Angela Richards. Jones

Patent Trials and Appeals BoardJul 30, 2020

12236253 - (R) (P.T.A.B. Jul. 30, 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. 12/236,253 09/23/2008 ANGELA RICHARDS JONES RSW920080143US1 8152-0280 7553 73109 7590 07/30/2020 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, FL 33498 EXAMINER DELICH, STEPHANIE ZAGARELLA ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 07/30/2020 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 ANGELA RICHARDS JONES ____________ Appeal 2018-008427 Application 12/236,253 Technology Center 3600 ____________ Before HUBERT C. LORIN, BRADLEY B. BAYAT, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE The Appellant1 filed a Request for Rehearing (“Request” or “Req.”) pursuant to 37 C.F.R. § 41.52, on June 15, 2020. The Request seeks reconsideration of our Decision on Appeal, mailed April 29, 2020 (“Decision” or “Dec.”) affirming the Examiner’s rejection of claims 21–37 and 39–41 under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. We have jurisdiction over the Request under 35 U.S.C. § 6(b). 1We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appeal 2018-008427 Application 12/236,253 2 APPLICABLE REQUEST FOR REHEARING RULES The Appellant “may file a single request for rehearing within two months of the date of the original decision of the Board.” 37 C.F.R. § 41.52(a)(1). “Arguments not raised, and Evidence not previously relied upon . . . are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4).” Id. Permitted new arguments are limited to: (a) new arguments based upon a recent relevant decision of either the Board or a Federal Court; (b) new arguments responding to a new ground of rejection designated pursuant to § 41.50(b); or (c) new arguments that the Board’s decision contains an undesignated new ground of rejection. See 37 C.F.R. § 41.52(a)(2)–(4). THE APPELLANT’S ASSERTIONS In the instant case, the Appellant does not dispute our conclusion that the claims are directed to a patent-ineligible abstract idea under 35 U.S.C. § 101. See generally Request. Rather, the Appellant argues the Decision contains an undesignated new ground of rejection. Id. Specifically, the Appellant provides four reasons for their assertion that by applying the REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”), “the Board relied upon findings and legal rationales for which Appellants have not have a fair opportunity to address” and thus should have designated a new ground of rejection “pursuant to 37 § 34 41. 50(b)” (Req. 5): (1) the Board “asserts ‘the Examiner determines that the additional elements or combination of elements do not integrate this exception into a Appeal 2018-008427 Application 12/236,253 3 practical application’,” but does not “cite[] to any portion of the appealed Office Action to support such a finding” (id. at 4–5 (quoting Dec. 7–8)); (2) the Board performs “new analysis as to what elements recite the judicial exception (i.e., Prong One of Revised Step 2A) [of the Revised Guidance] constitutes a new grounds of rejection to which Appellants have not had a fair opportunity to respond” (id. at 6); (3) the Board “presents substantial analysis to support a finding that ‘claim 21 does not contain an element that imposes a meaningful limit on the abstract idea that integrates the abstract idea into a practical application’” with “analysis and accompanying findings [that] were not presented by the Examiner in either the appealed Office Action or the Examiner’s Answer. Consequently, Applicants have not had the opportunity to respond to the changed thrust of the rejection” (id. at 7); and (4) the Board “reli[ies] upon new case law in support of the Board’s Prong One analysis constitutes a new grounds of rejection” (id.). ANALYSIS As an initial matter, the Appellant’s arguments are not persuasive because “[w]hether a claim is drawn to patent-eligible subject matter under 35 U.S.C. § 101 is a question of law, which we review de novo. SRI Int’l., Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1302 (Fed. Cir. 2019).” In re Rudy, 956 F.3d 1379, 1383 (Fed. Cir. 2020)). Office guidance, such as the Revised Guidance, “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.” Revised Guidance, 84 Fed. Reg. at 51. But the “guidance does not constitute Appeal 2018-008427 Application 12/236,253 4 substantive rulemaking and does not have the force and effect of law.” Id. Instead, “[r]ejections will continue to be based upon the substantive law[.]” Id.; see also Rudy, 956 F.3d at 1382 (“Office Guidance is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding on our patent eligibility analysis.”). Additionally, for the reasons that follow, we disagree with the Appellant that the Decision contains an undesignated new ground of rejection. Whether there is a new ground of rejection depends upon whether the basic thrust of a rejection has remained the same. See In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976). A new ground of rejection may be present when a decision by the Board relies upon new facts or a new rationale not previously raised to the Appellant. See In re Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013) (quoting In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011). The rejection on appeal, however, need not be repeated in haec verba to avoid being considered a new ground of rejection. See id. For example, a decision does not contain a new ground of rejection just because it elaborates or explains a rejection, thoroughly responds to an appellant’s arguments using different language, or restates the reasoning of the rejection in a different way—so long as the “basic thrust of the rejection” is the same. In re Kronig, 539 F.2d at 1303; see also In re Jung, 637 F.3d 1356, 1364–65 (Fed. Cir. 2001) (additional explanation responding to arguments offered for Appeal 2018-008427 Application 12/236,253 5 the first time “did not change the rejection” and appellant had fair opportunity to respond).2 Here, the basic thrust of the Examiner’s rejection of claims 21–37 and 39–41 under 35 U.S.C. § 101 has not changed. The legal basis and rationale provided for this rejection in each of the Final Office Action, the Examiner’s Answer, and the Decision follow judicial precedent.3 Under the first step of the Mayo/Alice framework, the Final Office Action, Examiner’s Answer, and Decision each determines that the claims are directed to an abstract idea. See Final Act. 8–12; Ans. 3–4; Dec. 7, 10–11 (explaining why the Examiner’s Step 2A analysis was reasonable). Under the second step of the Mayo/Alice framework, the Final Office Action, the Examiner’s Answer, and the Decision each determines that the limitations of the claims, taken individually and as an ordered combination, do not amount to significantly more than the abstract idea. See Final Act. 12–13; Ans. 7–8; Dec. 16–21 (explaining why the Examiner’s Step 2B analysis was reasonable). “While 2 See also In re Noznick, 391 F.2d 946, 949 (CCPA 1968) (no new ground of rejection made when “explaining to appellants why their arguments were ineffective to overcome the rejection made by the examiner”); In re Krammes, 314 F.2d 813, 817 (CCPA 1963) (“It is well established that mere difference in form of expression of the reasons for finding claims unpatentable or unobvious over the references does not amount to reliance on a different ground of rejection.”); In re Cowles, 156 F.2d 551, 555 (CCPA 1946) (holding that the use of “different language” does not necessarily trigger a new ground of rejection). 3 See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012); see also, e.g., In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016) (to determine whether an invention claims ineligible subject matter, one applies “the now- familiar two-step test introduced in Mayo, and further explained in Alice”) (citation omitted). Appeal 2018-008427 Application 12/236,253 6 the Board’s explanation may go into more detail than the examiner’s, that does not amount to a new ground of rejection.” In re Adler, 723 F.3d 1322, 1327–28 (Fed. Cir. 2013) (citing Jung, 637 F.3d at 1365). With respect to the Revised Guidance Step 2A, Prong One, the Decision relies on representative claim 21’s limitations to determine that the claims recite an abstract idea “consistent with the Examiner’s characterization.” Dec. 9–10. The Examiner similarly relied on the claimed limitations. See Final Act. 8. The Decision identifies each step of claim 21 as corresponding to an abstract idea in the category of “[c]ertain method[] of organizing human activity . . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” Dec. 9–10. This tracks the Examiner’s rejection, which specifically lists the limitations and discusses how those limitations recite an abstract idea of “a method of organizing human activities related to event planning and calendar management.” Final Act. 9; see also id. at 8 (listing the limitations and determining “[t]he claimed limitations recite the abstract idea of transmitting and receiving event scheduling related communications to prevent scheduling conflicts and managing calendar event data structures”); 9–11 (determining the Appellant’s claims to be “similar to the concepts of Plant Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. Aug. 26, 2014),” “like those of Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, . . . (Fed. Cir. 2016),” and that “the limitations for forwarding and receiving event details, responses, and notifications over a computer network and updating event data in a calendaring application limitations . . . are analogous to those of Appeal 2018-008427 Application 12/236,253 7 Accenture Global Services, GmbH v. Guidewire Software, 728 F.3d 1336 . . . (Fed. Cir. 2013)”). That we provided some additional facts from the Specification as background for the invention and cited to different judicial decisions than those cited by the Examiner for concepts similar to the Appellant’s claims do not change the basic thrust of our analysis or the relevant law. See Dec. 9–11; cf. Req. 7 (arguing that the citations to other cases is a “reliance upon new case law”). We note that the Appellant “neither points to specific facts found by the Board but not by the examiner, nor illustrates how any such facts formed the basis of the Board’s rejection.” Adler, 723 F.3d at 1327. Further, that the Board’s organization of the analysis in determining whether the claims recite and are directed to an abstract idea under the first step of the Mayo/Alice framework have been different from the Examiner’s organization, i.e., “the Examiner’s analysis began with the conclusion that the claim was ‘directed to a judicial exception’ without first identifying the ‘the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea’” (Req. 6 (footnote omitted)), does not change the thrust of the rejection. With respect to Revised Guidance Step 2A, Prong Two, each of the Decision’s so-called “new analysis and accompanying findings” (Req. 7) were previously addressed by the Examiner, albeit using different language. First, the Decision does not “assert[] ‘the Examiner determines that the additional elements or combination of elements do not integrate this exception into a practical application.’” Req. 5. Rather, the Decision states “[t]he Examiner also determines that the elements of the claim ‘utiliz[e] a Appeal 2018-008427 Application 12/236,253 8 computer as a tool to automate tasks that could be evaluated and performed the same way manually by a person following the workflow.’ Ans. 5; see also Final Act. 10 (‘the claims recite generic computer structure’).” Dec. 7. The Decision then characterizes the Examiner’s determination “[w]hen viewed through the lens of the 2019 Revised Guidance, Step 2A, Prong 2” as a determination “that the additional elements or combination of elements do not integrate the exception into a practical application because it ‘merely uses a computer as a tool to perform an abstract idea’.” Id. at 7–8 (quoting 84 Fed. Reg. at 54–55). Second, the Decision relies on the Examiner’s observations that the additional elements are generic computer components. Dec. 11–12 (citing Final Act. 12; Ans. 7–8). The Appellant’s arguments that the claims improved a computer technology, or as the Revised Guidance phrases it under Step 2A, Prong Two, “reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” (84 Fed. Reg. at 55) (see Appeal Br. 10–11; Reply Br. 3–6) were considered by both the Examiner (see Ans. 4–5) and the Board (see Dec. 13–15). As our discussion above makes clear, the Examiner effectively set forth a Step 2A, Prong Two analysis, because the Final Office Action and the Examiner’s Answer adequately considered and addressed the relevant factors discussed in the Revised Guidance. See Revised Guidance, 84 Fed. Reg. 54–55, 55 nn.25, 27–30 & 32. That the Examiner’s analysis did not include the specific phrase “practical application” and at times used language slightly different from that of the Revised Guidance does not change our view. Appeal 2018-008427 Application 12/236,253 9 With respect to the second step of the Mayo/Alice framework and Step 2B of Office Guidance, each of the Final Office Action, the Examiner’s Answer, and the Decision determines that the additional elements recited in the claims, considered alone and in combination, do not amount to an inventive concept. See Final Act. 11–13 (determining that “the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment; the claims merely amount to the application or instructions to apply the abstract idea on a computer; and the claims amount to nothing more than requiring a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the data analysis industry”); Ans. 8 (“Step 2B of the analysis is clearly performed and identifies the computer, display, hardware storage and computer network as the additional elements and considered them both individually and as whole and describes that they set forth a generic computer that merely implements the abstract idea.”); accord Dec. 16–21. Therefore, the basic thrust of the Office’s position in rejecting claims 21–37 and 39–41 under 35 U.S.C. § 101 has remained the same from the Final Office Action to the Examiner’s Answer to the Decision on Appeal. That the Examiner did not use language identical to the current Office Guidance in analyzing the claimed invention for patent subject matter eligibility does not amount to a new ground of rejection. See Leithem, 661 F.3d at 1319. And any additional discussion in the Decision relative to the issue at hand amounts only to an elaboration on the rationale set forth in the Appeal 2018-008427 Application 12/236,253 10 Examiner’s Final Office Action and Answer. See Jung, 637 F.3d at 1364–65. Thus, we have considered the arguments raised by the Appellant in the Request,4 but the Appellant has not persuaded us that the Decision contains an undesignated new ground of rejection. Although we have considered the Decision in light of the Request for Rehearing, we decline to modify the Decision in any respect. CONCLUSION Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Basis Granted Denied 21–37 39–41 101 Eligibility 21–37 39–41 Final Outcome of Appeal After Rehearing: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed New Ground 21–37 39–41 101 Eligibility 21–37 39–41 DENIED 4 We note the Appellant’s references to various decisions by other panels of the Board. Req. 8–9. However, we note that we are not, in any event, bound by a non-precedential decision of another panel of the Board.