Microsoft Technology Licensing LLC

Patent Trials and Appeals Board

Feb 20, 2020

14294028 - (D) (P.T.A.B. Feb. 20, 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.
14/294,028 06/02/2014 Willis Lang 341665-US-NP (M15.078) 1083
148708 7590 02/20/2020
Buckley, Maschoff & Talwalkar LLC
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
HOANG, HAU HAI
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
02/20/2020 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):
microsoft@bmtpatent.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIS LANG, RIMMA V. NEHME, ERIC R. ROBINSON, and
JEFFREY F. NAUGHTON1
____________________

Appeal 2018-006412
Application 14/294,028
Technology Center 2100
____________________

Before ROBERT E. NAPPI, LARRY J. HUME, and
STEPHEN E. BELISLE, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4, 6, 10, 17, 21 through 24, and 27 through 37. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Microsoft Technology Licensing, LLC is
the real party in interest. Appeal Br. 3.
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INVENTION
The invention relates generally to a method to classify partial results
of a search query in accordance with partial results taxonomy and display
the results to a user. Abstract. Claim 1 is reproduced below.
1. A method of fulfilling a query over a database on
behalf of a user, the method involving a device having a
processor and comprising:
executing, by the processor, instructions that cause the
device to:
process the query over the database to generate a
result set;
determine that the result set generated by the
database resulted from an incomplete processing of the
query over the database, wherein the incomplete
processing comprises a failure to process the query over
all data of the database that is involved in the query;
perform a classification of the incomplete processing of
the query over the database as at least one of:
an incomplete classification indicating that the
result set produced by the incomplete processing may be
missing at least one record from a complete result set
produced by a complete processing of the query over all
data the database that is involved in the query, and
a phantom classification indicating that the result
set produced by the incomplete processing may include
at least one record that is not included in the complete
result set produced by the complete processing of the
query; and
present to the user:
the result set; and
a description of the classification of the incomplete
processing of the query over the database that generated the
result set.
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EXAMINER’S REJECTIONS2
The Examiner rejected claims 36 and 37 under 35 U.S.C. § 112(a) for
failing to comply with the written description requirement. Final Act. 2–4.
The Examiner rejected claim 17 under 35 U.S.C. § 101 for being
directed to non-statutory subject matter. Final Act. 4–7.
The Examiner rejected claims 1, 4, 6, 10, 17, 21 through 24, and 27
through 37 under 35 U.S.C. § 101 for being directed to patent-ineligible
subject matter. Final Act. 8–27.
The Examiner rejected claims 1, 4, 10, 17, 24, 36, and 37 under 35
U.S.C. § 102(a)(1) as anticipated by Barsness (US 2013/0262436 A1; pub.
Oct. 3, 2013). Final Act. 27–43.
The Examiner rejected claims 6, 21 through 23, and 27 under 35
U.S.C. § 103 as being unpatentable over Barsness and Murthy (US
2014/0195558 A1, pub. July 10, 2014). Final Act. 43–48.
The Examiner rejected claims 28 through 31 under 35 U.S.C. § 103 as
being unpatentable over Barsness and Kon (US 5,842,202, iss.
Nov. 24, 1998). Final Act. 48–50.
The Examiner rejected claims 32 through 34 under 35 U.S.C. § 103 as
being unpatentable over Barsness, Kon, and Murthy. Final Act. 50–53.
The Examiner rejected claim 35 under 35 U.S.C. § 103 as being
unpatentable over Barsness, Murthy, and Wang (US 8,429,162 B1, iss.
Apr. 23, 2013). Final Act. 53–55.

2 Throughout this Decision we refer to the Appeal Brief filed February 27,
2018 (“Appeal Br.”); Reply Brief filed June 5, 2018 (“Reply Br.”); Final
Office Action mailed July 26, 2017 (“Final Act.”); and the Examiner’s
Answer mailed April 5, 2018 (“Ans.”).
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35 U.S.C. § 112 Rejection
Appellant acknowledges the Examiner’s rejection of claims 36 and 37
under 35 U.S.C. § 112(a) for failing to comply with the written description
requirement, but does not present any arguments directed to this rejection.
Appeal Br. 5, 27. As such, there are no issues for us to decide with respect
to this rejection and we sustain it pro forma.
35 U.S.C. § 101 Rejection
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of all the claims under 35 U.S.C. § 101. Patent
eligibility under § 101 is a question of law that may contain underlying
issues of fact. “We review the [Examiner’s] ultimate conclusion on patent
eligibility de novo.” Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335,
1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1365
(Fed. Cir. 2018)); see also SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d
1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn to patent-eligible
subject matter is an issue of law that we review de novo.”).
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, 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.
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There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
The United States Patent and Trademark Office (“USPTO”) published
revised guidance on the application of § 101. USPTO’s 2019 Revised Patent
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Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”). Under that guidance, we first determine whether the
claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we 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.
DISCUSSION
Initially, we note that the Examiner has provided two rationales for
rejecting claim 17 under 35 U.S.C. § 101. In the first rationale, the
Examiner finds that the claim, to a computer readable storage hardware
device, is not directed to statutory subject matter. Final Act. 4–6. The
Examiner reasons that as the Specification does not define computer
readable storage hardware, it is reasonable to interpret the claim as directed
to transitory matter (e.g., a signal). Id.
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We disagree with the Examiner’s claim interpretation. Appellant’s
Specification cites several hardware devices that can be computer storage
media and specifically states “computer storage media excludes modulated
data signals or the like that merely carry data rather than store data.” See
Spec. ¶ 114. Appellant’s Specification specifically identifies
“communication media” as data in modulated signals (i.e., transitory matter).
Thus, we do not consider the Examiner’s interpretation of claim 17 as being
directed to transitory subject matter to be reasonable, and we do not sustain
the Examiner’s rejection of claim 17 under 35 U.S.C. § 101 based upon this
rationale.
The Judicial Exception
The Examiner also determines all the pending claims are not patent
eligible because they are directed to a judicial exception, abstract idea,
without reciting significantly more. Final Act. 8–12. Specifically, the
Examiner determines the claims are directed to collecting data, analyzing the
data, and displaying the results of the collection and analysis of data
information, which is similar to concepts found abstract in CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011), and Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
Appellant argues the claims do not recite concepts similar to those at
issue in CyberSource and Electric Power Group. Appeal Br. 28–30.
Appellant states that the subject matter in CyberSource, credit card
processing, is irrelevant to the claimed technique involving evaluating
impact of an incomplete query processing. Appeal Br. 28, 31. Similarly,
Appellant states that the subject matter in Electric Power Group., visualizing
data concerning an electric power grid, is irrelevant to the claimed technique
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involving evaluating impact of an incomplete query processing. Appeal
Br. 29, 32.
We are not persuaded of error by Appellant’s arguments and concur
with the Examiner that representative claim 1 sets forth an abstract concept
of collecting information, analyzing it, and displaying the results (a mental
process).
Claim 1 recites a method of using a device having a processor to:
process a query to generate results (a data gathering or observation step);
determine that the results resulted from an incomplete processing (an
analysis step); perform a classification of the incomplete processing as at
least one of an incomplete classification and a phantom classification (an
analysis step); and presenting to the user the result set and a description of
the classification (a step of communicating the result of the analysis). We
consider these limitations to recite an abstract mental process. These steps
can be performed in the human mind as they are merely gathering data,
analyzing the data, and communicating the results, a concept similar to that
at issue in Electric Power Group. The claims at issue in Electric Power
Group recited several steps of receiving data from various sources, detecting
and analyzing the data, and displaying the data. Elec. Power Grp., 830 F.3d
at 1351–52. Thus, we concur with the Examiner that the claims recite a
concept of gathering data, analyzing the data, and displaying/communicating
the data, which is similar to concepts found abstract by the courts such as in
Electric Power Group. See also Classen Immunotherapies, Inc. v. Biogen
IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (claim to collecting and
comparing known information determined to be steps that can be practically
performed in the human mind); In re TLI Commc’ns LLC Patent Litig.,
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823 F.3d 607, 613 (Fed. Cir. 2016) (finding claims the claims to classifying
and storing digital images as an abstract as reciting an abstract idea) Content
Extraction & 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. Indeed, humans have always
performed these functions.”); October 2019 Update: Subject Matter
Eligibility 7 (discussing Electric Power Group and mental processes),
available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf. The fact that the data comes from a database
does not preclude a determination that the claim recites a mental process.
See, e.g., Voter Verified, Inc. v. Election Sys. & Software LLC, 887 F.3d
1376, 1385 (Fed. Cir. 2018) (explaining that the claimed steps of voting,
verifying the vote, and submitting the vote for tabulation are human
cognitive actions that humans have performed for hundreds of years despite
the fact that the steps in the claim were performed on a computer).
Thus, we are not persuaded that the Examiner erred in determining the
claim recites an abstract idea. As detailed above, the claim recites numerous
data gathering, analysis, and communication steps and, as such, recites an
abstract idea which is not unlike the abstract idea at issue in Electric Power
Group. Therefore, we concur with the Examiner and consider representative
claim 1 recites an abstract concept.
Integration of the Judicial Exception into a Practical Application
The Examiner finds the claims do not recite an improvement to the
functioning of the computer itself or the querying of a database. Final
Act. 12–13.
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Appellant argues the claims are directed to a technical problem, i.e.,
the impact of incomplete query processing on data. Appeal Br. 32 Further,
Appellant argues that claims are similar to those at issue in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) as:
the presently claimed techniques involve an improvement in
computer functionality: an analysis of the manner in which an
incomplete result set arising from a partially processed query
may vary from the complete result set if the query had been
completely processed.
Appeal Br. 33.
We are not persuaded of error by Appellant’s arguments. As
discussed above, we concur with the Examiner that representative claim 1
recites an abstract idea. Further, we do not consider that the claim integrates
the abstract idea into a practical application because we do not find that the
claim recites an improvement to the functioning of the computer or other
technology or otherwise tied to technology.
We are not persuaded of error by Appellant’s argument, which relies
upon Enfish, and which asserts the claim is directed to improving computer
technology or other technology. The Enfish court found “the plain focus of
the claims is on an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity.” Enfish, 822 F.3d at 1336. Here, we do not find that Appellant’s
claims improve the function of the computer, rather they merely describe an
improvement to informing the user of an incomplete result. See Spec. ¶ 22.
Further, while the claim recites the incomplete processing being classified is
based upon a failure to process a query over all data of a database, the
problem of incomplete data is not unique to computer databases, it applies
equally to queries implemented in any data source (such as a search in a
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library or a patent search in a search room). Similarly, the claims are not
like those at issue in DDR where the claimed invention created a hybrid web
page that combined advantageous elements from two web pages, bypassing
the expected manner of sending a visitor to another party’s web page, in
order to solve the internet-centric problem of retaining website visitors.
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed.
Cir. 2014). Thus, the representative claim, when interpreted in light of the
Specification, merely recites use of a computer as a tool to implement a
concept of collecting information, analyzing it, and displaying the results, a
mental process (an abstract idea). See, e.g., RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Unlike Enfish, [the claim] does
not claim a software method that improves the functioning of a computer . . .
[but] claims a ‘process that qualifies as an ‘abstract idea’ for which
computers are invoked merely as a tool.’”) (citation omitted).
As such, we are not persuaded of error in the Examiner’s rejection by
Appellant’s argument that the claim improves a computer technology or
other technology, and we do not consider representative claim 1 to recite a
practical application of the abstract concept.
Significantly More than the Abstract Idea
Under the Memorandum, only if a claim: (1) recites a judicial
exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
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well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Appellant argues that Berkheimer requires the Examiner to show that
the claim elements are not well understood, routine, and conventional which
the Examiner has not done. Reply Br. 21–22 (citing Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018)). Appellant states:
It is submitted that the portions of Examiner’s Answer
characterizing various portions of claims 1, 10, and 17 as “well-
understood, routine, and conventional” obviously fails to satisfy
the requirements of Berkheimer v. HP Inc., as such statements
are supported only by a conclusory statement based on no
evidentiary showing. As such, at least these portions of the
§ 101 rejection are materially deficient.
Reply Br. 22.
We are not persuaded of error by these arguments. Initially, we note
the Examiner did cite to an article by Philippe Bonnet and Anthony
Tomasic, as evidence that it is well known to have a database produce a
partial answer to a query. Final Act. 9–10, 13. Appellant has not addressed
this evidence-based finding by the Examiner. Further, we note the
additional elements of a processor and database are described as
conventional processes in Appellant’s Specification. Spec. ¶ 21. See also
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 1334 (Fed.
Cir. 2015) (finding that the activities of storing and retrieving information in
memory, and sorting information to be well-understood, routine,
conventional activity). As such, the recitation of processor, to query a
database and determine partial (incomplete) results are recitations of well-
understood, routine, conventional activities.
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In summary, Appellant’s arguments have not persuaded us of error in
the Examiner’s determination that representative claim 1 recites an abstract
idea; a method of collecting/gathering information, analyzing it, and
displaying the results (mental processes). Further, Appellant’s arguments
have not persuaded us that the Examiner erred in finding that the claim is
not: directed to an improvement in the functioning of the computer or to
other technology or other technical field; directed to a particular machine;
directed to performing or affecting a transformation of an article to a
different state or thing; or directed to using a judicial exception in some
meaningful way beyond linking the exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort to
monopolize the judicial exception. For these reasons, we are unpersuaded
that the claim recites additional elements that integrate the judicial exception
into a practical application nor do the claims add a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional. See Memorandum, 84 Fed. Reg. at 54. Accordingly, we
sustain the Examiner’s rejection of claim 1, and claims 10, 17, and 33
grouped with claim 1, under 35 U.S.C. § 101 as being directed to a patent-
ineligible abstract idea, that is not integrated into a practical application, and
does not include an inventive concept.
With respect to dependent claims 4, 6, 21 through 24, and 27
through 31, Appellant addresses these claims by reciting the limitations of
the claims and restating the Examiner’s finding that the claims do not recite
significantly more than the abstract idea. Appeal Br. 35–36. We do not
consider this to be a separate argument for patentability, as Appellant has not
identified an error in the Examiner’s finding, rather these statements are
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nothing more than a general allegation of error. See In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”). Accordingly,
we sustain the Examiner’s rejection of claims 4, 6, 21 through 24, and 27
through 30, under 35 U.S.C. § 101, for the same reasons as claim 1 as we
consider these claims grouped with claim 1.
With respect to claim 32 through 37, Appellant argues the Examiner’s
rejection is careless and misstates the limitations of the claims. Appeal
Br. 36–37. The Examiner responded to this argument and corrected the
findings on pages 14 through 16 of the Answer. Appellant in the Reply
Brief did not address the Examiner’s findings, and as such there is no
separate issue for us to decide with respect to claims 32 through 37 and we
sustain the Examiner’s rejection of these claims under 35 U.S.C. § 101 for
the same reasons as claim 1.
35 U.S.C. § 102 Rejection
Appellant argues the Examiner’s rejection of each of independent
claims 1, 10, and 17 is in error as the Examiner has not shown that Barsness
teaches the limitation directed to a phantom classification. Appeal
Br. 37–40. Appellant argues that the invention is to a technique to determine
how incomplete processing affects the partial result set and that by
disregarding the “phantom classification” and only reading the “incomplete
classification” in the claim, renders the limitation of performing the
classification redundant with the claim the limitation of determining the
result set represents an incomplete processing. Appeal Br. 38–39, Reply
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Br. 8–14. Further, Appellant states “the point of novelty of the present
disclosure is that an incomplete processing of a query may produce (at least)
three distinct kinds of result sets.” Appeal Br. 39, Reply Br. 8.
In response the Examiner identifies that the clause “at least one of
. . . and” as used in the claim is interpreted in light of the Specification as “at
least one of . . . or.” Ans. 18–19 (citing Spec. ¶¶ 29, 32, 45, and 104).
Based upon this interpretation the Examiner finds that Barsness teaches the
limitation of performing a classification of the incomplete processing as an
incomplete classification. Ans. 19–20.
We have reviewed the portions of the Specification cited by the
Examiner and find the Examiner’s claim interpretation to be reasonable.
Representative claim 1 recites, performing a classification of the incomplete
processing of the query “as at least one of: an incomplete classification . . . ,
and a phantom” (emphasis added). As identified by the Examiner,
paragraphs 29 and 32, identify that classification can be performed in one of
the two categories, incomplete or phantom. Thus, we consider the
Examiner’s interpretation to be reasonable in light of the Specification.
Further, with regard to Appellant’s point in the Reply Brief, page 8, that an
incomplete result can be classified as both phantom and incomplete, this
does not show that the Examiner’s interpretation is unreasonable, rather it
just shows the breadth of the claim, that it can be incomplete, phantom, or
both. Similarly, while paragraph 28 of Appellant’s Specification identifies
that the “four categories are proposed: indeterminate, incomplete, phantom,
and complete” (emphasis added), we do not consider this to mean that the
result is classified in all four categories, rather just that four categories are
available (only two of these categories are claimed). The use of the term “at
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least one of” in the claim clearly indicates that the claim is met if
classification is into one of the categories.
Additionally, we are not persuaded by Appellant’s arguments that the
Examiner misunderstands the Appellant’s invention, on pages 12–14 of the
Reply Brief. The Examiner’s rejection is directed to the claims and not
Appellant’s disclosed invention. While Appellant may have intended the
claim to recite a method which requires the classification to be in two
categories, incomplete and phantom, as discussed above the claim is not so
limited. During examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404–05 (CCPA 1969). “Construing claims broadly
during prosecution is not unfair to the applicant . . . because the applicant
has the opportunity to amend the claims to obtain more precise claim
coverage.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (citing and quoting In re Yamamoto, 740 F.2d 1569, 1571–72
(Fed. Cir. 1984)). (“An applicant’s ability to amend his claims to avoid
cited prior art distinguishes proceedings before the PTO from proceedings in
federal district courts on issued patents.” Id.)
Accordingly, Appellant’s arguments have not persuaded us of error in
the Examiner’s claim interpretation. Appellant’s arguments have not
contested the Examiner’s finding that Barsness teaches the claimed
incomplete classification. Accordingly, we sustain the Examiner’s
anticipation rejection of representative independent claim 1 and claims 4, 10,
17, 24, 36, and 37 grouped with claim 1.
35 U.S.C. § 103 Rejections
With respect to the Examiner’s obviousness rejections, Appellant
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states it “is submitted that because the dependent claims are dependent upon
these independent claims, the dependent claims are per se allowable under
both grounds of rejection (and also 35 U.S.C. § 103(a)) for at least the same
reasons as the independent claims.” Appeal Br. 21. Accordingly, we sustain
the Examiner’s obviousness rejections of claims 6, 21 through 23, 27, and 28
through 35 for the same reasons as claim 1,
CONCLUSION
We affirm the Examiner’s rejections of claims 1, 4, 6, 10, 17, 21
through 24, and 27 through 37.
In summary:
Claims
Rejected
35 U.S.C.
§ 
Reference(s)/
Basis
Affirmed Reversed
36, 37 112(a) Written
Description
36, 37
17 101 Eligibility 17
1, 4, 6,
10, 17,
21–24,
27–37
101 Eligibility 1, 4, 6, 10, 17, 21–
24, 27–37

1, 4, 10,
17, 24,
36, 37
102 Barsness 1, 4, 10, 17, 24, 36,
37

6, 21–23,
27
103 Barsness,
Murthy
6, 21–23, 27
28–31 103 Barsness,
Kon
28–31
32–34 103 Barsness,
Kon, Murthy
32–34
35 103 Barsness,
Murthy,
Wang
35
Overall
Outcome
1, 4, 6, 10, 17, 21–
24, 27–37

Appeal 2018-006412
Application 14/294,028

19

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2017).
AFFIRMED