Ex Parte Walsh et al

Patent Trial and Appeal Board

Nov 7, 2018

12824769 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/824,769 06/28/2010
35811 7590 11/09/2018
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Michael Walsh
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.
CCX-10-1440R 1483
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL WALSH,
RICHARD L. SANDOR,
and JEFFREY K. 0 'HARA
Appeal2017---002747
Application 12/824,769
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
BRUCE T. WIEDER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Michael Walsh, Richard L. Sandor, and Jeffrey K. O'Hara (Appellants)
seek review under 35 U.S.C. § 134 of a final rejection of claims 1-23, 26,
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed September 9, 2016) and Reply Brief ("Reply Br.," filed December
6, 2016), and the Examiner's Answer ("Ans.," mailed November 3, 2016),
and Final Action ("Final Act.," mailed April 19, 2016).
Appeal2017-002747
Application 12/824,769
and 27, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
The Appellants invented a way to effectively address climate change by
requiring increased energy efficiency, while offering its participating entities
substantial commercial opportunities. Specification 4.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method for promoting more
efficient energy use, the computer-implemented method
compnsmg:
[ 1] creating, by at least one computer in a computing system
comprising a registry database, an electronic trading platform,
and the at least one computer, a reduction schedule
that sets predetermined limits on energy use as a function
of production activity for each of at least one entity,
the reduction schedule covering at least one time period,
the production activity comprising at least one of a
production of goods, a provision of services and a
generation of revenues,
the registry database, the electronic trading platform and
at the least one computer being in communication via a
communications network;
[2] measuring, by at least one device, for each entity of the at
least one entity,
an actual energy use and an actual production activity
during the at least one time period;
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[3] determining, by the at least one computer based on
information provided by the at least one device, for each entity,
an actual energy efficiency ratio,
the actual energy efficiency ratio being a ratio of the
measured actual energy use to the measured actual
production activity;
[ 4] creating, by the at least one computer, a plurality of
electronic transferable energy efficiency credits,
where each energy efficiency credit represents an amount
of energy;
[5] allocating, by the at least one computer, at least a portion of
the energy efficiency credits to each of the at least one entity,
by transmitting a signal over the communications
network to the registry database to cause the registry
database to update a value representing at least the
portion of the energy efficiency credits in respective
accounts on the registry database for each of the at least
one entity;
[6] comparing, by the at least one computer, for each entity, the
actual energy efficiency ratio to the reduction schedule;
[7] determining, by the at least one computer, for each entity,
whether the actual energy efficiency ratio is within the
predetermined limits set by the reduction schedule,
based on the comparison of the actual energy efficiency
ratio to the reduction schedule;
[8] issuing, by the at least one computer, at least a portion of the
allocated energy efficiency credits to one or more entities
among the at least one entity,
by transmitting a signal over the communications
network to the registry database to cause the registry
database to transfer at least the portion of the allocated
energy efficiency credits into the respective accounts of
the one or more entities
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when the respective actual energy efficiency ratio is
within the predetermined limits set by the reduction
schedule;
[9] issuing, by the at least one computer, a requirement for
remaining entities among the at least one entity to purchase one
or more energy efficiency credits on the electronic trading
platform
and
when the respective actual energy efficiency ratio is
outside of the predetermined limits set by the reduction
schedule;
[10] transmitting, by the at least one computer, over the
communications network, compliance information to at least
one remote entity computing device associated with the at least
one entity,
said compliance information comprising at least one of
the reduction schedule, the actual energy efficiency ratio,
the issued portion of the allocated energy efficiency
credits and the requirement to purchase the one or more
energy efficiency credits,
wherein the transmission of the compliance information
by the at least one computer activates a graphical user
interface of the at least one remote entity computing
device to cause the graphical user interface to display the
compliance information in at least one window of the
graphical user interface.
The Examiner relies upon the following prior art:
Sandor US 2005/0246190 Al
Sandor US 2007/0192221 Al
Nov. 3, 2005
Aug. 16, 2007
Claims 1-23, 26, and 27 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
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Claims 1-23, 26, and 27 stand rejected under 35 U.S.C. § 112(a) as
lacking a supporting written description within the original disclosure.
Claims 1-23, 26, and 27 stand rejected under 35 U.S.C. § 112(b) as
failing to particularly point out and distinctly claim the invention.
Claims 1-9, 11-23, 26, and 27 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Sandor'221.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Sandor'221 and Sandor'190.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of written description tum primarily on whether the
Specification supports the amendments to the independent claims.
The issues of indefiniteness tum primarily on the amendments to the
claims.
The issues of obviousness tum primarily on whether the art applied
describes or renders predictable the computation recited in the claims.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Sandor'221
01. Sandor' 221 is directed to an emissions reduction trading system.
Sandor'221 para. 20.
02. Sandor'221 describes determining the present value of a
futures contract for a commodity. The method includes selecting
an expiration date for the futures contract, calculating a
customized interest rate factor based on interest rates surveyed
from a plurality of lending institutions, and applying the
customized interest rate factor to the futures contract price to
determine the present value. In some embodiments, the
commodity is carbon dioxide and the futures contract includes
carbon financial instruments. A carbon market index that includes
for futures contracts in present value is preferably determined by
the method. Sandor'221 para. 21.
03. Sandor'221 describes development of new, higher-efficiency
production facilities offering a means of fulfilling demand for
products while producing less greenhouse gas (GHG) emissions
per unit of production. Sandor'221 para. 190.
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ANALYSIS
Claims 1-23, 26, and 27 rejected under 35 U.S.C. § 1 OJ as directed to a
judicial exception without significantly more
Method claim 1 recites creating a reduction schedule, measuring energy
use and actual production, determining an actual energy efficiency ratio,
creating and allocating energy efficiency credits, comparing the actual
energy efficiency ratio to the reduction schedule, determining whether the
actual energy efficiency ratio is within criteria, issuing the energy efficiency
credits, and transmitting and displaying compliance information. Thus,
claim 1 recites receiving, analyzing, modifying, displaying, and transmitting
data. None of the limitations recite implementation details for any of these
steps, but instead recite functional results to be achieved by any and all
possible means. Data reception, analysis and modification, and transmission
and display are all generic, conventional data processing operations to the
point they are themselves concepts awaiting implementation details. The
sequence of data reception-analysis-modification-transmission-display is
equally generic and conventional. The ordering of the steps is therefore
ordinary and conventional. The remaining claims merely describe
parameters for the calculations and process, with no implementation details.
The Supreme Court
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. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and "as
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an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a 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 upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to the idea of using a cap and trade system to reduce the risk posed
from increased emissions ( fundamental economic practice), which includes
an energy reduction ratio, which is a mathematical relationship, both of
which define a judicial exception. Final Act. 3.
Although the Court in Alice made a determination as to what the claims
were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 recites that it is a method for promoting more
efficient energy use. The steps in claim 1 result in displaying and
transmitting energy use compliance information. The Specification recites
that the invention relates to
establishing a measure of efficiency ("energy efficiency ratio")
comprising a ratio of a measure of energy use to a measure of
production; setting limits on the value of the energy efficiency
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ratio ("reduction schedule") for a series of compliance time
periods; establishing a transferable credit ("energy efficiency
credit") representing an amount of energy and a tradable
instrument ("energy financial instrument") representing a
number of energy efficiency credits; issuing a plurality of
energy efficiency credits to participating entities; establishing a
computer-implemented trading system to facilitate the sale and
purchase of energy financial instruments; and requiring the
participating entities to comply with the reduction schedule.
Specification 1: Field of the Invention. Thus, all this evidence shows that
claim 1 is directed to computing, displaying, and transmitting energy use
information for the purpose of efficient promoting energy use, i.e. promoting
efficient resource usage. This is consistent with the Examiner's finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of promoting
efficient resource usage is a fundamental economic practice long prevalent
in our system of commerce. The use of promoting efficient resource usage
is also a building block of ingenuity in resource management. Thus,
promoting efficient resource usage, like hedging, is an "abstract idea"
beyond the scope of§ 101. See Alice Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of promoting
efficient resource usage at issue here. Both are squarely within the realm of
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"abstract ideas" as the Court has used that term. See Alice Corp. Pty. Ltd. at
2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc'ns LLC Patent Litig., 823 F.3d 607,611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, display, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 1 is directed to the abstract idea of receiving, analyzing,
displaying, and transmitting data.
The remaining claims merely describe parameters for the calculations and
process. We conclude that the claims at issue are directed to a patent-
ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
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not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment.'"
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 ( citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Id. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, analyze, modify, transmit, and display data amounts to
electronic data query and retrieval----one of the most basic functions of a
computer. The limitation of measuring actual energy use and actual
production is a generic data measurement step. All of these computer
functions are well-understood, routine, conventional activities previously
known to the industry. Again, see Elec. Power Grp. v. Alstom S.A, supra.
Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d
1303, 1316 (Fed.Cir.201 l)("Absent a possible narrower construction of the
terms 'processing,' 'receiving,' and 'storing,' . . . those functions can be
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achieved by any general purpose computer without special programming").
In short, each step does no more than require a generic computer to perform
generic computer functions. As to the data operated upon, "even if a process
of collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP America Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification-transmission-display is equally generic and conventional or
otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017)(sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is therefore ordinary and conventional.
Viewed as a whole, Appellants' method claims simply recite the concept
of promoting efficient resource usage as performed by a generic computer.
To be sure, the claims recite doing so by advising one to create a reduction
schedule, measure actual data and compare that to the schedule to produce
other measurement data, create and allocate credits according the results of
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the analysis, issue credits and credit requirements, and let one know the
results. But this is no more than abstract conceptual advice on the
parameters for such promoting efficient resource usage and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The Specification spells out
different generic equipment2 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of promoting efficient resource usage under different
scenarios. They do not describe any particular improvement in the manner a
computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of promoting
efficient resource usage using some unspecified, generic computer. Under
our precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims m substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
2 The Specification describes the system as computers connected to a
network. Spec. 21 :27-28.
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ways that make patent eligibility 'depend simply on the
draftsman's art. '"
Alice Corp. Pty. Ltd. at 2360.
As to Appellants' Appeal Brief argument, we adopt the Examiner's
determinations and analysis from Final Action 2-16 and Answer 3-19 and
reach similar legal conclusions. We only add that the evidence Appellants
request (App. Br. 17-18) for the notoriety of promoting efficient resource
usage is at least found in the historicity of the 1973 oil embargo effects. We
now tum to the Reply Brief.
We are not persuaded by Appellants' argument that the claims are
analogous to those inMcRO. Reply Br. 2-3. The analysis is much the same
as in SAP America.
Contrary to InvestPic' s contention, the claims here are
critically different from those we determined to be patent
eligible in McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016). The claims in McRO were
directed to the creation of something physical-namely, the
display of "lip synchronization and facial expressions" of
animated characters on screens for viewing by human eyes. Id.
at 1313. The claimed improvement was to how the physical
display operated (to produce better quality images), unlike
( what is present here) a claimed improvement in a mathematical
technique with no improved display mechanism. The claims in
McRO thus were not abstract in the sense that is dispositive
here. And those claims also avoided being "abstract" in another
sense reflected repeatedly in our cases (based on a contrast not
with "physical" but with "concrete"): they had the specificity
required to transform a claim from one claiming only a result to
one claiming a way of achieving it. McRO, 837 F.3d at 1314;
see Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305---06
(Fed. Cir. 2018); Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1241 (Fed. Cir. 2016); Affinity Labs of Texas, LLC v.
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DIRECTV, LLC, 838 F.3d 1253, 1265 (Fed. Cir. 2016); see also
Two-Way Media, 874 F.3d at 1337; Secured Mail Solutions
LLC v. Universal Wilde, Inc., 873 F.3d 905, 909 (Fed. Cir.
2017); RecogniCorp, 855 F.3d at 1326; Symantec, 838 F.3d at
1316.
SAP America v. Investpic, 898 F.3d 1161, 1167-1168 (Fed Cir 2018). The
SAP claims were directed to statistical methods for the analysis of financial
data. The instant claims perform statistical analysis of energy usage and
production to generate financial data. As in SAP, the instant claims are a
claimed improvement in a statistical technique, that also passes data back
and forth, with no improved display or transmission mechanism and they
lack the specificity required to transform a claim from one claiming only a
result to one claiming a way of achieving it.
We are not persuaded by Appellants' argument that the claims are
analogous to those in Enfzsh, 822 F.3d 1327, 1337 (Fed. Cir. 2016). Reply
Br. 3--4. The claims differ from those found patent eligible in Enfzsh,
where the claims were "specifically directed to a self-referential table for
a computer database." Enfzsh, 822 F.3d at 1337. The claims thus were
"directed to a specific improvement to the way computers operate" rather
than an abstract idea implemented on a computer. Id. at 1336. Here, by
contrast, the claims are not directed to an improvement in the way
computers operate. Though the claims purport to accelerate the process
of analyzing data and shuttling credits for energy usage, our reviewing court
has held that speed and accuracy increases stemming from the ordinary
capabilities of a general purpose computer "do[] not materially alter the
patent eligibility of the claimed subject matter." Bancorp Servs., L.L. C. v.
Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.
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2012). Instead, the claims are more analogous to those in FairWarning,
839 F.3d 1089 (Fed. Cir. 2016), wherein claims reciting "a few possible
rules to analyze audit log data" were found directed to an abstract
idea because they asked "the same questions (though perhaps phrased
with different words) that humans in analogous situations detecting fraud
have asked for decades." 839 F.3d at 1094, 1095. Although Appellants
also contend the claims "promote entity participation and compliance"
(Reply Br. 4), such behavioral promotion is itself an abstraction, and is not
recited in the claims in any event.
We are not persuaded by Appellants' argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in BASCOM
(BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Reply Br. 4---6. Initially, we remind Appellants that BASCOM did
not find claims eligible on the substance, but rather that the Appellees did
not provide sufficient evidence to support a 12(b )( 6) motion to dismiss in
which facts are presumed in the non-movant's favor.
The key fact in BASCOM was the presence of a structural change in
"installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server." BASCOM, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
Appellants contend that their combination of an indexed registry
database, an energy efficiency ratio, and a mechanism that individually
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updates the accounts of each entity using credits based on the energy
efficiency ratio are inventive because they are novel and useful. But a novel
abstract idea remains an abstract idea. "A claim for a new abstract idea is
still an abstract idea. The search for a § 101 inventive concept is thus
distinct from demonstrating§ 102 novelty." Synopsys, Inc. v. Mentor
Graphics Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016). And many
abstract ideas are highly useful, as for example, "a stitch in time saves nine"
and "an ounce of prevention is worth a pound of cure" are the basis for the
highly useful billion dollar preventative maintenance industry. Novelty and
utility are not determinative. At bottom, there is nothing structural or
technological in the recited manner of analyzing data and shuttling credits
data. Such a manner remains abstract conceptual advice for how to do so.
As to the improvement by indexing argued both here and in the prior
argument associated with Enfzish, aside from the simple fact that indexing is
part of generic databases, as the Examiner determines, the claims do not
recite indexing. Ans. 4.
We are not persuaded by Appellants' argument that "Appellants' claims
do not automate a known process or implement an abstract idea on a general
purpose computer." Reply Br. 6-9. Appellants cite several cases, including
those already argued, but do not apply those cases to new arguments.
Claims 1-23, 26, and 27 rejected under 35 U.S. C. § l l 2(a) as lacking a
supporting written description within the original disclosure
This is a new matter rejection. The Examiner finds
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For claims 1, 26, 27, applicant recites the limitation "wherein
the transmission of the compliance information by the at least
one computer activates a graphical user interface of the at least
one remote entity computing device to cause the graphical user
interface to display the compliance information in at least one
window of the graphical user interface.". This language is
found to be new matter that is not supported by the
specification as originally filed. In the remarks of the response
the applicant cited to pages 8, 10, 12, 26, 22, 31-34, and figures
7 and 8 as providing support for the claimed features of the
claims. The examiner has reviewed the relied upon pages of the
specification and the figures, and notes that it does not disclose
the above limitation. The specification as originally filed
makes no mention of any activation occurring of a graphical
user interface of a remote entity computer that is caused by a
transmission from the claimed computer. This constitutes new
matter that has been added to the claims that is not supported by
the specification as originally filed. This appears to be a
limitation that has been drafted for the purpose of making a
comparison to hypothetical example 21 from the PTO
guidelines in support of the claims and their eligibility under
101. There is no discussion in the specification of how the
activation is to occur, or how it works. The applicant has not
set forth how the sending of a transmission will result in the
remote entity computer having a graphical user interface
activated. In reality, applicant is claiming a genus that covers
any and all ways that one could remotely activate a remote
entity computer to display data in a graphical user interface, but
the applicant has not even disclosed how they are doing it via
any species, because this limitation does not appear in the
specification as originally filed. The specification does not
provide an adequate written description of the invention that is
sufficient to convey possession to one of skill in the art.
Final Act. 17-18. We adopt the Examiner's findings and analysis from
Final Action 17-18 and Answer 19-21. In particular, we are not persuaded
by Appellants' argument that "one skilled in the art would recognize that all
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claimed limitations are fully supported by the Appellants' originally filed
Specification and Drawings." App. Br. 19.
[The written description] test requires an objective inquiry into
the four comers of the specification from the perspective of a
person of ordinary skill in the art. Based on that inquiry, the
specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the
invention claimed.
Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F. 3d 1336, 1351 (Fed. Cir.
2010) (en bane).
One shows that one is "in possession" of the invention by
describing the invention, with all its claimed limitations, not
that which makes it obvious. One does that by such
descriptive means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed invention.
Although the exact terms need not be used in haec verba, ... ,
the specification must contain an equivalent description of the
claimed subject matter.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Appellants contend that because the Specification independently
describes showing the data and showing an interface, one of ordinary skill
would have recognized that the inventors had possession of the combination
of those two elements. Ariad corrected the confusion that Appellants
argument is based on by adding the requirement for showing possession
within the four comers of the Specification. Thus, to show possession of the
specific joining of two different elements as part of an invention, the
Specification must describe or imply such a joining. Appellants show it
might have been obvious, but Lockwood held that is insufficient.
19
Appeal2017-002747
Application 12/824,769
Claims 1-23, 26, and 27 rejected under 35 U.S.C. § l l 2(b) as failing to
particularly point out and distinctly claim the invention
This rejection is based on the same written matter limitation as in the
written description rejection and is therefore mooted by the affirmance of
that rejection.
Claims 1-9, 11-23, 26, and 27 rejected under 35 U.S.C. § 103(a) as
unpatentable over Sandor'221
We are persuaded by Appellants' argument that "the Examiner's
allegation that a ratio based on energy use would somehow be obvious is
merely a conclusory statement for which the Examiner has provided no
evidence." App. Br. 21. The Examiner makes a determination premised on
Sandor's description of energy use in terms of production at Sandor' 221
para. 190. Ans. 25. This is in error. Sandor'221 instead describes
emissions per unit of production.
Claim 10 rejected under 35 U.S. C. § 103 (a) as unpatentable over
Sandor'221 and Sandor'l90
The claim depends from the claims in the prior rejection.
CONCLUSIONS OF LAW
The rejection of claims 1-23, 26, and 27 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
20
Appeal2017-002747
Application 12/824,769
The rejection of claims 1-23, 26, and 27 under 35 U.S.C. § 112(a) as
lacking a supporting written description within the original disclosure is
proper.
The rejection of claims 1-23, 26, and 27 under 35 U.S.C. § 112(b) as
failing to particularly point out and distinctly claim the invention is moot.
The rejection of claims 1-9, 11-23, 26, and 27 under 35 U.S.C. § 103(a)
as unpatentable over Sandor'221 is improper.
The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable over
Sandor'221 and Sandor' 190 is improper.
DECISION
The rejection of claims 1-23, 26, and 27 is affirmed.
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.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
21