Ex Parte BETTES et al

Patent Trials and Appeals Board

Mar 19, 2019

14029959 - (D) (P.T.A.B. Mar. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/029,959 09/18/2013
46583 7590 03/21/2019
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
Richard B. BETTES
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.
END920060l50US5 7132
EXAMINER
CHEN, GEORGE YUNG CHIER
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
03/21/2019 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):
docketing@rmsc2.com
lga11augher@rmsc2.com
secretaries@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. SANDEFUR, and MATTHEW B. TREVATHAN
Appeal2017-010512 1
Application 14/029,9592
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
January 30, 2017) and Reply Brief ("Reply Br.," filed August 4, 2017), and
the Examiner's Answer ("Ans.," mailed June 6, 2017) and Final Office
Action ("Final Act.," mailed August 26, 2016).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal2017-010512
Application 14/029,959
CLAIMED INVENTION
Appellants' claimed invention "generally relates to a system and
method of using product profiling for the efficient transportation and
up selling of product" and, more particularly, "to a system and method of
using product profiling to maximize transportation capacity while meeting
other business objectives, e.g., profitability" (Spec. ,r 1 ).
Claims 1, 11, and 16, reproduced below with bracketed notations
added, are the independent claims on appeal and representative of the
claimed subject matter:
1. A system comprising:
[(a)] a CPU, a computer readable memory and a
computer readable storage media;
[ (b)] program instructions to retrieve product profiles
from a management system;
[ ( c)] program instructions to retrieve product
information from volatile memory of the management system,
the product information being associated with the product
profiles;
[ ( d)] program instructions to provide a break point to
eliminate a skewed proportion for products being shipped using
the management system, wherein the break point maximizes
profitability for the products being shipped; and
[ ( e)] program instructions to perform cubing operations
using the management system for products associated with the
product information, wherein the program instructions are stored
on the computer readable storage media for execution by the
CPU via the computer readable memory.
11. A method implemented in a computer infrastructure
having computer executable code tangibly embodied on a
computer readable storage medium having programming
instructions operable to:
[ (a)] retrieving product profiles from a management
system;
2
Appeal2017-010512
Application 14/029,959
[ (b)] retrieving product information from volatile
memory in the management system, the product information
being associated with the product profiles and including
historical product information;
[ ( c)] determining, using the management system, that a
past product exists based on the historical product information;
[ ( d)] providing, using the management system, the past
product for shipment when the past product exists; and
[ ( e)] performing, using the management system, cubing
operations for the past products and additional products
associated with the product information.
16. A computer program product comprising a computer
readable hardware storage device having readable program code
stored on the computer readable hardware storage device
compnsmg:
[(a)] program code to retrieve product profiles from a
management system;
[ (b)] program code to retrieve product information from
volatile memory in the management system, the product
information being associated with the product profiles and
including historical product information;
[ ( c)] program code to determine that a past product exists
based on the historical product information;
[ ( d)] program code to provide the past product for
shipment when the past product exists; and
[ ( e)] program code to perform cubing operations for the
past products and additional products associated with the product
information.
REJECTI0N3
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
3 The Examiner has withdrawn the rejection under 35 U.S.C. § 112(b) and
the double patenting rejection. See Ans. 2.
3
Appeal2017-010512
Application 14/029,959
ANALYSIS
Under 35 U.S.C. § 101, 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. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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 Corp., 573 U.S. at 217.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, 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 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
4
Appeal2017-010512
Application 14/029,959
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to "load scheduling," and involve a
process (i.e., retrieving product profiles/information, calculating a break
point, and performing a cubing operation) similar to concepts that the courts
have held abstract (Final Act. 2-3). The Examiner also determined that the
claims do not include additional elements that are sufficient to amount to
significantly more than the abstract idea itself (id. at 3--4).
Independent Claim 1 and Dependent Claims 4, 7, and 10
We are not persuaded, as an initial matter, that the Examiner erred in
determining that claim 1 is directed to an abstract idea (App. Br. 5-10). The
Federal Circuit has explained that "the 'directed to' inquiry applies a stage-
one filter to claims, considered in light of the [S]pecification, based on
whether 'their character as a whole is directed to excluded subject matter."'
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp., 790 F.3d at 1346). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36. Here, it is clear from the
Specification that claim 1 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is entitled "APPARATUS AND METHOD FOR
TRANSPORTATION AND UPSELLING OF PRODUCT," and discloses
that the invention generally relates to "a system and method of using product
profiling to maximize transportation capacity while meeting other business
5
Appeal2017-010512
Application 14/029,959
objectives, e.g., profitability" (Spec. ,r 1 ). The Background section of the
Specification describes that it is "industry practice for ... shipping and
freight (transportation) companies to utilize methods for maximizing the
amount of product (load) that can be loaded into a transportation vehicle,"
e.g., a truck, an airplane, a train, a shipping container or other means of
transportation; this allows the transportation companies to maximize profits
by ensuring that the maximum amount of product is placed in the vehicle for
transportation from one location to another (id. ,r 2). In order to maximize
the load that can be transported, the Specification describes that
transportation companies use complex algorithms, e.g., cubing algorithms, to
ensure that the available space in the vehicle is used to its maximum
capacity (id. ,r 3). These algorithms are known to be employed to create a
best fit within the transportation space, considering the volume, dimensions,
and weight of the packages; however, according to the Specification,
"[p ]resently, cubing operations do not take[] into account ... the actual
product and associated costs of manufacturing, sales data, etc. of the product
or other business considerations" (id.).
The present invention is ostensibly intended to address this issue by
"using product profiling to maximize [the] load capacity of a vehicle while
[also] meeting other business objectives, e.g., maximizing profitability" (id.
,r 15). The product profiles are criteria to be applied in identifying products
for shipment, and are machine-generated or provided by the user based on
the user's particular business objective, e.g., maximizing product
profitability, decreasing product inventory (id. ,r,r 15, 25). Once the set of
products for shipping is selected, i.e., after the products that match the
product profile are identified, a cubing algorithm is applied to the products
6
Appeal2017-010512
Application 14/029,959
to ensure that the transportation vehicle is filled to capacity (see, e.g., id.
,r 22). As an optional step, a "break point" may be machine-generated or
provided by the user, and used to maximize profitability by eliminating
products from being shipped that do not fall within a certain category, e.g.,
products that account for less than certain percentage of sales (id. ,r 28).
Understood in light of the Specification, claim 1 is directed to a
system comprising, inter alia, a CPU and program instructions, executable
by the CPU, to: (1) retrieve product profiles and product information
associated with the product profiles to identify products for shipment, i.e.,
"retrieve product profiles from a management system" and "retrieve product
information [ associated with the product profiles] from volatile memory of
the management system" (limitations (b) and ( c) ); (2) eliminate products
from being shipped based on a provided break point, i.e., "provide a break
point to eliminate a skewed proportion for products being shipped ...
wherein the break point maximizes profitability for the products being
shipped" (limitation (d)); and (3) perform cubing operations for the products
selected for shipment to create a best fit within the vehicle space, i.e.,
"perform cubing operations using the management system for products
associated with the product information" (limitation ( e) ). Although claim 1
recites the use of a CPU, a computer readable memory, and a computer
readable storage media, the underlying processes recited in the claim,
including (1) receiving information, i.e., product profiles, product
information, and a break point; and (2) analyzing the information to identify
products for shipment, which maximize profitability, are acts that, as the
Examiner observes, could be performed by a human, e.g., mentally and/or
manually, using pen and paper, with the use of a computer or any other
7
Appeal2017-010512
Application 14/029,959
machine (see, e.g., Ans. 4). And cubing operations, as described in the
Specification, involve the use of "complex algorithms ... to ensure that all
available space in the vehicle is used to its maximum capacity" (Spec. ,r 3).
Simply put, claim 1 is directed to concepts that can be performed in the
human mind, i.e., mental processes, and mathematical formulas, i.e.,
mathematical concepts, and, therefore, to an abstract idea. See
2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("Revised Guidance").
The Federal Circuit has held that method steps that can be performed
in the human mind, or by a human using pen and paper are "unpatentable
mental processes." See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 (Fed. Cir. 2011) ("It is clear that unpatentable mental
processes are the subject matter of claim 3. All of claim 3 's method steps
can be performed in the human mind, or by a human using a pen and
paper."); see also Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
("[p]henomena of nature ... , mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work."). And 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. 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 Gottschalk v.
Benson.").
Employing cubing algorithms to ensure that the maximum amount of
product is placed in the transportation vehicle also is a longstanding practice
in the transportation industry (see Spec. ,r 3), and is substantially similar to
8
Appeal2017-010512
Application 14/029,959
other practices that the courts have held abstract. See, e.g., Digitech Image
Techs., LLC v. Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)
(holding that a process that employs mathematical algorithms to manipulate
existing information to generate additional information is abstract); see also
Parker v. Flook, 437 U.S. 584, 595 (1978) ("If a claim is directed essentially
to a method of calculating, using a mathematical formula, even if the
solution is for a specific purpose, the claimed method is nonstatutory."
(internal citations omitted)). The law also is clear that "[a]dding one abstract
idea ... to another abstract idea ... does not render [a] claim non-abstract."
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017);
see also Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016) (patent-ineligible claims were directed to a combination of
abstract ideas).
We find no indication in the Specification, nor do Appellants direct us
to any indication, that the operations recited in claim 1 invoke any assertedly
inventive programming, require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible."). The
Specification, in fact, suggests just the opposite, i.e., that the claimed
invention may be implemented using only generic computer components
(see, e.g., Spec. ,r,r 18-20).
9
Appeal2017-010512
Application 14/029,959
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or, otherwise, indicates that the
claimed invention integrates the abstract idea into a "practical application,"
as that phrase is used in the Revised Guidance. 4
4 We note that Appellants' briefs were filed, and the Examiner's Answer
mailed, before the USPTO issued the Revised Guidance, which, by its terms,
applies to all applications, and to all patents resulting from applications, filed
before, on, or after January 7, 2019. In accordance with the Revised
Guidance, a claim is generally considered "directed to" an abstract idea if (1)
the claim recites subject matter falling within one of the following groupings
of abstract ideas: (a) mathematical concepts; (b) certain methods of
organizing human activity, e.g., fundamental economic principles or
practices, commercial or legal interactions; and ( c) mental processes, and (2)
the claim does not integrate the abstract idea into a practical application, i.e.,
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the clam is more than a
drafting effort designed to monopolize the judicial exception. See Revised
Guidance, 84 Fed. Reg. at 54--55. The Revised Guidance references
MANUAL OF PATENT EXAMINING PROCEDURE ("MPEP") §§ 2106.05(a}-(c)
and ( e }-(h) in describing the considerations that are indicative that an
additional element or combination of elements integrates the judicial
exception, e.g., the abstract idea, into a practical application. Id. at 55. If
the recited judicial exception is integrated into a practical application, as
determined under one or more of these MPEP sections, the claim is not
"directed to" the judicial exception.
10
Appeal2017-010512
Application 14/029,959
Citing the USPTO's May 4, 2016 5 and November 2, 2016 6
memoranda to the Patent Examining Corps, Appellants argue that the § 101
rejection cannot be sustained because the Examiner has not identified the
specific claim limitations which set forth the alleged abstract idea, i.e., load
scheduling, or explained why these claim limitations set forth an abstract
idea (App. Br. 6; see also Reply Br. 2-3, 15-16). Appellants' argument is
not persuasive.
In rejecting the pending claims under § 101, the Examiner set forth a
well-reasoned analysis of the claims and a comprehensive explanation of the
bases for the rejection (Final Act. 2--4). The Examiner, thus, notified
Appellants of the reasons for the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132. And we
find that, in doing so, the Examiner set forth a prima facie case of
patent-ineligibility. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(holding that the USPTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132); see also JULY 2015 UPDATE: SUBJECT MATTERELIGIBILITY, 7 p. 6
(setting forth a general notice requirement to establish a prima facie rejection
under 35 U.S.C. § 101); May 4, 2016 Memorandum, 2 ("[T]he rejection ...
must provide an explanation ... which [is] ... sufficiently clear and specific
5 Available at https://www.uspto.gov/sites/default/files/documents/ieg-may-
2016-memo.pdf.
6 Available at https://www.uspto.gov/sites/default/files/documents/McRo-
Bascom-Memo. pdf.
7 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update.pdf.
11
Appeal2017-010512
Application 14/029,959
to provide applicant sufficient notice of the reasons for ineligibility and
enable the applicant to effectively respond.") (emphasis added).
Appellants do not contend that the Examiner's rejection was not
understood or that the Examiner, otherwise, failed to comply with the notice
requirements of§ 132. Indeed, Appellants' understanding of the rejection is
clearly manifested by Appellants' responses, as set forth in Appellants'
briefs.
We also do not agree with Appellants that the Examiner
overgeneralized claim 1 as directed to "load scheduling" or, otherwise,
failed to consider the claim as a whole (App. Br. 7; see also Reply Br. 6-7).
And, to the extent that Appellants argue that the § 101 rejection cannot be
sustained because the particular language that the Examiner used in
characterizing the concept to which claim 1 is directed is not recited in the
claim (see Reply Br. 3--4), we note the Examiner's formulation of the
abstract idea need not copy the claim language.
It is clear from a fair reading of the Specification that the claimed
invention is concerned with using product profiles to identify products for
shipment that will allow the user to achieve a business objective, e.g.,
maximize profitability, while also ensuring that the transportation vehicle is
used to its maximum load capability (see, e.g., Spec. ,r,r 15-16) ). Claim 1,
thus, recites the claimed method comprises "retriev[ing] product profiles
from a management system"; "retriev[ ing] product information [ associated
with the product profiles] from volatile memory of the management
system"; "provid[ing] a break point to eliminate a skewed proportion for
products being shipped ... wherein the break point maximizes profitability
for the products being shipped"; and "perform[ing] cubing operations using
12
Appeal2017-010512
Application 14/029,959
the management system for products associated with the product
information." The Examiner's determination that claim 1 is directed to
"load scheduling" (Final Act. 2), in other words, identifying the products to
be loaded for shipment, is fully consistent with the Specification, including
the claim language.
We also note for the record that an abstract idea can be described at
varying levels of abstraction. That claim 1 includes more or different words
than the phrase the Examiner used to articulate the abstract idea to which the
claim is directed is an insufficient basis to persuasively argue that the claim
language has been mischaracterized or that the Examiner has, otherwise,
failed to consider all of the limitations of the claim. See Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea
can generally be described at different levels of abstraction. As the Board
has done, the claimed abstract idea could be described as generating menus
on a computer, or generating a second menu from a first menu and sending
the second menu to another location. It could be described in other ways,
including, as indicated in the specification, taking orders from restaurant
customers on a computer.").
Appellants' argument that the features recited in claim 1 are
"technological features which improve on the existing process of
transportation" also is unpersuasive (App. Br. 7; see also id. at 8-10 and 12;
Reply Br. 8, 14--15). Appellants assert that "the existing cubing process of
transportation does not perform cubed operations after eliminating a skewed
proportion for products being shipped" and "[t]herefore, claim 1 recites
technological features which are not directed to an abstract idea" (App.
Br. 7). Yet, "eliminating a skewed proportion for products being shipped,"
13
Appeal2017-010512
Application 14/029,959
as described in the Specification, involves nothing more than comparing
product information to a specified criterion, i.e., a "break point," and
excluding products from being shipped based on the comparison (see, e.g.,
Spec. ,r 28) - which, as explained above, is a mental process and, therefore,
an abstract idea. See, e.g., Berkheimer v. HP, Inc., 881 F.3d 1360, 1366
(Fed. Cir. 2018) (concluding that parsing, comparing, storing, and editing
data are abstract ideas); SmartGene, Inc. v. Advanced Biological Labs.,
555 F. App'x 950 (Fed. Cir. 2014) (comparing new and stored information
and using rules to identify options is an abstract idea).
We also fail to see, and Appellants do not adequately explain, how
"eliminating a skewed proportion for products being shipped" before
performing cubing operations (i.e., to create a best fit for loading product
onto the transportation vehicle) is a technological improvement "on the
existing process of transportation" (App. Br. 7; see also id. at 8-10, 12;
Reply Br. 8, 10, 12-13). Eliminating a skewed proportion of products from
being shipped may well improve a business process, i.e., by ensuring that
more products with higher profitability can be loaded onto the vehicle for
shipment (see Spec. ,r 29). But, we fail to see, and Appellants do not
explain, how excluding certain products from shipment in order to increase
profitability amounts to an improvement in technology or a technical field.
Appellants also ostensibly maintain the claimed invention provides a
technical solution to a technical problem in the existing process of
transportation in that "the claimed invention takes into account the actual
product and associated costs of manufacturing, sales, data, etc. of the
product and business considerations" (Reply Br. 8; see also id. at 10
and 12-13). But, accounting for the actual product and associated costs in
14
Appeal2017-010512
Application 14/029,959
determining which products to include in a shipment is not a technical
problem; it is a business problem. And selecting products for shipment that
meet particular business objectives is a business, not a technical solution.
Focusing specifically on step two of the Mayo/Alice analysis,
Appellants note that the Federal Circuit, in BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), held
that an inventive concept can be found in the non-conventional and
non-generic arrangement of known conventional pieces (App. Br. 13). And
Appellants argue that providing a break point to eliminate a skewed
proportion for products being shipped and performing cubing operations for
products associated with the product information, as recited in claim 1, is a
non-conventional and non-generic arrangement of elements (id.).
Appellants maintain that this is so "because the claimed features eliminate a
skewed proportion of products before performing a cubing operation, which
is different from conventional cubing operations which only take into
account volume, dimensions, and mass of packages" (id.).
Appellants' reliance on BASCOM is misplaced. In BASCOM, the
Federal Circuit determined that the claimed installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user provided an inventive concept in that it
gave the filtering tool both the benefits of a filter on a local computer and the
benefits of a filter on the ISP server. BASCOM, 827 F.3d at 1350. The
court, thus, held that the second step of the Mayo/Alice framework was
satisfied because the claimed invention "represents a 'software-based
invention[ ] that improve[ s] the performance of the computer system itself."'
BASCOM, 827 F.3d at 1351 (stating that like DDR Holdings, where the
15
Appeal2017-010512
Application 14/029,959
patent "claimed a technical solution to a problem unique to the Internet," the
patent in BASCOM claimed a "technology-based solution ... to filter
content on the Internet that overcomes existing problems with other Internet
filtering systems ... making it more dynamic and efficient") (internal
citations omitted).
We are not persuaded that a situation comparable to BASCOM is
presented here. And, to the extent that Appellants maintain that claim 1 is
patent-eligible because the claimed process of eliminating a skewed
proportion of products before performing a cubing operation is different
from conventional cubing operations (App. Br. 13), i.e., that the claimed
process is novel, we note that neither a finding of novelty nor a
non-obviousness determination automatically leads to the conclusion that the
claimed subject matter is patent-eligible. See Ass 'nfor Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013) ("Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry."); see also Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) ("The
'novelty' of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.").
Further focusing on step two of the Mayo/Alice analysis, Appellants
argue that even if claim 1 is directed to an abstract idea, claim 1 recites
additional elements that amount to significantly more than the abstract idea
itself (App. Br. 11-13; see also Reply Br. 13-14). Yet, the limitations that
Appellants identify as amounting to significantly more (i.e., retrieving
product profiles from a management system, retrieving product information
from volatile memory of the management system, and eliminating a skewed
16
Appeal2017-010512
Application 14/029,959
proportion for products being shipped) are part of the abstract idea itself, i.e.,
load scheduling; they are not additional elements to be considered when
determining whether claim 1 includes additional elements or a combination
of elements that is sufficient to amount to significantly more than the
judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and "as an ordered combination" to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
"transform the nature of the claim" into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (internal quotations and citation omitted); see Mayo,
566 U.S. at 72-73 (requiring that "a process that focuses upon the use of a
natural law also contain other elements or a combination of elements,
sometimes referred to as an 'inventive concept,' sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself' ( emphasis added) (internal citation omitted)). In other
words, the inventive concept under step two of the Mayo/Alice test cannot be
the abstract idea itself:
It is clear from Mayo that the "inventive concept" cannot be the
abstract idea itself, and Berkheimer ... leave[ s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged "inventive concept" is the abstract idea.
Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) ("It has been clear since Alice that a claimed
invention's use of the ineligible concept to which it is directed cannot supply
17
Appeal2017-010512
Application 14/029,959
the inventive concept that renders the invention 'significantly more' than
that ineligible concept.") (internal citation omitted).
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are the claimed CPU, computer readable
memory, and computer readable storage media, i.e., generic computer
components used to perform generic computer functions (Final Act. 3) - a
determination amply supported by, and fully consistent with the
Specification (see, e.g., Spec. 18-20). 8
Appellants cannot reasonably contend, nor do they, that there is a
genuine issue of material fact regarding whether operation of the claimed
CPU is well-understood, routine, or conventional, where, as here, there is
nothing in the Specification to indicate that the operations recited in claim 1
require any specialized hardware or inventive computer components or that
the claimed invention is implemented using other than generic computer
components to perform generic computer functions, e.g., receiving,
matching, and processing information. Indeed, the Federal Circuit, in
accordance with Alice, has "repeatedly recognized the absence of a genuine
dispute as to eligibility" where claims have been defended as involving an
8 The Office's April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https ://www.uspto.gov/ sites/ default/files/ documents/
memo-berkheimer-20180419 .pdf, expressly directs that an examiner may
support the position that an additional element ( or combination of elements)
is not well-understood, routine or conventional with "[a] citation to an
express statement in the specification ... that demonstrates the well-
understood, routine, conventional nature of the additional element(s)" (id.
at 3).
18
Appeal2017-010512
Application 14/029,959
inventive concept based "merely on the idea of using existing computers or
the Internet to carry out conventional processes, with no alteration of
computer functionality." Berkheimer, 890 F.3d at 1373 (Moore, J.,
concurring) (internal citations omitted); see also BSG Tech., 899 F .3d
at 1291 ("BSG Tech does not argue that other, non-abstract features of the
claimed inventions, alone or in combination, are not well-understood,
routine and conventional database structures and activities. Accordingly, the
district court did not err in determining that the asserted claims lack an
inventive concept.").
Responding to the Examiner's Answer, Appellants argue in the Reply
Brief that the claimed invention, as recited in claim 1, is not abstract "for
similar reasons as McRO" (Reply Br. 5). But, we are not persuaded that the
facts in McRO are sufficiently analogous to the present facts to control the
outcome here.
In McRO, the Federal Circuit determined that the claim was not
directed to an abstract idea, and was patent-eligible under 35 U.S.C. § 101
where the claim "focused on a specific asserted improvement in computer
animation" of facial expressions made during speech and where
"incorporation of the claimed rules, not the use of the computer ...
'improved [the] existing technological process' by allowing the automation
of further tasks." McRO, 837 F.3d at 1314. The court emphasized that the
automation went beyond, for example, merely "organizing [ existing]
information into a new form." Id. at 1315 (internal quotes and citations
omitted). Instead, the claim used limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice. Id. at 1316. In this sense, McRO is akin to DDR
19
Appeal2017-010512
Application 14/029,959
Holdings, Enfzsh, and similar decisions which have held claims patent-
eligible where the claimed invention provided a technological improvement
in industry practice. See DDR Holdings, 773 F.3d at 1257 (holding that
claims reciting computer processor for serving "composite web page" were
patent eligible because "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks"); Enfzsh, 822 F.3d at 1338 (holding that
claims directed to self-referential table for computer database were patent
eligible because claims were directed to an improvement in the functioning
of a computer); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259
(Fed. Cir. 2017) (holding that claims directed to "an improved computer
memory system" having many benefits were patent eligible).
In contrast here, claim 1 collects data, manipulates that data, and
renders an output. Appellants do not persuasively argue that claim 1
provides an improvement in technology or a technical field, or that it
improves the functionality of the computer itself.
Further, to the extent Appellants maintain that claim 1 is
patent-eligible because, "similar to McRO, the claimed features avoid
preemption because the claimed invention does not preempt the alleged
abstract idea of load scheduling" (Reply Br. 5---6), we note that preemption is
not the sole test for patent-eligibility. "The Supreme Court has made clear
that the principle of preemption is the basis for the judicial exceptions to
patentability" and "[f]or this reason, questions on preemption are inherent in
and resolved by the§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S.
at 216). Although "preemption may signal patent ineligible subject matter,
20
Appeal2017-010512
Application 14/029,959
the absence of complete preemption does not demonstrate patent eligibility."
Id.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection. We also sustain the Examiner's rejection
of dependent claims 4, 7, and 10, which are not argued separately except
based on their dependence from independent claim 1 (App. Br. 32). 9
Independent Claim 11
For much the same reasons set forth above with respect to claim 1, we
are not persuaded by Appellants' arguments that the Examiner erred in
determining that claim 11 is directed to an abstract idea (App. Br. 15-18).
Claim 11 recites a method comprising: ( 1) retrieving product profiles and
product information associated with the product profiles, including historical
product information (steps (a) and (b)); (2) determining, based on the
historical product information, whether a past product exists ( step ( c));
(3) identifying the past product for shipment if the past product exists
9 Appellants' further arguments with respect to claims 4, 7, and 10,
presented for the first time in Appellants' Reply Brief (Reply Br. 39), are
waived here in the absence of any showing of good cause why the arguments
could not have been timely presented in Appellants' Appeal Brief. See In re
Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not
first raised in the brief to the Board is waived on appeal); Ex parte
Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining
that arguments and evidence not timely presented in the Principal Brief, will
not be considered when filed in a Reply Brief, absent a showing of good
cause explaining why the argument could not have been presented in the
Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010)
(informative) ("Properly interpreted, the Rules do not require the Board to
take up a belated argument that has not been addressed by the Examiner,
absent a showing of good cause.").
21
Appeal2017-010512
Application 14/029,959
(step (d)); and (4) performing cubing operations for the past products and
additional products ( step ( e) ). Similar to claim 1, claim 11 is, thus, directed
to (1) receiving information, i.e., product profiles and product information,
including historical product information; (2) analyzing the information to
identify products, e.g., past products, for shipment; and (3) applying a
cubing algorithm to the identified products and additional products
associated with the product information to ensure that the transportation
vehicle is filled to capacity, i.e., to mental processes and/or mathematical
concepts, and, therefore, to an abstract idea.
As with claim 1, we find no indication in the Specification, nor do
Appellants direct us to any indication, that the operations recited in claim 11
invoke any assertedly inventive programming, require any specialized
computer hardware or other inventive computer components, i.e., a
particular machine, or that the claimed invention is implemented using other
than generic computer components to perform generic computer functions.
There also is nothing of record, short of attorney argument, that attributes
any improvement to technology or a technical field to the claimed invention,
or that otherwise indicates that the claimed invention integrates the abstract
idea into a "practical application," as that term is used in the Revised
Guidance.
Appellants argue that the features recited in claim 11 are
"technological features which improve on the existing process of
transportation"; that "the existing cubing process of transportation does not
perform cubing operations for ... past products and additional products
associated with the product information"; and that "claim 11 [, therefore,]
recites technological features which are not directed to an abstract idea"
22
Appeal2017-010512
Application 14/029,959
(App. Br. 15; see also id. at 16-18). Appellants appear to be arguing that
"determining ... that a past product exists based on ... historical product
information, i.e., step ( c ), as recited in claim 11, is a "technical feature,"
which renders claim 11 non-abstract. Yet, that step involves nothing more
than analyzing/comparing information, which the courts have repeatedly
held is an abstract idea. See, e.g., Intellectual Ventures, 850 F.3d at 1340;
Elec. Power Grp., 830 F.3d at 1354. We also fail to see, and Appellants do
not explain, how identifying past products for shipping amounts to a
technological improvement "on the existing process of transportation."
Turning to step two of the Mayo/Alice analysis, Appellants argue that
even if claim 11 is directed to an abstract idea, claim 11 is, nonetheless,
patent-eligible because the claim includes additional elements that amount to
significantly more than the abstract idea itself (App. Br. 19-21 ). Appellants
note that claim 11 recites "determining, using the management system, ... a
past product exists based on the historical product information," and
"performing, using the management system, cubing operations for the past
products and additional products associated with the product information"
(id. at 19). And Appellants argue that these features constitute an
improvement to the technology and technical field of cubing operations (id.;
see also Reply Br. 18-19, 23-24).
More particularly, Appellants maintain that "[t]hese features clearly
improve the existing cubing process of transportation which only takes into
account volume, dimensions, and mass by determining a past product exists
based on the historical product information" (App. Br. 19-20). Yet, we find
no indication in the Specification, nor do Appellants direct us to any
indication, that the claimed invention alters or in way affects how the cubing
23
Appeal2017-010512
Application 14/029,959
process is performed, i.e., that the cubing operation, as recited in claim 11,
takes into account features other than product volume, dimensions, and
mass. To the extent that claim 11 represents any modification in the cubing
operation at all, that modification merely concerns the products to which the
cubing operation is applied, i.e., that the products are past products and
additional products associated with the product information. We fail to see,
and Appellants do not explain, how performing cubing operations for
products that have been identified as "past products and additional products
associated with the product information" (in advance of and/or apart from
any cubing operations), rather than for other/different products, somehow
amounts to a technological improvement to the technical field of cubing
operations.
Appellants' further arguments are substantially similar to Appellants'
arguments with respect to claim 1, and are similarly unpersuasive of
Examiner error. We are not persuaded, on the present record, that the
Examiner erred in rejecting claim 11 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection.
Independent Claim 16
Appellants' arguments with respect to claim 16 (App. Br. 21-28; see
also Reply Br. 26-35) are substantially similar to Appellants' arguments
with respect to claims 1 and 11, and are similarly unpersuasive of
Examiner's error. Therefore, we sustain the Examiner's rejection of
claim 16 under 35 U.S.C. § 101.
Dependent Claims 2, 3, 5, 6, 8, 9, 12-15, and 17-20
Appellants generally describe the recited features of each of
dependent claims 2, 3, 5, 6, 8, 9, 12-15, and 17-20, and summarily assert
24
Appeal2017-010512
Application 14/029,959
that "by using the[ se] features ... , the claimed invention is ... an
improvement to another technology or technical field" (App. Br. 29-32).
But, Appellants do not provide any persuasive argument or technical
reasoning to support that position. For example, Appellants do not direct
our attention to anything in the Specification that attributes an improvement
in technology or a technical field to the claimed invention; nor do Appellants
identify the technology or technical field or explain in what way this
technology or technical field is allegedly improved. We also find no
indication in the Specification, nor do Appellants direct us to any indication,
that the dependent claims invoke any assertedly inventive programming,
require any specialized computer hardware or other inventive computer
components, or that the claimed invention, as recited in these claims, is
implemented using other than generic computer components to perform
generic computer functions, which is not enough for patent-eligibility.
See Alice Corp., 573 U.S. at 223 ("[I]f a patent's recitation of a computer
amounts to a mere instruction to 'implemen[t]' an abstract idea 'on ... a
computer,' ... that addition cannot impart patent eligibility.") (internal
citations omitted).
Appellants ostensibly maintain that dependent claims are
patent-eligible because they recite features that are not well-understood,
routine, and conventional activities (App. Br. 29-32). Yet, the features that
Appellants identify are either part of the abstract idea itself, i.e., they are not
additional elements to be considered when determining whether the claim
includes additional elements or a combination of elements that is sufficient
to amount to significantly more than the judicial exception, or are generic
computer components ( e.g., a handheld device including a CPU, as recited in
25
Appeal2017-010512
Application 14/029,959
claim 19, and a server cluster, as recited in claim 20). As described above
with respect to claim 1, the Examiner determined here, and we agree, that
the only claim elements beyond the abstract idea are the claimed generic
computer components (Final Act. 3). Appellants do not contend that there is
a genuine issue of material fact regarding whether operation of these generic
computer components is well-understood, routine, or conventional.
Responding to the Examiner's Answer, Appellants ostensibly
maintain that providing a break point that ensures that a load capacity of a
vehicle is optimized by eliminating one or more products that do not meet a
threshold requirement, as recited in dependent claim 3, is an improvement in
the technical field of cubing operations (Reply Br. 3 6). But, optimizing the
load capacity of a vehicle is not a technical problem; it is a business concern
related to maximizing profitability. And eliminating products that do not
contribute to achieving that objective is a business, not a technical solution.
Also, as described above, with respect to claim 11, to the extent
eliminating products that do not meet a threshold requirement affects the
cubing operation at all, that effect merely concerns the identity of the
particular products to which the cubing operation is applied, i.e., the cubing
operation is applied to only those products that meet the threshold
requirement. We fail to see, and Appellants do not explain, how performing
cubing operations for products that have been identified (in advance of any
cubing operations) as meeting a threshold requirement rather than for
other/different products, somehow amounts to a technological improvement
to the technical field of cubing operations.
Appellants also note in the Reply Brief that claim 20 recites that the
system of claim 1 further comprises "a server cluster which comprises at
26
Appeal2017-010512
Application 14/029,959
least two computing devices that communicate over a network, and at least
one computing device of the at least two computing devices comprising a
handheld device with the CPU for executing the management system"
(Reply Br. 38). Appellants argue that "these features are technological
features which help to improve on the existing process of transportation"
(id.). Yet, the law is clear that "not every claim that recites concrete,
tangible components escapes the reach of the abstract-idea inquiry." In re
TL! Commc'ns LLC Patent Litig., 823 F.3d 607,611 (Fed. Cir. 2016). The
claimed invention, as recited in claim 20, is not directed to an improvement
in computer network or server technology; instead, it is directed to
identifying products for shipment and applying a cubing algorithm to the
identified products, i.e., to load scheduling, and uses the recited components
only in their ordinary and conventional capacity.
We are not persuaded, on the present record, that the Examiner erred
in rejecting dependent claims 2, 3, 5, 6, 8, 9, 12-15, and 17-20 under
35 U.S.C. § 101. Therefore, we sustain the Examiner's rejection.
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 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
27