Ex Parte Irwin

Patent Trial and Appeal Board

Jul 31, 2017

10822103 (P.T.A.B. Jul. 31, 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.
10/822,103 04/12/2004 Charles F. Irwin 103-3 2142
7590
DILWORTH IP, LLC
SUITE 206
2 CORPORATE DRIVE
TRUMBULL, CT 06611
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
07/31/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES F. IRWIN
Appeal 2016-001293
Application 10/822,103
Technology Center 3600
Before JEAN R. HOMERE, HUNG H. BUI, and DAVID J. CUTITTAII,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Office Action rejecting claims 1—5, 7—15, and 17—34, all of
which are pending on appeal. Claims 6, 16, 35, and 36 have been canceled.
App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.1
1 Our Decision refers to Appellant’s Appeal Brief filed January 10, 2013
(“App. Br.”); Examiner’s Answer mailed November 5, 2013 (“Ans.”); Final
Office Action mailed May 4, 2012 (“Final Act.”); and original Specification
filed April 12, 2004 (“Spec.”).
Appeal 2016-001293
Application 10/822,103
STATEMENT OF THE CASE
Appellant’s invention relates to “a method and system by which a
transportation provider can schedule pick-up and delivery appointments for a
shipment.” Spec. 1:10—11.
Claims 1,11, and 26 are independent. Claim 1 is illustrative of
Appellant’s invention, as reproduced below:
1. A process for making pick-up or delivery appointments for
aggregated truckload shipments at a plurality of ship locations,
the process comprising;
providing an internet website application that is accessible
to Partners in a supply community including a plurality of Ship
Location Users and Carrier Shipment Planners, the internet
website application being configured and enabled to allow a
plurality of Ship Location Users to each create, configure and
maintain a unique appointment calendar for each of one or more
ship locations that are under their respective control and to allow
a plurality of Carrier Shipment Planners to each access the
internet website application and query the appointment calendar
for any ship location to determine available pick-up and delivery
dock times for that ship location;
receiving from Carrier Shipment Planners at least two
requests for an appointment for pick-up and/or delivery of
aggregated truckload shipments at two or more ship locations,
the aggregated truckload shipments each being an aggregate of
one or more orders of goods; and
outputting a refusal or acceptance to each request.
App. Br. 21 (Claims App.).
Examiner’s Rejection and References
Claims 1—5, 7—15, and 17—34 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Davidson et al. (US 7,003,720 Bl; issued Feb.
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Application 10/822,103
21, 2006 (hereinafter “Davidson”)) and Wojcik et al. (US 5,666,493; issued
Sept. 9, 1997 (hereinafter “Wojcik”)). Final Act. 2—11.
ANALYSIS
In support of the obviousness rejection of method claims 1 and 26,
and similarly, system claim 11, the Examiner finds Davidson teaches a
process for making pick-up or delivery appointments for aggregated
truckload shipments at a plurality of ship locations, including:
(1) “providing an internet website application that is
accessible to Partners in a supply community including a plurality of
Ship Location Users and Carrier Shipment Planners” (Final Act. 2
(citing Davidson 5:41—46));
(2) “the internet website application being configured and
enabled to allow a plurality of Ship Location Users to each create,
configure and maintain a unique appointment calendar for each of one
or more ship locations that are under their respective control” {id. at
2—3 (citing Davidson 3:15—20, 7:23—26));
(3) “to allow a plurality of Carrier Shipment Planners to each
access the internet website application and query the appointment
calendar for any ship location to determine available pick-up and
delivery dock times for that ship location” {id. at 3 (citing Davidson
3:7—20)); and
(4) “outputting a refusal or acceptance to each request” {id.
(citing Davidson 6:60-63)).
The Examiner acknowledges Davidson does not expressly teach, but
relies on Wojcik for teaching “receiving from Carrier Shipment Planners at
least two requests for an appointment for pick-up and/or delivery of
aggregated truckload shipments at two or more ship locations” to support the
conclusion of obviousness. Id. at 3^4 (citing Wojcik 8:27—33, 9:1—38).
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Application 10/822,103
Appellant does not dispute the Examiner’s rationale for combining
Davidson and Wojcik. Instead, Appellant presents several arguments
against the combination of Davidson and Wojcik, including:
(1) the Examiner’s failure to accord patentable weight to the
preamble of Appellant’s claims 1,11, and 26 (App. Br. 13);
(2) Davidson only teaches a shipment planner for presenting
shipment and scheduling information and personal event information
to a single user, and does not teach that the user includes (i) Ship
Location Users and (ii) Carrier Shipment Planners, as recited in
Appellant’s claims 1, 11, and 26 {id. at 14);
(3) Davidson does not teach that “users are ‘authorized field
and general office personnel’ who can create, configure or maintain
an appointment calendar for a ship location as a Ship Location User
would do,” as recited in Appellant’s claims 1,11, and 26 {id. at 15);
(4) Davidson’s single user is not the same as Appellant’s
claimed “plurality of Carrier Shipment Planners” that “can each
access the internet website and query the appointment calendar” {id.);
and
(5) Wojcik discloses a stand-alone system designed to allow
a single shipper (“vendor”) to process orders from customers who do
not have access to the system and, as such, does not teach “receiving
from Carrier Shipment Planners at least two requests for an
appointment for pick-up and/or delivery of aggregated truckload
shipments at two or more ship locations” as recited in Appellant’s
claims 1, 11, and 26 {id. at 16—17).
We do not find Appellant’s arguments persuasive. Instead, we find
the Examiner has provided a comprehensive response to Appellant’s
arguments supported by a preponderance of the evidence. Ans. 2—8. As
such, we adopt the Examiner’s findings and explanations provided therein.
Id. At the outset, we acknowledge that the preamble of Appellant’s claims
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Application 10/822,103
I, 11, and 26 recites “a process [or system] for making pick-up or delivery
appointments for aggregated truckload shipments at a plurality of ship
locations.” In general, the preamble does not limit the claims, but can be
limiting “if it recites essential structure or steps, or if it is ‘necessary to give
life, meaning, and vitality’ to the claim.” American Medical Systems, Inc. v.
Biolitec, Inc., 618 F.3d 1354, 1358—1359 (Fed. Cir. 2010). In addition to the
preamble, Appellant’s claims 1,11, and 26 further require the Carrier
Shipment Planners to (1) “each access the internet website application and
query the appointment calendar for any ship location to determine available
pick-up and delivery dock times for that ship location” and (2) [send] “at
least two requests for an appointment for pick-up and/or delivery of
aggregated truckload shipments at two or more ship locations.” Because the
preamble is necessary to give meaning and vitality to Appellant’s claims 1,
II, and 26, such a preamble must be accorded patentable weight. However,
we agree with the Examiner that Davidson’s shipment planner 10, shown in
Figure 2, is an Internet website-based application used to manage and track
shipments, via the Internet, including scheduling information (i.e., pick-up
or delivery appointments for shipments at different locations) as recited in
the preamble of Appellant’s claims 1,11, and 26. Ans. 4 (citing Davidson
1:10-16,5:41^14).
Davidson’s Figure 2 is reproduced below:
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Application 10/822,103
As shown in Figure 2, one or more users can access shipment planner
10 from client interface 11, such as a PC web browser installed at different
PCs or workstations. Davidson 5:37—60. The shipment planner 10 includes
four data repositories 21, 22, 23, and 24, respectively: (1) “display options
data” — contains display parameters used to customize how the shipment
planner is displayed to the user; (2) “user reports data” — contains report
profiles which query the shipment data to create customized user reports; (3)
“shipment data” — contains all shipment and scheduling information; and
(4) “user event data” — contains personal events information. Davidson
5:62-6:2.
Davidson does not differentiate different types of users who access
shipment planner 10, shown in Figure 2; however, an artisan with an
ordinary level of knowledge and skill in the art can appreciate that (1) the
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users who access shipment planner 10 to customize user profiles including
maintaining an appointment calendar can be characterized as “Ship Location
Users” and (2) the users who access shipment planner 10 to determine
available pick-up and delivery dock times for ship location can be
characterized as “Carrier Shipment Planners” in the manner recited in
Appellant’s claims 1,11, and 26. Davidson 6:29-7:3. Likewise, a skilled
artisan can also appreciate that Davidson’s shipment planner 10 is also
capable of receiving “at least two requests for an appointment for pick-up
and/or delivery of aggregated truckload shipments at two or more ship
locations” in the manner recited in Appellant’s claims 1,11, and 26.
Nevertheless, as correctly recognized by the Examiner, Davidson’s
“shipment planner 10 provides ready and convenient access to shipment
delivery and tracking information from any location in the world, on any day
of the week, and at any time of day” “providing an internet website
application that is accessible to Partners in a supply community including a
plurality of Ship Location Users and Carrier Shipment Planners.” Ans. 5
(citing Davidson 5:41—60). When an order fulfillment system disclosed by
Wojcik is incorporated into Davidson’s shipment planner 10, Davidson’s
shipment planner 10 is certainly able to receive from “Carrier Shipment
Planners at least two requests for an appointment for pick-up and/or delivery
of aggregated truckload shipments at two or more ship locations” in the
manner recited in Appellant’s claims 1,11, and 26. As shown in Wojcik’s
Figure 38, different types of users are disclosed, including schedulers, users,
and planners.
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Application 10/822,103
For the reasons set forth above, Appellant has not persuaded us of
Examiner error. Accordingly, we sustain the Examiner’s obviousness
rejection of independent claims 1,11, and 26.
With respect to dependent claims 3, 12—15, 21 and 28, Appellant
argues neither Davidson nor Wojcik teaches or suggests “specifying
appointment-making privileges [including] the privilege to request a pre­
appointment, the privilege to request a repeating standing appointment, and
the privilege to self-appoint appointments.” App. Br. 17—18. We disagree
and adopt the Examiner’s response on page 8 of the Examiner’s Answer.
With respect to dependent claims 9, 10, 19, 20, 21, 33, and 34,
Appellant argues neither Davidson nor Wojcik teaches or suggests “allowing
a Partner to query for appointments in a multi segment tour.” App. Br. 18—
19. We disagree. Davidson’s shipment planner 10 allows a user (i.e.,
partner) to navigate different links and screens to schedule appointments.
Ans. 9 (citing Davidson 7:55—66, Figs. 3, 6).
With respect to dependent claims 22 and 23, Appellant argues neither
Davidson nor Wojcik teaches or suggests “a calendar having appointment
reservation request and auto-approval aging time functions.” App. Br. 19.
Again, we disagree and adopt the Examiner’s response on page 9 of the
Examiner’s Answer.
For the reasons set forth above, we sustain the Examiner’s
obviousness rejection of claims 1—5, 7—15, and 17—34 based on Davidson
and Wojcik.
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Application 10/822,103
OTHER ISSUES
In the event of further prosecution of this application, this panel
suggests that the Examiner consider rejecting claims 1—5, 7—15, and 17—34
under 35 U.S.C. § 101 as being directed to non-statutory subject matter, i.e.,
an abstract idea in light of the two-steps framework set out in the Supreme
Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347
(2014).
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). The first step in the analysis
is to “determine whether the claims at issue are directed to one of those
patent-ineligible concepts,” such as an abstract idea. Id. If the claims are
directed to a patent-ineligible concept, the second step in the analysis is to
consider the elements of the claims “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, 132 S. Ct. at 1297). In other words, the second step is to
“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.’” Id.
(alteration in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition
against patenting an abstract idea “‘cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment’ or
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Application 10/822,103
adding ‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593,
610—11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175 (1981)).
Turning to the first step of the Alice inquiry, we find Appellant’s
method claims 1 and 26 and system claim 11 are directed to an abstract idea
of “planning and scheduling pick-up and delivery appointments for a
shipment” via an Internet website application. All the steps recited in
Appellant’s claims 1 and 26 including, for example: (i) “allowing] a
plurality of Ship Location Users to create, configure and maintain a unique
appointment calendar for each of each or more ship locations”; (ii)
“allowing] a plurality of Carrier Shipment Planners to each access the
internet website application and query the appointment calendar ... to
determine available pick-up and delivery dock times for that ship location”;
(iii) “receiving from Carrier Shipment Planners at least two requests for an
appointment for pick-up and/or delivery of aggregated truckload shipments
at two or more ship locations” and (vi) “outputting a refusal or acceptance to
each request” are considered abstract processes of scheduling pick-up and
delivery appointments for a shipment. System claim 11 recites similar
limitations of claims 11 and 26 in the context of “means-plus-fimction”
limitations.
Turning to the second step of the Alice inquiry, we find nothing in
Appellant’s claims 1 and 26 and its corresponding system claim 11, whether
considered individually or in an ordered combination, that adds
“significantly more,” sufficient to transform the abstract concept of
“scheduling pick-up and delivery appointments for a shipment” into a
patent-eligible application. Alice, 134 S. Ct. at 2357.
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As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski’s “machine-or-
transformation” (MoT) test can also provide a “useful clue” in the second
step of the Alice framework. See In re Bilski,2 545 F.3d 943, 954 (Fed. Cir.
2008) (en banc). Under Bilski’s MoT test, a claimed process can be
considered patent-eligible under § 101 if: (1) “it is tied to a particular
machine or apparatus”; or (2) “it transforms a particular article into a
different state or thing.” In re Bilski, 545 F.3d at 954 (citing Gottschalk v.
Benson, 409 U.S. 63, 70 (1972)). However, Appellant’s claims 1 and 26 and
its corresponding system claim 11 are neither sufficiently “tied to a
particular machine or apparatus” nor involved in any type of transformation
of any particular article.3
Limiting such an abstract concept of “scheduling pick-up and delivery
appointments for a shipment” to generic “means-plus-fimction” limitations
recited in Appellant’s system claim 11 does not make the abstract concept
patent-eligible under 35 U.S.C. § 101. As recognized by the Supreme Court,
“the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” See Alice, 134 S.
2 In In re Bilski, the Federal Circuit adopted a “machine-or-transformation”
(MoT) test to determine whether a process claim is eligible under 35 U.S.C.
§101. However, the Supreme Court held, in Bilski v. Kappos, 130 S. Ct.
3218, 3227 (2010), that the “MoT” test, while a “useful and important clue,”
is no longer the sole test for determining the patent-eligibility of process
claims under § 101. Since Bilski v. Kappos, the Supreme Court has created a
two-step framework in Alice to address whether a claim falls outside of
§101, which we discuss infra.
3 Alice also confirmed that if a patent’s systems claims are no different in
substance from its method claims, they will rise and fall together. Alice, 134
S. Ct. at 2360. The same was true of the Alice patent’s media claims. Id.
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Ct. at 2358—2359 (concluding claims “simply instructing] the practitioner to
implement the abstract idea of intermediated settlement on a generic
computer” not patent eligible); see also Ultramercial, 772 F.3d at 715—16
(claims merely reciting abstract idea of using advertising as currency as
applied to particular technological environment of the Internet not patent
eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1344-45 (Fed. Cir. 2013) (claims reciting “generalized software
components arranged to implement an abstract concept [of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer” not patent eligible); Dealertrack,
Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir. 2012) (“Simply adding a
‘computer aided’ limitation to a claim covering an abstract concept, without
more, is insufficient to render [a] claim patent eligible.”).
Lastly, we note Appellant’s claims 1,11, and 26 are neither deeply
rooted in computer technology as outlined in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), nor do they seek to
improve any type of computer capabilities, such as a “self-referential table
for a computer database” outlined in Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1336-37 (Fed. Cir. 2016).
Because Appellant’s claims 1,11, and 26 are directed to a patent-
ineligible abstract concept and do not recite something “significantly more”
under the second prong of the Alice analysis, we suggest the Examiner to
reject these claims as well as respective dependent claims 2—5, 7—10, 12—15,
17—25, and 27—34 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter in light of Alice and its progeny.
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CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1—5, 7—15, and 17—34 under
35 U.S.C. § 103(a).
DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1—5, 7—
15, and 17—34.
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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