Ex Parte Fabris et al

Patent Trial and Appeal Board

Oct 25, 2017

12387694 (P.T.A.B. Oct. 25, 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.
12/387,694 05/06/2009 Andres Fabris TRAX01-00002 5124
23990 7590
DOCKET CLERK
P.O. DRAWER 800889
DAT!.AS, TX 75380
EXAMINER
HARRINGTON, MICHAEL P
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents @ munckwilson. com
munckwilson @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRES FABRIS and ANDREW CHEN
Appeal 2016-007533
Application 12/387,6941
Technology Center 3600
Before KRISTEN L. DROESCH, JOHN A. EVANS, and
CARL L. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
This is a decision on Rehearing in Appeal No. 2016-007533. We
have jurisdiction under 35 U.S.C. § 6(b). Requests for Rehearing are limited
to matters misapprehended or overlooked by the Board in rendering the
original decision. 37 C.F.R. §41.52.
We have reconsidered our Decision regarding the claims in light of
Appellants’ arguments in the Request for Rehearing (“Request”). We grant
the Request to the extent that we consider the Appellants’ arguments infra,
1 The real party in interest is identified as Traxo, LLC. App. Br. 2.
Appeal 2016-007533
Application 12/387,694
but DENY the request to modify our Decision. We incorporate our earlier
Decision herein by reference. See 37 C.F.R. § 41.52(a)(1).
ISSUES ON REHEARING
Appellants present arguments they assert should be considered in the
Request. Thus, the issue is whether the Board either overlooked or
misapprehended these arguments.
ANALYSIS
In our Decision, we affirmed the rejections of claims 1—12 and 14—28
under 35 U.S.C. § 101. (Decision 11).
Appellants’ argue the Decision errs, under the two step test of Alice,
because the claims are not directed to an abstract idea (Step 1) and the
claims recite significantly more than the alleged abstract idea (Step 2).
(Req. 2—9). Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014);
Mayo Collaborative Services v. Prometheus Labs. Inc., 132 S.Ct. 1289
(2012).
Step one of Alice
Appellants argue “[t]he Decision errs by concluding that “none of the
claims provides a solution 'necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks’” (Decision 9) and in finding that “any purported faster or more
efficient performance of the claimed steps or acts merely comes from the
capabilities of a general-purpose computer and/or computer related
elements, rather than from Appellants[] claimed steps or functions.”
(Decision 10; see also Req. 2). According to Appellants, claim 1 requires a
2
Appeal 2016-007533
Application 12/387,694
data processing system initiating access to a first online data source over a
network, the data processing system pulling first travel information from the
first online data source, the data processing system automatically detecting
second travel information from a data record that is pushed to the data
processing system by a second online data source. Req. 3^4. Appellants
then argue, unlike Electric Power Group, the steps cannot be performed as
mental steps, e.g., “[i]t is impossible for a person to mentally initiate access
to a first online data source over a network.” Id. at 4. Appellants argue
claim 1 must be performed using computer and network technology and the
communication of the travel plans come from multiple sources associated
with computer networks and thus the problem that Appellants’ disclosure
addresses “specifically aris[es] in the realm of computer networks.” Id. In
particular, “as in DDR, [c]laim 1 (as well as other independent claims and
dependent claims 6, 8, 9) is necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks.” Id.
Appellants argue the Federal Circuit stated that a claim that uses
limited rules in a process specifically designed to achieve an improved
technological result in conventional industry practice is not directed to an
abstract idea. Id. at 5 (citing McRO, Inc. v. Bandai Namco Games America,
Inc., 837 F.3d 1299, 1303 (Fed. Cir. 2016)). According to Appellants, in
McRO, after performing a detailed preemption analysis in step one of the
Alice test, the Court held that “the ordered combination of claimed steps,
using unconventional rules that relate sub-sequences of phonemes, timings,
and morph weight sets, is not directed to an abstract idea and is therefore
patent-eligible subject matter under 101” and “[t]he claims were found to be
3
Appeal 2016-007533
Application 12/387,694
patent-eligible even where the claimed improvement was incorporated in
software.” Req. 5—6.
Appellants argue, pursuant to Enflsh, LLC v. Microsoft Corp., 822
F.3d 1327, 1335 (Fed. Cir. 2016), it is clear that claim 1 as a whole is not
simply directed to excluded subject matter, and pursuant to McRO, claim 1
is limited to a specific process using particular information and techniques to
achieve an improved technological result, and claim 1 does not preempt
approaches that use different information or different techniques. Id. at 6.
In our Decision, we stated we are not persuaded by Appellants’
arguments set forth in the Briefs and agree instead with the Examiner’s
findings that the claims are directed to abstract ideas and patent-ineligible
concepts. Decision 3—10. In particular, the claims are directed to “using
categories to organize, store, and transmit information, and using
mathematical correlations to organize information.” Req. 6; see also
Decision 3—10.
We agree with the Examiner’s findings as discussed in our Decision
(6—10):
Claim 1 has thus been directed towards a series of steps of
accessing a database, transmitting travel information from the
database, detecting new information in a second database,
determining trip information, displaying a notifications to a first
user based on a comparison of trip information, transmitting a
notification to a second user, and displaying notifications to a
first user when changes are made with the second user; thus
using categories to organize, store, and transmit information,
and using mathematical correlations to organize information;
thus an abstract idea. More simply, the organization of first and
second travel information in databases, and using mathematical
correlations of the travel information to identify overlapping
data, and transmitting information to users, is an abstract idea.
4
Appeal 2016-007533
Application 12/387,694
The Appellant has failed to direct the claim limitations, taken
individually or in combination, to something that amounts to
significantly more than the abstract idea because merely
receiving information, transmitting information, and displaying
information are deemed extrasolution activity.
Additionally, the implementation of the generic computer
elements (data processing system and a network) recited in high
generality, fail to amount to significantly more than the recited
abstract idea, as their implementation would be well-known,
routine, and conventional in any computer implementation of
the abstract idea. Particularly, the mere use of applying a
computer and a network to organize first and second travel
information in databases, use mathematical correlations of the
travel information to identify overlapping data, and transmitting
information, such as notifications and buddy requests to users
fails to amount to significantly more than the abstract idea.
Ans. 4—5.
The Applicant's claimed invention, as shown above, is not
directed a problem specifically arising in the realm of computer
networks, but instead to mere using categories to organize,
store, and transmit information, and using mathematical
correlations to organize information, with the mere addition of
taking place using a computer and a network to transmit
information. The Applicant has failed to direct the claimed
invention towards the actual computer network, or a problem
arising in it, and instead has merely relied on said network to
transmit travel information and notifications, which are well-
known, routine, and conventional activities in the realm of
computers.
Ans. 7.
It is first noted that the Appellant has failed to actually identify
any limitations that amount to significantly more than the
abstract idea, and instead has made a general allegation that the
stated claim includes “numerous elements related to specific
5
Appeal 2016-007533
Application 12/387,694
data and specific operations. This is 'substantially more' than
any alleged abstract concept.” Second, the Examiner notes that
this conclusion by the Appellant is incorrect and falsely equates
all extrasolution activity and field of use activity to significantly
more than the abstract idea. The Examiner notes that merely
grounding the claimed invention the realm of reservations and
travel, the Applicant has merely narrowed the abstract idea with
a field of use.
Additionally, the courts have recognized the following
computer functions to be well understood, routine, and
conventional functions when they are claimed in a merely
generic manner: receiving, processing, and storing data,
electronic recordkeeping, and receiving or transmitting data
over a network, e.g., using the Internet to gather data. In
particular, the Examiner notes that the mere fathering of first
and second travel information is simple using the Internet to
gather data, and thus not significantly more than the abstract
idea. Additionally, displaying notifications to alert a user to
correlated data, displaying a notification to a buddy, and
displaying a notification to a user regarding the buddy, is
merely the transmission and outputting of data over a network
and thus fails to amount to significantly more than the abstract
idea.
Ans. 8—9.
Additionally, when considering if the claimed limitations, when
viewed in individually or in combination, amount to significantly
more, the Examiner notes that the Appellant has merely further
recited within the claim, beyond the abstract idea, the steps of
data gathering and data output, and the field of use of the abstract
idea, and thus the Appellant has failed to claim anything more
than extrasolution activity.
Ans. 10.
6
Appeal 2016-007533
Application 12/387,694
As we stated in our Decision:
We conclude each of Appellants’ claims on appeal is distinguishable
from the type of claim considered by the court in Enfish as none of
Appellants’ claims is “directed to an improvement in the functioning
of a computer,” as was found by the court regarding the subject claim
in Enfish, 822 F.3d at 1338. Similarly, we conclude none of the
claims provides a solution “necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of
computer networks.” DDR, 773 F.3d at 1257. Regarding Enfish and
DDR, we note the Specification provides no basis to support
Appellants’ arguments. See, for example, Spec. Tflf 3—7, 88—97.
Decision 9.
Regarding McRo, while claim 1 may not preempt other
approaches that use different information or different techniques, we
are not persuaded by Appellants’ argument “the ordered combination
of claimed steps, using unconventional rules that relate sub-sequences
. . . is [] patent-eligible subject matter” is applicable here. Req. 5—6.
First, pre-emption is only a factor to be considered and, second,
Appellants do not present sufficient persuasive evidence that
unconventional rules are present in the claims. Regarding
preemption, “[wjhile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate
patent eligibility. . . . Where a patent’s claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and
made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015); see also OIP Technologies, Inc. v.
Amazon.com, Inc, 788 F.3d 1359, 1362—63.
7
Appeal 2016-007533
Application 12/387,694
Step two of Alice
Appellants argue the claims are directed to significantly more than
any alleged abstract idea, “the Decision has not identified or addressed any
additional elements in Claim 1 beyond the alleged abstract idea,” and it is
not clear that the Decision has given any consideration to the additional
elements recited in the claims, both beyond and within the alleged abstract
idea. Req. 7—9. According to Appellants, “virtually everythins recited in
Claim 1 extends beyond the mere concept of “using categories to organize,
store, and transmit information, and using mathematical correlations to
organize information.” Id. at 7. Appellants argue the additional elements in
the claim “considered as an ordered combination amount to significantly
more than the alleged abstract idea.” Id. at 8.
In our Decision, we stated we are not persuaded by Appellants’
arguments and agree with the findings of the Examiner that the claims do not
constitute an inventive concept that is significantly more than a patent on the
patent-ineligible concept. Decision 10-11; see also Decision 6—10 (citing
Ans. 4—12 including Examiner’s findings). The claims include no
limitations that prevent covering the abstract idea itself. As discussed
regarding Step one, infra, the recited additional elements (generic computer
functions including database, network, Internet and related elements) are
conventional and the hardware features are the type of generic element that
has been determined to be insufficient by the Supreme Court to transform a
patent-ineligible claim into one that is patent-eligible. See Alice, 134 S.Ct.
at 2358; see also Decision 6—10. Additionally, we note neither Appellants
nor the Specification provides sufficient basis to support the claimed
“additional elements” to be other than conventional or an ordered
8
Appeal 2016-007533
Application 12/387,694
combination that amounts to significantly more than the identified abstract
idea. Req. 7—9.
In view of the above, we find no error in the 35 U.S.C. § 101 rejection
of claims 1—12 and 14—28 and in our affirmance of that rejection.
CONCLUSION
Nothing in Appellants’ Request has persuaded us that we have
overlooked or misapprehended the arguments made by Appellants.
Accordingly, we deny the Request for Rehearing.
DECISION
To summarize, our decision is as follows:
We have considered the Request but DENY the request that we
reverse the Examiner as to claims 1—12 and 14—28.
DENIED
9