Ex parte Starke

• Decision Date: 21 April 2020
• Docket Number: Application 14/017,Appeal 2019-002445,092
• Parties: Ex parte CHRISTIAN STARKE and THORSTEN NEUMANN Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte CHRISTIAN STARKE and THORSTEN NEUMANN Technology Center 3600

Appeal 2019-002445

Application 14/017, 092

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

April 21, 2020

FILING DATE: 09/03/2013.

Before JOHN A. EVANS, JOHN P. PINKERTON, and MICHAEL M. BARRY, Administrative Patent Judges. EVANS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

INTRODUCTION

Appellant^[1] requests rehearing ("Request," "Req. Reh'g") of the Patent Trial and Appeal Board's ("Board") Decision mailed January 2, 2020 ("Decision" or "Dec."), in which we AFFIRMED the rejection of claims 1, 6, and 8 under 35 U.S.C. § 101 as being directed to non-statutory subject matter.

ANALYSIS

In the Request for Rehearing, 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 Req. Reh'g. Rather, Appellant requests rehearing for the following three reasons. First, Appellant argues the Decision contains an undesignated new ground of rejection. Id. at 3-6. Second, Appellant argues we misapprehended current Office procedure in affirming a rejection that lacks a Step 2A(ii) analysis under the Office's Revised § 101 Guidance.^[2] Id. at 6-8. Third, Appellant argues we misapprehended current Office procedure in affirming a rejection that-even if its Step 2A(ii) analysis were implicit-fails to apply current Office procedure. Id. at 9-14.

As an initial matter, Appellant's arguments are not persuasive because, as we stated in the Decision, "'[w]hether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.'" Dec. 4 (citing SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010)). Moreover, for the reasons that follow, we disagree with Appellant that the Decision contains an undesignated new ground of rejection or misapprehended current Office procedure as alleged.

Appellant asserts the Decision contains a new ground of rejection because it "relied upon both new facts and new rationales." Req. Reh'g 3. In particular, Appellant submits that the Decision relies on the following new facts:

(1) 31 U.S.C. § 5313

(2) 31 C.F.R. 103.22(a)(1)(Bank Security Act of 1970)

(3) accompanying regulations; and

(4) James Gleick, Dead as a Dollar, NEW YORK TIMES MAGAZINE (June 16, 1996), https://www.nytimes.com/ 1996/06/16/magazine/dead-as-a dollar.html

Id. (footnotes omitted). Appellant further submits that the Decision includes a plurality of "new" rationales for rejecting claim 1 as follows:

(1) claim 1 is directed to a mental process (page 12, lines 25 - 26)

(2) claim 1 fails to improve the functioning of the computer itself or any other technology or technical field under M.P.E.P. 2106.05(a) (page 15, line 2 through page 16, line 13);

(3) claim 1 "fails to satisfy the 'tied to a particular machine'" under M.P.E.P. 2106.05(b) (page 16, line 14 through page 17, line 18);

(4)"claim 1 fails to satisfy the transformation prong of the Bilski machine-or-transformation test" under M.P.E.P. 2106.05(c) (page 17, line 19 through page 18, line 8);

(5) "claim 1 does not add meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment." under M.P.E.P. 2106.05(e) and (h) (page 18, line 9 through page 19, line 7);

(6) "the additional elements of claim 1 do not amount to more than a recitation of the words 'apply it' and are no more than mere instructions to implement an abstract idea on a computerized device" under M.P.E.P. 2106.05(f) (page 19, lines 8 - 23).

Id. at 4 (footnote omitted). In support of its argument, Appellant cites Waymouth, ^[3] noting that "the court found . . . the board had asserted a new rejection in what the board . . . characterized as 'merely . . . an additional reason for affirming the examiner's rejection.'" Id. at 5 (internal quotation marks omitted). For the reasons stated below, we disagree with Appellant's characterization of the Decision.

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...