Ex Parte RawalDownload PDFPatent Trial and Appeal BoardMar 14, 201713686686 (P.T.A.B. Mar. 14, 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. 13/686,686 11/27/2012 SANDEEP RAWAL 27GG-171108 5989 30764 7590 03/16/2017 SHEPPARD, MULLIN, RICHTER & HAMPTON LLP 12275 EL CAMINO REAL, SUITE 200 SAN DIEGO, CA 92130 EXAMINER SULTANA, NARGIS ART UNIT PAPER NUMBER 2162 NOTIFICATION DATE DELIVERY MODE 03/16/2017 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@ SHEPPARDMULLIN.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HAZELTREE FUND SERVICES Appeal 2016-003979 Application 13/686,686 Technology Center 2100 Before KALYAN K. DESHPANDE, JOSEPH P. LENTIVECH, and KARA L. SZPONDOWSKI, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE1 Appellants seek review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1—5, 7—17, and 19—25.2 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE and enter a new ground of rejection pursuant to 37 C.F.R. § 42.50(b). 1 Our Decision makes reference to Appellants’ Appeal Brief (“Br.,” filed May 26, 2015), and the Examiner’s Answer (“Ans.,” mailed Nov. 25, 2015) and Final Office Action (“Final Act.,” mailed Dec. 11, 2014). 2 Claims 6 and 18 were cancelled previously. Appeal 2016-003979 Application 13/686,686 INVENTION Appellants’ invention is directed to a method of assisting a user in populating or completing forms of various types such as financial, business, government, application, and general disclosure forms. Spec. 13. An understanding of the invention can be derived from a reading of exemplary claim 1. 1. A method for storing and validating forms comprising: receiving, at a computer system, a predefined form comprising a hierarchy of sections, a section of the hierarchy of sections comprising a set of data elements, and a data element of the set of data elements comprising a field of the predefined form and being associated with data element metadata; storing a first data table entry in a first data table corresponding to the data element, the first data table entry comprising a section identification (ID) identifying the section and associating the data element with the section; and storing a second data table entry in a second data table corresponding to the data element, the second data table entry comprising the data element metadata and a link to the first data table entry, the data element metadata including at least a calculation for determining a data element value as required in the predefined form for populating an output form having substantially the same visual appearance of the predefined form. REJECTION Claims 1—5, 7—17, and 19-25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Carr, Gorelik, and Yang. Final Act. 2—9. REFERENCES Carr et al. Gorelik Yang US 2006/0101051 Al May 11, 2006 US 2013/0024430 Al Jan. 24, 2013 US 8,407,188 B1 Mar. 26, 2013 2 Appeal 2016-003979 Application 13/686,686 ISSUE The issue of whether the Examiner erred in rejecting claims 1—5, 7—17, and 19-25 under 35 U.S.C. § 103(a) as unpatentable over Carr, Gorelik, and Yang turns on whether the combination of Carr, Gorelik, and Yang teaches “receiving ... a predefined form.” ANALYSIS3 In the Final Action, the Examiner finds that Carr’s process to create a data capture definition file teaches claim 1 ’s recitation of “receiving, at a computer system, a predefined form comprising a hierarchy of sections.” Final Act. 3 (citing Carr || 112, 143, Fig. 3); see Carr || 108—111. The Examiner finds Yang teaches the claimed predefined form. Final Act. 5 (citing Yang col. 2,11. 15—22). Carr’s form is created by a user architect who “specifies his or her intent.. .for the contents and hierarchical structure of the form. The contents and structure comprise a definition of the data items to be collected in execution of the form.” Carr 1109. In the Answer, the Examiner explains that creating or maintaining a form at a computer 3 Appellants argue that the Examiner did not adequately respond to the arguments set forth by Appellants in their Response and Amendment dated July 10, 2014. Br. 8—9. Accordingly, Appellants’ argument is tantamount to a request to withdraw the finality of the office action. The finality of an office action is a petitionable matter that is not appealable to the Board. Accordingly, we will not consider this matter. See 37 C.F.R. § 1.181; see also Ex Parte Frye, 94 USPQ2d 1072, 1077—78 (BPAI 2010) (precedential). 3 Appeal 2016-003979 Application 13/686,686 system necessarily teaches the receiving of the form at a computer system. Ans. 3. Appellants argue that Carr and Yang fail to teach “receiving, at a computer system, a predefined form comprising a hierarchy of sections,” as recited by claim 1 and similarly recited by claims 13 and 25. Br. 9-11. Appellants specifically argue that Carr does not receive a predefined form, but rather allows a form to be built. Id. Likewise, Appellants argue Yang “appears to be directed to a system and method of creating a form, such that the form can be presented.” App. Br. 11. We agree with Appellants. Carr teaches a user architect who specifies individual elements of the hierarchy of sections of a form to allow the computer system to build the form. Carr Tflf112, 143, Fig. 3. Yang similarly teaches data form management. Yang col. 2,11. 15—22. We agree with Appellants that the building of a form is different from “receiving ... a predefined form.” Accordingly, we do not sustain the Examiner’s rejection of claims 1—5, 7—17, and 19—25. This issue is dispositive with respect to the rejection of these claims under 35 U.S.C. § 103 and, therefore, we need not reach the remaining arguments presented by Appellants. NEW GROUND OF REJECTION Claims 1—5, 7—17, and 19-25 are newly rejected under 35 U.S.C. § 101 as reciting patent ineligible subject matter. The Supreme Court has set forth a two-step analysis for distinguishing patents that claim subject matter which is judicially-excepted from patent eligibility under § 101. Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014). Beginning with step one, “we determine whether the claims at issue are directed to one of those patent-ineligible concepts,” 4 Appeal 2016-003979 Application 13/686,686 such as an abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012)). Claim 1 recites a method of storing a form by “receiving ... a predefined form comprising a hierarchy of sections . . . comprising a set of data elements . . . storing a first data table entry in a first data table corresponding to the data element. . . storing a second data table entry in a second data table corresponding to the data element, the second data table entry comprising the data element metadata . . . the data element metadata ... for populating an output form having substantially the same visual appearance of the predefined form.” In the other words, the subject matter in independent claim 1 is directed to receiving a predefined form, recognizing data fields within the predefined form, generating a substantially similar form, and populating the data fields. See also Spec. 11 (“The present invention(s) generally relate to . . . populating or completing forms.”); Spec. 13 (“According to various embodiments, systems and methods for computer assisted form population are provided.”); Spec. 115 (“Various embodiments provide for systems and methods relating to storage and population of forms . . . .”). We determine that the subject matter independent claim 1 is “directed to” bears considerable to the abstract idea identified in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1345 (Fed. Cir. 2014). The claims in Content Extraction were directed to “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.” See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1345 (Fed. Cir. 2014). Independent claim 1, however, recites the additional 5 Appeal 2016-003979 Application 13/686,686 functionality for “populating an output form having substantially the same visual appearance of the predefined form.” We find, however, that such a practice is capable of being performed manually, and that generating a form and populating the data fields automatically is no more than the automation of the typically human process of filling out a predefined form. Accordingly, we determine that any difference between what independent claim 1 is directed to and the abstract idea identified in Content Extraction is substantively immaterial for the purposes of determining subject matter eligibility. Independent claim 7 recites similar subject matter without reciting populating an output form having substantially the same visual appearance, while independent 13 recites substantially similar subject matter to that of claim 1. All claims which depend upon claims 1, 7 and 13 merely further define the structure and content of the claimed data tables. Accordingly, we conclude that claims 1—5, 7—17, and 19—25 are directed to a patent-ineligible abstract idea. If the claims are patent-ineligible under prong one of Alice, step two of the analysis requires a search for an “inventive concept” by considering “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 (citing Mayo, 132 S. Ct. at 1289). Considered as an ordered combination, we see nothing in the subject matter claimed that transforms the identified abstract idea into an inventive concept. The additional elements beyond the identified abstract idea recited by the claims are directed to the structure and content of data tables that are used by a generic computer system to implement the abstract idea. Storing data in tables for use in conventional data processing is insufficient to 6 Appeal 2016-003979 Application 13/686,686 transform the abstract idea into patent eligible subject matter, because our precedent requires more than “well-understood, routine, conventional activities]” provided by the claimed data tables. Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294). Hence, as an ordered combination, the claims simply recite using a conventional computer to perform the aforementioned steps, which amounts to nothing more than a generic computer implementation of the traditional human implemented steps of filling out a form. Therefore, we enter a new ground of rejection of claims 1—5, 7—17, and 19-25 under 35 U.S.C. § 101. CONCLUSION The Examiner erred in rejecting claims 1—5, 7—17, and 19-25 under 35 U.S.C. § 103(a) as unpatentable over Carr, Gorelik, and Yang. We ENTER A NEW GROUND OF REJECTION for claims 1-5, 7-17, and 19-25 under 35 U.S.C. § 101. DECISION We reverse the rejections of claims 1—5, 7—17, and 19-25. A new ground of rejection is entered 37 C.F.R. § 41.50(b). We newly reject claims 1—5, 7—17, and 19-25 under 35 U.S.C. § 101 as being directed towards patent ineligible subject matter, as designated above. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50 (b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise 7 Appeal 2016-003979 Application 13/686,686 one of the following 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 proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2010). REVERSED 37 C.F.R. $ 41.50(b) 8 Copy with citationCopy as parenthetical citation