14498703 - (R) (P.T.A.B. Jan. 30, 2020)

Hyung-Il Ahn et al.

Patent Trials and Appeals BoardJan 30, 2020

14498703 - (R) (P.T.A.B. Jan. 30, 2020)

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. 14/498,703 09/26/2014 Hyung-il Ahn ARC920140046US1 4726 75739 7590 01/30/2020 RYAN, MASON & LEWIS, LLP 2425 Post Road Suite 204 Southport, CT 06890 EXAMINER ISMAIL, MAHMOUD S ART UNIT PAPER NUMBER 3662 NOTIFICATION DATE DELIVERY MODE 01/30/2020 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): CTOFFICE@RML-LAW.COM kmm@rml-law.com mjc@rml-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HYUNG-IL AHN, MATTHEW DENESUK, AXEL HOCHSTEIN, and YING TAT LEUNG Appeal 2018-001954 Application 14/498,703 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 request rehearing of the decision entered November 18, 2019 (“Decision”), which affirmed the Examiner’s rejection of 1–3, 5–8, 10–13, 15–18, and 20–22. Appellant contends that our Decision “is inconsistent with the USPTO Step 2A, Prong 2 rubric and interpretation.” Req. Reh’g 2–3. As discussed below, we find no point of law or fact that we overlooked or misapprehended in arriving at our Decision such that the overall outcome of the Decision should be changed. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as International Business Machines Corporation. Appeal Br. 1. Appeal 2018-001954 Application 14/498,703 2 DISCUSSION Appellant argues that our Decision misapplies the United States Patent and Trademark Office’s (USPTO) revised guidance on the application of the framework set forth in Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014) and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, (2012). USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Specifically, Appellant asserts that our analysis under Step 2A – Prong Two in the Decision was in error because we failed to consider the additional elements of the claim in combination with the judicial exception in determining that the claim did not integrate the judicial exception into a practical application. Req. Reh’g 2–4 (citing USPTO’s “October 2019 Update: Subject Matter Eligibility,” 84 Fed. Reg. 55,942 (Oct. 18, 2019)). In the Decision under Step 2A – Prong One, we determined that the limitations of claim 1 recite steps that are either a mental process or a mathematical calculation, which are abstract ideas. Decision at 6–7. Under Step 2A – Prong Two, we determined that, beyond the judicial exceptions recited, claim 1 includes only a generic link between the limitations provided and the technological environments related to vehicular components and a computing device. See id. at 8–9. Our determination under Prong Two did not address the additional elements of the claim in a vacuum. Rather, our determination considered the claim as a whole where we determined that the claimed “vehicular components” and “computer device” merely linked the abstract ideas present in each of steps (a)–(g) of the claim to particular technological environments. Id. Appeal 2018-001954 Application 14/498,703 3 We acknowledge that Appellant argues the claim limitations include “significant specificity” and “the amended independent claims go far beyond generally linking the use of a judicial exception to a particular technological environment.” Req. Reh’g 4. However, Appellant made similar arguments in their initial brief (see Appeal Br. 9–10), which we also found unpersuasive in our Decision. Decision 9. Specifically, there, as here, Appellant argues that the claim was not considered as a whole by the Examiner, or us, and yet, Appellant merely lists the claim limitations without specifically indicating how the claims include more than a general link between the abstract idea and a particular technological environment. Simply asserting that the claims include “significant specificity” is not sufficient. CONCLUSION We have carefully reviewed the original Decision in light of Appellant’s request, but we find no point of law or fact that we overlooked or misapprehended in arriving at our decision. Therefore, Appellant’s request for rehearing is denied. Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Basis Granted Denied 1–3, 5–8, 10– 13, 15–18, 20–22 101 Eligibility 1–3, 5–8, 10–13, 15–18, 20–22 Appeal 2018-001954 Application 14/498,703 4 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Basis Affirmed Reversed 1–3, 5–8, 10–13, 15– 18, 20–22 101 Eligibility 1–3, 5–8, 10–13, 15– 18, 20–22 REHEARING DENIED