Ex Parte Davidson et al

Patent Trial and Appeal Board

Nov 29, 2018

13435831 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/435,831 03/30/2012 Mark J. Davidson
143177 7590 12/03/2018
Shook, Hardy & Bacon L.L.P.
(United Parcel Service, Inc.)
2555 Grand Blvd.
Kansas City, MO 64108-2613
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.
056182/407801 2076
EXAMINER
KARMIS, ALISSA D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK J. DAVIDSON and CHRISTOPHER T. SCHENKEN
Appeal 2018-002 710
Application 13/435,831 1
Technology Center 3600
Before JOHN A. EV ANS, HUNG H. BUI, and AARON W. MOORE,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner'sFinalRejectionofclaims 1--4, 6, 7, 10-12, and 14--17, which are
all the claims pending in the application. Claims 5, 8, 9, and 13 are
cancelled. Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellants, the real party in interest is United Parcel Service
of America, Inc. App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed August
3, 2017; ReplyBrief("ReplyBr.") filed January 16, 2018; Examiner's
Answer ("Ans.") mailed December 12, 2017; Final Office Action ("Final
Act.") mailed May 5, 2017; and original Specification ("Spec.") filed March
30, 2012.
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STATEMENT OF THE CASE
Appellants' invention relates to "systems and methods for capturing
and evaluating operational data in order to improve operational efficiencies
in a variety of business contexts." Spec. 2: 10-12. According to Appellants,
"an asset management computer system [is provided] for assessing asset
efficiency." Spec. 2:14--15. One or more processors are configured to:
"[1] receive operational data indicative of one or more asset dynamics for at
least one asset during one or more time periods; [2] segment the operational
data into a plurality of activity segments, the activity segments representing
periods of time classified according to asset activity; and [3] determine,
based on the operational data, one or more operational characteristics for
each of the activity segments." Spec. 2:18-22.
Claims 1 and 17 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below:
1. An asset management computer system for
assessing asset efficiency, said asset management computer
system comprising:
one or more memory storage areas; and
one or more processors in communication with said one or
more memory storage areas;
wherein said one or more processors are, collectively,
configured to:
receive operational data from at least one location-
determining device associated with at least one asset, wherein
said operational data comprises time stamped data records each
indicative of asset dynamics for the at least one asset at
individual instances in time, wherein the operational data is
collectively indicative of one or more asset dynamics for the at
least one asset during one or more time periods, wherein said one
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or more asset dynamics comprise the location of said at least one
asset;
segment said operational data into a plurality of activity
segments each having an activity classification, said activity
segments representing periods of time classified according to
asset activity, and wherein each activity segment comprises a
chronological series of time stamped data records collectively
indicating that the asset is engaged in a consistent asset activity;
determine, based at least in part on said operational data,
planned locations for each of said activity segments;
compile, based at least in part on said operational data, one
or more operational characteristics for each of said activity
segments, wherein said operational characteristics comprise the
location of the at least one asset during a respective activity
segment;
determine, based at least in part on the activity
classification for each of said activity segments, abnormality
criteria for each of said activity segments, wherein the
abnormality criteria for each of said activity segments comprises
a threshold distance from the planned location determined based
at least in part on the activity classification for the at least one
asset during the activity segment;
compare the location of the at least one asset during at least
one activity segment against the planned location for the at least
one asset during the at least one activity segment;
determine whether the location of the at least one asset
during the at least one activity segment is within the threshold
distance from the planned location for the at least one asset
during the at least one activity segment;
identify one or more of said activity segments indicating a
potentially inefficient asset activity based on the location of said
at least one asset during respective activity segments and the
activity classification of the respective activity segments,
wherein each activity segment indicating a potentially inefficient
asset activity is identified as occurring outside of the threshold
distance for the respective activity segment; and
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generate, via a graphical display, a graphical
representation comprising a Gantt chart of one or more of said
activity segments.
App. Br. 12 (Claims App'x).
EXAMINER'S REJECTION3
Claims 1--4, 6, 7, 10-12, and 14--17 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to an abstract idea
without significantly more. Final Act. 6-11.
DISCUSSION
To determine whether subject matter is patent-eligible under § 101,
the Supreme Court has set forth a two part test "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. Pty. v.
CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). The first step in the analysis
is to "determine whether the claims at issue are directed to one of those
patent-ineligible concepts," such as an abstract idea. Id. If the claims are
directed to eligible subject matter, the inquiry ends. Thales Visionix Inc. v.
United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
3 Claims 1--4, 6, 7, 10-12, and 14--17 were also rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Bird et al. (US 6,526,341 Bl; issued
Feb. 25, 2003) ("Bird"), Sutherland (US 5,068,656; issued Nov. 26, 1991),
and Sheha et al. (US 7,903,001 B2; issued Mar. 8, 2011) ("Sheha").
However, the Examiner withdrew the§ 103 rejection in the Examiner's
Answer (Ans. 3). As such, we need not address this rejection on appeal.
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If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
In other words, the second step is to "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."' Id. (quoting Mayo, 566 U.S. at 72-73).
"'[W]ell-understood, routine, [and] conventional activit[ies]' previously
known to the industry" are insufficient to transform an abstract idea into
patent-eligible subject matter. Id. ( quoting Mayo, 566 U.S. at 73).
In rejecting claims 1--4, 6, 7, 10-12, and 14--17 under 35 U.S.C.
§ 101, the Examiner determines these claims are directed to an abstract idea
of "assessing asset efficiency" and include limitations that are analogous to
claims directed to organizing, storing, and transmitting information
discussed in Cyberfone. Final Act. 6-7 (quoting Cyberfone Sys., LLC v.
CNN Interactive Grp., Inc., 558 F. App'x 988 (Fed. Cir. 2014). The
Examiner also determines steps recited in these claims can be implemented
mentally or performed manually by a human with pen and paper. Final Act.
7-8; see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
(Fed. Cir. 2011).
The Examiner further determines the claims fail to amount to
"significantly more" than the judicial exception" because these claims do not
include (1) "improvements to another technology or technological field," (2)
"improvements to the functioning of the computer itself," (3) "effecting a
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transformation or reduction of a particular article into a different state or
thing," or (4) "adding a specific limitation other than what is well
understood, routine and conventional in the field, or adding unconventional
steps that confine the claim to a particular useful application." Final Act. 9.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue the
claims are not directed to an abstract idea because:
(1) "the Examiner provides absolutely no analysis," "provides
[only] conclusory statements that each element recited in
the claim . . . is similar or identical to claims deemed
unpatentable by the Federal Circuit," and interpreted the
claims at "a high level of abstraction and untethered from
the language of the claims[,] all but ensur[ing] that the
exceptions to § 101 swallow the rule"' (App. Br. 11-15;
Reply Br. 2);
(2) Appellants' claims, like the claims in Enfzsh, "recite
several features that are operable specifically in the realm
of computers to identify potentially inefficient asset
activities through discrete abnormality criteria that are
based on specific, computer-performed data
manipulations of data collected by location-determining
devices" and, as such, "are much more than simple and
well-known computing functions, but provide complex
and unique computer executed functions for identifying
potentially inefficient asset behavior through the creation
and use of a derivative data set based on data received by
the computing system" (App. Br. 15-16; Reply Br. 5); and
(3) Appellants' claims, like the claims in McRO, Inc. v.
Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016), "utilize discrete, objective criteria for
identifying potentially inefficient asset behavior based on
a specific manipulation of data to first create a derivative
data set (identifying segmented operational data and
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appropriate activity segment classifications based on the
identified segments) that enables the identification of
applicable abnormality criteria which, in tum, are applied
to the received operational data to objectively identify
potentially inefficient asset activities" (App. Br. 17) and
"use computing devices in non-conventional ways to
achieve an unconventional technological result that
improves the functionality of computing systems (Reply
Br. 5---6)."
App. Br. 11-17; Reply Br. 2-5 (emphasis added).
Appellant's arguments are not persuasive. First, the Examiner is
required to review all claims at some level of generalization and characterize
whether those claims are directed to an abstract idea under Alice step 1.
However, there is no single definition of "abstract idea." As the Federal
Circuit succinctly put it:
The problem with articulating a single, universal definition of
"abstract idea" is that it is difficult to fashion a workable
definition to be applied to as-yet-unknown cases with as-yet-
unknown inventions.
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016). Because there is no single definition of an abstract idea, the
Federal Circuit instructs us "to examine earlier cases in which a similar or
parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Id. at 1294 (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); accord USPTO
Memorandum, July 2015 Update: Subject Matter Eligibility (2015),
https://www.uspto.gov/sites/default/files/ documents/ieg-july-2015-
update.pdf ("USPTO Memorandum") (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea"). In this case, the
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Examiner did just what she was required to do under the USPTO
Memorandum, has characterized the claims as required pursuant to Alice,
and identified analogous claims as discussed in Cyberfone.
Second, Appellants' reliance on (1) Enfzsh and (2) McRO is
misplaced. For example, Enfzsh 's patent claims were directed to an
improved database architecture, i.e., a self-referential table - "a specific
type of data structure designed to improve the way a computer stores and
retrieves data in memory." Enfzsh, 822 F.3d at 1339. Such a data structure
has several distinct advantages over conventional relational databases,
including: (1) faster searching of data than would be possible with the
conventional relational model (see US 6,151,604, 1:55-59, 2:66-3:6); (2)
more effective storage of data other than structured text, such as storage of
images and unstructured text (id. at 2: 16-22, 2:46-52); and (3) more
flexibility in configuring the database (id. at 2:27-29).
In Enfzsh, "the focus of the claims [was] on the specific asserted
improvement in computer capabilities (i.e., the self-referential table for a
computer database)." Enfish, 822 F.3d at 1335-36. Based on the "plain
focus of the claims," the Federal Circuit reached the conclusion that Enfzsh 's
claims were directed to "a specific improvement to the way computers
operate, embodied in the self-referential table," and, as such, were more than
a mere abstract idea. Id. at 1336.
Similarly, McRO 's claims contain (i) specific limitations regarding a
set of rules that "define[] a morph weight set stream as a function of
phoneme sequence and times associated with said phoneme sequence" to
enable computers to produce "accurate and realistic lip synchronization and
facial expressions in animated characters" and, when viewed as a whole, are
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directed to (ii) a "technological improvement over the existing, manual 3-D
animation techniques" that uses "limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice." McRO, 837 F.3d at 1313, 1316.
In contrast to Enfish and McRO, Appellants' claims and Specification
are directed to "systems and methods for capturing and evaluating
operational data in order to improve operational efficiencies in a variety of
business contexts [e.g., asset efficiency]." Spec. 2:10-12. According to
Appellants, "an asset management computer system [is provided] for
assessing asset efficiency." Spec. 2: 14--15. One or more processors are
configured to: "[1] receive operational data indicative of one or more asset
dynamics for at least one asset during one or more time periods; [2] segment
the operational data into a plurality of activity segments, the activity
segments representing periods of time classified according to asset activity;
and [3] determine, based on the operational data, one or more operational
characteristics for each of the activity segments." Spec. 2: 18-22.
Based on Appellants' claims and Specification, we agree with the
Examiner that the claims are directed to an abstract idea of "assessing asset
efficiency" based on input data, which is considered as a "fundamental
economic practice." Final Act. 6; Ans. 4. Such activities are squarely
within the realm of abstract ideas. Assessing asset efficiency based on input
data is a fundamental business practice prevalent in our system of
commerce, like (1) the risk hedging in Bilski v. Kappas, 561 U.S. 593
(2010); (2) the intermediated settlement in Alice, 134 S. Ct. at 2356-57;
(3) verifying credit card transactions in CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011); (4) guaranteeing
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transactions in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed.
Cir. 2014 ); ( 5) distributing products over the Internet in Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014); (6) determining a price of a
product offered to a purchasing organization in Versata Dev. Grp., Inc. v.
SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015); and (7) pricing a product for
sale in OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir.
2015). Assessing asset efficiency based on input data is also a building
block of a market economy and, like risk hedging and intermediated
settlement, is an "abstract idea" beyond the scope of§ 101. See Alice, 134
S. Ct. at 2356.
In addition, we also agree with the Examiner that the steps recited in
Appellants' claims 1 and 17 are merely receiving, processing, comparing,
and identifying data of a specific content, e.g., operational data. Ans. 7.
Information, as such, is intangible, and data analysis and comparisons,
without more, are abstract ideas. See, e.g., Microsoft Corp. v. AT & T Corp.,
550 U.S. 437,451 fn.12 (2007); Alice, 134 S. Ct. at 2355; Gottschalkv.
Benson, 409 U.S. 63, 71-72 (1972). "[C]ollecting information, including
when limited to particular content ( which does not change its character as
information)," is "within the realm of abstract ideas." Elec. Power Grp., 830
F.3d at 1353-54; see also Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource, 654 F.3d
at 1370.
Moreover, we note Appellants' claims 1 and 7 do not improve the
performance of a computer or solve a problem specific to computers or
computer networks. Appellants' Specification and arguments do not
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demonstrate the claims "improve the way a computer stores and retrieves
data in memory," as the claims in Enfzsh did via a "self-referential table for a
computer database." See Enfzsh, 822 F.3d at 1336, 1339. Neither the steps
recited in Appellants' claims 1 and 17, nor the rest of Appellants'
Specification supply any description or explanation as to how these data
processing or analysis steps are intended to provide "a specific improvement
to the way computers operate," as explained in Enfzsh, 822 F.3d at 1336; or
an "unconventional technological solution ... to a technological problem"
that "improve[s] the performance of the system itself," as explained in
Amdocs, 841 F.3d at 1300, 1302.
As further recognized by the Examiner (Final Act. 3), the steps recited
in Appellant's claims 1 and 1 7, such as: [ 1] "receiving operational data ...
indicative of one or more asset dynamics for at least one asset during one or
more time periods;" [2] "segmenting said operational data into a plurality of
activity segments"; [3] "determining ... planned locations for each of said
activity segments;" [ 4] "operational characteristics for each of the activity
segments"; [5] "compiling ... one or more operational characteristics for
each of said activity segments"; [6] "determining ... abnormality criteria for
each of said activity segments"; [7] "comparing the location of the at least
one asset during at least one activity segment against the planned location
for the at least one asset during the at least one activity segment;" [8]
"determining whether the location of the at least one asset during the at least
one activity segment is within the threshold distance ... "; [9] "identifying
one or more of said activity segments indicating a potentially inefficient
asset activity"; and [10] "generating a graphical display ... of one or more
of said activity segments" (see claim 1 7) are also mental steps that could be
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performed in the human mind or by a human using a pen and paper. See
CyberSource, 654 F.3d at 1372-73 ("[A] method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under [section] 101."); see also In re Comiskey, 554 F.3d 967, 979 (Fed. Cir.
2009) ("[M]ental processes----or processes of human thinking-standing
alone are not patentable even if they have practical application.");
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.") (emphasis
added). Additionally, 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.").
Accordingly, we agree with the Examiner that claims 1 and 17 are
directed to an abstract idea of "assessing asset efficiency" based on input
data. Final Act. 6; Ans. 4.
Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue the claims
recite elements that amount to "significantly more" [i.e., inventive concept]
than the alleged abstract idea" because:
( 1) Appellants' claims, like the claims in Amdocs (Israel) Ltd.
v. Openet Telecom, Inc. 841 F.3d 1288 (Fed. Cir. 2016),
"recite features for receiving specific operational data
identifying the location and time at which the operational
data was generated by a location determining device, for
segmenting the data into activity segments and assigning
activity segment classifications to each of those activity
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segments to effectively provide enhanced data derived
from that originally received, and for utilizing that
enhanced data to identify and apply abnormality criteria to
provide an objective methodology for identifying
potentially inefficient asset behavior"; and
(2) Appellants' claims, like the claims in DDR Holdings, are
"necessarily rooted in the realm of computer networks."
App. Br. 18-21; Reply Br. 6-7.
Appellant's arguments are not persuasive. Under current Federal
Circuit precedent, an "inventive concept" under Alice step 2 can be
established by showing, for example, that the patent claims:
(1) provide a technical solution to a technical problem unique
to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks"
(see DDR, 773 F.3d at 1257);
(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each
end user" (see BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1352, 1350
(Fed. Cir. 2016)); or
(3) "entail[] an unconventional technological solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously
required massive databases)" and "improve the
performance of the system itself' (see Amdocs, 841 F.3d
at 1300, 1302).
In this case, however, we find no element or combination of elements
recited in Appellant's claims 1 and 17 that contains any "inventive concept"
or adds anything "significantly more" to transform the abstract concept into
a patent-eligible application. Alice, 134 S.Ct. at 2357. For example,
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Appellant's abstract idea of "assessing asset efficiency" based on input data
is not rooted in computer technology; nor does it (1) provide any technical
solution to a technical problem unique to the Internet as required by DDR
Holdings; (2) provide any particular practical application as required by
Bascom; or (3) entail an unconventional technological solution to a
technological problem as required by Amdocs. Instead, Appellant's
invention simply uses a generic computing device and network, shown, for
example, in Figures 1-23, to perform the abstract idea of "assessing asset
efficiency" based on input data. Spec. 2: 14--22; Abstract.
As recognized by the Examiner, the use of generic computer elements
such as "a computer system, memory storage and processors" do not alone
transform an otherwise abstract idea into patent-eligible subject matte Final
Act. 10. As our reviewing court has observed, "after Alice, there can remain
no doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible." DDR, 773 F.3d at 1256 (citing
Alice, 134 S.Ct. at 2358).
Additional Argument
Appellants argue that the claims "do not preempt the use of any
abstract ideas recited." App. Br. 21. However, this argument is not
persuasive because, although "preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). "Where a patent's claims are deemed only to
disclose patent ineligible subject matter" under the Alice/Mayo framework,
"preemption concerns are fully addressed and made moot." Id.
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Because Appellant's claims 1 and 17 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
claims 1--4, 6, 7, 10-12, and 14--17 under 35 U.S.C. § 101.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1--4, 6, 7, 10-12, and
14--17 under 35 U.S.C. § 101.
DECISION
As such, we AFFIRM the Examiner's rejection of claims 1--4, 6, 7,
10-12, and 14--17 under 35 U.S.C. § 101.
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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