Ex Parte Varghese et al

Patent Trials and Appeals Board

Jul 8, 2019

13756357 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/756,357 01/31/2013
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
07/10/2019
FIRST NAMED INVENTOR
Matthew Varghese
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.
26295-21845/US 1062
EXAMINER
UBALE, GAUTAM
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW VARGHESE
and NUWAN SENARATNA
Appeal 201 7-002411 1
Application 13/756,357
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing ("Request" or "Req. ")
pursuant to 37 C.F.R. § 41.52 on June 4, 2019, seeking reconsideration of
our Decision on Appeal, mailed April 4, 2019 ("Decision" or "Dec."), in
which we affirmed the Examiner's rejection of claims 1, 4--17, 19, and 20
under 35 U.S.C. § 101 as directed to patent ineligible subject matter. 2
We have jurisdiction over the Request under 35 U.S.C. § 6(b).
ANALYSIS
1 Appellants identify Facebook, Inc., as the real party in interest. Appeal
Br. 2.
2 The Decision also reversed the Examiner's rejections of claims 1, 4--17,
19, and 20 under 35 U.S.C. §§ 102(b) and 103(a).
Appeal 201 7-002411
Application 13/756,357
We note at the outset that a Request for Rehearing "must state with
particularity the points believed to have been misapprehended or overlooked
by the Board." See 37 C.F.R. § 4I.52(a)(l). A Request for Rehearing is not
an opportunity to rehash arguments raised in the Briefs. Neither is it an
opportunity to merely express disagreement with a decision without setting
forth points believed to have been misapprehended or overlooked.
Arguments not raised in the briefs before the Board and evidence not
previously relied on in the briefs also are not permitted except in the limited
circumstances set forth in§ 41.52 (a)(2) though (a)(4). Id.
Turning to the Request, Appellants do not assert that the Board
misapprehended or overlooked any issues or arguments in the Decision.
Instead, Appellants "request further consideration" based upon the 2019
REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50
(Jan. 7, 2019) ("2019 Revised Guidance") and an April 19, 2018,
Memorandum from Robert W. Bahr, Deputy Commissioner for Patent
Examination Policy to the Patent Examining Corps, entitled "Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer3). 4 5 Req. 2.
3 Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (hereinafter
"Berkheimer").
4 The Berkheimer Memorandum is available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419 .PDF (last visited June 27, 2019) ("Berkheimer Memo").
5 The 2019 Revised Guidance and Berkheimer Memo both issued after the
filing of Appellants' Reply Brief on November 23, 2016.
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Berkheimer Memo
Appellants first assert that:
the [E]xaminer has not provided any factual basis for the
conclusion that the limitations recited in the claims, including
"dividing the received advertisement into a plurality of
components," "determining whether the component of the
received advertisement matches one or more components of
previously reviewed advertisements," and "if a component of a
previously reviewed advertisement matches the component of
the advertisement, associating the review associated with the
matching component of the previously reviewed advertisement
with the component" are well-understood, routine or
conventional.
Req. 3. Appellants similarly assert that "[t]he Decision simply states that the
steps of 'storing data,' 'analyzing data,' 'dividing,' 'matching,' and
'presenting data' are routine computer functions" without any consideration
of "the specific details recited in the claims." Id. In light of the above,
Appellants argue
[t]he claims do not merely recite "analyzing data," "dividing,"
or "matching" with a high level of generality. Instead, the
claims recite either associating the review of a matching
component or reviewing a component based on policies
depending on whether the component matches a component of
a previously reviewed advertisement. These are not
conventional steps and they cannot be performed without
special programming.
Id. We cannot agree.
Initially, we note that the Examiner did not simply conclude without
"any factual basis" that the limitations of independent claim 1 are well-
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understood, routine, and conventional. 6 Instead, after considering each of
the limitations of independent claim 1, the Examiner determined:
the additional elements or combination of elements in the
claims ( online system, computer) do not add significantly more
so as to transform the abstract idea into patent-eligible subject
matter. Rather, the elements other than the abstract idea per se
amount to no more than instructions to implement the abstract
idea on a computer and/or a recitation of a general purpose
computer structure that performs generic computer functions
that are well understood, routine and conventional activities
previously known to the industry. This is evidenced by the
specification at [0003] which shows that the abstract idea of
reviewing advertisements has traditionally been performed
manually, but is now being applied to a computer. The
[E]xaminer further asserts that the claimed invention fails to
further improve upon another technology or technological field
or improve the functioning of a computer because there is no
other technological field that is being improved and the claimed
invention fails to improve upon the technology since the
claimed invention does not improve on the data processor or
computing system (see [0044], reciting that the apparatus may
comprise a [sic] "[ t ]his apparatus may be specially constructed
for the required purposes, and/or it may comprise a general-
purpose computing device selectively activated or reconfigured
by a computer program stored in the computer"[]. That is, the
online computer system recited in the [S]pecification for
performing the claimed functions of receiving, dividing, and
determining is nothing more than a general purpose computer,
and that these functions constitute generic computer
[functions]. That is, the invention utilizes only generic and
well-known computer technology.
6 In the Decision, we selected independent claim 1 as the representative
claim because Appellants argued claims 1, 4--17, 19, and 20 as a group in
their briefs. Dec. 3 ( citing Appeal Br. 4--9; Reply Br. 2-5). In the Request,
Appellants continue to argue claims 1, 4--17, 19, and 20 as a group on the
bases of independent claim 1 (see Req. 2-9), and as such, independent
claim 1 remains representative.
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Final Act. 4--5. Appellants have not addressed or substantively argued the
Examiner's findings in the Appeal Brief, Reply Brief, or in their Request for
Rehearing. In the absence of any persuasive argument, we find the
Examiner provided adequate factual evidence from the Specification to
support the position that the additional elements ( or combination of
elements), recited by independent claim 1, are well-understood, routine, and
conventional. See Berkheimer Memo 3.
Similarly, the Decision did not "simply state[] that the steps of
'storing data,' 'analyzing data,' 'dividing,' 'matching,' and 'presenting data'
are routine computer functions" without any regard for "the specific details
recited in the claims." Req. 3. Instead, the Decision noted:
the steps of storing data (Spec. ,r,r 21-22), analyzing data, i.e.,
dividing (id. ,I24), matching (id. ,r,r 25-27), and presenting data
(id. 32-33) are routine computer functions that may be
performed by any computer system. See also In re Katz,
639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms 'processing,' 'receiving,'
and 'storing,' discussed below, those functions can be achieved
by any general purpose computer without special
programming"); Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding
that considering claims reciting data retrieval, analysis,
modification, generation, display, and transmission as an
"'ordered combination"' reveals that they "amount to 'nothing
significantly more' than an instruction to apply [an] abstract
idea" using generic computer technology) (internal citation
omitted).
Dec. 10-11. Appellants' Request for Rehearing does not address or
substantively rebut this portion of the Decision.
Furthermore, the court in Berkheimer held that "[t]he patent eligibility
inquiry may contain underlying issues of fact." Berkheimer v. HP
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Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018) (quoting Mortgage Grader, Inc.
v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir.
2016)) ("The§ 101 inquiry 'may contain underlying factual issues."').
"When there is no genuine issue of material fact regarding whether the claim
element or claimed combination is well-understood, routine, [and]
conventional to a skilled artisan in the relevant field, this issue can be
decided on summary judgment as a matter of law." Berkheimer, 881 F.3d
at 1368; see also Aatrix Software, Inc. v. Green Shades Software, Inc.,
890 F.3d 1354, 1368 (Fed. Cir. 2018) ("A factual allegation or dispute
should not automatically take the determination out of the court's hands;
rather, there needs to be justification for why additional evidence must be
considered-the default being a legal determination."). Thus, evidence may
be helpful where, for instance, facts are in dispute, but evidence is not
always necessary.
Here, Appellants have not persuaded us that a factual dispute has
arisen and evidence is necessary to resolve such a dispute. The Examiner's
specific determinations (see, e.g., Final Act. 3-5; see also Ans. 3---6, and 7-
8) that the claims contain generic computer components which perform
generic computer functions (see Ans. 7) are not being disputed. Nor would
there necessarily be a genuine factual dispute had Appellants more
accurately contested the Examiner's determination.
"In Berkheimer, there was such a genuine dispute for claims 4--7, but
not for claims 1-3 and 9." Berkheimer, 890 F.3d at 1371 (Moore, J.,
concurring).
[I]n accordance with Alice, we have repeatedly recognized the
absence of a genuine dispute as to eligibility for the many
claims that have been defended as involving an inventive
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concept based merely on the idea of using existing computers
or the Internet to carry out conventional processes, with no
alteration of computer functionality.
Id. at 1373 (Moore, J., concurring). Here, independent claim 1 provides for
a "computer-implemented method" comprising four primary steps: the first
step calls for "storing one or more reviews of a plurality of components of
previously reviewed advertisements"; the second step calls for "receiving, at
the online system, an advertisement from an advertiser"; the third step calls
for "dividing the received advertisement into a plurality of components," but
requires no computer to practice it. The fourth step is performed for each of
the plurality of components of the advertisement received at the second step,
and calls for "determining whether the component of the received
advertisement matches one or more components of previously reviewed
advertisements," but requires no computer to perform it. Req. 3. Based on
this determining or matching step, independent claim 1 simply "associat[ es]
the review associated with the matching component of the previously
reviewed advertisement" or "review[ s] the component by applying one or
more policies of the online system to the component of the received
advertisement to determine whether the component of the received
advertisement violates one or more policies of the online system" without
requiring a computer.
All of these functions are common to generic computers. "Taking the
claim elements separately, the function performed by the computer at each
step of the process is '[p ]urely conventional."' Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 573 U.S. 208,225 (2014) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66 (2012)). "Considered 'as an ordered
combination,' the computer components of [Appellants'] method 'ad[d]
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nothing ... that is not already present when the steps are considered
separately." Id.; see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327,
1335-36 (Fed. Cir. 2016) (The relevant inquiry is "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."). Cf buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (Stating "[t]hat a computer
receives and sends the information over a network-with no further
specification-is not even arguably inventive.").
Appellants also argue that "[t]he pending claims recite various
unconventional limitations such as, for example, the determination of when
to review certain components to speed up the review process. Those steps
are unconventional as it is impossible for a human reviewer to perform
them." Req. 4, 5-6. However, similar to the step of "determining whether
the component of the received advertisement matches one or more
components of previously reviewed advertisements," the Federal Circuit has
held that claims directed to using rules for detecting misuse of patient health
information and notifying a user when misuse is detected were "directed to a
combination of ... abstract-idea categories," namely mathematical
algorithms and mental processes. See FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016); see also Accenture Global
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed.
Cir. 2013) (finding ineligible claims directed to generating rule-based tasks
for processing an insurance claim).
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2019 Revised Guidance
Regarding the second prong of step 2A, Appellants assert independent
claim 1 recites an "improved way of reviewing advertisements [that] is a
practical application of the abstract idea of "reviewing advertisements for
compliance with a policy." Req. 7. We cannot agree.
The 2019 Revised Guidance provides five "exemplary considerations"
that "are indicative that an additional element ( or combination of elements)
may have integrated the exception into a practical application." 2019
Revised Guidance, 84 Fed. Reg. at 55 (emphasis added). The first
exemplary consideration is whether "[ a ]n additional element reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field." Id. ( citing MANUAL OF PATENT EXAMINING
PROCEDURE ("MPEP") § 2106.05(a)). The second exemplary consideration
is whether there is "an additional element that applies or uses a judicial
exception to effect a particular treatment or prophylaxis for a disease or
medical condition." Id. The third exemplary consideration is whether "an
additional element implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine or manufacture that is
integral to the claim." Id. (citing MPEP § 2106.05(b)). The fourth
exemplary consideration is whether "an additional element effects a
transformation or reduction of a particular article to a different state or
thing." Id. (citing MPEP § 2106.05(c)). The fifth exemplary consideration
is whether "an additional element applies or uses the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the claim as a
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whole is more than a drafting effort designed to monopolize the exception."
Id. (citing MPEP § 2106.05(e)).
In the Request, Appellants appear to argue that independent claim 1 is
patent-eligible based on the fifth exemplary consideration. Appellants argue
that independent claim 1
divides advertisements into individual components and only
reviews a component if the component doesn't match a
previously reviewed component. This is a meaningful
application or use of the abstract idea of "reviewing
advertisements for compliance with a policy" that results in
advertisements being able to be live in a system more quickly.
Req. 7 (citing 2019 Revised Guidance, 84 Fed. Reg. at 55). Appellants
further argue that independent claim 1 does "not simply link[]the judicial
exception to a particular technological environment"; but rather, "performs
further steps to reduce the frequency in which a full analysis of an
advertisement is performed." Id. at 8-9.
With respect to the fifth exemplary consideration, the 2019 Revised
Guidance informs us that this inquiry is guided by section 2106.05(e) of the
MPEP. This section of the MPEP states:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment.
[Diehr,] 450 U.S. 175,209 USPQ 1 (1981). In Diehr, the claim
was directed to the use of the Arrhenius equation ( an abstract
idea or law of nature) in an automated process for operating a
rubber-molding press. [Diehr,] 450 U.S. at 177-78, 209 USPQ
at 4. The Court evaluated additional elements such as the steps
of installing rubber in a press, closing the mold, constantly
measuring the temperature in the mold, and automatically
opening the press at the proper time, and found them to be
meaningful because they sufficiently limited the use of the
mathematical equation to the practical application of molding
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rubber products. [Diehr,] 450 U.S. at 184,187,209 USPQ at 7,
8. In contrast, the claims in Alice Corp. v. CLS Bank
International did not meaningfully limit the abstract idea of
mitigating settlement risk. [Alice] 573 U.S. 134 S. Ct. 2347,
110 USPQ2d 1976 (2014). In particular, the Court concluded
that the additional elements such as the data processing system
and communications controllers recited in the system claims
did not meaningfully limit the abstract idea because they merely
linked the use of the abstract idea to a particular technological
environment (i.e., "implementation via computers") or were
well-understood, routine, conventional activity.
MPEP § 2106.05(e) (emphasis added).
As noted by the Examiner in the Final Action, there are "no
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technical environment." Final Act. 3--4. The Examiner thus
concluded "[t]he claim(s) do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the additional computer elements, which are recited at a high level
of generality, provide conventional computer functions that do not add
meaningful limits to practicing the abstract idea." Ans. 3. We agree with
the Examiner.
In this regard, "divid[ing] advertisements into individual components
and only review[ing] a component if the component doesn't match a
previously reviewed component" (Req. 7) is a feature of the underlying
abstract idea, i.e., reviewing advertisements for compliance with a policy
(Dec. 5 ( quoting Final Act. 3)), and not of a computer or the "online
system," as recited by independent claim 1. Here, the use of a computer in a
generalized fashion (see, e.g., Spec. ,r,r 21, 22, 24--27, 32, 33, and 42--44) to
increase efficiency does not meaningfully limit those otherwise abstract
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claims. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir.
2014) (citing Alice, 573 U.S. at221) ("[T]he claimed sequence of steps
comprises only 'conventional steps, specified at a high level of generality,'
which is insufficient to supply an 'inventive concept."').
Although the steps recited in Appellants' claims may be performed
faster or more efficiently with the "online system" recited in exemplary
independent claim 1, we find the resultant speed increase comes from a
"general purpose computer, rather than from the patented method itself'
(see, e.g., Spec. ,r 44 ), and does "not materially alter the patent eligibility of
the claimed [invention]." FairWarning, 839 F.3d at 1095 (citation omitted);
see also Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266,
1279 (Fed. Cir. 2012) ("Using a computer to accelerate an ineligible mental
process does not make that process patent-eligible.").
We also cannot agree with Appellants that independent claim 1 is
patent eligible because it is similar to the claims at issue in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), i.e., independent
claim 1 includes an additional element ( or combination of elements) that
integrates the exception into a practical application based on the first
exemplary consideration. Although we agree with Appellants that the
claims in DDR Holdings are directed to a business aspect, i.e., "retaining
website visitors" (Req. 7), the claims in DDR Holdings are more particularly
directed 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
directing the user to the advertiser's third-party website. DDR Holdings,
773 F.3d at 1257-58. Appellants do not persuade us that independent
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claim 1 includes a similar change or modification to the routine,
conventional process of "reviewing advertisements for compliance with a
policy." See Decision 7-8 (quoting Final Act. 3; Ans. 6).
Moreover, in DDR Holdings the court determined that the claims were
directed to patent eligible subject matter because they claim a solution
"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. DDR Holdings, 773 F.3d at 1257-58. Rather, there was a change
to the routine, conventional functioning of Internet hyperlink protocol. Id.
Here, other than reproducing portions of our Decision (see Req. 6-7
( quoting Dec. 8-9), Appellants do not attempt to show error in our analysis.
Appellants simply assert, that "the use of the improved system has a
business aspect does not preclude a claim from being a practical application
of an abstract idea." Id. at 7. Thus, Appellants fail to persuade us that the
claimed solution is "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks"
or that the claimed invention addresses a problem unique to the Internet or
computer networks. Cf Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1371 (Fed. Cir. 2015) ("[C]laims here do not address
problems unique to the Internet, so DDR has no applicability.").
Appellants do not dispute any of the above observations, or otherwise
attempt to show error in our analysis as set forth in the Decision. Appellants
simply reproduce claim limitations and repeat Appellants' position that the
claims integrate the abstract idea into a practical application under Prong
Two of Step 2A of the 2019 Revised Guidance. We also note that
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Appellants do not request rehearing as to Prong One of Step 2A of the 2019
Revised Guidance (2019 Revised Guidance at 54 ("Revised Step 2A:
1. Prong One: Evaluate Whether the Claim Recites a Judicial Exception")).
However, we note that the Decision provides a detailed analysis that is
consistent with the 2019 Revised Guidance. See Dec. 5-8.
DECISION
Appellants' Request has been granted to the extent that we have
reconsidered our Decision in light of Appellants' Request, but is denied in
all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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