Ex parte Jones

• Decision Date: 30 July 2020
• Docket Number: Appeal 2018-008427,253,Application 12/236
• Parties: Ex parte ANGELA RICHARDS JONES Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte ANGELA RICHARDS JONES Technology Center 3600

Appeal 2018-008427

Application 12/236, 253

United States Patent and Trademark Office, Patent Trial and Appeal Board

July 30, 2020

FILING DATE 09/23/2008

Before HUBERT C. LORIN, BRADLEY B. BAYAT, and AMEE A. SHAH Administrative Patent Judges.

DECISION ON REQUEST FOR REHEARING

SHAH Administrative Patent Judge.

STATEMENT OF THE CASE

The Appellant^[1] filed a Request for Rehearing ("Request" or "Req.") pursuant to 37 C.F.R. § 41.52, on June 15, 2020. The Request seeks reconsideration of our Decision on Appeal, mailed April 29, 2020 ("Decision" or "Dec.") affirming the Examiner's rejection of claims 21-37 and 39-41 under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. We have jurisdiction over the Request under 35 U.S.C. § 6(b).

APPLICABLE REQUEST FOR REHEARING RULES

The Appellant "may file a single request for rehearing within two months of the date of the original decision of the Board." 37 C.F.R. § 41.52(a)(1). "Arguments not raised, and Evidence not previously relied upon . . . are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4)." Id. Permitted new arguments are limited to: (a) new arguments based upon a recent relevant decision of either the Board or a Federal Court; (b) new arguments responding to a new ground of rejection designated pursuant to § 41.50(b); or (c) new arguments that the Board's decision contains an undesignated new ground of rejection. See 37 C.F.R. § 41.52(a)(2)-(4).

THE APPELLANT'S ASSERTIONS

In the instant case, the Appellant does not dispute our conclusion that the claims are directed to a patent-ineligible abstract idea under 35 U.S.C. § 101. See generally Request. Rather, the Appellant argues the Decision contains an undesignated new ground of rejection. Id. Specifically, the Appellant provides four reasons for their assertion that by applying the Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"), "the Board relied upon findings and legal rationales for which Appellants have not have a fair opportunity to address" and thus should have designated a new ground of rejection "pursuant to 37 § 34 41. 50(b)" (Req. 5):

(1) the Board "asserts 'the Examiner determines that the additional elements or combination of elements do not integrate this exception into a practical application'," but does not "cite[] to any portion of the appealed Office Action to support such a finding" (id. at 4-5 (quoting Dec. 7-8));

(2) the Board performs "new analysis as to what elements recite the judicial exception (i.e., Prong One of Revised Step 2A) [of the Revised Guidance] constitutes a new grounds of rejection to which Appellants have not had a fair opportunity to respond" (id. at 6);

(3) the Board "presents substantial analysis to support a finding that 'claim 21 does not contain an element that imposes a meaningful limit on the abstract idea that integrates the abstract idea into a practical application'" with "analysis and accompanying findings [that] were not presented by the Examiner in either the appealed Office Action or the Examiner's Answer. Consequently, Applicants have not had the opportunity to respond to the changed thrust of the rejection" (id. at 7); and

(4) the Board "reli[ies] upon new case law in support of the Board's Prong One analysis constitutes a new grounds of rejection" (id.).

ANALYSIS

As an initial matter, the Appellant's arguments are not persuasive because "[w]hether a claim is drawn to patent-eligible subject matter under 35 U.S.C. § 101 is a question of law, which we review de novo. SRI Int'l., Inc. v. Cisco Sys., Inc., 930 F.3d 1295 1302 (Fed. Cir. 2019)." In re Rudy, 956 F.3d 1379, 1383 (Fed. Cir. 2020)). Office guidance, such as the Revised Guidance, "sets out agency policy with respect to the USPTO's interpretation of the subject matter eligibility requirements of 35 U.S.C. § 101 in view of decisions by the Supreme Court and the Federal Circuit." Revised Guidance, 84 Fed. Reg. at 51. But the "guidance does not constitute substantive rulemaking and does not have the force and effect of law." Id. Instead "[r]ejections will continue to be based upon the substantive law[.]" Id.; see also Rudy, 956 F.3d at 1382 ("Office Guidance is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding on our patent eligibility analysis.").

Additionally, for the reasons that follow, we disagree with the Appellant that the Decision contains an undesignated new ground of rejection.

Whether there is a new ground of rejection depends upon whether the basic thrust of a rejection has remained the same. See In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976). A new ground of rejection may be present when a decision by the Board relies upon new facts or a new rationale not previously raised to the Appellant. See In re Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013) (quoting In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011). The rejection on appeal, however, need not be repeated in haec verba to avoid being considered a new ground of rejection. See id. For example, a decision does not contain a new ground of rejection just because it elaborates or explains a rejection, thoroughly responds to an appellant's arguments using different language, or restates the reasoning of the rejection in a different way-so long as the "basic thrust of the rejection" is the same. In re Kronig, 539 F.2d at 1303; see also In re Jung, 637 F.3d 1356, 1364-65 (Fed. Cir. 2001) (additional explanation responding to arguments offered for the first time "did not change the rejection" and appellant had fair opportunity to respond).^[2]

Here, the basic thrust of the Examiner's rejection of claims 21-37 and 39-41 under 35 U.S.C. § 101 has not changed. The legal basis and rationale provided for this rejection in each of the Final Office Action, the Examiner's Answer, and the Decision follow judicial precedent.^[3] Under the first step of the Mayo/Alice framework, the Final Office Action, Examiner's Answer, and Decision each determines that the claims are directed to an abstract idea. See Final Act. 8-12; Ans. 3-4; Dec. 7, 10-11 (explaining why the Examiner's Step 2A analysis was reasonable). Under the second step of the Mayo/Alice framework, the Final Office Action, the Examiner's Answer, and the Decision each determines that the limitations of the claims, taken individually and as an ordered combination, do not amount to significantly more than the abstract idea. See Final Act. 12-13; Ans. 7-8; Dec. 16-21 (explaining why the Examiner's Step 2B analysis was reasonable). "While the Board's explanation may go into more detail than the examiner's, that does not amount to a new ground of rejection." In re Adler, 723 F.3d 1322, 1327-28 (Fed. Cir. 2013) (citing Jung, 637 F.3d at 1365).

With respect to the Revised Guidance Step 2A, Prong One, the Decision relies on representative claim 21's limitations to determine that the claims recite an abstract idea "consistent with the Examiner's characterization." Dec. 9-10. The Examiner similarly relied on the claimed limitations. See Final Act. 8. The Decision identifies each step of claim 21 as corresponding to an abstract idea in the category of "[c]ertain method[] of organizing human activity . . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)." Dec. 9-10. This tracks the Examiner's rejection, which specifically lists the limitations and discusses how those limitations recite an abstract idea of "a method of organizing human activities related to event planning and calendar management." Final Act. 9; see also id. at 8 (listing the limitations and determining "[t]he claimed limitations recite the abstract idea of transmitting and receiving event scheduling related communications to prevent scheduling conflicts and managing calendar event data structures"); 9-11 (determining the Appellant's claims to be "similar to the concepts of Plant Bingo, LLC v. VKGS LLC, 576 Fed.Appx. 1005 (Fed. Cir. Aug. 26, 2014)," "like those of Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, . . . (Fed. Cir. 2016)," and that "the limitations for forwarding and receiving event details, responses, and notifications over a computer network and updating event data in a calendaring application limitations . . . are analogous to those of Accenture Global Services, GmbH v. Guidewire Software, 728 F.3d 1336 . . . (Fed. Cir. 2013)").

That we provided some additional facts from the Specification as background for the invention and cited to different judicial decisions than those cited by the Examiner for concepts similar to the Appellant's claims do not change the basic thrust of our analysis or the relevant law. See Dec 9-11; cf. Req. 7 (arguing that the citations to other cases is a "reliance upon new case law"). We note that the Appellant "neither points to specific facts found by the Board but not by the examiner, nor illustrates how any such facts formed the basis of the Board's rejection." Adler, 723 F.3d at 1327. Further, that the Board's organization of the analysis in determining whether the claims recite and are directed to an abstract idea under the first step of the Mayo/Alice framework have been different from the Examiner's organization, i.e., "the Examiner's analysis began with the conclusion that the claim was 'directed to a judicial exception' without first identifying the 'the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea'" (Req. 6 (footnote omitted)), does not change the thrust of...