Ex Parte Russell et al

Patent Trial and Appeal Board

Mar 16, 2018

13739504 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131739,504 0111112013
70406 7590 03/20/2018
WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
FIRST NAMED INVENTOR
Steven Paul Russell
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.
PING-005 4390
EXAMINER
HONG, THOMAS J
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
patents@wagnerblecher.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN PAUL RUSSELL, GUY R. VANBUSKIRK,
and ANDREW W. KITTLER
Appeal2017-003569
Application 13/739,504
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-15 as directed to patent ineligible subject matter under
35 U.S.C. § 101. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 A prior art ground of rejection under 35 U.S.C. § 103(a) has been
withdrawn by the Examiner. Ans. 5.
Appeal2017-003569
Application 13/739,504
THE INVENTION
Appellants' invention relates to training, monitoring and mining
communications in an observation platform. Spec. i-f 27. Claim 1,
reproduced below with paragraph indentation added, is illustrative of the
subject matter on appeal.
1. A method for instruction and training in an observation
platform, comprising:
receiving a signal from a first communication device at a
second communication device associated with a computer
system,
wherein a first characteristic of said signal corresponds
to supplemental information useful for said instruction and
said training,
wherein a second characteristic of said signal
corresponds to information indicative of a geographic
position of said first communication device,
wherein said supplemental information comprises user
habits of a user associated with said first communication
device
wherein said user habits comprise button presses and
user activity associated with said first communication
device,
wherein said first communication device is a mobile
device;
determining a status of said user is available based on an
analysis of said user habits and context information derived
from a communication history of said user, at said computer
system, based on said supplemental information and
information sent from said first communication device to said
second communication device; and
sending instructional information to said first
communication device in response to a determination that said
status of said user is available to receive said instructional
information, wherein said instructional information is for use by
said user in conjunction with said first communication device.
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Application 13/739,504
OPINION
Appellants argue claims 1-15 as a group. Appeal Br. 7-14. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 72-73 (2012)).
According to the Supreme Court's framework, we must first determine
whether the claims at issue are directed to one of those concepts. Id. If so,
we must secondly "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." Id. The Supreme Court characterizes the second step of the
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 in original) (quoting Mayo, 566 U.S. at 72).
With respect to the first step, the Examiner determines that the claims
are directed to an abstract idea.
The claims recite the steps directed to an instruction and
training based on availability of trainee ... the recited steps are
similar to the judicial exception of "Comparing new and stored
information and using rules to identify options" as the new
supplemental information is analyzed with the context
information and communication information and uses certain
rules to identify options such as sending instructional
information.
Final Action 2-3.
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Application 13/739,504
With respect to the second step of the Alice/Mayo analysis, the
Examiner finds that the recitation of computer limitations amounts to mere
instructions to implement the abstract idea on a computer. Id. at 3--4. The
Examiner further finds that the computer components merely perform
"generic computer functions." Id. at 4. The Examiner concludes that "there
is no inventive concept sufficient to transform the claimed subject matter
into a patent-eligible application." Id.
Appellants argue that claim 1 is not directed to an abstract idea.
Appeal Br. 8. Appellants characterize the Examiner's analysis as
"conclusory" and fault the Examiner for citing a Federal Circuit case that is
"non-precedential." Id. at 8-9 (referring to SmartGene, Inc. v Advanced
Biological Labs., 555 Fed. Appx. 950 (Fed. Cir. 2014).
In response, the Examiner points out that the SmartGene is merely one
example of an abstract idea taken from the PTO' s July 2015 Interim
Guidance on Subject Matter Eligibility. Ans. 10. The Examiner cites Alice
as precedential legal authority to support the rejection. Id.
We agree with the Examiner's position that the invention is directed
to an abstract idea. The recited steps of receiving a signal, determining user
status, and sending information to a user communication device is merely a
method of organizing human activity. See Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016) (the category of
abstract ideas includes methods of organizing human activity); see also
Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F .3d
1364, 1372 (Fed. Cir. 2017) ("claims directed to the collection, storage, and
recognition of data are directed to an abstract idea"); see also Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (claims for
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Appeal2017-003569
Application 13/739,504
collecting information, analyzing it, and displaying results thereof focus on
an abstract idea).
With respect to step 2 of the Mayol Alice analysis, Appellants argue
that the claimed embodiments "do far more than merely implement an
abstract idea on a computer." Appeal Br. 12. Appellants argue that the
claimed embodiments improve the relevant technical field. Id. According to
Appellants, this is accomplished by "determining a status" of a user and
"sending instructional information." Id.
Appellants submit that the pertinent technology is an
observation platform that encompasses computer systems, radio
technology, and mobile device, that are employed for audible
communication and training purposes. In other words, the
present technology does not make improvements to a single
generic computer system, but rather demonstrates a significant
improvement to a variety of technological devices employed
from communication and training.
Id. at 13-14.
In response, the Examiner points out that Appellants confuse step 1
with step 2 of the Mayol Alice analysis framework. Ans. 13. The Examiner
explains that Appellants' claim limitations directed to "determining a status"
and "sending information" are part of Appellants' abstract idea under step 1
of the analysis. Id. The Examiner further explains that Appellants'
implementation of the abstract idea does not amount to "something more"
under step 2 of the analysis as it merely relies on generic computer and
telecommunications equipment performing generic computer and
telecommunication functions. Id.
It is now well settled that mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
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Application 13/739,504
See Alice, 134 S.Ct. at 2358. Thus, merely stating an abstract idea while
adding the words "apply it" is not enough to confer patent eligibility. Id.
[I]f that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant
concept.
Id. at 2359.
Under the second prong of the Alice/Mayo test, we have considered
whether the claim elements, both individually and "as an ordered
combination," "'transform the nature of the claim' into a patent-eligible
application." See Alice, 134 S.Ct. at 2355. We are not persuaded that using
a computer to determine user status and send instructional information
satisfies the "significantly more" criteria under the second prong of
Alice/Mayo. Id. at 2359. Essentially, all Appellants have done here is use
generic computer data gathering, processing, and display technology to send
instructional information to a user based on a determination of the user's
availability to receive it. 2 As in Alice, "each step does no more than require
a generic computer to perform generic computer functions." Id.
We have considered Appellants' remaining arguments, including the
preemption argument at page 14, and find them to be without merit.
Although "the principle of preemption is the basis for the judicial exceptions
to patentability," and "preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
2 In the instant case, some of the network data transmission occurs
wirelessly. Spec. i-f 42. However, in this modem era of wireless
communication, we do not view of the use of wireless communication links
as adding "something significantly more" to the computerized
implementation of the abstract idea.
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eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). The Federal Circuit
concluded that "[ w ]here a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, ... preemption
concerns are fully addressed and made moot." Id. Given this direction from
our reviewing court, we decline to apply a preemption standard in our
analysis, and instead apply the steps set forth by the Supreme Court in Alice
and Mayo. Accordingly, for the foregoing reasons, we sustain the
Examiner's Section 101 rejection of claims 1-15.
DECISION
The decision of the Examiner to reject claims 1-15 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 )(iv).
AFFIRMED
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