Ex Parte Bushnell

Patent Trial and Appeal Board

Aug 27, 2018

13086374 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/086,374
11951 7590
LeClairRyan
70 Linden Oaks
Suite 210
FILING DATE
04/13/2011
08/29/2018
Rochester, NY 14625
FIRST NAMED INVENTOR
Christopher G. Bushnell
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.
15783.0100 4064
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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):
USPTOinboxroc@leclairryan.com
kelly.badum@leclairryan.com
phoebe.jones@leclairryan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER G. BUSHNELL
Appeal2017-005686
Application 13/086,374
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C § 134(a) of the
Examiner's Final Rejection of claims 1-3, 8, 10, and 21-33, constituting all
claims currently pending in the application. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
Appeal2017-005686
Application 13/086,374
STATEMENT OF THE CASE
Appellant's invention is directed to "systems and methods that
propagate modifications between various versions of a construction
specification." Spec. ,r 3. Claim 1, reproduced below with the disputed
limitations in italics, is representative of the claimed subject matter:
1. A method for automatically propagating information
between various linked electronic specification documents
having differing levels of project detail, the method comprising:
detecting, by the specification management computing
device, a modification to a first clause of a first electronic
specification document, wherein the first electronic specification
document is associated with a project and corresponds to a first
level of detail;
determining, by the specification management computing
device, as a result of the detected modification when a change
should be made to a second electronic specification document
linked to the first electronic specification document in a
hierarchy of electronic specification documents associated with
the project, based at least in part on whether a second clause in
the second electronic specification document that corresponds to
the first clause has been customized by a user, wherein the
second electronic specification document corresponds to a
second level of detail different from the first level of detail; and
when the determining indicates that a change to the second
electronic specification document should be made,
automatically:
retrieving, by the specification management
computing device and from relational database system,
specification data based on the modification to the first clause,
the specification data comprising content having the second level
of detail; and
incorporating, by the specification management
computing device, the specification data having the second level
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Application 13/086,374
of detail into the second clause of the second electronic
specification document.
REJECTIONS
Claims 1-3, 8, 10, and 21-33 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
Final Act. 4.
Claims 1-3, 8, 10, and 21-33 stand rejected under 35 U.S.C. § I02(b)
as being anticipated by Yatt (US 2006/0185275 Al; published Aug. 24,
2006). Final Act. 6.
ANALYSIS
35 US.C. § 101 Rejection
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), identifies a two-step framework for determining whether claimed
subject matter is judicially excepted from patent eligibility under 35 U.S.C.
§ 101. In the first step, "[ w ]e must first determine whether the claims at
issue are directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355.
The Examiner determines the claims are directed to "identifying
changes that need to be made to stored information, e.g., specification,
documents, blueprints, and the like, based on the determination that changes
that affect the stored information have been modified and updating the
stored information to reflect those changes" (Ans. 4), which is an abstract
idea of a "mental process (thinking) that 'can be performed in the human
mind, or by a human mind using pen and paper['] (receiving updated
information that affects documents associated with the updated information
and updating the documents to reflect the updated information)." Ans. 5.
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Appellant argues that the claims do "not recite any mathematical
formula" (Br. 12), and do not preempt "file management," but rather are
directed to "automatically detecting when a modification impacting
hierarchical relationship within a document has taken place, determining
when such a modification needs to be made to a different hierarchical level
of the document, and then executing the modification which is clearly not
preemption any broad concept of file management." Br. 13.
We are not persuaded by Appellant's arguments. We agree with the
Examiner's determination that the claims are directed to a mental process for
updating documents to reflect received updated information affecting those
documents. See Ans. 5. Specifically, the claims are directed to detecting
modifications made to a first document and detecting that the modifications
should be made to a second document, and subsequently applying the
modifications to the second document. Thus, the claims can be performed
by a human ( e.g., a human identifies modifications made to a document that
should be applied to a second document, and a human applies the
modifications to the second document). See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (holding that "a method that
can be performed by human thought alone," or "can be performed in the
human mind, or by a human using a pen and paper" is an abstract idea).
In the second step of Alice, we "consider the elements of each claim
both individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)). In other words, the
second step is to "search for an 'inventive concept' - i.e., an element or
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Application 13/086,374
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."' Id. (alteration in original) (quoting Mayo, 566 U.S. at 72-
73).
The Examiner further determines the additional elements in the claims
( e.g., "specification management computing device") do not provide
meaningful limitations to transform the abstract idea into a patent eligible
application of the abstract idea such that the claims amount to significantly
more than the abstract idea itself. See Ans. 11. Specifically, the Examiner
determines the additional claims merely utilize "a general purpose device to
perform the steps of the abstract idea," which "is nothing more than having
the general purpose device perform the well-understood, routine, and
conventional activities already known." Ans. 13-14.
Appellant argues that the claims "cannot be performed manually" and
"are restricted to computer technology." Br. 15. According to Appellant,
the claimed invention is "rooted in computer technology," and is directed to
"automatically propagating information between various linked electronic
specification documents having differing levels of project detail." Br. 13-
14. Appellant contends "the claimed technology requires a relational
database that includes relationships or dependencies, as well as a hierarchy
(e.g., level of detail), between specification clauses." Br. 14. Appellant also
argues the claimed limitations "add specific limitations other than what is
well-understood, routine, and conventional in the field, and add
unconventional steps that confine the claims to a particular useful
application" being an "automated solution that facilitates more efficient and
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effective generation of electronic specification documents associated with a
project than prior art systems." Br. 15-16.
We are not persuaded by Appellant's arguments and agree with the
Examiner's findings and conclusions. See Ans. 11-32. Although the claims
describe employing a "specification management computing device" to
perform Appellant's method (to determine a modification has been made to
a first document and that the modification should be applied to a second
document, and incorporating the modification to the second document), we
agree with the Examiner that the recited steps describe a mental process that
is not restricted to any technology and can be performed by a human using
pen and paper. See Ans. 5; see, e.g., 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."). Appellant has not rebutted the Examiner's determination that,
"unlike DDR Holdings, the claimed invention is not 'deeply rooted in the
technology' since" humans have long known how to "gather[] the necessary
information pertaining to the update and corresponding documents so as to
update the documents affected by the update," which do not "improve upon
how the technology, i.e. the computing device, fundamentally functions."
Ans. 14; see DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1256 (Fed.
Cir. 2014).
Moreover, rather than reciting additional elements that amount to
"significantly more" than the abstract idea, the pending claims, at best, add
only a "computing device," which "may be a general-purpose or special-
purpose computer or any of a variety of consumer electronic devices," such
as "a personal computer, a notebook computer, a netbook, a personal digital
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assistant ('PDA') or other hand-held device, a workstation, a minicomputer,
a mainframe, a supercomputer, a multi-processor system, a network
computer, a processor-based consumer electronic device, or the like." Spec.
,r 32. The computing device, encompassing a generic computer and
functions, do not satisfy the inventive concept. See, e.g., DDR Holdings,
773 F.3d at 1256 ("[A]fter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible. The bare fact that a computer exists in the physical rather
than purely conceptual realm is beside the point." ( citation and internal
quotation marks omitted)).
The claims, when viewed as a whole, perform conventional
processing functions (retrieving and analyzing data) that courts have
routinely found insignificant to transform an abstract idea into a patent-
eligible invention. See, e.g., Elec. Power Grp. v. Alstom S.A., 830 F .3d
1350, 1353 (Fed. Cir. 2016) (claims directed to collection, manipulation, and
display of data); In re TL! Communications LLC Patent Litigation, 823 F.3d
607, 614 (Fed. Cir. 2016) (server that receives data, extracts classification
information from the received data, and stores the digital images insufficient
to add an inventive concept); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2015) ("[t]hat a computer receives and sends information
over a network,-,__with no further specification-is not even arguably
inventive"); Content Extraction & Transmission LLC v. Wells Fargo Bank,
National Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("collecting data, ...
recognizing certain data within the collected data set, and ... storing that
recognized data in a memory"). As such, the claims amount to nothing
significantly more than an instruction to implement the abstract idea on a
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generic computer - which is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 134 S. Ct. at 2360.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 1-3, 8, 10, and 21-33.
35 USC§ 102 Rejection
Issue: Did the Examiner err in finding that Y att describes
"determining, by the specification management computing device, as a result
of the detected modification when a change should be made to a second
electronic specification document linked to the first electronic specification
document in a hierarchy of electronic specification documents associated
with the project, based at least in part on whether a second clause in the
second electronic specification document that corresponds to the first clause
has been customized by a user, wherein the second electronic specification
document corresponds to a second level of detail different from the first
level of detail," as recited in independent claim 1 and commensurately
recited in independent claims 21 and 26?
Appellant argues Y att describes when an update should be made to a
database storing a classification system used to develop specification
documents, but not when a change should be made to any specification
document itself. Br. 6. Specifically, Appellant argues Y att does not describe
any determination made based on whether a clause in a second specification
document that corresponds to a first clause in has been customized. Id.
According to Appellant, Y att does not describe corrections, adjustments, or
changes being automatically propagated among electronic specification
documents associated with a project "via specification data retrieved from a
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relational database system, let alone based on varying levels of detail
associated with each of the documents." Br. 8.
We are persuaded by Appellant's arguments. As Appellant points out
(Br. 6), Y att describes an update should be made "based on a periodic time
or data or a notification that an update is available," but not to a second
specification document "based on any modification of the first specification
document." See Yatt ,r 63. For example, Yatt discloses "receiv[ing] inputs
from external sources which require incorporation into the classification
system," such as when a "manufacturer no longer provides a certain trim
element in wood," and "the change management component can obtain
and/or retrieve this information and update the classification system
accordingly." Yatt ,r 50 ( emphasis added).
We find the Examiner has not sufficiently explained how Yatt ( e.g.,
updating a classification system with changes, and incorporating changes
made to the classification system to affected documents) describes the
claimed "first electronic specification document," "first clause of a first
electronic specification document," "second electronic specification
document," and "second clause in the second electronic specification
document," let alone the rest of the disputed limitation.
Accordingly, we are constrained on the record before us to reverse the
Examiner's§ 102 rejection of independent claims 1, 21, and 26, and
dependent claims 2, 3, 8, 10, 22-25, and 27-33. See App. Br. 11-12.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1-3, 8, 10, and
21-33 is affirmed.
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The Examiner's 35 U.S.C. § 102 rejection of claims 1-3, 8, 10, and
21-33 is reversed.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject all of the
pending claims.
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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