Ex Parte Nidiffer et alDownload PDFPatent Trial and Appeal BoardMay 4, 201713289269 (P.T.A.B. May. 4, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/289,269 11/04/2011 William Monroe Nidiffer SPIR-P0001US-NP 7366 134449 7590 05/08/2017 Grable Martin Fulton PLLC 2709 Dublin Road Plano, TX 75094 EXAMINER MACILWINEN, JOHN MOORE JAIN ART UNIT PAPER NUMBER 2442 NOTIFICATION DATE DELIVERY MODE 05/08/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing @ gchub .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM MONROE NIDIFFER and ERIC MONROE NIDIFFER Appeal 2016-005231 Application 13/289,269 Technology Center 2400 Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and SCOTT B. HOWARD, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—8 and 16—28. Claims 9-15 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2016-005231 Application 13/289,269 The Invention The disclosed and claimed invention on appeal “relates generally to positive youth and family development and, more particularly, to network- based methods and systems for coordinating youth and family services referrals.” (Spec. 12). Independent Claim 1 1. A computer-implemented method including executing instructions stored on a computer-readable medium, the method comprising: receiving, from a referring entity, identification information of a subject including an at-risk youth, wherein the identification information includes a case number associated with the subject; receiving, from the referring entity, profile information about the subject, wherein the profile information includes at least one risk factor; identifying in real-time, in response to the received identification information and profile information, at least one community service organization that offers services suitable for the subject and has sufficient capacity; transmitting, in real-time, information about the identified at least one community service organization to the referring entity, wherein the information about the at least one community service organization includes information on offered services and available appointment times for a scheduled visit by the subject to the at least one community service organization for the offered services; receiving, in real-time from the referring entity, a referral of the subject to the identified at least one community service organization, and an appointment time for the subject to visit the at least one community service organization for the offered services; 2 Appeal 2016-005231 Application 13/289,269 electronically transmit, in real-time to the at least one community service organization, the referral, the subject identification information and profile information, and the appointment time for the subject to visit the at least one community service organization for the offered services; providing, in real-time, a consent document to the referring entity required by at least one of local and federal laws and regulations, and privacy policies for acquiring a required consent signature; transmitting a request to the at least one community service organization for an indication of whether the subject visited the at least one community service organization during the scheduled appointment time; receiving, in real-time, a response to the request for an indication of whether the subject visited the at least one community service organization during the scheduled appointment time; identifying one or more users associated with the subject; and transmitting an alert to the one or more users, the alert including an activity report about the subject, the activity report including the indication of whether the subject visited the at least one community service organization during the scheduled appointment time. Rejection Claims 1—8 and 16—28 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 3 Appeal 2016-005231 Application 13/289,269 ANALYSIS We have considered all of Appellants’ arguments and any evidence presented. We disagree with Appellants’ arguments, and we adopt as our own: (1) the findings and legal conclusions set forth by the Examiner in the Final Office Action from which this appeal is taken (Final Act. 5—6), and (2) the findings, legal conclusions, and explanations set forth in the Answer in response to Appellants’ arguments. (Ans. 2—16). However, we highlight and address specific findings and arguments for emphasis in our analysis below. Rejection under § 101 of Claims 1—8 and 16—28 Issue: Under § 101, did the Examiner err in concluding that claims 1—8 and 16—28 are directed to non-statutory subject matter? Although Appellants advance nominally separate arguments for each claim under a separate heading (App. Br. 19-72), we find each argument follows essentially the same pattern. In particular, Appellants: (1) recite the claim language, (2) assert each claim is not directed to an abstract idea (because the claimed invention deals with real people and real problems), and (3) assert each claim is not similar to those claims found to encompass abstract ideas by our post-Alice reviewing court, citing various Federal Circuit cases in support. Assuming arguendo (without conceding) that the claims on appeal are directed to an abstract idea, Appellants urge in the alternative that claims 1—8 and 16—28 encompass an inventive concept that is significantly more than just an abstract idea. (Id. ). 4 Appeal 2016-005231 Application 13/289,269 Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc, for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal quotation marks omitted)). 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.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). Alice — Step One The first step in our analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” such as an abstract idea. Id. If the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). 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 5 Appeal 2016-005231 Application 13/289,269 upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). Turning to the first Alice step in our analysis, we have reviewed all of Appellants’ arguments and find them unpersuasive. (App. Br. 18—72; Reply Br. 2—5). We conclude each of the claims before us on appeal merely implements mental steps and decisions of the type typically performed by members of law enforcement, judges, community organizations, and social case workers, using a computer. Regarding the claimed steps or functions performed by a computer, we note the Supreme Court in Alice cautions that merely limiting the use of an abstract idea “to a particular technological environment” or implementing the abstract idea on a “wholly generic computer” is not sufficient as an additional feature to provide “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 134 S. Ct. at 2358 (internal quotation marks and citations omitted). Nevertheless, Appellants urge: “[r]eal-time performance is not an inherent or inevitable outcome of a web-based computer system but must be designed and enabled to do so.” (App. Br. 20). However, we find each of Appellants’ claims on appeal is distinguishable from the type of claim considered by the court in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). We conclude none of Appellants’ claims is “directed to an improvement in the functioning of a computer,” as was found by the court regarding the subject claim in Enfish, 822 F.3d at 1338. 6 Appeal 2016-005231 Application 13/289,269 Regarding the accelerated performance argued by Appellants (e.g., “real-time” performance — claim 1; App. Br. 20), our reviewing court provides applicable guidance: While the claimed system and method certainly purport to accelerate the process of analyzing audit log data, the speed increase comes from the capabilities of a general-purpose computer, rather than the patented method itself. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 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.”). FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (emphasis added). Applying this reasoning to Appellants’ claims on appeal, we similarly find any purported “real-time’ speed increase comes from the capabilities of a general-purpose computer, rather than from Appellants’ claimed steps or functions. Moreover, we agree with the Examiner’s finding that “[t]he claimed computer components are recited in the claims and described in the accompanying specification at a high level of generality, and each component merely performs basic computer functions (such as ‘identifying’, ‘transmitting’, ‘receiving’ and ‘providing’).” (Ans. 3) (emphasis omitted). As found by the Examiner: “Appellants’] claims do not recite or otherwise attempt to incorporate any concepts tied to the transformation of a generic computer into the implicitly argued specialized computer, and no computer operations have been identified that go beyond basic operations (the basic and generically claimed operations including ‘identifying’, ‘transmitting’, ‘receiving’ and ‘providing').” (Ans. 5) (emphasis omitted). 7 Appeal 2016-005231 Application 13/289,269 Nevertheless, Appellants repeatedly urge that “[bjecause courts have not defined what is an ‘abstract idea,’ we are left with examples from case law to make this determination.” (App. Br. 19, 39, 43, 46, 48, 51, 53, 60, 63, 65, 68, 70). We have reviewed the cases cited in support in Appellants’ Briefs. Turning to an intervening case not cited in Appellants’ Briefs, we find the claims considered by the court in Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) are analogous to Appellants’ claims, to the extent that Appellants’ claims similarly collect information, analyze it in some fashion (e.g., “identifying”), and present or communicate the result. The court Electric Power guides: “we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” 830 F.3d at 1354 (internal citations omitted). Applying this reasoning here, we conclude a person would be capable of performing Appellants’ claimed steps or functions as mental steps, or with the aid of pen and paper. As pertaining to all claims on appeal, we find a person would be fully capable of performing the mental steps of: (1) receiving information regarding at-risk youths, (2) identifying (deciding) which community service organization would be best suited for the subject at-risk youth, (3) conveying or communicating such identification and profile information to a referring entity, (4) arranging and scheduling appointments with the selected community service organization in a manner fully complaint with applicable laws, regulations, and privacy policies, and (5) monitoring the at-risk youth for compliance with the scheduled appointments. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 8 Appeal 2016-005231 Application 13/289,269 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson’’ ). “[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.” (Id. at 1373).1 For at least these reasons, we conclude all claims 1—8 and 16—28 on appeal are directed to an abstract idea. Alice — Step Two Proceeding to step two of the Alice test articulated by the Supreme Court, we further “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297). 1 See also CyberSource, 654 F.3d at 1372: It is clear that unpatentable mental processes are the subject matter of claim 3. All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper. Claim 3 does not limit its scope to any particular fraud detection algorithm, and no algorithms are disclosed in the T54 patent’s specification. Rather, the broad scope of claim 3 extends to essentially any method of detecting credit card fraud based on information relating past transactions to a particular “Internet address,” even methods that can be performed in the human mind. 9 Appeal 2016-005231 Application 13/289,269 Here, we conclude the nature of claims 1—8 and 16—28 is not transformed into a patent-eligible application of the abstract idea presented, because these claims do nothing more than simply instruct the practitioner to implement an abstract idea using a generic computer. In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014), the subject claim was held patent-eligible because it encompassed “an inventive concept” for resolving a “particular Internet- centric problem.” In contrast, we find Appellants’ “web-based computer- implemented method for real-time coordination of youth and family services referrals” (claim 23) does not provide a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR, 773 F.3d at 1257. Because we find all claims on appeal merely use a generic computer or processor as a tool which is used in the way a computer normally functions, we conclude claims 1—8 and 16—28 fail to impart any discernible improvement upon the computer or processor, nor do Appellants’ claims solve “a challenge particular to the Internet” as considered by the court in DDR, 773 F.3d at 1256-57. Thus, we conclude none of Appellants’ claims are like the claim held patent-eligible by the court in DDR, in which the claimed invention was directed to the “challenge of retaining control over the attention of the customer in the context of the Internet,” such that: Instead of the computer network operating in its normal, expected manner by sending the website visitor to the third-party website that appears to be connected with the clicked advertisement, the claimed system generates and directs the visitor to the above-described hybrid web page that presents 10 Appeal 2016-005231 Application 13/289,269 product information from the third-party and visual “look and feel” elements from the host website. DDR, 773 F.3d at 1258-59. Regarding step two of the Alice test, we find nothing in claims 1—8 and 16—28 that adds anything “significantly more” to transform the abstract concept of collecting, storing, and analyzing information into a patent- eligible application. See Alice, 134 S. Ct. at 2357. Appellants do not argue that each of the steps or functions recited in claims 1—8 and 16—28 is individually inventive. None of Appellants’ arguments persuasively show that some inventive concept arises from the ordered combination of these steps or functions, which, even if true, would be unpersuasive given that we conclude Appellants’ claims are directed to ordinary steps (or functions) in data analysis, and are recited in the ordinary order, i.e., following a general pattern of collecting, analyzing, and communicating the results of the analyzed information. The “machine-or-transformation ” (MoT) test As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715—16 (Fed. Cir. 2014), the “machine-or- transformation” (MoT) test, as outlined in In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), can provide a “useful clue” in the second step of the Alice framework. Under Bilski’s MoT test, a claimed process is patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus; or (2) the process transforms a particular article into a different state or thing. Bilski, 545 F.3d at 954 (citing Gottschalk, 409 U.S. at 70). 11 Appeal 2016-005231 Application 13/289,269 Contrary to Appellants’ arguments (App. Br. 18—72; Reply Br. 2—5), we find Appellants’ “computer-implemented method” (claim 1), and “computer system” (claim 16), and “web-based computer-implemented method” (claim 23) are neither sufficiently tied to a particular machine or apparatus, nor involved in any type of transformation of any particular article.2 In contrast to DDR Holdings and Enfish, in which the Federal Circuit held that claims directed to specific improvements in Internet or computer capabilities are patent-eligible subject matter, Appellants’ claims are neither rooted in computer technology, nor do they seek to improve any type of computer capabilities, such as Enfish’s “self-referential table for a computer database.” 822 F.3d at 1336. Instead, we conclude Appellants’ claims simply recite an abstract concept of collecting, analyzing, and communicating the results of the analyzed information. “[Mjerely selecting information, by content or source, for collection [and] analysis . . . does nothing significant to differentiate a process from ordinary mental processes.” Elec. Power, 830 F.3d at 1355. Receiving and analyzing (or identifying data), by itself, does not transform an otherwise- abstract process or system of information collection and analysis. See id. 2 See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344^45 (Fed. Cir. 2013) (claims reciting “generalized software components arranged to implement an abstract concept [of generating insurance-policy-related tasks based on rules to be completed upon the occurrence of an event] on a computer” not patent eligible); and Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir. 2012) (“[s]imply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible” (internal citation omitted)). 12 Appeal 2016-005231 Application 13/289,269 Like the claims at issue in Electric Power, we find Appellants’ claims 1—8 and 16—28 do not invoke “any assertedly inventive programing” or an “arguably inventive set of components or methods.” Id. Here, we find the invocations of conventional, off-the-shelf computer components are insufficient to pass as an inventive set of components. As such, our review of the claims, fully considering each claim’s elements (both individually and as an ordered combination), fails to show that the nature of any of Appellants’ claims 1—8 and 16—28 is transformed into patent-eligible subject matter. Because we conclude each of Appellants’ claims 1—8 and 16—28 are directed to a patent-ineligible abstract concept, and do not recite something “significantly more” under the second step of the Alice analysis, we sustain the Examiner’s rejection of these claims as being directed to non-statutory subject matter in light of Alice and its progeny. Conclusion On the record before us, Appellants have not persuaded us the Examiner erred in rejecting claims 1—8 and 16—28 under 35U.S.C. § 101 as being directed to non-statutory subject matter. DECISION We affirm the Examiner’s decision rejecting claims 1—8 and 16—28 under § 101. 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(f). AFFIRMED 13 Copy with citationCopy as parenthetical citation