Ex Parte Bettes et al

Patent Trial and Appeal Board

Nov 6, 2017

13483137 (P.T.A.B. Nov. 6, 2017)

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.
13/483,137 05/30/2012 Richard B. BETTES END920060150US3 2719
46583 7590
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
EXAMINER
CHEN, GEORGE YUNG CHIEH
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
11/08/2017 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):
docketing@rmsc2.com
lgallaugher@rmsc2.com
dbeltran @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD B. BETTES, STEPHEN E. JAFFE,
BRET R. SANDERFUR, and MATTHEW B. TREVATHAN
Appeal 2016-001930
Application 13/483,1371
Technology Center 3600
Before HUNG H. BUI, ADAM J. PYONIN, and AMBER L. HAGY,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1, 5, 6, and 10—15. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 International Business Machines Corporation is identified as the real party
in interest. See App. Br. 2.
Appeal 2016-001930
Application 13/483,137
STATEMENT OF THE CASE
Introduction
The Application is directed to “using product profiling to maximize
transportation capacity while meeting other business objectives, e.g.,
profitability.” Spec. 11. Claims 1 and 6 are independent. Claim 1 is
reproduced below for reference:
1. A method comprising:
performing a past time period shipment inventory;
retrieving information for products associated with the
past time period shipment inventory;
determining by at least one computing device, that the
retrieved information is for products that are not in existence;
determining by the at least one computing device, that a
replacement product is not in existence for the products that are
not in existence;
in response to determining that the replacement product
is not in existence, determining, by the at least one computing
device, a product that is profitable above a threshold and
placing the profitable product on a list for future shipping;
determining that there is additional space in a vehicle;
and
performing, by the at least one computing device, a
cubing operation to maximize a load capacity of the vehicle
using the profitable products on the list for the future shipping.
The Examiner’s Rejection
Claims 1, 5, 6, and 10-15 stand rejected under 35 U.S.C. § 101 for
being directed to patent-ineligible subject matter. See Final Act. 2.
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Application 13/483,137
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments. We adopt the Examiner’s findings and conclusions as our own,
and we add the following primarily for emphasis.
I. Independent Claims
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
Supreme Court, however, has long interpreted § 101 to include an implicit
exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. See Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347,
2354 (2014) (internal citation and quotation marks omitted). The Supreme
Court, in Alice, reiterated the two-step framework previously set forth in
Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 79
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
that analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts,” e.g., to an abstract idea. Id. If the
claims are directed to a patent-ineligible concept, the inquiry proceeds to the
second step, where the elements of the claims are considered “individually
and ‘as an ordered combination’” to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. at 78—79).
The Court acknowledged in Mayo that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
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Application 13/483,137
or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology, or instead are directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
a. Prima Facie Case
Appellants contend “the Examiner does not provide any evidence or
explanation of the reason why the claimed invention is directed to an
abstract idea besides a mere allegation that the claims are directed to an
abstract idea.” App. Br. 5. Appellants assert that, therefore, “the rejection
of claim 1 under 35 U.S.C. § 101 does not support a prima facie case of
unpatentability.” Id. at 7.
Appellants’ contention that the Examiner has failed to make a prima
facie case of unpatentability is unavailing. The USPTO carries its
procedural burden when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for rejection, “together with
such information and references as may be useful in judging of the propriety
of continuing the prosecution of [the] application.” In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (alteration in original, quoting 35 U.S.C. § 132).
Here, the Examiner notified Appellants that the claimed invention is
unpatentable pursuant to the two-step framework of Alice. See Final Act. 2—
3; Advisory Act. 2; Ans. 2—5. The Examiner finds the claimed invention is
directed to the abstract idea of “generating a loading plan,” which is “similar
to ‘organizing information through Mathematical] correlations’ . . . because
items are organized according to [their] profitability (e.g., if it’s high, put on
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Application 13/483,137
list and perform cubing; else, discard).” Advisory Act. 2. The Examiner
further finds “the additional elements of the claimed invention are mere[ly] a
computer running Microsoft Officers spreadsheet program]; such computer
can be directed to a generic computer performing well-understood, routine
operation well-known in the industry and would not be sufficient to qualify
as ‘significantly more’ to the abstract idea.” Id. Thus, Appellants have been
notified of the reasons for the rejection with such information as may be
useful in judging of the propriety of continuing the prosecution of the
application, as required.
b. Alice Step One
Appellants argue “claim 1 is not directed to an abstract idea under Part
1 of the Subject Matter Eligibility Test” (App. Br. 7 (emphasis omitted)) as
the claim is distinct from claimed concepts found to be abstract in prior
decisions (see App. Br. 9—16). Particularly, claim 1 recites “performing, by
the at least one computing device, a cubing operation to maximize a load
capacity of the vehicle using the profitable products on the list for the future
shipping,” and Appellants contend “known cubing operations do not take
into account, nor are they concerned with the actual product and associated
costs of manufacturing, sales data, etc., of the product or other business
considerations.” App. Br. 10 (emphasis omitted) (citing Spec. 13).
Appellants argue that, therefore, “the presently claimed invention is novel
and not part of what typically and routinely occurs in the transportation
industry (i.e., cubing operations that only take into account volume and
dimensions of packages).” Id. at 12 (emphasis omitted); see also Reply Br.
3-5.
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We are not persuaded by Appellants’ arguments. Claim 1 recites
reviewing shipment information to determine products, determining
products that are not in existence, determining replacement products that are
profitable above a threshold and that a vehicle has additional space, and
performing a cubing operation using the determined profitable products.
That is, the steps of the claim perform an algorithm to calculate a list of
products to increase profitability, and then calculate which objects to fill a
vehicle from the list. We agree with the Examiner that the claim is directed
to a fundamental economic practice or mathematical algorithm, and is thus
abstract. See Ans. 2—3; Advisory Act. 2.
Appellants rely on the recited “cubing operation” for much of their
arguments (see, e.g., App. Br. 9); however, the claimed cubing operation is
no different than the well-known prior art cubing operations.2 See
“Background of the Invention” section of Appellants’ Specification,
describing cubing operations. The method of claim 1 merely determines the
inputs to the cubing operation (in that the inputs are selected based on value
and availability) without changing the cubing operation itself. See, e.g.,
Spec. 122 (stating the determined top selling product “will then be subject to
cubing methodologies” (emphasis added)); see also Spec. Tflf 32, 46. Thus,
we determine the recited cubing operation is merely part of the abstract idea
2 We note the Specification states “a number of algorithms are known” for
cubing operations; however, the Specification does not provide any such
algorithms. Spec. 13. In the event of further prosecution, Appellants and
the Examiner may wish to determine whether the claims conform to the
requirements of 35 U.S.C. § 112, first paragraph. See, e.g., Genentech, Inc.
v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997) (“It is the
specification, not the knowledge of one skilled in the art, that must supply
the novel aspects of an invention in order to constitute adequate
enablement.”).
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Application 13/483,137
itself, or, at most, an insignificant post-solution activity (i.e., using known
truck filling techniques once the products are determined) that does not
support the invention having an inventive concept.3 See Advisory Act. 2;
see e.g., In re Brown, 645 F. App’x 1014, 1016 (Fed. Cir. 2016) (“[T]he
central purpose of the claimed method is the process before cutting, and . . .
the hair-cutting step constitutes ‘insignificant post-solution activity.’”).
We also agree with the Examiner that claim 1 recites a set of
calculations that can be performed by a mental process or spreadsheet. See
Advisory Act. 2; Ans. 3. The law is clear that “a method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101.” CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1373 (Fed. Cir. 2011); see also Gottschalkv. Benson, 409
U.S. 63, 67 (1972) (“Phenomena of nature . . ., mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.”). Moreover, mental processes remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. See CyberSource, 654 F.3d
at 1375 (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalkv. Benson.").
Thus, Appellants do not persuade us the Examiner erred in finding
claims are comparably abstract as “concepts courts have found to be
abstract.” Ans. 3. Our reviewing court has held claims similarly directed to
3 To the extent Appellants argue the claims are not abstract for being novel
(see, e.g., Reply Br. 4), we note a novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at
90-91.
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Application 13/483,137
certain fundamental economic practices and mathematical relationships to be
abstract. See, e.g., In re Salwan, 681 F. App’x 938, 941 (Fed. Cir. 2017)
(affirming the rejection under § 101 of claims directed to “storing,
communicating, transferring, and reporting patient health information,”
noting that “while these concepts may be directed to practical concepts, they
are fundamental economic and conventional business practices”);
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950, 951—
52, 954—55 (Fed. Cir. 2014) (comparing new and stored information and
using rules to identify options); Versata Dev. Grp., Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1333 (Fed. Cir. 2015) (using organizational and product
group hierarchies to determine a price), cert, denied, 136 S. Ct. 2510 (2016);
In re Maucorps, 609 F.2d 481 (CCPA 1979) (using an algorithm for
determining the optimal number of visits by a business representative to a
client); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d
1344, 1351 (Fed. Cir. 2014) (“Without additional limitations, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.”); Brown, 645
F. App’x 1014 (assigning hair designs to balance head shape); Coffelt v.
NVIDIA Corporation, 680 F. App’x 1010 (Fed. Cir. 2017) (an abstract
mathematical algorithm for calculating and comparing regions in space).
Accordingly, we agree with the Examiner that claim 1 is directed to
an abstract idea. See Advisory Act. 2.
c. Alice Step Two
Appellants argue “the processes and systems of the claimed invention
are ‘significantly more than the abstract idea itself’” as “the computer-
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implemented process of the claimed invention is a process designed to solve
a technological problem whether it be or not in ‘conventional industry
practice’, e.g., product profiling to maximize the load capacity of the vehicle
using the profitable products on the list for future shipping.” App. Br. 18.
Further, Appellants contend “that a generic computer running a spreadsheet
program cannot determine that there is additional space in a vehicle and
perform a cubing operation to maximize a load capacity of the vehicle using
the profitable products on the list for the future shipping” (App. Br. 20)
because both the vehicle and the products “must be physically present” in
order to be included in the claimed calculations (Reply Br. 9).
We are not persuaded by Appellants’ arguments that claim 1 recites
elements that transform the nature of the claim into a patent-eligible
application. Claim 1 solves the problem of maximizing profitability, by
loading a vehicle with valuable products. See, e.g., Spec. 115. As correctly
noted by the Examiner, the claimed steps are for data gathering and
calculations “that require [] no more than a generic computer structure to
perform well-understood, routine operation[s],” and “[n]one of these
[claimed] actions are deeply rooted in the computer technology.” Ans. 4—5;
see also Advisory Act. 2; Spec. H 19, 36. The Examiner is also correct in
finding “the product and the vehicle may not be physically present in the
performance of the invention,” as the product status and the vehicle space
are known variables; thus, such information is stored in the computing
system and used by a generic computer in the claimed calculations. Ans. 4;
see also Spec. H 19, 24—26, 36, 39, 41; cf. Brown, 645 F. App’x at 1016
(“Nowhere in the specification does it indicate or suggest this step must be
performed physically . . . .”).
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We do not agree with Appellants that claim 1 “improve[s] an existing
technological process and provide[s] meaningful limitations beyond
generally linking the use of an abstract idea to a particular technological
environment.” Contra Reply Br. 8. The limitations of claim 1 do not
improve the relevant technology; rather, the claim merely invokes generic
processes and machinery to implement the abstract idea. See Enfish, 822
F.3d at 1336; see also In re TLI Communications LLC Patent Litigation, 823
F.3d 607, 612 (Fed. Cir. 2016) (“[T]he claims here are not directed to a
specific improvement to computer functionality. Rather, they are directed to
the use of conventional or generic technology in a nascent but well-known
environment, without any claim that the invention reflects an inventive
solution to any problem presented by combining the two.”).
Accordingly, we are not persuaded the Examiner erred in finding
independent claim 1 is directed to an abstract idea, and fails to recite
inventive concepts sufficient to transform the abstract idea into a patent
eligible invention. See Advisory Act. 2. Appellants present similar
arguments for independent claim 6, which we find unpersuasive for similar
reasons. See App. Br. 24^41.
II. Dependent Claims
Appellants argue the rejection of claims 5, 10, and 15 under 35 U.S.C.
§ 101 is in error. See App. Br. 21—23, 41^42. Appellants contend these
claims recite limitations that are “more than simply organizing information
through mathematical correlations” and have features that “add a specific
limitation.” Id.
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We are not persuaded the Examiner erred. Claims 5 and 10 depend
from independent claims 1 and 6, respectively, and further recite storing the
list of profitable products in a profiling system with certain data. Claim 15
depends from independent claim 1 and further recites additional calculations
to allocate products in the vehicle based on product profitability. These
claims are directed to the same abstract idea as their parent independent
claims, as discussed above. Moreover, although they add specific
limitations, these added limitations are data storing and calculation steps,
which do not transform the nature of the claim into a patent-eligible
application. See Alice, 134 S. Ct. at 2355; see also Brown, 645 F App’x at
1017 (adding step of using scissors for cutting hair into determined hair
patterns “is not the type of additional feature Alice envisioned as imparting
patent eligibility”).
Accordingly, we are not persuaded the Examiner erred in rejecting
dependent claims 5, 10, and 15 under 35 U.S.C. § 101.
CONCLUSION
Based on the record, we conclude Appellants have not demonstrated
the Examiner erred in finding claims 1, 5, 6, 10, and 15 are directed to
patent-ineligible subject matter under 35 U.S.C. § 101. We, therefore,
sustain the Examiner’s rejection of these claims, as well as the rejection of
dependent claims 11—14, which are not separately argued. See App. Br. 22,
42.
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Application 13/483,137
DECISION
The Examiner’s decision rejecting claims 1,5,6, and 10-15 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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