Ex Parte Doyle et al

Patent Trial and Appeal Board

Jul 29, 2016

12199626 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/199,626 08/27/2008
46320 7590 08/02/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Ronald P. Doyle
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.
RSW920080227US1 (409) 6283
EXAMINER
NGUYEN, TAND
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD P. DOYLE, EDITH H. STERN, and
BARRY E. WILLNER
Appeal2013-008212
Application 12/199,626 1
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE2
The Appellants filed a Request for Rehearing under 37 C.F.R. § 41.52
of the Decision on Appeal.
In the Decision on Appeal, the Board
• reversed the rejection of claims 1-7 and 19-21under35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 2.
2 Our Decision relies on the Appellants' Request for Rehearing ("Req.,"
filed June 3, 2016) and the Board Decision ("Dec.," mailed April 5, 2016).
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Application 12/199,626
out and distinctly claim the subject matter which applicants regard as
the invention;
• reversed the rejection of claims 2-5 under 35 U.S.C. § 112, fourth
paragraph, as being of improper dependent form;
• sustained the rejection of claims 1-7 and 19-21under35 U.S.C. §
103(a) as unpatentable over Hughes and Friesenhahn, or alternatively,
Hughes and Duquene is sustained; and,
• did not reach the rejection of claims 1-7 and 19-21under35 U.S.C. §
102(b) as anticipated by Bachmann, or alternatively under 35 U.S.C. §
103(a) as unpatentable over Bachmann.
The Request seeks reconsideration of the Decision on the following
grounds:
A. The Board erred by declining to reach the rejection of claims 1-7
and 19-21under35 U.S.C. § 102(b) as anticipated by Rachmann, or
alternatively under 35 U.S.C. § 103(a) as unpatentable over Bachmann.
Req. 3---6.
B. The Board erred by sustaining the rejection of claims 1-7 and 19-
21under35 U.S.C. § 103(a) as unpatentable over Hughes and Friesenhahn,
or alternatively, Hughes and Duquene. Req. 6-12.
For the reasons discussed below, we deny the Request for Rehearing
and enter a new ground of rejection in light of recent developments in the
law.
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Application 12/199,626
DISCUSSION
A. The Board erred by declining to reach the rejection of claims 1-7 and
19-21under35 USC§ 102(b) as anticipated by Bachmann, or
alternatively under 35 USC§ 103(a) as unpatentable over Bachmann.
Appellants argue that, in rendering its Decision, this Board panel erred
in declining to reach the Examiner's rejection of claims 1-7 and 19-21
under 35 U.S.C. § 102(b) as anticipated by Bachmann, or alternatively under
35 U.S.C. § 103(a) as unpatentable over Bachmann. In particular, the
Appellants argue that the Board "is not permitted under the law" to decline
to reach a rejection, and is required to resolve "all appealed issues at hand."
Req. 3---6 (citing 37 C.F.R. § 41.50). The Appellants argue that leaving a
contested ground unsettled is counter to the Administrative Procedure Act
("AP A"), 5 U.S.C. § 1 et seq., because "Appellants are prejudiced as to the
nature of any required amendments to Appellants ' claims in respect to the
art cited in support of the rejections not considered by the Board." Req. 4---6
(citing Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997), and In re
Gilbert P. Hyatt, 211F.3d1367, 1371 (Fed. Cir. 2000)).
We are not persuaded by the Appellants' assertion of error in our
procedural determination that affirming the Examiner's decision to reject
claims 1-7 and 19-21under35 U.S.C. § 103(a) as unpatentable over
Hughes and Friesenhahn, or alternatively, Hughes and Duquene rendered
unnecessary a decision on the Examiner's rejection of the same claims under
35 U.S.C. § 102(b) as anticipated by Bachmann, or alternatively under 35
U.S.C. § 103(a) as unpatentable over Bachmann.
The Appellants are correct that 37 C.F.R. § 41.50(a)(l) grants express
authority to the Board only to affirm, reverse, or remand decisions of the
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Application 12/199,626
exammer. In the Decision, we affirmed the Examiner's decision to reject
claims 1-7 and 19-21. Nothing in the rule requires more.
The Appellants point to no persuasive authority for the proposition
that the Board is required to decide the merits of each of multiple rejections
of the same claims in order to resolve or conclude an appeal. Although the
Appellants cite Gechter and Hyatt as support for their argument, neither case
addressed the question of whether the Board is required to decide the merits
of multiple rejections of the same claims. In Gechter, our reviewing court,
the U.S. Court of Appeals for the Federal Circuit (CAFC), determined that
the Board's anticipation analysis was inadequate because the Board's
decision only addressed one of several claim limitations and it was not clear
from the Board's decision what construction the Board had placed on a
disputed claim limitation. Gechter, 116 F .3d at 1456. In this case, the
Appellants do not contend that our decision to affirm the Examiner's
rejection of claims 1-7 and 19-21under35 U.S.C. § 103(a) as unpatentable
over Hughes and Friesenhahn, or alternatively, Hughes and Duquene was
not explained with sufficient detail to permit judicial review by the CAFC.
Therefore, the Appellants' reliance on Gechter is misplaced.
The Board's enabling statute, 35 U.S.C. § 6, states in relevant part that
"[t]he Patent Trial and Appeal Board shall-- (1)[,] on written appeal of an
applicant, review adverse decisions of examiners upon applications for
patents pursuant to section 134(a)." 35 U.S.C. § 6(b) (2012). In ex parte
appeals, the statutory duty of the Board is to "review adverse decisions of
examiners." Id. By its terms, the statute places no restrictions or conditions
on how the Board should review adverse decisions of examiners. See
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Berman v. Housey, 291 F.3d 1345, 1353-54 (Fed. Cir. 2002) (this section
addresses "only what issues the Board is empowered to consider, and thus
does not establish any affirmative obligations that it must perform").
In Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984),
the Federal Circuit concluded that the United States International Trade
Commission ("Commission") "is at perfect liberty to reach a ...
determination on a single dispositive issue." 742 F.2d at 1423. Beloit is
persuasive because the CAFC also reviews the Commission's final
decisions, and the Commission, like the USPTO, is an agency governed by
the AP A. As the court further explained, such an approach "may often save
the [agency], the parties, and this court substantial unnecessary effort." Id.;
cf, e.g., In re Hyon, 679 F.3d 1363, 1367 (Fed. Cir. 2012) (affirming
rejection of all claims under section 103(a) made it unnecessary to reach
other grounds of rejection); In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir.
2009) (not reaching other rejections after upholding an anticipation
rejection); In re Basel! Poliolefine Italia S.P.A., 547 F.3d 1371, 1379 (Fed.
Cir. 2008) ("Having concluded that the Board properly affirmed the
rejection of [the pending claims] based on obviousness-type double
patenting ... , we need not address the ... §§ 102(b) and 103(a) rejections,
as well as the additional double patenting rejections").
We further note that our reviewing court has declined to reach
alternate grounds of affirmance (examiner rejection) when presented with a
35 U.S.C. § 101 non-statutory subject matter issue-"[ w]e do not reach the
ground relied on by the Board below-that the claims were unpatentable as
obvious ... -because we conclude that many of the claims are 'barred at
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the threshold by§ 101."' In re Comiskey, 554 F.3d 967, 973 (Fed. Cir.
2009) (quoting Diamond v. Diehr, 450 U.S. 175, 188 (1981)). Similarly, we
also note that the Board has had occasion not to reach alternate grounds of
affirmance when presented with a 35 U.S.C. § 101 non-statutory subject
matter issue. See Ex Parte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009)
(precedential).
The Appellants argue that their rights have been prejudiced because
"without the valued guidance of the Board expected and relied upon by
Appellants in the course of an Appeal, Appellants would simply be engaging
in guesswork in crafting any claim amendments." Req. 4. This is simply
not true. Nothing in our Decision prevents the Appellants from reviewing
all of the prior art cited by the Examiner and, upon return of the application
to the jurisdiction of the Examiner, amending the claims to distinguish over
the prior art. The Appellants are in a better position than the Board to
identify any features that may distinguish their invention over the various
prior art references of record and to define the scope of their invention in the
claims accordingly. Cf In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)
("It is the applicants' burden to precisely define the invention, not the
PTO's").
Therefore, we are not persuaded by Appellants' arguments that this
Board panel erred in declining to reach the Examiner's rejection of claims
1-7 and 19-21under35 U.S.C. § 102(b) as anticipated by Bachmann, or
alternatively under 35 U.S.C. § 103(a) as unpatentable over Bachmann.
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B. The Board erred by sustaining the rejection of claims 1-7 and 19-21
under 35 US.C. § 103(a) as unpatentable over Hughes and Friesenhahn, or
alternatively, Hughes and Duquene.
The Appellants argue that the "Board has overlooked and/or
misapprehended" its arguments on appeal. Req. 12.
In the Decision, we found that "the technical standards of Hughes
describe a portion of the product development and manufacture process,
namely, product requirements." Dec. 6-7. Therefore, we found that- even
under Appellants' proffered interpretation of "workflow" - the draft
technical standard disclosed in Hughes meets the limitation "community
documentation for the portion of the workflow" in claim 1. Dec. 7.
Appellants' arguments in the Request are directed solely to contesting this
finding of fact. Req. 6-12. Appellants contend that the technical standard in
Hughes "is the result of product development" and therefore is not "for a
portion of the workflow." Req. 11. According to the Appellants, "[t]here is
no statement in Hughes that the portion of the technical standard for which
comments are received are 'for a portion of the workflow', e.g.[,] 'product
development."' Req. 12.
We disagree. As we previously explained in the Decision, Hughes
discloses that "[t]hroughout the life cycle of product development and
manufacture, standards (sometimes called specifications) are used to
communicate and record product requirements" such as "raw materials,
product formulation, packaging materials, product packing, test methods,
and the like." Hughes i-f 5 (emphasis added). Thus, it is clear from the
disclosure in Hughes that the draft technical standards are used throughout
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the course of product development and manufacture, and are not merely a
result of product development as argued by Appellants.
Therefore, we are not persuaded by Appellants' arguments that this
Board panel erred in affirming the Examiner's rejection of claims 1-7 and
19-21under35 U.S.C. § 103(a) as unpatentable over Hughes and
Friesenhahn, or alternatively, Hughes and Duquene.
NEW GROUND OF REJECTION
Claims 1-7 and 19-21 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Since our Decision of April 5, 2016 several new developments in the
area of subject-matter eligibility have arisen. In May and June, the Federal
Circuit Court of Appeals issued several new decisions applying the
framework set forth in Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347 (2014). See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
May 12, 2016), In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607 (Fed.
Cir. 2016), and Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
No. 2015-1763, 2016 WL 3514158, at *7 (Fed. Cir. June 27, 2016). In May
and July the USPTO issued two Memoranda providing updated Subject
Matter Eligibility Guidelines. 3 In light of these new decisions and new
USPTO guidelines, we have revisited the claims in this case and we now
determine that the claims are not patent-eligible under 35 U.S.C. § 101.
3 Available at http://www.uspto.gov/patent/laws-and-
regulations/examination-policy/2014-interim-guidance-subject-matter-
eligibility-0.
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Application 12/199,626
We select independent claim 1 as representative of the claims being
rejected.
The Supreme Court has long held that laws of nature, abstract ideas,
and natural phenomena are excluded from patent protection. See Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
(2012); Diamond v. Diehr, 450 U.S. 175, 185 (1981). Yet, although a law of
nature or an abstract idea, by itself, is not patentable, a practical application
of the law of nature or abstract idea may be deserving of patent protection.
See Mayo, 132 S. Ct. at 1293-94.
In Alice, the Court reiterated the framework, set forth previously in
Mayo, "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of [these] concepts." Alice, 134 S. Ct. at 2355 (citation
omitted). The first step in this analysis is to "determine whether the claims
at issue are directed to one of those patent-ineligible concepts." Id. (citation
omitted). If so, in the second step, the elements of the claims "individually
and 'as an ordered combination'" are considered to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 132 S. Ct. at 1297, 1298).
Stated differently, the second step is a "search for an 'inventive concept' -
i.e., an element or combination of elements that is 'sufficient to ensure that
the patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (quoting Mayo, 132 S. Ct. at 1294).
The Specification describes the invention as "relat[ing] to the field
[of] business process documentation." Spec. para. 1.
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The "community input method" of claim 1 comprises three steps: (1)
receiving a request to access a workflow, (2) receiving community input to
community documentation, and (3) transmitting the community
documentation.
"[T]he first step in the Alice inquiry ... asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
The subject matter of claim 1, as reasonably broadly construed, is
drawn to a concept of community input; that is, claim 1 is drawn to a
methodology whereby input is gathered from a community of people. We
find that the concept of community input is a well-established fundamental
economic practice. Furthermore, we find that the "computer
communications network" of claim 1 is invoked merely as a tool and does
not provide any specific improvement in computer capabilities. Because we
find that claim 1, as reasonably broadly construed, is directed to the concept
of community input, i.e., a fundamental economic practice, and that the
recited "computer communications network" is invoked merely as a tool,
claim 1 is directed to a patent-ineligible abstract idea.
Turning to the second step outlined in Alice, we next consider whether
there is an inventive concept, defined by an element or combination of
elements in claim 1, which is significantly more than the abstract idea of
community input. We conclude here that there is no such inventive concept.
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The method as claimed is an application of gathering community
input in a known computer network environment. With regard to
implementing said method on a computer, as in the context of a known
"computer communications network" and "memory of a computer," as
claimed, "the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S.
Ct. at 2358.
For the foregoing reasons, we find that claim 1 does not include
additional inventive features such that the claim scope does not solely
capture the abstract idea.
Therefore, claim 1 is rejected under 35 U.S.C. § 101. For similar
reasons, we also reject claims 2-7 and 19-21.
CONCLUSIONS
For the foregoing reasons, we maintain our decision to sustain the
rejection of claims 1-7 and 19-21under35 U.S.C. § 103(a) as unpatentable
over Hughes and Friesenhahn, or alternatively, Hughes and Duquene.
Claims 1-7 and 19-21 are newly rejected under 35 U.S.C. § 101.
NEW GROUND
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
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§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 3 7 C.F .R. § 41. 50(b )( 1 ), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED; 37 C.F.R. § 41.50(b)
12