Ex Parte Jones et alDownload PDFPatent Trials and Appeals BoardApr 5, 201913250655 - (D) (P.T.A.B. Apr. 5, 2019) Copy Citation 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. Appeal2017---003080 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 Appeal2017---003080 Application 13/250,655 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.") 3 Appeal2017---003080 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 Appeal2017---003080 Application 13/250,655 (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 5 Appeal2017---003080 Application 13/250,655 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 Appeal2017---003080 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 Appeal2017---003080 Application 13/250,655 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 Appeal2017---003080 Application 13/250,655 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" 9 Appeal2017---003080 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 10 Appeal2017---003080 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 11 Appeal2017---003080 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 12 Appeal2017---003080 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. 13 Appeal2017---003080 Application 13/250,655 ( 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. 14 Appeal2017---003080 Application 13/250,655 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.). 15 Appeal2017---003080 Application 13/250,655 "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. 16 Appeal2017---003080 Application 13/250,655 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. 17 Appeal2017---003080 Application 13/250,655 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 18 Copy with citationCopy as parenthetical citation