Ex Parte Hester et al

Patent Trial and Appeal Board

Dec 10, 2018

10921588 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/921,588 08/18/2004
67141 7590 12/12/2018
Boeing and Alston & Bird, LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
David M. Hester
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.
038190/270823 1069
EXAMINER
DICKERSON, TIPHANY B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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@alston.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID M. HESTER and SCOTT R. GREENE
Appeal2017-009470 1
Application 10/921,5882
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
March 7, 2017) and Reply Brief ("Reply Br.," filed June 29, 2017), and the
Examiner's Answer ("Ans.," mailed May 1, 2017), Advisory Action ("Adv.
Act.," mailed January 9, 2017), and Final Office Action ("Final Act.,"
mailed August 29, 2016).
2 Appellants identify "The Boeing Company" as the real party in interest.
App. Br. 2.
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Application 10/921,588
CLAIMED INVENTION
Appellants' claimed invention "relates to systems and methods for
managing resources in performing tasks" and, more particularly, to
"systems, methods and computer program products for appraising system
performance for maintenance plans to thereby manage resources in
performing such maintenance plans" (Spec. 1, 11. 5-8).
Claims 1, 9, and 1 7 are the independent claims on appeal. Claims 1
and 9, reproduced below, are illustrative of the claimed subject matter:
1. A system for total effective cost management in an
organization, the system comprising:
a processor configured to create a maintenance plan for the
organization, the maintenance plan including at least one task
performed during maintenance of the organization,
wherein the processor is also configured to create a
plurality of different maintenance schedules for performing the
at least one task of the maintenance plan, the organization having
an associated mission time reflecting a time duration the
organization is in operation, and each maintenance schedule
having an associated down time reflecting a time duration for
performing the at least one task of the respective maintenance
plan,
wherein the processor is configured to determine a total
effective cost (TEC) associated with each maintenance schedule,
wherein the TEC is a function of both: (i) a cost and (ii) an
availability associated with the maintenance schedule, the
availability associated with each maintenance schedule being a
function of the mission time and the down time associated with
the respective maintenance schedule,
wherein the processor is configured to at least one of select
or receive a selection of a maintenance schedule from the
plurality of different maintenance schedules based upon the TEC
for each maintenance schedule, and
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wherein the processor is configured to present information
regarding the maintenance schedule that has been selected so as
to permit performance of maintenance of the organization
including performance of one task in accordance with the
maintenance schedule that has been selected.
9. A method of total effective cost management in an
organization, the method comprising:
creating a maintenance plan for the organization, the
maintenance plan including at least one task performed during
maintenance of the organization;
creating a plurality of different maintenance schedules for
performing the at least one task of the maintenance plan, the
organization having an associated mission time reflecting a time
duration the organization is in operation, and each maintenance
schedule having an associated down time reflecting a time
duration for performing the at least one task of the respective
maintenance plan;
determining a total effective cost (TEC) associated with
each maintenance schedule, wherein the TEC is a function of
both: (i) a cost and (ii) an availability associated with the
maintenance schedule, the availability associated with each
maintenance schedule being a function of the mission time and
the down time associated with the respective maintenance
schedule;
selecting a maintenance schedule from the plurality of
different maintenance schedules based upon the TEC for each
maintenance schedule,
wherein at least creating a plurality of different
maintenance schedules and determining a total effective cost are
performed by a processor configured to perform at least creating
a plurality of different maintenance schedules and determining a
total effective cost; and
performing the maintenance of the organization including
performance of one task in accordance with the maintenance
schedule that has been selected.
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REJECTION
Claims 1-24 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. 3
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "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, 566 U.S. at 79, 78).
3 We treat the Examiner's reference to canceled claim 25 as inadvertent
error.
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The Court acknowledged 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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under § 101, the Examiner determined
that the claimed invention "describes concepts involving using a
mathematical algorithm [to compute a total effective cost ("TEC")
associated with a maintenance plan] and mental processes to construct and
ultimately select a maintenance plan," and that these concepts involve
"mathematical relationships (i.e., TEC is a function of 2 factors as recited in
the claim) as well as mental processes that can be performed using pen and
paper[,] which both have been established as abstract ideas by courts" (Final
Act. 2-3) (citing Parker v. Flook, 437 U.S. 584 (1978) and CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)). The
Examiner also determined that the claims do not include additional elements
or a combination of elements sufficient to transform the abstract idea into a
patent-eligible application such that the claims amount to significantly more
than the abstract idea itself (id. at 3).
Independent Claim 9 and Dependent Claims 10-16
We are not persuaded, as an initial matter, by Appellants' argument
that the Examiner has oversimplified the claimed invention as directed to
"simply 'managing cost of resources in an organization' by 'creating a
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maintenance plan, receive maintenance schedules, determine a total effective
cost, select a maintenance schedule and present information"' or that the
Examiner has, otherwise, failed to consider the claims as a whole (App.
Br. 7). Although Appellants ostensibly contend otherwise, the Examiner's
formulation of the abstract idea need not copy the claim language. Instead,
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 at 1346). 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.
Here, it is clear from a fair reading of the Specification that the
claimed invention is directed to managing the total effective cost of
maintenance schedules to permit selection of the most cost-effective
schedule (see, e.g., Spec. 2, 11. 4--15). As such, we see no legal difficulty
with the Examiner's characterization of the concept to which the claims are
directed. That claim 9, for example, includes more words than the phrase
the Examiner used to articulate the abstract idea to which the claim is
directed is an insufficient basis to persuasively argue that the claim language
has been mischaracterized or that the Examiner has otherwise failed to
consider all of the limitations of the claim. See Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) ("An abstract idea can generally
be described at different levels of abstraction. As the Board has done, the
claimed abstract idea could be described as generating menus on a computer,
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or generating a second menu from a first menu and sending the second menu
to another location. It could be described in other ways, including, as
indicated in the specification, taking orders from restaurant customers on a
computer.").
We also are not persuaded by Appellants' argument that the Examiner
erred in rejecting claim 9 under § 101 because claim 9 positively recites
"performing the maintenance of the organization including performance of
one task in accordance with the maintenance schedule that has been
selected" and, therefore, involves manual activity (App. Br. 6-9; see also
Reply Br. 1-2). Instead, we agree with the Examiner that "performing the
maintenance of the organization including performance of one task in
accordance with the maintenance schedule that has been selected," as recited
in claim 9, is insignificant post-solution activity (see Adv. Act. 2), which is
insufficient to transform an abstract idea into patent-eligible subject matter.
See Mayo, 566 U.S. at 82 ("[S]imply appending conventional steps,
specified at a high level of generality, to laws of nature, natural phenomena,
and abstract ideas cannot make those laws, phenomena, and ideas
patentable.").
Appellants argue that "it is unreasonable to classify the performance
of maintenance including the performance of at least one task as
'insignificant activities"' and that "the performance of maintenance is
extremely significant to the operation of the system" (App. Br. 7). Yet, by
Appellants' own characterization (with which we agree), the focus of the
claimed invention is on "scheduling maintenance in an efficient and cost
effective manner" (id.), i.e., determining which of a plurality of alternative
maintenance schedules has the optimal total effective cost ("TEC"), and
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selecting that maintenance schedule for performance. In this context, after a
maintenance schedule has been selected, i.e., a solution has been found,
actually performing that maintenance schedule is post-solution activity
insignificant to the core of the invention - i.e., identifying the most cost-
effective maintenance schedule for performance or, in Appellants' words,
"scheduling maintenance in an efficient and cost effective manner."4
We also do not agree with Appellants that there is any parallel
between claim 9 and the claims at issue in Diamond v. Diehr, 450 U.S. 175,
(1981) (App. Br. 9; see also Reply Br. 3). Appellants ostensibly maintain
that claim 9 is patent-eligible under the reasoning of Diehr (id.). Yet,
Appellants seemingly ignore that the process claimed in Diehr was a specific
industrial process, i.e., "a physical and chemical process for molding
precision synthetic rubber products." Diehr, 450 U.S. at 184. The claimed
process required "installing rubber in a press, closing the mold, constantly
determining the temperature of the mold, constantly recalculating the
appropriate cure time through the use of the formula and a digital computer,
and automatically opening the press at the proper time." Diehr, 450 U.S.
at 187. In holding that the claims were patent-eligible, the Court explained:
[W]e think that a physical and chemical process for molding
precision synthetic rubber products falls within the § 101
categories of possibly patentable subject matter. That
respondents' claims involve the transformation of an article, in
this case raw, uncured synthetic rubber, into a different state or
4 For much the same reason, "present[ing] information regarding the
maintenance schedule that has been selected so as to permit performance of
maintenance of the organization including performance of one task in
accordance with the maintenance schedule that has been selected," as recited
in independent claim 1, and similarly recited in independent claim 1 7, is also
properly characterized as post-solution activity.
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thing cannot be disputed. The respondents' claims describe in
detail a step-by-step method for accomplishing such, beginning
with the loading of a mold with raw, uncured rubber and ending
with the eventual opening of the press at the conclusion of the
cure. Industrial processes such as this are the types which have
historically been eligible to receive the protection of our patent
laws.
Diehr, 450 U.S. at 184.
We are not persuaded that "performing the maintenance of the
organization including performance of one task in accordance with the
maintenance schedule that has been selected," as recited in claim 9, is
analogous to controlling a physical process like the process in Diehr, or that
claim 9 involves the transformation of a physical article into a different state
or thing. Performing maintenance on a piece of equipment, e.g., replacing a
worn/ defective part, may well constitute a change in the equipment, but we
fail to see how the performance of maintenance activity amounts to a
"transformation" of the equipment "into a different state or thing" akin to the
transformation in Diehr of the raw, uncured synthetic rubber.
Appellants' further argument that claim 9 and dependent claims 10-
16 do not seek to tie up all ways of scheduling and performing maintenance
such that others cannot practice this idea (App. Br. 9--10; see also Reply
Br. 3--4) is similarly unpersuasive of Examiner error. There is no dispute
that the Supreme Court has described "the concern that drives [the exclusion
of abstract ideas from patent eligible subject matter] as one of pre-emption."
Alice Corp., 134 S. Ct. at 2354. But characterizing preemption as a driving
concern for patent eligibility is not the same as characterizing preemption as
the sole test for patent eligibility. "The Supreme Court has made clear that
the principle of preemption is the basis for the judicial exceptions to
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patentability" and "[ fJor this reason, questions on preemption are inherent in
and resolved by the§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct.
at 2354). "[P]reemption may signal patent ineligible subject matter, [but]
the absence of complete preemption does not demonstrate patent eligibility."
Id. s
Turning to step two of the Mayo/Alice framework, Appellants argue
that claim 9 "recites significantly more than a judicial exception" (App.
Br. 10). Yet, to the extent Appellants maintain that the claimed invention is
patent-eligible, i.e., that claim 9 amounts to "significantly more" than an
abstract idea, and/or that the recited limitations are not "well-understood,
routine, and conventional activities," because the claim is allegedly novel
and/or non-obvious in view of the prior art, 6 Appellants misapprehend the
controlling precedent.
5 Citing McRO, Appellants argue in their Reply Brief that the Examiner
improperly dismissed the argument regarding lack of preemption (Reply
Br. 3). Yet, the court in McRO did not determine that the claims there at
issue were patent-eligible simply because there was no preemption. To the
contrary, the McRO court explicitly "recognized that 'the absence of
complete preemption does not demonstrate patent eligibility."' McRO,
837 F.3d at 1315 (quoting Ariosa, 788 F.3d at 1379).
6 See App. Br. 10 ("[I]t is instructive that the prior art rejections that were
previously raised with respect to prior versions of the claims are no longer
presented and, indeed, the Official Action does not raise any prior art
rejections with respect to the claims, thereby evidencing the inclusion by the
independent claims of 'a specific limitation other than what is well-
understood, routine and conventional in the field', the addition of
'unconventional steps' by the independent claims 'that confine the claim to a
particular useful application' and 'the inclusion of meaningful limitations
beyond generally linking the user of an abstract idea to a particular
technological environment."'); Reply Br. 4 ("[T]he lack of prior art
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Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent-eligible. Although the second step in the Mayo/Alice framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for "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., 134 S. Ct. at 2355 (citation omitted).
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Diehr, 450 U.S. at 188-89 ("The 'novelty' of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the§ 101 categories of possibly patentable subject matter.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 9-16 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection.
rejections is ... cited ... as evidence of the claims including a specific
limitation other than what is well-understood, routine and conventional in
the field, and the addition of unconventional steps that confine the claim to a
particular useful application.").
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Independent Claims 1 and 17 and Dependent Claims 2---8 and 18-24
Appellants' arguments with respect to independent claims 1 and 17
are substantially similar to Appellants' arguments with respect to claim 9,
and are similarly unpersuasive of Examiner error.
Therefore, we sustain the Examiner's rejection under 35 U.S.C. § 101
of independent claims 1 and 17, and claims 2-8 and 18-24, which depend
therefrom.
DECISION
The Examiner's rejection of claims 1-24 under 35 U.S.C. § 101 is
affirmed.
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
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