Ex Parte Clark et al

Patent Trials and Appeals Board

Jun 27, 2019

14531855 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/531,855 11/03/2014
27530 7590 07/01/2019
Nelson Mullins Riley & Scarborough LLP
IP Department
One Wells Fargo Center
301 South College Street, 23rd Floor
Charlotte, NC 28202
FIRST NAMED INVENTOR
Jeremiah Clark
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.
48379/09032 8698
EXAMINER
PEREZ-ARROYO, RAQUEL
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
ip@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMIAH CLARK and STEPHEN WILSON 1
Appeal2018-006713
Application 14/531,855
Technology Center 2100
Before ST. JOHN COURTENAY III, CARLL. SILVERMAN, and
ALEX S. YAP, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-16, and 21-23, which constitute all the claims
pending in this application. Claims 2 and 17-20 are canceled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is Navico Holding AS. App. Br. 1.
Appeal2018-006713
Application 14/531,855
STATEMENT OF THE CASE2
Disclosed embodiments of Appellants' invention relate to "displaying
marine electronics data." Spec. ,r 4.
Exemplary Claim
1. A non-transitory computer readable medium having
stored thereon a plurality of computer-executable instructions
which, when executed by a computer, cause the computer to:
receive a request to display, on a screen of a marine
electronics device attached to a watercraft, data corresponding to
one or more data items that correspond to marine electronics data
connected to the marine electronics device;
[L 1] retrieve a hierarchical list of data items that
correspond to the marine electronics data;
select a first data item from the hierarchical list of data
items;
detect whether data corresponding to the first data item is
available on a network connected to the marine electronics
device such that the data corresponding to the first data item is
available for display; and either:
display, on the screen of the marine electronics device, the
data corresponding to the first data item if the data corresponding
to the first data item is available on the network, or
if the data corresponding to the first data item is not
available on the network:
2 We herein refer to the Final Office Action, mailed Sept. 5, 2017 ("Final
Act."); Appeal Brief, filed Feb. 1, 2018 ("App. Br."); Examiner's Answer,
mailed Apr. 18, 2018 ("Ans."); and the Reply Brief, filed June 14, 2018
("Reply Br.").
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[L2] continuously select and detect whether data
corresponding to a next data item from the hierarchical list of
data items is available on the network until data from the next
data item is detected to be available on the network, wherein the
next data item has a next lowest priority on the hierarchical list
than a last checked data item, and
display, on the screen of the marine electronics device, the
data corresponding to the next data item where the data was
detected to be available on the network.
App. Br. 16 (Claims Appendix) (Emphasis added regarding the contested
limitations LI and L2 under 35 U.S.C. § 103).
Rejections
A. Claims 1, 3-16, and 21-23 are rejected under 35 U.S.C. § 101, as
being directed to a judicial exception, without significantly more. Final Act.
2.
B. Claims 1, 3-5, 7-12, 14--16 and 21-23 are rejected under 35
U.S.C. § 103 as being obvious over the combined teachings and suggestions
of Curl et al. (US 2012/0278759 Al; published Nov. 1, 2012; (hereinafter
"Curl")), Karstens et al. (US 2010/0026688 Al; published Feb. 4, 2010;
(hereinafter "Karstens")), and further in view of McQuillan et al. (US
2009/0287803 Al; Nov. 19, 2009 ("McQuillan")). Final Act. 7.
C. Claims 6 and 13 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Curl, Karstens,
McQuillan and further in view of Goldstein et al. (US 2011/0115626 Al;
published May 19, 2011; (hereinafter "Goldstein"). Final Act. 28.
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Application 14/531,855
Issues on Appeal
1. Did the Examiner err in rejecting claims 1, 3-16, and 21-23 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
2. Did the Examiner err in rejecting claims 1, 3-16, and 21-23, under
35 U.S.C. § 103, as being obvious over the cited combinations of prior
art?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's responses to Appellants'
arguments. Appellants do not proffer sufficient argument or evidence to
persuade us the Examiner erred regarding Rejections Band C under 35
U.S.C. § 103. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). However, we address Rejection A separately, infra.
In our analysis below, we highlight and address specific findings and
arguments for emphasis.
Rejection A of Claims 1, 3-16, and 21-23 under 35 U.S. C. § 1 OJ
Issue: Under 35 U.S.C. § 101, did the Examiner err by rejecting
claims 1, 3-16, and 21-23, as being directed to a judicial exception, without
significantly more?
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Principles of Law-35 U.S.C. § 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 Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[L Jaws of nature, natural phenomena, and abstract
ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185
(1981)).
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. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). 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." (emphasis omitted)); 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
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 (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diehr, 450 U.S. at 193); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
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(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
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 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
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 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,
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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.
Subject Matter Eligibility- 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). This
new guidance is applied in this opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people); 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)). 3
See 2019 Revised Guidance, 84 Fed. Reg. at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under § 101. Id.
3 All references to the MPEP are to the Ninth Edition, Revision 08-201 7
(rev. Jan. 2018).
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Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance at 56; Alice, 573 U.S. at 217-18.
For example, we 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 § 2106.05(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56 (emphasis added).
Because there is no single definition of an "abstract idea" under Alice step 1,
the PTO has recently synthesized, for purposes of clarity, predictability, and
consistency, key concepts identified by the courts as abstract ideas to explain
that the "abstract idea" exception includes the following three groupings:
Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
Mental processes- concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or
interactions between people (including social activities,
teaching, and following rules or instructions).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
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According to the 2019 Revised Guidance, "[ c ]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
(abstract idea), and thus are patent eligible, if "the claim as a whole
integrates the recited judicial exception into a practical application of that
exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of "integration into a
practical application" include:
1. Improvements to the functioning of a computer, or to any other
technology or technical field- see MPEP § 2106.05(a);
2. Applying the judicial exception with, or by use of, a particular
machine-see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article to
a different state or thing-see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to
monopolize the exception - see MPEP § 2106.05( e ).
In contrast, limitations that are not indicative of "integration into a
practical application" include:
1. Adding the words "apply it" ( or an equivalent) with the judicial
exception, or merely include instructions to implement an
abstract idea on a computer, or merely uses a computer as a tool
to perform an abstract idea- see MPEP § 2106.05(±);
2. Adding insignificant extra-solution activity to the judicial
exception - see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP 2106.05(h).
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See 2019 Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
2019 Revised Guidance, Step 2A, Prong One 4
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and ( c) certain methods of organizing human activities.
Turning to independent claim 1, we observe the claim recites, inter alia, the
following functions:
select a first data item from the hierarchical list of data items;
detect whether data corresponding to the first data item is
available on a network connected to the marine electronics
device such that the data corresponding to the first data item is
available for display; and either display[ing] ... or, if the data
corresponding to the first data item is not available on the
network:
continuously select and detect whether data corresponding to
a next data item from the hierarchical list of data items is
available on the network until data from the next data item is
detected to be available on the network, wherein the next data
item has a next lowest priority on the hierarchical list than a last
checked data item, and display ....
Claim 1 ( emphases added).
Thus, we conclude the aforementioned selecting and detecting
functions could be performed alternatively as mental processes, i.e.,
4 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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concepts performed in the human mind (including an observation,
evaluation, judgment, and opinion) under the 2019 Revised Guidance, 84
Fed. Reg. at 52. 5
We note remaining independent claims 11 and 22 recite similar
language of commensurate scope that we conclude also falls into the abstract
idea category of a mental process including the abstract idea subcategories
of an observation, evaluation, judgment, opinion. Id.
Claim 1 recites the additional non-abstract generic limitations of a
computer, a screen (i.e., display) of "a marine electronics device attached to
a watercraft," and a network. Claims 11 and 22 recite the same non-abstract
generic additional limitations, except that claim 11 is silent regarding any
mention of a network.
We note the recited "receive" and "retrieve" functions of claim 1, and
similar language recited in independent claims 11 and 22, merely gather
information. Courts have found such data gathering steps to be insignificant
5 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,
1372-73 (Fed. Cir. 2011); see also Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1146-47 (Fed. Cir. 2016) ("While the Supreme Court has
altered the § 101 analysis since Cy her Source in cases like Mayo and Alice,
we continue to 'treat[] analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.'" (brackets in original)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016)); CyberSource, 654 F.3d at 1375 ("That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
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extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir.
2008) (en bane), aff'd sub nom Bilski v. Kappas, 561 U.S. 593 (2010)
( characterizing data gathering steps as insignificant extra-solution activity).
The remaining displaying limitations of claims 1, 11, and 22 merely
perform insignificant extra-solution or post-solution activity, such as
searching, list compiling, and displaying information. See MPEP
§ 2106.05(g) "Insignificant Extra-Solution Activity."
Because we conclude all claims on appeal recite an abstract idea, as
identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong
Two.
2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Further pursuant to the 2019 Revised Guidance, we consider whether
there are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Revised Guidance, 84 Fed.
Reg. at 54--55. We have identified supra the additional non-abstract
limitations recited in independent claim 1 as a computer, a network, and a
screen (i.e., a display) of a marine electronics device attached to a
watercraft. Independent claims 11 and 22 recite the same non-abstract
generic limitations, except that claim 11 is silent regarding any mention of a
network.
Under MPEP § 2106.05(a) ("Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field"), Appellants
contend the claims amount to significantly more than an abstract idea. App.
Br. 13. In support, Appellants cite to Enfish, and contend the claims:
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are not directed at merely collecting and displaying selected data.
Rather, the present claims are directed to a specific improvement
to the way computers operate, embodied by automatically
selecting the next lowest priority item in a hierarchical list for
marine devices until data is available, thus improving the way
the computer in the marine environment locates and returns
results based on a data selection and solving a problem in the
marine software and database arts.
Appeal Br. 14 ( emphasis added). 6
We note the court held the Enfish subject claims were "not directed to
an abstract idea within the meaning of Alice." Enfish, 822 F.3d at 1336.
The court concluded the claims were directed to "a specific improvement to
the way computers operate, embodied in the self-referential table."
( emphases added). Id.
We emphasize that the self-referential database table considered by
the Enfish court was found to be a specific type of data structure that was
designed to improve the way a computer stores and retrieves data in
memory. Id. at 1339. Because the Enfish court found the claimed self-
referential database table improved the way the computer stored and
retrieved data, the court concluded the Enfish claims were not directed to an
abstract idea, and thus ended the analysis at Alice step one. Id. at 1336.
Here, Appellants have not shown that any of the features of the claims
before us on appeal improve the way the recited generic computer, network,
and screen of a marine electronics device store and retrieve data, in a
manner analogous to that found by the court in Enfish. See Appellants'
independent claims 1, 11, and 22. Moreover, Appellants' claims 1, 3-16,
6 See Enfish, LLC v. Microsoft Corp., 822 F3d 1337 (Fed. Cir. 2016).
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and 21-23 are silent regarding any mention of a database, must less any
mention of a database storage device that includes a self-referential
database table of the type found by the Enfzsh court to improve the way a
computer stores and retrieves data in memory.
Regarding the recited additional generic limitations recited in
independent claims 1, 11, and 22, we tum to the Specification for support:
Figure 6 illustrates a computing system 600 in accordance with
implementations of various techniques described herein.
Computing system 600 may be a conventional desktop, a
handheld device, a wearable device, a controller, a personal
digital assistant, a server computer, an electronic
device/instrument, a laptop, a tablet, or part of a navigation
system, marine electronics, or sonar system. It should be noted,
however, that other computer system configurations may be
used.
Spec. ,r 39 ( emphases added).
Given the extensive description of the use generic computer
components in the Specification (id.), we agree with the Examiner that,
without more:
the additional elements do not amount to significantly more than
the above-identified judicial exception (the abstract idea).
Looking at the limitations as an ordered combination adds
nothing that is not already present when looking at the elements
taken individually. There is no indication that the combination of
elements improves the functioning of a computer or improves
any other technology. Their collective functions merely provide
conventional computer implementation
Final Act. 4.
We note McRo, Inc. v. Bandai Namco Games America Inc., (837 F.3d
1299 (Fed. Cir. 2016)), guides: "[t]he abstract idea exception prevents
patenting a result where 'it matters not by what process or machinery the
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result is accomplished."' 837 F.3d at 1312 (quoting O'Reilly v. Morse, 56
U.S. 62, 113 (1854)) ( emphasis added).
MPEP § 2106.05(b) Particular Machine
MPEP § 2106.05(c) Particular Transformation
Appellants advance no arguments applying the Bilski machine-or-
transformation test to any claims on appeal. We note "[t]he mere
manipulation or reorganization of data, however, does not satisfy the
transformation prong." CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011) (emphasis added). See also Benson, 409
U.S. at 71-72 (holding that a computer-based algorithm that merely
transforms data by converting BCD [ (Binary Coded Decimal)] numerals to
pure binary numerals is not patent eligible).
Nor on this record have Appellants established that the recited
additional non-abstract limitations recited in independent claim 1 (i.e., a
computer, a network, and a screen of a marine electronics device attached to
a watercraft) are "particular" machines under MPEP § 2106.05(b).
Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
MPEP § 2106.05(e) "Other Meaningful Limitations."
Appellants advance no arguments in the Appeal Brief pertaining to
any specific claim limitations that purportedly provide a meaningful
limitation beyond generally linking the use of the judicial exception to a
particular technological environment. Arguments not made are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
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As emphasized above, we conclude Appellants' recited additional
limitations of a computer, a network, and a screen of a marine electronics
device attached to a watercraft are merely generic computer components.
See independent claims 1, 11, and 22.
MPEP § 2106.05(g) Insignificant Extra-Solution Activity [R-08.2017]
As discussed above, we conclude the recited "receive" and "retrieve"
functions of claim 1, and similar language recited in independent claims 11
and 22, merely gather information. Courts have found such data gathering
steps to be insignificant extra-solution activity. See, e.g., Bilski, 545 F.3d at
963 (en bane), ajf'd sub nom Bilski v. Kappas, 561 U.S. 593 (2010)
( characterizing data gathering steps as insignificant extra-solution activity).
The remaining displaying limitations of claims 1, 11, and 22 merely
perform insignificant extra-solution or post-solution activity, such as
searching, list compiling, and displaying information (i.e., on a screen of a
marine electronics device attached to a watercraft). See MPEP § 2106.05(g).
Nor do the claims present any other issues as set forth in the 2019
Revised Guidance regarding a determination of whether the additional
generic elements integrate the judicial exception into a practical application.
See Revised Guidance, 84 Fed. Reg. at 55. Rather, we conclude the claims
on appeal merely use instructions to implement an abstract idea on a
computer, or merely use a computer as a tool to perform an abstract idea. Id.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a}-(c) and (e}-(h)), we
conclude claims 1, 3-16, and 21-23 do not integrate the judicial exception
into a practical application. Therefore, we proceed to Step 2B, The
Inventive Concept.
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The Inventive Concept - Step 2B
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional" in the field (see MPEP § 2106.05( d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
We note Berkheimer was decided by the Federal Circuit on February
8, 2018. On April 19, 2018, the PTO issued the Memorandum titled:
"Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)"
(hereinafter "Berkheimer Memorandum"). 7 Because the Reply Brief was
filed on June 14, 2018, Appellants' had constructive notice of both the
Berkheimer Federal Circuit decision and the USPTO "Berkheimer
Memorandum."
The Berkheimer Memorandum provided specific requirements for an
Examiner to support with evidence any finding that claim elements ( or a
combination of elements) are well-understood, routine, or conventional.
Here, the Examiner finds:
The claims does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as an ordered combination do not amount to
7 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419 .PDF.
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significantly more than the abstract idea. Claim 1 recites the
additional limitation of a "marine electronics data", and a
"network". The "marine electronics" and the "network" are
recited at a high level of generality and are recited as performing
generic computer functions routinely used in computer
applications. Generic computer components recited as
performing generic computer functions that are well-understood,
routine and conventional activities, amount to no more than
implementing the abstract idea with a computerized system.
Final Act. 3--4 ( emphases added).
Pursuant to the Berkheimer Memorandum, Appellants argue (Reply
Br. 4) that "an additional element is not well-understood, routine, or
conventional unless the examiner finds and expressly supports a rejection in
writing with one or more of the following:"
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, as reproduced in the Reply Br. 4.
Responsive to Appellants' argument (Reply Br. 4), and in applying
the 2019 Revised Guidance, we find the Examiner has not provided any of
the four categories of factual evidence expressly required by the USPTO
Berkheimer Memorandum. Therefore, the record supports Appellants'
argument that because the Examiner fails to provide any analysis under
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Berkheimer of the additional claim elements, the rejection is improper for
failing to present a prima facie case of subject matter ineligibility. See
Reply Br. 4.
Accordingly, because the Examiner has not provided sufficient
evidence as required by Berkheimer (881 F.3d at 1369), and the USPTO
Berkheimer Memorandum at 3--4, we are constrained on this record to
reverse the Examiner's rejection under 35 U.S.C. § 101 of claims 1, 3-16,
and 21-23.
Rejection B of Independent Claim 1
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding Curl,
Karstens, and McQuillan collectively teach or suggest the contested
limitations:
[L 1] retrieve a hierarchical list of data items that
correspond to the marine electronics data; ...
[L2] continuously select and detect whether data
corresponding to a next data item from the hierarchical list of
data items is available on the network until data from the next
data item is detected to be available on the network, wherein the
next data item has a next lowest priority on the hierarchical list
than a last checked data item, and
within the meaning of representative claim 1 ?8 (Emphases added).
The Examiner finds Curl teaches limitation LI ("retriev[ing] a
hierarchical list of data items"), as follows:
8 See supra, n.4. We give the contested claim limitations the broadest
reasonable interpretation consistent with the Specification. See Morris,
127 F.3d at 1054.
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Paragraph O 165 teaches accessing a database table or structure
that stores the devices; Paragraph O 169 teaches retrieving a list
of the instruments; Paragraph 0170 teaches accessing look-up
table or other structure storing the instruments and the
corresponding priority levels of each instrument to determine
which instrument has a higher priority level, therefore, the list of
the instruments represents the hierarchical list of data items,
since, as a hierarchy (which contains levels in the hierarchy),
the list contains a priority level for each of the items]."
Final Act. 8.
Appellants argue that Curl, Karstens, and McQuillan fail to disclose
limitations LI and L2 of claim 1. App. Br. 6-7. Appellants focus their
arguments on the "hierarchical list of data items" which is recited in both
limitations L 1 and L2. Id.
Specifically, Appellants contend: "Curl waits for data to connect to
it, and then uses a look-up table to determine and display ( or not) the data
based on the hierarchy." App. Br. 6. In support, Appellants point to
paragraphs 178, 183, 184, and Figure 11 of Curl. App. Br. 6.
Appellants further contend:
In contrast, example embodiments of the present claims are
directed to affirmatively checking the items on the hierarchical
list, working their way down until they find one available for
display. Curl's method is much more limited and is dependent
on the data first connecting to the device. Karstens fails to cure
the deficiency of Curl, as Karstens is silent on how its display
data options are selected. Indeed, the Examiner agrees and cites
instead to McQuillan for teaching this feature.
App. Br. 6.
Appellants acknowledge that McQuillan discloses a hierarchical list.
App. Br. 6, last paragraph; see also App. Br. 9, first full paragraph.
However, Appellants contend McQuillan "only applies the list to identify a
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device that first connect to it (i.e., each checked device is already known to
be connected)." App. Br. 6.
In the Advisory Action (mailed November 13, 2017), the Examiner
points to paragraphs 11, 25, and 28 of McQuillan as further evidence of the
disputed claim features:
McQuillan [Paragraph 0011] teaches scanning devices
according to the scan priority list, and adjusting timeouts per
device to avoid polling for longer periods of time than needed.
McQuillan [Paragraph 0025] teaches checking whether the
computer has received a valid response from the device under
consideration, where the scan priority list include[ s] the order of
checking the devices, and where a valid response includes data
values present in the address corresponding to the device under
consideration. McQuillan [Paragraph 0028] further teaches a
timeout exception is returned when the driver has not received
any response from the device under consideration, which will
trigger to move on to scan for another device.
Advisory Act. 2.
Thus, the Examiner finds "McQuillan discloses 'continuously
select[ing] and detect[ing] whether data corresponding to a next data item
from the hierarchical list of data items is available on the network until data
from the next data item is detected to be available on the network.'" Id.
( quoting claim 1 ).
Appellants disagree:
those sections [ cited by the Examiner in "McQuillan]
detail the identification of the device after it is already connected
to the system (i.e., what type of printer the connected device is).
In that scenario the device has already connected to the
system. In contrast, example embodiments of the present
invention look for a device based on the hierarchical list - not
with the knowledge that the device is already connected ( as in
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McQuillan). Further, the cites of the Examiner are not about
locating a certain data type - but merely identifying the device.
App. Br. 6-7 ( emphasis added).
The Examiner's Answer
In response, the Examiner further explains the basis for the rejection:
"The claims as currently presented require 'select and detect whether data
corresponding to a next data item from the hierarchical list of data items is
available on the network until data from the next data item is detected to be
available on the network', therefore, the detection of whether or not data
from a data item is available on the network. Ans. 3. The Examiner restates
the findings from the Advisory action (2), as reproduced above. See Ans. 3-
4.
Claim Construction
We begin our analysis with claim construction. 9 We tum to the
Specification for context. Applying a broad but reasonable interpretation to
9 Claim construction is an important step in a patentability determination. A
legal conclusion that a claim is obvious involves two analytical steps,
assuming the references have been properly combined under § 103. See
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) ("Both
anticipation under § 102 and obviousness under § 103 are two-step inquiries.
The first step in both analyses is a proper construction of the claims. . . . The
second step in the analyses requires a comparison of the properly construed
claim to the prior art." (internal citations omitted)). Under the second step,
the Board must compare the construed claim to one or more prior art
references and make factual findings regarding the limitations contested by
Appellants. See In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Because the PTO is entitled to give claims their broadest reasonable
interpretation, a court's review of the Board's claim construction is limited to
determining whether it was reasonable. See Morris, 127 F.3d at 1055.
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the language of claim 1, we construe "hierarchical list of data items" as
data items with highest to lowest priority in a list, consistent with the
supporting description found in the Specification ,r 0005:
Described herein are also implementations of vanous
technologies for displaying marine electronics data using
priority. In one implementation, a non-transitory computer-
readable medium having stored thereon computer-executable
instructions which, when executed by a computer, cause the
computer to perform various actions. The actions may include
retrieving a hierarchical list of data items that correspond to
marine electronics data. The actions may include selecting a first
data item from the list of data items. The first data item has the
highest priority in the list. The actions may include determining
whether data corresponding to the first data item is detected. The
actions may include displaying data corresponding to the first
data item if data corresponding to the first data item is detected.
The actions may include selecting a second data item from the
hierarchy. The second data item has a lower priority than the
first data item. The actions may include determining whether
data corresponding to the second data item is detected. The
actions may also include displaying data corresponding to the
second data item if data corresponding to the second data item
is detected.
Spec. ,r 5 ( emphases added).
Given this description (id.), we tum to the evidence relied upon by the
Examiner (Final Act. 8-11; Ans. 3--4 ). The Examiner finds limitation L 1 of
claim 1 is taught or suggested principally by Curl, at ,r,r 165, 169 and 170
and McQuillan ,r,r 11, 25 and 28. Final Act. 8-11.
We reproduce the relevant cited portions of Curl and McQuillan in
context below:
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In some implementations, when the station 110 is already
displaying data from another medical instrument in the window,
the central processing station 110 may compare the priority
levels of the medical instruments. The central processing
station 110 may access entries in another look-up table, or any
other data structure, using the identification numbers of the
medical instruments as indices. The central processing station
110 may retrieve the priority levels of the medical instruments
from the table. The central processing station 110 may compare
the priority levels. In some implementations, if the priority
level of the newly detected medical instrument 13 0 is higher than
the priority level of the instrument whose data is being displayed
in the window, the central processing station 110 may
automatically display data from the newly detected medical
instrument 130 instead of data from the already detected medical
instrument.
Curl ,r 170 ( emphases added).
The algorithm learns the utility monitoring system and scans for
the most common devices first by reprioritizing the scan
priority list after each successful device identification using
statistical probabilities.
McQuillan ,r 11 ( emphasis added).
If so, the algorithm 102 optionally reprioritizes a scan priority
list (216). A scan priority list includes a list of device types that
the algorithm should check for first. This scan priority list may
be initialized to include most commonly used device types in a
utility monitoring system first, and then it is reorganized as the
algorithm 102 learns about previously identified devices in the
utility monitoring system. For example, if the algorithm 102
begins to learn that there are a number of circuit monitor devices
of the same type in the utility monitoring system, it may place
that circuit monitor device type at the top of the scan priority
list.
McQuillan ,r 25 ( emphases added).
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In reviewing the record, we find Appellants are arguing the references
separately. 10 The Examiner relies on Curl ,r 70, for teaching or suggesting a
hierarchical list of data items, thus rendering obvious the contested
prioritized list requirement of claim 1. See Final Act. 8.
We find Curl ,r 70 expressly describes priority levels of data items:
"The central processing station 110 may retrieve the priority levels of the
medical instruments from the table. The central processing station 110 may
compare the priority levels. In some implementations, if the priority level of
the newly detected medical instrument 130 is higher than the priority level
of the instrument whose data is being displayed in the window." (emphases
added).
Furthermore, McQuillan i-f 11 expressly describes reprioritizing the
scan priority list: "The algorithm learns the utility monitoring system and
scans for the most common devices first by reprioritizing the scan priority
list after each successful device identification using statistical probabilities."
Claim 1 limitation L 1 only requires: "retrieve a hierarchical list of
data items that correspond to the marine electronics data." ( emphasis
added). We note Curl ,r 70 and McQuillan i-fl l expressly teach data items
10 Nonobviousness cannot be established by attacking the references
individually when the rejection is based upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
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with highest to lowest priority in a list, i.e. a "hierarchical list of data
items." Claim 1.
Because Appellants' arguments attack McQuillan in isolation, and do
not substantively traverse the Examiner's specific findings regarding Curl
considered in combination with Karstens and McQuillan, on this record, we
are not persuaded of error regarding the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness for contested
limitation LI of representative independent claim 1. App. Br. 7-11.
Contested Limitation L2 of Independent Claim 1
Appellants also contend that the cited combination of Curl, Karstens,
and McQuillan fails to disclose or render obvious contested limitation L2:
detect whether data corresponding to the first data item is
available on a network connected to the marine electronics
device such that the data corresponding to the first data item is
available for display; and either:
display, on the screen of the marine electronics device, the
data corresponding to the first data item if the data corresponding
to the first data item is available on the network, or
if the data corresponding to the first data item is not
available on the network:
[L2] continuously select and detect whether data
corresponding to a next data item from the hierarchical list of
data items is available on the network until data from the next
data item is detected to be available on the network, wherein the
next data item has a next lowest priority on the hierarchical list
than a last checked data item, and
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display, on the screen of the marine electronics device, the
data corresponding to the next data item where the data was
detected to be available on the network.
Claim 1. See App. Br. 16.
We note our discussion and claim construction above regarding
limitation L 1 also applies to limitation L2. Claim 1. However, limitation L2
is only reached by an alternative ("either ... or") condition, as emphasized
in bold above in claim 1. When the scope of a claim covers several
alternatives, the claim may be unpatentable if any of the alternatives within
the scope of the claim are taught by the prior art. See Brown v. 3M, 265 F.3d
1349, 1351 (Fed. Cir. 2001); see also Schumer v. Laboratory Computer
Systems, Inc., 308 F.3d 1304, 1311 (2002) (citing Brown v. 3M, 265 F.3d at
1352).
Turning to the evidence found by the Examiner, McQuillan describes:
The algorithm learns the utility monitoring system and scans for
the most common devices first by reprioritizing the scan priority
list after each successful device identification using statistical
probabilities. In addition, the algorithm fine tunes each device
or device type by changing each device or device type timeout
instead of applying a global timeout to all devices. Adjusting
timeouts is also useful for the operation of the utility system after
it is configured. Thus, for devices with shorter timeout periods,
the algorithm does not have to poll longer than necessary to
ascertain that a timeout has occurred for those faster devices.
McQuillan ,r 11 ( emphasis added).
Our reviewing court guides: "'the question under 35 USC 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.'" Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
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1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also
MPEP § 2123.
This reasoning is applicable here. We find McQuillan ,r 11 teaches
continuously detecting, scanning, selecting and reprioritizing device data
available on the network, which we conclude at least suggests, and thus
renders obvious, limitation L2 of claim 1: "continuously select and detect
whether data corresponding to a next data item from the hierarchical list of
data items is available on the network until data from the next data item is
detected to be available on the network, wherein the next data item has a
next lowest priority on the hierarchical list than a last checked data item." 11
We again emphasize that the Examiner's ultimate legal conclusion of
obviousness is based upon the combined teachings and suggestions of the
cited references.
We particularly note Appellants have not further addressed the
Examiner's factual findings, legal conclusions, and explanations (Ans. 18-
19) in the Reply Brief, as pertaining to Rejection B (and C) under 35 U.S.C.
§ 103. Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner's underlying
factual findings and ultimate legal conclusion of obviousness, as pertaining
to the contested limitations of representative independent claim 1.
For similar reasons, we find a preponderance of the evidence supports
the Examiner's legal conclusion of obviousness for Rejection B of
11 See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) ("[A]
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.").
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independent claims 11 and 22, which recite similar limitations of
commensurate scope to limitations L 1 and L2, as contested by Appellants
for claim 1. See Final Act. 11-13. Associated dependent claims 3-5, 7-10,
12, and 14--16, also rejected under Rejection B (and not argued separately)
fall with the respective independent claim 1, 11, or 22, from which they
variously and ultimately depend. See 37 C.F.R. § 4I.37(c)(l)(iv).
Accordingly, we sustain the Examiner's Rejection B under 35 U.S.C.
§ 103 of claims 1, 3-5, 7-12, 14--16, and 22 under 35 U.S.C. § 103. We
address Rejection B of dependent claims 21 and 23 separately, infra.
Rejection B of Dependent claims 21 and 23
Dependent claim 21 recites:
The non-transitory computer readable medium of claim 1,
wherein the computer-executable instructions further cause the
computer to:
determine that a second display field is available on the display;
continuously select and detect data corresponding to another data
item from the hierarchical list of data items until data from the
another data item is detected to be available on the network,
wherein the another data item has a lower priority on the
hierarchical list than the data being displayed on a first display
field of the display; and
display, in the second display field on the screen of the marine
electronics device, the data corresponding to the another data
item where the data was detected to be available on the
network.
( emphases added).
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Dependent method claim 23 recites similar language of commensurate
scope. Appellants contend:
Appellant submits that Curl, Karstens, and McQuillan each fail
to teach or suggest looking to determine if another ( e.g., a
second) display window is available for displaying another type
of data before continuing down the hierarchical list. As noted
above, none of the cited references look for devices without first
having a connection. In rejecting the above noted features of
looking for additional display windows before continuing down
the hierarchical list, the Examiner relies on Curl paragraph
[0173]. That paragraph, however, discloses ranking windows for
priority, not looking to see if there are additional windows and
then looking to fill in the available windows using the
hierarchical list. Karstens and McQuillan also fail to teach or
suggest such a feature and, thus, do not cure the deficiency of
Curl.
App. Br. 34.
To the extent that Curl, Karstens, and McQuillan may only
contemplate a single display window, as argued by Appellants (id.), we find
the addition of a second display window, would have merely been a
"predictable use of prior art elements according to their established
functions." KSR, 550 U.S. at 417.
Thus, claiming a mere plurality of prior art elements is not an
unobvious distinction over the prior art of record, because using plural
elements would have produced a predictable result under § 103. "A mere
duplication of parts is not invention." In re Marcum, 47 F.2d 377, 378
(CCPA 1931) (citing Topliffv. Topliff, 145 U.S. 156, 163 (1892)). 12
12 See also Dunbar v. Myers, 94 U.S. 187, 195 (1876) ("for most purposes
the machine will operate as well and as successfully with one deflecting
plate as with two. Two deflecting plates may be better than one .... "). "It
is true that in the patent cited, there was but one detachable blade. However,
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See also Perfect Web Technologies, Inc. v. Info USA, Inc., 587 F .3d
1324, 1331 (Fed. Cir. 2009) ("The testimony of the experts does nothing to
question the correctness of the district court's conclusion that performing the
recited prior art method of steps (A)-(C) more than once as called for in step
(D) was one of the 'inferences and creative steps that a person of ordinary
skill would employ"'), citing KSR, 550 U.S. at 418 ( emphasis added).
This reasoning is applicable here. Therefore, Appellants have not
persuaded us of error regarding the Examiner's ultimate legal conclusion of
obviousness regarding Rejection B of dependent claims 21 and 23.
Rejection C of Dependent Claims 6 and 13
Appellants advance no separate substantive arguments regarding
Rejection C of dependent claims 6 and 13. Arguments not made are waived.
37 C.F.R. § 4I.37(c)(l)(iv).
CONCLUSIONS
The Examiner erred in rejecting claims 1, 3-16, and 21-23 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
The Examiner did not err in rejecting claims 1, 3-16, and 21-23 under
35 U.S.C. § 103, as being obvious over the cited combinations of prior art.
the use of two such blades would readily suggest itself to the mechanic. It is
a mere duplication of parts, and this has been uniformly held to be not
patentable." In re Abrahamsen, 53 F.2d 893,894 (CCPA 1931) (citations
omitted). "It is well settled that the mere duplication of parts has no
patentable significance unless a new and unexpected result is produced." In
re Harza, 274 F.2d 669, 671 (CCPA 1960). See also MPEP 2144.04(VI)(B)
("REVERSAL, DUPLICATION, OR REARRANGEMENT OF PARTS").
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DECISION
We reverse the Examiner's decision rejecting claims 1, 3-16, and
21-23 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1, 3-16, and
21-23 under 35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 37
C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
32