Ex Parte Holden et al

Patent Trial and Appeal Board

Dec 6, 2017

13775956 (P.T.A.B. Dec. 6, 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.
13/775,956 02/25/2013 Dan E. Holden 007412.01763 6487
71867 7590 12/08/2017
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
MENDOZA, JUNIOR O
ART UNIT PAPER NUMBER
2423
NOTIFICATION DATE DELIVERY MODE
12/08/2017 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):
PTO-71867 @bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAN E. HOLDEN and MICHAEL J. COOK
Appeal 2017-006174
Application 13/775,956
Technology Center 2400
Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
CARL L. SILVERMAN, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1 through 3, 5 through 7, 9, 21 through
23, 25 through 29, 45, and 46. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2017-006174
Application 13/775,956
INVENTION
Appellants’ disclosed invention is directed to a method displaying
additional or targeted content to a user. See Abstract of Appellants’
Specification. Claim 1 is representative of the invention and reproduced
below.
1. A method comprising:
outputting, by a computing device, content for
display;
controlling an image capture device to capture a first
image of a first field of view;
determining a first number of instances that a first
object appears in the first image;
determining a second number of instances that the
first object appears in a second image,
wherein the second image is an image of a second
field of view different from the first field of view;
comparing the first number of instances with the
second number of instances;
determining additional content based on the
comparing the first number of instances with the second
number of instances; and
outputting, by the computing device, the additional
content.
REJECTION AT ISSUE1
The Examiner has rejected claims 1 through 3, 5 through 7, 9, 21
through 23, 25 through 29, 45, and 46 under 35 U.S.C. § 101 for being
directed to non-statutory subject matter. Final Action 3.
1 Throughout this Decision we refer to the Appeal Brief filed August 29,
2016, Reply Brief filed February 28, 2017, Final Office Action mailed
January 20, 2016, and the Examiner’s Answer mailed December 29, 2016.
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PRINCIPLES OF LAW
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012). Although an abstract idea, itself, is
patent-ineligible, an application of the abstract idea may be patent-eligible.
Alice, 134 S. Ct. at 2355. Thus, we must consider “the elements of each
claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at 1297-98). The
claim must contain elements or a combination of elements that are
‘“sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [abstract idea] itself.’” Id. (citing Mayo, 132 S.
Ct. at 1294).
The Supreme Court sets forth a two-part “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo,] 132 S.Ct., at
1296-1297. If so, we then ask, “[w]hat else is there in the claims
before us?” Id., at-------, 132 S.Ct., at 1297. To answer that
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question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. Id., at-------, 132 S.Ct.,
at 1298, 1297. We have described step two of this analysis as 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., at-------, 132 S.Ct., at
1294.
Id.
ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellants’
arguments. Appellants’ arguments have not persuaded us of error in the
Examiner’s determination that the claims are patentable.
Appellants argue on pages 5 through 7 of the Brief, that claim 1 is not
directed to an abstract idea. Specifically, Appellants argue the Examiner has
not shown that the idea is abstract by showing “the present claims are similar
to those in Alice or any other court decision.” App. Br. 5. Appellants
further argue that the current claims are not drawn to a fundamental
economic practice as the claims in Alice, and the lack of an art rejection
demonstrates that the claims do not recite a longstanding practice.
These arguments have not persuaded us the Examiner erred in
determining representative claim 1 recites an abstract idea.
The Federal Circuit has explained that, in determining whether claims
are patent-eligible under Section 101, “the 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,
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Application 13/775,956
1294 (Fed. Cir. 2016). The Federal Circuit also noted in that decision that
“examiners are to continue to determine if the claim recites (i.e., sets forth or
describes) a concept that is similar to concepts previously found abstract by
the courts.” Amdocs, 841 F.3d at 1294 n.2 (citation omitted).
Initially we note that, contrary to Appellants’ arguments, the
Examiner has compared the concept claimed with a claimed concept the
courts have held to recite an abstract idea. See Answer 7 (citing
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011).) We concur with the Examiner that the claims recite an abstract idea.
In the instant case, representative claim 1 recites controlling an input
device to capture an image (gathering data), determine a number of instances
that an object appears in the image and another image (processing the data),
comparing the number of instances, and determining and outputting content
based upon the comparison. Thus, the claim is directed to the abstract
concept of gathering data, analyzing the data comparing it and using it to
create an output, which is similar to the claims at issue in Elec. Power Grp.,
LLCv. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (holding that
claims directed to a process of gathering and analyzing information of a
specific content are directed to an abstract idea). They are also similar to
those at issue in Content Extraction and Transmission LLC. v. Wells Fargo
Bank, Natl Ass n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding that the
claims were “drawn to the abstract idea of 1) collecting data, 2) recognizing
certain data within the collected data set, and 3) storing that recognized data
in a memory.”). Thus, we concur with the Examiner that claim 1 is directed
to the use of an abstract idea.
On pages 8 through 11 of the Brief, Appellants address the second
part of the Alice analysis and argue the claims recites significantly more than
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the abstract idea. Appellants argue that when the claims are considered as a
whole, as an ordered combination, including the use of a computing device,
they are more than the routine application of an abstract idea. App. Br. 8-9;
Reply Br 4-5. Further, Appellants argue that the claims do not pre-empt the
alleged abstract idea. App. Br. 9-10; Reply Br. 5-6.
We are not persuaded of error in the Examiner’s rejection by these
arguments. We concur with the Examiner that, the additional limitations are
directed to generic computer functions and the claims do not recite
significantly more. Answer 9 and Final Rej. 3.
“[T]he use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.” FairWarningIP v. Iatric Sys. Inc., 839 F.3d 1089,
1096 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014)). See also Alice Corp. We disagree with Appellants that
claim 1 recites significantly more than the abstract idea, the claimed
recitation of a computing device is to output content (data), count objects
and comparing the counts to make a determination, which are data
processing steps typically performed by a computer. Further, the recitation
of an image capture device to capture an image, is using a generic
component for its purpose. Thus, the limitations other than the abstract
concept are merely using the computer technology as a means to perform the
abstract concept.
With respect to the pre-emption concern, “[wjhat matters is whether a
claim threatens to subsume the full scope of a fundamental concept, and
when those concerns arise, we must look for meaningful limitations that
prevent the claim as a whole from covering the concept’s every practical
application.” CLS Bank Intern, v. Alice Corp. Pty. Ltd., Ill F.3d 1269,
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Application 13/775,956
1281 (Fed. Cir. 2013) (Lourie, J., concurring). Here, said relied-on claim
limitation simply narrows the abstract idea so that it is described at a lower
level of abstraction. It does not render the abstract idea to which the claim is
directed to any less an abstract idea. Pre-emption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted with
every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather, the
animating concern is that claims should not be coextensive with a
natural law, natural phenomenon, or abstract idea; a patent-eligible
claim must include one or more substantive limitations that, in the
words of the Supreme Court, add “significantly more” to the basic
principle, with the result that the claim covers significantly less. See
Mayo 132 S. Ct. at 1294. Thus, broad claims do not necessarily raise
§ 101 preemption concerns, and seemingly narrower claims are not
necessarily exempt.
Id. See also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (“[wjhile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, [] preemption concerns
are fully addressed and made moot.” Ariosa Diagnostics, 788 F.3d at 1379.
Thus, Appellants’ arguments have not persuaded us that representative claim
1 recites significantly more than the abstract idea and, therefore, we sustain
the Examiner’s 35 U.S.C. § 101 rejection of claim 1 and claim 21 grouped
with claim 1.
With respect to the dependent claims, Appellants argue the Examiner
has failed to address any of the additional features of the dependent claims.
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App. Br. 4; Reply Br. 6. Further, Appellants separately address dependent
claims 2, 3, 5, 6, 7, 9, 22, 23, 25 through 29, 45, and 46 by restating the
claims and including the statement:
Taking these features along with the features of its base
claim and any intervening claims, this claim is directed to more
than the purported abstract idea of‘“determining a first number
of instances’ and ‘determining a second number of instances’
that ‘an object’ appears in different fields of view, e.g. rooms,
and making a comparison of the instances in order [to] output
additional content,” and recites an ordered combination that
does not pre-empt the purported abstract idea. Further, this
dependent claim includes meaningful features beyond generally
linking the use of the purported abstract idea to a particular
technological environment, and therefore, at a minimum,
amounts to significantly more than the purported abstract idea.
App. Br. 11-19.
The Examiner states that claims 2, 3, 5, 6, 7, 9, 22, 23, 25 through 29,
45, and 46 are rejected applying the same rationale as discussed with respect
to claim 1. We concur and do not consider Appellants’ statements directed
to the dependent claims as being a separate argument. To the extent the
features of these claims have been pointed out, this is considered to be
nothing more than a general allegation of patentability and is not considered
a separate patentability argument. See 37 C.F.R. § 41.37(c)(l)(iv) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
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Further, Appellants’ separate statements “this dependent claim
includes meaningful features beyond generally linking the use of the
purported abstract idea” is insufficient to show the Examiner erred in
concluding that the limitations of claims merely modify the abstract
algorithm and do not recite significantly more than the abstract algorithm.
Thus, we sustain the Examiner’s rejection of claims 2, 3, 5 through 7, 9, 22,
23, 25 through 29, 45, and 46
DECISION
We affirm the Examiner’s rejection of claims 1 through 3, 5 through
7, 9, 21 through 23, 25 through 29, 45, and 46 under 35 U.S.C. § 101.
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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