14088309 - (D) (P.T.A.B. Jul. 31, 2019)

Luke Keiser

Patent Trials and Appeals BoardJul 31, 2019

14088309 - (D) (P.T.A.B. Jul. 31, 2019)

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. 14/088,309 11/22/2013 Luke Keiser SEC-P133US 3680 74243 7590 07/31/2019 Fogarty LLP P.O. Box 703695 Dallas, TX 75370-3695 EXAMINER OYEBISI, OJO O ART UNIT PAPER NUMBER 3697 NOTIFICATION DATE DELIVERY MODE 07/31/2019 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): docketing@fogartyip.com pair@fogartyip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LUKE KEISER1 ___________ Appeal 2018-007335 Application 14/088,309 Technology Center 3600 ____________ Before CARL W. WHITEHEAD JR., JOSEPH P. LENTIVECH and SCOTT RAEVSKY, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant is appealing the final rejection of claims 1–4, 6–12, and 21– 29 under 35 U.S.C. § 134(a). Appeal Brief 5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies Securus Technologies, Inc., as the real party in interest. Appeal Brief 3. Appeal 2018-007335 Application 14/088,309 2 Introduction The invention is directed to “systems and methods for cloud-based storage and retrieval of communication records.” Specification ¶ 1. Representative Claim 1. A computer system having a processor and a memory device coupled to the processor, the memory device having program instructions stored thereon that, upon execution by the processor, configure the computer system to: receive, before a visitation time, an electronic request to schedule a remote visitation session, to occur at the visitation time, between a resident of a controlled-environment facility and a non-resident of the controlled-environment facility, wherein the electronic request includes an identification of an event to occur simultaneously with the remote visitation session; schedule the remote visitation session; initiate the remote visitation session between the resident and the non-resident at the visitation time; provide a video of the event concurrently with the remote visitation session to the resident and to the non-resident; and store an electronic record of the remote visitation session in a cloud-based storage system, wherein the electronic record is associated with the event, wherein the cloud-based storage system includes a plurality of data storage accounts, wherein each of the plurality of data storage accounts corresponds to a resident or a non-resident of the controlled-environment facility, and wherein the electronic record is stored in one of the plurality of data storage accounts associated with the resident or the non-resident. Appeal 2018-007335 Application 14/088,309 3 Rejection on Appeal2 Claims 1–4, 6–12 and 21–29 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to patent ineligible subject matter. Final Action 2–5. ANALYSIS Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed December 18, 2017), the Reply Brief (filed July 10, 2018), the Final Action (mailed June 15, 2017) and the Answer (mailed May 10, 2018), for the respective details. 35 U.S.C. § 101 Rejection The Examiner determines, “[c]laims 1-4, 6-12 and 21-29 are rejected under 35 U.S.C. [§] 101 because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.” Final Action 3; see Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (describing the two-step framework “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.”). After the mailing of the Answer and the filing of the Briefs in this case, the USPTO published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. 2 The Examiner withdrawn the 35 U.S.C § 102 rejection. See Advisory Action mailed September 20, 2017. Appeal 2018-007335 Application 14/088,309 4 Reg. 50 (January 7, 2019) (hereinafter “Memorandum”). Under the Memorandum, the Office first looks to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., (a) mathematical concepts, (b) certain methods of organizing human activity such as a fundamental economic principles and practice, commercial or legal interactions, managing personal behavior, relationships and interpersonal interactions, (c) mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed. 2018). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Memorandum. We are not persuaded the Examiner’s rejection is in error. Unless otherwise indicated, we adopt the Examiner’s findings and conclusions as our own, and we add the following primarily for emphasis and clarification with respect to the Memorandum. Appeal 2018-007335 Application 14/088,309 5 Alice/Mayo—Step 1 (Abstract Idea) Step 2A–Prongs 1 and 2 identified in the Revised Guidance Step 2A, Prong One Appellant contends: The standing rejection does not give any consideration to the recited event that is specified as being simultaneous with the requested visitation session, nor the recited providing of a video of this event as part of the requested visitation session. Even if the summary on which the rejection is based, “cloud-based storing and retrieving of communication records,” is an abstract idea, this summary does not accurately characterize the [c]laims. Appeal Brief 7. Appellant’s arguments are not persuasive. Instead, we agree with the Examiner’s determination that the claims are directed to an abstract idea. Final Action 3 (“Cloud-based storing and retrieving of communication records is a method of organizing human activities.”). The Specification discloses: [A] method may include enabling, via one or more computers, a remote visitation session between a resident of a controlled- environment facility and a non-resident of the controlled- environment facility . . . . For example, the controlled-environment facility may be a correctional facility and the resident may be a prisoner, inmate, detainee, or arrestee. Also, the remote visitation session may include a video conference between the resident and the non- resident, and the electronic record may include a date of the remote visitation session, a time of the remote visitation session, a duration of the remote visitation session, a video recording of the remote visitation session, an audio recording of the remote visitation session, and/or a transcript of the remote visitation session. Specification ¶¶ 5, 6. Appeal 2018-007335 Application 14/088,309 6 Claim 1 recites, “receive, before a visitation time, an electronic request to schedule a remote visitation session, to occur at the visitation time, between a resident of a controlled-environment facility and a non- resident of the controlled-environment facility, wherein the electronic request includes an identification of an event to occur simultaneously with the remote visitation session;” “schedule the remote visitation session” and “initiate the remote visitation session between the resident and the non- resident at the visitation time.” These steps recite managing personal behavior, relationships and/or interactions between people (including social activities); thus, the claim recites “certain methods of organizing human activity,” an abstract idea. See Memorandum, Section I (Groupings of Abstract Ideas); see also Specification ¶¶ 37, 66, 70. Our reviewing courts have found claims to be directed to abstract ideas when they recited similar subject matter.3 Therefore, we conclude the claims recite an abstract idea pursuant to Step 2A, Prong One of the guidance. See Memorandum, Section III(A)(1) (Prong One: Evaluate Whether the Claim Recites a Judicial Exception). 3 “Interval Licensing, 896 F.3d at 1344–45 (concluding that ‘[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,’ observing that the district court ‘pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.’).” Memorandum 52 n.13 (Section III(A)(1)(b)). Appeal 2018-007335 Application 14/088,309 7 Step 2A, Prong Two Under Prong Two of the Revised Guidance, we must determine “whether the claim as a whole integrates the recited judicial exception into a practical application of the exception” it is noted that a “claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Memorandum 54 (Section III(A)(2)). Appellant argues: The standing rejection similarly fails to account for specific elements of the [c]laims. The [c]laims do not recite a process that could be accurately characterized as no more than “cloud-based storing and retrieving of communication records.” The [c]laims recite a system for providing visitation sessions in a controlled-environment facility where the visitation sessions include a concurrent video of a requested event and then storing a recording of the visitation in a cloud-based storage system. Like MCRO, the standing rejection fails to account for specific requirements set forth in [c]laim 1 such that the stated abstract idea is an improper oversimplification of the [c]laims. Appeal Brief 8–9. In McRO, the Federal Circuit concluded that the claim, when considered as a whole, was directed to a “technological improvement over the existing, manual 3-D animation techniques” through the “use [of] limited rules . . . specifically designed to achieve an improved technological result in conventional industry practice.” McRO Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Appeal 2018-007335 Application 14/088,309 8 Specifically, the Federal Circuit found that the claimed rules allow computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could only be produced by human animators; and the rules are limiting because they define morph weight sets as a function of phoneme sub-sequences. McRO, 837 F.3d at 1313 (internal citations omitted). We find no evidence of record here that the present situation is like the one in McRO where computers were unable to make certain subjective determinations, i.e., regarding morph weight and phoneme timings, which could only be made prior to the claimed invention by human animators. The Background section of the McRO ’576 patent includes a description of the admitted prior art method and the shortcomings associated with that prior method. See McRO, 837 F.3d at 1303–06. There is no comparable discussion in Appellant’s Specification or elsewhere of record. Subsequently, we detect no additional element (or combination of elements) recited in Appellant’s representative claim 1 that integrates the judicial exception into a practical application. See Memorandum, Section III(A)(2). For example, Appellant’s claimed additional elements (e.g., processors, memory device and cloud-based storage system) do not: (1) improve the functioning of a computer or other technology; (2) is not applied with any particular machine (except for a generic processor); (3) does not effect a transformation of a particular article to a different state; and (4) is not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h); see also Memorandum Appeal 2018-007335 Application 14/088,309 9 55 n.25, n.27, n.28, n.29, n.30, n.31, n.32; see also Alice, 573 U.S. at 226 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims”). Accordingly, we determine the claim does not integrate the recited judicial exception into a practical application. See Memorandum, Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application). Alice/Mayo—Step 2 (Inventive Concept) Step 2B identified in the Revised Guidance Step 2B Next, we determine whether the claim includes additional elements that provide significantly more than the recited judicial exception, thereby providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73). We find that claim 1 does not include a specific limitation or a combination of elements that amounts to significantly more than the judicial exception itself. See Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept); see also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (“[T]he ‘inventive concept’ cannot be the abstract idea itself”). Other than the abstract idea itself, the remaining claim elements only recite generic computer components that are well-understood, routine, and conventional. See Final Action 5 (“[T]here are no meaningful limitations in the claim that transform the judicial exception Appeal 2018-007335 Application 14/088,309 10 into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.”); see also Alice, 573 U.S. at 226. Accordingly, we conclude claims 1–4, 6–12, and 21–29 are directed to the abstract idea of “certain methods of organizing human activity”4 such as managing personal behavior, relationships and/or interactions between people (including social activities); and further conclude, the claims do not recite limitations that amount to significantly more than the abstract idea itself. We sustain the Examiner’s § 101 rejection of claims 1–4, 6–12, and 21–29. DECISION The Examiner’s patent ineligible subject matter rejection of claims 1– 4, 6–12, and 21–29 is sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(v). AFFIRMED 4 Memorandum, Section I (Groupings of Abstract Ideas).