13986069 (P.T.A.B. Sep. 28, 2018)

Ex Parte Wallace

Patent Trial and Appeal BoardSep 28, 2018

13986069 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/986,069 03/28/2013 279 7590 10/02/2018 IP Docket Clark Hill PLC 130 East Randolph Street Suite 3900 Chicago, IL 60601 FIRST NAMED INVENTOR Kenneth A. Wallace 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. 46524-174519 7343 EXAMINER SALOMON, PHENUEL S ART UNIT PAPER NUMBER 2171 NOTIFICATION DATE DELIVERY MODE 10/02/2018 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): IPDocket@clarkhill.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENNETH A. WALLACE Appeal 2018-002391 1 Application 13/986,069 Technology Center 2100 Before ERIC B. CHEN, JON M. JURGOV AN, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject all pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 "The real party in interest is Keys to Medicine, LLC." App. Br. 1. Appeal2018-002391 Application 13/986,069 STATEMENT OF THE CASE Introduction The Application is directed to "a user configurable electronic textbook." Abstract. Claims 1-5, 11-15, and 17-20 are pending, with claims 1 and 17 being independent. See App. Br. 17-19. Claim 1 is reproduced below for reference (emphasis and formatting added): 1. A user configurable electronic textbook system compnsmg: at least one associated database having at least one master database table only accessible by an administrator and one or more user specific database tables individually accessible by respective individual users, said at least one associated database having a template of an electronic textbook that defines one or more fields that are searchable by individual users; a server in communication with said at least one associated data base, said server providing two-way read/write communication between a plurality of individual users and their respective user specific data base table by way of a communication network, said server configured to enable each of said plurality of users to access and search said template and upload their personalized data to a selected field in their user specific data to create and store a customized version of an electronic textbook which is not accessible by other users to enable different personalized electronic textbooks with different content to be created by said respective users and stored in said user specific database tables, said server further configured so that said plurality of individual users have no access to said at least one master database table. 2 Appeal2018-002391 Application 13/986,069 References and Rejections Claims 1-5, 11-15, and 17-20 stand rejected under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. Ans. 2. 2 Claims 1-5, 11-13, and 17 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Cancilliari (US 2011/0207107 Al; Aug. 25, 2011) and Reihl (US 7,747,644 Bl; June 29, 2010). Final Act. 2. Claims 14 and 15 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Cancilliari, Reihl, and Humble (US 2006/0178907 Al; Aug. 10, 2006). Final Act. 5. Claims 18-20 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Cancilliari, Reihl, and Gustafsson (US 2010/0093023 Al; Apr. 15, 2010). Final Act. 6. ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's arguments. Arguments Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). We are not persuaded of reversible error; we adopt the Examiner's findings and conclusions as our own, and we add the following primarily for emphasis. A. 35 USCÂ§ 101 An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpreted Â§ 101 to include an implicit 2 In the Answer the Examiner issues the patent eligibility rejection as a new grounds of rejection. See Ans. 4. 3 Appeal2018-002391 Application 13/986,069 exception: laws 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); see also Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 507 (1874) ("An idea of itself is not patentable"). 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, 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," e.g., to an abstract idea. Alice, 134 S. Ct. at 2355. If the claims are directed to a patent-ineligible concept, 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. I. Alice Step One Appellant argues the Examiner errs in finding the claims are directed to an abstract concept pursuant to step one of the Alice framework, because "the Examiner's analysis is ... based upon an overgeneralization of the claimed inventions." Reply Br. 2. Particularly, Appellant contends "[t]he subject matter of the claimed inventions is markedly different and distinct from the subject matter in the cases cited by the Examiner and a fortiori not related to those abstract ideas," and "[t ]he claimed system provides 4 Appeal2018-002391 Application 13/986,069 significant benefits to the medical profession heretofore unknown." Reply Br. 3. We are not persuaded the Examiner errs in determining the claims are "drawn to a user accessible collection of electronic textbooks that are available for a user in a master database to select and customize the selected textbook to create a customized version of the textbook that is accessible by the user," such that "[t]he underlying concept is merely that of storing information, allowing users to search the information, customize it and then delivering the customized information to users." Ans. 2; cf Reply Br. 3 ("The claimed subject matter relates to a user configurable electronic textbook that can be customized by each user."). The claimed subject matter is analogous to handing out physical textbooks and allowing each user to mark up their own copy (e.g., take notes, add information, etc.), which is no more than activity that "can be performed ... by a human using a pen and paper." CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, (Fed. Cir. 2011); see also Ans. 3. Such activity remains unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) ("Courts have examined claims that required the use of a computer and still found that the underlying, patent- ineligible invention could be performed via pen and paper or in a person's mind."). Thus, we agree with the Examiner that the claims are directed to an abstract concept that is similar to concepts our reviewing courts have found to be abstract. See Ans. 2-3; see also Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328, 1330 (Fed. Cir. 2017) ("the heart of the 5 Appeal2018-002391 Application 13/986,069 claimed invention lies in creating and using an index to search for and retrieve data ... an abstract concept," and "remotely accessing user-specific information is abstract"); Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("The concept of data collection, recognition, and storage is undisputedly well- known"); Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and displaying certain results of the collection and analysis" are "a familiar class of claims 'directed to' a patent-ineligible concept"); Evolutionary Intelligence LLC v. Sprint Nextel Corp., 677 F. App'x 679, 680 (Fed. Cir.) (2017) (determining that selecting and sorting information by user interest or subject matter is abstract). II. Alice Step Two Appellant argues the claims are patent eligible pursuant to step two of the Alice framework, because "the claims satisfy both elements" of the "machine or transformation" test. Reply Br. 3--4 ( quotations omitted). Appellant further argues "the claimed subject matter is an improvement to computer technology." Id. We are not persuaded the Examiner errs in determining the claims do "not include additional elements that when considered both individually and as a combination amount to significantly more than the abstract idea because the limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions." Ans. 3; see also Spec. ,r,r 69, 73. Appellant's reliance on either of a claimed transformation or machine is misplaced: although 6 Appeal2018-002391 Application 13/986,069 "the machine-or-transformation test is a useful and important clue, and investigative tool," such test "is not the sole test for deciding whether an invention is a patent-eligible 'process."' Bilski v. Kappas, 561 U.S. 593, 604 (2010). Here, we agree with the Examiner that, pursuant to the framework laid out in Alice, the pending "claims do not amount to significantly more than the abstract idea itself." Ans. 3. We also agree with the Examiner there "is no indication that the [ claimed] combination of elements improves the functioning of a computer/network or improves any other technology." Ans. 4. The claims are directed to the problem of "allow[ing] a user to store data in a textbook template that can be used by the user for research based upon the user's own input data," which does not specifically arise in the realm of computer software, nor does the invention amount to an improvement to technology. Spec. ,r 19. Accordingly, we are not persuaded the Examiner errs in finding independent claim 1 to be patent ineligible. See Ans. 2-3. B. 35 US.C. Â§ 103(a) I. Independent Claim 1 Appellant argues the Examiner's obviousness rejection is in error, because "neither Cancilliari nor Riehl, either singly or in combination disclose or suggest the invention recited in the claims at issue." App. Br. 10. Particularly, Appellant contends "Cancilliari does not disclose or suggest that the electronic textbooks are searchable or customizable by the end users, i.e. students. Rather, Cancilliari discloses a system for use by a teacher, i.e. content provider that can be modified." App. Br. 11. Regarding the 7 Appeal2018-002391 Application 13/986,069 secondary reference, Appellant contends: "The electronic content in the Reihl system is not customizable by the end users. Thus, unlike the system recited in the claims at issue, only a single version of the electronic co[ nt Jent will be stored in the remote database." App. Br. 12. We are not persuaded the Examiner errs in finding independent claim 1 to be obvious in view of the combined teachings of Cancilliari and Riehl. See Final Act. 2-3. Particularly, we agree with the Examiner that Cancilliari's members are tantamount to the claimed "users." See Final Act. 2; Ans. 5---6; Cancilliari ,r 19 ("'Registered Users' (or 'Members') ... may be parents or teachers that have signed up for ( or have been granted without a fee) a membership."). During prosecution, we apply to the claims "the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Here, the Specification provides examples wherein the users may be part of "a professional or academic group," and "the system may be used by various physicians," but the Specification does not provide a limiting disclosure for the claim term "users." Spec. ,r,r 20, 65. Thus, we agree with Appellant that, consistent with the Specification, "the claim term 'users' relates to a plurality of individuals that can access the content, i.e., electronic textbook and create customized and personalized versions of it." Reply Br. 6. Cancilliari, as cited by the Examiner, similarly teaches the "member[ s are] able to search content of the electronic text book" and "create new customized electronic textbook or editing a preexisting customized textbook 8 Appeal2018-002391 Application 13/986,069 from existing materials stored in the server" Ans. 5, 7; see also Cancilliari ,r,r 17, 45, 46. Appellant does not show the Examiner's mapping of Cancilliari' s members to the recited users is in error. We also agree with the Examiner that the combination of cited references teaches or suggests "enable[ing] different personalized electronic textbooks with different content to be created by said respective users and stored in said user specific database tables." Final Act. 3. As discussed above, Cancilliari teaches that users will create different, customized, versions of textbooks. See Cancilliari ,r 46. Further, the Examiner correctly finds "Riehl teaches content customization and two-way communication link between users and database customization." Ans. 8; Riehl 7:13-17. Riehl teaches the users will have "select access to certain databases, products or functions," and "[t]he information provided in step 340 may be customized by the administrator of a user group or organization to provide use information relevant to the organization[']s needs." Riehl 7: 1-3, 53-55; see also Final Act. 3; Riehl claim 1. Based on the record before us, we agree with the Examiner that, as taught by the references, "the information is tailored and stored based on user preferences; therefore, a plurality of versions are stored in the database." Ans. 8. Accordingly, we are not persuaded the Examiner errs in finding the limitations of claim 1 are taught or suggested by the cited references. See Final Act. 2-3. Nor are we persuaded the Examiner errs in finding one of ordinary skill would "include Reihl's feature in Cancilliari ... in order to facilitate delivering of a plurality of different information services." Final Act. 3; see also Ans. 10. Appellant argues "it is respectfully submitted that given the disparity in the technologies would not have made one of ordinary 9 Appeal2018-002391 Application 13/986,069 skill in the art to combine the references in the manner suggested by the Examiner." App. Br. 16. Appellant does not identify, nor do we discern, any particular disparity in the technologies of the references that would prevent their use together. Rather, we do not find that combining the prior art, as found by the Examiner, was "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) II. Dependent Claims Appellant argues the Examiner's obviousness rejection of dependent claims 14 and 15 is in error, because "Humble stores medical information on a variety of topics," but does not teach or suggest the recited "template is configured as a medical textbook" or "as [a] dermatology textbook." App. Br. 13-14. We are not persuaded the Examiner errs, however, as Humble discloses a database storing "data [which] may include any medical condition such as prenatal, diabetic, high blood pressure, heart disease history, cancer or the like, or merely topics of interest to the dieter," and "a library of advice on a variety of topics." Humble ,r,r 21-22. We agree with the Examiner that the reference's teaching of a database file including "any medical condition," in combination with the other cited references, teaches or suggests a dermatology or medical textbook within the meaning of the claims. 3 Ans. 9. Thus, we sustain the Examiner's rejection of dependent claims 14 and 15. 3 Separately, we note the recited "medical textbook" and "dermatology textbook" limitations, although referring to the content of information stored 10 Appeal2018-002391 Application 13/986,069 Appellant argues the Examiner's obviousness rejection of dependent claims 18-20 is in error, because "Gustafsson is concerned with maintaining three-dimensional images of cancerous and pre-cancerous images. Such three-dimensional images would not be amenable to being stored in a two- dimensional template of an electronic textbook." App. Br. 14. Appellant does not show the Examiner errs in finding Gustafsson teaches "a two- dimensional image which can be stored in a two-dimensional template of an electronic textbook." Ans. 9; Gustaffson ,r,r 93, 95. Further, Appellant's argument is unpersuasive for not being commensurate with the claim scope. Claims 18 and 20 recite "pathology images," and claim 19 recites "images." The claims are silent with respect to the dimensionality of the images included in the electronic data. Thus, we sustain the Examiner's rejection of dependent claims 18-20. CONCLUSION Accordingly, we sustain the Examiner's patentability rejection of claim 1, and the obviousness rejections of independent claim 1 and dependent claims 14, 15, and 18-20. Appellant advances no further argument on the remaining claims. See App. Br. 12-13; Reply Br. 2-5. Accordingly, we sustain the Examiner's rejection of these claims for the same reasons discussed above. in the database, are functionally unrelated to the database. See, e.g., Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018) ("Claim limitations directed to the content of information and lacking a requisite functional relationship are not entitled to patentable weight."). 11 Appeal2018-002391 Application 13/986,069 DECISION The Examiner's decision rejecting claims 1-5, 11-15, and 17-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 12