Ex Parte Barsoba et al

Patent Trial and Appeal Board

Aug 30, 2017

13554705 (P.T.A.B. Aug. 30, 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.
13/554,705 07/20/2012 FERNANDO BARS OB A CAM920110059US2_8150-0281 4749
52021 7590 09/01/2017
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
09/01/2017 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 2017-005112
Application 13/554,7052
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 1—9, 26, and 27. Claims 3, 5, 7, and 8 are indicated to be
1 According to Appellants, the Real Party in Interest is IBM Corporation.
App. Br. 1.
2 Related to Application No. 13/361,124 (Appeal No. 2017-005257). See
App. Br. 1.
Appeal 2017-005112
Application 13/554,705
allowable if rewritten in independent form. Claims 10—25, 28, and 29 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 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method, 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
Claim 1 stands rejected under 35 U.S.C. § 101 because the claim is
directed to an abstract idea without significantly more. Final Act. 2—3.3
Claims 1, 2, 4, 6, 9, 26, and 27 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Palmer (US 5,594,859; Jan. 14, 1997).
Final Act. 3—5.
Claims 3, 5, 7, and 8 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.
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.
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OPINION4
35 U.S.C § 101 Rejection of Claim 1
We adopt the Examiner’s findings and conclusion that claim 1 is
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.
7—13), 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
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 Intf 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.
4 Because Appellants present arguments for claim 1 only (see generally App.
Br. 7—13, Reply Br. 2-4), our decision with respect to claim 1 is dispositive,
and except for our ultimate decision, we do not further address claims 2—9,
26, and 27.
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Application 13/554,705
Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 1353 (Fed. Cir.
2016).
Claim 1 ’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.
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
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). 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 1 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 1
purports to improve computer functioning or “effect an improvement in any
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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. Tflf 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
‘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.
7—13, 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 1.
Anticipation Rejection of Claim 1
We are unpersuaded of error in the Examiner’s rejection of claim 1 as
anticipated by Palmer. We adopt the Examiner’s findings that claim 1 is
anticipated by Palmer (Final Act. 3—4) and the Examiner’s response to
Appellants’ arguments (App. Br. 12—17), which Appellants do not
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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 l’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^]” are themselves “conference calls” that are
“related” by virtue of being part of the “particular video conference.” Ans.
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^]” such that the claim reads 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
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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 1—9, 26, and 27.
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
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