International Business Machines Corporation

Patent Trials and Appeals BoardNov 20, 2020

2019002127 (P.T.A.B. Nov. 20, 2020)

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. 14/306,940 06/17/2014 Helen T. Chen SOM920000018US2_8152-0237 3810 73109 7590 11/20/2020 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, FL 33498 EXAMINER RIES, LAURIE ANNE ART UNIT PAPER NUMBER 2176 NOTIFICATION DATE DELIVERY MODE 11/20/2020 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HELEN T. CHEN, THOMAS R. MAGUIRE, and JOHN F. SCHUMACHER Appeal 2019-002127 Application 14/306,940 Technology Center 2100 Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and THU A. DANG, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE In papers filed October 23, 2020, Appellant requests reconsideration under 37 C.F.R. § 41.52 from the Decision of the Patent Trial and Appeal Board (“Board”), dated August 26, 2020 (“Dec.”). In the Decision, we reversed the Examiner’s obviousness rejections of claims 32−52 under 35 U.S.C. § 103. However, we affirmed the Examiner’s patent eligibility rejection of claims 32–52 under 35 U.S.C. § 101. We GRANT Appellant’s request. Appeal 2019-002127 Application 14/306,940 2 ANALYSIS In the present Request for Rehearing (“Req. Reh’g”), Appellant requests reconsideration of the decision sustaining the rejection of claims 32–52 under 35 U.S.C. § 101 based upon the USPTO’s 2019 Revised Patent Subject Matter Eligibility (hereafter “2019 Revised Guidance”).1 Req. Reh’g. 3–5. Because the October 2019 Revised Guidance Update was promulgated AFTER Appellant’s Reply Brief, dated January 15, 2019, Appellant’s request is ADMISSIBLE for a rehearing under 37 C.F.R. § 41.52(a)(2). In the Request, Appellant alleges that because the Board’s analysis under the revised guidance differs from the Examiner’s, it should be designated as a new ground of rejection. Req. Reh’g. 6. In particular, Appellant argues the following: [T]he Examiner did not perform, consistent with the 2019 PEG, either Prong One or Prong Two of the revised Step 2A analysis. In contrast and with reference to 18 page 7 of the Decision, the Board recognized that the 2019 PEG applies and "analyze[d] the patent- eligibility rejection with the principles identified above in mind." The Board's detailed Step 2A analysis spans pages 7-15 of the Decision, which stands in stark contrast to the single short paragraph presented by the Examiner (and reproduced immediately above). As part of this analysis, the Board relies upon a number of Federal Circuit cases, not cited by the Examiner, for propositions of law not presented by the Examiner. Id. As noted above, the ultimate criterion as to whether new grounds should be designated in a decision by the Board is whether Appellants have had fair opportunity to react to the thrust of the rejection. Using this as the criteria, Appellants have not. There are a 1 Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision, https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf Appeal 2019-002127 Application 14/306,940 3 number of arguments (based upon the 2019 PEG, Examples 38-42 accompanying the 2019 PEG, and October 2019 PEG Update) involving Prong Two of the Revised Step 2A that Appellants have not had a fair opportunity to present. Both the 2019 PEG and the October 2019 PEG Update admit to changing how the Patent Office is addressing rejections under 35 U.S.C. § 101. In this instance, the Board presented a Prong Two analysis whereas the Examiner did not. Moreover, Appellants have not had an opportunity to address the Prong Two analysis being presented. Consequently, the criterion for designating a new grounds of rejection has been met. Id. at 8–9. We are persuaded by Appellant's arguments that our § 101 analysis in the Decision, which relied at least in part on the October PEG Update , constitutes an undesignated new ground of rejection. In the interests of fairness and due process, we revise our Decision to designate our affirmance of the§ 101 rejection of claims 32–52 as a new ground of rejection.2 We further note the other rejections addressed in our Decision remain unchanged as indicated in the summary table below. 37 C.F.R. § 41.50(b) provides that, “[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 the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of 2 Procedural due process requires notice and a fair opportunity for Appellant to respond. See e.g., Mathews v. Eldridge, 424 U.S. 319, 348-49 (1976) (“The essence of due process is the requirement that ‘a person in jeopardy of serious loss (be given) notice of the case against him and opportunity to meet it.’”) (internal citation omitted). Appeal 2019-002127 Application 14/306,940 4 rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) 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 prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under 37 C.F.R. § 41.52 by the Board upon the same record. . . . DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 32–52 101 Eligibility 32–52 32–52 103 XML Spy, Beckett 32–52 32–52 103 Williams, XML Spy, Beckett 32–52 Overall Outcome 32–52 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 GRANTED 37 C.F.R. § 41.50(b)