Ex Parte Lee

Patent Trials and Appeals Board

Jun 28, 2019

13619151 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/619,151 09/14/2012
23400 7590 07/02/2019
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
RESTON, VA 20191
FIRST NAMED INVENTOR
Eugene M. Lee
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.
l 13708.12l_CON8 3404
EXAMINER
YOUNG, MICHAEL C
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/02/2019 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):
mailbox@poszlaw.com
dposz@poszlaw.com
tvarndell @poszlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE M. LEE
Appeal2018-006242
Application 13/619, 151
Technology Center 3600
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 21--47. Claims 1-20 were canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm and enter a new ground of
rejection.
STATEMENT OF THE CASE
Appellant's invention is an intellectual property (IP) analysis,
searching, and access system that provides, among other things, an initial
patent claim analysis. Spec. 1, 22. To this end, a IP analyzer application
1 Appellant identifies the real party in interest as Eugene M. Lee. App. Br.
5.
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104 can (1) break down patent claims into constituent elements; (2) identify
keywords in those elements; (3) search a patent's specification for the
keywords; and ( 4) populate the claim analysis for each element with
reference to a preliminarily determined relevant section of the specification.
Spec. 22. In one aspect, the IP analyzer can generate claim charts by
separating claims into key phrases that are then linked automatically to
portions of a patent Specification's text and related images. Spec. 42--43.
Claim 21 is illustrative:
21. A computer system for generating an initial patent claim
analysis, comprising:
an interface to a display that provides visual information
to a user; and
a processor cooperatively operable with the interface, and
that loads and executes instructions to facilitate:
breaking down a patent claim of one patent document
into legally cognizable claim elements that constitute the patent
claim, wherein the patent document is a patent application or a
patent and includes at least a specification and patent claims
separate from the specification;
identifying, for each of the claim elements, at least one
keyword which appears therein;
searching the specification of a different patent document
for each at least one keyword which was identified, to
preliminarily determine a relevant section of the different patent
document that provides disclosure for each of the claim
elements;
generating, without manual intervention, a claim chart for
the patent claim of the patent document, that quotes each of the
claim elements in the claim chart and refers to the preliminarily
determined relevant section of the different patent document
that provides disclosure for each of the claim elements; and
causing the display to visually provide the claim chart
that quotes the claim elements with a reference to each of the
preliminarily determined relevant sections as providing
disclosure relevant for each of the claim elements.
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App. Br. 59 (Claims Appendix).
RELATED APPEALS
On page 5 of the Appeal Brief, Appellant cites nine related appeals.
We decided the appeals in eight of those applications, where one application
(10/229,273) involved multiple appeals. See Ex parte Lee, No. 2009-010022
(BPAI Apr. 22, 2011); Ex parte Lee, No. 2014-009230 (PTAB Aug. 5,
2016), reh 'g denied (PTAB Nov. 15, 2016). The appeals in Applications
13/599,206, 13/599,415, 13/599,517, 13/599,639, 13/618,979, 13/619,486,
13/803,691, and 13/338,098 have also been decided, the latter by a different
panel of this Board. See Ex parte Lee, No. 2014-009364 (PTAB Mar. 20,
2017); Ex parte Lee, No. 2014-003734 (PTAB Mar. 2, 2017); Ex parte Lee,
No. 2016-003036 (PTAB Apr. 3, 2017); Ex parte Lee, No. 2014-009733
(PTAB Mar. 21, 2017); Ex parte Lee, No. 2014-008495 (PTAB Mar. 15,
2017); Ex parte Lee, No. 2014-008498 (PTAB Mar. 15, 2017); Ex parte Lee,
No. 2015-001993 (PTAB Mar. 29, 2017); and Ex parte Lee, No. 2016-
001439 (PTAB Aug. 14, 2017) ("Lee '1439").
THE REJECTIONS
The Examiner rejected claims 21--4 7 under 3 5 U.S. C. § 101 as
directed to ineligible subject matter. Non-Final Act. 8-13. 2
2 Throughout this opinion, we refer to (1) the Non-Final Rejection mailed
August 31, 2017 ("Non-Final Act."); (2) the Appeal Brief filed November
30, 2017 ("App. Br."); (3) the Examiner's Answer mailed April 5, 2018
("Ans."); and (4) the Reply Brief filed May 29, 2018 ("Reply Br.").
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Application 13/619,151
The Examiner rejected claims 21-23, 26-31, 34--39, and 42--47 under
35 U.S.C. § 103 as unpatentable over Rivette (US 5,623,679; issued Apr. 22,
1997) ("Rivette '679") and Stobbs (US 2004/0181427 Al; published Sept.
16, 2004). Non-Final Act. 14--26.
The Examiner rejected claims 24, 25, 32, 33, 40, and 41 under 35
U.S.C. § 103 as unpatentable over Rivette '679, Stobbs, and Rivette (US
5,991,751; issued Nov. 23, 1999) ("Rivette '751"). Non-Final Act. 26-30.
THE INELIGIBILITY REJECTION
The Examiner determines that the claims are directed to an abstract
idea, including receiving and analyzing data, and displaying results of the
analysis. Non-Final Act. 8-10; Ans. 4--12. The Examiner adds that the
claims do not include elements that add significantly more than the abstract
idea, but merely recite, among other things, generic computer components.
See Non-Final Act. 11-12; Ans. 13-14.
Appellant argues that the claimed invention is eligible because, among
other things, it provides a particular means to solve a technical problem of
generating an initial patent claim analysis that is not solved by conventional
search tools, nor does the claimed invention automate a manual process.
App. Br. 11-26; Reply Br. 3. Appellant adds that despite not being directed
to an abstract idea, the recited limitations nonetheless add significantly more
to the purported abstract idea by, among other things, reciting (1) a
"transformative result" by providing a quick initial claim chart via the
recited functions, and (2) limitations that are not well-understood, routine,
and conventional. App. Br. 26-28; Reply Br. 3-7. Regarding the latter
point, Appellant contends that the Examiner's findings to the contrary lack
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evidentiary support and, therefore, do not comport with USPTO procedure
requiring such evidence. Reply Br. 4--7. Appellant adds that the invention
recited in claims 45 to 4 7 provides an additional technical solution, and is
well beyond a mere "embellishment" of the independent claims as the
Examiner contends. App. Br. 32-33; Reply Br. 8-9.
ISSUE
Under§ 101, has the Examiner erred in rejecting claims 21--47 as
directed to ineligible subject matter? This issue turns on whether the claims
are directed to an abstract idea and, if so, whether recited elements-
considered individually and as an ordered combination-transform the
nature of the claims into a patent-eligible application of that abstract idea.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
573 U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). That
said, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
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commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks and citation
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
In January 2019, the USPTO published revised guidance on the
application of§ 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
ANALYSIS
Claims 21-44: Alice/Mayo Step One
Representative independent claim 21 recites [a] computer systemfor
generating an initial patent claim analysis, comprising:
an interface to a display that provides visual information to a user;
and
a processor cooperatively operable with the interface, and that loads
and executes instructions to facilitate:
breaking down a patent claim of one patent document into legally
cognizable claim elements that constitute the patent claim, wherein the
patent document is a patent application or a patent and includes at least a
specification and patent claims separate from the specification;
identifying, for each of the claim elements, at least one keyword which
appears therein;
searching the specification of a different patent document for each at
least one keyword which was identified, to preliminarily determine a
relevant section of the different patent document that provides disclosure for
each of the claim elements;
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generating, without manual intervention, a claim chart for the patent
claim of the patent document, that quotes each of the claim elements in the
claim chart and refers to the preliminarily determined relevant section of the
different patent document that provides disclosure for each of the claim
elements; and
causing the display to visually provide the claim chart that quotes the
claim elements with a reference to each of the preliminarily determined
relevant sections as providing disclosure relevant for each of the claim
elements. 3
As the disclosure explains, Appellant's invention is an intellectual
property (IP) analysis, searching, and access system that provides, among
other things, an initial patent claim analysis. Spec. 1, 22. To this end, an IP
analyzer application 104 can (1) break down patent claims into constituent
elements; (2) identify keywords in those elements; (3) search a patent's
specification for the keywords; and ( 4) populate the claim analysis for each
element with reference to a preliminarily determined relevant section of the
specification. Spec. 22. In one aspect, the IP analyzer can generate claim
charts by separating claims into key phrases that are then linked
automatically to portions of a patent Specification's text and related images.
Spec. 42--43.
Turning to claim 1, we first note that the claim recites a system and,
therefore, falls within the machine category of§ 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
3 Unless otherwise indicated, we italicize or quote text associated with
various recited limitations for emphasis and clarity.
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at 217. To this end, we must determine whether the claim (1) recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52-55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
In the rejection, the Examiner determines that claim 21 is directed to
an abstract idea, namely receiving and analyzing data, and displaying results
of the analysis, which is said to include mental processes. See Non-Final
Act. 8-11; Ans. 4--12.
To determine whether a claim recites an abstract idea, we (1) identify
the claim's specific limitations that recite an abstract idea, and (2) determine
whether the identified limitations fall within certain subject matter
groupings, namely (a) mathematical concepts4; (b) certain methods of
organizing human activity5; or ( c) mental processes. 6
Here, apart from the recited ( 1) computer system; (2) interface; (3)
display; ( 4) processor cooperatively operable with the interface, and that
4 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
5 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
6 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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loads and executes instructions; and (5) generating a claim chart without
manual intervention, all of claim 21 's recited limitations, which collectively
are directed to ( 1) searching keywords associated with a patent claim in
other patent documents; and (2) associating the search results to the claim's
recited elements, fit squarely within at least one of the above categories of
the USPTO' s guidelines.
First, (1) breaking down a patent claim ... into legally cognizable
claim elements ... ; (2) identifying, for each of the claim elements, at least
one keyword which appears therein; (3) searching the specification of a
different patent document . .. to preliminarily determine a relevant section
of the different patent document that provides disclosure for each of the
claim elements; (4) generating ... a claim chart for the patent claim of the
patent document, that quotes each of the claim elements in the claim chart
and refers to the preliminarily determined relevant section of the different
patent document that provides disclosure for each of the claim elements; and
(5) visually provid[ing] the claim chart . .. could be done entirely mentally
by merely (1) reading a patent document; (2) looking for certain words in
that document; (3) noting the associated sections in that document
containing those words; and (4) organizing the results of that search either
mentally or by writing this information down-processes that involve mere
observation and logical reasoning. Cf CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that limitation
reciting obtaining information about transactions that have used an Internet
address identified with a credit card transaction can be performed by a
human who simply reads records of Internet credit card transactions from a
pre-existing database); see also id. (noting that a recited step that utilized a
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map of credit card numbers to determine the validity of a credit card
transaction could be performed entirely mentally by merely using logical
reasoning to identify a likely instance of fraud by merely observing that
numerous transactions using different credit cards all originated from the
same IP address).
Notably, the above-noted recited functions are strikingly similar to
those that have long been performed by Patent Examiners at the USPTO
when searching prior art references for instances of terms and keywords
associated with an invention claimed in a patent application----even before
computer-assisted searching. That is, these searches and patentability
determinations were performed largely by Examiners reading individual
paper copies of patents classified according to their subject matter. See
MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 904 (5th ed. Rev. 13
Nov. 1989) ("MPEP 5th ed.") 7 ("The examiner, after having obtained a
thorough understanding of the invention disclosed and claimed in the
application, then searches the prior art as disclosed in patents and other
printed documents.") ( emphases added); see also id. at§ 904.02 (instructing
examiners to conduct a search commensurate with the limitations appearing
in the most detailed claims in the case);§ 901.07 (noting the arrangement of
U.S. patents in "shoes" bearing appropriate labels showing the associated
7 This version of the MPEP ( and other earlier editions) are available from the
USPTO's web site at
https ://www. uspto. gov /web/ offices/pac/mpep/ o ld/index.htm. As noted
above, we refer to the 5th edition of the MPEP as "MPEP 5th ed." to
distinguish it from the latest version of the MPEP that is simply abbreviated
"MPEP."
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class, subclass, and range of patent numbers in a particular shoe). In this
sense, then, the cited limitations also organize human activity, at least to the
extent that they not only organize information for analysis, but also comport
with standard examination procedure for searching prior art and, therefore,
pertain to following associated rules or instructions outlined in the Fifth
Edition of the MPEP noted above. See Guidance, 84 Fed. Reg. at 52.
That the claim also calls for generating a claim chart does not change
our conclusion. As another panel of this Board noted in a related appeal, a
"claim chart" is a table having a column indicating the elements of one or
more claims, and one or more additional columns indicating corresponding
information regarding the claim elements including prior art, that
corresponds to those claim elements. Lee '1439, at 6. As with searching
prior art based on recited claim elements, ( 1) mapping individual elements
of a claim to particular disclosure in searched-for patents, and (2) presenting
that information in a claim chart was not only done routinely in
reexamination proceedings, but is also standard examination procedure. See
MPEP 5th ed. § 2214 (listing exemplary reexamination request showing
unpatentability of claim 3 of the Smith patent, where ( 1) each claim element
is listed in the first column and is assigned a different row, and (2)
corresponding disclosure in a prior art patent to Berridge meets each
respective element in a second column); see also MPEP § 2262 (9th ed. Rev.
08.2017, Jan. 2018) (allowing Examiners to incorporate reexamination
request claim charts in their Office Actions). Such tables merely organize
data in rows and columns, such that the intersection of a particular column
and row identifies a corresponding cell with information pertaining to both
the associated column and row, as in a spreadsheet. See, e.g., Enfzsh LLC v.
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Microsoft Corp., 822 F.3d 1327, 1340 (Fed. Cir. 2016) (discussing data
representing rows and columns in a table in Microsoft Excel 5.0--a version
of a well-known spreadsheet program). Such a table and its associated data
can be visualized and processed mentally or with pen and paper.
Although the claim recites an abstract idea based on these mental
processes and methods of organizing human activity, we nevertheless must
still determine whether the abstract idea is integrated into a practical
application, namely whether the claim applies, relies on, or uses the abstract
idea in a manner that imposes a meaningful limit on the abstract idea, such
that the claim is more than a drafting effort designed to monopolize the
abstract idea. See Guidance, 84 Fed. Reg. at 54--55. To this end, we (1)
identify whether there are any additional recited elements beyond the
abstract idea, and (2) evaluate those elements individually and collectively to
determine whether they integrate the exception into a practical application.
See id.
First, we are not persuaded that the claimed invention improves the
computer or its components' functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish, despite Appellant's arguments to the
contrary (App. Br. 14). The claimed self-referential table in Enfish was a
specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent
Appellant contends that the claimed invention uses such a data structure to
improve a computer's functionality or efficiency, or otherwise change the
way that device functions (see App. Br. 7), there is no persuasive evidence
on this record to substantiate such a contention.
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As the Enfzsh court emphasized, the claims were not directed to any
form of storing tabular data, but were instead directed to a self-referential
table for a computer database. Enfzsh, 822 F.3d at 1337. Notably, the court
explained that the table stored information related to each column in rows of
that very table, such that new columns can be added by creating new rows in
the table. Id. at 1338. To the extent that Appellant contends that the recited
claim chart is similar to the self-referential table in Enfzsh (see App. Br. 14),
we disagree.
To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
App. Br. 11-13; Reply Br. 3), we disagree. Even assuming, without
deciding, that the claimed invention can analyze patent claims faster than
doing so manually, any speed increase comes from the capabilities of the
generic computer components-not the recited process itself. See
Fair Warning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d
1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.")); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App'x 1012, 1017 (Fed. Cir.
2017) (unpublished) ("Though the claims purport to accelerate the process
of finding errant files and to reduce error, we have held that speed and
accuracy increases stemming from the ordinary capabilities of a general-
purpose computer do not materially alter the patent eligibility of the claimed
subject matter."). Like the claims in Fair Warning, the focus of claim 21 is
not on an improvement in computer processors as tools, but on certain
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independently abstract ideas that use generic computing components as
tools. See FairWarning, 839 F.3d at 1095 (citations and quotation marks
omitted).
As with the ineligible claimed invention in BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1284--91 (Fed. Cir. 2018), the claimed
invention does not improve a computer's functionality or that of its
associated components, but rather the benefits flow from performing the
abstract idea in conjunction with those generic computer components. See
BSG, 899 F.3d at 1288 ("While the presentation of summary comparison
usage information to users improves the quality of the information added to
the database, an improvement in the information stored by a database is not
equivalent to an improvement in the database's functionality.").
Appellant's reliance on McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) (App. Br. 13, 17; Reply Br.)
is likewise unavailing. There, the claimed process used a combined order of
specific rules that rendered information in a specific format that was applied
to create a sequence of synchronized, animated characters. McRO, 837 F.3d
at 1315. Notably, the recited process automatically animated characters
using particular information and techniques-an improvement over manual
three-dimensional animation techniques that was not directed to an abstract
idea. Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to perform the
recited functions. This generic computer implementation is not only
directed to fundamental human activity organization and mental processes as
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noted above, but also does not improve a display mechanism as was the case
inMcRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir.
2018) ( distinguishing McRO).
We also find unavailing Appellant's reliance on Core Wireless
Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (2018) (Reply Br.
3--4). There, the court held eligible claims reciting a computing device that
could display an application summary window that was not only reachable
directly from the main menu, but could also display a limited list of
selectable functions while the application was in an un-launched state. Core
Wireless, 880 F.3d at 1360-63. Upon selecting a function, the device would
then launch the application and initiate the selected function. Id. at 1360. In
reaching its eligibility conclusion, the court noted that the claimed invention
was directed to an improved user interface for computing devices that used a
particular manner of summarizing and presenting a limited set of
information to the user, unlike conventional user interface methods that
displayed a generic index on a computer. Id. at 1362---63.
That is not the case here. To the extent that Appellant contends that
the claimed invention is directed to such improvements in computer
capabilities (see Reply Br. 3--4), there is no persuasive evidence on this
record to substantiate such a contention.
Therefore, we do not find that the claim recites additional elements
improving (1) the computer itself, or (2) another technology or technical
field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)).
Rather, the above-noted additional elements merely (1) apply the abstract
idea on a computer; (2) include instructions to implement the abstract idea
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on a computer; or (3) use the computer as a tool to perform the abstract idea.
See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05([)).
To the extent that Appellant contends that the claimed invention is
eligible because it satisfies the machine-or-transformation test by reciting a
"transformative result" (see App. Br. 27), we disagree. To be sure, a claim
that transforms a particular article to another state or thing or is tied to a
particular machine to satisfy the machine-or-transformation test can be a
"useful clue" to eligibility in the Alice/Mayo framework. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (quoting Bilski v.
Kappas, 561 U.S. 593, 594 (2010)); see also In re Bilski, 545 F.3d 943, 954
(Fed. Cir. 2008), aff'd sub nom. Bilski, 561 U.S. at 593. Despite not being
the sole eligibility test, the machine-or-transformation test can nevertheless
indicate whether additional elements integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 55 ( citing MPEP §§ 2106.05(b ),
(c)).
But that is not the case here. The recited functions that are said to
produce the alleged "transformative result," namely ( 1) identifying the
keywords in each claim element; (2) searching those keywords in a patent
document; and (3) generating the recited claim chart (see App. Br. 27), do
not transform a particular article into a different state or thing, but rather
merely recite an abstract idea, namely mental processes and methods of
organizing human activity as noted above.
We add that the step calling for causing the display to visually provide
the claim chart . .. in the claim's last clause not only uses generic
computing components to perform the abstract idea as noted above, but this
display function is also insignificant extra-solution activity that merely
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displays the result of the patent claim analysis of the recited abstract idea
and, therefore, does not integrate the exception into a practical application
for that additional reason. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir.
2008) (en bane), ajf'd on other grounds, 561 U.S. 593 (2010). Accord
Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)).
In conclusion, although the recited functions may be beneficial by (1)
searching keywords associated with a patent claim in other patent
documents; and (2) associating the search results to the claim's recited
elements, a claim for a useful or beneficial abstract idea is still an abstract
idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379-
80 (Fed. Cir. 2015).
We, therefore, agree with the Examiner that claim 21 is directed to an
abstract idea.
Claims 21--44: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 21 's additional recited
elements, namely the recited ( 1) computer system; (2) interface; (3) display;
( 4) processor cooperatively operable with the interface, and that loads and
executes instructions; and ( 5) generating a claim chart without manual
intervention----considered individually and as an ordered combination----do
not provide an inventive concept such that these additional elements amount
to significantly more than the abstract idea. See Alice, 573 U.S. at 221; see
also Guidance, 84 Fed. Reg. at 56. As noted above, the claimed invention
merely uses generic computing components to implement the recited
abstract idea.
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To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see App. Br. 15-16, 27-28; Reply Br. 3-9), these
limitations are not additional elements beyond the abstract idea, but rather
are directed to the abstract idea as noted previously. See Guidance, 84 Fed.
Reg. at 56 (instructing that additional recited elements should be evaluated
in Alice/Mayo step two to determine whether they (1) add specific
limitations that are not well-understood, routine, and conventional in the
field, or (2) simply append well-understood, routine, and conventional
activities previously known to the industry (citing MPEP § 2106.05(d)).
Rather, the recited (1) computer system; (2) interface; (3) display; and
( 4) processor cooperatively operable with the interface, and that loads and
executes instructions; and (5) generating a claim chart without manual
intervention are the only additional recited elements whose generic
computing functionality is well-understood, routine, and conventional. See
Intellectual Ventures, 792 F.3d at 1368 (noting that a recited user profile
(i.e., a profile keyed to a user identity), database, and communication
medium are generic computer elements); Fair Warning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (noting that using generic
computing components like a microprocessor or user interface do not
transform an otherwise abstract idea into eligible subject matter); Mortgage
Grader Inc. v. First Choice Loan Services, Inc., 811 F.3d 1314, 1324-25
(Fed. Cir. 2016) (noting that components such an "interface," "network,"
and "database" are generic computer components that do not satisfy the
inventive concept requirement); Internet Patents Corp. v. Active Network,
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Inc., 790 F.3d 1343, 1343--49 (Fed. Cir. 2015) (holding ineligible claims
reciting providing an intelligent user interface to an online application
comprising (1) furnishing plural hyperlinked icons on a displayed web page,
and (2) displaying a dynamically generated online application form set
responsive to activating an icon as directed to the abstract idea of retaining
information in navigating online forms); buySAFE v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) ("That a computer receives and sends the
information over a network-with no further specification-is not even
arguably inventive."). Accord Spec. 20, 68-70 (describing generic computer
components used to implement the invention); Non-Final Act. 11; Ans. 4
( concluding that the claims' generic computer functions do not add
significantly more than the abstract idea).
Appellant's contention that the Examiner allegedly did not comply
with the evidentiary requirements under the April 2018 US PTO
memorandum mandating these requirements for ineligibility rejections after
Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (Reply Br. 4--
7) is unavailing. To be sure, the Examiner must show-with supporting
facts-that certain claim elements are well-understood, routine, and
conventional where such a finding is made. See Berkheimer, 881 F.3d at
1369 (noting that whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the invention is a factual
determination). In light of this factual determination, the USPTO issued a
memorandum requiring that Examiners support a finding that an additional
element of a claim is well-understood, routine, and conventional. Robert W.
Bahr, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
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Inc.), USPTO, Apr. 19, 2018 ("Berkheimer Memo."), at 2-3 (noting that the
Berkheimer decision clarifies the inquiry whether an additional element ( or
combination of additional elements) represents well-understood, routine, and
conventional activity).
As noted previously, the recited ( 1) computer system; (2) interface;
(3) display; (4) processor cooperatively operable with the interface, and that
loads and executes instructions; and (5) generating a claim chart without
manual intervention are the only additional recited elements whose generic
computing functionality is well-understood, routine, and conventional.
Therefore, leaving aside the fact that many of the recited limitations reflect
standard examination procedure for patent claim analysis as noted
previously, to the extent that Appellant contends that the Examiner failed to
provide evidence that all recited elements are well-understood, routine, and
conventional (see Reply Br. 4--7), such an argument is not commensurate
with the more limited scope of the Examiner's finding in this regard, namely
that the elements other than the abstract idea, namely the additional
computer-based elements whose generic computing functionality is well-
understood, routine, and conventional. See Non-Final Act. 11-12.
As noted previously, there is ample evidence of this generic
computing functionality in not only the case law cited previously, but also
Appellant's own Specification. See, e.g., Fair Warning, 839 F.3d at 1096
(noting that using generic computing components like a microprocessor or
user interface do not transform an otherwise abstract idea into eligible
subject matter); Internet Patents, 790 F.3d at 1343--49 (holding ineligible
claims reciting providing an intelligent user interface to an online
application comprising (1) furnishing plural hyperlinked icons on a
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displayed web page, and (2) displaying a dynamically generated online
application form set responsive to activating an icon as directed to the
abstract idea of retaining information in navigating online forms); Spec. 20,
68-70 ( describing generic computer components used to implement the
invention). Therefore, the additional recited elements do not add
significantly more than the abstract idea to render the claim patent-eligible.
We reach a similar conclusion regarding the recited insignificant
extra-solution activity, namely causing the display to visually provide the
claim chart . . . . That the display can visually provide the claim chart does
not mean that this function is performed in an unconventional way to add
significantly more than the abstract idea to provide an inventive concept
under Alice/Mayo step two. See Guidance, 84 Fed. Reg. at 56. Given this
limitation's (1) high level of generality, and (2) use of generic computing
components whose functionality is well-understood, routine, and
conventional for the reasons noted previously, the recited extra-solution
activity does not add significantly more than the abstract idea to provide an
inventive concept under Alice/Mayo step two. To the extent Appellant
contends otherwise (see App. Br. 15-16, 26-28), we disagree.
In conclusion, the additional recited elements----considered
individually and as an ordered combination----do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 21 and claims 22--44 not argued separately with particularity.
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Claims 45-47: Alice/Mayo Step One
We also sustain the Examiner's rejection of dependent claim 45
reciting, in pertinent part, preliminarily determining a plurality of patent
documents, including the different patent document, which are included in a
project based on a commonality data assigned to each of the patent
documents; and linking the project to the one patent document for the patent
claim analysis as a target for legal analysis of the one patent document;
wherein the processor executes instructions to perform, responsive to the
linking of the project to the one patent document for the patent claim
analysis, with respect to the plurality of patent documents preliminarily
determined to be included in the project including the different patent
document, the breaking down, identifying, searching, generating, and
causing limitations.
According to Appellant, the claimed invention provides an additional
technical solution that enables a user to tie a group of documents together as
a target for analysis-a problem that is ostensibly prevalent for large data
sets. See App. Br. 29-32 ( citing Spec. 3).
We find this argument unavailing. Apart from the recited processor
and other additional elements of independent claim 21 noted previously,
every recited function of claim 45 can be performed entirely mentally by
merely ( 1) thinking about which patents are associated with a particular
project based on some "commonality" data; (2) cognitively associating the
project to a particular patent document as a target for the patent claim
analysis; and (3) performing the recited breaking down, identifying,
searching, generating, and causing limitations with respect to the documents
in the project-functions involving mere observation and logical reasoning,
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and that can be performed entirely mentally or using pen and paper as noted
previously. Cf CyberSource, 654 F.3d at 1372 (noting that limitation
reciting obtaining information about transactions that have used an Internet
address identified with a credit card transaction can be performed by a
human who simply reads records of Internet credit card transactions from a
pre-existing database); see also id. (noting that a recited step that utilized a
map of credit card numbers to determine the validity of a credit card
transaction could be performed entirely mentally by merely using logical
reasoning to identify a likely instance of fraud by merely observing that
numerous transactions using different credit cards all originated from the
same IP address). These limitations also organize human activity, at least to
the extent that they not only organize information, but also comport with
standard examination procedure for searching prior art and determining
patentability and, therefore, pertain to following associated rules or
instructions outlined in the Fifth Edition of the MPEP noted above. See
Guidance, 84 Fed. Reg. at 52. Therefore, apart from the previously-noted
additional elements, the limitations of claim 45 fall squarely within the
mental processes and methods of organizing human activity categories of the
agency's guidelines and, therefore, recite an abstract idea. See Guidance, 84
Fed. Reg. at 52 (listing exemplary (1) mental processes including
observation and evaluation, and (2) methods of organizing human activity,
including personal interactions and following rules or instructions).
For the foregoing reasons and given the recited limitations' high level
of generality, we are not persuaded that the claimed invention improves the
computer or its components' functionality or efficiency, or otherwise
changes the way those devices function. Even assuming, without deciding,
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that the claimed invention can perform the recited functions faster or more
efficiently than doing so manually, any speed increases or efficiencies come
from the capabilities of the generic computer components-not the recited
process itself. See FairWarning, 839 F.3d at 1095 ("[T]he fact that the
required calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed subject
matter."). Therefore, we do not find that the claim recites additional
elements improving (1) the computer itself, or (2) another technology or
technical field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP
§ 2106.05(a)). Rather, the above-noted additional elements merely (1) apply
the abstract idea on a computer; (2) include instructions to implement the
abstract idea on a computer; or (3) use the computer as a tool to perform the
abstract idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(±)).
We, therefore, agree with the Examiner that claim 45 is directed to an
abstract idea.
Claims 45--47: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 45's additional recited
elements, namely the recited (1) computer system; (2) interface; (3) display;
(4) processor cooperatively operable with the interface, and that loads and
executes instructions; and ( 5) generating a claim chart without manual
intervention----considered individually and as an ordered combination----do
not provide an inventive concept such that these additional elements amount
to significantly more than the abstract idea. See Alice, 573 U.S. at 221; see
also Guidance, 84 Fed. Reg. at 56. As noted above, the claimed invention
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merely uses generic computing components to implement the recited
abstract idea.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see App. Br. 32-33; Reply Br. 8-9), these limitations
are not additional elements beyond the abstract idea, but rather are directed
to the abstract idea as noted previously. See Guidance, 84 Fed. Reg. at 56
(instructing that additional recited elements should be evaluated in
Alice/Mayo step two to determine whether they (1) add specific limitations
that are not well-understood, routine, and conventional in the field, or (2)
simply append well-understood, routine, and conventional activities
previously known to the industry (citing MPEP § 2106.05(d)).
Rather, the recited (1) computer system; (2) interface; (3) display; ( 4)
processor cooperatively operable with the interface, and that loads and
executes instructions; and ( 5) generating a claim chart without manual
intervention are the only additional recited elements whose generic
computing functionality is well-understood, routine, and conventional as
noted previously.
In conclusion, the additional recited elements----considered
individually and as an ordered combination----do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 45 and claims 46 and 4 7 not argued separately with particularity.
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THE OBVIOUSNESS REJECTION OVER RIVETTE '679 AND STOBBS
The Examiner finds that Rivette '679 discloses many recited elements
of claim 21 including (1) identifying at least one keyword; (2) searching a
patent's Specification for the identified keyword to determine a relevant
section that provides disclosure for each claim element; and ( 4) generating
and displaying the recited claim chart. Non-Final Act. 14--21. Although the
Examiner acknowledges that Rivette '679 does not break down a patent
claim into legally cognizable claim elements, the Examiner cites Stobbs for
teaching this feature in concluding that the claim would have been obvious.
Non-Final Act. 21-22.
Appellant argues that the Examiner's interpretation of the recited
"claim elements" and "claim chart" is unreasonable, and the cited prior art
does not teach or suggest these limitations under their broadest reasonable
interpretation. App. Br. 36-39. Appellant adds that the cited prior art also
does not teach or suggest, among other things, ( 1) identifying for each claim
element, at least one keyword appearing therein, and (2) generating a claim
chart that quotes each claim element and refers to a preliminarily determined
relevant section of the different patent document that provides disclosure for
each claim element. App. Br. 36-53; Reply Br. 10-14.
ISSUE
Under§ 103, has the Examiner erred in rejecting claim 21 by finding
that Rivette '679 and Stobbs collectively would have taught or suggested (1)
identifying, for each claim element, at least one keyword which appears
therein, and (2) generating and displaying a claim chart that quotes each
claim element and refers to a preliminarily determined relevant section of
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the different patent document that provides disclosure for each claim
element?
ANALYSIS
As noted above, a key aspect of this dispute is whether the prior art
teaches or suggests identifying, for each legally cognizable claim element of
a patent claim, at least one keyword appearing therein. Our emphasis
underscores that every recited element of a patent claim must have at least
one identified keyword that appears in that element to satisfy this limitation.
Despite this "all elements" requirement, the Examiner's rejection is
not a model of clarity in this regard. Although the Examiner finds that
Rivette '679 teaches "identifying at least one keyword which appears
therein," the Examiner omits the critical requirement that this identification
is for each claim element, thus suggesting that Rivette '679 lacks that crucial
"all elements" requirement. See Non-Final Act. 17-18.
To be sure, the Examiner cites Stobbs for teaching breaking down a
patent claim into legally cognizable claim elements (Non-Final Act. 21; Ans.
19), but it is still unclear how a keyword is generated for each claim element
under the Examiner's proposed combination, let alone generating a claim
chart (1) quoting each of those elements, and (2) referring to the relevant
preliminarily determined patent document sectionfor each element as
claimed. Accord App. Br. 42--44 (noting this deficiency). That the
Examiner fails to respond to Appellant's arguments in this regard in the
Answer only further undermines the propriety of the Examiner's findings
and conclusions in this regard. For this reason alone, the Examiner's
obviousness rejection is problematic on this record.
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The Examiner's rejection is problematic for yet another reason. In the
rejection, the Examiner refers to (1) Rivette '679's word list dialog box 310
in Figure 24, and (2) Search Results box 320 in Figure 26 in connection with
the recited claim chart generation limitation. See Non-Final Act. 19. In the
Answer, the Examiner refers to Rivette '679's generating a "report (charts)"
indicating relevant sections of various disclosures that are said to relate to
specific claim language, citing various passages of Rivette '679 without
further explanation. See Ans. 19-21.
Our emphasis on the Examiner's term "report (charts)" underscores
the Examiner's apparent mapping of a "report" in Rivette '679 to the recited
claim chart. The Examiner, however, does not explain how this apparent
construction of the term "claim chart" comports with the Board's
construction of the term in a related proceeding, namely Lee' 14398-a
construction that, notably, is the "law of the case" in this related proceeding
and, therefore, binding here. See MPEP § 706.07(h)(XI)(A) (noting that the
Board's decision becomes the "law of the case" in that it is controlling on
the application under appeal and later related applications).
As another panel of this Board noted in Lee' 1439:
A "claim chart" is understood by a person of ordinary skill in
the art to be a table having a column indicating the elements of
one or more claims, and one or more additional columns
indicating corresponding information regarding the claim
elements, for example, the features of a product or service, or
prior art, that correspond to those claim elements.
8 This opinion is cited in full in the "Related Appeals" section of this
opm10n.
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Lee' 1439, at 6. Accord App. Br. 38; Reply Br. 11-12 (noting this
construction). To the extent that the Examiner finds that Rivette '679's
relied-upon functionality satisfies this construction, we cannot say given the
Examiner's silence in this regard. That the Examiner did not acknowledge
this binding construction----despite Appellant's explicit reference to it on
page 38 of the Appeal Brief----only further undermines the propriety of the
Examiner's rejection.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 21; (2) independent claims 29 and 37 which recite
commensurate limitations; and (3) dependent claims 22, 23, 26-28, 38-31,
34--36, 38, 39, and 42--47 for similar reasons. Because this issue is
dispositive regarding our reversing the Examiner's obviousness rejection of
these claims, we need not address Appellant's other associated arguments.
THE OTHER OBVIOUSNESS REJECTION
Because the Examiner has not shown that the cited prior art cures the
deficiencies noted above regarding the rejection of the independent claims,
we will not sustain the obviousness rejection of dependent claims 24, 25, 32,
33, 40, and 41 (Non-Final Act. 26-30) for similar reasons.
NEW GROUND OF REJECTION
We newly reject independent claims 21, 29, and 37 under 35 U.S.C.
§ 103 as obvious over Rivette '679.
First, it is undisputed that Rivette '679 discloses the recited interface
and processor cooperatively operable with the interface as claimed.
Although Rivette '679 does not state explicitly that (1) a patent claim can be
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broken down into legally cognizable claim elements, and (2) at least one
keyword can be identified for each claim element, these functions would
have nevertheless been obvious to ordinarily skilled artisans, particularly
since breaking down patent claims into legally cognizable elements is
fundamental to claims analysis-a key aspect of patentability
determinations, including those performed by Patent Examiners at the
USPTO. See MPEP 5th ed.§ 904 ("The examiner, after having obtained a
thorough understanding of the invention disclosed and claimed in the
application, then searches the prior art as disclosed in patents and other
printed documents.") (emphases added); see also id. at§ 904.02 (instructing
examiners to conduct a search commensurate with the limitations appearing
in the most detailed claims in the case).
Notably, such an element-by-element analysis can occur even for
claims with just one claim element. For example, claim 1 of U.S. Patent
3,156,523 consists of only two words: "Element 95." Therefore, this claim
has only one legally cognizable element, namely "Element 95," with two
keywords appearing therein, namely "Element" and "95."
To determine what patents disclose this element, these keywords
could be searched either individually or together (e.g., as the phrase
"Element 95") using, for example, Rivette '679's Search Library dialog box
302 in Figure 23 to find all occurrences of the search string in other patents,
as was done for the 23 patents containing the search term "data" in Figure
26. See Rivette '679, col. 30, 1. 10- col. 32, 1. 57.
By searching the full text of patents for the string "Element 95" and
its two constituent keywords, at least one relevant section of a patent
disclosing this claim element would be determined, namely at least the
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patent's specification and abstract containing the searched-for text. See
Rivette '679, col. 32, 11. 42--45 (noting that users can navigate to each "hit"
of the search term in the patent text by activating the right arrow button
3 51 ). Such sections containing the searched-for text could also include
particular columns of the patent identified by number. See id. col. 32, 11. 45-
58 ( discussing navigating and displaying patents by column number).
Performing such a search to determine whether patents disclose a
claim element, such as "Element 95" in the example above, would have been
obvious to, among other things, determine patentability of a claimed
invention based on that disclosure ( or lack thereof). See MPEP 5th ed. § 904
("The examiner, after having obtained a thorough understanding of the
invention disclosed and claimed in the application, then searches the prior
art as disclosed in patents and other printed documents.") ( emphases added);
see also id. at§ 904.02 (instructing examiners to conduct a search
commensurate with the limitations appearing in the most detailed claims in
the case). Using a computer-based text search tool to achieve that end, such
as that disclosed in Rivette '679's Figures 26 and 28, would have likewise
have been obvious as part of that patentability determination to, among other
things, identify patents containing a claim element or its constituent
keywords, such as "Element 95," quickly and easily by merely entering the
keywords----or the claim element itself-in the search tool and viewing the
results. Such an automated tool would preclude the need to manually scan
through the entire text of each patent to identify the occurrences of the claim
element or its keywords, and the associated section of the patent ( e.g.,
Specification, Abstract, etc.) containing those occurrences.
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Summarizing the results of this search by organizing the results in a
table, such as a claim chart, would have likewise been obvious to map the
claim elements to the corresponding prior art disclosure. As another panel
of this Board noted in a related appeal, a "claim chart" is a table having a
column indicating the elements of one or more claims, and one or more
additional columns indicating corresponding information regarding the claim
elements including prior art, that corresponds to those claim elements. Lee
'1439, at 6. As with searching prior art based on recited claim elements, (1)
mapping individual elements of a claim to particular disclosure in searched-
for patents, and (2) presenting that information in a claim chart is standard
examination procedure. See MPEP § 2262 ( allowing Examiners to
incorporate reexamination request claim charts in their Office Actions).
Such tables merely organize data in rows and columns, such that the
intersection of a particular column and row identifies a corresponding cell
with information pertaining to both the associated column and row, as in a
spreadsheet. See, e.g., Enfzsh, 822 F.3d at 1340 (discussing data
representing rows and columns in a table in Microsoft Excel 5.0--a version
of a well-known spreadsheet program that was in public use at latest by early
1994).
For example, if the sole claim element "Element 95" of claim 1 of
U.S. Patent 3,156,523 were searched for (along with its two keywords) using
Rivette '679's above-noted search functionality, and the search yielded two
occurrences, the results for that claim element could be summarized as
follows designating the disclosing patents' respective relevant sections:
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Claim Element
"Element 95"
"Element 95"
Relevant Section Disclosing Claim
Element
U.S. Patent X,XXX,XXX9
(Specification)
U.S. Patent Y,YYY,YYY (Abstract)
Table 1: Exemplary claim chart summarizing search results
Another possible example summarizing these search results with column-
based section designations is shown below:
Relevant Section Disclosing Claim
Claim Element Element
"Element 95" U.S. Patent X,XXX,XXX (col.#)
"Element 95" U.S. Patent Y,YYY,YYY (col.#)
Table 2: Exemplary claim chart summarizing search results with
column designations
9 In these hypothetical examples, we omit actual patent numbers, but rather
designate patent numbers with letters for illustrative purposes only. We
likewise designate column numbers with a number symbol(#).
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Not only could a searcher, such as a Patent Examiner, summarize
these search results in a table with pen and paper to merely organize the data
in rows and columns as shown above, but the search results could also be
entered into a spreadsheet program, such as Microsoft Excel, to organize the
data similarly and display the results on a computer automatically. See, e.g.,
Enfish, 822 F.3d at 1340 (discussing data representing rows and columns in
a table in Microsoft Excel 5.0). That the USPTO routinely encouraged using
claim charts to map particular recited claim elements to corresponding
disclosure in prior art patents only underscores that generating claim charts
to summarize similar patent search results would have been obvious. See
MPEP 5th ed. § 2214 (listing exemplary reexamination request showing
unpatentability of claim 3 of the Smith patent, where ( 1) each claim element
is listed in the first column and is assigned a different row, and (2)
corresponding disclosure in a prior art patent to Berridge meets each
respective element in a second column); see also MPEP § 2262 (allowing
Examiners to incorporate reexamination request claim charts in their Office
Actions). Such an enhancement merely predictably uses prior art elements
according to their established functions-an obvious improvement. KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007).
Notably, a spreadsheet program, such as Microsoft Excel, would
generate a spreadsheet-based claim chart automatically from the associated
data by, among other things, formatting and displaying the chart in a
particular way, printing the chart, etc. Even assuming, without deciding,
that some manual intervention would be involved to enter the data on which
the chart is based, the program itself would nonetheless generate the chart
automatically based on that data. That Appellant's claim 21 does not specify
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how the claim chart is generated, apart from merely lacking manual
intervention, only underscores the breadth of this limitation and its high
level of generality.
Nevertheless, even if generating the recited claim chart using a
spreadsheet program, such as Microsoft Excel, required some manual
intervention (which it does not), it is well settled that merely replacing
manual activity with automatic means to accomplish the same result is an
obvious improvement. See In re Venner, 262 F.2d 91, 95 (CCPA 1958).
And even if some manual steps were required to generate a claim chart via
this technique, that is not dispositive here, for the term "without manual
intervention" does not preclude at least some manual steps, so long as other
steps are automatic. See CollegeNet, Inc. v. Apply Yourself, Inc., 418 F.3d
1225, 1235 (Fed. Cir. 2005). Nor has Appellant shown that performing
these functions automatically in lieu of at least some manual interaction
would have been uniquely challenging or otherwise beyond the level of
ordinarily skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1161---62 (Fed. Cir. 2007) ("Applying modem electronics to
older mechanical devices has been commonplace in recent years."). To the
extent Appellant contends otherwise, there is no persuasive evidence on this
record to substantiate such a contention. So even assuming, without
deciding, that generating claim charts involved at least some manual
intervention, such a fact is not dispositive here, particularly in view of
modem electronic updates to older manual techniques that are consistent
with similar electronic updates noted by the court in Leapfrog.
For the foregoing reasons, then, claim 21 would have obvious over
Rivette '679 alone. We reach the same conclusion regarding independent
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claims 29 and 3 7 that recite commensurate limitations. Although we decline
to reject all claims here, no inference should be drawn from our declining to
exercise our discretion in that regard. See MPEP § 1213.02 ("Since the
exercise of authority under 37 C.F.R. 4I.50(b) is discretionary, no inference
should be drawn from a failure to exercise that discretion."). Rather, we
merely leave the patentability determination of the remaining claims to the
Examiner.
CONCLUSION
The Examiner did not err in rejecting claims 21--47 under§ 101, but
erred in rejecting those claims under§ 103.
We newly reject claims 21, 29, and 37 under§ 103.
DECISION
We affirm the Examiner's decision to reject claims 21--47. Because
the rejection of each appealed claim is affirmed on at least one of the
grounds specified in the Office Action from which the appeal was taken, the
Examiner's decision to reject claims 21--47 is affirmed. See 37 C.F.R.
§ 4I.50(a)(l).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
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two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED
37 C.F.R. § 4I.50(b)
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