Ex Parte Ascano

Patent Trials and Appeals Board

May 30, 2019

14244477 - (D) (P.T.A.B. May. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/244,477 04/03/2014
24504 7590 06/03/2019
THOMAS I HORSTEMEYER, LLP
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
FIRST NAMED INVENTOR
Micah Ascano
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
840101-1010 8526
EXAMINER
ZIMMERMAN, JEFFREY P
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
06/03/2019 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):
uspatents@tkhr.com
ozzie. liggins@tkhr.com
docketing@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICAH ASCANO
Appeal2018-003330
Application 14/244,4 77 1
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1-9, 11-16, and 18-22. We have jurisdiction
over the pending rejected claims under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the inventor Micah Ascano as the real party in
interest. (App. Br. 2.)
Appeal2018-003330
Application 14/244,477
THE INVENTION
Appellant's disclosed and claimed invention is directed to monitoring
a process of performing professional services, in which data, representing
measured values of a parameter of the process, are plotted as a time series
with respect to control limits computed from historical variation in the
process. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method of monitoring performance of professional
services, the method comprising:
with at least one processor:
accessing a plurality of first values representing a
prediction of values of a parameter of a process;
accessing a plurality of second values representing
measured values of the parameter of the process;
computing a plurality of third values representing a
proportional difference between the plurality of second values
and respective ones of the plurality of first values;
computing a center line, an upper limit, and a
lower limit based on statistical variation of at least a portion of
the plurality of third values;
determining that one of the plurality of third values
is outside of a range between the upper limit and the lower
limit;
alerting a manager that the one of the plurality of
third values is outside of the range;
determining that a pattern in the plurality of third
values exists based at least in part on a plurality of consecutive
values of the plurality of values being on a same side of the
center line; and
adjusting the center line, the upper limit, and the
lower limit based at least in part on determining that the pattern
exists.
2
Appeal2018-003330
Application 14/244,477
REJECTIONS
The Examiner rejected claims 1-9, 11-16, and 18-22 under 35 U.S.C.
§ 101 as being directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more. (Non-Final
Act. 3.)
The Examiner rejected claims 1, 6-9, 11-16, 18-20, and 22 under
35 U.S.C. § 103 as being unpatentable over Cusson et al. (US 6,424,876 Bl,
iss. July 23, 2002) (hereinafter "Cusson"), and Lin et al. (US 2005/0038543
Al, pub. Feb. 17, 2005) (hereinafter "Lin"). (Non-Final Act. 6.)
The Examiner rejected claims 2-5 under 35 U.S.C. § 103 as being
unpatentable over Cusson, Lin, and Lon Roberts, SPC FOR RIGHT-BRAIN
THINKERS, PROCESS CONTROL OVER NON-STATISTICIANS, ISBN 0-87389-
663-7, ASQ Quality Press (2006) ("Roberts"). (Non-Final Act. 16.)
The Examiner rejected claim 21 under 35 U.S.C. § 103 as being
unpatentable over Cusson, Lin, and Richard Luecke, SCUTTLE YouR SHIPS
BEFORE ADVANCING: AND OTHER LESSONS FROM HISTORY ON LEADERSHIP
AND CHANGE FOR TODAY'S MANAGERS, ISBN 0-19-508408-X, Oxford Univ.
Press (1994) ("Luecke"). (Non-Final Act. 18.)
ISSUES ON APPEAL
Appellant's arguments in the Appeal and Reply Briefs present the
following issues: 2
2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Oct. 13, 2017); the Reply Brief
(filed Feb. 6, 2018); the Non-Final Office Action (mailed April 14, 2017);
and the Examiner's Answer (mailed Dec. 6, 2017), for the respective details.
3
Appeal2018-003330
Application 14/244,477
Issue One: Whether the Examiner erred in finding claims 1-9, 11-16,
and 18-22 are directed to non-statutory subject matter. (App. Br. 6-18;
Reply Br. 4--9.)
Issue Two: Whether the Examiner erred in finding the combination of
Cusson and Lin teaches or suggests the independent claim 1 limitations,
accessing a plurality of first values representing a prediction of
values of a parameter of a process,
computing a plurality of third values representing a
proportional difference between the plurality of second values and
respective ones of the plurality of first values,
and
computing a center line, an upper limit, and a lower limit based
on statistical variation of at least a portion of the plurality of third
values,
and the commensurate limitations recited in independent claims 16 and 19.
(App. Br. 18-21; Reply Br. 9-11.)
Issue Three: Whether the Examiner erred in finding the combination
of Cusson and Lin teaches or suggests the limitation "the graphical depiction
is displayed while the process is ongoing," as recited in independent claim 9.
(App. Br. 22.)
Issue Four: Whether the Examiner erred in finding the combination
of Cusson, Lin, and Luecke teaches or suggests the limitation "determining
that a worker is not trained to perform a task being assigned to the worker in
response to determining that one of the plurality of third values is outside of
the range," as recited in dependent claim 21. (App. Br. 23-24.)
4
Appeal2018-003330
Application 14/244,477
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv). Except where
noted, we adopt the Examiner's findings and conclusions as our own, and
we add the following primarily for emphasis.
First Issue
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101, because the exemplary claim 1 "is directed to applying
statistical process controls to data, which is an abstract idea." (Non-Final
Act. 3.) Particularly, the Examiner finds:
the pending claims receive data ( e.g., a plurality of first values
representing a prediction of values of a parameter of a process,
a plurality of second values representing measured values of the
parameter of the process, etc.), analyze that data (e.g., compute
a plurality of third values representing a proportional difference
between the plurality of second values and respective ones of
the plurality of first values, computing a center line, an upper
limit, and a lower limit based on statistical variation of at least a
portion of the plurality of third values, determining that one of
the plurality of third values is outside of a range between the
upper limit and the lower limit, determining that a pattern in the
plurality of third values exists based at least in part on a
plurality of consecutive values of the plurality of values being
on the same side of the center line, etc.) and update information
based on the analyzed data ( e.g., alerting a manager that one of
the plurality of third values is outside of the range, adjusting the
center line, the upper limit, and the lower limit based at least in
part on determining that the pattern exists, etc.).
(Non-Final Act. 3--4) (emphasis added) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)); see also Alice Corp. Pty. Ltd.
v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (Describing the two-step
5
Appeal2018-003330
Application 14/244,477
framework "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.").)
After the mailing of the Answer and the filing of the Briefs in this
case, the USPTO published revised guidance on the application of§
101(2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (hereinafter "Memorandum").) Under the Memorandum,
the Office first looks to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h) (9th ed.
Rev. 08. 2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 56.
6
Appeal2018-003330
Application 14/244,477
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and we add the
following primarily for emphasis and clarification with respect to the
Memorandum.
Appellant argues "the present claims have been oversimplified in a
similar manner to the claims held to be patent-eligible" in McRo, Inc. v.
Bandai Namco Games America, 837 F.3d 1299 (Fed. Cir. 2016) (App. Br.
10), and similarly argues that "the Office Action fails to consider the claims
as a whole." (App. Br. 12) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016).)
Appellant further contends that because:
the present claims are directed to optimizing detection and
correction of work performance and budget related issues by
proportionately comparing measured values to predicted values,
the claims "are patent-eligible because they recite significantly more than an
abstract idea." App. Br. 16 (citing Enfish, 822 F.3d at 1335); see also App.
Br. 16-18 (citing Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1350 (Fed. Cir. 2016).)
We agree with the Examiner that the claimed invention is directed to
an abstract idea. (See Ans. 3-8.) Under Supreme Court precedent, claims
directed purely to an abstract idea, without significantly more, are patent in-
eligible. As set forth in the Revised Guidance, which extracts and
synthesizes key concepts identified by the courts, abstract ideas include (1)
mathematical concepts, (2) certain methods of organizing human activity,
and (3) mental processes. Among those certain methods of organizing
human activity listed in the Revised Guidance are fundamental economic
7
Appeal2018-003330
Application 14/244,477
practices, such as the concept of intermediated settlement in Alice, and the
concept of hedging in Bilski v. Kappas, 561 U.S. 593 (2010). Like those
concepts claim 1 recites a fundamental economic practice. Claim 1 also
recites mathematical concepts.
Specifically, claim 1 recites operations that would ordinarily take
place while reviewing the billing practices of one or more individuals as part
of "monitoring performance of professional services" which itself is part of a
fundamental economic activity, such as "mitigating risk." (Memorandum,
Section I (Groupings of Abstract Ideas).) Particularly, a review of billing
practices would compare a "prediction of values of a parameter of a process"
( the predicted or promised number of hours necessary to perform the
professional services) to the "measured values of the parameter of the
process" (the actual number of hours spent to perform the professional
services). As part of this fundamental economic practice, professional
services are often delivered on an hourly rate, and the economic links
connecting human interactions to hourly billing have long been known as a
source of economic dispute. 3
Additionally, claim 1 recites the mathematical and statistical tools of
quantitative analysis as a solution to handling the qualitative issues involved
in "monitoring performance of professional services." Each of the claimed
"accessing," "computing," "determining," and "adjusting" steps of claim 1
3 See, e.g., Scott Turow, The Billable Hour Must Die, ABA J. (2007),
http://www. abaj oumal. com/magazine/ article/the_billable_hour_must_die
("As a result of hourly billing, the fee collecting process has grown far more
fractious. There are now law firms that specialize in disputing other firms'
bills-and in-house nudniks who demand copious details and then flyspeck
them.")
8
Appeal2018-003330
Application 14/244,477
perform steps of "observation, evaluation, judgment, opinion," and involve
mathematical relationships while performing mathematical calculations.
(Memorandum, Section I (Groupings of Abstract Ideas).)4
We are unpersuaded by Appellant's argument that the Examiner has
failed to "consider the claims as a whole." The Examiner finds, and we
agree, that:
Appellant's preferred language of "statistically processing costs
associated with each matter and performing actions when a
value is outside of a range or a pattern occurs in data by
allowing for a manager to be alerted immediately when a value
falls outside of a determined range, for example, if an employee
bills hours outside of a practical range, where the range is based
on the budget and for the range to adjust if a pattern results in
consecutive values, which can ensure the range stays valid as
improvements in processes and policies occur" [ App. Br. 8-9]
still describes abstract data collection,
evaluation/manipulation, and outputs related to business
problems.
4 See also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of
hedging, described in claim 1 and reduced to a mathematical formula in
claim 4, is an unpatentable abstract idea "); Alice, 573 U.S. at 218 ("These
claims are drawn to the abstract idea of intermediated settlement."); buySafe,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims that "are
squarely about creating a contractual relationship----a 'transaction
performance guaranty"' held as "directed to an abstract idea"); Accenture
Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed.
Cir. 2013) (claims reciting "generalized software components arranged to
implement an abstract concept [of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer" not patent eligible); Bancorp Servs., L.L. C. v. Sun Life Assur. Co.
of Can. (U.S.), 687 F.3d 1266, 1277 (Fed. Cir. 2012) (determining a
"'method for managing a life insurance policy comprising' seven steps" is
abstract).
9
Appeal2018-003330
Application 14/244,477
(Ans. 7) (emphasis added.) Phrasing the performance of the method in the
context of Appellant's disclosure does not alter the abstract nature of the
limitations reciting the judicial exception as discussed above.
Appellant further argues that under Finjan, Inc. v. Blue Coat Systems,
Inc., 879 F.3d 1299 (Fed. Cir. 2018), that in the analysis "at step one, we
must first examine the[] patent's 'claimed advance' to determine whether
the claims are directed to an abstract idea." (Reply Br. 5) (quoting Finjan,
879 F.3d at 1303.) We find the Examiner's analysis supra satisfies the
requirements of Finjan. 5
Appellant points to nothing in the claim or in the disclosure that
indicates (1) a particular computer system architecture, (2) non-generic, non-
routine, and non-conventional elements are used to perform the method, or
(3) any kind of technological improvement. No particular machine is
claimed, in that the disclosure refers only to use of "computing devices 114
and 118," such as a "desktop or laptop computer" or a "personal digital
assistant" or "smartphone." (Spec. ,r,r 24--25.) With respect to the
"processor" of claim 1, the disclosure presents "processing unit 920" but
provides no further description. (See Spec. ,r,r 77, 79, 81, Fig. 9.) Nor does
the claim recite an additional element or elements that reflect an
improvement in the functioning of a computer, or an improvement to other
5 We note that immediately following the portion of Finjan quoted by
Appellant, Finjan then states that "[i]n cases involving software innovations,
this inquiry often turns on whether the claims focus on 'the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool." Finjan, 879 F.3d at 1303 (quoting Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36 (Fed. Cir. 2016)).
10
Appeal2018-003330
Application 14/244,477
technology or technical field. (See Ans. 4, 8-10.) Rather, the limitations are
part of the abstract idea itself. (See Alice, 573 U.S. at 222 ("In holding that
the process was patent ineligible, we rejected the argument that
'implement[ing] a principle in some specific fashion' will 'automatically
fal[l] within the patentable subject matter of§ 101. "') ( alterations in
original) (quoting Parker v. Flook, 437 U.S. 584, 593 (1978))).)
While claim 1 recites "alerting a manager that the one of the plurality
of third values is outside of the range," this claim element adds insignificant
extra-solution activity to the judicial exception. (See also Memorandum,
n.31.) Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether
the Judicial Exception Is Integrated Into a Practical Application). Nor do we
find the claim includes a specific limitation or a combination of elements
that amounts to significantly more than the judicial exception itself. (See
Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial
Exception, Evaluate Whether the Claim Provides an Inventive Concept); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1359 (Fed. Cir. 2018) (Moore, J., concurring) ("the 'inventive concept'
cannot be the abstract idea itself').) The claimed "processor" element is
recited as a generic computer component that is well-understood, routine,
and conventional. (See Ans. 4, 8-10; Spec. ,r,r 75-83, Fig. 9; Alice, 573 U.S.
at 212 ("merely requiring generic computer implementation fails to
transform [the] abstract idea into a patent-eligible invention").)
11
Appeal2018-003330
Application 14/244,477
Accordingly, we agree with the Examiner that claim 1 is patent in-
eligible, as well as independent claims 16 and 19 not separately argued, and
all claims dependent therefrom. (See App. Br. 18.)
Second Issue
In finding that the combination of Cusson and Lin teaches or suggests
the claim 1 limitations at issue, the Examiner relies on the disclosure in
Cusson of a prior art use of a control chart in which a target for the process
being measured is designated by target line, and individual or consecutive
measurements deviating from the target by more than a preset number of
standard deviations are flagged. The Examiner further relies on a set of
normalized mean data on a mean control chart representing data from a
plurality of recipes for manufacturing semiconductor wafers. (Non-Final
Act. 6-8; Ans. 11-13; Cusson 1 :41-53, 4:46-5:5, Fig. 3, see also Fig. 1.)
Appellant argues that "[t]he output parameter in Cusson of the
manufacturing entity merely discusses having a single associated target
value. (Cusson, col. 2, lines 33-35). More specifically, Cusson discusses a
'target value' rather than 'target values,' as relied upon in the Examiner's
Answer." (Reply Br. 10.) Appellant contends "Cusson fails to show or
suggest that the target represents 'a prediction' of that output parameter or
that the target line 16 is 'a prediction of values.' (Reply Br. 10.) Appellant
further contends "Cusson does not show or suggest a 'plurality of second
values' or a 'plurality of first values.'" (Reply Br. 11.)
We are not persuaded by Appellant's arguments. While we disagree
with the Examiner's finding that Cusson's target line "necessarily represents
a plurality of values" (Ans. 11), we agree with the Examiner's finding that
that "Cusson' s 'mean value' represents the claimed 'plurality of second
12
Appeal2018-003330
Application 14/244,477
values' and Cusson's 'target' represents the claimed 'plurality of predicted
values."' (Ans. 11.)
We note Cusson' s Fig. 3 displays a set of "normalized mean data" in
which each data point represents the percentage deviation from the target for
an individual wafer manufacture under a particular recipe type. (See Cusson
equation (1) at 4:38--45.) Each recipe type has its own "target oxide
thickness," corresponding to the plurality of first values. Each value for X-
bar represents the average oxide thickness for the individual wafer
manufacture, taken from "oxide thickness measurements in the top, bottom,
center, left, and right locations" (see Cusson 4:26-45), and as such
corresponds to the plurality of second values. Further, Cusson teaches both
that (1) analysis of "aggregate data," corresponding to data from multiple
recipes, and that (2) analysis of individual recipe data, may result in different
rule violations, indicating that the aggregate data relies on targets that at a
minimum are tailored for a particular recipe. ( See Cusson equation ( 1) at
4:38--45; 4:60-55, Figs. 3-5.)
We further agree with the Examiner's finding that "[b ]y virtue of
describing a statistical process control 'target,' [in Cusson] such points
necessarily represent 'a prediction of values of the parameter of a process"'
(Ans. 11 ), as the target, being the desired outcome, represents the predicted
value if the process proceeds fully as planned.
Accordingly, we sustain the Examiner's rejection of independent
claim 1, as well as independent claims 16 and 19 not separately argued, and
dependent claims 2-8, 11-16, 18-20, and 22 not separately argued with
particularity. (See App. Br. 21, 23.)
Third Issue
13
Appeal2018-003330
Application 14/244,477
Appellant argues that combination of Cusson and Lin fails to teach or
suggest the claim 9 limitation at issue because:
Cusson is silent as to rendering the normalized mean control
chart while the process is ongoing ( Cusson, col. 2, lines 62 and
63). Rather, Cusson merely discusses that "the normalized
mean data is included on a mean control chart 150." (Cusson,
col. 4, lines 46-49).
(App. Br. 22.) We are not persuaded by Appellant's arguments. The
Examiner finds, and we agree, that "[a] purpose, if not the primary purpose,
of such statistical process control techniques [in Cusson] is to, e.g., detect
process changes or trends that may be corrected by process optimization or
redesign" (Ans. 13) (citing Cusson 1:20-21), and further that "Cusson
describes a situation in which the system requires a user to periodically
review control charts not less frequently than in eight week intervals." (Ans.
13) (citing Cusson 5:39--48.) We see no error in the Examiner's detailed
findings, and Appellant does not address the Examiner's findings in the
Reply.
Accordingly, we sustain the Examiner's rejection of dependent
claim 9.
Fourth Issue
Appellant argues that Luecke fails to show or suggest the claim 21
limitation at issue, because "Luecke fails to show or suggest that a worker is
determined to not be trained in response to anything, much less doing so in
response to a determination that one of the plurality of third values is outside
of the range" (App. Br. 24), although Appellant admits that "Luecke
discusses that 'an untrained operator' can be related to 'special causes for
variations."' (App. Br. 23.)
14
Appeal2018-003330
Application 14/244,477
We are not persuaded by Appellant's argument. The Examiner finds,
and we agree, that:
Luecke discusses an "untrained operator" in the context of
identifying "'special' causes for variation" in manufacturing
processes represented on control charts. Luecke, at 66-67. In
statistical process control, such "variations" are described by
measured values falling outside of the expected range of values.
As such, Luecke identifies a reason for "variation," i.e.,
measured values falling outside of the expected range of values,
as "an untrained operator."
(Ans. 14.) We see no error in the Examiner's detailed findings, and
Appellant does not address the Examiner's findings in the Reply.
Accordingly, we sustain the Examiner's rejection of dependent
claim 21.
CONCLUSION
For the reasons stated above, we affirm:
1. the non-statutory subject matter rejection of claims 1-9, 11-16, and
18-22;and
2. the obviousness rejections of claims 1-9, 11-16, and 18-22.
DECISION
The Examiner's decision rejecting claims 1-9, 11-16, and 18-22
under 35 U.S.C. § 101 is affirmed.
The Examiner's decision rejecting claims 1-9, 11-16, and 18-22
under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
15
Appeal2018-003330
Application 14/244,477
AFFIRMED
16