Ex Parte Sharma et al

Patent Trial and Appeal Board

Sep 25, 2018

12978706 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/978,706 12/27/2010
146524 7590
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
09/25/2018
FIRST NAMED INVENTOR
Sanjay Sharma
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.
31547-271 /LEN0064PA 1687
EXAMINER
LIN, SHEW FEN
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
09/25/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANJA Y SHARMA, JOHN ALEXANDER DALESSIO,
JEREMY JACOB MULDER, GAURA V MEHRA, MOLLY MILLER,
MARESH PENDY ALA, TODD JOSEPH FRASCONE,
DOUGLAS N. RITTER and GORDON YIP
Appeal2018-004029
Application 12/978,706
Technology Center 2100
Before CARL W. WHITEHEAD JR, JEFFREY S. SMITH and
MICHAEL M. BARRY, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1, 3-14, 16-19,
37 and 38 under 35 U.S.C. § 134(a). Appeal Brief 4. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
Introduction
The invention is directed to introducing "research tools to help
researchers quickly determine what avenues have been searched, what
documents may be highly relevant, and what additional documents may be
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Application 12/978,706
important to those already identified as important." Specification,
paragraph 5.
Illustrative Claim
1. A computer-implemented method for creating a research tree,
compnsmg:
receiving, by a processor, a query, the query specifying a search
parameter for searching a document repository;
executing the query to search the document repository;
storing, in the data repository, the query and a result of the query as a
root node of the research tree;
receiving, by the processor, a request for a first filter for the result of
the query, the first filter limiting the result of the query;
storing the first filter and information identifying a plurality of
documents matching the first filter among the retrieved documents as a first
filter node connected to the root node in response to the receiving the request
for the first filter for the result of the query, the root node being a parent
node of the first filter node;
receiving a request to view a first document from the plurality of
documents matching the first filter;
storing the request to view the first document as a first document node
connected to the first filter node in response to receiving the request to view
the first document, the first filter node being a parent node of the first
document node; and
displaying the research tree including the root node, the first filter
node connected to the root node, and the first document mode connected to
the root node,
wherein the root node displays the query,
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the first filter node displays a label for the first filter, and
the first document node displays identification information of the first
document.
Rejection on Appeal
Claims 1, 3-14, 16-19, 37 and 38 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to non-statutory subject
matter. The claimed invention is directed to non-statutory subject matter
because 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 Action 2-7.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed October 6, 2017), the Reply Brief (filed
March 5, 2018), the Answer (mailed January 5, 2018) and the Final Action
(mailed March 16, 2017) for the respective details.
35 U.S.C. §101 Rejection
Section 101 defines patentable subject matter: "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). The Supreme Court, however, has "long held that
this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable" (Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted)). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
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"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas" (Alice Corp. v. CLS Bank Int 'l, 134 S.Ct. 2347, 2355 (2014)).
"The inquiry often is whether the claims are directed to 'a specific means or
method' for improving technology or whether they are simply directed to an
abstract end-result" (RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017)). A court must be cognizant 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), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule"
(Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016)).
Instead, "the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter" (Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
The Supreme Court has identified abstract ideas that are related to
abstract ideas employing mathematical relationships or formulas, which are
similar to the instant claimed invention. Specifically, the Supreme Court
stated that the concept of applying a mathematical formula to hedging risk
and the application of that concept to energy markets was not patentable
because of similarities to Benson, Flook, and Diehr (Bilski v. Kappas, 561
U.S. 593, 595 (2010) (citations omitted)). Further, the Supreme Court noted
that the claims, like those in Flook, were unpatentable because "Flook
established that limiting an abstract idea to one field of use or adding token
postulation components did not make the concept patentable"(. at 612).
Additionally, the Federal Circuit has identified abstract ideas that do
not describe an inventive concept that is more than an abstract idea, even
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when embodied in specific system or structure. Specifically, the Federal
Circuit stated "not every claim that recites concrete, tangible components
escapes the reach of the abstract-idea inquiry," including a finding that
"claims reciting an 'interface,' 'network,' and a 'database' are nevertheless
directed to an abstract idea" (In re TL! Commc 'n LLC Patent Litigation, 823
F.3d 607, 611 (Fed. Cir. 2016) (citing Mortg. Grader, Inc. v. First Choice
Loan Serv. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016)). The Federal
Circuit found the "eleven steps for displaying an advertisement in exchange
for access to copyrighted media" was directed to an abstract idea, despite the
claim at issue reciting "certain additional limitations ... [that] add a degree
of particularity" (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--15
(Fed. Cir. 2014)). Further, the Federal Circuit noted "the concept embodied
by the majority of the limitations describes only the abstract idea of showing
an advertisement before delivering free content," and the addition of novel
or non-routine components did not "necessarily tum[] an abstraction into
something concrete" (id. at 716).
In contrast, the Federal Circuit has found claims that "are not simply
directed to any form of storing tabular data, but instead are specifically
directed to a self-referential table for a computer database" are "directed to
an improvement of an existing technology ... achiev[ing] other benefits
over conventional databases, such as increased flexibility, faster search
times, and smaller memory requirements" (Enfish, 822 F.3d at 1337
( citations omitted)). However, the heart of the claimed invention must be
focused on the underlying technology itself, and how the underlying
technology is altered "in a way that leads to an improvement in the
technology" (Intellectual Ventures Iv. Erie Indem. Co., 850 F.3d 1315, 1328
( citing Enfzsh ); see also TL! Commc 'n, 823 F .3 d at 612 ).
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If the claims are not directed to a patent-ineligible concept, the inquiry
ends. Otherwise, the inquiry proceeds to the second step, where we
"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" (Alice, 134 U.S. at
2355 (quoting Mayo, 566 U.S. at 79, 78)). The Supreme Court has
"described step two of this 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. (quotation omitted)). For computer-related
technology, the Federal Circuit has held that a claim may pass the second
step if "the claimed solution is necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
[technology]" (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014) (e.g., "a challenge particular to the Internet")).
In Bilski, the Supreme Court rejected the machine or translation test as
the exclusive test for determining patentability, but nonetheless held the
claims were ineligible because the claims were preemptory of risk hedging
in all fields (593 U.S. at 594, 596, 612-13 (citing Parker v. Flook, 437 U.S.
584 (1978); Gottschalkv. Benson, 409 U.S. 63 (1972))). The Federal Circuit
has also identified when abstract ideas do not amount to significantly more
than the judicial exception. The Federal Circuit held the abstract idea of
classifying and storing digital images in an organized manner was not
significantly more than an abstract idea because "the recited physical
components behave exactly as expected according to their ordinary use" and
the claimed invention "fails to provide the requisite details necessary to
carry out th[ e] idea" ( TL! Commc 'n, 823 F .3d at 615). Moreover, the
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Federal Circuit held the idea of "receiving copyrighted media, selecting an
ad, offering the media in exchange for watching the selected ad, displaying
the ad, allowing the consumer access to the media, and receiving payment
from the sponsor of the ad" was not significantly more than the abstract idea
because "the claims simply instruct the practitioner to implement the
abstract idea with routine, conventional activity" ( Ultramercial, Inc., 772
F.3d at 715). Additionally, the Federal Circuit noted "[n]one of these eleven
individual steps, viewed 'both individually and "as an ordered
combination,"' transform the nature of the claim into patent-eligible subject
matter" (id. ( citations omitted)).
In contrast, the Federal Circuit held claims directed to methods of
organizing human activity may be significantly more "when the claim
limitations were considered individually and as an ordered combination,
they recited an invention that is not merely the 'routine and conventional
use' of technology" (Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1301---02 (Fed. Cir. 2016) (citing DDR Holdings; BASCOM Global
Internet Serv., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
Additionally, the Federal Circuit held the ordered combination of the
claimed invention recited an inventive concept because "the distributed,
remote enhancement that produced an unconventional result," which
represented "a technical improvement over prior art technologies and served
to improve the performance of the system itself' (Amdocs, 841 F.3d at 1302
(emphasis added); see also BASCOM, 827 F.3d at 1352 ("an inventive
concept can be found in the ordered combination of claim limitations that
transform the abstract idea of filtering content into a particular, practical
application")).
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Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
The Examiner finds:
The claimed invention is directed to a judicial exception (i.e., an
abstract idea) without significantly more. Claims 1, 14, 16 are
directed to comparing new and stored information and using
rules to identify options. The claims do not include additional
elements that are sufficient to amount to significantly more than
the judicial exception. Simply appending well-understood,
routine and conventional activities previously known to the
industry, specified at a high level of generality, to the judicial
exception, e.g., a claim to an abstract idea requiring no more than
a generic computer to perform generic computer functions that
are well-understood, routine and conventional activities
previously known to the industry, is not to be enough to qualify
as "significantly more" when recited in a claim with judicial
exception.
Final Action 2-3.
Appellants contend:
Similar to the claims at issue in Enfzsh, which are directed to
steps of configuring a computer memory in accordance with a
self-referential table, the claims of the present application are not
claims "where a general-purpose computer components are
added posthoc to a fundamental economic or mathematical
equation." Id. Particularly, the claims of the present application
solve a problem in conventional computer-based research tools
that offer little help to a researcher attempting to determine if
research is complete or to quickly identify highly relevant
documents (see present application at paragraph [0004]). As
such, the claims are patent eligible as were the claims held patent
eligible in Enfzsh.
Appeal Brief 15.
There is a fundamental difference between computer microprocessors
functionality improvements, on the one hand, and using a generic processor
as a tool to perform a particular task, on the other. That is the distinction the
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Federal Circuit applied in Enfzsh in rejecting a§ 101 challenge at the step
one stage in the Alice analysis. Enfish, 822 F.3d at 1335-36. In particular,
the claims at issue in Enfish 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 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 here between Appellants'
claims and the claims in Enfzsh, nor any comparable aspect in Appellants'
claims that represents an improvement to computer functionality.
Appellants do not explain how the claims before us represent an
improvement to computer functionality, nor does Appellants assert that the
recited technical components ( electronic platform and computing devices)
operate in an unconventional manner. Accordingly, we do not find
Appellants' argument persuasive of Examiner error.
Appellants contend, "[T]he fact that the claims of the present
application do not unduly monopolize the basic tools of scientific and
technological work further weighs in favor of the patent eligibility of the
pending claims." Appeal Brief 15. Appellants further contend, "The
pending claims, which recite a concrete and specific approach to create a
research tree that includes a root node, a first filter node connected to the
root node, and a first document node connected to the first filter node, do not
preempt basic tools of science or technology." Appeal Brief 16. We agree
the Supreme Court has described "the concern that drives this exclusionary
principle [i.e., the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption." Alice, 134 S. Ct. at 2354. But
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
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As our reviewing court has explained, "[t]he Supreme Court has made clear
that the principle of preemption is the basis for the judicial exceptions to
patentability" and "[ fJor 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, 134 S. Ct. at 2354).
And although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility." Id.
Moreover, "[ w ]here a patent's claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework ... , preemption
concerns are fully addressed and made moot." Id.; see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert. denied,
136 S. Ct. 701 (2015)("[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the ecommerce
setting do not make them any less abstract."). Accordingly, we are not
persuaded the Examiner erred.
Appellants argue, "The Final Office Action generally alleges on page
4 that the claimed subject matter is directed to an abstract idea. The Final
Office Action, however, fails to provide sufficient support or reasoning for
this rejection." Appeal Brief 16. The Federal Circuit has repeatedly noted
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 Office 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
rejection, "together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application."
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See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). We do not find
Appellants' argument persuasive of Examiner error. Accordingly, we tum
to the second step of the Alice analysis, in which we determine whether the
additional elements of the claims transform them into patent-eligible subject
matter.
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
Appellants state, "To provide guidance on this 'significantly more'
language, the Federal Circuit recently issued an opinion in DDR Holdings,
LLC v. Hotels.com, L.P., 2013-1505 (Fed. Cir. 2014). In that case, the
Federal Circuit found that Internet software claims were patent eligible
under 35 U.S.C. § 101 and provided guidance for other software related
system and method claims." Appeal Brief 17. Appellants contend, "claim 1
addresses the limitation associated with conventional computer-based
research trail tools. According to claim 1, the research tree including a root
node, a filter node, and a document node enables a researcher to see what
searches a user performed, what documents the user has viewed, and what
filters have been applied." Appeal Brief 18. Appellants further contend,
"the research tree enables quick comprehension of how a particular
document was found. (paragraphs [0028] and [0029] of the application as
filed). Because the elements of claim 1 were developed to address
deficiencies in online search tools, claim 1 provides 'significantly
more' than an abstract idea." Appeal Brief 18.
Despite characterizing the claimed invention as using computer
technology to overcome a problem specific to online search tools,
Appellants do not present sufficient persuasive evidence or argument that
the claims are directed to an improvement specific to a computer network or
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the Internet itself (e.g., improving the network's operation or configuration,
or retaining website visitors). Compare, e.g., Elec. Power, 830 F.3d at 1354,
with DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
Cir. 2014). We find Appellants' claims are distinguished from those claims
that our reviewing court has found to be patent eligible by virtue of reciting
technological improvements to a computer system. See, e.g., DDR
Holdings, 773 F.3d at 1249, 1257 (holding that claims reciting computer
processor for serving "composite web page" were patent eligible because
"the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks"). Accordingly, we do not find that the claims recite significantly
more to transform the abstract idea into a patent-eligible application. We
sustain the Examiner's 35 U.S.C. § 101 rejection of claims 1, 3-14, 16-19,
37 and 38.
DECISION
The Examiner's 35 U.S.C. §101 rejection of claims 1, 3-14, 16-19,
3 7 and 3 8 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 ). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
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