Ex Parte Faulkner

Patent Trial and Appeal Board

Aug 27, 2018

13748389 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/748,389 01/23/2013 Richard Faulkner
108449 7590 08/29/2018
Bookoff McAndrews, PLLC
2020 K Street NW
Suite 400
Washington, DC 20006
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.
00010-0001-00000 1033
EXAMINER
ANDERSON,FOLASHADE
ART UNIT PAPER NUMBER
3623
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):
usptomail@bomcip.com
KRoss@bomcip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD FAULKNER
Appeal2017-006690
Application 13/748,389
Technology Center 3600
Before CARL W. WHITEHEAD JR., AMBER L. HAGY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 is appealing the final rejection of claims 1 -5, 7-1 7, and
19-21 under 35 U.S.C. § 134(a). Appeal Brief 4. We have jurisdiction
under 35 U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to "a system and method for workforce
exchange." Specification, paragraph 1.
Variations in demand for goods or services can result in
significant workforce turbulence for an entity supplying such
1 According to Appellant, IQ Exchange, LLC is the real party in interest.
Appeal Brief 2.
Appeal2017-006690
Application 13/7 48,389
goods or services. For example, when demand for goods or
services is low, an entity may have more employees than is
necessary to meet demand. This employee surplus may
significantly affect the revenue of the entity, and eventually force
the entity to dismiss employees. Depending on the extent of the
variations in demand, the entity may have to dismiss very
talented and experienced employees.
Specification, paragraph 2.
Illustrative Claim
1. A computer-implemented method for temporarily
transferring an underutilized employee of an offerer to a
requester to increase utilization of the underutilized employee,
the method comprising:
providing access to a resource management computing
system to a computing device of the offerer and a computing
device of the requester, the access being provided over an
electronic communications network, wherein (i) the resource
management computing system is owned by a resource
management service entity, (ii) each of the resource management
service entity, offerer, and requester are separate entities, and
(iii) the resource management computing system facilitates
direct electronic communications between the offerer and
requester;
receiving, with the resource management computing
system, employee data sent from the computing device of the
offerer, wherein the received employee data describes one or
more attributes of the underutilized employee currently under the
employ of the offerer, and the one or more attributes are
associated with one or more services the underutilized employee
has performed for the offerer;
storing the received employee data in an employee data
database of the resource management computing system;
receiving, with the resource management computing
system, a search query sent from the computing device of the
requester, wherein the search query describes one or more
2
Appeal2017-006690
Application 13/7 48,389
requester-desired employee attributes associated with fulfilling
an employment need of the requester;
generating one or more search results based on comparing
the one or more requester-desired employee attributes with the
one or more underutilized employee attributes using the resource
management computing system;
transmitting the one or more search results from the
resource management computing system to the computing
device of the requester to allow the requester to view the search
results, the one or more search results including at least a portion
of the stored employee data of the underutilized employee;
directing one or more electronic messages regarding the
underutilized employee from the computing device of the
requester to the computing device of the offerer using the
resource management computing system;
generating, within the resource management computing
system, one or more electronic data platforms for facilitating an
agreement process between the offerer and requester to
temporarily transfer the underutilized employee from the offerer
to the requester, wherein the one or more electronic data
platforms include one or more provisions for negotiation via
electronic communications within the resource management
computing system by the offerer and requester;
receiving, with the resource management computing
system, an input from at least one of the computing devices of
the offerer and requester indicating termination of the temporary
transfer; and
updating the employee data stored in the employee data
database of the resource management computing system to
reflect that the temporary transfer has ended.
Rejections on Appeal
Claims 1-5, 7-17, and 19-21 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more. Answer 2-7.
3
Appeal2017-006690
Application 13/7 48,389
Claims 1-3, 5, 8, 10, 11, 13-15, 17, and 21 stand rejected under pre-
AIA 35 U.S.C. § I03(a) as being unpatentable over Cotten (US
2006/0047551 Al; published March 2, 2006) and Smith, III (US
2003/0177052 Al; published September 18, 2003). Answer 7-18.
Claim 4 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Cotten, Smith, III, and Jones (US 2009/0132500 Al;
published May 21, 2009). Answer 18-19.
Claims 7, 9, and 16 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable over Cotten, Smith, III, and Brimhall (US
2009/0276233 Al; published November 5, 2009). Answer 19-21.
Claim 12 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Cotten, Smith, III, and Fallah (US 2011/0167059 Al;
published July 7, 2011). Answer 21-22.
Claims 19 and 20 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Cotten, Smith, III, Brimhall, and Cameron (US
2008/0300954 Al; published December 4, 2008). Answer 22-27.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed August 12, 2016), the Reply Brief (filed
March 17, 2017), the Examiner's Answer (mailed January 19, 2017), and the
Final Office Action (mailed December 17, 2015) for the respective details.
35 U.S.C. § 101 Rejection
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
4
Appeal2017-006690
Application 13/7 48,389
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine
whether the claims at issue are "directed to" a judicial exception, such as an
abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales
Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are
determined to be directed to an abstract idea, then we consider under step
two whether the claims contain an "inventive concept" sufficient to
"transform the nature of the claim into a patent-eligible application." Alice,
134 S. Ct. at 2355 (internal quotations and citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (internal citations omitted). In considering whether a
claim is directed to an abstract idea, we acknowledge, as did the Court 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.
5
Appeal2017-006690
Application 13/7 48,389
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
The Examiner finds the claims are directed to an abstract idea
because:
The instant claim receives and stores employee data including
attributes (SmartGene stored information) then it receives
requested desired employee attributes (SmartGene new
information) and finally it compares the stored employee data to
the requested attributes to generate search results (SmartGene
using rules to identify options). The instant claim like
SmartGene is found to be abstract.
Answer 5---6.
Appellant argues:
Independent claim 1, however, recites features that cannot be
performed using mental steps, including, for example,
"facilitat[ing] direct electronic communications between the
offerer and requester," and "generating . . . one or more
electronic data platforms for facilitating an agreement process
between the offerer and requester." Since claim 1 cannot be
performed solely using mental steps, the abstract idea of
SmartGene is sufficiently different from, and therefore
inapplicable to, claim 1 . ...
. . . . The Office Action offers no explanation as to how
facilitating an agreement process to transfer an underutilized
employee to a requester and the transaction performance
guaranty in buySAFE are alike. Rather, the Office Action offers
a mere conclusory statement that the facially disparate concepts
are similar.
Appeal Brief 19--20.
The Federal Circuit has repeatedly confirmed since Alice that the
category of abstract ideas embraces "fundamental economic practice[ s] long
prevalent in our system of commerce," including "longstanding commercial
practice[ s ]" and "method[ s] of organizing human activity." E.g., Intellectual
6
Appeal2017-006690
Application 13/7 48,389
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016)
(internal quotations and citation omitted). Our reviewing court has
explained that claims directed to "the mere formation and manipulation of
economic relations" and "the performance of certain financial transactions"
are properly held to be directed to abstract ideas. Content Extraction
& Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014); see also, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 716 (Fed. Cir. 2014) (finding computer-implemented system for "using
advertising as a currency ... [on] the Internet" to be ineligible); buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355 (Fed. Cir. 2014) (finding
computer-implemented system for guaranteeing performance of an online
transaction to be ineligible); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011) (finding computer-implemented
system for "verifying the validity of a credit card transaction over the
Internet" to be ineligible).
Also, our reviewing court has repeatedly held that information
collection and analysis, including when limited to particular content, is
within the realm of abstract ideas. See, e.g., Elec. Power Grp., 830 F .3d at
1353 (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"); Fair Warning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (claims directed to
collecting information and analyzing it according to certain rules were
directed to an abstract idea); CyberSource, 654 F.3d at 1370 (computer-
implemented system for "verifying the validity of a credit card transaction
over the Internet" was patent-ineligible).
7
Appeal2017-006690
Application 13/7 48,389
Further, the Federal Circuit has repeatedly noted that "the prima facie
case is merely a procedural device that enables an appropriate shift of the
burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
court has, thus, held that the Office carries its procedural burden of
establishing a prima facie case when its rejection satisfies the requirements
of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection,
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application." See In
re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal quotations and
citation omitted).
We have considered all of Appellant's arguments challenging the
characterization of the pending claims as being directed to abstract ideas, but
we do not find them to be persuasive of error (Appeal Brief 18-22). Rather,
we agree with the Examiner, at step one of the Alice analysis, that the claims
are directed to one or more abstract ideas because the focus of the claims is
on "the mere formation and manipulation of economic relations" and "the
performance of certain financial transactions," which as noted above, are
properly held to be directed to abstract ideas under Federal Circuit
precedent. Accordingly, we tum to the second step of the Alice analysis, in
which we determine whether the additional elements of the claims transform
them into patent-eligible subject matter.
8
Appeal2017-006690
Application 13/7 48,389
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
The Examiner finds:
Where the steps of "providing access ... transmitting the one or
more search results ... directing one or more electronic messages
... receiving, with the resource management computing system,
an input ... updating the employee data," are viewed as pre/post
extra solution activity that cannot transform the abstract idea into
patent eligible subject matter.
Answer 6-7.
Appellant contends the limitations "directed to temporarily
transferring underutilized employees to increase utilization, are just some of
the improvements claim 1 makes to the technical field of workforce
management." Appeal Brief 23. To the extent Appellant maintains that the
claimed subject matter is significantly more than the abstract idea because it
is novel, Appellant misapprehends the law. As the Federal Circuit has
explained, a "' ... claim for a new abstract idea is still an abstract idea .... "'
SAP Am., Inc. v. Investpic, LLC, No. 2017-2081, 2018 WL 3656048, *1
(Fed. Cir. August 2, 2018) (quoting Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016)). Although we disagree with
Appellant's assertion of the claims' novelty over the prior art (as discussed
in the next section), even assuming the technique claimed was"' ...
innovative, or even brilliant,"' that would not be enough for the claimed
abstract idea to be patent eligible. See SAP Am., 2018 WL 3656048 at *1
(internal citation omitted).
Appellant contends the alleged particular machine described in claim
1 includes a resource management computing system that performs the
9
Appeal2017-006690
Application 13/7 48,389
claimed method and, therefore, claim 1 describes "aspects other than what is
well understood, routine and conventional in the field, and add
unconventional steps that confine the claim to a particular useful
application," the functional aspects. Appeal Brief 24.
Appellant argues, "[i]n making its Section 101 rejection, the Office
Action for the most part ignores the recitations above from independent
claim 1, and thus, the Office Action improperly disregards particular
recitations that substantially define the reach of the claim." Appeal Br. 25.
It is Appellant's position that disregarding "particular recitations that
substantially define the reach of the claim" is counter to the to US PTO' s
JULY 2015 UPDATE: SUBJECT MATTER ELIGIBILITY wherein "[t]he Update
emphasizes that 'even if an element does not amount to significantly more
on its own ... , it can still amount to significantly more when considered in
combination with the other elements of the claim."' Id. (quoting JULY 2015
UPDATE2).
The Examiner finds claim 1 's limitations
do nothing more than call on a computing device with basic
functionality to do what it has been programed to do - implement
an abstract idea on a computer. Where the steps of "providing
access . . . transmitting the one or more search results . . .
directing one or more electronic messages ... receiving, with the
resource management computing system, an input . . . updating
the employee data," are viewed as pre/post extra solution activity
that cannot transform the abstract idea into patent eligible subject
matter.
Answer 6-7.
We find that the Examiner does not assert, without support, that the
claim limitations were well understood, routine, and conventional in the
10
Appeal2017-006690
Application 13/7 48,389
field; instead, the Examiner provides specific rational for her position that
the claims are directed to an abstract idea wherein the additional elements of
the claims do not amount to significantly more because they do not
"improve another technology, improve the functioning of the computer
itself, or apply the judicial exception with or by use of a particular machine."
Ans. 6. Appellant does not identify or otherwise explain the error in these
determinations. Further, we find unpersuasive Appellant's conclusory
arguments that the recitations the Examiner allegedly ignored amount to
significantly more when considered with the other claim limitations or
elements. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
( attorney arguments or conclusory statements are insufficient to rebut a
prima facie case).
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 1-5, 7-17, and 19-21.
35 U.S.C. § 103(a) Rejection
Appellant argues that the Final Office Action "fails to explain where
Cotten allegedly teaches the 'resource management computing system' of
independent claim" and "the Office Action does not cite any paragraph
numbers, figures, or reference numbers associated with the 'resource
management computing system"' and "Smith does not remedy this
deficiency of Cotten, and was not cited for such a purpose. (See id. at pp.
11-13.)" Appeal Brief 33. The Examiner finds:
The prior art need[] not use the same language as the claim as
long as one of ordinary skill in the art would have recognized the
claimed invention in the prior art. The Office maintains that the
event coordinator system of ... [Cotten] in combination with
11
Appeal2017-006690
Application 13/7 48,389
Smith would have recognized ... [Cotten's] "event coordinator
system" [ element 202] as the functional equivalent of the
claimed "resource management computing system."
Answer 44.
Appellant contends:
Cotten fails to teach or suggest, "temporarily transferring an
underutilized employee of an offeror to a requester" and
"receiving . . . an input ... indicating termination of the
temporary transfer," as recited in claim 1. Smith does not
remedy this deficiency of Cotten, and was not cited for such a
purpose. (See Examiner's Answer at pp. 10-12.)
Another example of the deficiencies of Cotten (and Smith)
is that Cotten does not teach or suggest that event operators 108
own event coordinator system 202. Rather, Cotten teaches that
event operators 108 work for agencies 106, and agencies 106
contract with event coordinator 104 ( that uses event coordinator
system 202) to provide event operators 108 for events. (See
Cotten at paras. [0044] and [0047], and FIG. 1.) Accordingly,
Cotten fails to teach or suggest, "the resource management
computing system is owned by a resource management service
entity," as recited in independent claim 1. Smith does not
remedy this deficiency of Cotten, and was not cited for such a
purpose. (See Examiner's Answer at pp. 10-12.)
Reply Brief 6.
We do not find Appellant's arguments persuasive. Smith, III
discloses:
A method of human resources management is provided to allow
an employer with excess available employee resources to loan
one or more employees to another employer with need for
additional employees in an efficient manner by avoiding the
costly conventional processes of laying off excess employees or
hiring new employees.
Smith, III, Abstract; see Answer 11-12. Further, the ownership of the event
coordinator system is not a subject of novelty because, regardless of what
12
Appeal2017-006690
Application 13/7 48,389
entity owns the system, the system will perform in the same manner as it
was designed. See Answer 45--46.
Appellant argues, "Cotten fails to teach or suggest that 'the resource
management computing system facilitates direct electronic communications
between the offerer and requester,' and 'directing one or more electronic
messages ... from the computing device of the requester to the computing
device of the offeror. "' Reply Brief 7. Appellant further contends that
Smith does not address the deficiency of Cotten because "Smith also does
not teach or suggest that the web-based platform facilitates direction
communication between the companies, but rather, teaches that the
companies each communicate with the platform instead of directly with each
other. (See Smith at para. [0032], indicating that a secure server 208 of the
platform sends an e-mail to a company with an employee in the employee
database.)" Reply Brief 7-8.
We do not find Appellant's arguments persuasive because both Cotten
and Smith, III disclose communications between the two interested parties
(offerer, requester). See Answer 9-11. Further, claim 1 's direct
communication limitation does not preclude email. It is understandable that
in order for either Cotten or Smith, III to manage resources between at least
two entities, there fundamentally has to be some form of communication
between them.
Appellant further argues, "[y Jet another example of the deficiencies of
Cotten (and Smith) is that Cotten does not teach or suggest transmitting
search results from event coordinator 104/event coordinator system 202 to
manufacturer 102/manufacturer system 211." Reply Brief 8. Appellant
contends, "[i]n para. [0051], Cotten teaches sending a report 130 to
13
Appeal2017-006690
Application 13/7 48,389
manufacturer 102. Cotten does not describe the content of report 130, and
thus, does not teach that report 130 includes search results." Reply Brief 8.
Cotten discloses in paragraph 51, "[b ]ased on the data received by the event
coordinator 104, the event coordinator 104 provides further instructions
to the agencies 106 or event personnel 108." "As our precedents make clear,
however, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Accordingly, we do not find Appellant's arguments persuasive of Examiner
error.
Appellant contends, "Cotten fails to teach or suggest, 'generating,
within the resource management computing system, one or more electronic
data platforms for facilitating an agreement process between the offerer and
requester,' as recited in independent claim 1" and "Smith does not remedy
this deficiency of Cotten" because "Smith teaches a web-based platform for
loaning employees of one company to another company. (See Smith at
para. [0019].)" Reply Brief 9. Appellant's Specification discloses in
paragraph 32, "[t]he resource management computing system 110 may
facilitate the agreement process by providing electronic forms or other data
platforms within the system that can be completed by the offerer 130 and/or
requester 140 to negotiate the terms of the employee exchange from the
offerer 130 to the requester 140." There is nothing novel about the claimed
data platform based upon the Specification. It is evident that both Cotten
and Smith, III disclose communication between the entities involved via
electronic forms or other non-specified data platforms. See Answer 10-11.
14
Appeal2017-006690
Application 13/7 48,389
Consequently, we do not find Appellant's argument persuasive.
For the foregoing reasons, we sustain the Examiner's obviousness
rejections of claim 1, independent claims 15, 19, and 21, as well as
dependent claims 2-5, 7-14, 16, 17, and 20 not separately argued. Reply
Brief 9.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1-5, 7-17, and
19-21 is affirmed.
The Examiner's 35 U.S.C. § 103(a) rejections of claims 1-5, 7-17,
and 19-21 are affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
15