Ex Parte King et alDownload PDFPatent Trial and Appeal BoardSep 12, 201814144337 (P.T.A.B. Sep. 12, 2018) Copy Citation 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. 2 Appeal 2018-002606 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.). 3 Appeal 2018-002606 Application 14/144,337 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. 4 Appeal 2018-002606 Application 14/144,337 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. 5 Appeal 2018-002606 Application 14/144,337 "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. 6 Appeal 2018-002606 Application 14/144,337 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 7 Appeal 2018-002606 Application 14/144,337 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 8 Appeal 2018-002606 Application 14/144,337 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"). 9 Appeal 2018-002606 Application 14/144,337 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 10 Appeal 2018-002606 Application 14/144,337 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."). 11 Appeal 2018-002606 Application 14/144,337 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 12 Copy with citationCopy as parenthetical citation