Ex Parte Estes et alDownload PDFPatent Trial and Appeal BoardNov 8, 201713171251 (P.T.A.B. Nov. 8, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/171,251 06/28/2011 Jim ESTES ACDL4156UA 5220 26822 7590 11/13/2017 Hackler Daghighian Martino & Novak 433 North Camden Drive, Fourth Floor Beverly Hills, CA 90210 EXAMINER FLYNN, KEVIN H ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 11/13/2017 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): marc@hdmnlaw.com jcf@hdmnlaw.com uspto@dockettrak.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JIM ESTES and ED HUCKENSTEIN1 Appeal 2016-001628 Application 13/171,251 Technology Center 3600 Before CAROLYN D. THOMAS, KARA L. SZPONDOWSKI, and DAVID J. CUTITTAII, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Non-Final Rejection of claims 1—3, all of the pending claims of the application. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is ACD, LLC. Appeal Br. 3. Appeal 2016-001628 Application 13/171,251 STATEMENT OF THE CASE Invention According to Appellants, the invention relates to “a method and a system for monitoring and managing, particularly remotely, a cryogenics installation.” Spec. 1:3—4.2 Exemplary Claims Claims 1, 2, and 3 are independent claims. Claim 1 is exemplary and is reproduced below: 1. A cryogenic data collection system comprising: a plurality of customer depots configured for the bulk storage and transfer of a cryogenic; a customer depot signal processing module associated with each of the plurality of customer depots, each customer depot signal processing module having a memory and a signal receiver/transmitter configured to remotely receive and transmit system operating instructions and customer depot data, wherein the customer depot data comprises a current state of the cryogenic including a temperature and a pressure at each of the plurality of customer depots; a plurality of customer site locations configured for on-site storage and on-site usage of the cryogenic; a customer site location signal processing module associated with each of the plurality of customer site locations, each customer center site location processing module having a memory and a signal receiver/transmitter configured to remotely receive and transmit system operating instructions and customer site location data, wherein the customer site location data comprises a current state of the cryogenic including a 2 This Decision refers to: (1) Appellants’ Specification filed June 28, 2011 (“Spec.”); (2) the Non-Final Office Action (“Non-Final Act.”) mailed September 19, 2014; (3) the Appeal Brief (“Appeal Br.”) filed June 19, 2015; (4) the Examiner’s Answer (“Ans.”) mailed September 21, 2015; and (5) the Reply Brief (“Reply Br.”) filed November 19, 2015. 2 Appeal 2016-001628 Application 13/171,251 temperature and a pressure at each of the plurality of customer site locations; a plurality of transport units configured for receiving and delivering of the cryogenic between the plurality of customer depots and the plurality of customer site locations; and a transport unit signal processing module associated with each of the plurality of transport units, each transport unit signal processing module having a memory and a signal receiver/transmitter configured to remotely receive and transmit system operating instructions and transport unit data, wherein the transport unit data comprises a current state of the cryogenic including a temperature and a pressure at each of the plurality of transport units, wherein the cryogenic comprises a gas or a liquid. Appeal Br. 25—26. REFERENCES AND REJECTIONS (1) Claims 1—3 stand rejected under 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Non-Final Act. 4—5. (2) Claims 1—3 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Non-Final Act. 5—6. (3) Claims 1—3 stand rejected under 35 U.S.C. § 103(a) (pre-AIA) as being unpatentable over the combination of Schmidtberg (US 2005/0052284 Al; published Mar. 10, 2005) and Joao (US 2002/0099567 Al; published July 25, 2002). Non-Final Act. 6—8. Our review in this appeal is limited only to the above rejections and the issues raised by Appellants. Arguments not made are waived. See MPEP § 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv) and 41.39(a)(1). 3 Appeal 2016-001628 Application 13/171,251 ISSUES (1) Whether the Examiner errs in finding Appellants’ Specification (the “Specification”) lacks written support for the limitations “wherein the customer depot data comprises a current state of the cryogenic including a temperature and a pressure at each of the plurality of customer depots,” and “wherein the customer site location data comprises a current state of the cryogenic including a temperature and a pressure at each of the plurality of customer site locations,” as recited in claim 1. (2) Whether the Examiner errs in rejecting claim 1 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. (3) Whether the Examiner errs in finding claim 1 is obvious over the combination of Schmidtberg and Joao. ANALYSIS Issue 1 — Rejection of Claims 1—3 Under § 112, first paragraph The Examiner finds the Specification lacks written support for the limitations “wherein the customer depot data comprises a current state of the cryogenic including a temperature and a pressure at each of the plurality of customer depots,” and “wherein the customer site location data comprises a current state of the cryogenic including a temperature and a pressure at each of the plurality of customer site locations,” as recited in claim 1. Non-Final Act. 5—6. Specifically, the Examiner finds the “specification, in || 0016— 0018, discloses that the customer depot and customer site may receive and transmit various pieces of data, but there is no teaching of the narrower temperature and pressure as claimed.” Non-Final Act. 5. 4 Appeal 2016-001628 Application 13/171,251 In addition to paragraphs 16—18, Appellants argue these limitations find support at paragraphs 10 and 11 of the Specification (Appeal. Br. 17— 18) while asserting “an adequate description may be made in any way through express, implicit, or even inherent disclosures in the application.” Appeal. Br. 18 (citing MPEP §§2163(1), 2163.02). Whether a specification complies with the written description requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as originally filed, need not literally describe the claimed subject matter (i.e., using the same terms or in haec verba) in order to satisfy the written description requirement. But the Specification must convey with reasonable clarity to those skilled in the art that, as of the filing date that Appellants were in possession of the claimed invention. See id. We have reviewed the cited portions of the Specification on which Appellants rely. We are persuaded that the Specification conveys with reasonable clarity to those skilled in the art that, as of the filing date, Appellants were in possession of the claimed limitation. Initially, we disagree with the Examiner’s finding that 0010 only has support that the trailer transmits temperature/pressure data to a customer site location, and not vice versa.” Ans. 4. The paragraph states in part “the method in accordance with the present invention includes wirelessly communicating cryogenic type, volume, temperature, and pressure between a selected mobile trailer and/or truck and/or tractor and a selected customer site location.” Spec. 2: 19—24. In view of the other portions of the 5 Appeal 2016-001628 Application 13/171,251 Specification cited by Appellants, we find paragraph 10 does not limit temperature and pressure to one-way communication from the trailer to the customer site location. For example, claim 1 recites “a signal receiver/transmitter” associated with each of the plurality of customer depots and customer site locations, which implicitly supports Appellants’ argument that temperature and pressure data is communicated in both directions — e.g., from the customer depots or customer site locations to the transport unit and vice versa. Further, the Specification states “the method according to the present invention further comprising utilizing the cryogenic information to predict premature failure of the depot, trailer, and service center.” Spec. 2: 26—27 (emphasis added). Likewise, the claim recites that both the customer depot and customer site location have signal processing modules similar to the signal processing module provided in the transport units. In view of these findings, we do not agree with the Examiner’s determination that the Specification fails to provide support for the limitations. Accordingly, we cannot sustain the Examiner’s rejection of claims 1, under 35 U.S.C. § 112, first paragraph. For similar reasons, we also cannot sustain the Examiner’s rejection of claims 2 and 3 under 35 U.S.C. § 112, first paragraph. Issue 2 — Rejection of Claims 1—3 Under §101 With respect to the Examiner’s rejection of claims 1—3 under § 101, Appellants argue the claims together. Appeal Br. 19-21. We select independent claim 1 as the representative claim for the group. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds the claim 1 is directed to the abstract idea of “organizing human activity.” Non-Final Act. 6. The Examiner also 6 Appeal 2016-001628 Application 13/171,251 finds the claim does not include additional elements sufficient to “provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.” Id. Appellants present several arguments, which we do not find persuasive. Instead, we find the Examiner has provided a comprehensive response to Appellants’ arguments supported by a preponderance of evidence. Ans. 4—5. As such, we adopt the Examiner’s findings and explanations. Non-Final Act. 5—6; Ans. 3—5. Section 101 provides that “[wjhoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. The provision, however, contains an important implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc, for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The “abstract ideas” category embodies the longstanding rule that an idea, by itself, is not patentable. Alice, 134 S. Ct. at 2355 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). In Alice, the Supreme Court sets forth an analytical “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). The first step in the analysis is to “determine whether the claims at issue are directed to one of those 7 Appeal 2016-001628 Application 13/171,251 patent-ineligible concepts,” such as an abstract idea. Id. 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.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). 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. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010). Here, turning to the first step of the Alice inquiry, we agree with the Examiner that Appellants’ claim 1 is directed to an abstract idea because the claim simply recites various modules having a memory for storing data and “configured to remotely receive and transmit” data. See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”). Here, the claim fails to recite any analysis or selective storage of any particular data. Moreover, claim 1, unlike the claims found non abstract in prior cases, uses generic computer technology to perform data reception, storage, and transmission but does not recite an improvement to any particular technology, computer or otherwise. See, e.g., McRO, Inc. v. 8 Appeal 2016-001628 Application 13/171,251 Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314—15 (Fed. Cir. 2016) (determining claims as 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, storing, and transmitting data. We need not define the outer limits of “abstract idea,” or at this stage exclude the possibility that any particular inventive means are to be found somewhere in the claims, to conclude that these claims focus on an abstract idea—and hence require stage-two analysis under § 101. Turning to the second step of the Alice inquiry, we find nothing in Appellants’ claim 1 that adds “significantly more,” sufficient to transform the abstract idea of receiving, storing, and transmitting data into a patent- eligible application. Alice, 134 S. Ct. at 2357. Merely transmitting and receiving data does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 underpins the information-based category of abstract ideas. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372—1373, 1375 (Fed. Cir. 2011). Claim 1 does not require a new source or type of information, or a new technique for analyzing it. Claim 1, apart from the signal processing modules, simply recites customer depots, customer site locations, and transport units, which are either locations or components for transport or storage of the cryogenic. Consequently, claim 1 does not require an arguably inventive set of components or methods that would generate new data. Moreover, the claim does not invoke any arguably inventive programming. Merely manipulating data for possible storage does not transform the otherwise-abstract processes of data receiving and transmission. Appellants argue claim 1 amounts to more than an abstract 9 Appeal 2016-001628 Application 13/171,251 idea because “the storage, transportation and monitoring of a cryogenic fluid surely cannot be merely accomplished by manual or mental human activity such that it falls under the category of an abstract idea.” Appeal Br. 19. We find this argument unpersuasive because it is not commensurate with the scope of the claim, which fails to specifically recite storage, transportation, and monitoring of a cryogenic fluid. Appellants further argue the claim meets the Machine-or- Transformation test, while acknowledging the Machine-or-Transformation test is not the sole test under 35 U.S.C. § 101. Appeal Br. 20. While the Supreme Court has held that the machine-or-transformation test is not the sole test governing § 101 analyses, Bilski v. Kappos, 561 U.S. 593, 604 (2010), that test can provide a “useful clue” in the second step of the Alice framework, see Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012). However, even assuming the machine-or-transformation test is informative, our reviewing court has held claims similarly directed to systems and methods for recording, identifying, and monitoring the movement and location of shipping containers and instructing the use of computers to input data did not constitute patent eligible subject matter under the “machine or transformation” test. See Wireless Media Innovations, LLC v. Maher Terminals, LLC, 100 F.Supp.3d 405, 416 (2015) (affirmed by the Federal Circuit in a Rule 36 opinion on Feb. 8, 2016, at 636 Fed. Appx. 1014). Viewed as a whole, claim 1 does not provide additional meaningful limitations sufficient to transform the claimed abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Because Appellants’ claim 1 10 Appeal 2016-001628 Application 13/171,251 is directed to a patent-ineligible abstract concept and does not recite “significantly more” under the second prong of the Alice analysis, we sustain the Examiner’s rejection of this claim under 35U.S.C. § 101 as being directed to non-statutory subject matter in light of Alice and its progeny. We sustain the Examiner’s rejection of independent claims 2 and 3 for similar reasons. Issue 3 — Rejection of Claims 1—3 Under § 103(a) We have considered all of Appellants’ arguments and any evidence presented. We disagree with Appellants’ arguments, and we adopt as our own: (1) the findings and legal conclusions set forth by the Examiner in the Non-Final Office Action (6—8) from which this appeal is taken, and (2) the findings, legal conclusions, and explanations set forth in the Answer (6—8) in response to Appellants’ arguments. We highlight and address specific findings and arguments for emphasis in our analysis below. The Examiner finds the combination of Schmidtberg and Joao teaches or suggests all of the limitations of claim 1. Non-Final Act. 6—8. Appellants argue “both Joao and Schmidtberg suffer the same fatal flaw as they are using a single sensor attached to the shipping container to monitor the container’s progress and environmental conditions” and in contrast “the Appellant uses at least three sensors.” Appeal Br. 21. “Second, the Appellant’s sensors are sensing the state of the product itself and not the container’s environmental conditions. Both Schmidtberg and Joao teach sensors that sense the environment around the product and not the product itself.” Appeal Br. 21—22. 11 Appeal 2016-001628 Application 13/171,251 We find Appellants’ arguments unpersuasive. “The invention disclosed . . . may be outstanding in its field, but the name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Here, the Examiner finds, and we agree, that “the claims do not recite a single sensor, much less three sensors.” Ans. 6. Appellants’ arguments, therefore, are unpersuasive because they are not commensurate with the scope of claim 1. Appellants further argue “Joao’s structure may work for tracking a noncryogenic consumer product in transit, but it is simply incompatible with monitoring and tracking the state of the cryogenic fluid itself.” Appeal Br. 23. “Schmidtberg’s invention suffers the same deficiency as Joao” because Schmidtberg’s sensor “never teaches to track the cryogenic temperature or pressure of the product itself.” Appeal Br. 23—24. Here also, we agree with the Examiner’s finding that “Appellants’ arguments are not supported by the breadth of the claims.” Ans. 7. Appellants fail to demonstrate that claim 1 is limited to sensors that sense/monitor the cryogenic temperature or pressure of the cryogenic product itself or to sensors at all, for that matter. Appeal Br. 23—24. Consequently, Appellants have not shown error in the Examiner’s factual findings or conclusion of obviousness and so we sustain the 35 U.S.C. § 103(a) rejection of representative independent claim 1. We also sustain the Examiner’s rejection of independent claims 2 and 3, which recite similar limitations and are not argued separately. See Appeal Br. 21. DECISION We reverse the Examiner’s decision rejecting claims 1—3 under 35 U.S.C. § 112, first paragraph. 12 Appeal 2016-001628 Application 13/171,251 We affirm the Examiner’s decision rejecting claims 1—3 under 35 U.S.C. § 101. We affirm the Examiner’s decision rejecting claims 1—3 under 35 U.S.C. § 103(a). 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 13 Copy with citationCopy as parenthetical citation