Ex Parte Jones et al

Patent Trials and Appeals Board

Apr 5, 2019

13250655 - (D) (P.T.A.B. Apr. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/250,655 09/30/2011
27488 7590 04/09/2019
MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
FIRST NAMED INVENTOR
David Jones
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.
14917 .2397USI1/3 l 6904.07 8963
EXAMINER
LEMIEUX, JESSICA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
04/09/2019 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):
USPT027 488@merchantgould.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID JONES, THOMAS W. KUEHNEL,
DEYUN WU, AMER A. HASSAN, ANDREW T. BARON,
YI LU, HUI SHEN, JOHN W. ARCHER,
SUNDARP. SUBRAMANI, and
VINOD K. SW AMY
Appeal2017---003080
Application 13/250,655 1
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
TARA L. HUTCHINGS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Jones, et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 7-10, 12-13 and 21-34. An oral
hearing was held on January 8, 2019. We have jurisdiction under 35 U.S.C.
§ 6(b).
1 The Appellants identify Microsoft Technology Licensing, LLC as the real
party in interest. App. Br. 3.
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Application 13/250,655
We REVERSE.
SUMMARY OF DECISION
THE INVENTION
Claim 7, reproduced below, is illustrative of the subject matter on
appeal.
7. A client device operating in an environment comprising a
plurality of wireless access points coupled to a network, the client
device comprising:
a wireless network interface adapted to determine whether at
least one service is within a predetermined range of the client
computing device before establishing a connection between at least
one of the plurality of wireless access points and the client computing
device and receive at least one announcement transmission from each
of multiple wireless access points that are within the predetermined
range of the client device;
a processor connected to a memory that stores one or more
driver for accessing at least one service, the processor adapted to
receive from the wireless network interface segments of notification
data from each received announcement transmission of the at least one
announcement transmission from each of the multiple wireless access
points and to combine the segments of notification data from multiple
announcement transmissions to create a notification describing the at
least one service offered by an entity associated with the multiple
wireless access points; and
a user interface adapted to display the notification before
establishing a connection to at least one of the multiple wireless
access points and to detect a request for more information on the at
least one service described by the notification, wherein, in response to
the request for more information, the wireless network interface is
further adapted to establish a connection to at least one of the plurality
of wireless access points and request information on the at least one
service.
2
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THE REJECTION
The following rejection is before us for review:
Claims 7-10, 12, 13 and 21-34 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
ISSUE
Did the Examiner err in rejecting claims 7-10, 12, 13 and 21-34
under 35 U.S.C. § 101 as being directed to subject matter judicially-excepted
from patent-eligibility?
ANALYSIS
The rejection of claims 7-10, 12, 13 and 21-34 under 35 US.C. §101 as
being directed to judicially-excepted subject matter.
Preliminary comment
The Examiner mentions earlier guidance that was in effect at the time
the Final Action was mailed (Jan. 11, 2016). See e.g., Final Act. 4
("USPTO's July 2015 Update on Subject Matter Eligibility").
The 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019), hereinafter "2019 Revised 101 Guidance,"
supersedes the earlier guidance that was in effect at the time the Appeal
Brief was filed (July 11, 2016). Id. at 51 ("Eligibility-related guidance
issued prior to the Ninth Edition, R---08.2017, of the MPEP (published Jan.
2018) should not be relied upon.")
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Application 13/250,655
Accordingly, we will not analyze the sufficiency of the Examiner's
rejection against the Office's previous guidance. Rather, our analysis will
comport with the 2019 Revised 101 Guidance.
Introduction
35 U.S.C. § 101 provides that "[w]hoever 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."
In that regard, claim 7 (reproduced above) covers an "apparatus" and
is thus statutory subject matter for which a patent may be obtained. 2 This is
not in dispute. The two other independent claims on appeal, claim 24 to "[a]
method operable on a client device in an environment having a plurality of
wireless access points coupled to a network" and claim 30 to "[a] computer-
readable storage medium having instructions stored therein for performing
operations on a client device in an environment having a plurality of
wireless access points coupled to a network" are nominally directed to the
"process" and "manufacture" statutory categories of invention, respectively.
That is also not in dispute.
However, the § 101 provision "contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014);
2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether a "claim is to a statutory category." Id. at 53.
See also sentence bridging pages 53 and 54 ("consider[] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. 101 .... ").
4
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(quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding independent claims 7, 24 and 30 are
statutory subject matter (as are the claims depending from them), the
Examiner has raised a question of patent-eligibility on the ground that they
are directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
Alice step one - the "directed to" inquiry
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept" (Id. at 218
(emphasis added)).
The Examiner determined that "[i]n the instant case, the claims are
directed towards displaying notifications regarding services offered, an
advertisement. Advertising is a fundamental economic practice and thus, the
claims include an abstract idea." Final Act. 4--5.
With respect to claim 7, the Appellants contend that:
As is clear from the [ claim language], the claimed
solution recites specific, technical features to overcome
problems that arise in the realm of multi-device network
computing and network service utilization. The claimed
solution is not simply directed to no more than generic
computer hardware to perform functions and no more than the
fundamental economic practice of advertising, as the Office
Action alleges. Instead, claim 7 encompasses a complex system
for improving network service utilization, which must be
performed by a computer. When executed according to claim 7
representing the current invention, the operations performed by
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the computing device provide advantages over previously
existing technology in the field and address a computer
technology-centric challenge of providing a user with location
sensitive information regarding devices and services that are
available to her at any given time and place.
App. Br. 16. Similar contentions are made with respect to claims 24 and 30.
App. Br. 18-20.
Accordingly, there is a dispute over what claims are directed to. Are
they directed to the fundamental economic practice of "advertising" (Final
Act. 4--5) or a "specific, technical features to overcome problems that arise
in the realm of multi-device network computing and network service
utilization" (App. Br. 16)?
6
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Application 13/250,655
Claim Construction3
Focusing on claim 7 (the other independent claims 24 and 30 parallel
claim 7), we consider it as a whole4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the Specification 6 at the time of filing.
Claim 7 describes a "client device operating in an environment
comprising a plurality of wireless access points coupled to a network."
3 "[T]he important inquiry for a § 101 analysis is to look to the claim."
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). "In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
'claim construction is not an inviolable prerequisite to a validity
determination under § 101.' However, the threshold of§ 101 must be
crossed; an event often dependent on the scope and meaning of the claims."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347--48
(Fed. Cir. 2015).
4 "In determining the eligibility of respondents' claimed process for patent
protection under § 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
5 2019 Revised 101 Guidance, page 52, footnote 14 ("If a claim, under its
broadest reasonable interpretation .... ")(Emphasis added.)
6 "First, it is always important to look at the actual language of the claims ...
. Second, in considering the roles played by individual limitations, it is
important to read the claims 'in light of the specification."' Smart Sys.
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1387 (Fed.
Cir. 2017) (J. Linn, dissenting in part and concurring in part), citing Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among
others.
7
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According to claim 7, the client device comprises 3 elements: a
"wireless network interface," "a processor connected to a memory," and "a
user interface."
Each of these elements - "wireless network interface," "a processor
connected to a memory," and "a user interface" - are generic. 7
The claim provides no structural details 8 that would distinguish the
"wireless network interface," "a processor connected to a memory," and "a
user interface" from those that were generic at the time the application was
filed.
Rather, the "wireless network interface," "a processor connected to a
memory," and "a user interface" are describedfunctionally. "The functional
language is, of course, an additional limitation in the claim. See, e.g.,
Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d 1440, 1443--44, 43
USPQ2d 1837, 1840 (Fed.Cir. 1997) (functional language analyzed as a
claim limitation) .... That is, the functional language tells us something
7 Cf Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed.
Cir. 2016) (See, e.g., claim 14 of US 7,970,379 at issue on the case
("wireless cellular telephone, a display to display a menu of soft buttons
selectable to enable selection of content by the electronic device, and a
housing component at least partially defining a cavity in which a memory
system is secured .... ")).
8 Cf Move, Inc. v. Real Estate Alliance Ltd., 721 F. App'x 950, 954 (Fed.
Cir. 2018) (Nonprecedential). "Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court."
8
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about the structural requirements of the [claimed device]." K-2 Corp. v.
Salomon S.A., 191 F3d 1356, 1363 (Fed. Cir. 1999).
Specifically, the "wireless network interface" is "adapted to" perform
two actions:
• "determine whether at least one service is within a predetermined
range of the client computing device before establishing a
connection between at least one of the plurality of wireless access
points and the client computing device"; and,
• "receive at least one announcement transmission from each of
multiple wireless access points that are within the predetermined
range of the client device".
The "processor connected to a memory"
• "stores one or more driver for accessing at least one service", and
IS
• "adapted to"
o "receive from the wireless network interface segments of
notification data from each received announcement
transmission of the at least one announcement transmission
from each of the multiple wireless access points"; and,
o "combine the segments of notification data from multiple
announcement transmissions to create a notification
describing the at least one service offered by an entity
associated with the multiple wireless access points."
And the "user interface" is
• "adapted to"
o "display the notification before establishing a connection to
at least one of the multiple wireless access points"; and
o "detect a request for more information on the at least one
service described by the notification",
• "wherein, in response to the request for more information, the
wireless network interface is further adapted to"
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Application 13/250,655
o "establish a connection to at least one of the plurality of
wireless access points and request information on the at least
one service."
All three devices are described as being "adapted to" perform certain
functions. In determining the broadest reasonable construction of claim
terms like "adapted to," we normally look to the terms' ordinary and
customary meaning. "The general rule is that terms in the claim are to be
given their ordinary and accustomed meaning." Id. at 1362. However, the
construction we give them must be aligned with the Specification. See In re
Man Mach. Inteiface Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016):
While the Board must give the terms their broadest reasonable
construction, the construction cannot be divorced from the
specification and the record evidence." In re NTP, Inc., 654 F.3d
1279, 1288 (Fed. Cir. 2011).
We have noted that the phrase "adapted to" generally means
"made to," "designed to," or "configured to," though it can also be
used more broadly to mean "capable of' or "suitable for." In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (quoting Aspex
Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d 1335, (Fed. Cir.
2012) (referencing dictionaries)). Here, "adapted to," as used in the
'614 claims and specification, has the narrower meaning, viz., that the
claimed remote control device is made or designed to be held in the
human hand and the thumb switch is made or designed for activation
by a human thumb.
We have reviewed the Specification and determine that the "adapted
to" claim phrase is reasonably broadly construed to mean "made to" rather
than more broadly "capable of." We attach the more narrow meaning
("made to") because the Specification does not merely disclose the elements
capable of performing the claimed functions, but describes the device as an
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Application 13/250,655
improvement over prior technology in that it is enabled to perform the
recited functions
As the Specification explains it, prior computing systems did not
allow a user to view a list of services across wired and wireless networks
that the user could access, prior to the computing system establishing a
connection with the devices that provide the services. Specification, para.
32; see also id. at para. 33 ("prior computing systems [also] did not provide
an integrated framework for accessing services.")
These excerpts suggest that the device of the invention is not simply
capable of performing the recited functions, but that the device is
structurally different from prior computing systems in being "enable[ d]" to
(i.e., made to) perform the recited functions. The embodiments in the
Specification go to the technical details required to enable the device to
allow a user to view a list of services across wired and wireless networks
that the user can access prior to establishing a connection with the devices
that provide the services. Para. 3 7 provides one such technical discussion.
In one embodiment of the invention, wireless enabled
device 102 may passively listen to determine which services [] are
available. Devices that provide one or more service(s) may send an
advertisement message to advertise the service( s) they can provide to
device 102 and/or other devices in range. The advertisement message
may be a radio message that advertises a particular service, e.g., a
printing service, provided by the device, e.g., printer 104. In one
aspect of the invention, the advertisement message may be broadcast
as part of an 802.1 lx or UWB beacon message. This broadcast may
be included in OSI Layer 2 communications prior to establishing
Layer 3 connectivity between the devices. The advertisement message
may be encoded with information about the service provided by the
device. For example, the advertisement message may include an
information element (IE), which is a data structure for wirelessly
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Application 13/250,655
sending service-related information. One or more advertisement
messages may be sent ( without prompting by a request message) that
include[ s] information related to one or more services provided by the
device. The advertisement messages may be broadcast repeatedly. As
one example, the advertisement message may be broadcast
periodically.
Given this intrinsic evidence, we reasonably broadly construe the
"adapted to" limitations as imposing a structural distinction over generic
devices comprising a "wireless network interface," "a processor connected
to a memory," and "a user interface" in that the inventive device is "made
to" process "announcement transmission[ s] from each of [a] multiple
wireless access points" ( claim 7) in the specific manner claimed rather than,
more broadly, "capable of."
Accordingly, claim 7 reasonably broadly describes a device
comprising a "wireless network interface" that is made to receive an
announcement transmission from each of multiple wireless access points that
are within a predetermined range of the client device; a "processor
connected to a memory" that is made to receive from the wireless network
interface segments of notification data from each received announcement
transmission from each of the multiple wireless access points and combine
the segments of notification data from multiple announcement transmissions
to create a notification describing the at least one service offered by an entity
associated with the multiple wireless access points; and, a "user interface"
that is made to display the notification before establishing a connection to at
least one of the multiple wireless access points and, in response to detecting
a request for more information, that is further made to establish a connection
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Application 13/250,655
to at least one of the plurality of wireless access points and request
information on the at least one service.
The Abstract Idea 9
Normally, we would reproduce a representative claim, identifying in
italics the limitations that recite an abstract idea. 10 However, based on our
claim construction analysis (above), we are unable to identify any abstract
idea.
Individually, each limitation is not a concept identified as an abstract
idea. For example, the claim limitation
a wireless network interface adapted to determine whether at least one
service is within a predetermined range of the client computing device
before establishing a connection between at least one of the plurality
of wireless access points and the client computing device and receive
at least one announcement transmission from each of multiple
wireless access points that are within the predetermined range of the
client device
9 See Step 2A of the 2019 Revised 101 Guidance. Step 2A determines
"whether a claim is 'directed to' a judicial exception," such as an abstract
idea. Id. at 53. Step 2A is a two prong inquiry.
10 See Prong One (a) of Step 2A of the 2019 Revised 101 Guidance. "To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: (a) Identify the specific limitation(s) in the claim under
examination (individually or in combination) that the examiner believes
recites an abstract idea .... " Id. at 54.
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( claim 7) is not a matter that falls within the enumerated groupings of
abstract ideas; that is "Mathematical concepts," "Certain methods of
organizing human activity," and "Mental processes." 11
Similarly, when considered collectively, claim 7, for example, is
directed to a client device comprising a "wireless network interface," "a
processor connected to a memory," and "a user interface" made to process
"announcement transmission[ s] from each of [a] multiple wireless access
points" in the specific manner claimed. The device so claimed as a whole
does not fall in any of the enumerated groupings "Mathematical concepts,"
"Certain methods of organizing human activity," and "Mental processes."
11 See Prong One ["Evaluate Whether the Claim Recites a Judicial
Exception"] (b) of Step 2A of the 2019 Revised 101 Guidance. "To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: ... (b) determine whether the identified limitation( s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance]." Id. at 54.
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Improvement in the Functioning of a Computer12 (Appellants'
Argument)
The Examiner's characterization of what the claim is directed to is
inaccurate. The Examiner indicated that the claims are directed to the
fundamental economic practice of "advertising" (Final Act. 4--5). The claims
are not focused on advertising; in fact, "advertising" is not mentioned at all
in the claim.
Rather, as our claim construction analysis shows, claim 7 is directed
to a client device comprising a "wireless network interface," "a processor
connected to a memory," and "a user interface" made to process
"announcement transmission[ s] from each of [a] multiple wireless access
points" in the specific manner claimed. It is the characterization the
Appellants have put forward, e.g., "specific, technical features to overcome
problems that arise in the realm of multi-device network computing and
network service utilization" (App. Br. 16), which is the more accurate
characterization.
12 See Prong Two ("If the Claim Recites a Judicial Exception, Evaluate
Whether the Judicial Exception Is Integrated Into a Practical Application")
of Step 2A of the 2019 Revised 101 Guidance. "A claim that integrates a
judicial exception into a practical application will apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception." 2019 Revised 101 Guidance 54. One
consideration, implicated here, that is "indicative that an additional element
( or combination of elements) may have integrated the exception into a
practical application" (id., at 55) is if "[a]n additional element reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field" (id.).
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"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter."' Affinity Labs
of Texas v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); see also Enfzsh, 822 F.3d at 1335. See also Ancora Techns., Inc. v.
HTC America, Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018):
We examine the patent's "'claimed advance' to determine
whether the claims are directed to an abstract idea." Finjan, Inc. v.
Blue Coat System, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018). "In
cases involving software innovations, this inquiry often turns on
whether the claims focus on 'the specific asserted improvement in
computer capabilities ... or, instead, on a process that qualifies as an
"abstract idea" for which computers are invoked merely as a tool."'
Id. (quoting Enfzsh, 822 F.3d at 1335-36); see BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1285-86 (Fed. Cir. 2018).
Computers are improved not only through changes in hardware;
"[ s ]oftware can make non-abstract improvements to computer
technology[]. ... "Enfish, 822 F.3d at 1335; see Finjan, 879 F.3d at
1304. We have several times held claims to pass muster under Alice
step one when sufficiently focused on such improvements.
The Specification's description of the problem and solution shows the
advance over the prior art by the claimed invention is not in the realm of
advertising but in making a "wireless network interface," "a processor
connected to a memory," and "a user interface" handle "announcement
transmission[ s] from each of [a] multiple wireless access points" made to
perform the recited function as claimed, thereby overcoming prior
computing systems which "did not provide an integrated framework for
accessing services." Spec, para. 33. In our view, a specific asserted
improvement in computer capabilities is being claimed.
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Specific asserted improvements in computer capabilities, when
claimed, can render claimed subject matter not directed to an abstract idea.
Cf McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1316
(Fed. Cir. 2016) ("When looked at as a whole, claim 1 is directed to a
patentable, technological improvement over the existing, manual 3-D
animation techniques.").
It should be noted that we have here addressed purported specific
asserted improvements in computer capabilities under step one of the Alice
framework. This is consistent with the case law. See Ancora, 908 F .3d at
134 7 ("We have several times held claims to pass muster under Alice step
one when sufficiently focused on such improvements.") It can be discussed
under step two of the Alice framework as well. See buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1354--55. "[R]ecent Federal Circuit jurisprudence has
indicated that eligible subject matter can often be identified either at the first
or the second step of the Alice/Mayo [framework]." 2019 Revised 101
Guidance at 53; see also id. n. 17.
In any case, there is sufficient evidence in the record before us that the
claimed subject matter reflects a specific asserted improvement in computer
capabilities and for that reason we determine that independent claim 7 and
independent claims 24 and 30 which parallel claim 7, and the claims
depending therefrom, are not directed to an abstract idea. Accordingly,
within the meaning of the 2019 Revised 101 Guidance, we find there is an
integration into a practical application.
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For the foregoing reasons, the Examiner's determination under Alice
step one is not sustainable. Consequently, we do not reach the merits of
Examiner's determination under Alice step two.
The rejection is not sustained.
DECISION
The decision of the Examiner to reject claims 7-10, 12, 13 and 21-34
is reversed.
REVERSED
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