Ex Parte Dettinger et al

Patent Trial and Appeal Board

Nov 6, 2017

13758427 (P.T.A.B. Nov. 6, 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.
13/758,427 02/04/2013 Richard D. Dettinger ROC920030158US3 3985
46797 7590 11/08/2017
Patterson Rr SheriHan T T P
EXAMINER
24 Greenway Plaza, Suite 1600
Houston, TX 77046
FLYNN, KEVIN H
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
11/08/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD D. DETTINGER and RICHARD J. STEVENS
Appeal 2016-003115
Application 13/758,427
Technology Center 3600
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
SHARON FENICK, Administrative Patent Judges.
MACDONALD, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on Appellants’ Request for Rehearing.1 Appellants
have filed a paper under 37 C.F.R. § 41.52(a)(1) requesting that we
reconsider our Decision of July 27, 2017, wherein we affirmed the
Examiner’s rejection of claims 1—10. We have reconsidered our Decision in
1 “The request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked by the Board. Arguments not
raised, and Evidence not previously relied upon, pursuant to §§41.37, 41.41,
or 41.47 are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2)through (a)(4) of this section.” 37 C.F.R. § 41.52(a)(1).
Appeal 2016-003115
Application 13/758,427
light of Appellants’ comments in the request, and have found no errors. We,
therefore, decline to change the Decision.
Appellants’ request is denied.
DISCUSSION
Alice Step 1
Appellants contend the Board has misapprehended the Court’s Alice
analysis step 1 requirement to consider the elements of the claim as a whole
because:
In support of the affirmance of the rejection under 35 U.S.C.
§ 101, the Board, without citing any supporting authority,
erroneously concludes that the “Alice step 1 ” analysis does not
require a claim to “be considered as a whole.”
Req. Reh’g 1—2. Appellants assert authority cited “belies” the board’s
conclusion:
In footnote 3, cited by the Board, the Alice Court stated:
Because the approach we made explicit in Mayo
considers all claim elements, both individually and
in combination, it is consistent with the general rule
that patent claims “must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188, 101 S.Ct.
1048, 67 L.Ed.2d 155 (1981); see Parker v. Flook,
437 U.S. 584, 594, 98 S.Ct. 2522, 57 L.Ed.2d 451
(1978) (“Our approach ... is ... not at ah inconsistent
with the view that a patent claim must be considered
as a whole”).
Req. Reh’g 2 (emphasis added). Appellants assert the Alice Court’s footnote
3 (directed to step 2 of Alice) is somehow modified by earlier decisions of
the Court (e.g., Diamond v. Diehr) so that step 1 of the Alice analysis must
consider the claim elements as a whole. We find no such narrow holding in
Alice. Contrary to Appellants’ argument, the Examiner properly considered
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the claim elements of Claim 1 as a whole under the two-step Alice analysis
when the Examiner considered all claim elements, both individually and in
combination, under step 2 of the analysis. Appellants’ Appeal Brief and
Reply Brief do not contend that the Examiner failed to consider all claim
elements of Claim 1 as a whole under step 2 of the Alice analysis.
Appellants then contend the Board has overlooked the requirement
under Alice step 1 to analyze the claim’s character as a whole.
[T]he Board also ignored relevant Federal Circuit law. In Enfish,
LLC v. Microsoft Corp., 822 F. 3d 1327 (2016), the Federal
Circuit expressly analyzed the claims “as a whole” in the context
of step 1. Specifically, the Enfish court noted that step 1 “applies
a stage-one filter to claims, considered in light of the
specification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Id. at 1335 (emphasis
added).
Req. Reh’g 3.
First, Appellants are conflating (a) the Alice step 2 requirement that
all claim elements, both individually and in combination, must be
considered as a whole with (b) the step 1 requirement (explicit in Enfish and
implicit in Alice) to determine whether the claim’s character as a whole,
considered in light of the specification, is directed to excluded subject
matter. These “as a whole” requirements (claim elements and claim
character) are not interchangeable. Even when a claim’s character as a
whole is directed to an abstract idea, this is not conclusive as to whether all
claim elements considered as a whole are directed to eligible subject matter.
The step 2 analysis must still be performed. Yet it is not an error to defer
consideration of the character of the claim until step 2 of the Alice analysis.
This case, unlike Enfish, presents a “close call[ ] about how to
characterize what the claims are directed to.” See [Enfish LLC v.
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Application 13/758,427
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016)]. The
Enfish claims, understood in light of their specific limitations,
were unambiguously directed to an improvement in computer
capabilities. See id. at 1335—37[]. Here, in contrast, the claims
and their specific limitations do not readily lend themselves to a
step-one finding that they are directed to a nonabstract idea. We
therefore defer our consideration of the specific claim
limitations’ narrowing effect for step two.
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1349 (Fed. Cir. 2016).
Second, to the extent Appellants previously argued the claim’s
character as a whole (considered in light of the Specification) is not directed
to an abstract idea, we remain unpersuaded. Contrary to Appellants’
argument, Appellants’ Specification repeatedly states within its Backgound
section the concerns offee-based access and the value of information.
Appellants’ Summary section then states
Systems, methods and articles of manufacture for
accessing data for a fee are provided. Fee schedules are defined
for any arbitrary granularity of data, including for fields and data
structures (e.g., tables in a database). Fees may be calculated
based on the type of operation to be performed. Fees may also
be calculated per operation and/or per data item involved in the
operation.
Spec. 17 (emphasis added). We conclude there is more than sufficient basis
to conclude under step 1 of the Alice analysis that claim 1 is directed to an
abstract idea offee-based access to information and the calculation of a
value of information.
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Alice Step 2
Appellants also contend the Board has overlooked that claim 1
satisfies the requirement under Alice step 2 to claim significantly more than
the abstract idea.
[E]ven if claims 1 and 5 were considered to embody an abstract
idea, the claims satisfy Part 2 of the Alice test, by claiming a
combination of components that amounts to significantly more
than a patent upon an abstract idea. . . . The claimed processes
solve the technological problem of processing modification
statements in an abstract database.
Req. Reh’g 8—9. In our Decision, we concluded
Appellants list elements of claim 1 without any persuasive
explanation of how the elements either individually, or as an
ordered combination, amount to an inventive concept that
converts an abstract idea into patent-eligible subject matter.
Appellants assert that like DDR, the claim solution is rooted in
computer technology and solves a technical problem of
composing and executing abstract queries, but do not explain
why. App Br. 22. Without more we are not persuaded the
Examiner’s reasoning is mistaken.
Decision 11 (emphasis added). Essentially, Appellants repeat (Req. Reh’g
8—9) their earlier cut-and-paste contention format of listing claim elements
and case law, and then without sufficient explanation asserting the claim
amounts to significantly more than merely the abstract idea itself. Again,
we find this form of conclusory argument to be unpersuasive.
Our review of the Request does find one attempt to add explanation as
to why claim 1 amounts to significantly more than a patent upon an abstract
idea. Appellants now, for the first time, state that the claimed invention
avoids requiring “users to be aware of the underlying physical
representation of data.” Req. Reh’g 9 (emphasis added). However, we do
not find where Appellants made this point in the Appeal Briefs. We could
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not have overlooked or misapprehended an argument that was not made in
the Principal Brief or Reply Brief. Appellants have not indicated where in
the appeal brief(s) this misapprehended or overlooked argument was initially
raised. Rather, Appellants’ Request for Rehearing newly argues the merits
of the Examiner’s analysis not previously addressed in the Appeal Brief or
the Reply Brief. See Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir.
1998) (“A party cannot wait until after the Board has rendered an adverse
decision and then present new arguments in a request for reconsideration.”);
37 C.F.R. § 41.52(a)(1) (2011). Appellants’ argument is untimely under our
rules of procedure.
Other Arguments
Appellants now, for the first time, present an argument that
These claims do not preempt any alternative approaches
for processing modification operations in an abstract database
insofar as such approaches are disclosed by the references of
record.
Req. Reh’g 7. As noted above, we could not have overlooked or
misapprehended an argument that was not made in the Principal Brief or
Reply Brief.
DECISION
Based on the record before us now and in the original appeal, we have
granted Appellants’ request to the extent that we have reconsidered our
Decision, but we deny Appellants’ request to make any changes in our
Decision. It is our view that Appellants have not identified any points the
Board has misapprehended or overlooked.
The request for rehearing is denied.
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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)(v).
REQUEST FOR REHEARING DENIED
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