Ex Parte Nidiffer et al

Patent Trial and Appeal Board

May 4, 2017

13289269 (P.T.A.B. May. 4, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/289,269 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;
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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.
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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. ).
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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
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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.
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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).
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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
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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.
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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
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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).
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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)).
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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
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