Bruce Kelly. Jackson et al.

Patent Trials and Appeals Board

Sep 10, 2019

12141523 - (D) (P.T.A.B. Sep. 10, 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.
12/141,523 06/18/2008 Bruce Kelly JACKSON QC061513 5507
12371 7590 09/10/2019
Muncy, Geissler, Olds & Lowe, P.C./QUALCOMM
4000 Legato Road, Suite 310
Fairfax, VA 22033
EXAMINER
SHAIKH, MOHAMMAD Z
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
09/10/2019 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):
meo.docket@mg-ip.com
meo@mg-ip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRUCE KELLY JACKSON, MARK LESLIE CAUNTER, and
STEVEN GEACH
____________

Appeal 2017-011555
Application 12/141,5231
Technology Center 3600
____________

Before ERIC S. FRAHM, CATHERINE SHIANG, and
CARL L. SILVERMAN, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–58, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellants identify QUALCOMM Incorporated as the real party in
interest. App. Br. 3.
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Application 12/141,523

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STATEMENT OF THE CASE
Introduction
The present invention relates to “interactive workspaces and
ubiquitous computing. More particularly, it pertains to an infrastructure for
a population of disparate computing platforms to readily utilize one or more
separate search services located in a distributed system whose results can
generate revenue to an operator.” Spec. ¶ 2. Claim 1 is exemplary:
1. A method for facilitating a rated, distributed search at a network
device, comprising:

defining, by the network device, a search rating bid process in a tuple
space;

placing, by the network device, a search object in the tuple space
based upon a search query from a client device received over a network,
wherein the search object contains at least one search descriptor generated
from the search query;

detecting, by the network device, a plurality of search result objects
placed in the tuple space, wherein each search result object of the plurality
of search result objects includes search results returned by a search engine of
a plurality of search engines when the search engine performs a search based
on the at least one search descriptor in the search object;

receiving, by the network device, at least one rating bid associated
with a selected one of the plurality of search result objects from an
originating entity, wherein the at least one rating bid is for preferential
placement of at least one search result included in the selected one of the
plurality of search result objects; and

transmitting, by the network device, the plurality of search result
objects to the client device over the network with the at least one search
result prominently ranked.

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Rejection2
Claims 1–58 are rejected under 35 U.S.C. § 101 because they are
directed to patent-ineligible subject matter. Final Act. 20–24.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contentions that the Examiner erred in this case.
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. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of

2 Throughout this opinion, we refer to the (1) Final Office Action mailed
November 25, 2017 (“Final Act.”); (2) Appeal Brief filed April 18, 2017
(“App. Br.”); (3) Examiner’s Answer mailed July 24, 2017 (“Ans.”); and (4)
Reply Brief filed September 14, 2017 (“Reply Br.”).
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
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commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
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) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th ed., rev.
08.2017, 2018) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(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. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Turning to Step 2B of the Guidance, “[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’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) and
Alice, 573 U.S. at 225). “Whether something is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination.” Berkheimer, 881 F.3d at 1369.
In this case, the Examiner makes factual findings about “routine and
conventional” steps of the claims and asserts “[t]here is no requirement to
provide evidence. Unlike 102 and 103, which is evidenced based, 101 is a
question of law and evidence is not required.” Ans. 10–12, 15. Appellants
argue “whether or not specific claim features are ‘well-understood, routine
and conventional’ is a factual analysis that must be based on evidence” and
“the Examiner has not provided any reasoned explanation or actual evidence
to show various claim features as being well-understood, routine and
conventional, but rather, has simply alleged that ‘no evidence is required.’”
Reply Br. 11–12.
We agree with Appellants, because the Examiner has not provided
sufficient evidence required by Berkheimer to support the “routine and
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conventional” factual findings. See Berkheimer, 881 F.3d at 1369. In
particular, the Memorandum of Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (“Berkheimer Memorandum”) requires
the information listed below:
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). . . .
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). . . .
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the
additional element(s). . . .

Berkheimer Memorandum at 3–4. But the Examiner has not provided any of
the four categories of information required by the Berkheimer
Memorandum.
Therefore, the Examiner erred with respect to Step 2B of the
Guidance, and we are constrained by the record to reverse the Examiner’s
rejection of independent claims 1, 14–17, 30, and 43–46, and corresponding
dependent claims 2–13, 18–29, 31–42, and 47–58 on procedural grounds.

DECISION
We reverse the Examiner’s decision rejecting claims 1–58.
REVERSED