Ex Parte RAGNO et al

Patent Trials and Appeals BoardApr 18, 2019

12433056 - (D) (P.T.A.B. Apr. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/433,056 04/30/2009 John RAGNO 4372 7590 04/22/2019 ARENT FOX LLP 1717 K Street, NW WASHINGTON, DC 20006-5344 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. 029089-00010 8311 EXAMINER WHITAKER, ANDREW B ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 04/22/2019 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): patentdocket@arentfox.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN RAGNO and HUGH HALL Appeal 2017-011361 Application 12/433,056 Technology Center 3600 Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and JOHN P. PINKERTON, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-2, 6-13, 18-25, 27-31, and 33-35. Claims 3-5, 14--17, 26, and 32 were cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 According to Appellants, the real party in interest is VitalClick LLC. App. Br. 2. Appeal 2017-011361 Application 12/433,056 STATEMENT OF THE CASE Introduction Appellants' invention relates to "an automated emergency response method and system." Spec. ,r 2. Exemplary claim 1 under appeal reads as follows: 1. A computer-implemented method for providing one or more response protocols from a protocol establishing entity to at least one recipient computer over a network, the recipient computer comprising a processor, the method comprising: determining the occurrence of an emergency via the at least one recipient; accessing, via a web-based application on the recipient computer over the network, at least one response protocol corresponding to the emergency from a database at the protocol establishing entity, wherein the at least one response protocol corresponds to a contemporaneous version of the response protocol stored in the database at the protocol establishing entity; providing, via the processor, the contemporaneous version of the response protocol over the network to the at least one recipient, wherein the contemporaneous version of the response protocol includes a set of instructions for the at least one recipient to follow when responding to the emergency; updating, via the network, the contemporaneous version of the response protocol stored in the database in near real time based on information received regarding the emergency such that the database stores at least one updated response protocol; and providing, via the network, the at least one updated response protocol from the database to at least one other recipient via a web-based application on a second computer, the at least one updated response protocol including an updated set of instructions. 2 Appeal 2017-011361 Application 12/433,056 References and Rejections Claims 1-2, 6-13, 18-25, 27-31, and 33-35 stand rejected under pre- AIA 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. See Ans. 2. Claims 1, 13, 25, and 30 stand rejected underpre-AIA 35 U.S.C. Â§ 112, second paragraph, as being indefinite. See Ans. 2. Claims 1-2, 6-13, 18-25, 27-31, and 33-35 stand rejected under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. See Ans. 2. Claims 1-2, 6-9, 13, 18-21, 25, 27-28, 30-31, and 33-34 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peterson et al. (US 2002/0084900 Al; published July 4, 2002) ("Peterson") and Angle et al. (US 2007/0016458 Al; published Jan. 18, 2007) ("Angle"). See Ans. 2. Claims 10-12, 22-24, 29, and 35 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Peterson, Angle, and Alexander et al. (US 7,596,608 B2; issued Sept. 29, 2009) ("Alexander"). See Ans. 2. PRINCIPLES OF LAW Written Description The Federal Circuit has consistently held that 35 U.S.C. Â§ 112, first paragraph contains a written description requirement separate from enablement. See Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d. 1336, 1351 (Fed. Cir. 2010) (en bane). To satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession 3 Appeal 2017-011361 Application 12/433,056 of the invention, and that the invention, in that context is whatever is now claimed. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Indefiniteness "[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certain, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). Patent-Eligible Subject Matter The Supreme Court has set forth "a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 573 U.S. 208,217 (2014) (citing Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). According to this framework, a determination is made to consider whether the claims at issue are directed to one of those concepts (i.e., laws of nature, natural phenomena, and abstract ideas). See id. If so, a further determination must be made to 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. Id. The United States Patent and Trademark Office (USPTO) recently published revised guidance on the application of 35 U.S.C. Â§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, Federal Register Vol. 84, No. 4, 50-57 ("Revised Guidance"). Under the Revised Guidance, we first look to whether the 4 Appeal 2017-011361 Application 12/433,056 claim recites: any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as fundamental economic practices, or mental processes); and additional elements that integrate the judicial exception into a practical application. See Revised Guidance at 54--55. Only if a claim recites a judicial exception and does not integrate that exception into a practical application, do we then look to whether the claim adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field. See Revised Guidance at 56. "The question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact." Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). Obviousness The mere existence of differences between the prior art and the claim does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219, 230 (1976). Instead, the relevant question is "whether the difference between the prior art and the subject matter in question is a [difference] sufficient to render the claimed subject matter unobvious to one skilled in the applicable art." Dann, 425 U.S. at 228 (internal quotations and citations omitted). Indeed, the Supreme Court made clear that when considering obviousness, "the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). 5 Appeal 2017-011361 Application 12/433,056 ANALYSIS Rejection Under 35 USCÂ§ 112, First Paragraph The Examiner found Appellants' Specification fails to provide sufficient written description support for the element "updating, via the network, the contemporaneous version of the response protocol stored in the database in near real time based on information received regarding the emergency such that the database stores at least one updated response protocol," as recited in independent claim 1, and similarly recited in independent claims 13, 25, and 30. Final Act. 8-9; see Ans. 2--4. Appellants contend the Specification does adequately disclose the aforementioned element. See App. Br. 15. More specifically, Appellants argue paragraphs 25 and 26 of the Specification provide written description support for the aforementioned element because paragraph 25 discloses "emergency protocols 120 can be updated timely and consistently with the requirements of the NHTSA," and paragraph 26 discloses "emergency protocols 120 may be updated ... in response to modifications in national standards with respect to specific emergencies." See App. Br. 14 (citing Spec. ,r,r 25-26). Appellants further argue paragraph 34 of the Specification also provides written description support for the aforementioned element because paragraph 34 discloses "the response protocols may be updated timely and consistently with the requirements of the NHTSA, or with the latest developments in emergency response to the various stages of a pandemic influenza," and "updating the database ... can be accomplished almost instantaneously, so that the response protocols may be updated as soon as any development occurs." See App. Br. 14--15 (citing Spec. ,r 34). 6 Appeal 2017-011361 Application 12/433,056 We are persuaded by Appellants' contention that paragraphs 25, 26, and 34 of Appellants' Specification provide adequate written description support for the aforementioned element. The Examiner has not sufficiently explained why the cited paragraphs do not provide sufficient written description support for the aforementioned element. See e.g., Ans. 2--4. Further, we understand the Examiner's position as alleging that Appellants' disclosure does not adequately describe how Appellants' invention technologically performs the claimed "updating." See Final Act. 8-9 ("the applicant has an obligation to disclose the technologic knowledge upon which the patent is based," "[t]here is no further discussion, in the drawings, the claims, or the specification, describing the particular technologic knowledge upon which the claimed invention is based."). In other words, these findings appear to take issue with whether Appellants' disclosure adequately enables the aforementioned element, and, thus, appear to conflate the written description requirement of 35 U.S.C. Â§ 112 with the enablement requirement. Regarding enablement, the Examiner has not provided an analysis of the underlying factual inquiries that is required for a prima facie rejection under the enablement requirement of 35 U.S.C. Â§ 112. See In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988) (holding that whether undue experimentation is required is a "conclusion reached by weighing many factual considerations ... includ[ing] (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the 7 Appeal 2017-011361 Application 12/433,056 claims."). For these reasons, the Examiner's findings do not adequately support the conclusion that claims 1, 13, 25, and 30 recite subject matter that is not supported by Appellants' Specification. Based on the record before us, we are persuaded the Examiner erred in finding claims 1-2, 6-13, 18-25, 27-31, and 33-35 fail to comply with the written description requirement. Accordingly, we do not sustain the rejection of claims 1-2, 6-13, 18-25, 27-31, and 33-35 under 35 U.S.C. Â§ 112, first paragraph. Rejection Under 35 US. C. Â§ 112, Second Paragraph The Examiner found the element "updating, via the network, the contemporaneous version of the response protocol stored in the database in near real time based on information received regarding the emergency such that the database stores at least one updated response protocol," as recited in independent claim 1, and similarly recited in independent claims 13, 25, and 30, is indefinite. See Final Act. 9; see Ans. 4. More specifically, the Examiner found the claim recites both "at least one response protocol" and "a contemporaneous version of the response protocol," and it is unclear as to which protocol is updated. See Final Act. 9. Appellants contend claim 1 clearly indicates that it is "the contemporaneous version of the response protocol" that is being updated. See App. Br. 16. Appellants' contention is persuasive. More specifically, we agree with Appellants that claim 1 recites that "the contemporaneous version of the response protocol" is updated. Further, claim 1 recites "wherein the at least one response protocol corresponds to a contemporaneous version of the response protocol," and thus, makes clear that the "at least one response protocol" is also the "contemporaneous version of the response protocol." 8 Appeal 2017-011361 Application 12/433,056 Therefore, we are persuaded the Examiner erred in finding claims 1, 13, 25, and 30 are indefinite. Accordingly, we do not sustain the rejection of claims 1, 13, 25, and 30 under 35 U.S.C. Â§ 112, second paragraph. Rejection Under 35 US.C. Â§ 101 Independent claim 1 recites a method, independent claims 13 and 25 recite a system, and independent claim 30 recites a non-transitory computer usable medium. Thus, independent claims 1, 13, 25, and 30 are, therefore, directed to one of the four statutory categories of patentability enumerated by 35 U.S.C. Â§ 101 (process, machine, manufacture, or composition of matter). Applying the first part of the Alice analysis, the Examiner finds the claims are directed to a method of organizing human activity, an idea of itself, and a mental process, all of which have previously been identified by courts as abstract ideas. See Final Act. 10-11; see also Ans. 4--5. Applying the second part of the Alice analysis, the Examiner finds the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea because the additional elements, other than the abstract idea, are simply generic computer structure serving to perform generic computer functions. See Final Act. 11; see also Ans. 5---6. 2 Beginning with step 2A, Prong 1, we must determine "whether the claims at issue are directed to one of those patent-ineligible concepts," including the abstract ideas enumerated in the Revised Guidance. See also Alice, 573 U.S. at 217. Appellants argue the Examiner erred by incorrectly 2 Although the Examiner's findings are explicitly directed to independent claims 1, 13, 25, and 30, the Examiner further finds dependent claims 2, 6- 12, 18-24, 27-29, 31, and 33-35 are also patent-ineligible for the same reasons independent claims 1, 13, 25, and 30 are patent-ineligible. See Final Act. 12. 9 Appeal 2017-011361 Application 12/433,056 applying the Alice decision. See App. Br. 18. More specifically, Appellants argue the Examiner is incorrect in asserting that the Alice decision held that "receiving, process, and storing data" is a method of organizing human activity. See id. Instead, as argued by Appellants, the court in Alice identified the abstract idea as "intermediated settlement." See id. As argued by Appellants, the present claims are not directed to intermediated settlement. See Reply Br. 1. 3 Thus, according to Appellants, the Examiner erred in finding that the claims were directed to an abstract idea. See App. Br. 20. As found by the Examiner, claim 1 recites "determining the occurrence of an emergency via the at least one recipient," "accessing ... at least one response protocol corresponding to the emergency from a database at the protocol establishing entity, wherein the at least one response protocol corresponds to a contemporaneous version of the response protocol stored in the database at the protocol establishing entity," "providing ... the contemporaneous version of the response protocol ... to the at least one recipient, wherein the contemporaneous version of the response protocol includes a set of instructions for the at least one recipient to follow when responding to the emergency," "updating ... the contemporaneous version of the response protocol stored in the database in near real time based on information received regarding the emergency such that the database stores at least one updated response protocol," and "providing ... the at least one updated response protocol from the database to at least one other recipient 3 Appellants' Reply Brief does not include page numbers. The citation is to the first page of Appellants' Reply Brief that includes substantive arguments. 10 Appeal 2017-011361 Application 12/433,056 ... the at least one updated response protocol including an updated set of instructions." See Final Act. 10-11. As further found by the Examiner, claims 13, 25, and 30 recite similar elements. See Final Act. 10. Under the broadest reasonable interpretation, claim 1 is directed to: (1) determining an occurrence of an emergency via a recipient; (2) accessing a contemporaneous version of a set of instructions for the recipient to follow when responding to the emergency; (3) providing the contemporaneous version of the set of instructions to the recipient; ( 4) updating the contemporaneous version of the set of instructions in near real time based on information received regarding the emergency; and ( 5) providing the updated set of instructions to another recipient. Further, also under the broadest reasonable interpretation, claims 13, 25, and 30 are directed to similar subject matter. The aforementioned steps represent a method for providing a set of emergency response instructions to recipients that could be performed in the human mind or using pen and paper, and thus, are mental steps that are part of a mental process. The Revised Guidance identifies "mental process" as an enumerated category of abstract ideas. See Revised Guidance 52. Thus, independent claims 1, 13, 25, and 30 (as well as the corresponding dependent claims) recite an abstract idea. In light of the Revised Guidance, Appellants' arguments that the Examiner misapplied Alice are moot, and, thus, are not persuasive of Examiner error. Because we conclude that the claims recite an abstract idea, we turn to step 2A, Prong 2 analysis. As described in the Revised Guidance, we must evaluate "whether the claim as a whole integrates the recited 11 Appeal 2017-011361 Application 12/433,056 [ abstract idea] into a practical application of the [ abstract idea]." 4 Revised Guidance at 54. A claim that integrates an abstract idea into a practical application will apply, rely on, or use the judicial exception 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 id. When the exception is so integrated, then the claims is not directed to an abstract idea. See id. Claim 1 recites that the response protocol is accessed "via a web- based application on [a] recipient computer over [a] network ... from a database." Claim 1 also recites that the response protocol is provided to recipients "via the network," and further recites the response protocol is updated "via the network ... in the database in near real time based on information received regarding [a] emergency." Claims 13, 25, and 30 recite similar elements. Considering claim 1 as a whole, we conclude that these additional elements apply or use the abstract idea in a meaningful way such that the claim is more than a drafting effort designed to monopolize the exception. In particular, the above-mentioned limitations provide a specific improvement over the traditional or known way of providing a set of emergency response instructions to recipients. These limitations impose meaningful limits that integrate the aforementioned abstract idea (i.e., a method for providing a set of emergency response instructions to recipients) into a practical application (i.e., remotely and timely updating response protocols in a database of a protocol establishing entity that is part of a 4 We recognize that some of these considerations may be properly evaluated under Step 2 of Alice (Step 2B of Revised Guidance). Solely for purposes of maintaining consistent treatment within the Office, we evaluate it under Step 1 of Alice (Step 2A of Revised Guidance). See Revised Guidance 54--55. 12 Appeal 2017-011361 Application 12/433,056 network comprising recipient computers), such that independent claims 1, 13, 25, and 30 (as well as the corresponding dependent claims) are not directed to the aforementioned abstract idea. Because we conclude that the claims integrate the abstract idea into a practical application, and thus, are not directed to an abstract idea, we do not need to proceed to the second step of Alice. Therefore, we are persuaded the Examiner erred in finding claims 1-2, 6-13, 18-25, 27-31, and 33-35 recite patent-ineligible subject matter. Accordingly, we do not sustain the rejection of claims 1-2, 6-13, 18-25, 27-31, and 33-35 under 35 U.S.C. Â§ 101. Rejection Under 35 US.C. Â§ 103(a) Appellants contend the combination of cited references fails to teach or suggest "updating, via the network, the contemporaneous version of the response protocol stored in the database in near real time based on information received regarding the emergency such that the database stores at least one updated response protocol," as recited in independent claim 1, and similarly recited in independent claims 13, 25, and 30. See Appeal Br. 21-24. As argued by Appellants, Angle fails to teach the aforementioned element because Angle merely describes that a call-in system is updated, Angle fails to describe how the call-in system is updated, and Angle fails to disclose using a database to store a contemporaneous version of a response protocol that includes a set of instructions for a recipient to follow when responding to an emergency. See App. Br. 22 ( citing Angle ,r 26). Appellants further argue the Examiner's interpretation of the claimed "response protocol" as reading on a list of potentially missing employees disclosed in Angle is unreasonable. See App. Br. 23-24; see also Reply 13 Appeal 2017-011361 Application 12/433,056 Br. 2-3. Appellants also argue, to the extent the Examiner is interpreting the disclosure of Angle to disclose subject matter that is not actually present in Angle, the Examiner's characterization of the reference is improper, as the broadest reasonable interpretation standard of claim interpretation is applied to the claims, not the content of the prior art reference. See App. Br. 23; see also Reply Br. 2. Further, Appellants assert, to the extent the Examiner is interpreting the claimed "response protocol" to include a list of employees, this interpretation is unreasonable as claim 1 further recites "the response protocol includes a set of instructions for the at least one recipient to follow when responding to the emergency." See App. Br. 23-24; see also Reply Br. 3. Appellants further argue the Examiner has not shown that the differences between the teachings of Peterson and Angle, alone or in combination, and the subject matter of claims 1, 13, 25, and 30 are such that the claimed subject matter as a whole would have been obvious, even in light of the predictable use of the disclosed prior art elements. See App. Br. 24. We are not persuaded by Appellants' arguments. Angle discloses a method and system used to account for individuals during or before a crisis situation. See Angle at Abstract. Angle further discloses maintaining (i.e. updating) a list of employees who are missing in relation to a crisis, where the list is stored in a central database. See Angle ,r,r 26-28. Although Appellants argue that Angle fails to teach or suggest the claimed "response protocol," the rejection is not solely based on Angle, but is based on the combination of Peterson and Angle. Further, as found by the Examiner, Peterson discloses an emergency response system that includes an incident specific response generator that receives specific incident data and generates 14 Appeal 2017-011361 Application 12/433,056 emergency instructions (i.e., a response protocol). See Final Act. 12-13 (citing Peterson ,r,r 37-39). As the Supreme Court stated in KSR, "[ t ]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416 (2007). Further, if a technique has been used to improve one device and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. See id. at 417. Based on the reasoning of KSR, we conclude it would have been obvious to one of ordinary skill in the art to modify the emergency system disclosed in Peterson to update the emergency instructions based on received information regarding an emergency in light of Angle's disclosure of updating an employee list based on received information regarding an emergency, as such a modification would improve Peterson's emergency system in the same way as Angle's system is improved. Appellants have not persuasively established that such a modification to Peterson's emergency system would yield anything more than predictable results, or be beyond the skill of a person of ordinary skill in the art. Thus we are not persuaded that the Examiner erred in finding claims 1, 13, 25, and 30 are obvious under 35 U.S.C. Â§ 103(a) in light of the combination of Peterson and Angle. 5 5 We take no position on the Examiner's interpretation of the claimed "response protocol" reading on the list of employees disclosed in Angle (see e.g., Ans. 9-10), as it is not necessary to reach this issue to determine whether the Examiner erred in rejecting the claims under 35 U.S.C. Â§ 103(a), in light of the Examiner's finding that Peterson teaches the claimed "response protocol." See Final Act. 12-13. 15 Appeal 2017-011361 Application 12/433,056 No separate arguments are presented for the dependent claims. See App. Br. 24. Therefore, we are not persuaded that the Examiner erred in finding claims 1-2, 6-13, 18-25, 27-31, and 33-35 unpatentable in light of the cited prior art references. Accordingly, we sustain the rejection of claims 1-2, 6-13, 18-25, 27-31, and 33-35 under 35 U.S.C. Â§ 103(a). DECISION We reverse the Examiner's rejection of claims 1-2, 6-13, 18-25, 27- 31, and 33-35 under 35 U.S.C. Â§ 112, first paragraph. We reverse the Examiner's rejection of claims 1, 13, 25, and 30 under 35 U.S.C. Â§ 112, second paragraph. We reverse the Examiner's rejection of claims 1-2, 6-13, 18-25, 27- 31, and 33-35 under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. We affirm the Examiner's rejection of claims 1-2, 6-13, 18-25, 27- 31, and 33-35 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 16