William Morriss

Patent Trials and Appeals Board

Jul 20, 2020

2020000202 (P.T.A.B. Jul. 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.
14/444,413 07/28/2014 William S. Morriss 0000000/0001528 8372
26874 7590 07/20/2020
FROST BROWN TODD LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
EXAMINER
WHITE, LANCE WILLIAM
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/20/2020 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):
patents@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM S. MORRISS
Appeal 2020-000202
Application 14/444,413
Technology Center 3600
Before JOHN A. JEFFERY, JOHNNY A. KUMAR, and BETH Z. SHAW,
Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 19–24. See Non-Final Act. 1. 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. Appellant identifies the real party in interest as William Morriss, the
named inventor of the application under appeal. Appeal Br. 4.
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CLAIMED SUBJECT MATTER
The claims are directed to a patent prosecution technology. Claim 19,
reproduced below, is illustrative of the claimed subject matter:
19. A machine comprising:
a) a user computer configured with a set of instructions to
provide an interface operable by a user to submit an input office
action; and
b) a means for determining responses to historical office
actions similar to the input office action to present in a result set.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
GROSS US 2012/0191502 A1 July 26, 2012

REJECTION
Claims 19–24 are rejected under 35 U.S.C. § 101. Non-Final Act. 2.
Claims 19, 20, and 24 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Non-Final Act. 14.
Claims 19–24 are rejected under 35 U.S.C. § 112(b) as being
indefinite. Non-Final Act. 19.
Claims 19–24 are rejected under 35 U.S.C. § 102 as being anticipated
by Gross. Non-Final Act. 27.
OPINION
Section 101
Appellant argues the § 101 rejection of the pending claims as a group.
As permitted by 37 C.F.R. § 41.37, we decide this issue based on claim 19.
See 37 C.F.R. § 41.37(c)(1)(iv)(2016).
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Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “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.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “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.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office has issued guidance about this framework. See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“2019 Eligibility Guidance”). Under the guidance, to decide whether
a claim is “directed to” an abstract idea, we evaluate whether the claim (1)
recites an abstract idea grouping listed in the guidance and (2) fails to
integrate the recited abstract idea into a practical application. See 2019
Eligibility Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an
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abstract idea, as noted above, we then determine whether the claim recites an
inventive concept. The 2019 Eligibility Guidance explains that when making
this determination, we should consider whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
With these principals in mind, we turn to the Examiner’s § 101
rejection.
Abstract Idea
Turning to Step 2A, Prong 1, the claimed method includes the
following limitations, emphasized in italics:
a) a user computer configured with a set of instructions to provide
an interface operable by a user to submit an input office action; and
b) a means for determining responses to historical office actions
similar to the input office action to present in a result set.

Claim 19 recites at least one abstract idea grouping listed in the 2019
Eligibility Guidance: “[m]ental processes.” See 2019 Eligibility Guidance,
84 Fed. Reg. at 52, 53 (listing “[m]ental processes—concepts performed in
the human mind (including an observation, evaluation, judgment, opinion)”
as one of the “enumerated groupings of abstract ideas” (footnote omitted)).
The guidance explains that “[m]ental processes” include acts that people can
perform in their minds or using pen and paper, even if the claim recites that
a generic computer component performs the acts. See 2019 Eligibility
Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
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generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”)
(emphasis omitted); see also Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.”), quoted in 2019 Eligibility Guidance, 84 Fed. Reg. at 52 n.14;
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324
(Fed. Cir. 2016) (holding that computer-implemented method for
“anonymous loan shopping” was an abstract idea because it could be
“performed by humans without a computer”); quoted in 2019 Eligibility
Guidance, 84 Fed. Reg. at 52 n.14.
The method recited in claim 19 executes steps that people can perform
in their minds or using pen and paper. A person can perform each of the
italicized steps of claim 19 by using his or her mind, or pen and paper, in the
claimed manner. For example, a person can “determin[e] responses to
historical office actions similar to the input office action” using his or her
mind or pen and paper.
Turning to Step 2A, Prong 2, the remaining elements recited in claim
19 do not integrate the abstract idea into a practical application. In addition
to the steps discussed above, claim 19 recites a “machine,” a “user
computer” and an “an interface.” The recited machine, computer, and
interface are generic components. See, e.g., Spec. ¶¶ 140, 141, 145, 146, 152
(“‘computer’ should be understood to refer to a device or group of devices
for storing and processing data, typically using a processor and computer
readable medium”). See 2019 Eligibility Guidance, 84 Fed. Reg. at 55
(identifying “merely includ[ing] instructions to implement an abstract idea
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on a computer” as an example of when an abstract idea has not been
integrated into a practical application).
We also find unavailing Appellant’s contention that the claimed
invention does not “tie up” or preempt all ways of enabling online
collaborative content management for product development in its field.
Appeal Br. 8. Where, as here, the claims cover a patent-ineligible concept,
preemption concerns “are fully addressed and made moot” by an analysis
under the Alice/Mayo framework. See Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Thus, the claims do not integrate the judicial exception into a practical
application. The claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine (except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and (4) are 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). We, therefore, agree with the Examiner that
claim 1 is directed to an abstract idea.
Inventive Concept
Because we determine claim 19 is “directed to” an abstract idea, we
consider whether claim 19 recites an “inventive concept.” The Examiner
determined claim 19 does not recite an inventive concept because the
additional elements in the claim do not amount to “significantly more” than
an abstract idea. See Non-Final Act. 3.
We agree with the Examiner’s determination. As noted above, the
claimed invention merely uses generic computing components to implement
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the recited abstract idea. The additional elements recited in the claim include
the “machine,” “user computer” and “interface.” The claim recites these
elements at a high level of generality, and the written description indicates
that these elements are generic. See, e.g., Spec. ¶¶ 140, 141, 145, 146, 152.
Using generic computer components to perform abstract ideas does not
provide the necessary inventive concept. See Alice, 573 U.S. at 223 (“[T]he
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention.”). Thus, these elements, taken
individually or together in combination, do not amount to “significantly
more” than the abstract ideas themselves.
Appellant appears to contend the means-plus-function element recited
in the claim, and the corresponding structure described in the Specification,
provides the necessary inventive concept. Appeal Br. 8, 9. But this element
(“means for determining responses to historical office actions similar to the
input office action to present in a result set”) form part of the recited abstract
idea and thus is not an “additional element” that “‘transform[s] the nature of
the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78); see also 2019 Eligibility Guidance, 84 Fed. Reg. at
55 n.24 (“USPTO guidance uses the term ‘additional elements’ to refer to
claim features, limitations, and/or steps that are recited in the claim beyond
the identified judicial exception.” (Emphasis added)).
Rather, the recited “machine,” a “user computer” and an “an
interface” are the additional recited elements whose generic computing
functionality is well-understood, routine, and conventional. See Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1368 (Fed. Cir.
2015) (noting that a recited user profile, database, and communication
medium are generic computer elements); Mortg. Grader, 811 F.3d at 1324–
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25 (noting that components such an “interface,” “network,” and “database”
are generic computer components that do not satisfy the inventive concept
requirement). Accord Non-Final Act. 3, 8 (concluding that the claims’
additional generic computer components do not add significantly more than
the abstract idea.). Appellant’s arguments do not persuade us claim 19 is
“directed to” a patent-eligible concept.
To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution, we
disagree. Even assuming, without deciding, that the claimed invention can
determine responses to historical office actions similar to the input office
action faster than doing so manually, any speed increase comes from the
capabilities of the generic computer components—not the recited process
itself. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095
(Fed. Cir. 2016) (citing Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the
required calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed subject
matter.”)); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F.
App’x 1012, 1017 (Fed. Cir. 2017) (unpublished) (“Though the claims
purport to accelerate the process of finding errant files and to reduce error,
we have held that speed and accuracy increases stemming from the ordinary
capabilities of a general-purpose computer ‘do[ ] not materially alter the
patent eligibility of the claimed subject matter.’”). Like the claims in
FairWarning, the focus of claim 19 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
(citations and quotation marks omitted).
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We also find unavailing Appellant’s argument that the fact that the
claims were rejected as indefinite “[m]eans they [c]annot be [r]ejected as
[i]neligible.” Appeal Br. 11. This argument is moot because we reverse the
rejection of the claims as indefinite, as discussed in more detail below.
Accordingly, we sustain the rejection of claims 19–24 under 35
U.S.C. § 101.

Written Description
For means-plus-function limitations where the disclosed structure is a
computer programmed to implement an algorithm, the patent must disclose
enough of an algorithm to provide the necessary structure under 35 U.S.C.
§ 112 ¶ 6. See Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340
(Fed. Cir. 2008). The patentee may express this algorithm in any
understandable manner, including as a flowchart, so long as sufficient
structure is disclosed. Id.; see also AllVoice Computing PLC v. Nuance
Commc’ns, Inc., 504 F.3d 1236, 1245 (Fed. Cir. 2007).
We agree with Appellant that steps for “determining responses to
historical office actions similar to the input office action to present in a result
set” are expressed in multiple ways, including in flowcharts, prose, and in
code. Appeal Br. 12. For example, in the Specification, the flow chart of
Figure 11, the prose of paragraphs 89, 90, and 96–112, and the code of table
14.5 provide a process for “determining responses to historical office actions
similar to the input office action to present in a result set.”
Accordingly, we do not sustain the rejection of claims 19, 20, and 24
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement.

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Indefiniteness
35 U.S.C. § 112, ¶ 2 requires that claims “particularly point[] out and
distinctly claim[] the subject matter which the applicant regards as his
invention.” For means-plus-function elements, which are statutorily limited
to the “corresponding structure, material, or acts described in the
specification and equivalents thereof,” 35 U.S.C. § 112, ¶ 6, section 112, ¶ 2
requires that the specification must permit one of ordinary skill in the art to
“know and understand what structure corresponds to the means
limitation.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 949–50
(Fed. Cir. 2007) (internal citation omitted). The Federal Circuit “does not
impose a lofty standard in its indefiniteness cases.” Finisar, 523 F.3d at
1341. Sufficient structure must simply “permit one of ordinary skill in the art
to ‘know and understand what structure corresponds to the means
limitation’” so that he may “perceive the bounds of the invention.” Id. at
1340–41.
We agree with Appellant that the claims are not indefinite. The steps
for “determining responses to historical office actions similar to the input
office action to present in a result set” are expressed in multiple ways in the
Specification, including in flowcharts, prose, and in code, such that one
skilled in the art would perceive the bounds of the invention. For example,
the flow chart of Figure 11, the prose of paragraphs 89, 90, and 96–112, and
the code of table 14.5 of the Specification provide a specific process for
“determining responses to historical office actions similar to the input office
action to present in a result set.”
Accordingly, we do not sustain the rejection of claims 19– 24 under
35 U.S.C. § 112(b) as being indefinite.

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Anticipation
The Examiner rejects claims 19–24 under 35 U.S.C. § 102 as
being anticipated by Gross.
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
2008).
Appellant argues that when a user uploads a document to Gross’s
system, “the document would be of the type that a patent attorney would
send to the patent office not an office action.” Appeal Br. 37. In response,
the Examiner explains that “the claims are construed to cover the
corresponding structure, material, or acts described in the specification and
equivalents thereof.” Ans. 28 (emphasis omitted).
The “equivalents,” however, relate to the claimed means, which in
this case are the “means for determining.” The “equivalents” does not refer
to the “office action” in the claim. Although Gross does appear to mention
office actions in some portions of the reference, the Examiner has not
sufficiently articulated on this record how Gross discloses “a) a user
computer configured with a set of instructions to provide an interface
operable by a user to submit an input office action; and b) a means for
determining responses to historical office actions similar to the input office
action to present in a result set.” Accordingly, constrained as we are by the
record before us, we do not sustain the rejection of claims 19–24 under 35
U.S.C. § 102.
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CONCLUSION
We affirm the rejection of claims 19–24 under 35 U.S.C. § 101.
We reverse the rejection of claims 19, 20, and 24 under 35 U.S.C.
§ 112(a).
We affirm the rejection of claims 19–24 under 35 U.S.C. § 112(b)
We affirm the rejection of claims 19–24 under 35 U.S.C. § 102.
Because we affirm at least one ground of rejection for each claim on
appeal, we affirm the rejection of claims 19–24.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
19–24 101 Ineligibility 19–24
19, 20, 24 112(a) Written Description 19, 20, 24
19–24 112(b) Indefiniteness 19–24
19–24 102 Gross 19–24
Overall
Outcome
  19–24

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED