Ex Parte Brown et al

Patent Trial and Appeal BoardFeb 25, 2019

11939923 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 11/939,923 11/14/2007 Harlan Kent Brown 46296 7590 02/27/2019 MARTIN & ASSOCIATES, LLC P.O. BOX548 CARTHAGE, MO 64836-0548 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ROC920070292US 1 6845 EXAMINER HILLERY, NATHAN ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 02/27/2019 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): derekm@ideaprotect.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HARLAN KENT BROWN, V ANADIS MACK CRAWFORD, JOHN EDWARD PETRI, and LEAH RAE SMUTZER Appeal2017-001698 Application 11/939,923 Technology Center 3700 Before STEFAN STAICOVICI, EDWARD A. BROWN, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's non-final rejection of claims 1, 3, 5-14, and 17-20, which are all of the claims pending in this application. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm-in-part. 1 According to Appellants, the real party in interest is International Business Machines Corporation. App. Br. 1. 2 Claims 2, 4, 15, and 16 have been canceled. See App. Br. 21, 25. Appeal2017-001698 Application 11/939,923 INVENTION Appellants' invention relates to generating schema-specific DITA specializations during generic schema transformations. Abstract. Claim 1 is illustrative and reads as follows: 1) A computer system for producing documentation from customized extensible mark-up language (XML) comprising: at least one processor; a memory coupled to the at least one processor; a schema associated with a customized XML file residing in the memory; and a transformation engine that generates a schema-specific Darwin Information Typing Architecture (DITA) specialization from the schema; wherein the transformation engine also produces a transform from the schema that when applied to the XML file produces a DITA file that follows the rules of the DITA specialization; and wherein the DITA specialization and the DITA file are used to generate documentation for the customized XML file. REJECTIONS Claims 1, 3, 5-14, and 17-20 stand rejected under 35 U.S.C. Â§ 101 as directed to a judicial exception without significantly more. Non-Final Act. 2---6. Claims 14 and 17-20 stand rejected under 35 U.S.C. Â§ 101 as encompassing a non-statutory signal. Non-Final Act. 6. Claims 1, 3, 5-14, and 17-20 stand rejected under pre-AIA 35 U.S.C. Â§ 112, second paragraph, as indefinite. Non-Final Act. 7-11. Claims 9, 12, and 13 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Donald M. Leslie, Transforming Documentation from the XML Doctypes Used for the Apache Website to DITA: A Case Study, SIGDOC'Ol, October 21-24, 2001 ("Leslie"). Non-Final Act. 12-14. 2 Appeal2017-001698 Application 11/939,923 Claims 1, 3, 6, 14, and 18 3 stand rejected under pre-AIA 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Leslie and Ames et al. (US 2007/0136400 Al; published June 14, 2007) ("Ames"). Non-Final Act. 14-- 18. ANALYSIS Rejection of Claims 1, 3, 5-14, and 17-20 underÂ§ 101 (Judicial Exception) An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bankint'l, 573 U.S. 208, 216 (2014). 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 intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 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 3 In the Answer, the Examiner withdrew the rejection of claims 5, 7, 8, 10, 11, 17, 19, and 20 under 35 U.S.C. Â§ I03(a). Ans. 2. 3 Appeal2017-001698 Application 11/939,923 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, 193 (1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 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 176; 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 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." ( emphasis omitted)). If the claim is "directed to" an abstract idea, we tum 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 4 Appeal2017-001698 Application 11/939,923 concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 (internal quotation marks 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 USPTO recently published revised guidance on the application of Â§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Guidance"). Under that 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 interactions such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.05(a}-(c), (e}-(h)) (9th ed. 2018). 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: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP Â§ 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. 5 Appeal2017-001698 Application 11/939,923 See 2019 Guidance. Patent eligibility under 35 U.S.C. Â§ 101 is a question of law that is reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). Here, the Examiner concluded the claims are abstract because they are directed to "collecting and comparing known information," "obtaining and comparing intangible data," "comparing new and stored information and using rules to identify options," "using categories to organize, store and transmit information," and "data recognition and storage." Non-Final Act. 3--4. The Examiner concluded claim 1 recites a mental process that can be performed in the human mind or by a human using pen and paper. Id. at 4. Final Act. 5. Appellants contend the Examiner erred because, given the specific limitations in the claims relating to a schema, producing a transform that when applied to the XML file produces a DITA file that follows the rules of the DITA specialization, and using the DITA specialization and the DITA file to generate documentation for the customized XML file, the limitations are not abstract. App. Br. 5. Appellants also argue "the claims are not directed to something that a human could perform or create." Id. at 7. Step 2A, Prong One - Recited Judicial Exception Step 2A of the 2019 Guidance is a two-prong inquiry. In Prong One we evaluate whether the claim recites a judicial exception. For abstract ideas, Prong One represents a change as compared to prior guidance because we here determine whether the claim recites mathematical concepts, certain methods of organizing human activity, or mental processes. 6 Appeal2017-001698 Application 11/939,923 We conclude at least the following limitation of claim 1 recites a mental process that practically could be performed via pen and paper or in a person's mind: wherein the transformation engine also produces a transform from the schema .... App. Br. 21 (Claim App'x). We agree with the Examiner that Appellants' Specification describes that "the normal process for documenting the information contained in these files would be to write an XSL transform for each file to generate HTML output (or other suitable output, such as PDF)." Ans. 6 ( citing Spec. ,r 6). The Specification describes that "the task of producing a configuration specification is especially daunting after a large set of complex XML configuration files have been customized" and "it is very time consuming to have to create an XSL transform by hand for every possible schema in which the documentation of XML instance data is required." Spec. ,r 6 (emphasis added). Similar limitations are recited in claim 9 ("generating a transform") and claim 14 ("wherein the transformation engine also produces an XSL transform from the schema"). Because we conclude the independent claims recite an abstract idea, we proceed to Prong Two to determine whether the claims are "directed to" the judicial exception. Step 2A, Prong Two -Practical Application If a claim recites a judicial exception, in Prong Two we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and 7 Appeal2017-001698 Application 11/939,923 (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. If the recited judicial exception is integrated into a practical application, the claim is not directed to the judicial exception. Here, claim 1 recites the additional elements of "at least one processor," "a memory coupled to the at least one processor," "a schema associated with a customized XML file residing in the memory," "a transformation engine that generates a schema-specific Darwin Information Typing Architecture (DITA) specialization from the schema," "[ wherein the transformation engine also produces a transform from the schema] that when applied to the XML file produces a DITA file that follows the rules of the DITA specialization," and "wherein the DITA specialization and the DITA file are used to generate documentation for the customized XML file." App. Br. 21 (Claim App'x). Considering claim 1 as a whole, the limitation "that when applied to the XML file produces a DITA file that follows the rules of the DITA specialization" and the final "wherein" clause apply or use the abstract idea in a meaningful way such that the claim as a whole is more than a drafting effort designed to monopolize the exception. In particular, the recited "transform" produces a certain type of DITA file when applied to the XML file. The DITA file produced by applying the transform to the XML file is used to generate documentation for a customized XML file. Here, the "transform" results in a file having a different function or use, and amounts to more than the mere manipulation of data. See MPEP 2106.05( c ). Thus, the abstract idea is integrated into a practical application. Claims 9 and 14 similarly integrate the abstract idea into a practical application. 8 Appeal2017-001698 Application 11/939,923 Because claims 1, 9, and 14 integrate the recited judicial exception into a practical application, they are not "directed to" a judicial exception and, therefore, our inquiry ends. For these reasons, under the 2019 Guidance, we reverse the Examiner'sÂ§ 101 rejection of independent claims 1, 9, and 14, as well as the Examiner's rejection of dependent claims 3, 5-8, 10-13, and 17-20, which stand with the independent claims from which they depend. Rejection of Claims 14 and 17-20 underÂ§ 101 (Carrier Wave) The Examiner concluded that claims 14 and 17-20 recite material embodied on a computer readable medium that can embody "a carrier wave, a modulated signal, or the like." Non-Final Act. 6 (citing Spec. ,r 30). Appellants argue that claim 14 as originally filed includes the limitation "tangible computer recordable media," which excludes the possibility of a carrier wave. App. Br. 8. We are not persuaded that the Examiner erred. A recited machine- readable storage medium, having a program stored thereon, and absent an express limitation of scope to non-transitory storage media, is ineligible underÂ§ 101 because it encompasses transitory media. Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential). Appellant's Specification, particularly paragraph 30, does not disclaim propagation media or transitory propagating signals from the meaning of "computer- readable article of manufacture." In particular, paragraph 30 describes that "the claims extend to all types of computer-readable media used to actually carry out the distribution." Spec. ,r 30. 9 Appeal2017-001698 Application 11/939,923 For these reasons, we affirm the Examiner'sÂ§ 101 rejection of claims 14 and 17-20 as encompassing a non-statutory signal. Rejection of Claims 1, 3, 5-14, and 17-20 underÂ§ 112, Second Paragraph The Examiner found Â§ 112, paragraph 6, applies to the limitation "a transformation engine that ... " in claim 1 because it uses a generic placeholder "transformation engine" coupled with functional language ("generates" and "produces") without reciting sufficient structure to achieve the recited functions. Non-Final Act. 8. The Examiner explained that merely referencing a general purpose computer with appropriate programming without providing any detailed explanation of the appropriate programming, or simply reciting software without providing some detail about the means to accomplish the function, is not an adequate disclosure of the corresponding structure to satisfy the requirements of 35 U.S.C. Â§ 112, second paragraph, even when one of ordinary skill in the art is capable of writing the software to convert a general purpose computer to a special purpose computer to perform the claimed function. Id. at 10. Thus, the Examiner found the claims are indefinite under 35 U.S.C. Â§ 112, second paragraph, for failing to disclose the corresponding structure or materials. Id. at 10-11. Appellants contend the Examiner erred in construing the claims under Â§ 112, sixth paragraph, because "a suitable implementation of a 'transformation engine' is shown in FIG. 1 and described in paragraphs 0027 and 0032-36." App. Br. 9. Appellants further argue the Specification "provides sufficient detail for the operation of the transformation engine to one of ordinary skill in the art to practice the invention." Id. (citing Spec. 10 Appeal2017-001698 Application 11/939,923 ,r 36). With regard to the Examiner's indefiniteness rejection, Appellants argue "the examiner provided no argument or rationale for rejecting claims 1, 3, 5-8, 14 and 17-20 under 35 U.S.C. Â§112, second paragraph." Id. at 10. We are persuaded that the Examiner erred. The Examiner has not sufficiently addressed the cited portions of Appellants' written description in determining whether the limitation "transformation engine" provides sufficient structure for "generat[ing] a schema-specific Darwin Information Typing Architecture (DITA) specialization from the schema" and "produc[ing] a transform from the schema that when applied to the XML file produces a DITA file that follows the rules of the DITA specialization." See App. Br. 9 (citing Spec. ,r,r 27, 32-36, Fig. 1). In cases involving a special purpose computer-implemented means- plus-function limitation, the structure must be more than simply a general purpose computer or microprocessor. See Aristocrat Techs. Australia Pty Ltd. v. Int'! Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Rather, "[ w ]hen dealing with a 'special purpose computer-implemented means-plus- function limitation,' [the Federal Circuit] require[s] the specification to disclose the algorithm for performing the function." Function Media, L.L. C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013); accord Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009) ("[W]hen a computer is referenced as support for a function in a means-plus-function claim, there must be some explanation of how the computer performs the claimed function."). The Examiner interpreted the structure in claim 1 as a general purpose computer in conjunction with software. Non-Final Act. 9. Paragraph 27 of the Specification, cited by Appellants, describes a general-purpose 11 Appeal2017-001698 Application 11/939,923 computer. Spec. ,r 27. The Examiner, however, found that "it is unclear what else is involved; either the transformation engine creates of [sic] generates the DITA specialization as is recited in representative claim 1 or simply assists as described in the specification." Ans. 11 (citing Spec. ,r 32). We do not read paragraph 32 of the Specification as describing that the transformation engine "simply assists" in generating the DITA specialization, as the Examiner found. See id. Moreover, the Examiner did not address paragraphs 33-36 of the Specification, also cited by Appellants, which describe the process of generating a schema-specific DITA specialization from the schema and producing a transform from the schema that when applied to the XML file produces a DITA file that follows the rules of the DITA specialization, as claim 1 requires. See Spec. ,r,r 27, 32- 36. As the Examiner did not provide an explanation sufficient to show why the Specification fails to provide the requisite structure, we reverse the Examiner's rejection of claims 1, 3, 5-14, and 17-20 underÂ§ 112, second paragraph. Rejection of Claims 9, 12, and 13 underÂ§ 103 (a) Appellants contend the Examiner erred in rejecting claim 9 for obviousness because the cited portions of Leslie do not teach or suggest a transformation that is applied to both a DITA specialization and a DITA file, as claim 9 requires. App. Br. 12. We are not persuaded that the Examiner erred. The Examiner found Figure 1 of Leslie, as described on page 158 of Leslie, teaches that DITA documents (DITA.XML and Stylesheets) are merged into a book structure 12 Appeal2017-001698 Application 11/939,923 (Book.XML) that is transformed to XSL formatting objects (Book.FOP) and used to generate a PDF file (BOOK.PDF). Ans. 12-13. Thus, the Examiner found Leslie teaches applying a transform (XSL T {Extension element}) to the DITA specialization (Stylesheets) and the DITA file (DITA.XML) to produce documentation (Book.PDF) for the customized XML file (Xalan.XML) as claimed. Id. at 13. Appellants have not persuasively rebutted the Examiner's findings. Appellants argue the process cited by the Examiner "does not include applying a transform to a DITA specialization and the DITA file. Leslie describes two different transforms that are applied sequentially to two different files," referring to the transform of the Apache XML to the DITA XML, and the transform of the DITA XML to HTML. Reply Br. 6. While Appellants address Leslie's teachings regarding the creation of HTML documentation, Appellants have not presented sufficient persuasive argument or objective evidence to rebut the Examiner's findings based on Leslie's teachings that the DITA.XML and Stylesheets are merged into a book structure and transformed as part of generating PDF documentation. For these reasons, on the record before us, we are not persuaded the Examiner erred in finding Leslie teaches or suggests the disputed limitation of claim 9. Accordingly, we affirm the Examiner's rejection of independent claim 9, as well as dependent claims 12 and 13, not argued separately. See App. Br. 14. 13 Appeal2017-001698 Application 11/939,923 Rejection of Claims 1, 3, 6, 14, and 18 underÂ§ 103(a) Appellants contend the Examiner erred in rejecting claim 1 because the cited sections of Leslie and Ames do not teach or suggest a transformation that is applied to both a DITA file and a DITA specialization, as claim 1 requires. App. Br. 15. For the reasons discussed above for independent claim 9, we are not persuaded that the Examiner erred. The Examiner relied on the same teachings in Leslie that were cited for claim 9, and Appellants have not persuasively rebutted those findings. Appellants argue for the first time in the Reply Brief that "Leslie does not teach or suggest creating a schema specific DITA specialization as taught in the specification." Reply Br. 9. Appellants, however, have waived this argument because they presented it for the first time in the Reply Brief, without a showing of good cause. See 37 C.F.R. Â§ 41.41(b)(2) (2012); accord Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010 (informative opinion) ("[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not."). We note also that Appellants' new argument is conclusory, merely reciting the claim limitation and stating that the prior art does not teach or suggest it. Reply Br. 9. Rule 41.37 "require[s] more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art." In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Accordingly, even if Appellants' argument were timely, we are not persuaded that the Examiner erred in rejecting claim 1. 14 Appeal2017-001698 Application 11/939,923 For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Leslie and Ames teaches or suggests the disputed limitations of claim 1. Accordingly, we sustain the Examiner'sÂ§ 103(a) rejection of independent claim 1, as well as the Examiner'sÂ§ 103(a) rejection of independent claim 14, which Appellants argue is patentable for similar reasons. See App. Br. 15. We also sustain the Examiner'sÂ§ 103(a) rejection of dependent claims 3, 6, and 18, not argued separately. Id. DECISION We reverse the Examiner's decision rejecting claims 1, 3, 5-14, and 17-20 under 35 U.S.C. Â§ 101 as directed to a judicial exception without significantly more. We affirm the Examiner's decision rejecting claims 14 and 17-20 under 35 U.S.C. Â§ 101 as encompassing a non-statutory signal. We reverse the Examiner's decision rejecting 1, 3, 5-14, and 17-20 under 35 U.S.C. Â§ 112, second paragraph. We affirm the Examiner's decision rejecting claims 1, 3, 6, 9, 12-14, and 18 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§ 4I.50(f). AFFIRMED-IN-PART 15