Ex Parte GUTHRIDGE et al

Patent Trials and Appeals Board

Jan 28, 2019

13367804 - (D) (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/367,804 02/07/2012 Gregory GUTHRIDGE
79340 7590 01/30/2019
MANNA VA & KANG, P.C.
3201 Jermantown Road
SUITE 525
FAIRFAX, VA 22030
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.
D l 1-042-02419-00-US 7652
EXAMINER
PRASAD, NANCY N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
ASHOKM@MANNA V AKANG.COM
docketing@mannavakang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY GUTHRIDGE, MICHAEL DARY,
RUARI MONAHAN, NAOMI MANLEY-CASIMIR,
KENNETH BARSKY, ZEPHANIAH WONG,
and SYLVAIN BONZOM
Appeal2017-008953
Application 13/367,804 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING,
and JOSEPH A. FISCHETTI, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-16, 18, 19, and 22. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify Accenture Global Services Limited as the real party in
interest. (Appeal Br. 3).
Appeal2017-008953
Application 13/367 ,804
THE INVENTION
Appellants claim a demand side management portfolio manager
system for increased awareness for energy conservation and greenhouse gas
emission reduction. (Spec. ,r 3, Title).
Claim 11 reproduced below, is representative of the subject matter on
appeal.
11. A demand side management (DSM) method
for processing DSM data through phases of a DSM
portfolio lifecycle, the method comprising:
determining types of DSM programs to
implement for an energy service provider based on
information about the energy service provider and
based on DSM data collected for a plurality users
related to DSM programs that have previously
been implemented;
determining details of the DSM programs to
implement;
collecting DSM data from internal systems
of the energy service provider using an application
programmmg interface (API) of a data
communication and integration module, wherein
the collecting is performed after implementing the
DSM programs;
evaluating, by a processor, the DSM
programs, wherein the evaluation of the DSM
programs includes determining key performance
indicators for the DSM programs based on the
collected DSM data, comparing the DSM
programs to benchmarks, and analyzing the DSM
data for the DSM programs utilizing performance-
based analytics to predict future performance of
the DSM programs;
measuring the DSM programs, wherein the
measuring of the DSM programs includes
determining an energy conservation goal for the
energy service provider, identifying energy
consumption behavior information from the DSM
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data related to the energy conservation goal, and
measuring an effectiveness of the DSM programs
to change energy consumption to satisfy the
energy conservation goal;
verifying the DSM programs, wherein the
verification includes auditing the DSM programs
by calculating energy loss or energy savings based
on the captured energy consumption behavior
information for customers of the energy service
provider;
reporting results of the evaluation via a
dashboard; and
presenting a customer portal for sending
information to and receiving information from a
customer;
wherein the DSM programs include a DSM
audit program and a DSM educational information
program,
wherein in response to receiving an audit
request from a customer, determining whether the
audit request is for an online audit or an onsite
audit,
in response to determining the audit request
is for the online audit, determining information
related to energy use by the customer, calculating
potential energy savings for the customer,
recommending energy cost saving actions to the
customer, and providing results of the online audit
to the energy service provider, and
in response to determining the audit request
is for the onsite audit, determining information
related to energy use by the customer, scheduling
the onsite audit with the customer, dispatching an
auditor to perform the onsite audit, calculating an
estimate of energy loss by the customer based on
the onsite audit, recommending energy cost saving
actions to the customer, and providing results of
the onsite audit to the energy service provider, and
wherein m response to rece1vmg an
educational information request from the customer,
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creating a case for the educational
information request from the customer,
sending educational information or a notice
of enrollment in an educational seminar to the
customer, and
updating the case with an indication that the
educational information or the notice of enrollment
in an educational seminar was sent.
THE REJECTION
Claims 1-16, 18-19, and 22 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
FINDINGS OF FACT
We adopt the Examiner's findings as set forth on pages 3-9 of the
Final Office Action.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-16, 18, 19, and 22 under 35
U.S.C. § 101.
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, ... 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
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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 Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)) (citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that "the 'directed to' inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether 'their character
as a whole is directed to excluded subject matter."' See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36.
In so doing, we apply a "directed to" two prong test test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the claim "appl[ies ], rel[ies] on, or
use[ s] the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019)
(hereinafter "2019 Guidance").
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The steps in representative claim 11 recite2 :
in response to receiving an educational
information request from the customer,
creating a case for the educational
information request from the customer,
sending educational information or a notice
of enrollment in an educational seminar to the
customer, and
updating the case with an indication that the
educational information or the notice of enrollment
in an educational seminar was sent.
(Appeal Br. 34).
The Examiner found that the claims are directed to "an abstract idea
of processing demand side management data to implement DSM programs
for an energy service provider, which is understood as 'using categories to
organize, store, and transmit information' (Cyberfone)." (Final Act. 4)
(referring to Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558
F.App'x 988 (Fed. Cir. 2014)). The Examiner further found "the claims do
not include limitations amounting to significantly more than the abstract
idea." (Id. at 6).
The Specification states:
Many factors can influence how energy is
utilized by individual consumers, entities, and
segments of the population. The consumption of
energy and/ or other resources may be minimized
through influencing certain consumer behaviors,
especially consumer behaviors associated with
high consumption or waste. One way by which
consumer behaviors may be influenced is through
information and educational campaigns and energy
2 Our analysis is made based on considering the claims as a whole, but for
purposes of this discussion, we note the result phrase of the independent
claim to point to what the claims are directed to.
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(Spec. ,r 4).
conservation programs to targets ( e.g., individuals,
entities, and/ or population segments) which
consume energy and/or other resources.
Campaigns and programs having these goals are
often called demand side management (DSM)
programs.
We thus find in further accordance with the Examiner's findings that
the claims are directed to controlling the behavior of persons concerning
energy consumption through on-site audits and resultant education of energy
cost savings. It follows from prior Supreme Court cases, and Gottschalk v.
Benson, 409 U.S. 63 (1972), in particular, that the claims at issue here are
directed to an abstract idea. Controlling the behavior of persons concerning
energy consumption through on-site audits and resultant education of energy
cost savings is a method of organizing human behavior, which is not
patentable subject matter. See Alice, 134 S. Ct. at 2355-56.
Also, we find the steps of:
[i] determining information related to energy use
by the customer, calculating potential energy
savings for the customer,
[ii] recommending energy cost saving actions to
the customer, and providing results of the online
audit to the energy service provider; and ...
[iii] determining information related to energy use
by the customer, scheduling the onsite audit with
the customer, ...
[iv] calculating an estimate of energy loss by the
customer based on the onsite audit, recommending
energy cost saving actions to the customer,
constitute "analyzing information by steps people go through in their minds,
or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category." Elec. Power Grp., LLC v.
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Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to
certain arrangements involving contractual relations are directed to abstract
ideas). Thus, we find that the claims recite judicial exceptions of methods of
organizing human activity and mental processes.
Turning to the second prong of the "directed to test", claim 1 merely
requires a "processor" and series of modules which are generically recited as
being executed by the processor. The modules according to the
Specification "are software modules executed by one or more processors."
Specification i134. Claim 11 only generically recites, "internal systems of
the energy service provider", "data communication and integration module",
"a dashboard", and "a customer portal." We fail to see how the recitation of
these additional device elements/modules even taken in conjunction with the
recited various abstract functions of the claims, "imposes a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." 2019 Revised Patent
Subject Matter Eligibility Guidance.
Thus, controlling the behavior of persons concerning energy
consumption through on-site audits and resultant education of energy cost
savings is directed to a judicial exception and thus is an "abstract idea"
beyond the scope of § 101.
That the claims do not preempt all forms of the abstraction or may be
limited to energy consumption, do not make them any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015)
("And that the claims do not preempt all price optimization or may be
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limited to price optimization in the e-commerce setting do not make them
any less abstract.").
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "inventive concept" in order to be patent-eligible, i.e., there must
be an element or combination of elements that is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
See Alice, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)).
The introduction of a computer into the claims does not alter the
analysis at Alice step two.
[T]he 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
"implemen[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 featur[ e ]" that
provides any "practical assurance that the process
is more than a drafting effort designed to
monopolize the [ abstract idea] itself."
Alice, 134 S. Ct. at 2358 (alterations in original) (citations omitted).
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Instead, "the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. 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 retrieve, select, and apply decision criteria to data and modify
the data as a result 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
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/calculation and display is equally generic and conventional or
otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F .3d
709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
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abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval,
analysis, modification, generation, display, and transmission was abstract),
Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling,
and monitoring was abstract). The ordering of the steps is, therefore,
ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the computer itself. Nor do they affect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of information access under different scenarios. (See, e.g., Spec.
,r,r 25, 104--106). Thus, the claims at issue amount to nothing significantly
more than instructions to apply the abstract idea of information access using
some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 134 S. Ct. at 2360.
We have reviewed all the arguments (Appeal Br. 13-26; Reply Br. 3-
10) Appellants have submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue the "facts of the present application do not uniquely
match the facts of Cybeifone as explained below, and thus the alleged
abstract idea is not similar to the abstract ideas of Cyberfone." (Appeal Br.
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14 ). In particular, "the Court, in Cyberfone, in concluding that claim 1
involved an abstract idea, characterized the abstract idea as collecting
information in classified form, then separating and transmitting that
information according to its classification." Id. at 15.
We disagree with Appellants because "[ a ]n abstract idea can generally
be described at different levels of abstraction." Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240-1241 (Fed. Cir. 2016). Here Appellants contend
that Cyberfone 's methodology "simply to collect, separate, and transmit the
data collected" falls short of the calculating and scheduling elements of
claim 11. (Appeal Br. 17). But, in our view, no evidence is necessary to
show that computers calculate. The Federal Circuit made clear that "not
every § 101 determination contains genuine disputes over the underlying
facts material to the§ 101 inquiry." Berkheimer v. HP Inc., 881 F.3d 1360,
13 68 (Fed. Cir. 2018). In fact, the Federal Circuit in Berkheimer did not
require evidentiary support for independent claim 1 because "[t]he
limitations [ of claim 1] amount to no more than performing the abstract idea
of parsing and comparing data with conventional computer components."
Id. at 1370. Notwithstanding, our decision above does also cite to Elec.
Power Grp., 830 F.3d at 1354, which does explicitly discuss calculating.
Appellants next argue:
The burden is initially on the Examiner to provide
a prima facie showing that the claimed invention
constitutes an abstract idea, and without such
showing, the burden does not shift to the Appellant
to prove the claimed invention does not constitute
an abstract idea. The Examiner's mere reliance on
conclusory statements that "using categories to
organize a workflow plan for processing the DSM
data throughout phases of DSM portfolio
lifecycle" (Final Office Action, page 6) is an
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abstract idea does not shift the burden to the
Appellant.
(Appeal Br. 18).
We disagree with Appellants. All that is required of the US PTO to
meet its prima facie burden of production is that the Examiner set forth the
statutory basis of the rejection and the reference or references relied upon in
a sufficiently articulate and informative manner as to meet the notice
requirement of 35 U.S.C. § 132. As the statute itself instructs, the Examiner
must "notify the applicant," "stating the reasons for such rejection,"
"together with such information and references as may be useful in judging
the propriety of continuing prosecution of his application." 35 U.S.C. § 132;
see also In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (declining "to
impose a heightened burden on examiners beyond the notice requirement of
§ 132"). Here, as we found above, the Examiner has made these findings as
required by the statute. (See Final Act. 2-6).
Specifically, in rejecting the pending claims under§ 101, the
Examiner analyzed the claims using the Mayo/Alice two-step framework,
consistent with the guidance set forth in the USPTO's 2014 INTERIM
GUIDANCE ON PATENT SUBJECT MATTER ELIGIBILITY and the JULY 2015
UPDATE: SUBJECT MATTER ELIGIBILITY. (See id.). Specifically, the
Examiner notified Appellants that the claims are broadly directed to an
abstract idea and claims do not include limitations amounting to
significantly more than the abstract idea. (Final Act. 4, 6). We find nothing
in the claims imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception. Therefore, we find that the Examiner met the notice requirement
of§ 132.
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Appellants next argue:
This combined order of specific steps cannot
be considered to preempt all methods or
techniques for "using categories to organize, store,
and transmit information," and the Examiner has
presented no evidence to the contrary. In McRO,
the Defendants argued that the claims simply use a
computer as a tool to automate conventional
activity. McRO at 24. The Court, however, found
"While the rules are embodied in computer
software that is processed by general-purpose
computers, Defendants provided no evidence that
the process previously used by animators is the
same as the process required by the claims." Id.
For at least these reasons, the instant claims are not
directed to an abstract idea.
(Appeal Br. 22).
We disagree with Appellants. The question here is whether the claims
as a whole "focus on a specific means or method that improves the relevant
technology" or are "directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery." McRO, 837 F.3d at
1314. In this case, the claims, as a whole, are focused on controlling the
behavior of persons concerning energy consumption through on-site audits
and resultant education of energy cost savings. We find this limitation to be
a result or an effect, and not an improvement in the technology of how a
processor, memory, and program work. Appellants' claims merely allocate
different computational tasks to known system elements----e.g., "ASIC or
other type of processing circuit." (See Spec. ,r 106). Thus, we find no
improvement in device technology here, but rather only the idea of
redirecting workflow to an otherwise redundant, known device.
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Appellants argue, "Similar to the claims of DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (hereinafter "DDR"), the
claims of the present application include limitations that, when taken
together as an ordered combination, recite an invention that is significantly
more than the alleged abstract idea." (Appeal Br. 24).
First, as found above, we have engaged in "ordered combination"
findings, which determined the claim steps/ elements to be ordinary and
conventional. Second, the Examiner correctly cited to precedent in In re TL!
Commc 'ns, LLC v. Patent Litig., 823 F.3d 607 (Fed. Cir. 2016) in addressing
the analogous, conventional nature of the claims at issue. (See Ans. 5).
Third, the Examiner found that the "computer components are very broadly
described in the specification to perform applicants claimed invention. This
further shows how the claimed computer components are general purpose
computer devices performing generic computing functions." (See Ans. 7-8).
Neither the claims nor the Specification call for a processing concept
different from those available in existing systems.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-16, 18,
19, and 22 under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1-16, 18, 19, and 22 is
affirmed.
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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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