Ex Parte FentonDownload PDFPatent Trial and Appeal BoardMay 16, 201712842284 (P.T.A.B. May. 16, 2017) Copy Citation 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. 12/842,284 07/23/2010 Charles Stanley Fenton RSW920105046U S1 (779) 3751 46320 7590 CRGO LAW STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, EL 33434 05/18/2017 EXAMINER TRAN, QUOC A ART UNIT PAPER NUMBER 2177 NOTIFICATION DATE DELIVERY MODE 05/18/2017 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): docketing@crgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLES STANELY FENTON Appeal 2014-006945 Application 12/842,284 Technology Center 2100 Before MAHSHID D. SAADAT, TERRENCE W. McMILLIN, and JOYCE CRAIG Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1—20, which are all the claims pending in this application. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm-in-part and enter new grounds of rejection under 37 C.F.R. § 41.50(b). 1 According to Appellant, the real party in interest is International Business Machines International Group (App. Br. 2). Appeal 2014-006945 Application 12/842,284 STATEMENT OF THE CASE Introduction Appellant’s invention relates to managing the naming of documents (Spec. 11). Claim 1 is illustrative of the invention and reads as follows. 1. A method of naming documents according to a document naming convention (DNC), comprising: receiving, from any of a plurality of document processing applications (DPAs) within an enterprise, a request for a document name; generating, by a document name generator, a document name infix portion in compliance with the DNC; including the infix portion, a prefix, and a suffix in the document name; and sending the document name to a requesting DPA. The Examiner’s Rejections Claims 1—9, 12—15, and 17—20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Coley (US 2010/0245938 Al, Sept. 30, 2010) and Molenaar (US 2009/0265608 Al, Oct. 22, 2009) (Final Act. 3-15).2 Claims 10, 11, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Coley, Molenaar, and Miloushev (US 2006/0080353 Al, Apr. 13, 2006) (id. at 15-18). 2 The Examiner has withdrawn the rejection of claims 12—16 under 35 U.S.C. § 101 for being directed to nonstatutory subject matter (Ans. 20; see also Final Act. 2—3). 2 Appeal 2014-006945 Application 12/842,284 ANALYSIS Rejection of Claim 1 over Coley and MolenaaC Claim 1 is directed to generating a document name comprising a prefix, an infix portion, and a suffix, wherein the infix portion is generated in compliance with a document naming convention (DNC) (Claim App.). The Examiner finds Molenaar’s generation of an XML document name comprising the concatenation of a prefix, a dynamic part, and a suffix, teaches the claimed document name comprising a prefix, an infix portion, and a suffix (Final Act. 5—6; Ans. 24—25; Molenaar || 42 45). The Examiner further finds Coley teaches generating a document name based on a profile that includes a file mask, wherein the file mask sets the naming convention for files/documents (Final Act. 4—5; Ans. 21—24; Coley 1128), and consequently, teaches generating a document name in compliance with a document naming convention (DNC) (Final Act. 4—5; Ans. 21—24). The Examiner explains utilizing Coley’s document naming process (in compliance with a DNC) to generate Molenaar’s dynamic portion (infix portion) of its XML document name, teaches generating “a document name infix portion in compliance with the DNC,” as recited in claim 1. Appellant argues neither Coley nor Molenaar teaches a document name infix portion in compliance with a DNC (App. Br. 6—8; Reply Br. 2— 4). Appellant faults Coley and Molenaar individually for lacking a teaching the Examiner relies upon the combination of Coley and Molenaar to show. As discussed supra, the Examiner relies upon Coley to teach generating a 3 Notwithstanding the rejections based on new grounds discussed infra, dependent claims 2—11, 13—16, and 18—20 stand or fall together with their respective independent claims 1, 12, and 17 (App. Br. 16). 3 Appeal 2014-006945 Application 12/842,284 document name based on a document naming convention (Final Act. 4—5; Ans. 21—24). The Examiner, utilizing Coley’s document name generation process to generate the infix portion of Molenaar’s concatenated document name, finds the combination teaches generating a document name infix portion in compliance with a document naming convention (Final Act. 4—6; Ans. 21—25). Accordingly, we are not persuaded of Examiner error. Rejection of Claims 12 and 17 over Coley and Molenaar Appellant argues the Examiner has not identified any portions of the references as teaching “allocate, from time to time, availability for a pool of document unification identifiers (DUlDs) among a plurality of document processing applications (DPAs)” and “responsive to receiving a document name request from a document name generator (DNG) requesting a document name on behalf of a DPA associated with the DNG, acquire a DU1D from a plurality of available DNGs allocated to the DPA,” as recited in independent claim 12 (App. Br. 9-10; see Reply Br. 4—6). Appellant additionally argues the Examiner has not identified any portions of the references as teaching “create, responsive to modifying the originating document to create a modified document, a modified document name in accordance with the DNC and assign the modified document name to the modified document, wherein the modified document name includes the portion of the DNC-compliant document name assigned to the originating document,” as recited in claim 17 (App. Br. 14-15 ; see Reply Br. 6-7). We agree. Regarding the disputed limitations, the Examiner finds claim 12 “is substantially similar to claims 1, 8 and therefore likewise rejected” (Final Act. 12) and “[cjlaim 17 is substantially similar to claims 1, 8 and therefore likewise rejected” (Final Act. 13). The Examiner supports these findings 4 Appeal 2014-006945 Application 12/842,284 with an explanation that Appellant recited many limitations in claims 12 and 17 with substantially similar functionality as terms recited in claims 1 and 8 (Ans. 26—28, 30—32). The Examiner thus finds it is reasonable to interpret claims 12 and 17 to be substantially similar to claims 1 and 8, and therefore likewise rejected (Ans. 28, 32). We disagree. In rejecting claims under 35 U.S.C. § 103(a), the Examiner bears the initial burden of establishing a prima facie case of obviousness {In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)). The prima facie case must account for all the limitations of the claims {see General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1275, 23 USPQ2d 1839, 1840 (Fed. Cir. 1992) (“[Ejach claim is an entity which must be considered as a whole.”)) (emphasis original). In the case before us, the Examiner’s burden is not met by simply identifying terms in claims 1, 12, and 17 that have similar functionality. The Examiner has not identified specific teachings in the references to show how the disputed limitations are taught or suggested by the prior art {see App. Br. 9—10, 14—15; Reply Br. 4—7). In other words, the Examiner has not shown how claims 12 and 17, as a whole, are taught or suggested by the prior art. Accordingly, we do not sustain the rejection of claims 12 and 17. NEW GROUNDS OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under 35 U.S.C. § 101 for claims 12—20 as directed to patent-ineligible subject matter. 5 Appeal 2014-006945 Application 12/842,284 Claims 12—16 The preamble of claim 12 recites: “[a] data processing system including a processor having access to executable instructions, stored in a computer readable medium, the instructions including instructions to . . (Claim App.). The nominal recitation of a data processing system in the preamble adds nothing beyond indicating that the claimed instructions are executable by a processor, and does not significantly differentiate claim 12 from a set of instructions stored in a computer readable medium. Moreover, the term “computer readable medium,” when given its broadest reasonable interpretation, may encompass a transitory signal, particularly when the specification is silent on the issue (see Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential) (“The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of nontransitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent.”)). We find Appellant’s Specification does not limit the “computer readable medium” to nontransitory forms, and thus we deem the scope of the recited “computer readable medium” to encompass transitory media such as signals or carrier waves. Therefore, claim 12, as well as claims 13—16 which depend from claim 12, are patent-ineligible under 35 U.S.C. § 101. Claims 17—20 We find claim 17 is ineligible for patent protection because it is directed to an abstract idea. The Supreme Court in Alice Corp. Party Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) identified a two-step 6 Appeal 2014-006945 Application 12/842,284 framework for determining whether claimed subject matter is judicially- excepted from patent eligibility under 35 U.S.C. § 101. We analyze claim 17 using the two part analysis. First, we determine whether claim 17 is directed to an abstract idea. Next, if claim 17 is directed to an abstract idea, we determine whether any element, or combination of elements, in the claim is sufficient to ensure the claim amounts to significantly more than the abstract idea itself to transform the claim into a patent-eligible invention. Independent claim 17 is directed to instructions for performing a method of sending a document name request, receiving a document name, assigning the document name to a document, modifying the document, modifying the document name, and creating a modified document name (Claim App.). The assigning, modifying, and creating steps can be performed entirely through mental thought. The sending and receiving steps are merely insignificant extra-solution activities that amount only to input and output steps before the mental processes steps. The Federal Circuit has held that 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 35 U.S.C. § 101 (CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.”)). Additionally, mental processes, e.g., assigning, modifying, and creating, as recited in claim 17, remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper (id. 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. 7 Appeal 2014-006945 Application 12/842,284 Benson, [409 U.S. 63 (1972)].”)). Thus, claim 17 is directed to an abstract idea because the method can be performed by human thought alone. The second part of the Alice analysis requires us to examine the claim elements individually and as a whole to determine whether they provide an “inventive concept” that is enough to transform the claim into something significantly more than the abstract idea itself {see Alice, 134 S. Ct. at 2355). The recitation of a nontransitory computer readable medium in the preamble of claim 17 simply indicates that the instructions are embedded on the nontransitory computer readable medium, and does not rise to the level of an inventive concept that is enough to transform claim 17 into something significantly more than the abstract idea itself. As claim 17 recites the instructions are executable on a processor, we look next to the execution of the instructions (software) for something significantly more than the abstract idea. Our reviewing court instructs us that “[software can make nonabstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route” {Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)). We find nothing, however, in claim 17 that purports to improve computer functioning or “effect an improvement in any other technology or technical field” {Alice, 134 S. Ct. at 2359). Nor does claim 17 appear to solve a problem unique to the Internet and instead, embodies the use of generic computer components in a conventional manner to perform an abstract idea, which, as the Court in DDR Holdings explained, is not patent eligible. {See DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1256 (Fed. Cir. 2014). Claim 17 also does not appear to be adequately tied to “a particular machine or apparatus,” because any appropriate 8 Appeal 2014-006945 Application 12/842,284 computer hardware and/or software may be used (Bilski v. Kappos, 561 U.S. 593, 601 (2010)). Because claim 17 is directed to an abstract idea, and nothing in the claim rises to the level of an inventive concept that is enough to transform claim 17 into something significantly more than the abstract idea itself, claim 17, as well as claims 18—20 which depend from claim 17, are not patent eligible under 35 U.S.C. § 101. DECISION We affirm the Examiner’s decision to reject claims 1—11 under 35 U.S.C. § 103(a). We reverse the Examiner’s decision to reject claims 12—20 under 35 U.S.C. § 103(a). In NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 12—20 under 35 U.S.C. § 101 as being directed to nonstatutory subject matter. TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 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.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: 9 Appeal 2014-006945 Application 12/842,284 (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 examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to new grounds of rejection can be found in MPEP § 1214.01 (9th ed., rev. 07.2015, Nov. 2015). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b) 10 Copy with citationCopy as parenthetical citation