Promontory Financial Group LLC

Patent Trials and Appeals BoardApr 26, 2021

2020006000 (P.T.A.B. Apr. 26, 2021)

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. 15/823,170 11/27/2017 Daniel J. Ferranti SVL920170088US1_8150-0894 6797 112978 7590 04/26/2021 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER WAESCO, JOSEPH M ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 04/26/2021 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 DANIEL J. FERRANTI __________ Appeal 2020-006000 Application 15/823,170 Technology Center 3600 ____________ Before HUBERT C. LORIN, BIBHU R. MOHANTY, and BRUCE T. WIEDER, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellant has filed a Request for Rehearing (“Request”) of the Decision on Appeal (mailed Feb. 4, 2021; “Decision”) pursuant to 37 C.F.R. § 41.52(a)(4).1 Request 1 (“Appellants will argue that the Decision contains an undesignated new ground of rejection.”). In the Decision, the Board 1. affirmed the rejection of claims 1, 2, 4–9, 11–16, and 18–20 under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter and 1 “New arguments that the Board’s decision contains an undesignated new ground of rejection are permitted.” Appeal 2020-006000 Application 15/823,170 2 2. reversed the § 103 rejection of claims 1, 2, 4–9, 11–16, and 18–20 as being unpatentable over Sidebottom and Lawrence. The Request concerns only the § 101 rejection. DISCUSSION We have carefully reviewed the arguments set forth in the Request and for the following reasons we are persuaded to denominate the affirmance of the § 101 rejection in the Decision as a new ground of rejection. It is true, as Appellant argues, that the Board presented more analysis than the Examiner. Request 4. Appellant points to our claim construction analysis — something the Examiner did not provide. Id. That alone is an insufficient basis for arguing that the thrust of our decision differs substantially from that of the Examiner. This is so because “claim construction is not an inviolable prerequisite to a validity determination under § 101.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012). The claim construction analysis was an effort on our part to ascertain the basic character of the subject matter that is claimed and confirm that the Examiner’s characterization of what the claims are directed to was accurate. Here “the determination of patent eligibility require[d] a full understanding of the basic character of the claimed subject matter.” Id. at 1273–74. Only then could we decide, as a matter of law, “whether claim 1 is directed to an abstract idea. Specifically, is claim 1 directed to organizing and tracking information (Examiner) or an improvement to technology (Appellant)?” Decision 5. Appeal 2020-006000 Application 15/823,170 3 Appellant also argues that our characterization of what claim 1 is directed to differs substantially from the Examiner’s characterization. “[M]anaging operational risk is substantially different than [the Examiner’s characterization of claim 1 as being directed to, i.e.,] organizing and tracking information.” Request 5 (footnote omitted). The fact that the Board has articulated a characterization of what claims are directed to that is different from that presented by the Examiner is not dispositive. See Decision 11 (quoting Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016) (“The Board’s slight revision of its abstract idea analysis does not impact the patentability analysis.”)). But we agree that in this case our characterization departs from that of the Examiner. We looked more closely at the claim language to see if the claim is directed to an improvement in computer and interface functionality as the Appellant had argued. As a result, our characterization included a somewhat more detailed analysis of the construction to be given such claim language as “a graphical user interface” than the Examiner may have provided. See, e.g., Decision 12.2 This put a certain technical spin on our characterization that may not have been as easily appreciated from the characterization “organizing and tracking information” that the Appellant was responding to. Our particular characterization then formed the basis for our determination under step one of the Alice framework that the claim as a whole is directed to an abstract idea and not to an improvement to 2 To be fair, albeit a claim construction analysis as we have done in the decision was not included, the Examiner provided a detailed analysis that fully considered whether the Specification provided details about a technical improvement to, for example, a graphical user interface. See Final Act. 3–4. Appeal 2020-006000 Application 15/823,170 4 technology. Decision 15. In this case, such a technically-based analysis changes the thrust of the Examiner’s reasoning, to which Appellant should be given a new opportunity to respond. See In re Stepan Co., 660 F.3d 1341, 1343 (Fed. Cir. 2011) (“the appellant has not had a full and fair opportunity to litigate the Board's actual basis of rejection.”) Accordingly, we denominate the affirmance of the § 101 rejection in the Decision as a new ground of rejection. For the foregoing reasons, while we maintain that claims 1, 2, 4–9, 11–16, and 18–20 are directed to judicially-excepted subject matter without significantly more, we denominate the affirmed rejection as a NEW GROUND OF REJECTION. DECISION SUMMARY Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Denied Granted 1, 2, 4–9, 11–16, 18–20 101 Eligibility 1, 2, 4–9, 11–16, 18–20 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 2, 4–9, 11–16, 18–20 101 Eligibility 1, 2, 4–9, 11–16, 18–20 1, 2, 4–9, 11–16, 18–20 1, 2, 4–9, 11–16, 18–20 103 Sidebottom, Lawrence 1, 2, 4–9, 11–16, 18–20 Appeal 2020-006000 Application 15/823,170 5 Overall Outcome 1, 2, 4–9, 11–16, 18–20 1, 2, 4–9, 11–16, 18–20 Appeal 2020-006000 Application 15/823,170 6 NEW GROUND This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[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 Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal 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 § 41.52 by the Board upon the same record. . . . GRANTED; 37 C.F.R. § 41.50(b)