Ex Parte King et al

Patent Trial and Appeal Board

Sep 12, 2018

14144337 (P.T.A.B. Sep. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/144,337 12/30/2013 Martin T. King
26192 7590 09/14/2018
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
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.
16113-5172004 8457
EXAMINER
GARCIA, GABRIEL I
ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
09/14/2018 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN T. KING,
JAMES Q. STAFFORD-FRASER, CLIFFORD A. KUSHLER,
and DALE L. GROVER 1
Appeal2018-002606
Application 14/144,337
Technology Center 2600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 98, 100-105, 107-112, and 114--117, which are all of the claims
pending in the application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Google Inc., which, according to the Appeal
Brief, is the real party in interest. See Appeal Br. 1.
2 Claims 1-97, 99, 106, and 113 have been cancelled.
Appeal 2018-002606
Application 14/144,337
STATEMENT OF THE CASE
According to Appellant, the claims are directed to a system for
automatically filling out electronic forms identified via a form identifier.
Spec. ,r,r 28, 365, Abstract. 3 Claim 98 is reproduced below:
98. A method implemented by data processing apparatus, the
method comprising:
receiving an image from a user device, the image depicting
a form identifier;
identifying the form identifier depicted in the image;
obtaining, from a form registry, an electronic form that is
identified by the form identifier;
identifying one or more form fields of the electronic form,
each form field having a corresponding data type specifying a
type of data for inclusion in the form field;
obtaining, for each of the one or more form fields, field
data associated with the user device from a database, the field
data being of a same data type as the form field;
populating the electronic form with the field data obtained
for each of the one or more form fields; and
providing the populated electronic form to the user device;
wherein the form identifier included in the received image
is a machine-readable graphic included in the image, and the
form identifier is identified using a visual pattern matching
method.
3 This Decision refers to: (1) Appellant's Specification filed December 30,
2013 (Spec.); (2) the Final Office Action (Final Act.) mailed January 27,
2017; (3) the Advisory Action (Adv. Act.) mailed April 11, 2017; (4) the
Appeal Brief (Appeal Br.) filed July 24, 2017; (5) the Examiner's Corrected
Answer (Ans.) mailed December 22, 2017; and (6) the Reply Brief (Reply
Br.) filed January 11, 2018.
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Application 14/144,337
REJECTION4
Claims 98, 100-105, 107-112, and 114--117 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2-5.
Our review in this appeal is limited only to the above rejection and the
issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 4I.37(c)(l)(iv) and 4I.39(a)(l).
ANALYSIS
Patent-Eligible Subiect Matter
The Examiner concluded claims 98, 100-105, 107-112, and 114--117
are directed to patent-ineligible subject matter. Final Act. 2-5. We agree
with the Examiner.
In Alice, the Supreme Court set forth an analytical "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. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
75-79 (2012)). The first step in the analysis is to "determine whether the
claims at issue are directed to one of those patent-ineligible concept[s]." Id.
If so, the second step is to consider the elements of the claims "individually
and 'as an ordered combination' to determine whether the additional
elements 'transform the nature of the claim' into a patent-eligible
4 The rejection of claims 98, 100-105, 107-112, and 114--117 under 35
U.S.C. § 103(a) (Final Act. 5- 7) has been withdrawn by the Examiner
(Adv. Act.).
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application." Id. (quoting Mayo, 566 U.S. at 79, 78). In other words, the
second step is to "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. (brackets in original) (quoting Mayo, 566 U.S. at 73).
"populating the electronic form"
Appellant contends claims 98, 101, 104, 105, 108, 111, 112, and 115
describe "a technological improvement that is significantly more than the
[Examiner's] alleged abstract idea" because the claims recite "populating
the electronic form with the field data obtained for each of the one or
more form fields." Appeal Br. 8-10. Specifically, Appellant argues "the
claims are directed to systems and methods that enable 'autopopulat[ing] an
electronic document that corresponds to a paper form,' including
'access[ing] an electronic version of the paper form from the first database
and auto-populat[ing] the fields of the form from the user's information
obtained from the second database."' Appeal Br. 8-9 ( citing Spec. ,r 3 65).
We are not persuaded. Appellant's argument relies on features not
recited in the claims, namely, a corresponding paper form. The claims recite
"obtaining ... an electronic form that is identified by [a] form identifier"
depicted in an image. But the claims do not recite that the form image
depicting the form identifier somehow corresponds to a paper form. As
such, Appellant's arguments, premised on a corresponding paper form that is
not recited in the claims, are unpersuasive.
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Moreover, we agree with the Examiner's determination that the
additional limitations recited by the claims "do not add a meaningful
limitation to the abstract idea because they would be routine in any computer
implementation." Final Act. 4--5. In particular, the recited process of
automatically populating an electronic form with form field data gathered
from a user database does not provide a technological improvement that
transforms the claims into patent-eligible subject matter. In Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, our
reviewing court held that using a computer to automatically "recognize[]
relevant data ... and store[] that information in [information] records," i.e.,
automatically storing obtained data into data records, was "insufficient to
save a claim" from patent-ineligibility. 776 F.3d 1343, 1347-1348 (Fed.
Cir. 2014 ). Like Content Extraction, the claims here use a computer to
"populate," i.e., store, "field data" in "form fields," i.e., data records. And,
like Content Extraction, the storage of data into computer data records
"merely recite[ s] the use of ... existing ... processing technology to
recognize and store data from specific data fields" and does not transform
the claimed subject matter into a patent-eligible invention. Id.
Even further, the advance Appellant proffers, "reducing or eliminating
the need for peripheral devices to support manual data entry, and reducing or
eliminating the need to process such manually entered data" (Appeal Br. 8-
9), is not a technical advance. Reducing the manual entry of data is an
improvement for the user, not an improvement in the operation of the
computer. Indeed, the Specification describes the invention as "a user-
friendly technique for filling forms" (Spec. ,r 28), rather than an
improvement in the operation of the computer.
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"the form identifier is identified"
Independent claims 98, 105, and 112 recite "wherein the form
identifier included in the received image is a machine-readable graphic
included in the image, and the form identifier is identified using a visual
pattern matching method." Appellant argues form processing "including
using 'blob analysis,' ... provid[es] the technical advantage of 'allowing for
fast operation on inexpensive hardware."' Appeal Br. 10 ( citing Spec.
if 391).
We are not persuaded. Although the Specification describes that blob
analysis "allow[ s] for fast operation on inexpensive hardware" (Spec. ,r 3 91 ),
the claimed form processing, i.e., form identification, is not limited to blob
analysis. Form processing, as claimed, includes, broadly, any "visual pattern
matching method." Indeed, claim 114, which depends from claim 112,
recites form identification "using an optical character recognition method,"
rather than blob analysis. Therefore, because the claims do not require blob
analysis, the alleged advantages of blob analysis are not relevant to the
claims. Moreover, the blob analysis is described by the Specification as an
"early, widely used method" (Spec. ,r 3 91 ), i.e., a routine and conventional
computing practice. The implementation of routine and conventional
computing activities does not transform the claim into patent-eligible subject
matter. Content Extraction, 776 F.3d at 1348.
Furthermore, Appellant has not proffered sufficient evidence or
argument to persuade us that any of the limitations in dependent claims 102,
103, 109, 110, 114, 116, and 117 provide a meaningful limitation that
transforms the claims into a patent-eligible application. See Appeal Br. 12.
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Accordingly, Appellant has not persuaded us claims 98, 102, 103, 105, 109,
110, 112, 114, 116, and 117 are directed to patent-eligible subject matter.
Therefore, we sustain the rejection of claims 98, 102, 103, 105, 109, 110,
112, 114, 116, and 117 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.
"an implicit form identifier"
Appellant contends claims 101, 108, and 115 describe "a
technological improvement that is significantly more than the [Examiner's]
alleged abstract idea" because the claims recite
wherein the form identifier is an implicit form identifier
derived from context data included in the image, and wherein
identifying the form identifier included in the received image
compnses:
determining that a matching form included in the form
registry includes context data that matches the context data
included in the image; and
identifying, as the form identifier included in the received
image, a form identifier that corresponds to the matching form.
Appeal Br. 10-11; Reply Br. 1-2. Specifically, Appellant argues
"facilitating auto-populating of an electronic document that corresponds to a
paper form, without a need for an 'explicit form identifier' to be on the paper
form itself .... is clearly a technological improvement that is significantly
more than the alleged abstract idea." Appeal Br. 11.
We are not persuaded. As discussed supra, Appellant's argument
relies on features not recited in the claims, namely, a corresponding paper
form and is, accordingly, unpersuasive. Furthermore, the form identifier is
information. That the form identifier information is implicit or explicit
information only specifies the character of the form identifier information
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that is gathered and analyzed but does not recite that the gathering and
analysis functions are performed by anything other than conventional,
generic technology. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1356 (Fed. Cir. 2016) ("claims in this case specify what information in the
power-grid field it is desirable to gather, analyze, and display ... but they do
not include any requirement for performing the claimed functions ... by use
of anything but entirely conventional, generic technology."). Accordingly,
we determine specifying that the form identifier information is implicit
information does not transform the claims into patent-eligible subject matter.
Id.
Therefore, Appellant has not persuaded us claims 101, 108, and 115
are directed to patent-eligible subject matter. As such, we sustain the
rejection of claims 101, 108, and 115 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
"an account associated with the user device"
Appellant contends claims 104 and 111 describe "a technological
improvement that is significantly more than the [Examiner's] alleged
abstract idea" because the claims recite
wherein obtaining, for each of the one or more form
fields, field data associated with the user device from a
database, the field data being of a same data type as the form
field comprises:
obtaining the field data from account data stored in the
database for an account associated with the user device.
Appeal Br. 11-12; Reply Br. 2-3. Specifically, Appellant argues "the auto-
populating of an electronic document that corresponds to a paper form can
be accomplished using user-specific data located by the 'user account
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services' using 'the device identifier' ... [and] is clearly a technological
improvement that is significantly more than the alleged abstract idea." Id. at
12.
We are not persuaded. Appellant's argument relies on features not
recited in the claims, namely, a corresponding paper form, user account
services, and a device identifier. As such, Appellant's arguments, premised
on features not required by the claims, are unpersuasive.
Furthermore, even assuming, arguendo, the claim did require user
account services and a device identifier to access user data, those elements
are directed to generic computing functions. The Specification teaches that
"user account services ... shall be interpreted with the meaning of an
appropriately equipped device, operating in accordance with either a user
computer or an account server role." Spec. ,r 385. The Specification further
describes that user account services "have field data on file" including
"especially common data elements such as name, address, phone number, e-
mail address; social security number, driver's license number, date of birth
or other possible identifier." Id. That field data is accessed based on a
"device identifier." Id. ,r 446. Accordingly, accessing information from
user account services with a device identifier describes accessing a database
that functions in the most ordinary and routine way: storing and retrieving
data. Such a generic use of a database does not transform the claims into
patent-eligible subject matter. Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1368 (Fed. Cir. 2015) ("a database" is a
"generic computer element[] ... Instructing one to 'apply' an abstract idea
and reciting no more than generic computer elements performing generic
computer tasks does not make an abstract idea patent-eligible").
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Appellant has not proffered sufficient evidence or argument to
persuade us that any of the limitations in dependent claims 100 and 107
provides a meaningful limitation that transforms the claims into a patent-
eligible application. See Appeal Br. 12. Accordingly, Appellant has not
persuaded us claims 100, 104, 107, and 111 are directed to patent-eligible
subject matter. Therefore, we sustain the rejection of claims 100, 104, 107,
and 111 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.
Prima Facie Case
Appellant contends "the Examiner has failed to address various
features recited by independent claims 101, 104, 108, 111, and 115, and thus
has necessarily failed to establish, for each independent claim, a prima facie
rejection under§ 101." Appeal Br. 6-8; see Reply Br. 4. In particular,
Appellant argues that the Examiner has not established a prima facie case
because the Examiner has not performed "requirements for making a proper
Section 101 rejection [that] are outlined in the May 2016 Memo." Appeal
Br. 6-7 (citing Memorandum from Robert W. Bahr on Formulating a
Subject Matter Eligibility Rejection and Evaluating the Applicant's
Response to a Subject Matter Eligibility Rejection, United States Patent and
Trademark Office (May. 4, 2016)).
We are unpersuaded of error. At the outset, we note patent eligibility
is a question of law that is reviewable de novo (see Dealertrack, Inc. v.
Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012)). Here, in rejecting the claims
under§ 101, the Examiner analyzes the claims using the Mayo/Alice two-
step framework. Specifically, the Examiner determines that the claims "are
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directed to an abstract idea of receiving and gathering ( or populating) data to
be provided to a user." Final Act. 2. The Examiner cites judicial decisions
and compares the idea to those found to be abstract in those decisions. See
Ans. 4. The Examiner further determines that "the elements of the claims
... both individually and as an ordered combination do not amount to
significantly more than the abstract idea" because the recited processes of
"receiving an image, identifying ... a form within the image, obtaining form
fields, identifying form fields, populating the form and providing the form to
an user, amount[] to no more that receiving, obtaining, identifying and
populating [intangible] data." Final Act. 2; see id. 3--4; see also Ans. 3-5.
The Examiner further determines that the claimed data processing features
are provided by "additional generic computer elements that do not add a
meaningful limitation to the abstract idea because they would be routine in
any computer implementation." Final Act. 4.
We, therefore, conclude the Examiner has followed the guidelines and
provided sufficient notice. Moreover, Appellant's arguments merely list
limitations and allege the Examiner "ignores" those limitations. Appeal
Br. 7-8; Reply Br. 1-3. Appellant, however, does not offer any further
elaboration or explain why those additional limitations are not within the
Examiner's description of features that only describe the abstract idea or add
insignificant limitations. See Final Act. 2--4 ( describing that "receiving,
obtaining, identifying and populating [intangible] data" steps are provided
by "routine ... computer implementation.").
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DECISION
For the reasons discussed above, we affirm the Examiner's decision
rejecting claims 98, 100-105, 107-112, and 114--117.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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