Ex Parte Els et al

Patent Trial and Appeal Board

Sep 24, 2018

13959490 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/959,490 08/05/2013
21186 7590 09/26/2018
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
UNITED ST A TES OF AMERICA
Henning Els
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.
3790.006US 1 6572
EXAMINER
DANNEMAN, PAUL
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENNING ELS, PHIL FINE, and ARI SODHI
Appeal2017-006578 1
Application 13/959,4902
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 21--40, which are all the pending claims in the
application, under 35 U.S.C. § 101 as being directed to non-statutory subject
matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed
July 18, 2016) and Reply Brief ("Reply Br.," filed Mar. 13, 2017), the
Examiner's Answer ("Ans.," mailed Jan. 13, 2017), and the Non-Final
Office Action ("Non-Final Act.," mailed Dec. 16, 2015).
2 Appellants identify "Calix, Inc." as the real party in interest. App. Br. 2.
Appeal2017-006578
Application 13/959,490
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants' disclosure "pertains generally to monitoring data usage,
and more particularly, but not by way of limitation, to a service utilization
browser plug-in." Spec. ,r 2. Method claim 21, computer-readable medium
claim 29, and system claim 35 are the independent claims on appeal and
recite substantially similar subject matter. Claim 21, reproduced below, is
illustrative of the subject matter on appeal, and recites:
21. A method comprising:
transmitting an encrypted request for subscriber billing
status information of a subscriber;
in response to the request, receiving the subscriber billing
status information in a response message;
parsing the response message to retrieve a future billing
estimate for a billing cycle of the subscriber, the future billing
estimate based on extrapolating past data usage of the
subscriber during the billing cycle to the end of the billing
cycle;
formatting a status message based in part on the received
subscriber billing status information, the status message
including the future billing estimate; and
presenting the status message in a network application.
App. Br. 17 (Claims App.).
ANALYSIS
Under 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. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
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Bank Int'!, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 566 U.S. 66, 82-84 (2012), "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice,
134 S. Ct. at 2355. The first step in that analysis is to "determine whether
the claims at issue are directed to one of those patent-ineligible concepts."
Id. If the claims are not directed to a patent-ineligible concept, e.g., to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered "individually
and 'as an ordered combination'" to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. 66).
Appellants' invention aims to present to a subscriber of a network
access plan a future billing estimate based on data consumption for a billing
cycle. Spec. ,r,r 12-13. Representative claim 21 3 is drawn to a method
comprising five steps: (1) transmitting a request for subscriber billing status
information; (2) receiving the subscriber billing status information in a
response message; (3) parsing ( or analyzing) the response message to
retrieve a future billing estimate for a billing cycle based on past data usage;
3 Appellants argue all independent claims as a group. See App. Br. 8-13.
We select independent claim 21 as representative for this group. Thus,
claims 29 and 35 stand or fall with claim 21. 37 C.F.R. § 4I.37(c)(l)(iv).
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( 4) fonnatting4 a status message based on the received subscriber billing
status information, which includes an estimated cost for a billing cycle; and
( 5) presenting the status message in a network application "such as an
internet browser." 5 See claim 21 supra. We agree with the Examiner that
claim 21 is similar to Electric Power Group, LLC v. Alstom, 830 F.3d 1350
(Fed. Cir. 2016). Ans. 3. 6 There, the court held that the claims were
directed to a combination of abstract ideas, explaining that "[ t ]he advance
they purport to make is a process of gathering and analyzing information of
a specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions." Elec.
Power Grp., 830 F.3d at 1354 ("[W]e have treated 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."). We have considered the claims "in their entirety to ascertain
whether their character as a whole is directed to excluded subject matter."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015). The question is whether the claims as a whole "focus on a
specific means or method that improves the relevant technology" or are
"directed to a result or effect that itself is the abstract idea and merely invoke
4 "Formatted status message 218 may be in text form ( e.g., text status 312 in
FIG. 3) or may be a graphical representation ( e.g., chart 318 in FIG. 3)."
Spec. ,r 34.
5 Id. ,I 47.
6 "[T]he decisional mechanism courts now apply is to examine earlier cases
in which a similar or parallel descriptive nature can be seen - what prior
cases were about, and which way they were decided." Amdocs (Israel) Ltd.
v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (emphasis
added).
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generic processes and machinery." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). As the Examiner correctly
observed, "there is no improvement to another technology, [and] there are no
improvements to the functioning of the generic computerized
communication devices." Non-Final Act. 5.
Appellant [sic] submits that the appealed claims do indeed
include an inventive technology for performing functions. The
recited network application is being improved at least because
of the inclusion of a status message that has been formatted
"based in part on the received subscriber hilling status
information, the status message including the future billing
estimate." Additionally, the future billing estimate is based
on "extrapolating past data usage of the subscriber during the
billing cycle to the end of the billing cycle."
Reply Br. 2. We cannot agree.
As in Electric Power, the focus of the claim here is not on "an
improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools." Elec. Power Grp., 830 F.3d at 1354. The
steps of transmitting and receiving ( collecting information), parsing
( analyzing), and presenting ( displaying), taken individually are themselves
directed to an abstract idea. See Elec. Power Grp., 830 F.3d at 1343 (When
"the focus of the asserted claims" is "on collecting information, analyzing it,
and displaying certain results of the collection and analysis," the claims are
directed to an abstract idea.). As for the formatting step, the Specification
provides that "API server 114 may format a response message and transmit
it back to the requester ... according to a defined structure such [as]
Extensible Markup Language (XML) or JavaScript Object Notation
(JSON)." Spec. ,r 28. However, using a markup language or XML to format
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or compose a message does not make the claim any less abstract. Cf
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017) ("[T]he patent's recitation of XML documents specifically,
does little more than restrict the invention's field of use. Such limitations do
not render an otherwise abstract concept any less abstract.") ( citing Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir.
2016)). Merely combining these abstract ideas as claimed does not render
the combination any less abstract. Cf Shortridge v. Found. Constr. Payroll
Serv., LLC, No. 14-cv-04850-JCS, 2015 WL 1739256 (N.D. Cal. Apr. 14,
2015), ajfd, 655 F. App'x 848 (Fed. Cir. 2016).
There is a fundamental difference between computer functionality
improvements, on the one hand, and uses of existing computers as tools to
perform a particular task, on the other. The Federal Circuit applied this
distinction in Enfzsh 7 in rejecting a§ 101 challenge at the step-one stage in
the Alice analysis because the claims at issue focused, not on asserted
advances in uses to which existing computer capabilities could be put, but on
a specific type of data structure, i.e., a self-referential table for a computer
database, designed to improve the way a computer carries out its basic
functions of storing and retrieving data. Id. at 1335-36. Unlike the claims
found non-abstract in prior cases, the claims here use generic computer
technology to analyze and retrieve a billing estimate based on past data
usage, without reciting any improvement to a particular computer
technology. Cf McR08 (finding claims not abstract because they "focused
7 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
8 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15
(Fed. Cir. 2016).
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on a specific asserted improvement in computer animation"). Appellants do
not explain how formatting a message that includes a billing estimate into
readable text for display to a user reflects an improvement to computer
capabilities or functioning, as opposed to using a computer as a tool in its
ordinary capacity to analyze data and display the results to a user on a web
browser. Thus, we are not convinced that claim 21 is not directed to an
abstract idea.
Under Alice step two, Appellants take issue with the Examiner's
analysis and argue that the rejection fails to discuss the parsing and
formatting steps in detail. App. Br. 12. This argument is flawed because the
Examiner included these features as part of the abstract idea, and relied on
the similarity to Electric Power ( Ans. 3) as invoking "generic computerized
communication devices" (Non-Final Act. 5), such as a processor and storage
device. There, the court noted: "We have repeatedly held that such
invocations of computers and networks that are not even arguably inventive
are 'insufficient to pass the test of an inventive concept in the application' of
an abstract idea." 830 F.3d at 1354. "Nothing in the claims, understood in
light of the specification, requires anything other than off-the-shelf,
conventional computer, network, and display technology for gathering,
sending, and presenting the desired information." Id. at 1355.
It is well-established by now that the introduction of a generic
computer or computing environment into the claims does not alter the
analysis here because
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
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abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[ t ]" an abstract idea
"on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our§ 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 134 S. Ct. at 2358 (citations omitted). The relevant question is
whether the claims here do more than simply instruct the practitioner to
implement the abstract idea on a generic computer. Id. at 2359. We
conclude that they does not.
Instead, we agree with the Examiner that the claimed invention
merely requires generic computer implementation and fails to transform the
abstract idea into a patent eligible invention. See Alice, 134 S. Ct. at 2358;
see also, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
1314, 1324--25 (Fed. Cir. 2016) (explaining that "generic computer
components such as an 'interface,' 'network,' and 'database' ... do not
satisfy the inventive concept requirement" ( citations omitted)). The
functions performed by the claimed process embody basic functions of a
computer that amount to nothing more than programming conventional
software or hardware to perform a mathematical operation. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), cert. denied,
136 S. Ct. 701 (2015) ("[R]elying on a computer to perform routine tasks
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more quickly or more accurately is insufficient to render a claim patent
eligible.").
Contrary to Appellants' arguments (App. Br. 13), the recited claim
language is not sufficient to make the invention "rooted in computer
technology" like the claims in DDR Holdings 9 or Bascom. 1° Cf Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir.
2015) ("The patent claims here do not address problems unique to the
Internet, so DDR has no applicability."). For example, in DDR Holdings,
the Federal Circuit determined that, although the patent claims at issue
involved conventional computers and the Internet, the claims addressed the
problem of retaining website visitors who, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host's website after "clicking" on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
The court held that those claims were directed to statutory subject matter
because they recite a solution "necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks." Id. Unlike the claims in DDR Holdings, Appellants do not
identify any problem particular to computer networks and/or the Internet that
claim 21 allegedly overcomes.
And, we disagree that the mere "presentation of the status message []
in a network application [ such as an internet browser] by definition is rooted
9 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014).
10 Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016).
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in computer technology." App. Br. 13. In fact, the court in DDR Holdings
cautioned "that not all claims purporting to address Internet-centric
challenges are eligible for patent." DDR Holdings, 773 F.3d at 1258. For
example, the court distinguished the patent-eligible claims at issue from
claims held patent-ineligible in Ultramercial. See id. at 1258-59 (citing
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014)).
As noted there, the Ultramercial claims were "'directed to a specific
method of advertising and content distribution that was previously
unknown and never employed on the Internet before."' Id. at 1258
( quoting Ultramercial, 772 F .3d at 714). Nevertheless, those claims
were patent ineligible because they "merely recite[ d] the abstract idea of
'offering media content in exchange for viewing an advertisement,' along
with 'routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and
use of the Internet."' Id. ( citation omitted).
In Bascom, the Federal Circuit held that "[t]he inventive concept
described and claimed in the '606 patent is the installation of a filtering tool
at a specific location, remote from the end-users, with customizable filtering
features specific to each end user." Bascom, 827 F.3d at 1350. The court
explained that the remote location of a filtering tool having customizable
user-specific filtering features provides the filtering tool both the benefits of
a filter on a local computer and the benefits of a filter on the ISP server,
which is a technical improvement over prior art ways of filtering content.
Id. at 1350-51. Here, Appellants have not demonstrated any particular
arrangement in the claims as providing an inventive concept.
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In view of the foregoing, we sustain the Examiner's rejection of
independent claim 21 under 35 U.S.C. § 101, and claims 29 and 35, which
fall with claim 21. We also sustain the rejection of dependent claims 26, 28,
30-34, 36, 37, 39, and 40, which are not argued separately.
Dependent claims 22-25, 27, and 38
We have considered Appellants' contention as to dependent claims
22-25, 27, and 38, but we are not persuaded that these claims add anything
significantly more to transform the abstract idea. For example, claim 22
includes additional future billing estimates in the response message. Claim
24 analyzes the response message to determine other billing data. As such,
the dependent claims may limit the scope of the abstract idea to which the
independent claims are directed, but their character remains unchanged,
especially given that these dependent claims provide no insight to
improvements in computer functionality beyond what one would expect
from using a generic computer as a tool in performing the scheme as
claimed. Accordingly, we are not apprised of error and, thus, we sustain the
rejection of claims 22-25, 27, and 38.
DECISION
The Examiner's rejection of claims 21--40 under 35 U.S.C. § 101 is
affirmed.
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).
AFFIRMED
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