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Patent Trials and Appeals Board

Sep 18, 2020

14341306 - (D) (P.T.A.B. Sep. 18, 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.
14/341,306 07/25/2014 Robert Alvarado 16-31779 2230
25189 7590 09/18/2020
Daniel M. Cislo
Cislo & Thomas LLP
12100 Wilshire Blvd.
Suite 1700
Los Angeles, CA 90025
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/18/2020 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):
admin@cislo.com
pat@cislo.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT ALVARADO, MATTHEW WAPNICK, MARK
WAPNICK, and JASON WOOD
____________________

Appeal 2020-001156
Application 14/341,306
Technology Center 3600
____________________

Before ALLEN R. MacDONALD, MAHSHID D. SAADAT, and
IRVIN E. BRANCH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Rejection of claims 37–42. Appeal Br. 12. Appellant has cancelled claims
1–36. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse, and we enter a new ground of rejection.

1 Appellant identifies the real party in interest is the inventor of the
application, Robert V. Alvarado, Jr. Appeal Br. 3.
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2
CLAIMED SUBJECT MATTER
Claim 37 is illustrative of the claimed subject matter (formatting and
bracketed material added):
37. A method for managing a remote conference having a
plurality of cases and a plurality of participants, comprising:
[A.] providing a conferencing network wherein the conferencing
network includes a moderator computer, a plurality of
remote computers, the plurality of remote computers and
moderator computer interconnected via a management
server;
[B.] wherein the plurality of participants comprises:
(1) a judge participant who is always an active participant
in each of the plurality of cases,
(2) one or more representative participants associated with
each case of the plurality of cases scheduled for
inclusion in the conference,
(3) a moderator participant who is a passive but
controlling participant who designates whether the
representative participants are active or passive
participants, and
(4) public participants who are always passive
participants;
[C.] wherein each of the plurality of participants accesses the
management server by using one of the plurality of remote
computers;
[D.] wherein the management server designates a case from the
plurality of cases as a selected case;
[E.] wherein the management server compares, for the selected
case, the participants accessing the remote conference with
a predefined set of potential participants for the selected case
to determine:
(1) the participants that have appeared,
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(2) the participants who were scheduled to appear but have
not appeared, and
(3) additional participants;
[F.] wherein the management server displays appearance
information for the selected case on the moderator
computer;
[G.] wherein the moderator, based on appearance information for
the selected case; designates the selected case as the active
case, if all of the set of predefined potential participants have
appeared, wherein the representative participants of the
predefined set of potential participants associated with the
selected case are designated as active participants able to
communicate with the judge; and
[H.] wherein the moderator instructs the management server to
designate another case from the plurality of cases as the
selected case, if less than all of the set of predefined potential
participants have appeared.

REFERENCE2
The Examiner relies on the following reference:
Name Reference Date
Ramachandran US 2011/0141951 A1 June 16, 2011

REJECTIONS
A.
The Examiner rejects claims 37–42 under 35 U.S.C. § 103 as being
unpatentable over Ramachandran. Final Act. 3–6.

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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We select claim 37 as the representative claim for this rejection. The
contentions discussed herein as to claim 37 are determinative as to this
rejection. Therefore, except for our ultimate decision, we do not address the
merit of the § 103 rejection of claims 38–42 further herein.
B.
We reject infra claims 37–42 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, i.e., the
claimed invention is directed to patent-ineligible subject matter.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are determinative as to the § 103 rejection on appeal. Therefore, Appellant’s
other contentions are not discussed in detail herein.
A.
The Examiner determines as to steps B and C of claim 37 that
Ramachandran discloses:
wherein the plurality of participants comprises: (1) a judge
participant who is always an active participant in each of the
plurality of cases, (2) one or more representative participants
associated with each case of the plurality of cases scheduled
for inclusion in the conference, (3) a moderator participant
who is a passive but controlling participant who designates
whether the representative participants are active or passive
participants, and (4) public participants who are always
passive participants
(Ramachandran [0027] [0062] where the host may
. . . selectively mute and/or cut audio to participants
by ID . . . and/or by group . . . [0062] and the
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groups are considered to allow for grouping of
cases, or other participants, such as judges, who
may be designated as active throughout the
conference, and further, claim scope is not limited
by claim language that does not require steps to be
performed, such as this limitation, and therefore,
this limitation receives little patentable weight);
wherein each of the plurality of participants accesses the
management server by using one of the plurality of remote
computers
(Ramachandran [0028]-[0031] and Fig. 1 The
participants utilizing the communication devices
21-24 may login to the teleconferencing application
106 and/or may download features a tool 106a-e of
the teleconferencing application 106 [0031] where
application 106 is on server 90)[.]
Final Act. 3–4 (formatting added).
B.
Appellant contends that the Examiner erred in rejecting claim 34
under 35 U.S.C. § 103 because as to steps B and C:
First, nowhere in Ramachandran does the disclosure teach
a judge participant, nor a judge participant who is always an
active participant in each of a plurality of cases. No resemblance
of this role is defined in Ramachandran because in
Ramachandran there would be no need for a role where someone
is always an active participant in every matter of that day. Any
modification to Ramachandran would merely be a reconstruction
of Applicant’s invention with Ramachandran by using the
Applicant’s application as a template.
Pursuant to MPEP § 2142, “impermissible hindsight must
be avoided and the legal conclusion must be reached on the basis
of the facts gleaned from the prior art.” It appears here that the
Examiner has relied upon inappropriate hindsight in making her
obviousness determination as Ramachandran does not appear to
teach, suggest, or even motivate a person of ordinary skill in the
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art to modify this reference. The examiner simply makes a
conclusory statement comparing the selective muting and/or
cutting of audio to participants by ID . . . and/or by group the
“grouping of cases, or other participants, such as judges, who
may be designated as active throughout the conference.”
However, “[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR International
Co. v. Teleflex Inc., 127 S.Ct 1727, 1741 (2007) (citing In re
Khan, 441 F.3d 977, 988 (Fed. Cir. 2006)). The examiner has
not pointed to any language in the prior art or articulated any
reasoning with some rational underpinning indicating that it
would be obvious for a person having ordinary skill in the art to
modify Ramachandran to come up with a judge participant who
is always an active participant in each of a plurality of cases in a
court’s docket.
. . .
Further, nowhere in Ramachandran does the reference
disclose a public participant, nor does Ramachandran define a
role that is always a passive participant. Additionally, the
examiner does not mention the role of a passive participant or a
public participant in her rejection. As stated above, it once again
appears that the examiner has relied upon inappropriate hindsight
in making her obviousness determination as Ramachandran does
not teach, suggest, or even motivate a person of ordinary skill in
the art to modify Ramachandran to add a public participant that
cannot participate in a conference. Also, as stated above, the
cited language from Ramachandran also does not have to do with
a public participant role nor does it the show a fixed participation
privilege of which that role takes on throughout a case, but rather,
pertains to an action of muting and/or cutting audio to arbitrary
participants.
Appeal Br. 14–15.
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C.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the Examiner’s determination
that Ramachandran discloses step C (“each of the plurality of participants
accesses”) fails to account for the impact of the active/passive/controlling
limitations set forth in step B. The Examiner’s analysis treats the limitations
of step B in a vacuum without regard to the impact those limitation have on
subsequent steps. Further, contrary to the Examiner’s determination that
step B is one where “claim scope is not limited by claim language that does
not require steps to be performed,” we determine that the limitations set
forth in step B require that in step C the access by each participant be
specifically limited as set forth in step B.
D.
We conclude, consistent with Appellant’s arguments that there is
insufficient articulated reasoning to support the Examiner’s finding that
Ramachandran discloses the argued steps B and C of claim 37. Therefore,
we conclude that there is insufficient articulated reasoning to support the
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Examiner’s final conclusion that claim 37 would have been obvious to one
of ordinary skill in the art.
E.
Should there be further prosecution before the Examiner, we
recommend the Examiner evaluate the effect under 35 U.S.C. § 103 of the
known practices of a court room. Appellant’s Briefing throughout
acknowledges that such known practices are the template for the claimed
invention. For example:
The present invention was specifically created to operate
in a court environment and has been structured according to
the unique needs of how a courtroom’s daily docket operates.
At the beginning of a court’s daily docket, attorneys will
typically show up before the judge enters the courtroom does and
check in with the clerk. Next, they will take a seat in what is
known as the gallery. At this stage the attorneys may not know
what time their case will be called. Once the attorney’s specific
case has been called by the judge, the attorney must be ready to
appear before the judge on behalf of the client. Once attorneys
are done his or her appearance before the judge, he or she may
either leave or remain in the gallery if he or she has another case
to argue that day.
Additionally, most of the time, members of the public may
attend court hearings and observe the daily docket from the
gallery. Without replicating the court environment by
establishing the roles of each individual that participates in that
environment, a web conferencing system would never be as
effective because the courts are extremely backlogged and busy.
The claim limitations stated above has four main elements
that define the type of participants that exist in the claimed
method and are specifically tailored to simulate how a court
works in real life. First, [it] is the judge participant who is
defined to always be an active participant in each of the plurality
of cases. In other words, the judge will always be active because
the judge needs to be able to speak in every case of the day.
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Appeal Br. 12–13 (emphasis added).

F. NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
37–42 under 35 U.S.C. § 101 because the claimed invention is directed to
patent-ineligible subject matter.
F.1. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. 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. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part 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
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);
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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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
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 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. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now 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 part
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 (quotation marks omitted). “A claim that recites an
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abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (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.
F.2. USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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 One”); and

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
F.3. Panel’s Analysis
F.3.a. 2019 Revised Guidance Step 2A, Prong 1
Our review determines that claim 37 recites managing legal
interactions in a courtroom setting, including the following limitations:
A method for managing a . . . conference having a plurality
of cases and a plurality of participants, comprising:
[A.] providing . . . conferencing . . . ;

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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[B.] wherein the plurality of participants comprises:
(1) a judge participant who is always an active
participant in each of the plurality of cases,
(2) one or more representative participants
associated with each case of the plurality of
cases scheduled for inclusion in the conference,
(3) a moderator participant who is a passive but
controlling participant who designates whether
the representative participants are active or
passive participants, and
(4) public participants who are always passive
participants;
[C.] wherein each of the plurality of participants accesses
the [conference];
[D.] . . . designat[ing] a case from the plurality of cases as a
selected case;
[E.] . . . compar[ing], for the selected case, the participants
accessing the . . . conference with a predefined set of
potential participants for the selected case to determine:
(1) the participants that have appeared,
(2) the participants who were scheduled to appear
but have not appeared, and
(3) additional participants;
[F.] . . . display[ing] appearance information for the selected
case . . .;
[G.] wherein the moderator, based on appearance
information for the selected case; designates the
selected case as the active case, if all of the set of
predefined potential participants have appeared,
wherein the representative participants of the
predefined set of potential participants associated with
the selected case are designated as active participants
able to communicate with the judge; and
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[H.] wherein the moderator . . . designate[s] another case
from the plurality of cases as the selected case, if less
than all of the set of predefined potential participants
have appeared.
Claim 37 (emphasis, formatting, and bracketed material added).
We conclude that these limitations of claim 37 recite a series of steps
for managing a human conference in a courtroom procedure (i.e., a legal
interaction (or more broadly for managing personal behavior or interactions
between people)); and a legal interaction (or more broadly managing
personal behavior or interactions between people) is one of certain methods
of organizing human activity identified in the abstract idea groupings of the
2019 Revised Guidance. 84 Fed. Reg. at 52. Thus, claim 37 recites an
abstract idea.
F.3.b. 2019 Revised Guidance Step 2A, Prong 2
Having determined that claim 37 recites an abstract idea, we now turn
to whether claim 37 is directed to that abstract idea, or instead integrates the
judicial exception into a practical application.
Beyond the abstract ideas discussed above, the only additional
limitations are that (a) the method steps of the abstract idea are performed by
a server, a mediator computer, and remote computers, and (b) a computer
network is used in the conferencing method steps. However, “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice, 573 U.S. at 222–23. The same
is true as to use of a generic computer network to communicate among the
conferencing parties and their server, mediator computer, and remote
computers.
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We determine that as to claim 37, the claimed invention does not
represent a technological improvement in the operation of the claimed
system. We conclude that claim 37 does not integrate the judicial exception
into a practical application. We determine claim 37 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h). We determine that claim 37 is
directed to a judicial exception, and does not integrate the judicial exception
into a practical application.
F.3.c. 2019 Revised Guidance Step 2B
The generic teleconferencing between the parties in claim 37 is well-
understood, routine, and conventional components or functions. The
USPTO has determined that a specification may support a finding that
additional elements are well-understood, routine, and conventional. The
Specification expressly discloses that teleconferencing is know.
Teleconferencing can be an effective way to conduct
meetings between multiple remotely located parties while
avoiding the time and expense of travel. Many businesses have
offices scattered across a wide geographical area, and often
several employees may work closely together on a task while
separated by thousands of miles. With teleconferencing, multiple
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employees can collaborate on a single task as if they were in the
same room, regardless of their geographic location. While
commonly referred to as teleconferencing, some collaborative
conference systems may allow conferencing via typed text, such
as a chat room, audio, such as a phone conference, or even video,
such as a video chat room.
Spec. ¶ 2. The Specification at paragraph 3 speaks further to “current
conferencing systems” and “existing conferencing systems.”
As to the claimed “network,” receiving or transmitting data over a
network is well-understood, routine, and conventional. Intellectual Ventures
v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (utilizing an
intermediary computer to forward information). Further, as to the “server”
and “computers,” mere recitation of a processor or computer alone is
insufficient. E.g., Alice, 573 U.S. at 222–23. Therefore, claim 37 fails to
provide an inventive concept beyond the abstract idea, whether the
additional limitations are considered individually or in combination.
We determine that in addition to the abstract idea, claim 37 recites
only well-understood, routine, conventional elements/functions/combination
of elements and/or functions previously known in the remote conferencing
industry. We determine that beyond the abstract idea, the claims do not
recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity in the field or
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
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F.3.d. Claims 38–42
As to claims 38–42, we conclude that they similarly recite a series of
steps for managing a human in a courtroom procedure (i.e., a legal
interaction (or more broadly for managing personal behavior or interactions
between people)); and a legal interaction (or more broadly managing
personal behavior or interactions between people) is one of certain methods
of organizing human activity identified in the 2019 Revised Guidance, and,
thus, an abstract idea. 84 Fed. Reg. at 52. For substantially the same
reasons discussed above, we do not find that these claims recited additional
elements integrating the identified abstract idea into a practical applications
or amounting to significantly more than the identified abstract idea.

CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 37–42 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejections of claims 37–42 as being unpatentable
under 35 U.S.C. § 103 are reversed.
We newly reject claims 37–42 under 35 U.S.C. § 101 as directed to
patent ineligible subject matter without significantly more.
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DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
37–42 103 Ramachandran 37–42
37–42 101 Eligibility 37–42
Overall
Outcome
37–42 37–42

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R. 41.50(b)