Ex Parte Holt

Patent Trial and Appeal Board

Aug 27, 2018

11891101 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/891,101 08/09/2007
146524 7590
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
08/27/2018
FIRST NAMED INVENTOR
Christopher L. Holt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
31547-360/LEN0081N2 1454
EXAMINER
WEISENFELD, ARYANE
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
08/27/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER L. HOLT
Appeal2016-005510
Application 11/891,101
Technology Center 3600
Before JOSEPH L. DIXON, ERIC B. CHEN, and JEREMY J. CURCURI,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2016-005510
Application 11/891,101
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 21-36. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a patent examiner information system.
Claim 21, reproduced below, is illustrative of the claimed subject matter:
21. A computer-implemented method of generating patent
examiner-specific responses to queries, the method comprising:
displaying, on a search user interface, an examiner input
box that prompts textual entry of an examiner name and receives
user textual input;
receiving, through the search user interface, an examiner
name input in the examiner input box;
identifying a given examiner based on the examiner name
received;
searching, using a computer processor, an examiner data
store using the given examiner identified;
aggregating examiner data calculated from specific
content of examiner written office actions corresponding to a
plurality of different patent applications examined by the given
exammer;
generating examiner statistics from the aggregated
examiner data for the given examiner; and
generating, on a results user interface, a results display
showing the examiner statistics, wherein the examiner statistics
are indicative of the given examiner's frequency in performing
1 Appellant contends that the real party in interest is Reed Technology and
Information Services, Inc. (App. Br. 2).
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Application 11/891,101
one or more actions during prosecution of the plurality of
different patent applications.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Grainger
Lee et al.
Brudz et al.
Caplan et al.
Slovak et al.
Barney et al.
US 2002/0091542 Al
US 2003/0220897 Al
US 2004/0044688 Al
US 2005/0096950 Al
US 2006/0129593 Al
US 2007 /0088738 Al
July 11, 2002
Nov. 27, 2003
Mar. 4, 2004
May 5, 2005
June 15, 2006
Apr. 19, 2007
Final Inspection Report, "USPTO Should Reassess How Examiner Goals,
Performance Appraisal Plans, and the Award System Stimulate and Reward
Examiner Production. IPE-15722;" US Department of Commerce Office of
Inspector General, pp.13-16. (Sept. 30, 2004)
REJECTIONS
The Examiner made the following rejections:
Claims 21-36 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. (Ans.
2).
Claim 36 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention. (Ans. 2).
Claims 21-25, 31-32, 35, and 36 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Slovak in view of Caplan and further in
view of Lee. (Ans. 2).
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Application 11/891,101
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Slovak in view of Caplan and Lee, and further in view of
"Final Report" ("Final Report IPE- 15722 " USPTO Should Reassess How
Examiner Goals, Performance Appraisal Plans, and The Award System
Stimulate and Reward Examiner Production," USPTO Office of Inspections
and Program Evaluations, Sept. 2004. (Ans. 2).
Claims 27-30 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Slovak in view of Caplan and Lee, and further in view of
Barney. (Ans. 2-3).
Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Slovak in view of Caplan and Barney, and further in view
of Brudz. (Ans. 3).
Claim 36 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Slovak in view of Caplan and Lee, and further in view of
Grainger. (Ans. 3).
ANALYSIS
35 USC§ 112, second paragraph2
With respect to dependent claim 36, Appellants have not provided a
specific argument for patentability. As a result, we proforma sustain the
Examiner's rejection under 35 U.S.C. § 112, second paragraph.
2 The Examiner indicated that "Applicant's amendment to the claims has
remedied the written description and indefinites issues of record. The
rejections under 35 U.S.C. § 112 have been withdrawn," but the Examiner
makes a new rejection of dependent claim 36 based upon 35 U.S.C. § 112,
second paragraph. (Ans. 6).
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Application 11/891,101
35 U.S.C. § 101
We have reviewed the Examiner's rejection in light of Appellant's
contentions and the evidence of record. We concur with Appellant's
contention that the Examiner erred in this rejection.
Section 101 of the Patent Act provides "[ w ]hoever 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." 35 U.S.C. § 101. That provision "'contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S.Ct. 2347, 2354
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S.Ct. 2107, 2116 (2013)). According to the Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... If so, we then ask,
"[ w ]hat else is there in the claims before us?" . . . To answer
that question, 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 .... We have
described step two of this analysis 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."
Alice Corp., 134 S.Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and
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the Alice step-two inquiry as looking more precisely at what the claim
elements add-whether they identify an "inventive concept" in the
application of the ineligible matter to which the claim is directed. See
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed.
Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).
According to the Federal Circuit, "[t]he second step of the Alice test is
satisfied when the claim limitations 'involve more than performance of
'well-understood, routine, [and] conventional activities previously known
to the industry."' Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir.
2018) (quoting Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) and Alice,
134 S. Ct. at 2359).
In this case, the Examiner identifies the abstract idea as being directed
to "the abstract idea of generating patent examiner-specific responses to
queries." (Ans. 3).
Appellants argue with respect to the Alice step-two analysis, the
Examiner has not provide any evidence to support the Examiner's assertion
that the claimed limitations perform well-understood, routine, and
conventional functions or steps. (See App. Br. 13-14).
Appellants argue that
Limitations that may be enough to qualify as "significantly
more" when recited in a claim with a judicial exception include:
effecting a transformation or reduction of a particular article to a
different state or thing; or adding a specific limitation other than
what is well-understood, routine and conventional in the field, or
adding unconventional steps that confine the claim to a particular
useful application. Independent claim 21 recites significantly
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more than an abstract idea. The Examiner alleges that the
abstract idea is "decision maker analysis (i.e., data mining)."
(Final Office Action, page 8). The claims recite "significantly
more" than the alleged abstract idea of decision maker analysis
(i.e., data mining). In particular, independent claim 21 adds
specific limitations to what is well-understood, routine and
conventional in the field, and add unconventional steps that
confine the claims to a particular useful application. Each of the
pending claims recites a computer-implemented method that,
among other things, aggregates examiner data calculated from
specific content of examiner-written office actions
corresponding to a plurality of different patent applications
examined by the given examiner, generates examiner statistics
from the aggregated data for the given examiner, and generates a
results display showing the examiner statistics for the given
examiner. Each of the pending claims further recites displaying
a search user interface including an examiner input box, and
generating a results display showing the examiner statistics on a
results user interface. Such specific limitations are added to what
is well-understood, routine and conventional in the field.
Furthermore, such added unconventional steps confine the
claims to a particular useful application of aggregating,
generating, and displaying examiner statistics for use by parties
interested in such data.
(App. Br. 13-14; Reply Br. 3).
The Examiner finds the claimed invention:
is directed towards performing the well-understood, routine, and
conventional activities in the technical field of generating patent
examiner-specific responses to queries. Independent claims 21
and 34 are directed towards the well-understood, routine, and
conventional activities of displaying, receiving, identifying,
searching, and aggregating information to generate and display
examiner statistics.
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(Ans. 4). The Examiner further finds the claimed invention differentiates
from DDR Holdings because the claimed invention is not deeply rooted in
the technology because:
1.) humans have, for some time, longed been known to perform
the well-understood, routine, and conventional activities in the
field of generating patent examiner-specific responses to queries,
e.g., displaying, rece1vmg, identifying, searching, and
aggregating information to generate and display examiner
statistics, and the like; and 2.) the well-understood, routine, and
conventional activities of the abstract idea does not change, alter,
or improve upon how the technology, i.e. user interface and
computer, fundamentally functions. The invention further fails
to improve upon the technical field (generating patent examiner-
specific responses to queries) because merely using the general
purpose device to perform the well-understood, routine, and
conventional activities of the generating patent examiner-
specific responses to queries has been held to not be an
"inventive concept" as the general purpose device is being used
for the very purpose that such device are known to be used for,
e.g. more efficient, faster, and etc.
(Ans. 7). The Examiner maintains that all of the steps of the method are
well-understood, routine, and conventional activities of the abstract idea
which does not change, alter, or improve upon how the technology
fundamentally functions.
The new examination procedure published online by the USPTO on
April 19, 2018, entitled "Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.)" (hereinafter "USPTO Memorandum"). We note
the USPTO Memorandum sets forth a new fact finding requirement for
Examiners that is applicable to rejections under § 101. Specifically,
Examiners must now provide specific types of evidence to support a finding
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Application 11/891,101
that claim elements (or combinations of elements) are well-understood,
routine, and conventional.
We reproduce below changes to prior examination practice, as set
forth in the April 19, 2018 USPTO Memorandum (3--4):
A. Formulating Rejections: In a step 2B analysis, an
additional element (or combination of elements) is not well-
understood, routine or conventional unless the examiner finds,
and expressly supports a rejection in writing with, one or more
of the following:
1. A citation to an express statement in the specification or
to a statement made by an applicant during prosecution
that demonstrates the well-understood, routine,
conventional nature of the additional element(s). A
specification demonstrates the well-understood, routine,
conventional nature of additional elements when it
describes the additional elements as well-understood or
routine or conventional ( or an equivalent term), as a
commercially available product, or in a manner that
indicates that the additional elements are sufficiently
well-known that the specification does not need to
describe the particulars of such additional elements to
satisfy 35 U.S.C. § 112(a). A finding that an element is
well-understood, routine, or conventional cannot be
based only on the fact that the specification is silent with
respect to describing such element.
2. A citation to one or more of the court decisions discussed
in MPEP § 2106.05( d)(II) as noting the well-understood,
routine, conventional nature of the additional element( s ).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). An appropriate publication could include a
book, manual, review article, or other source that
describes the state of the art and discusses what is well-
known and in common use in the relevant industry. It
does not include all items that might otherwise qualify as
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a "printed publication" as used in 35 U.S.C. § 102.[]
Whether something is disclosed in a document that is
considered a "printed publication" under 35 U.S.C. § 102
is a distinct inquiry from whether something is well-
known, routine, conventional activity. A document may
be a printed publication but still fail to establish that
something it describes is well-understood, routine,
conventional activity. See Exergen Corp., 2018 WL
1193529, at *4 (the single copy of a thesis written in
German and located in a German university library
considered to be a "printed publication" in Hall "would
not suffice to establish that something is 'well-
understood, routine, and conventional activity previously
engaged in by scientists who work in the field"'). The
nature of the publication and the description of the
additional elements in the publication would need to
demonstrate that the additional elements are widely
prevalent or in common use in the relevant field,
comparable to the types of activity or elements that are so
well-known that they do not need to be described in
detail in a patent application to satisfy 35 U.S.C.
§ 112(a). For example, while U.S. patents and published
applications are publications, merely finding the
additional element in a single patent or published
application would not be sufficient to demonstrate that
the additional element is well-understood, routine,
conventional, unless the patent or published application
demonstrates that the additional element are widely
prevalent or in common use in the relevant field.
4. A statement that the examiner is taking official notice of
the well-understood, routine, conventional nature of the
additional element(s). This option should be used only
when the examiner is certain, based upon his or her
personal knowledge, that the additional element(s)
represents well-understood, routine, conventional activity
engaged in by those in the relevant art, in that the
additional elements are widely prevalent or in common
use in the relevant field, comparable to the types of
activity or elements that are so well-known that they do
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not need to be described in detail in a patent application
to satisfy 35 U.S.C. § 112(a). Procedures for taking
official notice and addressing an applicant's challenge to
official notice are discussed in MPEP § 2144.03.
Applying the procedural guidance of the USPTO Memorandum (id.)
here, and based upon our review of the record, we find that "an additional
element (or combination of elements) is not well-understood, routine or
conventional unless the [E]xaminer finds, and expressly supports [the]
rejection in writing with, one or more of' the four methods provided therein.
Thus, the various statements in the record by the Examiner as to what
is purportedly well-understood, routine or conventional, without more, do
not provide any of the types of factual evidence required by the USPTO
Memorandum (3--4), which officially implemented the guidance of
Berkheimer (881 F.3d at 1369).
Therefore, after reviewing the arguments articulated by Appellant in
the Appeal and Reply Briefs, we find Appellant's arguments persuasive,
based upon: (1) the intervening authority Berkheimer (881 F.3d at 1369),
and, (2) the intervening USPTO Memorandum, which changed patent
examination practice and procedure to be compliant with the guidance of
Berkheimer.
Accordingly, for essentially the above reasons, as pertaining to
intervening controlling authority of Berkheimer, and the additional
mandatory examination practice and procedure changes set forth in the
USPTO Memorandum, we are constrained on this record to reverse the
Examiner's rejection of claims 21-35 under 35 U.S.C. § 101, as being
directed to patent-ineligible subject matter.
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35 U.S.C. § 103
The Examiner's rejection of independent claim 21 is based upon the
combination of the Slovak, Caplan, and Lee references, and the Examiner
finds that the Slovak reference teaches most of the claimed searching and
data retrieval in the legal/judicial field, but not in the same specificity with
respect to limitation concerning a "patent examiner" and without expressly
teaching the aggregating statistical information from a data set. (Ans. 10-
22).
Appellant summarizes the Examiner's rejection and contends:
the cited references, either alone or in combination, fail to teach
or fairly suggest "generating, on a results user interface, a results
display showing the examiner statistics, wherein the examiner
statistics are indicative of the given Examiner's frequency in
peiforming one or more actions during prosecution of the
plurality of different patent applications," as recited in claim 21
( emphasis added). Slovak does not disclose generating a report
indicative of a frequency in performing one or more actions.
Rather, it discloses generating reports such as case load and type
of litigation (see FIGS. 5A-5R). Lee only discloses providing a
count of patents examined by each examiner. Although Caplan
is cited for generally teaching the performance of statistical
analysis, neither Slovak nor Lee teach or fairly suggest the type
of examiner data and statistics needed by Caplan to perform such
examiner statistical analysis as recited in claim 21. Furthermore,
a person of ordinary skill in the art would not be motivated to
combine Slovak, Caplan, and Lee in the manner asserted by the
Examiner. Accordingly, Appellant respectfully submits that the
combination of Slovak, Caplan and Lee does teach or fairly
suggest "generating, on a results user interface, a results display
showing the examiner statistics, wherein the examiner statistics
are indicative of the given examiner's frequency in performing
one or more actions during prosecution of the plurality of
different patent applications," as recited in claim 21.
(App. Br. 16; see also Reply Br. 4).
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The Examiner responds to Appellants' arguments by reiterating that
"Slovak, Caplan and Lee must be read, not separately, but for what they
fairly teach in combination." (Ans. 7). We agree with the Examiner that the
combination of teachings would have taught or suggested the claimed
invention. Additionally, the Examiner has provided discussions of the
motivations for the combination of each of the references in the combined
teachings. (Ans. 12-14). We agree with the Examiner's factual findings
and conclusion of obviousness and find Appellants' arguments do not show
error in the Examiner's conclusion of obviousness because Appellant's
arguments are directed to the references individually and not what the
combination would have suggested to one of ordinary skill in the art at the
time of the invention.
As a result, we find Appellant's argument does not show error in the
Examiner's factual findings or conclusion of obviousness of representative
independent claim 21.
Appellant does not set forth separate arguments for patentability of
dependent claims 22-36, and we sustain the rejection of these claims for the
same reasons set forth above with respect to representative independent
claim 21.
CONCLUSIONS
The Examiner did not err in rejecting dependent claim 36 based upon
indefiniteness under 35 U.S.C. § 112, second paragraph. The Examiner
erred in rejecting claims 21-36 based upon a lack of patent eligible subject
matter, and the Examiner did not err in rejecting claims 21-36 based upon
obviousness under 35 U.S.C. § 103.
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DECISION
For the above reasons, we sustain the Examiner's rejection of claim
36 based upon indefiniteness; we procedurally reverse the Examiner's
rejection of claims 21-36 based upon a lack of patent eligible subject matter;
and we sustain the Examiner's obviousness rejection of claims 21-36 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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