Ex Parte Rawal

Patent Trial and Appeal Board

Mar 14, 2017

13686686 (P.T.A.B. Mar. 14, 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.
13/686,686 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
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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).
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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,”
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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
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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
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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
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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)
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