for feature
detection were directed to an abstract idea and failed to satisfy § 101 ’s
requirements. Similarly, in Easy Web Innovations, LLC v. Twitter, Inc., 2016
WF 1253674, at *18-20, 28-29 (E.D.N.Y. Mar. 30, 2016), affd, 2017 WF
1969492,___ F. App’x_____ (Fed. Cir. May 12, 2017), the district court
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ruled that claims covering optical character recognition were directed to an
abstract idea and failed to satisfy § 101 ’s requirements.
Appellants argue that “the claims are not drawn to an abstract idea”
because (1) “the patenting of an abstract idea would preclude all activity in
that arena” and (2) “the claims do not preclude all activity” corresponding to
the abstract idea here. Reply Br. 2. That argument does not persuade us of
Examiner error. While preemption may denote patent ineligibility, its
absence does not demonstrate patent eligibility. See FairWarning, IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims
covering a patent-ineligible concept, preemption concerns “are fully
addressed and made moot” by an analysis under the Mayo!Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
Mayo!Alice Step Two
Vox Mayo!Alice step two, the Examiner determines that (1) the claims
recite the additional elements of a “barcode reading device, a digital camera,
a first and second computer, to gather/save/display/and transmit data” and
(2) these are “commercially available devices” for “perform[ing] purely
generic functions.” Ans. 3^4; see Final Act. 2—3; see also Spec. 10:6—7,
11:18—20 (noting the commercial availability of components). The
Examiner identifies the generic functions as “obtaining data,” “processing
data,” and “transmitting data.” Ans. 3. Because the additional elements
involve “well-understood, routine, conventional activity,” the Examiner
reasons that they do not transform the nature of the claims into significantly
more than a patent-ineligible concept, whether considered individually or in
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combination. Ans. 3^4 (quoting Mayo, 132 S. Ct. at 1298); see Final
Act. 2—3.
In the Appeal Brief and Reply Brief, Appellants do not argue
patentability based on Mayo!Alice step two. App. Br. 3^4; Reply Br. 2.
Summary for Independent Claims 1,7, and 15
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claims 1, 7, and 15 under
§101. Hence, we sustain the rejection of claims 1,7, and 15.
Dependent Claims 3, 5,6, and 9-14
Appellants do not argue patentability separately for dependent
claims 3,5,6, and 9-14. App. Br. 3^4; Reply Br. 2. Because Appellants do
not argue the claims separately, we sustain the § 101 rejection of claims 3,5,
6, and 9-14 for the same reasons as claims 1, 7, and 15. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The § 103(a) Rejections of Claims 1, 3, 5—7, and 9—15
Appellants note that the Examiner found that a person of ordinary
skill in the art would have combined Bunte and Xactware to achieve “the
advantage of providing a customer data handling system/method, with the
ability to increase system efficiency/effectiveness by incorporating/
combining/correlating and including all available data into the concern
handling process.” App. Br. 4 (quoting Final Act. 4—5). Appellants argue
that the Examiner erred in rejecting claim 1 under § 103(a) because “there is
no evidence that one of ordinary skill would have recognized a problem with
Bunte or some advantage to combining Bunte and Xactware so as to yield
the claimed invention.” Reply Br. 2; see App. Br. 4—5. Citing Leo
Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013),
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Appellants assert that if recognizing a problem in Bunte and solving the
problem by combining the references “had been routine or obvious, such
result should have surfaced in the prior art relatively quickly.” App. Br. 4.
In addition, Appellants contend that “technology such as Bunte had been
around for at least 8 years prior to the earliest effective filing date associated
with this application, and nothing disclosing the examiner’s proposed
combination had surfaced during that time period.” Id. at 5.
Appellants’ arguments do not persuade us of Examiner error because
the Examiner provides “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Ans. 4; see
Final Act. 4—5; see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In
particular, the Examiner finds “increased efficiency and effectiveness as an
additional advantageous reason for combining the electronic systems
described by Bunte with that of Xactware” because “the inclusion of
[Xactware’s] additional communication resources . . . increase^] the
efficiency and effectiveness” of Bunte’s systems. Ans. 4. Thus, the
motivation to combine does not rest on a problem in Bunte but on a benefit
from Xactware. Any need known in the relevant field at the time of
invention and addressed by the patent can provide a reason for combining
references. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). “[T]he
desire to enhance commercial opportunities by improving a product or
process is universal. . . .” DyStar Textilfarben GmbHv. C.H. Patrick Co.,
464 F.3d 1356, 1368 (Fed. Cir. 2006); see In re Peterson, 315 F.3d 1325,
1330 (Fed. Cir. 2003). “[A]n implicit motivation to combine” may result
from a desire to make a product or process “stronger, cheaper, cleaner,
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faster, lighter, smaller, more durable, or more efficient.” DyStar, 464 F.3d
at 1368.
Appellants misplace their reliance on Leo Pharmaceutical. In Nike,
Inc. v. adidas AG, 812 F.3d 1326 (Fed. Cir. 2016), the Federal Circuit
explained that the decision in Leo Pharmaceutical “is entirely consistent
with established precedent that ‘ [t]he mere age of the references is not
persuasive of the unobviousness of the combination of their teachings,
absent evidence that, notwithstanding knowledge of the references, the art
tried and failed to solve the problem.’” Id. at 1338 (quoting In re Wright,
569 F.2d 1124, 1127 (CCPA 1977); and citing Iron Grip Barbell Co. v. USA
Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)).
Here, Appellants do not direct us to evidence that the art tried and
failed to solve the problem. App. Br. 5; Reply Br. 2. Relying solely on
Bunte’s age, Appellants assert that “Bunte’s earliest effective filing date
reaches back to 1992,” i.e., “at least 8 years prior to the earliest effective
filing date associated with this application.” App. Br. 5. But Appellants
wrongly rely on a 1992 effective filing date for Bunte. Bunte’s related
application data indicates that Bunte issued based on a 1995 continuation-in-
part of an earlier application with a 1992 effective filing date corresponding
to US 5,902,988 to Durbin. Bunte 1:7—18. Durbin’s earlier, shorter
disclosure differs materially from Bunte’s later, longer disclosure. Compare
Durbin 1:12—7:32, with Bunte 1:28—23:65.
Further, the facts in Leo Pharmaceutical differ markedly from the
facts here. There, the claims concerned an unpredictable pharmaceutical
technology, the “record show[ed] no reason for one of ordinary skill in the
art to attempt to improve upon” either secondary reference using the primary
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reference, and “the prior art consistently taught away from” the claimed
combination. 726 F.3d at 1349-50, 1354—57. Here, however, the Examiner
finds that (1) “Xactware discloses that the combination of electronic claim
handing [sic] and electronic” correspondence concerning insurance claims
“was well known at the time the invention was made” and (2) a person of
ordinary skill in the art would have combined Xactware’s correspondence
with Bunte’s image and barcode data to achieve “increased efficiency and
effectiveness.” Ans. 4; see Final Act. 4. Appellants do not contend that the
prior art teaches away from the claimed combination. Appellants do not
direct us to evidence that the claimed combination would have been
“uniquely challenging or difficult for one of ordinary skill in the art.” See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007). Thus, we are persuaded the claimed combination exemplifies the
principle that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 416; see Final Act. 4—5.
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Bunte and Xactware. Hence, we sustain the rejection of claim 1.
Because Appellants do not argue patentability separately for independent
claims 7 and 15 or dependent claims 3,5,6, and 9-14, we sustain the
obviousness rejections of claims 3, 5—7, and 9-15 for the same reasons as
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
We affirm the Examiner’s decision to reject claims 1, 3, 5—7, and 9—
15.
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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