Ex Parte SmithDownload PDFPatent Trial and Appeal BoardNov 5, 201814088352 (P.T.A.B. Nov. 5, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/088,352 11/23/2013 55286 7590 11/06/2018 SHARP LABORATORIES OF AMERICA, INC. C/0 LAW OFFICE OF GERALD MALISZEWSKI P.O. BOX 270829 SAN DIEGO, CA 92198-2829 Dana S. Smith 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. SLA3244 1022 EXAMINER HOFFLER, RAHEEM ART UNIT PAPER NUMBER 2155 MAIL DATE DELIVERY MODE 11/06/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANAS. SMITH Appeal2018-005309 Application 14/088,352 Technology Center 2100 Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and MICHAEL J. ENGLE, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-30, which are all of the pending claims. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant indicates the real party in interest is Sharp Laboratories of America, Inc. App. Br. 3. Appeal2018-005309 Application 14/088,352 SUMMARY OF THE DECISION Appellant claims a method and devices for contextually searching on a computer using attributes of a visual relationship between search components entered to direct the priority and ordering of a search inquiry submitted to a conventional search engine. See Spec. 1 :6-11. The Examiner concludes that the claims are directed to patent- ineligible subject matter because the claims "recite[], in part, [the] abstract idea of selecting a first data object, adding a first and second search term annotation to a top and bottom plane image respectively and constructing a search inquiry, and sending the search inquiry to a search engine." We reverse the rejection under 35 U.S.C. § 101 because the Examiner fails to provide sufficient articulated reasoning to support a conclusion that all the specific claim limitations that the Examiner labels as included in the abstract idea are actually an abstract idea. At best, the Examiner has shown that the claims involve an abstract idea, but has not shown the character of any claim as a whole is directed to an abstract idea. Additionally, we reverse the rejection under 35 U.S.C. § 103 because the Examiner fails to provide sufficient articulated reasoning to support a conclusion that the claims are rendered obvious by the cited prior art. 2 Appeal2018-005309 Application 14/088,352 Illustrative Claims Illustrative claims 1 and 15 under appeal read as follows ( emphasis, formatting, and bracketed materials added): 1. A method for formulating a search inquiry using a computer enabled with a sequence of processor executable instructions stored in a non-transitory medium, the method compnsmg: [A.] a computer user interface (UI) accepting commands for selecting a first data object having a top plane image and a bottom plane image; [B.] a computer display displaying the first data object top plane image; [C.] the computer UI accepting commands for adding a first search term annotation to the presentation of the first data object top plane image; [D.] subsequent to adding the first search term annotation, the computer display displaying the first data object bottom plane image; [E.] the computer UI accepting commands for adding a second search term annotation to the presentation of the first data object bottom plane image; [F.] the computer constructing the search inquiry in response to[:] [i.] the first data object top and bottom plane images, [ii.] the first search term annotation, and [iii.] the second search term annotation; and, [ G.] the computer sending the search inquiry to a search engme. 3 Appeal2018-005309 Application 14/088,352 15. A search inquiry natural user interface (NUI) enabled by a computer executing a sequence of processor instructions stored in a non -transitory medium, the NUI compnsmg: [A.] a front page menu providing user interface (UI) mechanisms for: [i.] selecting a first data object having both a top plane image and a bottom plane image; [ii.] displaying the first data object top plane image; [iii.] adding a first search term annotation to the display of the first data object top plane image; [iv.] initiating a search inquiry; [ v.] accepting a flip command; [B.] a flip page menu, presented in response to the flip command[:] [i.] displaying the first data object bottom plane image, and [ii.] providing UI mechanisms for: [a.] adding a second search term annotation to the display of the first data object bottom plane image; [b] initiating a search inquiry; [ c.] accepting an unflip command for returning to the front page menu; and, [C.] wherein the search inquiries are responsive to[:] [i.] the first data object top and bottom plane images, [ii.] the first search term annotation, and [iii.] the second search term annotation. 4 Appeal2018-005309 Application 14/088,352 Keenan et al. Bhola et al. Xin et al. References2 US 2012/0198545 Al US 2013/0031076 Al US 2014/0129990 Al Rejections3 A. Aug. 2, 2012 Jan.31,2013 May 8, 2014 The Examiner rejects claims 1-30 under 35 U.S.C. § 101 because "the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more," i.e., because the subject matter of the claimed invention is patent-ineligible. Ans. 4. As to this rejection, our decision as to the § 101 rejection of claim 1 is determinative as to the § 101 rejection of all the claims. Therefore, except for our ultimate decision, we do not discuss further herein the § 101 rejection of claims 2-30. B. The Examiner rejects claims 15-19, 22-24, 26, and 28 under 35 U.S.C. § I03(a) as being unpatentable over the combination of Keenan and Xin. Final Act. 2-11. Appellant presents arguments for claim 15. App. Br. 9-15. As to this rejection, our decision as to the § 103 rejection of claim 15 is determinative 2 All citations herein to these references are by reference to the first named inventor only. 3 All citations herein to the "Final Action" are to a Final Action mailed on June 15, 2017. 5 Appeal2018-005309 Application 14/088,352 as to the§ 103 rejection of claims 16-19, 22-24, 26, and 28. Therefore, except for our ultimate decision, we do not discuss further herein the § 103 rejection of claims 16-19, 22-24, 26, and 28. C. The Examiner rejects claims 1-14, 20, 21, 25, 27, 29, and 30 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Keenan, Bhola, and Xin. Final Act. 11-30. For this rejection, Appellant argues independent claims 1, 29, and 30 as a group. App. Br. 17-19. As to this rejection, Appellant relies on the § 103 arguments presented for claim 15. App. Br. 18. Thus, our decision as to the § 103 rejection of claim 15 is determinative as to the § 103 rejection of claims 1-14, 20, 21, 25, 27, 29, and 30. Therefore, except for our ultimate decision, we do not discuss further herein the § 103 rejection of claims 1-14, 20, 21, 25, 27, 29, and 30. Issues on Appeal Has the Examiner erred in rejecting claim 1 as being directed to patent-ineligible subject matter? Has the Examiner erred in rejecting claim 15 as being obvious? ANALYSIS 4 We have reviewed the Examiner's rejections in light of Appellant's Appeal Brief and Reply Brief arguments that the Examiner has erred. 4 All Manual of Patent Examining Procedure (MPEP) citations herein are to MPEP Rev. 08.2017, January 2018. 6 Appeal2018-005309 Application 14/088,352 A. Section 101 Under 35 U.S.C. § 101, a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). Accordingly, in applying § 101, the Supreme Court cautioned: [W]e must distinguish between patents that claim the "'buildin[g] block[ s]"' of human ingenuity and those that integrate the building blocks into something more, thereby "transform[ing]" them into a patent-eligible invention. The former "would risk disproportionately tying up the use of the underlying" ideas, and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws. Alice, 134 S. Ct. at 2354--55. The Supreme Court in Alice reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-83 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts," such as an abstract idea. Id. For example, a fundamental economic practice or merely implementing a mathematical algorithm/formula is an abstract idea. See 7 Appeal2018-005309 Application 14/088,352 Alice, 134 S. Ct. at 2357-58 (discussing Bilski v. Kappas, 561 U.S. 593 (2010) and Parker v. Flook, 437 U.S. 584 (1978)). The Court acknowledged in Mayo that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). If the claims are not directed to an abstract idea or other patent-ineligible concept (e.g., a law of nature), the inquiry ends. Id. at 1339. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered "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, 566 U.S. at 79, 78). In Enfzsh, the Federal Circuit provided further guidance. In setting up the two-stage Mayo/Alice inquiry, the Supreme Court has declared: "We must first determine whether the claims at issue are directed to a patent-ineligible concept." Alice, 134 S.Ct. at 2355. That formulation plainly contemplates that the first step of the inquiry is a meaningful one, i.e., that a substantial class of claims are not directed to a patent-ineligible concept. The "directed to" inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon-after all, they take place in the physical world. See Mayo, 132 S.Ct. at 1293 ("For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, 8 Appeal2018-005309 Application 14/088,352 natural phenomena, or abstract ideas.")[.] Rather, the "directed to" inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether "their character as a whole is directed to excluded subject matter." Enfzsh, 822 F.3d at 1335 (bold emphasis added). B. Requirement to Provide Sufficient Articulated Reasoning The requirement that the Examiner must provide a proper notice of rejection is set forth by 35 U.S.C. § 132: Whenever, on examination, any claim for a patent is rejected, ... the Director shall notify the applicant thereof, stating the reasons for such rejection ... together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application. The Federal Circuit has held that the Office carries its procedural burden when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, "together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original, quoting 35 U.S.C. § 132). Put simply, the Office is required to set forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (noting that§ 132 "is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection"). 9 Appeal2018-005309 Application 14/088,352 C. Examiner's § 101 Rejection - Alice/Mayo - Steps 1 and 2 Applying step 1 of the Alice/Mayo analysis, the Examiner determines5 claim 1 is directed to a 'judicial exception" because: Claim 1 recites, in part, abstract idea of selecting a first data object, adding a first and second search term annotation to a top and bottom plane image respectively and constructing a search inquiry, and sending the search inquiry to a search engine. The top and bottom plane image is illustrated within Appellant's Figures 1 & 2 and are merely front and back surface images that have the ability to be manipulated, i.e., mere data. These limitations describe the abstract idea of remotely accessing and retrieving user-specified information and collecting, displaying, and manipulating data, which corresponds to concepts identified as abstract ideas by the courts, such as (Int. Ventures v. Erie Indemnity '002 patent) and (Int. Ventures v. Cap One Financial) respectively. Applicant's claim language selects a first data object, equivalent to the collecting of information performed by the cited case law. The limitation of, adding a first and second search term annotation to a top and bottom plane image respectively and constructing a search inquiry, is the mere manipulation of data. Applicant's claim language shows a claimed process that is not meaningfully different from practices human beings have long performed, such as manipulating one or more surfaces of an image using a plurality of textual/ graphical measures in order to achieve a desired result. Ans. 4--5 ( emphasis added). Applying step 2 of the Alice/Mayo analysis, the Examiner determines claim 1 is "without significantly more" because: Additional elements of Claim 1, such as a computer display for the conventional display of objects and a computer interface (UI) that is utilized for the input of search term annotations producing the aggregation of additional content through Applicant's 5 We reproduce in its entirety the Examiner's analysis of Alice/Mayo step 1 for claim 1. 10 Appeal2018-005309 Application 14/088,352 claimed search engine, are not considered "significantly more" than the abstract idea presented within Claim 1 and provide the mere search and display of data objects using input search term annotations. Conventional search engines and user interfaces have long been utilized to accomplish the aggregation of result data pertaining to query terms and would not amount to "significantly more". Ans. 5. D. Appellant's§ 101 Arguments6 Appellant raises the following arguments in contending that the Examiner erred in rejecting claim 1 as being directed to patent-ineligible subject matter because the claim satisfies step one of the Alice/Mayo analysis. Appellant contends: [T]he Examiner has failed to make a prima facie case that the subject matter of these claims is an abstract idea .... [T]he Examiner simply asserts that the claimed invention is directed [to] accessing, retrieving, collecting, displaying, and manipulating data. In traverse, the Applicant submits that any patentable invention can be seen as an abstraction if examined in the most general fashion possible .... The Examiner has failed to make a case that annotating the top and bottom planes of a computer display image is simply an abstraction for the idea of accessing, retrieving, collecting, displaying, and manipulating data. Reply Br. 14 ( emphasis added). [T]he Examiner has failed to provide any evidence or otherwise prove that the specific limitations of claims 1, 15, and 29-30 are an abstract idea. Because the Examiner has failed to make a 6 The contentions we discuss herein are determinative as to the § 101 rejection on appeal. Therefore, we do not discuss Appellant's other§ 101 contentions herein. 11 Appeal2018-005309 Application 14/088,352 prima facie argument, the Applicant is unable to present more explicit refuting arguments. Reply Br. 15 ( emphasis added). E. Panel's§ 101 Analysis Essentially, Appellant is arguing the Examiner's articulated reasoning for Alice/Mayo step 1 is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection. We agree. To provide sufficient articulated reasoning as to why a claim is directed to an abstract idea or other patent-ineligible concept (e.g., a law of nature), an Examiner must adequately address both (a) what the character of the claim as a whole is directed to, and (b) whether that something is an abstract idea or a patent-ineligible concept. Enfzsh, 822 F.3d at 1335. We address each portion of the Examiner's analysis of Alice/Mayo step 1 for claim 1. a. In applying step 1 of the Alice/Mayo analysis, the Examiner determines: Claim 1 recites, in part, abstract idea of selecting a first data object, adding a first and second search term annotation to a top and bottom plane image respectively and constructing a search inquiry, and sending the search inquiry to a search engine. The top and bottom plane image is illustrated within Appellant's Figures 1 & 2 and are merely front and back surface images that have the ability to be manipulated, i.e., mere data. Ans. 4. Applicant's claim language selects a first data object, equivalent to the collecting of information performed by the cited case law. The limitation of, adding a first and second search term annotation to a top and bottom plane image respectively and constructing a search inquiry, is the mere manipulation of data. 12 Appeal2018-005309 Application 14/088,352 Ans. 5. First, step 1 of the Alice/Mayo analysis is based on whether, considered in light of the specification, the character of the claim as a whole is directed to excluded subject matter. Enfzsh, 822 F.3d at 1335. By addressing claim 1 "in part," the Examiner fails to provide sufficient articulated reasoning (i.e., notice) to Appellant of the Examiner's determination of what the character of claim 1 as a whole is directed to. Such an "in part" claim analysis, at best, may show that the claim involves an abstract idea, but cannot show the character of the claim as a whole is directed to an abstract idea. Second, the Examiner's "in part" analysis broadly summarizes the method of claim 1 while dismissing the search query's data structure (top and bottom plane image with respective annotations) as "mere data" without consideration of the particular format of the data structure used in the search query. In claim 1, the operations are recited with greater specificity ( a lower level of generality) than the operations recited in the claims at issue in Bilski and Alice. We agree with Appellant that the Examiner fails to provide sufficient articulation to show "that the specific limitations of claim[ 1] are an abstract idea." Reply Br. 15. b. The Examiner also determines: These limitations describe the abstract idea of remotely accessing and retrieving user-specified information and collecting, displaying, and manipulating data, which corresponds to concepts identified as abstract ideas by the courts, such as (Int. Ventures v. Erie Indemnity '002 patent) and (Int. Ventures v. Cap One Financial) respectively. Ans. 4--5. 13 Appeal2018-005309 Application 14/088,352 First, from a plain reading of claim 1, it is clear that claim 1 is not recited as the broad manipulation of data (i.e., collecting, accessing, and displaying) as determined by the Examiner. See Ans. 4--5. Rather, as we note supra, claim 1 includes at least a particular data format not sufficiently addressed by the Examiner. Second, the Examiner does not provide guidance as to the particular relevance of the cited Intellectual Ventures v. Erie Indemnity Co., 850 F.3d 1315 (Fed. Cir. 2017) and Intellectual Ventures v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017) decisions. The former decision addresses broadly recited systems and methods for accessing a user's remotely stored data and files. The latter decision addresses (i) utilizing user-selected preset limits on spending that are stored in a database that communicates a notification to the user and (ii) customizing web page content as a function of navigation history and information known about the user. Further, we fail to find any particular relevance as to the Examiner's citations as the subject matter of Appellant's claim 1 is not directed to any abstract idea of these decisions. C. The Examiner further determines: Applicant's claim language shows a claimed process that is not meaningfully different from practices human beings have long performed, such as manipulating one or more surfaces of an image using a plurality of textual/ graphical measures in order to achieve a desired result. Ans. 5. We are unable to determine the meaning of the Examiner's statement "such as manipulating one or more surfaces of an image using a plurality of textual/ graphical measures in order to achieve a desired result," and the 14 Appeal2018-005309 Application 14/088,352 Examiner does not provide any further analysis to explain why the claimed process is not meaningfully different. Again, the Examiner fails to provide sufficient articulation to show "that the specific limitations of claim[ 1] are an abstract idea." Reply Br. 15. d. Appellant's arguments persuade us the Examiner fails to properly determine what the claim is directed to. The Examiner fails to provide sufficient articulated reasoning to support a conclusion that all the specific claim limitations that the Examiner labels as included in the abstract idea are actually an abstract idea. Therefore, we do not sustain the rejection under 35 U.S.C. § 101 of claims 1-30. F. Appellant's§ 103 Arguments7 Appellant raises the following argument in contending that the Examiner erred in rejecting claim 15 under 3 5 U.S. C. § 1 0 3 (a). [When] Keenan's glyphs are compared to the Applicant's data object top and bottom images, it must be noted that a (single) 2D glyph is comprised of only a single plane and, therefore, a single image. In contrast, the claimed invention comprises two images, one associated with the top plane and one associated with the bottom plane. The [Final Action] Response (page 32) also states that Keenan discloses "toolbar commands for the display of glyphs and their associated features/ attributes with a geometric boundary, and to be associated with a top or bottom, as selected.["] Examples of such commands can be "move a selected layer to top" and "move a selected layer to bottom[]." In traverse, Keenan defines what he means by "layer["], stating that "(a) composite image that has been exploded into 7 The contentions we discuss are determinative as to the § 103 rejections on appeal, so we do not discuss Appellant's other § 103 contentions herein. 15 Appeal2018-005309 Application 14/088,352 multiple layers may have each layer treated as an individual glyph 455 or design object 450" [0041]. Thus, in [0043] when Keenan describes commands such as "move a selected layer to top" and "move a selected layer to bottom", he is describing a stack of multiple glyphs and a command that moves one particular layer (i.e., glyph) to the top or bottom of the order of layered glyphs. Moving the order in which Keenan's individual glyphs are layered is not the same as changing the top plane image of a glyph to the bottom plane image of a glyph, for the simple reason that a glyph has no bottom plane or bottom plane image. Alternatively stated, while the claimed invention recites switching between a first (top plane) image associated with a data object, and a second (bottom plane) image associated with the same first data object, Ke[ e ]nan merely discloses multiple glyphs, where each glyph comprises a single image. App. Br. 11. G. Panel's§ 103 Analysis Claim 15 recites "a first data object having both a top plane image and a bottom plane image." Emphasis added. 8 We construe "top" and "bottom" as terms defining a positional relationship between the planes. As to the particular relationship of the top plane and bottom plane, Appellant's Specification describes "a first data object bottom plane" as being "opposite of the first data object top plane." Spec. 5:9--11. Additionally, claim 15 (and claim 29) explicitly recite a "flip" operation, the functioning of which is based on the "opposite" relationship between the top and bottom planes. Although we do not import limitations from the Specification, nevertheless "[i]t is axiomatic that, in proceedings before the PTO, claims in an application are to be given their broadest reasonable interpretation consistent 8 All of Appellant's independent claims require a top plane and a bottom plane. 16 Appeal2018-005309 Application 14/088,352 with the specification." In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). Here, given the context of the claims and in light of the rest of the Specification, we construe the term "bottom plane" in claim 15 as requiring a positional relationship opposite the top plane. We conclude, after reviewing the Examiner's rejection and consistent with Appellant's above argument as to claim 15, there is insufficient articulated reasoning to support the Examiner's findings that Keenan discloses the argued "a first data object having both a top plane image and a bottom plane image" of claim 15. Keenan's glyphs maybe layered (e.g., like a stack of papers), but no two glyphs are in an "opposite" positional relationship such that they can be "flipped" (e.g., like flipping a single piece of paper over to reveal the opposite surface). Therefore, we conclude that there is insufficient articulated reasoning to support the Examiner's conclusion that claim 15 is rendered obvious by Keenan and Xin based on the Examiner's articulated reasoning. The Examiner's rejection of independent claim 1 relies upon a similar application of Keenan and Xin. See Final Act 12. As such, we similarly conclude that there is insufficient articulated reasoning to support the Examiner's conclusion that claim 1 is rendered obvious. 17 Appeal2018-005309 Application 14/088,352 CONCLUSIONS (1) Appellant has established that the Examiner erred in rejecting claims 1-30 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. (2) Appellant has established that the Examiner erred in rejecting claims 1-30 as being unpatentable under 35 U.S.C. § 103(a). (3) Claims 1-30 have not been shown to be unpatentable. DECISION The Examiner's rejection of claims 1-30 under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter is reversed. The Examiner's rejection of claims 1-30 as being unpatentable under 35 U.S.C. § 103(a) is reversed. REVERSED 18 Copy with citationCopy as parenthetical citation