Ex Parte Gernandt

Patent Trials and Appeals Board

Jun 27, 2019

14273841 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/273,841 05/09/2014
122269 7590 07/01/2019
Brian Tucker
Kirton McConkie
36 South State Street, Suite 1900
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
Karl Gernandt
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.
23207.2 3752
EXAMINER
TINKLER, MURIEL S
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
btucker@kmclaw.com
ipdocket@kmclaw.com
klyon@kmclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL GERNANDT
Appeal2018-004249
Application 14/273,841 1
Technology Center 3600
Before KEVIN F. TURNER, JOHN A. EV ANS, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-9, 11-15, and 17-20, which are all the claims pending
in this application. Claims 10 and 16 are canceled. Br. 22, 25. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Kuehne + Nagel
International AG. Br. 2.
Appeal2018-004249
Application 14/273,841
STATEMENT OF THE CASE
Introduction
Appellant's application relates to an automated system for retrieving
sea and air freight metrics and generating an indicator of global trade using
the retrieved metrics. Spec. ,r 4. Claim 1 illustrates the appealed subject
matter and reads as follows:
1. A method, performed by a computing system that is
interfaced with one or more remote source systems, for
generating a real-time indicator of global trade based on a
plurality of metrics that are generated from data retrieved from
the source systems over a period of time, the method comprising:
establishing and maintaining a first interface with a first
source system, the first source system being configured to
receive and compile Automatic Identification System data;
periodically querying the first source system via the first
interface to retrieve Automatic Identification System data;
storing the Automatic Identification System data that is
retrieved over a first period of time;
extracting from the Automatic Identification System data
one or more sea freight capacity metrics representing freight
capacity for sea freight during the first time period;
extracting from the Automatic Identification System data
one or more sea freight volume metrics representing freight
volume for sea freight during the first time period;
generating, by the computing system, a sea freight
capacity component based on the one or more sea freight
capacity metrics;
generating, by the computing system, a sea freight volume
component based on the one or more sea freight volume metrics;
combining, by the computing system, the sea freight
capacity component and the sea freight volume component to
generate the real-time indicator of global trade; and
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transm1ttmg, by the computing system, the real-time
indicator of global trade to another computing system.
The Examiner's Rejection2
Claims 1-9, 11-15, and 17-20 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 5-10.
ANALYSIS
Patent-Ineligible Subject Matter
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice, 573 U. S. at 217-18 ( citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed to."
See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611
2 In the Final Action, the Examiner rejected claims 1, 6-12, 15, 19, and 20
under 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, as
being based on a disclosure that is not enabling. Final Act. 5. However, the
Examiner withdrew this rejection in the Answer. Ans. 7. Thus, this
rejection is not presently before us.
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(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citation omitted) ( citing Benson and Flook); see, e.g., id.
at 187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
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If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance 84 Fed. Reg. 50 ("Revised Guidance").
Under that guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
"MPEP" § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
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( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. Claim 1 recites a "method."
Appellant does not argue the Examiner erred in concluding claim 1 falls
within the four statutory categories of patentable subject matter. We agree
with the Examiner's conclusion because claim 1 falls within the process
category. Claims 15 and 19 recite the same process recited in claim 1 by
execution of instructions stored on computer storage media. Accordingly,
we also agree with the Examiner's conclusion regarding claims 15 and 19,
which recite a process.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes). See Revised Guidance.
The Examiner concludes claim 1 is directed to generating a real-time
indicator of global trade. Final Act. 7. The Examiner concludes this is an
abstract idea similar to concepts determined to be abstract by various courts.
Id. Appellant does not dispute that claim 1 is directed to generating a real-
time indicator of global trade. See Br. 10-17. However, Appellant argues
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claim 1 is "more accurately described as encompassing the abstract idea of
generating macroeconomic data." Br. 14. Appellant argues claim 1 is
nevertheless patent eligible. See id. at 10-17.
Claim 1 recites the following limitations: (1) "establishing and
maintaining a first interface with a first source system, the first source
system being configured to receive and compile Automatic Identification
System data;" (2) "periodically querying the first source system via the first
interface to retrieve Automatic Identification System data;" (3) "storing the
Automatic Identification System data that is retrieved over a first period of
time;" ( 4) "extracting from the Automatic Identification System data one or
more sea freight capacity metrics representing freight capacity for sea freight
during the first time period;" ( 5) "extracting from the Automatic
Identification System data one or more sea freight volume metrics
representing freight volume for sea freight during the first time period;" (6)
"generating, by the computing system, a sea freight capacity component
based on the one or more sea freight capacity metrics;" (7) "generating, by
the computing system, a sea freight volume component based on the one or
more sea freight volume metrics;" and (8) "combining, by the computing
system, the sea freight capacity component and the sea freight volume
component to generate the real-time indicator of global trade."
We agree with the Examiner that these limitations, under their
broadest reasonable interpretation, recite generating a real-time indicator of
global trade. For example, the "establishing," "periodically querying," and
"storing" steps recited in limitations (1 ), (2), and (3) characterize retrieving
and storing data. The "extracting," "generating," and "combining" steps
recited in limitations (4), (5), (6), (7), and (8) characterize analyzing the
retrieved data and generating a new metric based on those data.
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Thus, claim 1 recites generating a real-time indicator of global trade,
which is a representation of a fundamental economic principle or practice.
Accordingly, we conclude claim 1 falls within the "certain methods of
organizing human activity" category of abstract ideas identified in the
Revised Guidance.
Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
Appellant argues claim 1 is directed to software that executes on a
standard computer, but like the claims in McRO, claim 1 recites a specific
means that improves the relevant technology as opposed to a result or effect
that itself is the abstract idea. See Br. 11-12 (citing McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). In particular,
Appellant argues claim 1 improves the provision of macroeconomic data by
implementing an entirely new and unique method for generating a unique
type of macroeconomic data. See id. at 12-13.
The "additional elements" recited in claim 1 include "a computing
system that is interfaced with one or more remote source systems" and
"another computing system." None of these additional elements constitute
"additional elements that integrate the exception into a practical
application." See MPEP § 2106.0S(a}-(c), (e}-(h). To integrate the
exception into a practical application, the additional claim elements must,
for example, improve the functioning of a computer or any other technology
or technical field (see MPEP § 2106.0S(a)), apply the judicial exception with
a particular machine (see MPEP § 2106.0S(b)), effect a transformation or
reduction of a particular article to a different state or thing (see MPEP
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§ 2106.05(c)), or apply or use the judicial exception in some other
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment (see MPEP § 2106.05(e)). See
Revised Guidance.
The nature of claim 1 as a whole is not to define a specific
technological improvement, which may constitute integrating the claims into
a practical application. Instead, claim 1 recites the steps necessary to
perform the abstract idea itself. Our reviewing court has "made clear that
mere automation of manual processes using generic computers does not
constitute a patentable improvement in computer technology." Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. June 9,
2017). Like the claims in Credit Acceptance, the focus of claim 1 is on the
business practice, "and the recited generic computer elements 'are invoked
merely as a tool."' Id. (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016)); see also Versata Dev. Grp., Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1334 (Fed. Cir. 2015) (collecting cases).
Specifically, the claimed "computing system" and "remote source
systems" are "generic processes and machinery," used to achieve the
claimed results and are not focused on "a specific means or method that
improves the relevant technology." McRO, 837 F.3d at 1314. Appellant's
Specification confirms the generic, conventional nature of the claimed
processing device. See Spec. ,r 15.
Appellant's argument that claim 1 improves a technological process is
unpersuasive. See Br. 4-6. Contrary to Appellant's argument, claim 1
focuses on improving the abstract idea itself-generating a real-time
indicator of global trade. In particular, claim 1 focuses on the retrieval of
data metrics, analysis of the retrieved data, and generation of
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macroeconomic data in the form of a real-time indicator of global trade.
Contrary to Appellant's argument that claim 1 improves the relevant
technology as opposed to a result or effect that itself is the abstract idea,
claim 1 focuses on results and effects, not an improvement to technology.
Specifically, claim 1 recites generating components "based on" metrics
without providing more details. Claim 1 also recites "combining" these
components "to generate the real-time indicator of global trade" without
providing further details.
In addition to the limitations discussed above with respect to Prong 1,
claim 1 further recites "transmitting, by the computing system, the real-time
indicator of global trade to another computing system." This broadly recited
"transmitting" limitation, without any technical detail, is insignificant extra-
solution activity that is insufficient to impart eligibility. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-73 (Fed. Cir. 2011)
(insignificant extra-solution activity is insufficient to impart eligibility);
cited in MPEP § 2106.05(g).
Appellant also argues claim 1 does not preempt the use of virtually an
unlimited number of processes for generating macroeconomic data. See Br.
13. Appellant has not persuaded us of Examiner error. Preemption is the
concern that drives the exclusionary principle of judicial exceptions to
patent-eligible subject matter. Alice, 573 U.S. at 215. However, preemption
is not a separate test of patent-eligibility, but is inherently addressed within
the Alice framework. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.").
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Thus, Appellant has not persuaded us of Examiner error with respect
to Step 2A, Prong 2 of the Revised Guidance. We, therefore, conclude the
judicial exception is not integrated into a practical application under the
Revised Guidance and claim 1 is directed to an abstract idea.
Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an "inventive concept" that "must be significantly more
than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer." BASCOM Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016). There must be more than "computer functions [that] are 'well-
understood, routine, conventional activit[ies]' previously known to the
industry." Alice, 573 U.S. at 225 (second alteration in original) (quoting
Mayo, 566 U.S. at 73).
Appellant argues the Examiner's analysis is untethered to the specific
language of the claims, which recites the specific type of source system, the
specific type of data the computer system receives, the specific type of data
the computer extracts from the received data, the specific type of data that is
generated from the extracted data, and the specific way the generated data is
combined to produce macroeconomic data. See Br. 14-15.
Appellant has not persuaded us of Examiner error. As explained
above, Appellant's claims focus on improving the process of generating a
real-time indicator of global trade by acquiring and analyzing specific
information-an improvement to the abstract idea itself, not an improvement
to a technological process.
In DDR Holdings, the Federal Circuit found that claims drawn to
"generating a composite web page that combines certain visual elements of a
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'host' website with content of a third-party merchant" provided a solution
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1248, 1257 (Fed. Cir. 2014). The
claims addressed a problem in a manner that was "not merely the routine or
conventional use of the Internet." Id. at 1259. Rather than the expected
behavior of simply sending the website visitor to a third-party website, the
claimed invention behaved differently by sending a website visitor to a
hybrid web page presenting information from a third-party with the look and
feel of the host website. Id. at 1258-59.
In contrast, Appellant's invention solves a problem of generating
macroeconomic data, in particular a real-time indicator of global trade. This
is not a problem particular to the Internet or any other technology, and
Appellant's solution does not override the routine or conventional use of the
Internet or any other technology. Rather, Appellant's claims use a
computing system to perform routine, conventional computer functions to
analyze retrieved information and generate new information.
For these reasons, we agree with the Examiner that the claims do not
recite an "inventive concept" sufficient to transform the claims from an
abstract idea to a patent eligible application. We, therefore, sustain the
patent-ineligible subject matter rejection of claim 1.
Appellant argues the Examiner did not provide sufficient rationale for
independent claims 15 and 19, which recite additional limitations not recited
in claim 1, and the pending dependent claims. See Br. 16-17. Appellant has
not persuaded us of Examiner error. Claims 15 and 19 recite performing a
similar process to claim 1, but including air freight capacity and volume data
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in addition to the sea freight capacity and volume data recited in claim 1. 3
These additional limitations do not change the nature of the abstract idea to
which claim 1 is directed or provide significantly more than the abstract
idea. Nor do the dependent claims, which as noted by the Examiner, merely
narrow the scope of the abstract idea itself. See Ans. 10. Accordingly, we
sustain the rejection of independent claims 15 and 19, and dependent claims
2-9, 11-14, 17, 18, and 20 for the same reasons.
DECISION
We affirm the Examiner's decision rejecting claims 1-9, 11-15, and
17-20 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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
3 Appellant argues the patentability of the claims based on limitations
directed to sea freight capacity and volume metrics, air freight capacity and
volume metrics, and the real-time indicator of global trade that is generated
based on these metrics. In the event of further prosecution, the Examiner
may wish to consider whether, under the broadest reasonable interpretation
of the claims, the content of the data being retrieved, analyzed, and
generated may lend patentability to an otherwise unpatentable computer-
implemented product or process. See Ex parte Nehls, 88 USPQ2d 1883,
1889 (BP AI 2008).
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