Ex Parte Wilkerson

Patent Trial and Appeal Board

Jul 11, 2018

12831307 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/831,307 07/07/2010
28395 7590 07/13/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Brian Y. Wilkerson
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.
83156404 2188
EXAMINER
KAN, YURI
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
07/13/2018 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN Y. WILKERSON
Appeal 2017-007 411
Application 12/831,307
Technology Center 3600
Before BRETT C. MARTIN, LYNNE H. BROWNE, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-3, 8, 10, 14, 15, and 19-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and enter a New Ground of Rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Appeal 2017-007 411
Application 12/831,307
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system comprising:
a processor configured to:
receive at least one digital communication including text in a
body of the communication corresponding to a schedulable
event;
identify the schedulable event in the text of the body of the
communication;
query a user to determine if the schedulable event should
be scheduled; and
responsive to user confirmation to the query, schedule the
schedulable event.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Murray
Oral
Coughlin
Heinley
Begeja
US 2002/0068583 Al
US 2008/0140488 Al
US 2008/0167937 Al
US 2008/0294663 Al
US 2012/0030713 Al
REJECTIONS 1
June 6, 2002
June 12, 2008
July 10, 2008
Nov. 27, 2008
Feb.2,2012
I. Claims 1, 10, 14, and 21 stand rejected under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description
requirement.
1 The rejection of claims 1-3, 8, 10, 14, and 19-21 under 35 U.S.C. § 112,
second paragraph as being indefinite was withdrawn by the Examiner. See
Ans. 13.
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Application 12/831,307
II. Claims 10, 14, 15, 19, and 20 stand rejected under 35 U.S.C.
§ 101.
III. Claims 1, 2, 8, 10, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Coughlin, Oral, and Begeja.
IV. Claims 3 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Coughlin, Oral, Begeja, and Heinley.
V. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Coughlin, Oral, Begeja, and Murray.
DISCUSSION
Rejection!: Failure of Claims 1, 10, 14, and21 to
Comply with the Written Description Requirement
The Examiner determines that claims 1, 10, 14, and 21 fail to comply
with the written description requirement because the "limitation
'schedulable event' ... is not supported or described in the published
specification." Final Act. 4. In support of this determination, the Examiner
finds that "[ w ]hile the published specification recites, in numerous
paragraphs, the following terms and limitations: 'unscheduled personal
event;' 'previously scheduled personal events;' 'personal events pending for
scheduling;' 'personal event that should be scheduled;' 'scheduled and
unscheduled events,' the published specification is silent on 'schedulable
event.'" Id.
The Examiner's determination appears be premised on the idea that if
the Specification does not provide antecedent basis for the claim
terminology, it does not provide written descriptive support for that
terminology. See id. The test for compliance with the written description
requirement, however, does not require that the claims use the same
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Application 12/831,307
terminology as the Specification. Rather, the test for sufficiency is whether
the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (citations omitted).
In this case, as noted by Appellant, "the Examiner's own definition
proves that the specification provides adequate support for the term
'schedulable event,' through recitation of numerous examples of the same."
Appeal Br. 5. In other words, the events enumerated by the Examiner, such
as personal events pending for scheduling, provide adequate evidence that
Appellant had possession of the subject matter encompassed by the claim
term "schedulable event" at the time of filing of the instant application.
Accordingly, we do not sustain the Examiner's decision rejecting claims 1,
10, and 21 as lacking written descriptive support on this basis.
Regarding claim 14, the Examiner relies on similar analysis to
determine that:
While the published specification recites, in numerous
paragraphs, the following terms and limitations: "triggers for
identifying the unscheduled personal events;" "triggers found in
the personal communications;" "triggers that may be used to
trigger information handling logic of the manager 100 to be
run ;" "triggers that may include, but are not limited to,
keywords, names, phrases, abbreviations, various permutations
of words, various permutations of syntax, numbers, phone
numbers, time, acronyms, misspellings of words, and the like,"
the published specification is silent on "a trigger predefined as
indicating a schedulable event."
Final Act. 4. The Examiner's analysis is flawed for the reasons discussed
supra. Accordingly, we do not sustain the Examiner's further rejection of
claim 14 as lacking written descriptive support.
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Application 12/831,307
Re} ection II: Failure of Cl aims 1 0, 14, 1 5, 19, and 2 0 to be
Directed to Patent-Eligible Subject Matter
Appellant argues claims 10, 14, 15, 19, and 20 together. Appeal Br.
6-7. We select claim 10 as the representative claim, and claims 14, 15, 19,
and 20 stand or fall with claim 10. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Bankint'l., 134 S.Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S Ct. 1289, 1294
(2012)). According to the Supreme Court's framework, we must first
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we
must secondly "consider the elements of each claim both individually and
'as an ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Id.
The Supreme Court characterizes the second step of the analysis as "a search
for an 'inventive concept' - i.e., an element or combination of elements
that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Id.
The Examiner determines that claim 10 is directed to patent-ineligible
subject matter. See Final Act. 6. Specifically, the Examiner determines that
claim 10 claims a "method of organizing human activities (e.g., concepts
relating to interpersonal and intrapersonal activities, such as managing
relationships or transactions between people, social activities, and human
behavior along with ... managing human mental activity)." Id. The
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Examiner further determines that claim 10 claims an algorithm for
identifying scheduling conflicts. See id. The Examiner explains that
methods of organizing human activities and algorithms for identifying
scheduling conflicts are abstract ideas. See id. at 6-7.
Having determined that claim 10 is directed to abstract ideas
pertaining to the organization of human activities and identification of
scheduling conflicts, the Examiner reviews claim 10 for limitations which
"transform the claimed invention into more than an abstract idea." Final
Act. 7, emphasis added. Noting that "the claims repeatedly recite the
element 'a processor,'" the Examiner, nevertheless, determines that "this
element comprises no more than [a] generic computer with its components
that are performing generic computer functions that are well-understood,
routine and conventional." Id. Thus, the Examiner concludes that "the
claimed generic computer does not amount to significantly more than
Applicant's algorithm." Id. In other words, the Examiner determines that
the limitations pertaining to the processor do not transform claim 10 such
that it recites patent-eligible subject matter.
Appellant concedes that claim 10 is drawn to an abstract idea stating,
"[ s ]ince the Examiner claims that the independent claim 10 relates to an
abstract idea, the question of patent eligibility turns around whether or not
'something more' is included in the claims, that, when the claims are
considered as a whole, provides sufficient basis for patentability." Appeal
Br. 6. Appellant contends that claim 10 represents "novel application of
technology ( obtaining the text corresponding to the event and scheduling it)
in an atypical manner, [such that it passes] the 'something more' test." Id.
Although the second step in the Alice analysis includes a search for an
inventive concept, the analysis is not an evaluation of novelty or
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Application 12/831,307
nonobviousness, but rather, a search for "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.'" Alice,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304. Further, "under the [Alice]
framework, a claim directed to a newly discovered law of nature ( or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility." Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). Thus,
Appellant's argument that the claims are novel does not apprise us of error.
Accordingly, we sustain the Examiner's decision rejecting claim 10,
and claims 14, 15, 19, and 20 which fall therewith, as being directed to
patent-ineligible subject matter.
New Ground of Rejection of Claims 1-3, 8, and 21 as
Being Directed to Patent-Ineligible Subject Matter
The subject matter of claims 1 and 21 is similar to the subject matter
of claim 10 in that all of these claims are directed to the abstract idea of
organizing human activities as discussed supra. Claims 1 and 21 do not
recite additional elements which amount to significantly more that an
attempt to patent the ineligible concept itself. Claim 1 merely includes the
post solution activities of querying a user and responding to the user's
confirmation of the query, while claim 21 merely specifies that the processor
used to implement the abstract idea be a vehicle computer.
For the reasons discussed supra with respect to claim 10, claims 1 and
21 are directed to patent-ineligible subject matter. Claims 2, 3, and 8 also do
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not amount to significantly more than an attempt to patent the ineligible
concept set forth in claim 1. Accordingly, claims 2, 3, and 8 are also
directed to patent-ineligible subject matter.
Rejection III: Obviousness of Claims 1, 2, 8, 10, 20, and 21
Based on Coughlin, Oral, and Begeja
The Examiner finds that Coughlin, Oral, and Begeja disclose or
suggest all of the limitations of claim 1. See Final Act. 8-16. In particular,
the Examiner finds that Begeja teaches "a natural language filter, filtering
out any word not found in a directory of known words of one or more
predetermined languages." Id. at 14. The Examiner cites various portions of
Begej a describing this filter. See id. at 14--15. In view of these portions of
Begej a, the Examiner finds that:
the assignment of additional keyword attributes ( e.g., keywords
may be assigned to predetermined categories such as "current
events") and association of keywords in time ( e.g., to identify
overlap or proximity in time using start time and duration data)
in the Begeja reference teach ... identifying conflicting events
in text of a digital communication
as required by claim 1. Id. at 15 ( emphasis omitted). Based on these
findings, the Examiner determines that it would have been obvious to apply
and utilize "the steps, technique and features for the text recognition in
digital communication and the assignment of additional keyword attributes
. . . as taught by Begeja in order to improve accuracy of the automated
processing, and to reduce the required amount of downstream processing."
Id. at 15-16 (citing Begeja ,r 44).
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Appellant contends that "[i]n all of the categories enumerated in
Begeja, however, there is nothing remotely close to 'identifying text
corresponding to a schedulable event."' Appeal Br. 7. In support of this
contention, Appellant argues that "[s]ince Begeja is concerned with filtering
words out of television or video media content, it is unclear what 'a
schedulable event' would even be, and more importantly, what, exactly, the
Examiner is alleging is the 'body' of the communication." Id. Appellant
further argues
Id.
When the communication is in text form, "body" is understood
terminology. Applicant submits that there is no evidence, and it
is certainly not common parlance, to refer to some portion of a
media segment as "the body" of the segment nor would an image
of, for example, a billboard in a video stream ever be called "text
in the body of the communication."
Responding to these arguments, the Examiner refers to numerous
filters disclosed by Begeja. See Ans. 9-10. The Examiner, however, does
not adequately explain how any of these filters pertain to schedulable events.
See id. Further, the Examiner does not adequately explain why one skilled
in the art would apply Begeja's filters to schedulable events. Accordingly,
Appellant's argument is persuasive.
For these reasons, we do not sustain the Examiner's decision rejecting
claim 1 and claims 2, 8, 10, 20, and 21, which depend therefrom, as
unpatentable over Coughlin, Oral, and Begeja.
Rejections IV and V.- Obviousness of
Claims 3 and 19 Based on Coughlin, Oral, Begeja, and Heinley
Claims 14 and 15 Based on Coughlin, Oral Begeja, and Murray
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The rejections of claims 3, 14, 15, and 19 rely on the same insufficient
reasoning as the rejection of claim 1 discussed supra. Accordingly, we do
not sustain the Examiner's decision rejecting these claims for the same
reasons.
DECISION
The Examiner's rejection of claims 1, 10, 14, and 21 under 35 U.S.C.
§ 112, first paragraph is REVERSED.
The Examiner's rejection of claims 10, 14, 15, 19, and 20 under 35
U.S.C. § 101 is AFFIRMED.
The Examiner's rejections of claims 1-3, 8, 10, 14, 15, and 19-21
under 35 U.SC § 103(a) are REVERSED.
We enter a NEW GROUND OF REJECTION for claims 1-3, 8, and
21 under 35 U.S.C. § 101.
FINALITY OF DECISION
This decision contain a new ground of rejection pursuant to 37 C.F.R.
§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
4I.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
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Application 12/831,307
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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; 37 C.F.R. § 4I.50(b)
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