Ex Parte Erickson

Patent Trial and Appeal Board

Oct 13, 2017

12077053 (P.T.A.B. Oct. 13, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/077,053 03/14/2008 Warren D. Erickson ALAC-00101 4638
34051 7590
Stevens Law Group
1754 Technology Drive
Suite #226
San Jose, CA 95110
EXAMINER
GOLDBERG, IVAN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/17/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto @ stevenslawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WARREN D. ERICKSON1
Appeal 2016-000581
Application 12/077,053
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE2
Warren D. Erickson (Appellant) seeks review under
35 U.S.C. § 134(a) of a final rejection of claims 1—20, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b). We Affirm.
According to Appellant the real party in interest is Alacrity Renovation
Services LLC. App. Br. 3.
2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed July 31, 2014) and Reply Brief (“Reply Br.,” filed November 13,
2014), and the Examiner’s Answer (“Ans.,” mailed September 16, 2014),
and Final Action (“Final Act.,” mailed February 5, 2014).
Appeal 2016-000581
Application 12/077,053
The Appellant invented a way of collecting and distributing data, such
as via a portable device. Specification 1:9—10.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[1] receiving a job assignment into a portable device, the job
assignment identifying a job site location;
[2] receiving physical dimensions of the job site location into
the portable device;
[3] receiving initial environmental data associated with the job
site location into the portable device;
[4] determining, by the portable device while at the job site
location, equipment needed at the job site location to complete
the job assignment based on the physical dimensions of the job
site location and the initial environmental data associated with
the job site location;
[5] displaying an indication of the equipment needed at the job
site location on the portable device;
[6] receiving subsequent environmental data associated with the
job site location into the portable device;
[7] determining, by the portable device while at the job site
location, whether any equipment changes are needed at the job
site location based on the job assignment and the subsequent
environmental data associated with the job site location;
and
[8] displaying the equipment changes needed at the job site
location on the portable device responsive to determining that
equipment changes are needed at the job site location.
The Examiner relies upon the following prior art:
Averbuch US 5,256,908
Shorrock US 2004/0249479 A1
Pedraza US 2005/0285748 A1
Oct. 26, 1993
Dec. 9, 2004
Dec. 29, 2005
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Application 12/077,053
Remsburg US 2006/0146908 A1 July 6, 2006
Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to non—
statutory subject matter.
Claims 1, 6—9, 13, 14, and 17—20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Pedraza and Shorrock.
Claims 2 and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Pedraza, Shorrock, and Averbuch.
Claims 3—5, 11, 12, 15, and 16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Pedraza, Shorrock, and Remsburg.
ISSUES
The issues of patent-eligible subject matter turn primarily on whether
data collection, analysis, and display is itself more than an abstract idea.
The issues of obviousness turn primarily on whether a system that relies on a
server for data retention and analysis, but on a client computer for data entry,
direction, and results display can be said to determine its results at the client
computer location, and if not, whether replacing the server with local storage
for data and algorithms was predictable to one of ordinary skill.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
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Application 12/077,053
Facts Related to the Prior Art
Pedraza
01 .Pedraza is directed to monitoring a drying procedure of a building
structure. Pedraza para. 1.
02. Pedraza describes procedures to dry the inside of a building after
the building has been exposed to unusually high amounts of
moisture or water. Undesired moisture and water may enter the
building through a fire sprinkler system, fire fighters using water
to control fires, flood, or pipes bursting or otherwise leaking.
Pedraza para. 2.
03. Pedraza describes drying procedure information as including
calculations, estimations, measurements, photographs, thermal
images, graphs, tables, text, building structure renditions such as
three dimensional virtual “walk-through” models, and other
information related to the drying procedure performed at the
building structure. Pedraza para. 16.
04. Pedraza describes a monitoring system implemented using any
combination of devices, hardware, software and firmware that
captures drying procedure data at a drying procedure site and
presents drying procedure information, including operational
characteristics of drying equipment, based on the drying procedure
data through a remote user interface. Pedraza para. 17.
05. Pedraza describes a technician entering some of the drying
procedure data through a user interface of a monitoring device.
Pedraza para. 19.
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Application 12/077,053
06. Pedraza describes how, if adjustments in the drying procedure are
necessary, the monitoring system allows the changes to be verified
and, in many circumstances, will indicate the reason for the
change. For example, if a drying procedure estimate includes a
drying time of three days and during the drying procedure it is
determined that four days are required, the insurance
representative can verify the need for the extra day by accessing
the drying procedure information. Pedraza para. 22.
07. Pedraza’s monitoring device 108 includes integral sensors.
Pedraza para. 38.
08. Pedraza describes its various functional blocks, with reference to
Fig. 2, as being integrated, arranged and implemented in any of
several configurations. Several of the functional blocks may be
implemented or may be commercially available as a single device.
In some circumstances, for example, a laptop computer may be
used to implement one or more of the functional blocks of FIG. 2.
The user interface 246, controller 218, memory 216, clock 248 as
well as at least portions of the communication interface 212 and
the data interface 214 may be implemented in the laptop
computer. Pedraza para. 46.
09. Pedraza describes its technician as measuring the length and
height of walls within the building structure to provide the
necessary information for calculating the volume of areas within
the structure. The dimensions are entered using the user interface.
Pedraza para. 52.
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Application 12/077,053
10. Pedraza describes its generation of the drying procedure
information as requiring multiple data manipulation, calculation,
estimation, and interpretation and may be performed by specific
drying procedure information engines invoked by the monitoring
process. For example, a three-dimensional graphical
representation of the structure may require one or more programs,
subroutines, or other software code to generate information that
can be interpreted by the user interface to display the three-
dimensional representation. Pedraza para. 92.
Shorrock
11. Shorrock is directed to monitoring environmental conditions, and
more particularly to monitoring room conditions to improve
occupant performance in a designated space. Shorrock para. 2.
12. Shorrock describes a stand-alone system located at the job site that
comprises both sensors and the determinative algorithms.
Shorrock paras. 69-81.
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ANALYSIS
Claims 1—20 rejected under 35 U.S.C. § 101 as directed to non—statutory
subject matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us? [] To answer that question,
[] 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. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner finds the
claims directed to receiving data on a job site and determining equipment
changes needed at the job site. Ans. 2—3.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
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The preamble to claim 1 does not recite any purpose, but the steps in
claim 1 result in determining and displaying equipment needs. The
Specification at 1:9—10 recites that the invention relates to the collection and
distribution of data. Thus, all this evidence shows that claim 1 is directed to
the collection and distribution of equipment needed data, i.e. data collection,
analysis, and display.
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); see also In re TLI
Comma ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data collection, analysis, and
display and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract
because they “focused on a specific asserted improvement in computer
animation”). As such, claim 1 is directed to the abstract idea of receiving,
authenticating, and displaying data.
The remaining claims merely describe sensing and labelling
modalities. We conclude that the claims at issue are directed to a patent-
ineligible concept.
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The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. . . . Nor is limiting the use of
an abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” . . . that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, . . . wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, determine, and display data amounts to electronic data
query and retrieval—one of the most basic functions of a computer. All of
these computer functions are well-understood, routine, conventional
activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
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Application 12/077,053
are considered separately. Viewed as a whole, Appellant’s method claims
simply recite the concept of collection and distribution of equipment need
data as performed by a generic computer. The method claims do not, for
example, purport to improve the functioning of the computer itself. Nor do
they effect an improvement in any other technology or technical field.
Instead, the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of collection and distribution of
equipment need data using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See id. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] . . . against” interpreting
§ 101“in ways that make patent eligibility ‘depend simply on
the draftsman’s art.’
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellant’s argument that
these limitations are not abstract concepts because they are not
“long prevalent,” or “well known in the art.” The claim
limitations quality as “something more” for various reasons.
The claim limitations automate the implementation of the job
assignment at the job site location. The claim limitations
automatically determine equipment needed (and subsequent
equipment changes) based on multiple factors, such as physical
dimensions of the job site and environmental data. Further,
after determining whether equipment changes are necessary, the
method displays those changes for the specific job site location.
This functionality is not known in the prior art and thus presents
an improvement to the functioning of the claimed method.
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Additionally, the claim limitations provide meaningful
limitations that improve the process of performing a job
assignment at a job site location.
Reply Br. 6—7.
First, it is unclear which limitations are not long prevalent, as the
limitations generally recite data inputs for determining equipment needs, and
all of them would have logically been appropriate in the paper and pencil
era. The primary argument appears to be that the process is automated, but
Alice clearly held that is insufficient. Identifying input parameters, such as
factors employed, is no more than identifying particular data inputs, which
similarly is insufficient, as the data input label has little to do with technical
implementation. Making decisions for a specific job location is as old as
contracting. The functionality Appellant refers to is again, automation of
data processing, which has been held in itself to be abstract subject matter.
Appellant repeats these arguments as to the remaining independent claims.
Claims 1, 6—9, 13, 14, and 17—20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Pedraza and Shorrock
We are not persuaded by Appellant’s argument that the art fails to
describe determining, by the portable device while at the job site location,
equipment needed. Appellant contends that because Pedraza describes using
a server, which itself is located apart from the job site, the determination is
not made at the job site. App. Br. 10—13. The remaining steps recite
receiving and displaying data, and whether a user interface would do so;
where the user interface is located is not at issue.
The Examiner finds that most of the structure used to collect the data
is generally within a laptop computer, and those that are not, generally
sensors would not be within a laptop, would be at the job site because that is
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where the environment to be sensed is located. Final Act. 6—15. Appellant
contends that by this very finding, not all of the functional blocks Pedraza
describes are within the laptop. App. Br. Id. But the limitation at issue is
not that of having structure within a single housing, but performing certain
functions at the job site. Again, even those sensors Pedraza describes that
are external to the laptop would necessarily be at the job site because that is
the environment to be sensed.
So we are left with the issue of whether reliance on a server is fatal to
the rejection. The limitation of “determining, by the portable device while at
the job site location” occurs twice, and in neither occurrence is any
implementation recited or limited. There is no question that Pedraza
describes entering the pertinent data and reporting back the results of the
determination. Thus, the direction to make the determination originates at
the job site in Pedraza’s laptop. As there is no restriction on how the
determination is made, making the determination by delegating it to a server
is within the scope of the claim. As the direction to do so originates with the
data entry and ends with the reporting at the job site, the determination is
made by the laptop while at the job site. Any use of an offsite server is
simply unrecited implementation details. Beyond that, the use of a server is
no more than a workload sharing implementation, and retaining the entire
workload instead is at least predictable for the purpose of eliminating the
need for a communication channel, and is known to one of ordinary skill if
only because such unitary construction was the typical model prior to the
advent of client-server architecture. The Examiner applies Shorrock as an
example of retaining the determinative algorithms for monitoring
environmental conditions in a single system located at the job site.
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We are not persuaded by Appellant’s argument that the art fails to
describe using physical dimensions of the job site location. App. Br. 11.
Pedraza explicitly describes a technician entering the physical dimensions as
a data input and using those for a three-dimensional model to computer
needs, including equipment operational characteristics.
We are not persuaded by Appellant’s argument that the art fails to
describe determining whether equipment changes are needed. Id. Pedraza
explicitly describes continual monitoring to make necessary changes.
Claims 2 and 10 rejected under 35 U.S.C. § 103(a) as unpatentable over
Pedraza, Shorrock, and Averbuch
These claims are not separately argued.
Claims 3—5, 11, 12, 15, and 16 rejected under 35 U.S.C. § 103(a) as
unpatentable over Pedraza, Shorrock, and Remsburg
These claims are not separately argued.
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CONCLUSIONS OF LAW
The rejection of claims 1—20 under 35 U.S.C. § 101 as directed to non—
statutory subject matter is proper.
The rejection of claims 1, 6—9, 13, 14, and 17—20 under 35 U.S.C.
§ 103(a) as unpatentable over Pedraza and Shorrock is proper.
The rejection of claims 2 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Pedraza, Shorrock, and Averbuch is proper.
The rejection of claims 3—5, 11, 12, 15, and 16 under 35 U.S.C. § 103(a)
as unpatentable over Pedraza, Shorrock, and Remsburg is proper.
DECISION
The rejections of claims 1—20 are 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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