Ex Parte Barsoba et al

Patent Trial and Appeal Board

Aug 31, 2017

13361124 (P.T.A.B. Aug. 31, 2017)

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.
13/361,124 01/30/2012 FERNANDO BARS OB A CAM920110059US1_8150-0125 5585
52021 7590 09/05/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
KING, SIMON
ART UNIT PAPER NUMBER
2653
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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 FERNANDO BARSOBA, DAVID T. BRITT, and
ANDREW J. SIMMERING1
Appeal 2017-005257
Application 13/361,1242
Technology Center 2600
Before ERIC B. CHEN, IRVIN E. BRANCH, and NABEEL U. KHAN,
Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 12—17 and 20-27. Claims 14, 16, 22, and 24 are
indicated to be allowable if rewritten in independent form. Claims 1—11, 18,
1 According to Appellants, the Real Party in Interest is IBM Corporation.
App. Br. 1.
2 Related to Application No. 13/554,705 (Appeal No. 2017-005112). See
App. Br. 1.
Appeal 2017-005257
Application 13/361,124
19, and 28—31 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to generating visualizations of a plurality of
conference calls. Spec. Abstract.
Claim 12, reproduced below, is illustrative of the claimed subject
matter:
12. A system, comprising:
a processor configured to initiate executable operations
comprising:
conducting a plurality of related conference calls;
generating a visualization for each conference call;
and
sending the visualizations to computing devices of
participants of the plurality of conference calls
concurrently with the plurality of conference calls.
REFERENCE AND REJECTIONS
Claims 12 and 20 stand rejected under 35 U.S.C. § 101 because the
claims are directed to an abstract idea without significantly more. Final Act.
Claims 20-25 stand rejected under 35 U.S.C. § 101 for the additional
reason that the claims are directed to transitory media. Id. 3^4.
3 Should further prosecution ensure, the Examiner might consider whether
the remaining claims also are directed to an abstract idea without
significantly more and therefore unpatentable under 35 U.S.C. § 101.
2
Appeal 2017-005257
Application 13/361,124
Claims 12, 13, 15, 17, 20, 21, 23, and 25—27 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Palmer (US 5,594,859; Jan. 14,
1997). Final Act. 5-7.
Claims 14 and 16 are objected to as being dependent upon a rejected
base claim, but are said to be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims.
Id. 3.4
OPINION5
35 U.S.C § 101 Rejection of Claims 12 and 20 Based on Abstract Idea
We adopt the Examiner’s findings and conclusion that claims 12 and
20 are unpatentable as directed to non-statutory subject matter (Final Act.
2—3), and the Examiner’s response (Ans. 2—3) to Appellants’ arguments
(App. Br. 8—14), which Appellants do not persuasively rebut (see generally
Reply Br. 2—4). We highlight the following for emphasis.
Appellants argue “the Examiner cannot and has not explained why the
alleged abstract idea ‘corresponds to a concept that the courts have identified
as an abstract idea’” because “the Examiner cites to no court decision to
support the Examiner’s assertion that the claimed invention is directed to an
4 The Examiner’s statement of allowable subject matter also includes claims
22 and 24. Final Act. 5. As Appellants appear to realize, however (see App.
Br. 2 (“[cjlaims 14 and 16 have been [said to be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims]”)), rewriting claims 22 and 24 would not cure the 35
U.S.C. § 101 rejection based on the claims being directed to transitory media
and therefore unpatentable under 35 U.S.C. § 101.
5 Because Appellants argue only claims 12 and 20 with particularity (see
generally App. Br. 8—31, Reply Br. 2—11), our decision with respect to
claims 12 and 20 is dispositive, and except for our ultimate decision, we do
not further address claims 13—17 and 22—27.
3
Appeal 2017-005257
Application 13/361,124
abstract idea.” Reply Br. 3. Appellants’ arguments do not persuade us of
error.
Methods of organizing human activity are abstract ideas. Alice Corp.
Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355-56 (2014). The Federal
Circuit has held that if a method can be performed by human thought alone,
or by a human using pen and paper, it is merely an abstract idea and is not
patent-eligible under § 101. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method that can be performed
by human thought alone is merely an abstract idea and is not patent-eligible
under § 101.”). Similarly, the Federal Circuit has found claims directed to
“collecting information, analyzing it, and displaying certain results of the
collection and analysis” as directed to a patent-ineligible abstract idea.
Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 1353 (Fed. Cir.
2016).
Claim 12’s “conducting a plurality of related conference calls” is
directed to organizing human activity. Alice 134 S. Ct. at 2355—56.
“[Generating a visualization for each conference call” “can be performed by
human thought alone.” CyberSource 654 F.3d at 1373. “[SJending the
visualizations to computing devices of participants of the plurality of
conference calls concurrently with the plurality of conference calls” amounts
to “collecting information, analyzing it, and displaying certain results of the
collection and analysis.” Electric Power 830 F.3d at 1353. Accordingly,
claim 1 amounts to a mere abstract idea and is patent-ineligible in
accordance with Federal Circuit precedence. Similar reasoning applies to
claim 20.
4
Appeal 2017-005257
Application 13/361,124
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice 134
S. Ct. at 2355. This is a search for an ‘“inventive concept”’—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id. The question is
whether the implementation of the abstract idea involves more than the
performance of well-understood, routine, and conventional activities
previously known to the industry.
Claim 12 recites generic computer functions (i.e., “conducting,”
“generating,” and “sending”) that are well-understood, routine, and
conventional activities previously known to the industry. Nothing in claim
12 purports to improve computer functioning or “effect an improvement in
any other technology or technical field.” Alice, 134 S. Ct. at 2359. There is
no indication that the computers used in the invention are anything other
than general purpose computers. See, e.g., Spec. ]Hf 27—30.
Moreover, the claim is not adequately tied to “a particular machine or
apparatus” and therefore a “process” that applies the abstract idea. Bilski v.
Kappos, 561 U.S. 593, 602 (2010) (quoting In re Bilski, 545 F.3d 943, 954
(C.A. Fed.2008) (en banc) (“an invention is a ‘process’ only if: ‘(1) it is tied
to a particular machine or apparatus, or (2) it transforms a particular article
into a different state or thing.’”)). The claim does not, for example, require
the conduct of the conference calls, the generation of the visualizations, or
the sending of the visualizations to involve any “particular machine or
apparatus.” We agree with the Examiner that “[t]he cited functions of
5
Appeal 2017-005257
Application 13/361,124
‘conducting’, ‘generating’ and ‘sending’ require no more than a generic
computer to perform ... generic processor/computer fimction[s] that are
well-understood, routine and conventional.” Ans. 3. Nor does the claim
“transform an article.” Id. Appellants’ arguments (see generally App. Br.
8—14, Reply Br. 2—A) do not persuasively rebut the Examiner’s reasoning.
Accordingly, we sustain the Examiner’s non-statutory subject matter
rejection of claim 12 and of claim 20 for similar reasons.
35 U.S.C § 101 Rejection of Claim 20 Based on Transitory Media
Claim 20 recites “a computer readable storage medium having
computer readable program code embodied therewith.” The Examiner finds
the claim is directed to non-statutory subject matter because the claim
includes a transitory embodiment. See Final Act. 3—4, Ans. 3—A.
Specifically, the Examiner finds “[Appellants’ Spec 119] does not exclude
the claimed computer readable storage medium from transitory medium; and
[119] fails to state the claimed computer readable storage medium is a non-
transitory medium.” We agree.
By way of illumination, Appellants’ Specification states a “computer
readable signal medium may include a propagated data signal with computer
readable program code embodied therein.” Spec. 119 (emphasis added).
Appellants’ Specification also states “[t]he computer readable medium may
be a computer readable signal medium or a computer readable storage
medium.” Id. 118 (emphasis added). Notable, these passages place no
meaningful limits on what else besides “computer readable signal medium
or a computer readable storage medium” the “computer readable medium”
may include because “may” is not limiting. Similarly, because Appellants
6
Appeal 2017-005257
Application 13/361,124
state “a computer readable storage medium may be any tangible medium that
can contain, or store a program for use by or in connection with an
instruction execution system, apparatus, or device” {id. (emphasis added)),
Appellants place no limit on what “a computer readable storage medium”
may be.
Further, Appellants state “computer readable signal medium may be
any computer readable medium that is not a computer readable storage
medium and that can communicate, propagate, or transport a program for
use by or in connection with an instruction execution system, apparatus, or
device” {id. 119 (emphasis added)), which does not disclaim transitory
media from the scope of claim 20’s “computer readable storage medium.”
The passage defines what “computer readable signal medium” may not be,
which includes “a computer readable storage medium,” but does not limit “a
computer readable storage medium” from being something other than
“computer readable signal medium.”
Notably, Appellants point us to no construction of “computer readable
storage medium having computer readable program code embodied
therewith” that disclaims transitory embodiments.
Accordingly, Appellants have not persuaded us that the Examiner’s
broad interpretation of “computer readable storage medium having computer
readable program code embodied therewith” is unreasonable. See In re Am.
Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Rather,
where, as here, Appellants’ preferred construction depends on imprecise
interpretation of expansive language in Appellants’ Specification, we find
the Examiner’s suggestion that Appellants amend claim 20 “by adding the
limitation ‘non-transitory’ to the claim” (Final Act. 4) reasonable.
7
Appeal 2017-005257
Application 13/361,124
Appellants always have the opportunity to amend the claims during
prosecution, and broad interpretation by the Examiner reduces the possibility
that the claim, once issued, will be interpreted more broadly than is justified.
In re Prater, 415 F.2d 1393, 140A-05 (CCPA 1969).
Anticipation Rejection of Claim 126
We are unpersuaded of error in the Examiner’s rejection of claim 12
as anticipated by Palmer. We adopt the Examiner’s findings that claim 12 is
anticipated by Palmer (Final Act. 3—4) and the Examiner’s response to
Appellants’ arguments (App. Br. 12—17), which Appellants do not
persuasively rebut (see generally Reply Br. 4—9). We highlight the
following for emphasis.
Appellants do not persuasively rebut the Examiner’s finding (Final
Act. 3 (citing, among other things, Palmer 9:1—27)) that claim 1 ’s
“conducting a plurality of related conference calls” reads on the following
from Palmer: “each workstation participating in a particular video
teleconference establishes and maintains a two-way video teleconference
connection with each other workstation in the teleconference.” Palmer
9:13—17. We agree with the Examiner that the three “two-way video
teleconference connection[s]” are themselves “conference calls” that are
“related” by virtue of being part of the “particular video conference.” Ans.
6 Although Appellants’ present arguments with respect to claim 12’s
anticipation rejection only (see App. Br. 27—31, Reply Br. 7—11), we read
Appellants’ statement that “claims 2, 4, 6, 9, and 26—27 stand or fall together
with independent claim 1” (App. Br. 26) as if it reads “claims 13, 15, 17, 20,
21, 23, and 25—27 stand or fall together with independent claim 12” for
purposes of the anticipation rejection of claims 13, 15, 17, 20, 21, 23, and
25-27.
8
Appeal 2017-005257
Application 13/361,124
5—6. Appellants do not direct us to persuasive evidence that claim 1 ’s
“plurality of related conference calls” precludes Palmer’s plurality of “two-
way video teleconference connection[s]” such that the claim does not read
on the express disclosure of Palmer, as the Examiner finds.
We also note that Palmer describes “a teleconference participant can
control what each other participant receives from that workstation, e.g.,
muting audio or pausing video to certain participants while remaining active
to other participants.” Palmer 9:17—20 (cited by the Examiner (see Final
Act. 3)). This independent functionality with respect to each of the two-way
teleconference connections demonstrates that they are themselves separately
controllable “conference calls” consistent with the Examiner’s findings.
This undermines Appellants’ arguments to the contrary. See generally App.
Br. 14—17; Reply Br. 4—9.
We also agree with the Examiner that “generating a visualization for
each conference call; and sending the visualizations to computing devices of
participants of the plurality of conference calls concurrently with the
plurality of conference calls” reads on the visualizations depicted in Figures
2(c), 26(d), and 26(f) for the reasons stated by the Examiner. Ans. 4—5.
DECISION
In view of the foregoing, we affirm the Examiner’s rejection of or
objection to claims 12—17 and 20-27.
9
Appeal 2017-005257
Application 13/361,124
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
10