Ex Parte Hester et alDownload PDFPatent Trial and Appeal BoardDec 10, 201810921588 (P.T.A.B. Dec. 10, 2018) Copy Citation 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. Appeal2017-009470 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 2 Appeal2017-009470 Application 10/921,588 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. 3 Appeal2017-009470 Application 10/921,588 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. 4 Appeal2017-009470 Application 10/921,588 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 5 Appeal2017-009470 Application 10/921,588 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, 6 Appeal2017-009470 Application 10/921,588 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 7 Appeal2017-009470 Application 10/921,588 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. 8 Appeal2017-009470 Application 10/921,588 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 9 Appeal2017-009470 Application 10/921,588 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 10 Appeal2017-009470 Application 10/921,588 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."). 11 Appeal2017-009470 Application 10/921,588 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 12 Copy with citationCopy as parenthetical citation