Ex Parte Kelly

Patent Trial and Appeal Board

Aug 29, 2017

13418550 (P.T.A.B. Aug. 29, 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.
13/418,550 03/13/2012 Sandra Kelly P07441US1 4115
34082 7590 08/31/2017
7ART FY T AW FTRM PT .f
EXAMINER
CAPITAL SQUARE HULL, JAMES B
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350 ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
kconrad@zarleylaw.com
crasmu ssen @ zarley law .com
mleduc @ zarleylaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDRA KELLY
Appeal 2016-002504
Application 13/418,550
Technology Center 3700
Before MICHELLE R. OSINSKI, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sandra Kelly (“Appellant”) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 2, 3, 5—8, 13, 14, 16, and 19—25, which
are all of the pending claims. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-002504
Application 13/418,550
THE CLAIMED SUBJECT MATTER
Claims 19 and 25 are independent. Claim 19, reproduced below, is
illustrative of the claimed subject matter on appeal.
19. An interactive device for providing instruction, comprising:
an electronic device having a display screen and a plurality
of keys wherein the plurality of keys include one or more
program initiation buttons;
a different education topic associated with each program
initiation button;
a plurality of interactive educational programs assigned to
each educational topic wherein the plurality of interactive
educational programs is related to the assigned educational topic;
a plurality of instructions assigned to each interactive
educational program; and
wherein actuation of each program initiation button
initiates and displays the instructions of one of the plurality
interactive educational programs assigned to the educational
topic of the actuated program initiation button.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Battaglia US 5,088,037 Feb. 11, 1992
Feder US 2009/0111083 A1 Apr. 30, 2009
Myer US 2010/0028845 A1 Feb. 4, 2010
Knable US 2012/0202177 A1 Aug. 9, 2012
REJECTIONS
I. Claims 2, 3, 5—8, 13, 14, 16, and 19—25 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act.
2.
2
Appeal 2016-002504
Application 13/418,550
II. Claims 2, 3, 5, 6, 13, 14, 19, 22, 24, and 25 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Feder and Battaglia. Id. at 2—
5.
III. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Feder, Battaglia, and Myer. Id. at 5.
IV. Claims 7, 8, 16, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Feder, Battaglia, and Knable. Id. at 6.
OPINION
Rejection I
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citingMayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
(2012)). Under that framework, we first “determine whether the claims at
issue are directed to one of those patent-ineligible concepts”—i.e., a law of
nature, a natural phenomenon, or an abstract idea. Id. If so, we secondly
“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. (quoting Mayo,
132 S. Ct. at 1298, 1297). The Supreme Court has described the second part
of the 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. (alteration in original) (quoting Mayo, 132 S. Ct. at
1294).
3
Appeal 2016-002504
Application 13/418,550
Part one
The Examiner determines that the claims, when analyzed as a whole,
are directed to non-statutory subject matter because they are “directed to the
abstract idea of a method of and system for organizing instructional content
by topic . . . [and] delivering educational content to an end user.” Final Act.
2. The Examiner determines that “this method of instruction was routinely
performed pre-computer era, for example[,] by a teacher organizing
sequences of instructional steps into topics or categories, and providing that
to their students in a classroom or training environment.” Ans. 13.
Appellant argues that the Examiner fails to adequately explain how
the claimed subject matter is an abstract idea. Br. 4. The Federal Circuit
observes that there is no single test or definition to distinguish a patent-
eligible claim from an ineligible one. Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016). Instead of a definition
or test, the decisional mechanism applied by the Federal Circuit is a
comparison of the accused claims to those of prior cases to determine how
similar or parallel claims were decided. Id. We look to prior-adjudicated
claims for our guidance.
In Cyberfone, our reviewing court evaluated a method claim reciting
steps that required “obtaining data, ‘exploding’ the data, i.e., separating it
into component parts, and sending those parts to different destinations.”
Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App’x. 988,
990 (Fed. Cir. 2014) (nonprecedential). The Federal Circuit held that this
claim involved an abstract idea, explaining that “using categories to
organize, store, and transmit information is well-established.” Id. at 992.
Thus, “the well-known concept of categorical data storage, i.e., the idea of
4
Appeal 2016-002504
Application 13/418,550
collecting information in classified form, then separating and transmitting
that information according to its classification, is an abstract idea that is not
patent-eligible.” Id.
In Electric Power, the method claims at issue were directed to
performing real-time performance monitoring of an electric power grid by
collecting data from multiple sources, analyzing the data, and displaying the
results. Elec. Power Grp. LLC v. Alstom, 830 F.3d 1350, 1351—52 (Fed. Cir.
2016). There, the Federal Circuit held that the claims were directed to an
abstract idea because “[t]he advance they purport to make is a process of
gathering and analyzing information of a specified content, then displaying
the results, and not any particular assertedly inventive technology for
performing those functions.” Id. at 1354. According to the Federal Circuit,
“merely selecting information, by content or source, for collection, analysis,
and display does nothing significant to differentiate a process from ordinary
mental processes, whose implicit exclusion from § 101 undergirds the
information-based category of abstract ideas.” Id. at 1355.
With this guidance in mind, we agree with the Examiner that the
claims are directed to an abstract idea in that they are directed to a method
of, and device for, receiving instructional content, organizing it and storing it
according to assigned topics, and determining which of it to display in
response to a user input or request. Claims directed to such a method and
device are analogous to the data processing claims that the Federal Circuit
has held were directed to abstract ideas in Cyberfone and Electric Power.
Appellant argues that the claims are not directed to a basic tool of
scientific and technologic work that would impede innovation, rather than
promote it. Br. 3. This argument relates to preemption and is unpersuasive.
5
Appeal 2016-002504
Application 13/418,550
Regarding preemption, the Supreme Court has stated that “patents that. . .
integrate the building blocks [of human ingenuity] into something more,
[Jthereby ‘transform[ing]’ them into a patent-eligible invention, . . . pose no
comparable risk of pre-emption, and therefore remain eligible for the
monopoly granted under our patent laws.” Alice, 134 S. Ct. at 2354—55
(citations and quotations omitted). Although a concern regarding
preemption is one that “undergirds [the Supreme Court’s] § 101
jurisprudence” overall {id. at 2358), it is not an issue addressed in the first
step of the analysis. Cf, e.g., DDR Holdings, LLC v. Hotels.com, LLC, 773
F.3d 1245, 1259 (Fed. Cir. 2014) (discussing preemption in the context of
the second step of the analysis). In other words, in the first step of the
analysis, the issue is not whether the claims preempt all possible
implementations of the identified abstract idea; rather, the issue is “the
‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp., 830
F.3d at 1353 (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335—
36 (Fed. Cir. 2016) and Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1346 (Fed. Cir. 2015)).
In contrast, the second step, when reached, looks “more precisely at
what the claim elements add.” Id. Moreover, characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the dispositive test for patent eligibility. Instead, “[t]he
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability” and “[f]or this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 134 S. Ct. at 2354). Although “preemption may signal patent
6
Appeal 2016-002504
Application 13/418,550
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility,” Id. We also note that merely because
claims do not preempt all forms of the abstraction (Br. 3 4) does not make
them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362-63 (Fed. Cir. 2015).
Therefore, when read as a whole, independent claim 1 is directed to a
method of, and device for, receiving instructional content, organizing and
storing instructional content according to assigned topics, and determining
which instructional content to display in response to a user request. For the
reasons discussed above, we determine this to constitute an abstract idea.
We have also considered Appellant’s argument that the claims “at least,
require[] a device with one or more program initiation buttons and the
actuation of the initiation button” (Br. 6) and is not “wholly capable of being
performed by the mind (id. at 5). We find no contradiction in the
determination that a method claim which includes physical steps is wholly
directed to a patent ineligible abstract idea. See, e.g., In re Grams, 888 F.2d
835, 840 (Fed. Cir. 1989) (“The presence of a physical step in the claim to
derive data for the algorithm will not render the claim statutory.”).
The question to be settled next is whether claim 1 recites an element,
or combination of elements, that is enough to ensure that the claim is
directed to significantly more than an abstract idea.
Step two
The Examiner determines that the claims do not recite any limitations
which qualify as more than the abstract idea. Final Act. 2. In particular, the
Examiner determines that “a general purpose computer performing routine
and conventional steps (i.e., displaying, storing, and output of information in
7
Appeal 2016-002504
Application 13/418,550
response to a user input) amount[s] to no more than[] mere instructions to
implement the idea on a computer.” Id.
Appellant argues that the claimed subject matter “is inextricably tied
to a problem associated with computer technology and is not merely a
mathematical relationship being performed by a computer.” Br. 5 (citing
Example 2 (E-Commerce Outsourcing System/Generating a Composite Web
Page), which is based on a claim in DDR, from Examples: Abstract Ideas
(Jan. 27, 2015), available at https://www.uspto.gov/patents/law/exam/
abstract_idea_examples.pdf). Appellant continues that the “invention does
not and cannot exist outside the realm of computer technology” and “is
directed at a solution necessarily rooted in the computer technology related
to education devices.” Id. In particular, Appellant asserts that the
“invention improves upon the education devices by incorporating numerous
programs associated with an educational topic that are made available
through the actuation of a single actuation button.” Id. This argument is
unpersuasive.
The claims at issue in DDR address the problem of retaini ng wel
visitors who would otherwise be transported away from the host wehsi
after clicking on an advertisement on the host website and activating a
hyperlink. DDR, 773 F.3d at 1257. The DDR claims automatically generate
a hybrid web page that permits users visiting a host website to view and
purchase products from a third-party merchant, whose ads are displayed with
hyperlinks on the host website, without leaving the host website and entering
that merchant’s website. The Federal Circuit found the claims to be directed
to patentable subject matter because they “specify
Internet are manipulated to yield a desired result-
how interactions with the
-a result that overrides the
8
Appeal 2016-002504
Application 13/418,550
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink.” Id, at 1258. Thus, the solution set forth in the DDR claims
“is necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.” Id. at
1257. Significantly, the Federal Circuit identified this limitation as
differentiating from claims that “recite a commonplace business method
aimed at processing business information, applying a known business
process to the particular technological environment of the Internet, or
creating or altering contractual relations using generic computer functions
and conventional network operations.” Id. at 1258—59.
In contrast, claims 19 and 25 do not purport to improve the
functioning of the computer system itself. Nor do they effect an
improvement in any other technology or technical field. Instead, claims 19
and 25 amount to nothing more than using generic computer components to
organize and store instructional content according to assigned topics and
displaying the instructional content in response to a user input. See Ans. 13
(“the additional limitations directed to computer constructs limit the field of
use, but do not offer a meaningful limitation beyond generally linking the
use and functionality of the abstract idea to a particular technological
environment, that is, implementation via computers”); see also id. at 14
(Appellant “argues that the claimed invention includes a specialized device
comprising a display and at least one program initiation button, [but] these
are merely components of a general purpose computer and do not amount to
significantly more than the abstract idea, as these components are recited as
performing their basic computer functions known in the art (i.e., output data
and input data).”). Even assuming that the claimed method and device
9
Appeal 2016-002504
Application 13/418,550
increase the amount of instructional content available to a user via a single
user input as asserted by Appellant, this concept is not rooted in computer
technology. See id. at 14 (Appellant “does not claim an improvement to the
computing device, but rather describes how to apply the abstract idea of
organizing and delivering education content to pre-existing, conventional
computing devices (i.e., device comprising buttons).”).
Appellant argues that the Examiner did not adequately address the
dependent claims. Br. 6. In particular, Appellant asserts that dependent
claim 7 requires that “each program is a cartoon-themed game” and that
claim 251 requires “that each program initiation button includes an icon that
corresponds to the assigned educational topic.” Id. Appellant argues that
the Examiner has not provide reasoning or logic as to how this claimed
subject matter should be viewed as patent-ineligible abstract ideas. Id. The
Examiner responds that “the specific indicia claimed (i.e., cartoon-themed
game; icon)” “further define the abstract idea, but do not amount to
significantly more than the abstract idea” (Ans. 14—15) and that “there is no
reason to give patentable weight to the content of the printed matter which,
by itself, is non-statutory subject matter” (id. at 15). We agree with the
Examiner in that the particular type of instructional content, and/or the
inclusion of a particular icon suggesting the particular educational topic to
which the instructional content may be applicable, does not prevent the
claimed subject matter from falling into the abstract idea of a method of, and
device for, receiving instructional content, organizing and storing
1 We do not see where claim 25 recites an “icon” included on the program
initiation button, but note that such a recitation appears in at least dependent
claims 6 and 14. Appeal Br. A-l — A
10
Appeal 2016-002504
Application 13/418,550
instructional content according to assigned topics, and displaying the
instructional content in response to a user request. That the instructional
content (i.e., data) may have a physical aspect associated with it (i.e., a
cartoon or an icon) does not render the claims statutory because the claims
are directed to the abstract idea of collecting, organizing, and displaying
data. See In re Grams, 888 F.2d at 840 (the Federal Circuit holding that
claims were not statutory because they were directed to the underlying
mathematical algorithm itself, and that the presence of a physical step in the
claim to derive data for the mathematical algorithm did not render the claims
statutory).
For the foregoing reasons, we find nothing in independent claims 19
and 25, or their dependent claims, to be sufficiently transformative to render
the claim patent eligible. For these reasons, we sustain the Examiner’s
decision rejecting claims 19 and 25, and their dependent claims 2, 3, 5—8,
13, 14, 16, and 19—25, under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.
Rejection II
Claims 2, 3, 6, 14, 19, 22, 24, and 25
The Examiner finds that Feder teaches, inter alia, an electronic device
having one or more program initiation buttons, a different education topic
associated with each program initiation button, a plurality of interactive
educational programs assigned to each education topic, and a plurality of
instructions assigned to each interactive educational program. Final Act. 3.
More particularly, the Examiner finds that Feder’s “sequence of instructions
is interpreted as equivalent to the claimed plurality of programs wherein
each step of instructions is a program.” Ans. 16. The Examiner also finds
11
Appeal 2016-002504
Application 13/418,550
that each step of instructions “may comprise a plurality of instructions
related to a topic or category to which it is assigned on the device” or that
each step “may include multiple instructions,” Id.
The Examiner concludes that
to the extent that Feder does not expressly disclose that the
instructional segments [or steps] for each topic include a plurality
of instructions, it would have been obvious . . , that in outputting
instructional information for each output segment [or step] for a
particular topic, that a single output segment [or step] may
include a plurality of instructions for that given segment, in order
to provide the desired instructional content to an end user for that
particular segment.
Final Act, 5. The Examiner continues that “[d]oing so would provide a
plurality of related instructional statements for the particular step being
taught, thereby providing the end user with sufficient information as desired
(i.e., a single CPR step that involves multiple movements.” Id.2
Appellant argues that “Feder fails to teach a plurality of interacti ve
educational programs that play a plurality of instructions, which is assigned
to an educational topic.” Br. 8. More particularly, Appellant argues that
Feder discloses only a single program and that the Examiner’s interpretation
of Feder “is unreasonable and runs contrary to the disclosure of the
reference.” Id. Appellant does not persuade us that the Examiner’s
interpretation is unreasonable. Appellant points to “illustrative, though not
limiting, examples of how a program functions” in the but
2 Moreover, we note that Feder explicitly teaches a set of instructions.
Feder 143. That each step of the set of instructions could be a single
instruction or a plurality of instructions is obvious as a mere duplication of
what is known in the art. Cf. In re Harza, 274 F.2d 669, 671 (CCPA 1960)
(“It is well settled that the mere duplication of parts has no patentable
significance unless a new and unexpected result is produced.”).
12
Appeal 2016-002504
Application 13/418,550
does not indicate with any particularity how the Examiner’s interpretation
mns contrary to the Specification. Id. (citing Spec. 8:17—11:23). We
determine that the Specification merely provides examples of programs in
“preferred embodiments],” but does not narrowly tailor the term “program”
via any kind of definition. Accordingly, Appellant has not persuasively
argued why the Examiner’s interpretation of Feder in which Feder’s set or
sequence of instructions reads on the claimed plurality of interactive
educational programs is unreasonable.
We have also considered Appellant’s arguments that the Examiner is
being contradictory to the original interpretation of Feder (Br. 8) and/or
“improperly us[ing] [the same] audio output as both a program and an
instruction.” Id. at 9 (citing, for example, Becton, Dickinson & Co. v. Tyco
Healthcare Group, LP, 616 F.3d 1249, 1257(Fed. Cir. 2010)). We are not
persuaded of error by the Examiner, however, because the Final Action and
Answer make clear that the interpretation relied on by the Examiner is that
the set or sequence of instructions in Feder is considered the plurality of
interactive educational programs, and that any one instructional step of the
set or sequence of instructions is considered to have a pl urality of
instructions assigned to that one instructional step.3 We do not find such an
interpretation to be improper.
For the foregoing reasons, we are not persuaded that the Examiner
erred in concluding that the combination of Feder and Battaglia renders
obvious the subject matter of independent claims 19 and 25, and we sustain
the rejection of independent claims 19 and 25 as unpatentable under 35
3 The Examiner notes that “the subjective interpretation of the data does not
patentably distinguish the claimed invention.” Final Act. 5.
13
Appeal 2016-002504
Application 13/418,550
U.S.C. § 103(a) over Feder and Battaglia. We also sustain the rejection of
claims 2, 3, 6, 14, 22, and 24, which depend therefrom, and for which
Appellant relies on the same arguments and reasoning we found
unpersuasive in connection with the independent claims. Br. 10.
Claims 5 and 13
Claims 5 recites that “a different interactive educational program with
the educational topic is displayed on the display screen each successive time
the assigned program initiation button is actuated.” Br. A-l (Claims App.).
Claim 13 recites substantially similar language. Id. at A-2 (Claims App.).
The Examiner finds that the actual content of the program (e.g., instructional
step) that is displayed each time the program initiation button is actuated is
“descriptive material [that] will not distinguish the claimed invention from
the prior art in terms of patentability.” Final Act. 5 (citing In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579 (Fed. Cir,
1994)); see also Ans. 17. The Examiner also concludes that it would have
been obvious to one of ordinary skill in the art to have “keys that when
actuated output the plurality of different content in succession, in order to
provide simplified operation, andthus[,] reduced cost.” Ans. 17.
Appellant first argues that Feder teaches only a single program (Br.
10), but we find this argument unconvincing for the same reasons advanced
above. Appellant also argues that the Examiner’s position relies on “‘each
successive program sequence [] beginning] upon actuation of the
acknowledgement key’” and overlooks the distinction between
acknowledgement keys and operational keys. Br. 10 (citing Non-Final
Action 4 (Oct. 9, 2014)). Appellant continues that “[a]s such, Feder fails to
teach that the successi ve actuation of the operational
14
Appeal 2016-002504
Application 13/418,550
initiation button) 810 displays a different program.” Id. This argument is
unconvincing because it fails to address the position of the Examiner as set
forth in the most recent Final Office Action and the Examiner’s Answer,
which does not rely on Feder’s acknowledgement keys.
For the foregoing reasons, we are not persuaded that the Examiner
erred in concluding that the combination of Feder and Battaglia renders
obvious the subject matter of claims 5 and 13, and we sustain the rejection of
claims 5 and 13 as unpatentable under 35 U.S.C. § 103(a) over Feder and
Battaglia.
Rejections III and IV
The Examiner rejects, under 35 U.S.C. § 103(a), claims 20 and 21 as
unpatentable over Feder, Battaglia, and Myer and claims 7, 8, 16, and 23 as
unpatentable over Feder, Battaglia, and Knable. Final Act. 5—6. Appellant
relies on the same arguments and reasoning we found unpersuasive in
connection with Rejection II. See Br. 10. For the foregoing reasons, we are
not persuaded that the Examiner erred in rejecting claims 7, 8, 16, 20, 21,
and 23. We sustain the rejection, under 35 U.S.C. § 103(a), of: claims 20
and 21 as unpatentable over Feder, Battaglia, and Myer; and claims 7, 8, 16,
and 23 as unpatentable over Feder, Battaglia, and Knable.
DECISION
The Examiner’s decision to reject claims 2, 3, 5—8, 13, 14, 16, and
19—25 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter is affirmed.
15
Appeal 2016-002504
Application 13/418,550
The Examiner’s decision to reject claims 2, 3, 5, 6, 13, 14, 19, 22, 24,
and 25 under 35 U.S.C. § 103(a) as unpatentable over Feder and Battaglia is
affirmed.
The Examiner’s decision to reject claims 20 and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Feder, Battaglia, and Myer is affirmed.
The Examiner’s decision to reject claims 7, 8, 16, and 23
under 35 U.S.C. § 103(a) as unpatentable over Feder, Battaglia, and Knable
is affirmed.
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
16