Ex Parte Godwin

Patent Trial and Appeal Board

Nov 30, 2017

12035074 (P.T.A.B. Nov. 30, 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.
12/035,074 02/21/2008 Bryan W. Godwin CRAN01-00418 9275
23990 7590
DOCKET CLERK
P.O. DRAWER 800889
DAT!.AS, TX 75380
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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):
patents @ munckwilson. com
munckwilson @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRYAN W. GODWIN
Appeal 2016-008638
Application 12/035,074
Technology Center 3600
Before JOHN A. EVANS, AARON W. MOORE, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, Appellant has submitted a Request for
Rehearing dated September 27, 2017 (“Request”), requesting rehearing of
the August 2, 2017 Decision (“Decision”) affirming the Examiner’s
rejection of claims 1—5, 7—17, and 19—39 under § 101.
We have reconsidered the Decision in light of Appellant’s comments
in the Request. We are not persuaded that the Board misapprehended or
overlooked any points in affirming the Examiner.
CLAIMS 1-3, 7, 9, and 2A-27
Considering claim 24 as representative, Appellant argues that the
Board overlooked the “technological improvements provided by Claim 24.”
Request 3. In particular, Appellant argues that the claim recites evaluating
product sales for particular time periods. Id. at 4. According to Appellant,
Appeal 2016-008638
Application 12/035,074
the data for the specifically recited time periods would not have been
available before the advent of modem computing and computer networks.
Id. Appellant further contends that the Board has misapprehended the
arguments describing the claimed technological improvements to vending
management. Id. at 5—8. In Appellant’s view, the claim is not merely tied to
a field of use. Id. at 6. Rather, Appellant contends the claim addresses a
problem specific to vending-machine management technology: calculating
demand for a specific time period. Id.
The claim’s focus, however, is not even related to improved
management operations on the vending machine. Decision 5. Instead, the
recited computer components are used to accelerate calculations and manage
the collected data. Id. As such, the claim is directed to a concept similar to
those previously found by the courts to be abstract, as we discussed in the
Decision. Id. at 4—6.
We also acknowledged that “the data are restricted to a particular time
period and content.” Decision 8. But we then explained that the claims
merely recite sending this data over the network in a conventional way,
which is insufficient to supply an inventive concept. See id. at 8 (citing
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)). We
also explained that “[ajpart from limiting the calculation to data from a
particular time period, claim 24 recites the calculation in broad functional
terms.” Decision at 8. Lastly, we acknowledged that the claim does recite
computer technology, but “[ojverall, claim 24 is the generalized use of a
computer and network as tools to calculate consumer demand for a particular
data set, instead of an improvement to the capability of the system as a
whole.” Id. at 9.
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Application 12/035,074
Appellant further argues that the Board has overlooked Appellant’s
preemption argument. Request 4. According to Appellant, claim 24 does
not preempt other ways of calculating consumer demand. Id. at 4—5.
Appellant, for example, explains that claim 24’s particular configuration
does not preempt all processes for “collecting and storing sales data, and
evaluating consumer demand for products.” Id. at 5.
We disagree that this argument was overlooked. The claims are
untethered to a particular improvement the functioning of a computer itself,
such as three-dimensional animation. Decision at 8 (citing McRO, Inc. v.
Bandai Namco Games Am., 837 F.3d 1299, 1315 (Fed. Cir. 2016)). Because
the claimed process relies on generic computing components, we noted that
“[essentially, claim 24 attempts to cover all ways of calculating consumer
demand for this particular data set.” Id. Nevertheless, “[wjhile preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellant also argues that, by discussing the claim’s two main
features, the Board overlooked Appellant’s arguments that over—
generalizations should not be performed during the analysis. Request 7—8.
We, however, did not limit our analysis to this characterization of the
claim’s two main features. Rather, in arriving at our conclusion, we
considered each limitation individually and as an ordered combination. See
Decision 3—10.
Accordingly, we are unpersuaded that the Board overlooked or
misapprehended key elements of Appellant’s arguments directed to claims
1-3, 7, 9, and 2A-27.
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Appeal 2016-008638
Application 12/035,074
CLAIMS 12-14, 19, 21, and 30-33
Regarding claims 12—14, 19, 21, and 30-33, Appellant presents
reasons that the Board overlooked or misapprehended Appellant’s
arguments, but these arguments are similar to those discussed above.
Request 8—14. Therefore, we disagree for the same reasons presented in the
previous section.
CLAIMS 4 and 6
Regarding claims 4 and 6, Appellant argues the Board overlooked the
argument that the recited corrective action is an actual, tangible action that
must be undertaken. Request 14—15. We, however, addressed this argument
by explaining that the recited corrective action does not impart an inventive
concept or change the claim’s character as a whole for the reasons discussed.
Decision 10—11.
CLAIMS 5 and 7
Appellant argues the Board overlooked the argument that claims 5 and
7 involve technological improvements. Request 15. We disagree. We
explained that, at most, the computer is used for its basic functions of
performing repetitive calculations on the collected data. Decision 11.
CLAIMS 8,20, 18, and 34
Appellant presents arguments similar to those raised in the briefs and
concludes that the discussed limitations add significantly more than data
collection and storage. Request 15—16. We are unconvinced by these
conclusory statements that the Board overlooked or misapprehended key
elements in arriving at the Decision.
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Appeal 2016-008638
Application 12/035,074
CLAIMS 10, 22,29, and 35
In concluding that the Board overlooked and misapprehended key
aspects in the briefs, Appellant argues that claim 10 solves an Internet-
centric problem with a solution rooted in computer technology. Request 16—
19. In particular, Appellant contends that claim 10 provides an updated
schedule for remotely located vending equipment and does so without the
need for an operator to monitor equipment issues. Id. at 19. In Appellant’s
view, the claim is similar to an example from the Interim Guidance on
Subject Matter Eligibility and the claims in Google, Inc. v. Simpleair, Inc.,
CBM2014-00170, Paper 13 atp. 18 (Jan. 22, 2015). Id. at 17. According to
Appellant, the Board overlooked the arguments for claims 22, 29, and 34 for
similar reasons. Id. at 19. We disagree.
The problem addressed by claim 10 is monitoring vending equipment,
which could have been done manually, albeit less efficiently. This is not a
problem that specifically arises out of some computer technology. For
example, claim 10’s steps of recording and transmitting do not involve new
calculations or ways of transmitting the data. Rather, the recording and
transmitting steps could be carried out by a generic computer in a
conventional way. See Decision 12—13. Accordingly, we are unpersuaded
that the Board overlooked or misapprehended key elements of Appellant’s
arguments.
CLAIMS 11,23, 15, and 36-39
Appellant presents arguments similar to those raised in the Briefs and
concludes that the discussed limitations add significantly more than data
collection and storage. Request 19—22. Based on these conclusory
statements, we are unconvinced that the Board overlooked or
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Application 12/035,074
misapprehended key elements. Rather, Appellant’s arguments (id.) present
us with the same issues that were fully addressed in the Decision.
CONCLUSION
We have considered the arguments raised by Appellant in the
Request. Because we have not misapprehended or overlooked any points in
affirming the Examiner’s rejection, we have granted Appellant’s request to
the extent that we have reconsidered our Decision, but we deny Appellant’s
request to make any changes therein.
DENIED
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