Ex Parte Zabaldo

Patent Trial and Appeal Board

Sep 26, 2017

13435826 (P.T.A.B. Sep. 26, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/435,826 03/30/2012 Jared Zabaldo Zabaldo.301CIP 3194
88172 7590 09/28/2017
Mohr Intellectual Property Law Solutions, P.C.
522 SW 5th Avenue
Suite 1390
Portland, OR 97204-2137
EXAMINER
GARG, YOGESH C
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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):
j oey @ mohriplaw .com
docketing@mohriplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JARED ZABALDO
Appeal 2017-003067
Application 13/435,826
Technology Center 3600
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1—17, 19, and 20, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to “systems for
producing military decoration racks” and “methods for communicating
military decoration rack designs designed by a user,” including
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Application 13/435,826
“communicating to a social media site the generated decoration rack
design.” Spec. 2, 10.1 The methods may include “displaying a design
link configured to direct social media participants to the military decoration
rack production system” and “distributing a rendering of the generated
decoration rack design to social media participants.” Abstract. “[T]he
displayed rendering often defines a computer-generated graphical
representation” but may also “define a textual representation or description.”
Spec. 1 68.
Exemplary Claim
1. A method for communicating military decoration rack
designs designed by a user, comprising:
providing a military decoration rack production system in
data communication with a computer network, the military
decoration rack production system including:
an input interface configured to receive user input;
a storage unit storing instruction data, the
instruction data including an arrangement module
including processor executable instructions to generate a
decoration rack design in response to the user input;
a network communication unit connected to a
network and configured to interface with one or more
computers accessible over the network; and
a processing unit configured to execute the
instruction data;
the processing unit executing the arrangement module
instruction data so as to generate and save a generated
decoration rack design in response to user input from the user;
1 This decision uses the following abbreviations: “Spec.” for the
Specification, filed March 30, 2012; “Final Act.” for the Final Office Action,
mailed June 30, 2015; “Br.” for the Appeal Brief, filed February 29, 2016;
and “Ans.” for the Examiner’s Answer, mailed July 28, 2016.
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Application 13/435,826
the processing unit executing the arrangement module
instruction data so as to amend the saved generated rack design
in response to additional input from the user;
the processing unit executing instruction data so as to
create a rendering of the generated decoration rack design each
time the saved generated rack design is amended;
the processing unit executing instruction data so as to
communicate via the network communication unit to a social
media site the rendering of the generated decoration rack
design, wherein the user has an account on the social media
site; and
displaying the rendering of the generated decoration rack
design on the social media site.
Br. 12 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
Lipsitz et al. (“Lipsitz”) US 2012/0109777 A1 May 3, 2012
U.S. Dep’t of the Army, Wear and Appearance of Army Uniforms and
Insignia, Army Regulation 670-1 (Feb. 3, 2005) (“AR 670-1”)
EzRackBuilder™ - Ultimate Ez Rack Builder Application for Military
Rack Building - All Branches (Aug. 1, 2010), http://web.archive.org/web/
20100801104123/http://www.usamihtarymedals.conErackbuilder.html?
(“EzRackBuilder”)
The Exchange | Exchange Stores | JB Andrews (Aug. 14, 2011), http://
web. archive. org/ web/20110814011042/http ://www. shopmyexchange. com/
ExchangeLocations/JBAndrewsStore.htm (“JB Andrews”)
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Application 13/435,826
The Rejections on Appeal
Claims 1, 19, and 20 stand rejected under 35 U.S.C. § 112 12 as
indefinite for failing to particularly point out and distinctly claim the subject
matter regarded as the invention.2 Final Act. 3^4.
Claims 1—17, 19, and 20 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 6—7.
Claims 1—13, 15, 17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lipsitz and EzRackBuilder. Final Act. 8—18.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Lipsitz, EzRackBuilder, and JB Andrews. Final Act. 19.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Lipsitz, EzRackBuilder, and AR 670-1. Final Act. 20.
ANALYSIS
We have reviewed the rejections of claims 1—17, 19, and 20 in light of
Appellant’s arguments that the Examiner erred. For the reasons explained
below, we disagree with Appellant’s assertions regarding Examiner error.
We concur with the Examiner’s conclusion that the claims recite patent-
ineligible subject matter under § 101. We adopt the Examiner’s findings and
reasoning in the Final Office Action (Final Act. 3—22) and Answer (Ans.
4—13). We add the following to address and emphasize specific findings and
arguments.
2 On September 16, 2012, the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112-29, 125 Stat. 284 (2011), took effect and amended
35 U.S.C. § 112, e.g., to rename § 112’s subsections. Because Appellant
filed Application 13/435,826 before that date, this decision refers to the
pre-AIA version of § 112.
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The § 112 f 2 Rejection of Claims 1, 19, and 20
Appellant does not address the indefiniteness rejection. Br. 8—11.
Consequently, we summarily sustain it. See In re Berger, 279 F.3d 975,
980, 984—85 (Fed. Cir. 2002) (holding that the Board did not err in
sustaining an indefmiteness rejection when the appellant failed to contest the
rejection); see also Manual of Patent Examining Procedure (.MPEP)
§ 1205.02 (9th ed. Rev. 07.2015 Nov. 2015) (“If a ground of rejection stated
by the examiner is not addressed in the appellant’s brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner’s answer.”).
The § 103(a) Rejections of Claims 1—17, 19, and 20
“Appellant chooses not to address the[] grounds of rejection [under
§ 103(a)] at this juncture.” Br. 11. Because Appellant does not contest the
§ 103(a) rejections, we summarily sustain them. See Hyatt v. Dudas,
551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that “[w]hen the appellant
fails to contest a ground of rejection to the Board,... the Board may treat
any argument with respect to that ground of rejection as waived”); see also
MPEP § 1205.02 (explaining that “[a]n appellant’s brief must present
arguments responsive to every ground of rejection stated by the examiner in
the Office action from which the appeal has been taken (as modified by any
advisory action and/or pre-appeal brief conference decision)”).
The § 101 Rejection of Claims 1—17, 19, and 20
Introduction
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
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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. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme
Court explained that § 101 “contains an important implicit exception” for
laws of nature, natural phenomena, and abstract ideas. See Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter:
First, “determine whether the claims at issue are directed to” a patent-
ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If so,
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements” add enough to
transform the “nature of the claim” into “significantly more” than a patent-
ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016).
Step one in the Mayo!Alice framework involves looking at the “focus”
of the claims at issue and their “character as a whole.” Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two
involves the search for an “inventive concept.” Alice, 134 S. Ct. at 2355;
Elec. Power Grp., 830 F.3d at 1353. An “inventive concept” requires more
than “well-understood, routine, conventional activity already engaged in” by
the relevant community. RapidLitig. Mgmt. Ltd. v. CellzDirect, Inc.,
827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80).
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Application 13/435,826
Mayo/Alice Step One
Appellant contends that independent claims 1,19, and 20 “are
directed to varying perspectives of substantially identical subject matter.”
Br. 8. Appellant asserts that the Examiner erred in rejecting claims 1,19,
and 20 because: (1) the Examiner incorrectly categorized the claims “as
directed towards the abstract concept of a method of organizing human
activity”; (2) the claims “are fundamentally directed to a method by which a
computer system communicates across a network with another system to
exchange content generated and rendered in response to user input, as
controlled by a set of instructions and program modules”; and (3) allowing
the claims “in no way risks granting Appellant a monopoly on the abstract
concept of communicating products.” Id. at 9. Citing the “July 2015
Update: Subject Matter Eligibility” (“2015 Update”), Appellant asserts that
the cases discussed in the 2015 Update that concern social activities “most
closely analogize] to the instant claims.” Br. 9—10. Appellant further
asserts that the social-activities cases include several “directed to business
methods” that “are essentially business practices that have long predated the
computer.” Id. at 10. Appellant contrasts the claims in those business-
method cases to “the instant claims . . . directed to methods that allow for
design and visualization of a product that does not exist, and ultimately the
submission of renderings of that project to social media.” Id.
Appellant’s arguments do not persuade us of Examiner error. We
agree with the Examiner’s reasoning that the claims are directed to “the
management of a transaction between people and managing human
behavior” because they encompass “manag[ing] the process of creating a
military rack decoration design” and “communicating a rendering of a
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generated decoration rack design performed by a computer.” Ans. 7—9; see
Final Act. 7, 21. In claim 1, for example, the “providing” limitation and the
first three “processing unit executing” limitations merely automate steps and
functions in the manual process of purchasing a military decoration rack.
See Spec. Tflf 2—5, 7, 24—27; see also Final Act. 21—22; Ans. 4—6, 12. The
“mere automation of manual processes using generic computers does not
constitute a patentable improvement in computer technology.” Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
Further, a human using pencil and paper could accomplish those steps and
functions. See Ans. 12. Consequently, the limitations constitute an abstract
idea. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1371—73 (Fed. Cir. 2011). The last “processing unit executing” limitation
and the “displaying” limitation concern the abstract idea of communicating
information for display elsewhere. But adding one abstract idea to another
abstract idea does not render a claim non-abstract. RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Also, consistent with the Examiner’s reasoning (Final Act. 7, 22;
Ans. 5—6, 12), the Federal Circuit has ruled that claims covering the receipt,
analysis, and display of data were directed to abstract ideas. See, e.g., Credit
Acceptance, 859 F.3d at 1047, 1054—56 & n.6; Elec. Power Grp., 830 F.3d
at 1351-54; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1351-55
(Fed. Cir. 2014); SmartGene, Inc. v. Advanced Biological Labs., SA,
555 F. App’x 950, 951-52, 95A-55 (Fed. Cir. 2014).
Appellant’s preemption argument overlooks the explanation in the
2015 Update that “questions of preemption are inherent in the two-part
framework from Alice Corp. and Mayo” and “are resolved by using this
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framework” to determine patent-eligible subject matter. 2015 Update 8; see
Ans. 7. For claims covering a patent-ineligible concept, preemption
concerns “are fully addressed and made moot” by an analysis under the
Mayo/Alice framework. Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), Appellant “observes that methods involving commerce on
the Internet are not per se abstract and ineligible.” Br. 10. But Appellant
misapplies DDR Holdings. There, the Federal Circuit decided that certain
claims satisfied Mayo!Alice step two because “the claimed solution
amounted] to an inventive concept for resolving [a] particular Internet-
centric problem.” DDR Holdings, 773 F.3d at 1257, 1259.
Mayo!Alice Step Two
Appellant asserts that the Examiner erred in rejecting claims 1,19,
and 20 because the claims “add significantly more to the abstract concept so
that when considered both individually and ‘as an ordered combination’” the
additional elements transform the nature of the claims into patent-eligible
subject matter. Br. 10. In particular, Appellant contends that the claims
“cannot be practiced without the implementation of a series of computers
that are internetworked” and require “specific [computer] functionality such
as providing ‘a rendering of the generated decoration rack design each time
the saved generated rack design is amended,’ and sending ‘via the network
communication unit to a network accessible social media site the rendering
of the generated decoration rack design.’” Br. 10. In addition, Appellant
contends that the “claims go far beyond reciting the idea of communicating a
product and then instructing the implementer to just ‘apply it. ’” Id.
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Appellant’s arguments do not persuade us of Examiner error because
the Examiner determines that (1) the claims recite additional elements “in a
generic manner” and “at a high level of generality” and (2) the additional
elements “operate using well-understood, routine and conventional
functions.” Ans. 10—12 (emphasis omitted); see Final Act. 7, 22. For
instance, the Examiner correctly identifies claim l’s additional elements as
an “input interface,” a “storage unit,” a “network communication unit,” a
“processing unit,” and a “social media site.” Ans. 11. The Examiner
explains that those elements constitute generic computer components that
perform “generic computer functions (i.e., generating and saving data,
changing data, creating data, communicating data and displaying data) that
are well-understood, routine and conventional activities previously known to
the industry.” Final Act. 7, 22. The Examiner properly reasons that because
the “claims recite generic computer functions,” the additional elements “fail
to amount to significantly more than” a patent-ineligible concept “when
considered both individually and in combination.” Ans. 12—13; see Final
Act. 7, 22.
“[N]ot every claim that recites concrete, tangible components escapes
the reach of the abstract-idea inquiry.” In re TLI Commc ’ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016). Implementing an abstract idea
using conventional components “add[s] nothing of substance” and,
therefore, does not transform the nature of the claim into a patent-eligible
invention. See Alice, 134 S. Ct. at 2360; Mayo, 566 U.S. at 84—85 (citing
Gottschalkv. Benson, 409 U.S. 63, 64—65, 71 (1972)). In Alice, the
Supreme Court rejected the notion that claims reciting specific hardware
necessarily satisfy § 101. 134 S. Ct. at 2360.
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Various courts have held that claims reciting concrete, tangible
components did not pass muster under § 101. As an example, in TLI
Communications, the Federal Circuit decided that claims reciting a “digital
pick up unit” for “recording images” (a digital camera) and a “server” for
“storing the digital images” were directed to an abstract idea and failed to
satisfy § 101. 823 F.3d at 610-13. As another example, in RaceTech, LLC
v. Kentucky Downs, LLC, 167 F. Supp. 3d 853, 860—61, 863—64, 867—68
(W.D. Ky. 2016), aff’d, 676 F. App’x 1009 (Fed. Cir. 2017), the district
court ruled that claims requiring a “video server,” a “game server,”
a “gateway,” and “game terminals” were directed to an abstract idea and
failed to satisfy § 101. Asa further example, in Planet Bingo, LLC v. VKGS,
LLC, 961 F. Supp. 2d 840, 850-51, 853, 857 (W.D. Mich. 2013), aff’d,
576 F. App’x 1005 (Fed. Cir. 2014), the district court ruled that claims
requiring a “computer,” an “input device,” and an “output device” were
directed to an abstract idea and failed to satisfy § 101. See also CertusView
Techs., LLC v. S & NLocating Servs., LLC, 111 F. Supp. 3d 688, 699—700,
724—29 (E.D. Va. 2015) (invalidating under § 101 claims reciting an
“apparatus” comprising a “communication interface,” a “display device,”
a “user input device,” a “memory,” and a “processing unit”), aff’d, 2017 WL
3443246,___ F. App’x_____ (Fed. Cir. Aug. 11, 2017).
Appellant contends that the claims here “enhance and improve upon
the concept of communicating a military decoration rack design to others.”
Br. 10. As the Examiner explains, however, the “supposed benefits are not
recited in the claims at issue.” Ans. 9. In Versata Development Group, Inc.
v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir. 2015), the Federal Circuit
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rejected a similar argument regarding alleged benefits because the “supposed
benefits [we]re not recited in the claims at issue.” Id. at 1335.
Appellant suggests that the claims in DDR Holdings satisfied § 101
because they addressed “interactions between computers on the Internet.”
Br. 10—11. But that suggestion oversimplifies the reasoning in DDR
Holdings. There, the Federal Circuit explained that the claims specified
“how interactions with the Internet are manipulated to yield a desired result
. . . that overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.” 773 F.3d at 1258. According to the
court, the claims recited a technological solution that overcame a challenge
unique to the Internet. Id. at 1257—59.
In contrast, the claims here contain no similar inventive concept. As
the Examiner properly reasons, the claims “merely make use of the
computer as an obvious mechanism to achieve” a desired result and “address
a commercial challenge . . . that is not particular to the Internet.” Ans. 9—10.
Appellant asserts that the Supreme Court in Diamond v. Diehr “found
that the computer controlled an industrial process was enough” to impart
patent eligibility due to the transformation and reduction of an article to a
different state or thing. Br. 11. Appellant then contends that the claims here
allow “a user to design a military decoration rack in conformance with
regulations that are subject to change, visualize the end product as it
changes, and then share the design on social media, thus effecting a
transformation in data . . . .” Id. In Diamond v. Diehr, however, the “claims
involve[d] the transformation of. . . raw, uncured synthetic rubber, into a
different state or thing,” namely, cured synthetic rubber, and they
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“describe[d] in detail a step-by-step method for accomplishing” that
transformation. Diamond, 450 U.S. at 184.
In contrast, the claims here lack steps producing an analogous change
in a physical object. Further, the Federal Circuit has ruled that claims
covering the transformation of information in one form (“a functional
description of a logic circuit”) into another form (“a hardware component
description of the logic circuit”) lacked an inventive concept under
Mayo!Alice step two. See Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1139, 1150—52 (Fed. Cir. 2016); see also Credit Acceptance,
859 F.3d at 1047, 1054—56 & n.6; RecogniCorp, 855 F.3d at 1324—25,
1327-28; Elec. Power Grp., 830 F.3d at 1351-54.
Summary for Independent Claims 1,19, and 20
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claims 1,19, and 20 under
§101. Hence, we sustain the rejection of claims 1,19, and 20.
Dependent Claims 2-17
Claims 2—17 depend from claim 1. Br. 13—14 (Claims App.).
Appellant does not argue patentability separately for claims 2—17. Br. 8—11.
Because Appellant does not argue the claims separately, we sustain the
§101 rejection of claims 2—17 for the same reasons as claim 1. See
37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision rejecting claims 1—17, 19, and 20.
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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). See
37 C.F.R. §41.50(f).
AFFIRMED
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