Ex Parte Fenton

Patent Trial and Appeal Board

May 16, 2017

12842284 (P.T.A.B. May. 16, 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.
12/842,284 07/23/2010 Charles Stanley Fenton RSW920105046U S1 (779) 3751
46320 7590
CRGO LAW
STEVEN M. GREENBERG
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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
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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).
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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).
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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
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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.
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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
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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.
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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
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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:
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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)
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