Mark Edward. Shepherd et al.

Patent Trials and Appeals Board

Nov 27, 2019

13829844 - (D) (P.T.A.B. Nov. 27, 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.
13/829,844 03/14/2013 Mark Edward Shepherd 3004US/209714 2003
121363 7590 11/27/2019
Shook, Hardy & Bacon L.L.P.
(Adobe Inc.)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
EXAMINER
AQUINO, WYNUEL S
ART UNIT PAPER NUMBER
2199
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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):
IPRCDKT@SHB.COM
docketing.shb@clarivate.com
seaton@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK EDWARD SHEPHERD,
MICHAEL JAMES ANDREW SMITH, GEORGE COMNINOS, and
GAVIN MURRAY PEACOCK
Appeal 2018-008904
Application 13/829,844
Technology Center 2100
BEFORE ROBERT E. NAPPI, JOHN A. EVANS, and
LINZY T. McCARTNEY, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
final rejection of claims 1 and 3–20. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies the real party in interest as Adobe Systems
Incorporated. Appeal Brief 4, filed March 27, 2018 (“App. Br.”).
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BACKGROUND
This patent application concerns visually combining instrumentation
and sampling data. See Specification ¶¶ 1, 26, filed March 14, 2013
(“Spec.”). Claim 1 illustrates the claimed subject matter:
1. A computerized method of visually depicting
instrumented and sampled data, the method comprising:
accessing a first stream of instrumented data, the
instrumented data collected via execution of code contained in a
user-scriptable engine;
accessing a second stream of sampled data, the sampled
data collected by monitoring execution of code contained in
scripts executed by the user-scriptable engine;
simultaneously displaying an aggregated version of a
portion of the instrumented data and an aggregated version of a
first portion of the sampled data in one or more viewing regions;
receiving a user interaction directly selecting a displayed
native function associated with a subset of the aggregated version
of the portion of the instrumented data; and
in response to receiving the user interaction selecting the
native function, filtering the aggregated version of the first
portion of the sampled data to change to depict only an
aggregated version of a second portion of the sampled data that
corresponds to sampled data taken while executing the native
function.
App. Br. 37.

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REJECTIONS2
Claims 35 U.S.C. § References
1, 3–11, 14–20 101
1, 3–11, 14–18, 20 103(a) Reilly,3 Fanning4
19 103(a) Reilly, Fanning, Smith5
DISCUSSION
We have reviewed the Examiner’s rejections and Appellant’s
arguments, and we agree with Appellant that the Examiner has not shown
that claims 1, 3–11, and 14–20 are directed to an abstract idea under § 101 or
would have been obvious under § 103. We address these rejections in turn.
Section 101 Rejection
The Examiner determined that claims 1, 3–11, and 14–20 are
“directed to the abstract idea of merely aggregating data for a presentation in
a view.” Final Office Action 10–11, mailed September 25, 2017 (“Final
Act.”). The Examiner determined that the additional elements recited in
these claims perform well-understood, routine, and conventional activities
but cited no evidence in support of this determination. See Final Act. 3; Ans.
22.
Appellant argues that claims 1, 3–11, and 14–20 are patent eligible

2 The Examiner withdrew the rejections of claim 12 under § 101 and § 103.
Examiner’s Answer 3, mailed July 25, 2018 (“Ans.”). Because claim 13
depends from claim 12, we understand the Examiner to also have withdrawn
the rejections of claim 13 under § 101 and § 103.
3 Reilly (US 8,074,207 B1; Dec. 6, 2011).
4 Fanning et al. (US 2013/0249917 A1; Sept. 26, 2013).
5 Smith (US 2005/0067498 A1; Mar. 31, 2005).
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because they are similar to the patent-eligible claims in the McRO,6 DDR,7
and Core Wireless8 decisions. See App. Br. 7–13. Appellant also contends
that the Examiner failed to provide the required evidence that the recited
additional elements perform well-understood, routine, and conventional
activities. See Reply Brief 3–5, filed September 19, 2018 (“Reply Br.”).
Appellant has persuaded us that the Examiner erred. Section 101 of
the Patent Act provides that “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof” is patent eligible. 35 U.S.C. § 101. But the Supreme Court has long
recognized an implicit exception to this section: “Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a
claim falls within one of these excluded categories, the Court has set out a
two-part framework. The framework requires us first to consider whether the
claim is “directed to one of those patent-ineligible concepts.” Alice, 573 U.S.
at 217. If so, we then examine “the elements of [the] claim both individually
and ‘as an ordered combination’ to determine whether the additional
elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the
claim for an “inventive concept,” “an element or combination of elements

6 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
7 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
8 Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed.
Cir. 2018).
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that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Alice,
573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
The Patent Office has revised its guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”); see also USPTO, Memorandum on
Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (Apr.
19, 2018), available at https://www.uspto.gov/sites/default/files/documents
/memo-berkheimer-20180419.PDF (“Berkheimer Memo”). As relevant here,
the Revised Guidance explains that, when determining whether a claim has
an inventive concept, an examiner should consider whether the additional
claim elements add “a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field” or
“simply append[] well-understood, routine, conventional activities
previously known to the industry specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
Whether additional claim elements add well-understood, routine,
conventional activities is a factual determination that an examiner must
support in at least one of the ways specified in the Berkheimer Memo. See
Berkheimer Memo 2–4. The specified ways include citing (1) “an express
statement in the specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine, conventional
nature of the additional element(s),” (2) “one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine,
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conventional nature of the additional element(s),” (3) “a publication that
demonstrates the well-understood, routine, conventional nature of the
additional element(s),” or (4) “taking official notice of the well-understood,
routine, conventional nature of the additional element(s).” Berkheimer
Memo 3, 4.
Here, the Examiner has not adequately supported the finding that the
additional elements recited in claims 1, 3–11, and 14–20 add well-
understood, routine, and conventional activities. The Examiner determined
that the recited additional elements include “a computer infrastructure, a
processor, a computer usable storage device, and a computer system
comprising a CPU, a computer readable memory and a computer readable
storage media.” Final Act. 3. The Examiner found that these elements
perform well-understood, routine, and conventional activities, but the
Examiner cited no support for this finding, much less provided the support
required by the Berkheimer Memo. See Final Act. 3; Ans. 3. As a result, we
do not sustain the Examiner’s § 101 rejection of claims 1, 3–11, and 14–20.
Section 103 Rejection
Claim 1 recites “receiving a user interaction directly selecting a
displayed native function associated with a subset of the aggregated version
of the portion of the instrumented data” and “in response to receiving the
user interaction selecting the native function, filtering the aggregated version
of the first portion of the sampled data to change to depict only an
aggregated version of a second portion of the sampled data that corresponds
to sampled data taken while executing the native function.” App. Br. 37.
Appellant argues that the Examiner’s combination of Reilly and Fanning
does not teach or suggest these limitations. See App. Br. 20–25. According
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to Appellant, the Examiner acknowledged that Reilly does not explicitly
teach or suggest these limitations. See App. Br. 21–22. Appellant contends
that the cited portions of Fanning do not teach or suggest depicting only the
recited second portion of the sampled data in response to a user selecting a
native function associated with the recited portion of the instrumented data
as required by the disputed limitations. See App. Br. 20–25.
Appellant has persuaded us that the Examiner erred. The Examiner
found that Reilly “may not explicitly teach” the disputed limitations but
Fanning remedies these deficiencies. See Final Act. 7–15; Ans. 26–29. The
Examiner found that Fanning discloses, for example, that “native functions
. . . are checked with associated visual depictions synchronized provided” in
respective windows and that “‘native functions’ . . . as diagnostic messages
are selectable with visual depictions . . . synchronized upon selection.” See
Ans. 27, 28; see also Final Act. 8–9, 14–15. The Examiner also found that
Fanning discloses that a user can create a query that returns filtered results.
See Ans. 28; see also Final Act. 8–9, 14–15. Even if Fanning adequately
supports these general teachings, as argued by Appellant, the Examiner has
not adequately explained how these disclosures teach or suggest “in
response to receiving the user interaction selecting the native function
[associated with a subset of the aggregated version of the portion of the
instrumented data], filtering the aggregated version of the first portion of the
sampled data to change to depict only an aggregated version of a second
portion of the sampled data that corresponds to sampled data taken while
executing the native function” as recited in claim 1. As a result, we do not
sustain the Examiner’s obviousness rejection of claim 1 and its dependent
claims. Because the Examiner’s obviousness rejections of independent
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claims 9 and 15 and their respective dependent claims suffer from similar
flaws, we also do not sustain the Examiner’s rejections of these claims.
CONCLUSION
Claims 35 U.S.C. § References Affirmed Reversed
1, 3–11, 14–
20 101
1, 3–11,
14–20
1, 3–11, 14–
18, 20 103(a) Reilly, Fanning
1, 3–11,
14–18, 20
19 103(a) Reilly, Fanning, Smith 19
Overall
Outcome
1, 3–11,
and 14–20

REVERSED