13135683 (P.T.A.B. Sep. 30, 2016)

Ex Parte Belady et al

Patent Trial and Appeal BoardSep 30, 2016

13135683 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/135,683 07 /12/2011 127496 7590 10/04/2016 ICT Law I Technology Group, pllc 918 S. Horton St. Suite 717 220 Seattle, WA 98134 FIRST NAMED INVENTOR Christian L. Belady 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. IV 11-1-3 9251 EXAMINER MINCARELLI, JAN P ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 10/04/2016 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): ict_isf_ edcktng_ 127 496@ictlawtech.net dalecook@ictlawtech.net eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTIAN L. BELADY, ROB BERNARD, ANGEL SARMENTO CAL VO, LARRY COCHRANE, JASON GARMS, RODERICK A. HYDE, ROYCE A. LEVIEN, RICHARDT. LORD, ROBERT W. LORD, MARK A. MALAMUD, JENNIFER MAME POLLARD, JOHN D. RINALDO JR. CLARENCE T. TEGREENE, RENE A. VEGA, LOWELLL. WOOD JR. and FENG ZHAO Appeal2014-003099 Application 13/135,683 1 Technology Center 3600 Before HUBERT C. LORIN, ANTON W. PETTING, and ROBERT J. SILVERMAN, Administrative Patent Judges. LORIN, Administrative Patent Judge. 1 The Appellants identify Elwha, LLC as the real party in interest. App. Br. 4. Appeal2014-003099 Application 13/135,683 DECISION ON APPEAL STATEMENT OF THE CASE Christian L. Belady, et al. (Appellants) seek our review under 35 U.S.C. Â§ 134 of the final rejection of claims 1-18, 23, 25-33, 36-39, 72, 78, and 111. We have jurisdiction under 35 U.S.C. Â§ 6(b) (2002). SUMMARY OF DECISION We AFFIRM and enter a NEW GROUND OF REJECTION. THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A computer implemented method, comprising: determining an ecological-impact score for acquiring a product, the ecological-impact score generated from at least information that quantifies ecological impact caused by at least a portion of a supply chain used to transport the product with a computing device; and sending the ecological-impact score to a second computing device. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Boss Brandi wine Walker Beier US 2010/0125494 Al US 7,813,970 Bl US 2010/0274629 Al US 2012/0005105 Al 2 May 20, 2010 Oct. 12, 2010 Oct. 28, 2010 Jan. 5,2012 Appeal2014-003099 Application 13/135,683 The following rejections are before us for review: 1. Claims 1-18, 23, 25-33, and 36-38 are rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. 2. Claims 1-18, 23, 25-33, and 36-38 are rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regards as the invention. 3. Claims 1, 2, 5, 7-14, 33, 36, 39, 72, 78, and 111 are rejected under 35 U.S.C. Â§ 102(e) as being anticipated by Beier. 4. Claims 3, 4, and 6 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier. 5. Claims 15, 17, 18, 25-27, 29, and 38 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier and Boss. 6. Claims 16, 23, and 28 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier, Boss, and Brandiwine. 7. Claim 30 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier and Walker. 8. Claims 31 and 32 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier, Walker, and Brandiwine. 9. Claim 37 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier and Brandiwine. ISSUES Did the Examiner err in rejecting claims 1-18, 23, 25-33, and 36-38 under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter? 3 Appeal2014-003099 Application 13/135,683 Did the Examiner err in rejecting claims 1-18, 23, 25-33, and 36-38 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regards as the invention? Did the Examiner err in rejecting claims 1, 2, 5, 7-14, 33, 36, 39, 72, 78, and 111under35 U.S.C. Â§ 102(e) as being anticipated by Beier? Did the Examiner err in rejecting claims 3, 4, and 6 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier; claims 15, 17, 18, 25-27, 29, and 38 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier and Boss; claims 16, 23, and 28 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier, Boss, and Brandiwine; claim 30 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier and Walker; claims 31 and 32 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier, Walker, and Brandiwine; and, claim 37 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier and Brandi wine? FINDINGS OF FACT We rely on the Examiner's factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. 4 Appeal2014-003099 Application 13/135,683 ANALYSIS2 The rejection of claims 1-18, 23, 25-33, and 36-38 under 35 U.S. C. Â§ 1 OJ as being directed to non-statutory subject matter. The rejection treats only process claims 1-18, 23, 25-33, and 36. But, given that computer-readable storage medium claim 39 and system claim 78 and computer-readable storage medium claim 72 and system claim 111 parallel and are not substantively different from process claims 1 and 33, respectively, it is reasonable that all the claims should be treated together for patent-eligibility purposes. To correct that we enter below a new rejection underÂ§ 101 of all the claims below. Nevertheless, we will address this rejection as it currently stands. The Appellants argued claims 1-18, 23, 25-33, and 36---38 as a group. See Reply Br. 2-3. We select claim 1 as the representative claim for this group, and the remaining claims 2-18, 23, 25-33, and 36---38 stand or fall with claim 1. 37 C.F.R. Â§ 41.37(c)(l)(vii) (2007). This rejection was not responded to in the Appeal Brief. The Reply Brief, while responding to the rejection, makes statements that in effect argue that since the claims involve a computer, then they must be patent- eligible. See Reply Br. 2-3. The Appellants point out that the subject matter of claim 1 is directed to a "computer implemented" method and includes "determining ... with a computing device" and "sending to ... a second 2 The Analysis addresses the rejections that are on appeal. We note the Appellants' remarks concerning an issue with certain unentered amendments. App. Br. 4; Reply Br. 2. That is not an issue for the Board to decide. See 37 CPRÂ§ 41.3 l(e). Accordingly, it will not be addressed. 5 Appeal2014-003099 Application 13/135,683 computing device." The argument is unpersuasive as to error in the rejection. Neither the claims nor the Specification define "computer" or "computing device" to any specificity. In fact the Specification suggests that any conventional device is suitable. See Specification para. 34. Accordingly, the claims are reasonably broadly construed as coving the use of generic computers. A recitation to using generic computers cannot render patent-eligible that which has been determined to be patent-ineligible. "[T]he mere recitation of a generic computer cannot transform a patent- ineligible abstract idea into a patent-eligible invention. Stating an abstract idea 'while adding the words "apply it'" is not enough for patent eligibility." Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2358 (2014). For the foregoing reasons, the rejection as it currently stands is sustained. The rejection of claims 1-18, 23, 25-33, and 36--38 under 35 U.S. C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regards as the invention. The Appellants do not appear to have provided a substantive response to this rejection. Accordingly, it is summarily affirmed. The rejection of claims 1, 2, 5, 7-14, 33, 36, 39, 72, 78, and 111 under 35 U.S.C. Â§ 102(e) as being anticipated by Beier. The Appellants have not presented a persuasive argument as to error in the rejection. 6 Appeal2014-003099 Application 13/135,683 With respect to independent claims 1, 39, and 78, the Appellants argue that nowhere in recitations of Beier is the "recall data, master data or event data" forming the "product data" Beier that is actually output to the "mobile device" of Beier described as including the "environmental score" of Beier. Rather, Beier recites that the "environmental score" is not, in fact, output from the "traceability server" as alleged by the Patent Office but is actually computed by the "mobile device" itself from "an analysis of data contained in the product record obtained from the traceability server" (see Beier, paras. [0060], [0075]). App. Br. 17. The argument combines a number of contentions. The contentions are spelled out in the Reply Brief. We address them in tum. The first contention is that "the cited portions of Beier recite an 'environmental score.' [In contrast to claims] 1, 39 and 78 [which] recite, in part; an 'ecological-impact score."' Reply. Br. 7. However, this is a dispute over the type of information being determined. That is, claim 1 requires "determining an ecological-impact score." (Emphasis added). In that regard, the structural difference between Beier' s traceability server for determining an environmental score and the claimed "computing device" for "determining an ecological-impact score" is not apparent. If there is a difference it would appear to be in the type of information that they process. But there is insufficient evidence, for example, that the claimed "computing device" is somehow functionally affected by determining an "ecological-impact score" rather than some other type of information, such as Beier' s "environmental score." It is thus, reasonable to characterize the "ecological-impact score" as printed matter. It 7 Appeal2014-003099 Application 13/135,683 amounts to nonfunctional descriptive material. "[N]on-functional descriptive material, being useful and intelligible only to the human mind, is given no patentable weight." Ex parte Graf, Appeal 2012-003941, 2013 WL 3873066, at *4 (PTAB July 23, 2013) (non-precedential), aff'd, In re Graf, 585 F. App'x. 1012 (Fed. Cir. 2014) (non-precedential); cf In re DiStefano, 808 F.3d 845 (Fed. Cir. 2015); as explained in In re Xiao, 462 F. App'x. 947, 950-52 (Fed. Cir. 2011) (non-precedential): [T]he Board did not create a new "mental distinctions" rule in denying patentable weight. ... On the contrary, the Board simply expressed the above-described functional relationship standard in an alternative formulation---consistent with our precedents- when it concluded that any given position label's function ... is a distinction "discemable only to the human mind." Board Decision at 6; see In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (describing printed matter as "useful and intelligible only to the human mind") (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCP A 1969)). "The rationale behind this line of cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations." King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010). Second, the Appellants contend that "the cited portions of Beier recite 'product data.' Claims 1, 39 and 78 recite 'information that quantifies ecological impact caused by at least a portion of a supply chain used to transport the product."' Reply Br. 7. Here, too, the contention is that there a difference over Beier in the type of information. But a difference in the type of information that is otherwise typically processed amounts to a difference in non-functional descriptive material. Such a difference is not patentably consequential. 8 Appeal2014-003099 Application 13/135,683 Third, "the cited portions of Beier recite a 'traceability server.' Claims 1, 39 and 78 recite 'a computing device."' Reply Br. 7. But the claim phrase "a computing device" is a generic phrase whose broad scope would encompass Beier's "traceability server." Accordingly, the claim phrase "reads on" on Beier. "The law of anticipation does not require that the reference 'teach' what the subject patent teaches. Assuming that a reference is properly 'prior art,' it is only necessary that the claims under attack, as construed by the court, 'read on' something disclosed in the reference, i.e., all limitations of the claim are found in the reference, or 'fully met' by it." Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983). Fourth, the Appellants contend that "the cited portions of Beier recite a 'mobile device.' Claims 1, 39 and 78 recite 'a second computing device."' Reply Br. 7. Here, too, the claim phrase "a second computing device" is a generic phrase whose broad scope would encompass Beier' s "mobile device." It thus reads on it. Finally, fifth, "[i]t will be noted that Claims 1, 39 and 78 recite that the 'ecological-impact score' is computed with the 'computing device' and then sent to the 'second computing device.'" Reply Br. 7. In fact, the claims only require that the score be determined "with a computing device," not computed "with a computing device." Nonetheless, we agree with the Examiner that Beier' s traceability server determines certain information and then that information gets sent to a mobile device. See Ans. 7. This is plainly described in paras. 7 4--7 5 of Beier. 9 Appeal2014-003099 Application 13/135,683 These contentions are unpersuasive for the foregoing reasons. Therefore the argument challenging the rejection, which is based on them, is likewise unpersuasive as to the rejection's error. We have reviewed the remaining arguments but do not find them persuasive for the reasons stated by the Examiner. See Ans. 5-7. The rejection of claims 3, 4, and 6 under 35 U.S. C. Â§ 103 (a) as being unpatentable over Beier. The rejection of claims 15, 17, 18, 25-27, 29, and 38 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier and Boss. The rejection of claims 16, 23, and 28 under 35U.S.C.Â§103(a) as being unpatentable over Beier, Boss, and Brandiwine. The rejection of claim 30 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier and Walker. The rejection of claims 31and32 under 35U.S.C.Â§103(a) as being unpatentable over Beier, Walker, and Brandiwine. The rejection of claim 3 7 under 35 U.S. C. Â§ 103 (a) as being unpatentable over Beier and Brandiwine. The only rejection under Â§ 103 that the Appellants appear to have responded to is that which rejects claims 3, 4, and 6. App. Br. 19-22. In that regard, the Appellants criticize the Examiner for using "common sense" and "Official Notice" to reach the claimed subject matter and for finding, as a result, that the claimed subject matter is a "combination of old elements." The criticism is unwarranted. All three claims are directed to sending information (i.e., an ecological-impact score) to an entity. The claims differ only in terms of the destination. Claim 3 requires the information to be sent "to a computer system associated with a company offering the product;" claim 4, "to a 10 Appeal2014-003099 Application 13/135,683 computer system associated with a manufacturer of the product;" and claim 6, "to the product." The Examiner finds, for example, that "sellers and manufacturers would be interested in knowing what a calculated economic impact score would be because that score may impact their bottom line if customers had a preference for products with better ecological-impact scores." Final Act. 18. That is a reasonable finding of fact. An economic impact score is useful information that could impact what is sold. That is the type of information a manufacturer of a product would likely want to know. We find the Examiner has made out a prima facie case of obviousness by a preponderance of the evidence in the first instance. The burden shifted to the Appellants to come forward with persuasive arguments in rebuttal and/or objective evidence of secondary considerations. The Appellants' response in that regard is insufficient. Accordingly, the rejection of claims 3, 4, and 6 is sustained. The otherÂ§ 103 rejections not having been treated in the Appeal Brief, they are also sustained. NEW GROUND OF REJECTION Claims 1-18, 23, 25-33, 36-39, 72, 78, and 111 are rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. We will address all the claims on appeal together even though we have already sustained a rejection of method claims 1-18, 23, 25-33, and 36-38 under 35 U.S.C. Â§ 101. Our reasoning in newly rejecting claims 39, 72, 78, and 111under35 U.S.C. Â§ 101 applies equally to the method claims. Thus, to be consistent, all the claims are included. 11 Appeal2014-003099 Application 13/135,683 Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014) identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under Â§ 101. According to Alice step one, "[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept," such as an abstract idea. Alice, 134 S. Ct. at 2355. Taking claim 1 as representative of the claims on appeal, the claimed subject matter is directed to information-based rating. Information-based rating is a fundamental scientific practice and as such is an abstract idea. Step two is "a search for an [']inventive concept[']-i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Alice at 2355. We see nothing in the subject matter claimed that transforms the abstract idea of information-based rating into a patent-eligible application. Claim 1 calls for determining a certain type of information-based rating; that is, an "ecological-impact score" for a product. According to the Specification (page 8), "an ecological-impact score [can be] a number, e.g., 1 to 10, a value on a scale (awful, bad, neutral, good, or exceptional) and/or a letter grade (A, B, C, D, or F)." In other words, claim 1 calls for determining a value. That value is then sent. Determining a value and then sending it does not amount to significantly more than the information-based rating abstract idea itself. Nor is the information-based rating abstract idea transformed into a patent-eligible application by employing generic computers for their conventional processing functions. 12 Appeal2014-003099 Application 13/135,683 Therefore, we enter a new ground of rejection of claims 1-18, 23, 25- 33, 36-39, 72, 78, and 111 under 35 U.S.C. Â§ 101. CONCLUSIONS The rejection of claims 1-18, 23, 25-33, and 36-38 under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter is affirmed. The rejection of claims 1-18, 23, 25-33, and 36-38 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regards as the invention is affirmed. The rejection of claims 1, 2, 5, 7-14, 33, 36, 39, 72, 78, and 111 under 35 U.S.C. Â§ 102(e) as being anticipated by Beier is affirmed. The rejection of claims 3, 4, and 6 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier is affirmed. The rejection of claims 15, 17, 18, 25-27, 29, and 38 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier and Boss is affirmed. The rejection of claims 16, 23 and 28 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier, Boss, and Brandiwine is affirmed. The rejection of claim 30 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier and Walker is affirmed. The rejection of claims 31 and 32 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier, Walker, and Brandiwine is affirmed. The rejection of claim 37 under 35 U.S.C. Â§ 103(a) as being unpatentable over Beier and Brandiwine is affirmed. 13 Appeal2014-003099 Application 13/135,683 Claims 1-18, 23, 25-33, 36-39, 72, 78, and 111 are newly rejected under 35 U.S.C. Â§ 101. DECISION The decision of the Examiner to reject claims 1-18, 23, 25-33, 36-39, 72, 78, and 111 is affirmed. Claims 1-18, 23, 25-33, 36-39, 72, 78, and 111 are newly rejected. NEW GROUND This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b). 37 C.F.R. Â§ 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. Â§ 41.50(b) also provides that the Appellant[s], 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 proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED; 37 C.F.R. Â§ 41.50(b) 14