Ex Parte Batot et al

Patent Trial and Appeal Board

Jan 23, 2018

11523200 (P.T.A.B. Jan. 23, 2018)

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.
11/523,200 09/19/2006 Fronz F. Batot END920060069US1 6145
30449 7590 01/25/2018
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
ANDERSON, FOLASHADE
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
01/25/2018 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):
30449@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRONZ F. BATOT, RANDY S. JOHNSON,
TEDRICKN. NORTHWAY, PAUL D. PETERSON, and
HOWARD N. SMALLOWITZ
Appeal 2016-001015
Application 11/523,200
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’
final decision rejecting claims 1—16. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellants’ invention is directed to disaster recovery management
services that support physical disaster recovery operations. Spec. 1.
Appeal 2016-001015
Application 11/523,200
Claim 1 is illustrative:
1. A method for prioritizing a multiplicity of management
services which manage physical disaster recovery operations, the
method comprising the steps of:
a computer determining from a database a criticality of
each of the management services;
the computer determining from a database an urgency of
recovery of each of the management services;
the computer determining from a database respective
numbers of the management services which support each of the
management services;
the computer determining and electronically reporting a
priority to perform each of the management services based on (a)
the criticality of said each management service, (b) the urgency
of said each management service and (c) the number of the
management services which support said each management
service;
the computer selecting one or more of the management
services whose determined priority exceeds a predetermined
threshold; and
performing the selected one or more management
services, wherein implementing the physical disaster recovery
operations in response to a disaster comprises said performing
the selected one or more management services, and wherein the
physical disaster recovery operations comprise restoring services
that existed prior to the disaster, providing services for
emergency and interim relief in response to the disaster, or a
combination thereof.
Appellants appeal the following rejection:
Claims 1—16 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
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Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct.
2347, 2354 (2014) (internal quotations and citation omitted).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 76—77 (2012)).
In accordance with that framework, we first determine whether the claim is
“directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter”); Parker v. Flook, 437 U.S. 584, 594—95 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals”).
The patent-ineligible end of the spectrum includes fundamental
economic practices {Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611);
mathematical formulas {Flook, 437 U.S. at 594—95); and basic tools of
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scientific and technological work (Benson, 409 U.S. at 69). On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber (Diamond, 450 U.S. at 184 n.7 (“tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores”)), and a process
for manufacturing flour (Gottschalk, 409 U.S. at 69).
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an “inventive concept”—an element
or combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id. (internal quotations and
citation omitted).
ANALYSIS
The Examiner held that the claims were directed to the abstract idea of
a method of organizing human activities, managing a physical disaster
recovery operation. Final Act. 6. The Examiner further held that the instant
Specification describes the management services as, for example, search and
rescue, remote evacuation, and morgue and that a person of ordinary skill
would have recognized these activities as fundamentally human in nature
within the scope of common commercial practices of each of the
management services. Ans. 5.
In regard to the second step of Alice, the Examiner found that
elements in addition to the abstract idea amount to no more than a recitation
of a generic computer structure that serves to perform generic computer
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functions that are well-understood, routine and conventional. Final Act. 6.
The Examiner also found that the database is simply a look-up table in
which the users enter the relevant information based on the user’s
experience, research, and logic. Ans. 5.
The Examiner held that the recitation of performing the selected one
or more management services is a recitation of insignificant extra-solution
activity.
We agree with the Examiner that the claim 1 is directed to an abstract
idea for the reasons given by the Examiner. In addition, we note that claim 1
is directed to data gathering, storing and processing and that claims
involving data collection, analysis, and display have been found to be
directed to an abstract idea. See Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (holding that “ collecting information, analyzing
it, and displaying certain results of the collection and analysis” are “a
familiar class of claims ‘directed to’ a patent-ineligible concept”); see also
In re TLI Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016).
Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data collection, analysis, and
display and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract
because they “focused on a specific asserted improvement in computer
animation”). As such, we agree that the other recitations in the claims do
not amount to significantly more than the abstract idea. We also agree with
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the Examiner that the recitation of performing the selected one or more
management services reflects extra-solution activity and no more than well-
understood, routine, and conventional steps previously known to the
industry. See Mayo, 566 IJ.S. at 79 (holding that purely conventional or
obvious pre-solution or post-solution activity is normally not sufficient to
transform an unpatentable law of nature into a patent-eligible application of
such a law); Alice, 134 S. Ct. at 2359. The step of performing well-known
physical disaster recovery operations is insufficient to transform the claim
into a patent-eligible application of the abstract idea. See Alice, 134 S. Ct. at
2358.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claims are not directed to an abstract idea
because the claims are not directed to the kind of methods of organizing of
human activity found to be abstract by the courts and that the claims are not
directed to a mathematical formula. In our view, the instant claims, which
are directed to managing a physical disaster recovery, are similar to claims
found to be directed to organizing human activity. See, e.g., Planet Bingo,
LLCv. VKGS, LLC, 961 F.Supp.2d 840, 851 (W.D. Mich. 2013).
We are likewise not persuaded that the claims are not directed to an
abstract idea because they are not directed to a mathematical formula. We
agree with the Examiner that the claims are directed, at least in part, to
determining priority to perform management services in accordance with the
mathematical formula found on page 9 of the Specification.
In any case, as we stated above, our reviewing court has repeatedly
held that claims directed to data storage and analysis such as the instant
claims are directed to abstract ideas. See, e.g., Internet Patents Corp. v.
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Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), cert, denied, 136
S. Ct. 701 (2015); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech Image
Techs., LLC v. Flees, for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370
(Fed. Cir. 2011).
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claims improve another technical field and
effectuate a physical transformation. The Appellants argue that the clams
improve the technical field of implementing physical disaster recovery
operations in response to a disaster. However, the improvements alleged by
the Appellants are not improvements to a technical field such as an
improvement to computer capabilities, but instead relate to an alleged
improvement in implementing disaster relief for which a computer is used
only as a tool in its ordinary capacity.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claimed limitation of “determining from a
database respective members of the management services which support
each of the management services” is not well-understood, routine and
conventional in the field of managing a physical disaster recovery operation
and, thus, is significantly more than the alleged abstract idea. Appellants
argue that novelty considerations should be invoked. Although the second
step in the Alice/Mayo framework is termed a search for an “inventive
concept,” the analysis is not an evaluation of novelty or non-obviousness,
but rather, a search for “‘an element or combination of elements that is
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sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself/'” Alice, 134 S. Ct. at 2355.
A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
Appellants’ argument regarding preemption is likewise not
persuasive. “While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also OIP Techs., 788 F.3d at 1362—63 (“[T]hat the claims do not
preempt all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract”). And, “[w]here a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa, 788 F.3d at 1379.
In view of the foregoing, we will sustain the Examiner’s rejection as it
is directed to claim 1.
We are not persuaded of error on the part of the Examiner by
Appellants’ arguments directed to the remaining claims. We agree with the
Examiner’s response to the arguments regarding these claims found on
pages 13—18 of the Answer and adopt the same as our own.
DECISION
We affirm the § 101 rejection of claims 1—16 for the reasons of
record.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).
AFFIRMED
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