Ex Parte Jones et al

Patent Trial and Appeal Board

Jun 18, 2018

13326034 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/326,034 12/14/2011
11530 7590 06/20/2018
Klintworth & Rozenblat IP LLP and
Abbott Laboratories
19 North Green Street
Chicago, IL 60607
FIRST NAMED INVENTOR
John Curtis Jones
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.
ABTOl-082-US
(l 1221US01)
EXAMINER
SHUI,MING
9433
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
Patents _Abbott_Park@abbott.com
docketing@kandrip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN CURTIS JONES, PATRICK P. FRITCHIE,
STEVE KOTLINSKI, JAY BRIAN SAILER,
PATHIKH. SONI, ERICH IWEN, RONALD R. ROHS, and
WILLIAM B. WILLIAMS
Appeal2017-003026
Application 13/326,034
Technology Center 3600
Before ERIC S. FRAHM, LARRY J. HUME, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-18 and 20, which are all of the claims pending in
this application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Abbott Laboratories of
Illinois. App. Br. 1.
2 Claim 19 has been canceled. App. Br. 21 (Claim App'x).
Appeal2017-003026
Application 13/326,034
INVENTION
Appellants' invention relates to automated laboratory inventory
management using RFID technology. Abstract. Claiml is illustrative and
reads as follows:
1. A laboratory information management system,
compnsmg:
a receiving portal located at an entryway of a laboratory;
at least one laboratory item received at a delivery location
corresponding to the laboratory, the at least one received
laboratory item having a corresponding RFID tag physically
affixed thereto or physically affixed to packaging corresponding
thereto, so as to define a tagged item;
an RFID scanner located in the receiving portal, the RFID
scanner coupled to an RFID antenna, wherein the RFID scanner
is configured to automatically scan the RFID when the least one
laboratory item and corresponding RFID tag is passed through
the receiving portal, the automatic scanning causing the RFID
tag to transmit item information stored in the RFID tag to the
RFID antenna;
a local computer operatively coupled to an inventory
database, to a remote computer, and to the RFID scanner,
wherein the local computer is configured to receive the item
information transmitted by the RFID scanner;
a product catalogue stored on the local computer and
received from the remote computer;
the local computer configured to monitor an inventory
database to determine if an amount of a particular kind of
laboratory item is less than a predetermined amount;
the local computer configured to generate the purchase
order for the laboratory item based on the stored product catalog,
wherein the generated purchase order details a plurality of
laboratory items to be ordered, including the laboratory item to
be obtained, and specifies a delivery location;
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Application 13/326,034
the local computer configured to transmit the purchase
order to the remote computer to communicate the purchase order
to a vendor;
the local computer configured to receive an advance
shipping notice generated by the remote computer in response to
the transmitted purchase order; and
the local computer configured to check the item
information against the advance shipping notice to verify that the
tagged item is the same as the ordered laboratory item.
REJECTIONS
Claims 1-10 stand rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as indefinite. Final Act. 4--5.
Claims 1-18 and 20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception without significantly
more. Final Act. 5-7.
Claims 1, 2, and 8-10 stand rejected under 35 USC§ 103 as
unpatentable over the combination of Hyre et al. (US 2012/0101956 Al,
published Apr. 26, 2012) ("Hyre"), Alloul et al. (US 6,032,130, issued Feb.
29, 2000), and Postma et al. (US 2011/0246215 Al, published Oct. 6, 2011)
("Postma"). Final Act. 8-11.
Claims 11, 12, 14--17, and 20 stand rejected under 35 USC§ 103 as
unpatentable over the combination of Hyre and Postma. Final Act. 12-17.
Claims 3-7, 13, 18, and 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Hyre and Postma combined with other
prior art references. Final Act. 17-24.
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Application 13/326,034
ANALYSIS
Rejection of Claims 1-18 and 20 under§ 101
We have reviewed the § 101 rejection of claims 1-18 and 20 in light
of Appellants' arguments that the Examiner erred. We have considered in
this decision only those arguments Appellants actually raised in the Briefs.
Any other arguments Appellants could have made, but chose not to make, in
the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 3-5) and in the Action from which this appeal was
taken (Final Act. 5-7). We provide the following explanation for emphasis.
Appellants contend the Examiner erred in rejecting the pending claims
as directed to a judicial exception (i.e., an abstract idea) without significantly
more. See App. Br. 10. Appellants argue claims 1-18 and 20 as a group
(id.), and we choose claim 1 as representative of the group. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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." Alice Corp. Pty, Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66 (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. (citing Mayo, 566 U.S. at 77-78). 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
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Application 13/326,034
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). 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.
(brackets in original) (quoting Mayo, 566 U.S. at 72-73). 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
adding 'insignificant postsolution activity."' Bilski v. Kappas, 561 U.S. 593,
610-11 (2010) ( citation omitted).
Appellants first argue the claims "do not and would not preempt" the
abstract idea of inventory management, which is a fundamental economic
practice. App. Br. 9. Appellants argue "such lack of preemption should
reduce the preclusive effect of the judicial exceptions as applied to
applicant's claimed invention." Id. at 10.
Appellants' arguments do not persuade us of error. Although the
Supreme Court has described "the concern that drives this exclusionary
principle [i.e., the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption," Alice Corp., 134 S. Ct. at 2354,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing pre-emption 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 patentability" and "[ f]or 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.
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Application 13/326,034
2015) (citing Alice Corp., 134 S. Ct. at 2354). Although "preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility." Id.
Turning to the first step of the Alice inquiry, we agree with the
Examiner that limitations of the claims are directed to the abstract idea of
inventory management, which is a fundamental economic practice long
prevalent in our system of commerce, and is an abstract idea beyond the
scope of§ 101. Final Act. 6; see also buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1351 (Fed. Cir. 2014) (claims directed to a fundamental
economic practice were abstract);Alice, 134 S. Ct. at 2356-57) (claims
directed to fundamental economic practice of intermediated settlement are
abstract).
Appellants argue in the Reply Brief that, similar to the claims in
intervening case McRO, Inc. v. Bandai Namco Games America, Inc., 837
F.3d 1299 (Fed. Cir. 2016), the claims here improve upon the computer-
related technology of automated inventory control, which is part of the
overall concept of inventory management. Reply Br. 7. Appellants argue,
like the improvements in McRO, the claims overcome "the problems of
requiring manual data entry, involving error prone human intervention, and
restricted supply-chain visibility." Id. at 8.
Appellants' arguments are not persuasive. See Reply Br. 7-8.
Limiting the use of an abstract idea to a particular technological
environment, e.g., RFID technology, does not make a claim less abstract.
See Alice Corp., 134 S. Ct. at 2358. Nor is the recitation of a practical
application for an abstract idea sufficient to transform the abstract idea into a
patent-eligible invention. CyberSource Corp. v. Retail Decisions, Inc., 654
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F.3d 1366, 1371 (Fed. Cir. 2011) ("The Court [in Parker v. Flook, 437 U.S.
584 (1978)] rejected the notion that the recitation of a practical application
for the calculation could alone make the invention patentable.").
Moreover, that the claims recite implementation by RFID computing
systems does not make the claims patent eligible. The recited RFID
elements, such as tags, scanners, readers, and antennae, are used for their
intended purpose, and the claims do not recite any specific improvement in
the technical field or technology of RFID computing systems. See McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016); see also In re TL! Comm 'ns LLC Patent Litigation, 823 F.3d 607,
612-13 (Fed. Cir. 2016) (concluding that using a generic telephone for its
intended purpose was a well-established "basic concept" sufficient to fall
under Alice step 1 ).
For these reasons, we are not persuaded of error in the Examiner's
conclusion that the claims are directed to the abstract idea of inventory
management, which we agree is a fundamental economic practice. See Final
Act. 6.
Turning to the second step of the Alice inquiry, we find nothing in
claim 1 that adds anything "significantly more" to transform the abstract
concept of determining rough diamond prices into patentable subject matter.
Alice Corp., 134 S. Ct. at 2357.
Appellants first argue that, "[a]lthough an RFID scanner may be well-
known when taken individually as a separate and isolated component, use of
such an RFID scanner in conjunction with the applicant's claimed features
amounts to significantly more than an abstract idea." App. Br. 11.
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We are not persuaded of error. The Examiner's analysis considered
the claim elements both individually and as a whole. See Ans. 4.
Appellants next argue that "the subject invention can be analogized to
a robotic arm assembly and separately to Diamond v. Diehr." App. Br. 13;
Diamond v. Diehr, 450 U.S. 175 (1981). In particular, Appellants argue the
claims recite specific steps using recited hardware components that
constitute unconventional steps that confine the claim to a particular useful
application. Id. Appellants argue:
the claimed receiving portal strategically located in the
entryway, together with the RFID scanner located at the same
location, the product catalog stored on the local computer, the
generation of a purchase order based on the product catalog, the
advance shipping notice, and the checking of the item
information against the advance shipping notice, are not mere
components used to carry out the base inventory management
concept. Rather, such additional components and process steps
go beyond routine structure and are directed to solving the
known problems of a specific laboratory inventory management
system, and represent significantly more than the abstract idea,
when taken as a whole and as an ordered combination of
elements.
Reply Br. 10-11.
We disagree. We decide in step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016. The invention in Diehr differs significantly from that in claim 1
because, in Diehr, the new application of a mathematical correlation in a
physical molding process resulted in an improved molding process that
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overcomes curing problems in the prior art. Diehr, 450 U.S. at 178, 187.
Appellants do not provide persuasive technical reasoning with regard to how
the recited hardware, product catalog, purchase order, and/or shipping notice
elements address a technological problem or are technological
improvements. Appellants do not provide specific, technical details for the
tangible components, but rather describe the recited methods and systems in
generic or functional terms. See App. Br. 5.
"[N]ot every claim that recites concrete, tangible components escapes
the reach of the abstract-idea inquiry." In re TL! Comm 'ns LLC Patent
Litigation, 823 F.3d 607, 611 (Fed. Cir. 2016). In particular, in TL!
Communications, the court noted claims reciting general-purpose computer
components a "scanner " an "interface " "network " and a "database" were
' ' ' '
nevertheless "directed to" an abstract idea. Id. (citing Alice, 134 S.Ct. at
2360). Appellants' conclusory arguments that the claims here differ
significantly from those in TL! Communications are not persuasive. See
Reply Br. 10-11.
For these reasons, we agree with the Examiner that the identified
elements are directed to a result or effect that itself is the abstract idea of
inventory management.
Accordingly, we sustain the Examiner's§ 101 rejection of
representative, independent claim 1, as well as the Examiner's§ 101
rejection of independent claims 11 and 16, which fall with claim 1. Reply
Br. 11. We also sustain the Examiner's§ 101 rejection of dependent claims
2-10, 12-15, 17, 18, and 20, which fall with the independent claims from
which those claims depend. Id.
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Rejections of Claims 1-10 under§ 112 and Claims 1-18 and 20 under§ 103
Appellants have not presented arguments directed to the rejections of
claims 1-10 under§ 112, second paragraph, or claims 1-18 and 20 under
§ 103(a). Accordingly, we affirm those rejections proforma. See Reply
Br. 11.
DECISION
We affirm the decision of the Examiner rejecting claims 1-18 and 20.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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