Tolga Oral et al.

Patent Trials and Appeals Board

Sep 24, 2020

12141435 - (R) (P.T.A.B. Sep. 24, 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.
12/141,435 06/18/2008 Tolga Oral CAM920070243US1_8150-0059 5350
52021 7590 09/24/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
GOLDBERG, IVAN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
09/24/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOLGA ORAL and ANDREW L. SCHIRMER
__________

Appeal 2018-006769
Application 12/141,4351
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant1 filed a Request for Rehearing (“Req. Reh'g”), pursuant to
37 C.F.R. § 41.52, on August 27, 2020, seeking reconsideration of our
Decision on Appeal mailed June 29, 2020 (“Decision”), in which we
affirmed the Examiner’s rejection of claims 21–40 under 35 U.S.C. § 101 as
directed to an abstract idea without significantly more. We have jurisdiction
over the Request under 35 U.S.C. § 6(b).
We note at the outset that a Request for Rehearing “must state with
particularity the points believed to have been misapprehended or overlooked

1 According to Appellant’s, the real party in interest is IBM Corporation
Appeal Br. 1.
Appeal 2018-006769
Application 12/141,435

2
by the Board.” 37 C.F.R. § 41.52(a). A Request for Rehearing is not an
opportunity to rehash arguments raised in the Appeal Brief or in the Reply
Brief. Neither is it an opportunity to merely express disagreement with a
decision without setting forth points believed to have been misapprehended
or overlooked. Arguments not raised in the briefs before the Board and
evidence not previously relied on in the briefs also are not permitted except
in the limited circumstances set forth in §§ 41.52(a)(2) through (a)(4). Id.

DISCUSSION
To recap, in the Decision, we determined under Step 2A, Prong One
of the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50, 50–57 (Jan. 7, 2019) (“Guidance”) that the claims are directed to
collecting and analyzing information and therefore the claims recite a
judicial exception. Decision 5. Turning to Prong Two of Step 2A of the
Guidance, we found, that the additional elements include a “computer
hardware system.” Id. We concluded that the computer hardware system,
considered alone and as part of a combination, is no more than a generic
computer system operating in its ordinary capacity to implement the abstract
idea. Id. at 6.
Turning to Step 2B, we considered whether any additional elements,
alone and as part of a combination, are not well-understood, routine,
conventional activity in the field and, thus, indicative of an inventive
concept. We decided that the recited computer hardware system was well-
understood, routine and conventional. Dec. 7–9. We concluded that the
claims recite an abstract idea without significantly more. Dec. 12.
Appeal 2018-006769
Application 12/141,435

3
Appellant argues that the Examiner did not perform an integration
analysis to find whether the claims are integrated into a practical application
pursuant to Prong Two of the Guidance. Appellant argues that the ultimate
criteria as to whether new grounds should be designated in the decision by
the Board is whether Appellant had a fair opportunity to react to the thrust of
the rejection. Appellant argues that they have not been afforded this
opportunity. Req. Reh. 7.
As an initial matter, the Revised Guidance does not reflect any change
in law regarding subject matter eligibility. See Revised Guidance, 84 Fed.
Reg. at 51 (“This guidance does not constitute substantive rulemaking and
does not have the force and effect of law.”); see also id. (“Rejections will
continue to be based upon the substantive law[.]”). Instead, it “sets out
agency policy with respect to the USPTO's interpretation of the subject
matter eligibility requirements of 35 U.S.C. § 101 in view of decisions by
the Supreme Court and the Federal Circuit.” Id. (“Failure of USPTO
personnel to follow the guidance . . . is not, in itself, a proper basis for either
an appeal or a petition.”).
Nonetheless, we designate our affirmance of the rejection under 35
U.S.C. § 101 as a new ground of rejection. 37 C.F.R. § 41.50(b). Our
analysis in the Decision, and findings of the record related thereto, are
hereby adopted for this new ground of rejection.

CONCLUSION
The Appellant’s Request for Rehearing is GRANTED.
Appeal 2018-006769
Application 12/141,435

4
Outcoe of Decision on Rehearing:
Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
21–40 101 Eligibility 21–40

Final Outcome of Appeal after Rehearing:
Claims 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
21–40 101 Eligibility 21–40

TIME PERIOD FOR RESPONSE

This decision contains a new ground of rejection under 37 C.F.R.
§ 41.50(b) which provides that a new ground of rejection “shall not be
considered final for judicial review.” WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, the Appellant must exercise one of the
following two options with respect to the new grounds 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;
(2) Request rehearing. Request that the proceeding be reheard under § 41.52
by the Board upon the same record.

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)(iv) (2014).

REHEARING GRANTED