Lucian Lita et al.

Patent Trials and Appeals Board

Jan 28, 2022

2021001889 (P.T.A.B. Jan. 28, 2022)

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. 13/455,024 04/24/2012 Lucian Vlad Lita 088325-1036726 (187600US) 8747 51206 7590 01/28/2022 Oracle / Kilpatrick Townsend & Stockton LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER PATEL, DIPEN M ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 01/28/2022 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): KTSDocketing2@kilpatrick.foundationip.com ipefiling@kilpatricktownsend.com oraclepatentmail@kilpatricktownsend.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LUCIAN VLAD LITA and OMAR TAWAKOL Appeal 2021-001889 Application 13/455,024 Technology Center 3600 Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and ROBERT J. SILVERMAN, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant filed a Request for Rehearing (“Request”), pursuant to 37 C.F.R. § 41.52, on October 18, 2021, seeking reconsideration of our Decision on Appeal mailed August 18, 2021 (“Decision” or “Dec.”), in which we affirmed the Examiner’s rejection of claims 1-30 under 35 U.S.C. § 101 as directed to an abstract idea without significantly more. We have jurisdiction over the Request under 35 U.S.C. § 6(b). We note at the outset that a Request for Rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1) (2019). A Request for Rehearing is not an opportunity to rehash arguments raised in the Appeal Brief or in the Appeal 2021-001889 Application 13/455,024 2 Reply Brief. Neither is it an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. Arguments not raised in the briefs before the Board and evidence not previously relied on in the briefs also are not permitted except in the limited circumstances set forth in §§ 41.52(a)(2) through (a)(4). Id. DISCUSSION The Decision In our Decision, we affirmed the rejection of claims 1-30 under 35 U.S.C. § 101 and reversed the rejections of claims 1-30 under 35 U.S.C. § 103(a). In the Request, Appellant argues that the Decision misapprehends and overlooks several points raised in the Appeal Brief and the Reply Brief. Specifically, the Appellant argues that the Board failed to consider the subject matter eligibility of the claims and has failed to consider a Declaration filed under 37 C.F.R. § 1.132. In regard to subject matter eligibility, Appellant argues that we misapprehended that claim 1 recites the generation of a new dataset. We do not agree. We discussed this issue on page 12 of our Decision and determined that the method recited in claim 1 was merely a manipulation of data and that this is not sufficient to amount to a practical application or significantly more. The Declaration was executed by David Wiener and filed on March 2, 2018. The Declaration does not mention the rejection under 35 U.S.C. § 101. The Declaration does not discuss whether the claims recite abstract Appeal 2021-001889 Application 13/455,024 3 ideas, include a practical application, or whether the claims include significantly more than an abstract idea. Rather, the Declaration states that the application “serves as evidence of long-felt and unresolved needs, failure of others, and the criticality of the invention in the industry. (Decl. ¶ 4.)” In addition, the Declaration states that the pending claims recite a technical point of novelty. As such, it appears the Declaration was filed in response to the rejections under 35 U.S.C. § 103(a), not the rejection under 35 U.S.C. § 101. We reversed the rejections under 35 U.S.C. § 103(a) because we found that the portions of Evenhaim relied on by the Examiner did not include a disclosure that the data includes one data attribute that is different from the data attributes included in the query communication. As we found that the prior art did not teach the subject matter of the claims, there was no need to specifically discuss the Declaration. Appellant now argues that it was an error not to specifically discuss the Declaration when we discussed the rejection under 35 U.S.C. § 101 in our Decision. The Declaration avers that the features of the pending claims recite a technical point of novelty as of the priority date of April 24, 2012, and that the grouping of uniquely identifiable data with data that does not uniquely identify users was new (Decl. ¶5). The Declaration also states that the method of the invention was new. (Decl. ¶ 9). In addition, the Declaration avers that the advantage of the invention is that by adjusting the data set to include additional user profiles with potentially additional attributes in a manner that anonymizes the users represented by the data set a response can always be generated for the query, even though the data set resulting from the query would have violated privacy laws. (Decl. ¶ 10.) As such, the Appeal 2021-001889 Application 13/455,024 4 Declaration is directed to the novelty of the claims not whether the claims are subject matter eligible. In any case, we addressed the “point of novelty” issue on page 13 of our Decision in response to arguments made by Appellant in the Appeal Brief, and stated that if the Appellant is arguing here that the novelty averments are evidence that the limitations of claim 1 necessarily amount to “significantly more” than an abstract idea because the claimed apparatus is allegedly patentable over the prior art, Appellant misapprehends the controlling precedent. Although the second step in the Alice/Mayo framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for “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. v. CLS Bank Int’l, 573 U.S. 208, 217-218 (2014) (citation omitted). A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 90 (2012). As such, the averments to the novelty in the Declaration are not relevant to the issues under 35 U.S.C. § 101. As such, we fully addressed the averments in the Declaration and argument made by Appellant that the claims include a “technical point of novelty” and explained, as we do now, that even if the invention is novel, it is still be ineligible. We also addressed on page 14 of our Decision the issue of whether the feature of the claims of adjusting the data set to include additional user profiles and potentially additional attributes in a manner that anonymizes the Appeal 2021-001889 Application 13/455,024 5 users represented by the data set is a recitation of significantly more than the abstract idea recited. We determined, and we reemphasize here, that the improvements argued in the Appeal Brief and averred in the Declaration, are part of the abstract idea itself. As such, our opinion is fully responsive to the arguments made by the Appellant and the averments made in the Declaration. CONCLUSION The Appellant has not demonstrated that we misapprehended or overlooked any points. For this reason we deny the Request. Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C § Reference(s)/Basis Denied Granted 1-30 101 Eligibility 1-30 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-30 101 Eligibility 1-30 1-6, 8-14, 16-22, 24- 30 103(a) Clyne, Kim, Evenhaim 1-6, 8-14, 16-22, 24- 30 7, 15, 23 103(a) Clyne, Kim, Evenhaim, Sussman 7, 15, 23 Overall Outcome 1-30 DENIED