Ahmad Naser. Abdelrahman et al.

Patent Trials and Appeals BoardAug 9, 2019

13936674 - (R) (P.T.A.B. Aug. 9, 2019)

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. 13/936,674 07/08/2013 Ahmad Naser ABDELRAHMAN 2011-0010US10 1560 74739 7590 08/09/2019 Potomac Law Group, PLLC (Oracle International) 8229 Boone Boulevard Suite 430 Vienna, VA 22182 EXAMINER DUNHAM, JASON B ART UNIT PAPER NUMBER 3684 NOTIFICATION DATE DELIVERY MODE 08/09/2019 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): bgoldsmith@potomaclaw.com eofficeaction@appcoll.com patents@potomaclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte AHMAD NASER ABDELRAHMAN and BRIAN JAMES DUECK ____________________ Appeal 2017-006099 Application 13/936,674 Technology Center 3600 ____________________ Before DEBRA K. STEPHENS, NABEEL U. KHAN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants have filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1)(hereafter “Request”) on May 15, 2019 for reconsideration of our Decision mailed March 15, 2019 (hereafter “Decision”). We consider our Decision in light of Appellants’ Request, but we decline to change the Decision. Appeal 2017-006099 Application 13/936,674 2 ANALYSIS A request for rehearing is limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting Manual of Patent Examining Procedure (MPEP) § 1214.03). It may not rehash arguments originally made in the Brief, neither is it an opportunity to merely express disagreement with a decision. It may not raise new arguments or present new evidence except as permitted by paragraphs (a)(2) through (a)(4). See 37 C.F.R. § 41.52. Appellants argue the Step 2A, Prong 2 analysis under the USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 Guidance”) should be reconsidered in light of the recent informative decision of Ex parte Smith, Appeal No. 2018-000064 (PTAB 2019). Request 2. Appellants argue that, like the claims in Smith, the recited elements provide novel technical improvements to known order fulfillment systems. Request 3 (citing Spec. ¶¶ 183, 221). Appellants also cite to Ex parte Swanson, Appeal No. 2017-005563, PTAB 2019), where the panel determined the additional elements in the claim were integrated into a practical application because the additional elements reflected technology improvement of a service design and order fulfillment system. Request 4. Appellants’ arguments are not persuasive. Although Appellants argued in the Appeal Brief that the claims were similar to Enfish in that “the claimed invention is directed to an improvement in the functioning of a computer,” Appellants did not sufficiently explain why that was the case. See App. Br. 9. Appellants stated: Appeal 2017-006099 Application 13/936,674 3 The claimed embodiments cause the decoupling of a product offering from a fulfillment flow such that the product offering can be modified without modifying the fulfillment pattern. Product offerings are separated from fulfillment processes and associated only indirectly with a set of building blocks, such as product specifications. Associating fulfillment logic with product specifications can allow a desirable proliferation of commercial offerings while minimizing changes to a fulfillment process. See Specification at [0176]. App. Br. 14. Appellants argued the “improvements [were] provided by the decoupling of a product offering from a fulfillment flow.” App. Br. 15. In the Reply Brief, Appellants made similar arguments. Reply Br. 3–4 (citing Spec. ¶¶ 122, 168–171, 178, 235, and 296). Appellants’ arguments were fully addressed in our Decision. See Decision 9–10. Appellants now rely on different citations to the Specification, and argue the claims “provide novel technical improvements to known order fulfillment systems.” Request 3. These are new arguments. On this record, Appellants have not shown any good cause for injecting new arguments not presented in the Appeal Brief and the Reply Brief based on Smith or Swanson. Request 2–3. Nothing in the Request indicates Appellants are relying on new legal theories in Smith or Swanson to show that the Decision contains at least one reversible error. Id. The 2019 Guidance, and the application of Step 2A, Prong 2 of that guidance in Smith and Swanson, applies existing case law. Although the specific procedure set forth in the 2019 Guidance may have changed the procedure by “clarifying that a claim is not ‘directed to’ a judicial exception if the judicial exception is integrated into a practical application of that exception,” that modified procedure is based on pre-existing case law and did not purport to change Appeal 2017-006099 Application 13/936,674 4 any substantive law. See 84 Fed. Reg. 50. Therefore, Appellants’ arguments are based on the same legal theories that Appellants could have argued but did not in the Appeal Brief and the Reply Brief. Accordingly, we find Appellants have not shown good cause pursuant to 37 C.F.R. § 41.52(a)(2), and therefore, decline to consider the new arguments in the Request. Appellants further argue the Decision failed to provide evidence required under Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) that the additional elements beyond the abstract idea, in combination, are well- understood, routine, and conventional. Request 2. Specifically, Appellants argue in our Decision, “no evidence is provided beyond citing generic hardware components.” Request 5. Appellants also argue No evidence was provided by the Examiner or the PTAB that the combination of functional elements implemented by software, which is the core of the invention, is conventional as required per the Berkheimer memo. Instead, evidence of nonconventionality must be provided for all of the functional limitations, both alone and in combination -- because even a collection of entirely conventional individual elements may form an unconventional combination that amounts to a significantly more than an identified abstract idea. Further, the Berkheimer memo puts the burden on the Examiner to provide evidence. The burden is not on the Applicant to rebut conclusory statements. Request 4. Appellants’ arguments are not persuasive. Although the ultimate determination of eligibility is a question of law, the Federal Circuit held “[t]he patent eligibility inquiry may contain underlying issues of fact.” Berkheimer v. HP, 881 F.3d at 1365 (quoting Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) (“The § 101 Appeal 2017-006099 Application 13/936,674 5 inquiry ‘may contain underlying factual issues”’)). The court in Berkheimer also held “[w]hen there is no genuine issue of material fact regarding whether the claim element or claimed combination is well-understood, routine, [or] conventional to a skilled artisan in the relevant field, this issue can be decided on summary judgment as a matter of law.” Berkheimer, 811 F.3d at 1368. Thus, evidence may be helpful where, for instance, facts are in dispute, but evidence is not always necessary. Tthe Examiner made extensive findings that the various additional elements were recited in a generic manner and operated using well-understood, routine, and conventional functions. Final Act. 5; Ans. 12–14. Appellants did not present arguments in the Appeal Brief or the Reply Brief disputing these findings. We agreed with the Examiner’s findings. See Decision 11–13. As discussed in our Decision, the additional elements, as identified in our Decision and by the Examiner, recite generic computing functionality that is well-understood, routine, and conventional, as evidenced by Appellants’ own Specification and the relevant case law cited in our Decision. See Dec. 8, 11–12; see also Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that considering claims reciting data retrieval, analysis, modification, generation, display, and transmission as an “‘ordered combination”’ reveals that they “amount to ‘nothing significantly more’ than an instruction to apply [an] abstract idea” using generic computer technology) (internal citation omitted); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (noting that using generic computing components like a microprocessor or user interface do not transform an otherwise abstract idea into eligible subject matter); In Appeal 2017-006099 Application 13/936,674 6 re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those functions can be achieved by any general purpose computer without special programming”). As the Request is directed to matters already decided and does not identify any matters overlooked or misapprehended by the Panel, we maintain our decision in this appeal. DECISION We grant the Request to the extent that we have reconsidered the record. The Request for Rehearing is denied. REHEARING DENIED