van de Burgt, Stephanus Pieter. et al.

Patent Trials and Appeals Board

Apr 2, 2020

13333038 - (D) (P.T.A.B. Apr. 2, 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.
13/333,038 12/21/2011 Stephanus Pieter van de Burgt 063170.9776 5698
106095 7590 04/02/2020
Baker Botts LLP/CA Technologies
2001 Ross Avenue
SUITE 900
Dallas, TX 75201
EXAMINER
CELANI, NICHOLAS P
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
PTOmail1@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHANUS PIETER VAN DE BURGT,
MARK ALBERT PORS, and PIETER ENNES
____________

Appeal 2019-000389
Application 13/333,038
Technology Center 2400
____________

Before ERIC B. CHEN, IRVIN E. BRANCH, and MICHAEL M. BARRY,
Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Office
Action rejecting all of the pending claims, i.e., claims 1, 3, 5–14, 16, 18, and
20–24. See Final Act. 1, 4–22; Appeal Br. 10, 29–27 (Claims App.).2 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies CA, Inc. as the real party in interest. Appeal
Br. 3.
2 We refer herein to the Specification (“Spec.”) and Figures (“Figs.”) filed
Dec. 21, 2011, the Final Office Action (“Final Act.”) mailed Jan. 23, 2018,
the Appeal Brief (“Appeal Br.”) filed June 25, 2018, and the Answer
(“Ans.”) mailed Aug. 7, 2018.
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Introduction
Appellant states “[t]he present disclosure relates generally to
executing applications, and more specifically to monitoring the performance
of applications executed on personal digital assistant (‘PDA’) terminals.”
Spec. ¶ 2 (Technical Field).
Independent claim 1 is illustrative of the claims on appeal, reproduced
here with certain computer technology limitations emphasized in italics:
1. A method comprising:
executing, on a terminal device, a native application
developed by a developer;
exchanging data with a web service by the native data
application;
collecting, by the native data application, data exchange
information, comprising data transfer speed information, that is
related to a data exchange between the native application being
executed on the terminal device and the web service, and an
amount of data exchanged between the native application and
the web service;
instructing, by the native data application, the terminal
device to store the data exchange information collected by the
native data application;
analyzing, at the terminal device, the data exchange
information stored at the terminal device to determine
performance of the native data application;
transmitting the data exchange information stored at the
terminal device to a web server of an intermediate application
performance monitoring party other than the developer, the web
server processing and analyzing the information received from
the terminal device, said processed information being provided
as one or more reports to the developer;
receiving, from the web server, feedback information
indicating that performance of the native data application is
poor; and
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in response to receiving the feedback information from
the web server, instructing, by the native data application, the
terminal device to not transmit further collected information for
a first period of time.
Appeal Br. 19 (Claims App’x).
The Rejections
The Examiner rejected all the pending claims under 35 U.S.C. § 101
as “directed to non-statutory subject matter.” Final Act. 4–5.
The Examiner rejected all the pending claims under 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Act. 5–6.3
The Examiner rejected claims 1, 3, 5–11, 13, 14, 16, 18 and 20–24
under 35 U.S.C. § 103(a) as unpatentable over Fok (US 2006/0198359 A1;
Sept. 7, 2006) and Kushwaha (US 2006/0234639 A1; Oct. 19, 2006). Final
Act. 6–15.
The Examiner rejected claim 12 under § 103(a) as unpatentable over,
Fok, Kushwaha, and Stricklen (US 2008/0070495 A1; Mar. 20, 2008). Final
Act. 15–16.
The Examiner also alternatively rejected all pending claims under
§ 103(a) as unpatentable over, Fok, Kushwaha, and Stricklen. Final Act. 16.

3 Appellant filed a Response After Final Action dated Apr. 9, 2018 (“Post-
Final Resp.”), amending certain claims to address § 112 rejection issues.
See Post-Final Resp. 2–10 (We note the Appeal Brief’s Claims Appendix
reflects those post-final amendments). The Examiner responded with an
Advisory Action mailed Apr. 25, 2018 (“Adv. Act.”), entering the claim
amendments and determining they remedied some (but not all) bases for the
§ 112 rejection. See Adv. Act. 1–2; Ans. 3, 11–15. Our decision addresses
only those bases for the § 112 rejection that the Examiner identifies as not
remedied by the entered post-final claim amendments. Id.
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ANALYSIS
The 35 U.S.C. § 101 Rejection
For the § 101 rejection, Appellant argues based on the recitations in
independent claim 1 and dependent claim 6. See Appeal Br. 10–12. Claims
1 and 6 are, thus, representative for the purpose of the § 101 rejection. See
37 C.F.R. § 41.37(c)(1)(iv) (2017).
§ 101 Standard for Patent Eligibility
In issues involving subject matter eligibility under 35 U.S.C. § 101,
our inquiry focuses on whether the claims satisfy the two-step test set forth
by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.
208 (2014). The Court instructs us to “first determine whether [a] claim[] at
issue [is] directed to a patent-ineligible concept.” Id. at 218. If it is, we then
move to the second step, in which we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. at 217–18 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court describes
the second step as a search for “an ‘“inventive concept”’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. (quoting Mayo, 566 U.S. at 72–73).
In 2019, the USPTO published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50–57 (Jan. 7, 2019) (“2019 Guidance”) see also October 2019 Patent
Eligibility Guidance Update, 84 Fed. Reg. 55942–53 (Oct. 17, 2019) (setting
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forth “examples as well as a discussion of various issues raised by the public
comments” to the 2019 Guidance). Under the 2019 Guidance, we first look
to 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) (referred to as Step 2A, prong 1 in
the Guidance); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(referred to as Step 2A, prong 2 in the Guidance).
See 2019 Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then move to Step
2B of the 2019 Guidance, in which we 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 2019 Guidance, 84 Fed. Reg. at 56.
For our analysis, we remain mindful that we must not express the
claim’s basic concept in a way that is “untethered from the language of the
claims” and, accordingly, we assess what the claim 1 recites at the same
level of generality or abstraction expressed in the claim. Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016); see also Mayo, 566
U.S. at 71 (explaining that, when determining whether a claim recites and is
directed to a judicial exception, “too broad an interpretation of this
exclusionary principle could eviscerate patent law” because “all inventions
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at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas”); Alice, 573 U.S. at 217 (“[A]n invention is
not rendered ineligible for patent simply because it involves an abstract
concept” (citing Diehr, 450 U.S. at 187)).
Alice/Mayo Step One, Guidance Step 2A, Prong One
(Do Claims 1 and 6 Recite a Patent-Ineligible Concept?)
For our prong one analysis of claim 1, we set aside technological
aspects related to “a terminal device,” “a native application,” and “a web
server.” For the first step’s requirement for “executing, on a terminal
device, a native application,” we consider a non-technological abstraction,
“performing an application.” With respect to “a native application,” we note
claim 1 then refers to “the native data application” and (then) to “the native
application” (i.e., claim 1 does not recite any separate antecedent basis for
“the native data application”). Under the broadest reasonable interpretation,
in view of the Specification and consistent with Appellant’s summary of
claim 1 in the Appeal Brief, we determine both “the native application” and
“the native data application” can refer to the same application that is “a
native application,” as recited. Cf. Appeal Br. 4–5 (citing Spec. ¶¶ 8–10,
33). Finally, we note that, in addition to setting aside “web server”
recitations, we also set aside “web” from within the “web service”
recitations.
Setting aside those technological limitations for consideration as
“additional elements” in our prong two and Alice/Mayo step two (Guidance
step 2B) analyses, claim 1 recites “[a] method comprising:”
[performing an] application developed by a developer;
exchanging data with a . . . service . . . ;
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collecting . . . data exchange information, comprising
data transfer speed information, that is related to a data
exchange between the . . . application . . . and the . . . service,
and an amount of data exchanged between the . . . application
and the . . . service;
instructing . . . stor[ing of] the data exchange information
collected by the . . . application;
analyzing . . . the data exchange information stored . . . to
determine performance of the . . . data application;
transmitting the data exchange information stored . . . to
. . . an intermediate application performance monitoring party
other than the developer, . . . [for] processing and analyzing the
information received from the terminal device, said processed
information being provided as one or more reports to the
developer;
receiving . . . feedback information indicating that
performance of the . . . data application is poor; and
in response to receiving the feedback information . . . ,
instructing, by the . . . data application, . . . to not transmit
further collected information for a first period of time.
At this level of abstraction, the first step describes (recites)
performing a task “developed by a developer” (which, as claim 1
subsequently recites, involves data exchange with a service). Under the
broadest reasonable interpretation, the first step encompasses tasks that
involve interactions between people according to rules or instructions (e.g.,
as set forth by a developer who developed the task). The 2019 Guidance
explains that such recitations are abstract in the category of certain methods
of organizing human activity. See 84 Fed. Reg. at 52; id. at n.13.
With respect to the next four steps—“exchanging data with a . . .
service,” “collecting” certain “data exchange information,” “stor[ing]” the
information, and “analyzing” the information—guiding precedent instructs
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us that such information processing limitations are abstract. See, e.g., Elec.
Power Grp., LLC v. Alston S.A., 830 F.3d 1350, 1353–54 (Fed. Cir 2016).
The fifth and sixth steps, “transmitting the data exchange information” to a
third party (i.e., to the “intermediate application performance monitoring
party other than the developer”) and receiving back information indicating
that “performance . . . is poor” are similarly abstract data processing
limitations. Id. The last (seventh) step, similar to the first step, is also
abstract under the category of certain methods of organizing human activity,
because providing an instruction “to not transmit further collected
information for a first period of time” encompasses the human activity of
providing such instructions. See 2019 Guidance, 84 Fed. Reg. at 52
(explaining exemplary subcategories including “managing . . . interactions
between people (including . . . following rules or instructions”).
Thus, each of claim 1’s steps for “monitoring the performance of
applications” (Spec. ¶ 2 (describing the invention’s technical field)) recites
limitations describing an abstract idea. “Adding one abstract idea . . . to
another abstract idea . . . does not render the claim non-abstract.”
RecogniCorp, LLC v. Nintendo Co. LTD., 855 F.3d 1322, 1327 (Fed. Cir.
2017); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1093–94 (Fed. Cir. 2016) (patent-ineligible claims were directed to a
combination of abstract ideas). Thus, claim 1 recites a judicial exception,
i.e., abstract idea(s).
Claim 6 depends indirectly from claim 1, thus incorporating by
reference all of claim 1’s limitations; ergo, claim 6 also recites the same
abstract idea(s) as claim 1. Claim 6 modifies claim 1’s requirement for the
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native application to analyze the data exchange information it collects as
follows:
wherein analyzing the data exchange information stored
at the terminal device to determine performance of the native
data application further comprises:
determining that the terminal device is roaming on a
mobile data network; and
in response to determining that the terminal device is
roaming on the mobile data network, determining that
establishing a connection between the native data application
and the web server is not allowed.
Appeal Br. 20 (Claims App’x).
Here, we note “determining that the terminal device is roaming on a
mobile data network,” although it recites “a mobile data network” and that
“the terminal device is roaming,”4 is entirely abstract, because, as recited, it
describes routine human activity such as looking at a mobile phone’s data
network settings while on travel to see if it is set for roaming. The 2019
Guidance explains that such human activities are abstract as both mental
processes (i.e., capable of being performed in the mind) and as methods of
organizing human activity (e.g., when they encompass human interaction
performed according to rules or instructions). 84 Fed. Reg. at 52. Similarly,
when setting aside claim 6’s recited technology components (“device,”
“network,” and “server”), people can perform the recited determination to
disallow a connection in response to having determined a device is roaming

4 As with claim 1’s technological elements, we consider claim 6’s
technology recitations as “additional elements” in any analyses under prong
two and Alice/Mayo step two.
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either in their mind or as part of an organized human activity of interaction
according to rules. Id.
Thus, claims 1 and 6 both recite abstract ideas. Hence, our analysis
proceeds to prong two under the 2019 Guidance.
Alice/Mayo Step One, Guidance Step 2A, Prong Two
(Do Claims 1 and 6 Integrate the Exception into a Practical Application?)
We next consider whether claims 1 and 6 integrate the judicial
exception into a practical application. 2019 Guidance, 84 Fed. Reg. at 54.
To determine whether the judicial exception is integrated into a practical
application, we identify whether there are “any additional elements recited
in the claim beyond the judicial exception(s)” and evaluate those elements to
determine whether they integrate the judicial exception into a practical
application. 84 Fed. Reg. at 54–55 (emphasis added); see also MPEP
§ 2106.05(a)–(c), (e)–(h).
Here, claim 1 recites the following quoted elements in addition to the
limitations describing the abstract idea(s): (1) “a terminal device,” “a native
application,” and “a web server;” (2) that the native application “execut[es]”
on the terminal device; and (3) that the application exchanges data with (and
collects data exchange information related to) a “web” service.
“Terminal device” is plainly a high-level technological recitation.
Appellant’s Specification gives non-limiting examples and otherwise refers
to such devices only broadly and generically, i.e., as any piece of hardware
that may perform the recited limitations. See Spec. ¶¶ 2, 4, 7–17, 22
(explaining one type of terminal device is a PDA, i.e., a “personal digital
assistant”), 23 (giving “handheld mobile device” as one type of PDA), 24–
26, 28–31. “Native application” is also a high-level term that Appellant’s
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Specification references only as technology well known. See Spec. ¶¶ 3
(explaining by way of background that “[n]ative data applications” account
for over half of all mobile data volume), 6 (stating in the summary that
“web-based applications may be more attractive to an end user if they’re
packaged in a native wrapper”), 11, 23. “Web server” and “web service”
similarly are high-level terms that the Specification references only as well-
known technologies. See Spec. ¶¶ 7–17, 22–26, 28–31, 33. Beyond the
requirement to implement the functionality to implement the abstract ideas
using known technology, there are no special functionality or considerations
described in the Specification for embodiments of the recited “terminal
device,” “native application,” “web service,” “web server,” etc.
Although the additionally recited elements add a certain level of
specificity to claim 1, they do not, alone or in combination, constitute an
improvement to a technology or technical field. Instead, they constitute
generic recitations of those technologies for automating performance of the
abstract idea. Thus, they do not constitute an improvement to “the
functioning of the computer itself” or “any other technology or technical
field.” See MPEP § 2106.05(a) (quoting Alice, 573 U.S. at 225). Rather,
claim 1 constitutes an improvement to steps related to ideas for exchanging
data with a service, collecting, storing, and analyzing certain data, as well as
interacting with “an intermediate application performance monitoring party”
who provides performance feedback information used for making a decision
whether or not to transmit data.
These computer limitations do not qualify as applying the judicial
exception with “a particular machine,” because these components provide
their conventional functions and require no more than general purpose
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computer equipment. See MPEP § 2106.05(b); see also, e.g., Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709,716–17 (Fed. Cir. 2014).
Appellant’s arguments similarly do not persuade us that claim 1
effects a transformation of any recited articles, which are simply used for
their ordinary purposes, or that claim 1 includes any other meaningful
(technological) limitations, i.e., limitations beyond simply “linking the use”
of the abstract idea to generic technology. See MPEP § 2106.05 (c), (e)–(f);
see also id. at (g)–(h) (use of well-known limitations beyond the judicially
excepted matter constitutes “insignificant extra-solution activity” (g) and
claim limitations “merely indicating a field of use or technological
environment in which to apply a judicial exception do not amount to
significantly more” (h)).
Accordingly, we determine the judicial exception recited in claim 1 is
not integrated into a practical application and, therefore, the Examiner did
not err in determining claim 1 is directed to a judicial exception. The same
analysis applies mutatis mutandis for claim 6, which also, in addition to the
recited abstract idea(s), recites only high-level extra elements, e.g., “device,”
“network,” and “server.” Thus, we proceed to step two of the Alice/Mayo
analysis (2019 Guidance Step 2B).
Alice/Mayo Step Two; Guidance Step 2B
(Does Claim 1 Recite Significantly More than the Abstract Idea?)
In step two of the Alice/Mayo analysis, we consider whether there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 77–79). As the 2019
Guidance points out, many of the considerations for determining whether a
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claim recites “significantly more” under step two of the Alice framework are
also part of determining whether a claim integrates the judicial exception
into a practical application. 84 Fed. Reg. at 56. Thus, at this point of our
analysis, we determine if a claim adds a specific limitation, or combination
of limitations, that is not well-understood, routine, conventional activity in
the field; or whether it simply recites well-understood, routine, conventional
activities at a high level of generality. Id.
Here, as the Examiner finds, and we agree, claims 1 and 6 do not
recite limitations (or a combination of limitations) additional to those for the
abstract idea that are beyond what were known to those of ordinary skill in
the art to be well-understood, routine, and conventional prior to the
invention. Final Act. 4–5; Ans. 5–6. The Specification’s high-level, non-
limiting discussion of technological components related to the claims
confirms this as discussed above for our analysis under prong two of Step
2A (i.e., the Specification has no discussion of any special functionality or
considerations for the recited “terminal device,” “native application,” “web
service,” “web server,” etc.).
Appellant’s § 101 Arguments
Appellant’s arguments of error in the § 101 rejection are unpersuasive
in view our above determination under the Guidance that claim 1 is directed
to an abstract idea, without reciting significantly more. For clarification, we
provide the following discussion of some of Appellant’s arguments.
Appellant contends the Examiner errs in determining the claims are
akin to those in Electric Power Group because they “are far more similar to”
cases such as Enfish, in which “there were elements of data collection and
analysis but active steps were taken beyond the data step. Because there
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were active steps taken, the Federal Circuit found that those cases did not
involve abstract ideas.” Appeal Br. 10–11. This argument is unpersuasive.
In Enfish, the court determined the claims were specifically directed to a
specific software implementation for storing tabular data—“a self-referential
table”—that constituted a technological improvement, which, as the Enfish
patent specification explained, provided specific technological advantages
over conventional software implementations for storing tabular data. Enfish,
822 F.3d at 1337. Here, on the other hand, unlike precedent such as Enfish,
Appellant’s claims recite only routine technology elements used for their
ordinary purposes in carrying out the recited abstract idea(s).
Appellant contends claims 1 and 6 constitute practical applications
because they “do[] not preempt substantially all uses of an abstract idea.”
Appeal Br. 10, 11. We disagree. “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also CLS Bank Int’l v. Alice Corp.
Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir. 2013) (explaining that “broad
claims do not necessarily raise § 101 preemption concerns, and seemingly
narrower claims are not necessarily exempt”). “Where a patent’s claims are
deemed only to disclose patent ineligible subject matter under the Mayo
framework, . . . preemption concerns are fully addressed and made moot.”
Ariosa Diagnostics, 788 F.3d at 1379.
Appellant contends that in claim 1, “a change is made to the system in
response to analysis that improves the system itself,” because it recites
“instructing the terminal device to not transmit further information to the
web server based on feedback it receives from the web server.” Appeal Br.
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11 (contending claim 6 similarly “makes changes to the system based on
additional determinations”). This argument is unpersuasive. Claim 1’s
limitations for instructing not to transmit further information based on
received feedback is abstract but for the recited “terminal device” and “web
server,” both of which require only routine, well-understood and
conventional technology used for their routine, well understood, and
conventional purposes in carrying out the abstract idea. Claim 6 similarly
recites only routine, well-understood, and conventional technology for
carrying out the recited abstract idea.
Thus, we sustain the § 101 rejection of claims 1, 3, 5–14, 16, 18, and
20–24. In doing so, as consistent with the foregoing, we adopt the findings
and reasoning of the Examiner.
The 35 U.S.C. § 112, Second Paragraph Rejection
Claim 1 recites “analyzing . . . the data exchange information . . . to
determine performance of the native data application” at the terminal device
and “analyzing the [data exchange] information” by the web server
(hereafter, collectively, the “analyzing limitations”) and “receiving . . .
feedback information indicating that performance of the native data
application is poor” (hereafter the “poor performance limitation”).
Independent claims 14 and 18 recite similar analyzing and poor performance
limitations. See Appeal Br. 23–24, 25 (Claims App’x).
The Examiner determines the analyzing limitations are indefinite
because it is unclear, in view of the claims and Specification, “what steps
constitute an analysis within the meaning of the claims.” Final Act. 5.
Appellant contends the Examiner errs, because “[a] person of ordinary skill
in the art would understand from reading the specification and the claims the
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‘analyzing’ element without explaining [sic] every step that takes place
during such analysis.” Appeal Br. 13–14.
This argument is unpersuasive because it is essentially conclusory.
The Examiner’s rejection sets forth a prima facie rationale, and Appellant
does not present any evidence or persuasive argument to rebut it. As the
Examiner responds, and we agree:
“[A]nalyze” by itself confers no particular steps . . . and invokes
a wide range of acts . . . . It is unclear what the boundary of
those acts are, and it is especially unclear when it is not even
clear what data is being operated upon. The claim commands
taking some unknown types of data and subjecting them to
some amount of unknown tests to come to an ambiguous
conclusion. Those are not definite acts [of] a definite function.
Ans. 14; see also id. at 15 (“Appellant has not given (either in the claim or
the specification) a definite starting point of data, a definite end point
conclusion of ‘poor’ or a definite transformative act that constitutes
analysis.”).
With respect to the determining “poor performance,” the Examiner
determines the term “poor” renders it indefinite because “‘poor’ is not
defined by the claim, the specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the art would
not be reasonably apprised of the scope of the invention.” Final Act. 6.
Appellant contends “a person of ordinary skill in the art at the time of the
invention would understand after reading the specification and the claims,
based on their knowledge and experience, when performance of an
application was poor and when it was not.” Appeal Br. 13.
Appellant’s argument is unpersuasive, because it does not effectively
rebut the prima facie rationale set forth by the Examiner. We agree with the
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Examiner that Appellant’s argument amounts to “a mere allegation of
patentability, and arguments of counsel are not evidence and do not replace
evidence where evidence is necessary. Appellant cites to no authority that
lays down a standard for even a single type of native application.” Ans. 12;
see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that
attorney arguments and conclusory statements unsupported by factual
evidence are entitled to little probative value); see also Ex parte Oetiker, 23
USPQ2d 1641, 1644 (BPAI 1990) (holding “relatively shallow,” “of the
order of 5mm” to be indefinite because the specification lacked any standard
for measuring the degrees intended) (aff’d, In re Oetiker, 951 F.2d 1267
(Fed. Cir. 1991) (unpublished)).
Thus, we sustain the § 112, second paragraph, rejection of claims 1, 3,
5–14, 16, 18, and 20–24. In doing so, as consistent with the foregoing, we
adopt the findings and reasoning of the Examiner.
The 35 U.S.C. § 103(a) Rejections
The Examiner rejected claims 1, 3, 5–11, 13, 14, 16, 18 and 20–24
under 35 U.S.C. § 103(a) as unpatentable over Fok and Kushwaha. Final
Act. 6–15.
With respect to the rejection of the independent claims over the
combined teachings of Fok and Kushwaha, Appellant contends “the
proposed Fok-Kushwaha combination does not disclose ‘receiving, from the
web server, feedback information indicating that performance of the native
data application is poor,’ as recited,” and “‘instructing, by the native data
application, the terminal device to not transmit further collected information
for the period of time,’ as also recited.” Appeal Br. 14; see also id. at 15
(contending “[t]he combination also does not disclose instructing in
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18
response to receiving the feedback information from the web server, as
recited”).
Appellant’s argument is unpersuasive because, as the Examiner
responds, and we agree, it “amount[s] to a general allegation that the claims
define a patentable invention without specifically pointing out how the
language of the claims patentably distinguishes them from the references.”
Ans. 15 (emphasis added); cf. 37 C.F.R. § 41.37(c)(1)(iv) (in setting forth
requirements for arguments in an Appeal Brief, explaining “[a] statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim”). The Examiner also
responds by supplementing the findings and reasoning for the § 103
rejection of claim 1 with additional findings and reasoning related to the
disclosures and teachings of Fok and Kushwaha. See Ans. 16–21 (citing
Fok ¶¶ 3, 21, 23–24, 27–30, 34, 51, 57, 63, Fig. 4; Kushwaha ¶¶ 5, 11, 19,
22–23, 30–34, Abstract; MPEP §§ 2111.05, 2143 (I)(A), (C)–(D), 2144.04).
Appellant does not respond to the findings and reasoning as articulated by
the Examiner in the Answer.
On this record, accordingly, we sustain the § 103(a) rejection of
claims 1, 3, 5–11, 13, 14, 16, 18 and 20–24. In doing so, as consistent with
the foregoing, we adopt the findings and reasoning of the Examiner.
Appellant presents similarly conclusory arguments for the other § 103(a)
rejections. See Appeal Br. 15–18. We also sustain those rejections. See
Ans. 21–23. 37 C.F.R. § 41.37(c)(1)(iv); Geisler, 116 F.3d at 1470.
Appeal 2019-000389
Application 13/333,038

19
CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5–14, 16, 18,
20–24 101 Eligibility
1, 3, 5–14,
16, 18, 20–
24

1, 3, 5–14, 16, 18,
20–24
112, second
paragraph Indefiniteness
1, 3, 5–14,
16, 18, 20–
24

1, 3, 5–11, 13, 14,
16, 18, 20–24 103(a) Fok, Kushwaha
1, 3, 5–11,
13, 14, 16,
18, 20–24

1, 3, 5–14, 16, 18,
20–24 103(a)
Fok, Kushwaha,
Stricklen
1, 3, 5–14,
16, 18, 20–
24

Overall
Outcome
1, 3, 5–14,
16, 18, 20–
24

TIME PERIOD FOR RESPONSE
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).
AFFIRMED