Holt, Christopher L.

Patent Trials and Appeals Board

Sep 24, 2019

11823557 - (R) (P.T.A.B. Sep. 24, 2019)

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.
11/823,557 06/28/2007 Christopher L. Holt 31547-359 / LEN 0081 NA 1190
146524 7590 09/24/2019
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
EXAMINER
TO, BAOQUOC N
ART UNIT PAPER NUMBER
2154
MAIL DATE DELIVERY MODE
09/24/2019 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 CHRISTOPHER L. HOLT
___________

Appeal 2017-008341
Application 11/823,557
Technology Center 2100
____________

Before ERIC B. CHEN, JEREMY J. CURCURI, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant requests rehearing under 37 C.F.R. § 41.52 of our Decision
on Appeal entered May 31, 2019 (“Decision” or “Dec.”), in which we
affirmed the Examiner’s non-final rejection of claims 1–10, 12, 14–16, 18,
20, and 21.
The Request for Rehearing is denied.

Appeal 2017-008341
Application 11/823,557

2
ANALYSIS
Appellant argues the following:
the Board misapprehended or overlooked the evidentiary
requirement established by the Berkheimer Memo. Appellant
asserts that the lack of any specific evidence required under the
Berkheimer Memo, yet absent from the Decision on Appeal, is
wholly inconsistent with other decisions on appeal rendered by
other panels of the Board.
(Req. for Reh’g 2 (emphases omitted).)1 Similarly, Appellant argues that
“this is an insufficient showing for a preponderance of the evidence that the
claims fail to recite significantly more than abstract idea under Step 2B of
the Alice framework.” (Id. at 3.)
Contrary to Appellant’s arguments, our Decision states the following:
With respect to the claimed hardware components,
Appellant’s Specification discloses the following:
FIG. 1 shows that Examiner information
accessing system 102 includes a data search system
118 and data aggregation system 122. The query
116 is provided to data search system 118 which, in
turn, executes the query against aggregated
Examiner data 106 . . . . The data search system 118
may illustratively be a conventional search engine
or another type of searching system that searches
through aggregated Examiner data 106. In any case,
data search system 118 generates results 120 that
are provided, through search user interface system
108, and through the search UI 110 generated by
system 108, to a user over network 114. The query
116 and results 120 can contain any of a wide
variety of different information, depending on what
the user 112 desires, and depending on the type of

1 Footnote 36 of the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) incorporates by reference the
the Berkheimer Memorandum.
Appeal 2017-008341
Application 11/823,557

3
data aggregated in aggregated Examiner data store
106.
(¶ 18 (emphasis added).) Appellant’s Specification is silent
with respect to the terms “computer processor” or “computing
device.”
The generalized functional terms by which the computer
components are described reasonably indicate that Appellant’s
Specification discloses conventional data store 106 which
interacts with a conventional “computer processor” as
component in a conventional “computing device.”
(Dec. 14–15.)
As articulated by the Federal Circuit, “[w]hether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360,
1369 (Fed. Cir. 2018). Moreover, such factual determination can based
upon disclosures in the Specification. Id. (“The improvements in the
specification, to the extent they are captured in the claims, create a factual
dispute regarding whether the invention describes well-understood, routine,
and conventional activities, so we must analyze the asserted claims and
determine whether they capture these improvements (citations omitted).”).
Contrary to Appellant’s arguments, our Decision cited to paragraph 18 of
Appellant’s Specification as evidence that the claimed hardware is “well-
understood, routine, and conventional,” pursuant to the Berkheimer. Other
than providing conclusory statements that our Decision “lack[s] of any
specific evidence” and “this is an insufficient showing for a preponderance
of the evidence that the claims fail to recite significantly more than abstract
idea,” Appellant has not provided any persuasive arguments or evidence as
to why the findings in our Decision were improper.

Appeal 2017-008341
Application 11/823,557

4
CONCLUSIONS
The Request for Rehearing has been considered and is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED