Ex Parte Satyavolu et al

Patent Trial and Appeal Board

Jul 18, 2018

12533447 (P.T.A.B. Jul. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/533,447 07/31/2009
30955 7590
LATHROP GAGE LLP
2440 Junction Place
Suite 300
Boulder, CO 80301
07/20/2018
FIRST NAMED INVENTOR
Ramakrishna V. Satyavolu
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.
BILL-0001-U01-C05 7598
EXAMINER
PEACHER, LORENA R
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/20/2018 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):
patent@lathropgage.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMAKRISHNA V. SATYA VOLU,
SARA V ANA PERUMAL SHANMUGAM, and SAMIR KOTHARI
Appeal2016-007939 1
Application 12/533,4472
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-11 and 13-21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
December 16, 2015) and Reply Brief ("Reply Br.," filed August 22, 2016),
and the Examiner's Answer ("Ans.," mailed June 23, 2016) and Final Office
Action ("Final Act.," mailed April 13, 2015).
2 Appellants identify Truaxis, Inc. as the real party in interest. App. Br. 2.
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Application 12/533,447
CLAIMED INVENTION
Appellants' claimed invention "is generally related to consumer
comparison shopping and usage based service analysis" (Spec. ,r 4).
Claims 1, 9, and 16 are the independent claims on appeal. Claim 9,
reproduced below, is illustrative of the claimed subject matter:
9. A method comprising:
defining a plurality of service plan-related data types for a
service provider;
generating a normalized service plan model, the
normalized service plan model comprising a plurality of service
parameters derived from a plurality of provider service plans, at
least two of the parameters derived from identical time periods
from the plurality of provider service plans;
logging into a computer data base of the service provider
by a user to access service usage data of the user;
collecting the user's service usage data from the service
provider using a computer implemented facility;
sorting the user's service usage data according to the
defined service plan-related data types; and
comparing a present service provider plan for the user with
at least one alternative service plan from the service provider
using the sorted usage data.
REJECTION3
Claims 1-11 and 13-21 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter. 4
3 The rejection of claims 1-11 and 13-21 under 35 U.S.C. § 112, second
paragraph, has been withdrawn (Ans. 3).
4 We treat the Examiner's reference to canceled claim 12 as inadvertent
error.
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ANALYSIS
Under 35 U.S.C. § 101, 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 an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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 Corp., 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. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
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(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under § 101, the Examiner
analyzed the claims using the Mayol Alice two-step framework, in
accordance with the guidance set forth in the USPTO's "2014 Interim
Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618
(Dec. 16, 2014 ), in effect at the time the Final Office Action was mailed
(Final Act. 5-6). Specifically, the Examiner notified Appellants that the
claims are directed to "comparing service plans," which the Examiner
determined is a method of organizing activities and, therefore, an abstract
idea; that the additional elements, other than the abstract idea itself, i.e., a
computer-readable medium and a computer, "perform generic computer
functions, such as defining service plans, normalizing service plan data,
generating a matrix using service plan data and collecting usage data, which
are well-understood, routine, and conventional activities previously known
to the pertinent industry"; and that "these additional claim elements do not
provide meaningful limitations to transform the abstract idea into a patent
eligible application of the abstract idea such that the claims amount to
significantly more than the abstract idea itself' (id.).
Appellants contend that the § 101 rejection cannot be sustained
because the Office Action fails to analyze the claims as a whole and also
fails to provide any explanation or reasons why the claims were determined
to not include an element, or combination of elements, sufficient to ensure
that the claims amount to significantly more than the asserted abstract idea
(App. Br. 9-17). In fact, as described above, the Examiner provides a
reasoned analysis that identifies the judicial exception recited in the claims,
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i.e., an abstract idea, and explains both why it is considered a judicial
exception and why 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 Act. 2-5).
Appellants also assert that "[ t ]he present Office Action does not
appear to use any other steps of Claim 1, merely the last step, to characterize
the claim," and charge that this violates the principle that claims should be
examined as a whole to determine patent-eligibility (App. Br. 25). But, that
argument is not persuasive at least because there is no requirement that the
Examiner's formulation of the abstract idea must copy the claim language.
Instead, the Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether 'their character as a whole is directed to excluded subject
matter."' See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016) (citing Internet Patents Corp., 790 F.3d at 1346). The
Examiner's determination here that the claims are directed to "comparing
service plans" fairly reflects the character of the claims as a whole, and is
fully consistent with the Specification (see, e.g., Spec. ,r 4 ("The present
invention is generally related to consumer comparison shopping and usage
based service analysis."); id. ,r 6("[T]here remains a need [in the art] for a
consumer comparison shopping method that obtains ... service usage data
from the consumer and service provider information in order to present the
consumer with relevant alternative service offering options."); id. ,r 46
( describing, with reference to Figure 2, a method of comparing service plans
based on a user's service usage data)).
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Appellants argue that the Examiner has failed to establish a prima
facie case of patent-ineligibility because the Examiner has provided no
evidence that the claims are directed to an abstract idea (App. Br. 24--25).
But, that argument is likewise unpersuasive.
We are aware of no controlling precedent that requires an examiner to
provide evidentiary support in every case before a determination can be
made that a claim is directed to an abstract idea. 5 Nor have Appellants
articulated sufficiently their assertion that the Administrative Procedure Act
imposes any such requirement (id.). Also, contrary to Appellants'
suggestion, this Board did not hold in Ex parte Renald Poisson,
Appeal 2012-011084 (PTAB Feb. 27, 2015) that there is any such
requirement. 6 Evidence may be helpful, e.g., where facts are in dispute, but
it is not always needed. See Mortgage Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d 1314, 1325-26 (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."). Appellants' bare assertion that
5 See, e.g., para. IV "July 2015 Update: Subject Matter Eligibility"
(available at https://www.uspto.gov/ sites/default/ files /documents/ieg-july-
2015-update.pdf) ("The courts consider the determination of whether a claim
is eligible ( which involves identifying whether an exception such as an
abstract idea is being claimed) to be a question of law. Accordingly, courts
do not rely on evidence that a claimed concept is a judicial exception, and in
most cases resolve the ultimate legal conclusion on eligibility without
making any factual findings.").
6 We would not be bound, in any event, by a non-precedential decision of
another panel of the Board.
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evidence is needed here, without any supporting reasoning as to why, is
insufficient to require the Examiner to provide evidentiary support. 7
Further citing the "July 2015 Update: Subject Matter Eligibility"
(the "July 2015 Update")8 Appellants maintain that the USPTO guidelines
"require that a prima facie rejection for subject matter ineligibility must first
identify a claimed concept similar to a concept that the courts have identified
as an abstract idea" (App. Br. 25-26). 9 Appellants assert that the Office
Action fails to adhere to the guidelines because "[t]he Office Action cites no
case in which a court has identified 'comparing service plans' as an abstract
idea" (id. at 26). Yet, even accepting Appellants' assertion that "comparing
service plans" is unlike any previously identified abstract idea, Appellants
cannot reasonably maintain that the current body of case law precedent
encompasses every conceivable abstract idea.
7 We note that the Appellants have put forward no rebuttal evidence
showing the claims are not directed to an abstract idea.
8 We note for the record that the July 2015 Update ( available at
https ://www. uspto. gov/ sites/ default/files/ documents/ieg-july-2015-
update. pdf) was published on July 30, 2015, i.e., after the Examiner's
April 13, 2015 Final Office Action was mailed.
9 The July 2015 Update instructs examiners to refer to the body of case law
precedent in order to identify abstract ideas by way of comparison to
concepts already found to be abstract (id. at 3), and explains that "[t]his
discussion is meant to ... ensure that a claimed concept is not identified as
an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea" (id.). Examiners also are instructed to
clearly articulate "the reason(s) why the claimed invention is not eligible, for
example, by providing a reasoned rationale that identifies the judicial
exception recited in the claim and why it is considered an exception, and that
identifies the additional elements in the claim (if any) and explains why they
do not amount to significantly more than the exception" (id. at 6).
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The Federal Circuit, in Enfzsh, explained that courts "have found it
sufficient to compare claims at issue to those claims already found to be
directed to an abstract idea in previous cases." Enfzsh, 822 F.3d at 1334;
see also Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016) ( explaining that the "decisional mechanism courts
now apply" for deciding if claims are directed to an abstract idea "is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen"). We are aware, however, of no controlling authority, nor do
Appellants point us to any authority, that holds that a claim may only be
determined to be directed to an abstract idea if a court has previously
identified the identical concept as abstract.
It also is significant here that the Federal Circuit has repeatedly
observed 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 USPTO 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 the 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)
( alteration in original). Thus, all that is required of the Office is that it sets
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) ("Section 132 is
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violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection.").
Here, the Examiner set forth the statutory basis of the§ 101 rejection
in the Office Action in a sufficiently articulate and informative manner as to
meet the notice requirement of 35 U.S.C. § 132. And, we find that the
Examiner, in doing so, set forth a prima facie case of patent-ineligibility
such that the burden shifted to Appellants to demonstrate that the claims are
patent-eligible.
Appellants cannot reasonably maintain that the rejection was not
understood or that the rejection otherwise fails to satisfy the notice
requirement of§ 132. Indeed, Appellants' understanding of the rejection is
clearly manifested by Appellants' response as set forth in the briefs.
We also are not persuaded of Examiner error by Appellants' argument
that the claims are patent-eligible because they do not preempt all possible
ways of carrying out "comparing service plans" (App. Br. 17-21 ). There is
no dispute that the Supreme Court has described "the concern that drives
[the exclusion of abstract ideas from patent eligible subject matter] as one of
pre-emption. Alice Corp., 134 S. Ct. at 2354. But, characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing preemption as the sole test for patent eligibility. "The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability" and "[ f]or this reason, questions
on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal
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patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility." Id.
Appellants further argue that the claims are patent-eligible because the
claims are similar to the claims at issue in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) and to the patent-eligible
claim in Example 23 of Appendix 110 to the July 2015 Update (App. Br. 21-
23). But, we find no parallel between independent claim 9, for example, and
the claims in DDR Holdings. Nor do we find any parallel between
independent claim 9 and hypothetical claim 1 ( or hypothetical claim 4)
deemed patent-eligible in Example 23.
The claims at issue in DDR Holdings were directed to retaining
website visitors, and, particularly, to a system that modified the conventional
web browsing experience by directing a user of a host website, who clicks
an advertisement, to a "store within a store" on the host website, rather than
to the advertiser's third-party website. DDR Holdings, 773 F.3d at 1257-
125 8. The court determined that "the claims address a business challenge
(retaining website visitors) [that] is a challenge particular to the Internet."
Id. at 1257. The court also determined that the invention was "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks," and that the claimed invention
did not simply use computers to serve a conventional business purpose. Id.
Hypothetical claim 1 of Example 23 is directed to a computer-
implemented method for dynamically relocating information on a graphical
10 July 2015 Update Appendix 1: Examples, issued by the Office on July 30,
2015, available at https://www.uspto.gov/sites/default/files/documents/ieg-
july-2015-appl. pdf (hereinafter "July 2015 Update Appendix").
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user interface ("GUI") if a window overlap condition exists. Similar to the
situation in DDR Holdings, the July 2015 Update explains that claim 1 is
patent-eligible because it is not directed to an abstract idea ( e.g., it "does not
recite any mathematical concept or mental process such as comparing or
categorizing information") but instead is "necessarily rooted in computer
technology to overcome a problem [i.e., overlapping windows and obscured
text in GUis] specifically arising in graphical user interfaces." Id. at 9.
We are not persuaded that the method of claim 9, for example,
improves an existing technological process or that it solves a technical
problem, similar to DDR Holdings and hypothetical claim 1 of Example 23.
Appellants assert that the present claims "solve a data processing problem
with a claimed solution that is necessarily rooted in computer technology,
'comparing a present service provider plan for the user with at least one
alternative service plan from the service provider using the sorted usage
data"' (App. Br. 21 ), and that the claims improve the technical fields of
"comparing service plans, comparison shopping and usage based service
analysis" (id. at 22; see also id. at 9, 16). But, we are not persuaded that
"comparing service plans, comparison shopping, and usage based service
analysis" are technical fields. Nor are we persuaded that "comparing a
present service provider plan for the user with at least one alternative service
plan from the service provider using sorted usage data" (i.e., in order to
present the user with relevant alternative service offering options) is a
technological solution, as opposed to a business solution to the problem of
identifying an optimal service offering for a user based on the user's past
service usage, cost, service quality, and/or other pertinent factors
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Appellants further argue that the claims are patent-eligible because
they improve the operation of the computer by "efficiently comparing a
present service provider plan for the user with at least one alternative service
plan from the service provider" (App. Br. 15-16; see also id. at 10-11).
Appellants also assert that "[l]imiting the service parameters [ used to
compare the present service provider plan with an alternative service plan]
as claimed conserves computational resources and also helps the computer
or computers to operate more efficiently, because the [ normalized service
plan] model limits the computations that are used in the step of comparing"
(App. Br. 22). Yet, we find nothing in the record, short of attorney
argument, to support that position. For example, we find nothing in the
Specification, nor do Appellants point us to anything in the Specification
that attributes an improvement in computer operation to the claimed
invention. We also find nothing in the claim language that places any
limitation on the number of service parameters that may be reflected in the
normalized service plan model. Instead, claim 9 merely recites that "at least
two of the parameters [are] derived from identical time periods from the
plurality of provider service plans."
There also is a fundamental difference between computer
functionality improvements, on the one hand, and uses of existing computers
as tools to perform a particular task, on the other. Indeed, the Federal
Circuit applied this distinction in Enfzsh, in rejecting a § 101 challenge at the
step one stage in the Alice analysis because the claims at issue focused on 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
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functions of storing and retrieving data, and not on asserted advances in uses
to which existing computer capabilities could be put. Id. at 1335-36.
We find no parallel between the present claims and the claims in
Enfzsh nor any comparable aspect in the present claims that represents "an
improvement to computer functionality." The alleged advantage that
Appellants tout, i.e., "efficiently comparing a present service provider plan
for the user with at least one alternative service plan from the service
provider," does not concern an improvement to computer capabilities but
instead relates to an alleged improvement in comparing competing service
plan offerings for which a computer is used as a tool in its ordinary capacity.
Rather than paralleling the claims in DDR Holdings and the patent-
eligible hypothetical claims in Example 23, independent claims 1, 9, and 16,
in our view, are substantially similar to the claims that the Federal Circuit
determined were patent-ineligible in Electric Power Group LLC v. Alstom,
S.A., 830 F.3d 1350 (Fed. Cir. 2016). There, the court held that the claims
were directed to an abstract idea because "[t]he advance they purport to
make is a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions." Electric Power,
830 F.3d at 1354; see also id. at 1353-54 (characterizing collecting
information, analyzing information by steps people go through in their
minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas).
Similarly here, we find that independent claims 1, 9, and 16 involve
nothing more than collecting data (i.e., a plurality of service plan-related
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data types and usage data for a user's current service provider) and
analyzing the data (i.e., normalizing the service plan-related data types;
sorting the user's service usage data; and comparing a present service
provider plan for the user with at least one alternative service plan from the
service provider using the sorted usage data)-without any asserted
inventive technology for performing these functions. For example, there is
no indication in the record that the particular operations called for in the
claims require any specialized computer hardware or other inventive
computer components or that the claimed invention is implemented using
other than generic computer components to perform the claimed method
steps. Instead, the Specification suggests just the opposite, i.e., that the
claimed invention is implemented using only generic computer components
(see, e.g., Spec. ,r,r 82), which is not enough for patent-eligibility. DDR
Holdings, 773 F.3d at 1256 ("[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1-11 and 13-21 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection.
DECISION
The Examiner's rejection of claims 1-11 and 13-21 under 35 U.S.C.
§ 101 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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