Ex Parte Kasper et al

Patent Trial and Appeal Board

Mar 16, 2018

11605046 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/605,046 11127/2006
56056 7590 03/20/2018
BRAKE HUGHES BELLERMANN LLP
C/O CPA Global
900 Second A venue South
Suite 600
MINNEAPOLIS, MN 55402
FIRST NAMED INVENTOR
Thomas Kasper
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.
0010-254001/2005P00356US 4307
EXAMINER
VIZV ARY, GERALD C
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
uspto@brakehughes.com
docketing@brakehughes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte THOMAS KASPER, MATHIAS GOEBELT,
HEINRICH BRAUN, and FRANK SCHLUETER
Appeal2017-000973
Application 11/605,046
Technology Center 3600
Before ST. JOHN COURTENAY III, SCOTT E. BAIN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention "generally relates to
computer-supported optimization techniques and more specifically to
1 Appellants identify the real party in interest as SAP SE. App. Br. 3.
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computer-implemented systems and methods for supply chain optimization."
Spec. i-f 1. 2 The invention provides an "automatic cost generation apparatus"
for "automatically converting user supplied definitions/requirements into
cost parameters for use by a cost-based supply chain optimizer," for
example, "by generating a linear programming model that incorporates the
requirements/ definitions as a set of linear constraints." Abstract; see Spec.
,-r,-r 8-1 0.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A method executed by a computer system, the computer
system including a processor and a memory, the method for use
with an automated supply chain optimizer that optimizes a
supply chain based on costs, the method automatically
converting non-cost-based definitions into costs for use by the
optimizer, the method comprising:
providing, by a definitions unit executed by the computer
system, a set of non-cost-based definitions, at least one non-
cost-based definition in the set of non-cost-based definitions
being a priority assigned to a business requirement;
generating, by a model generation unit executed by the
computer system, a linear programming model to automatically
convert the non-cost-based definitions into costs, the linear
programming model to incorporate the non-cost-based
definitions as a set of linear constraints;
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed November 27, 2006; "Final Act." for the Final Office
Action, mailed July 15, 2015; "Adv. Act." for the Advisory Action, mailed
January 19, 2016; "App. Br." for the Appeal Brief, filed March 14, 2016;
"Ans." for the Examiner's Answer, mailed August 25, 2016; and
"Reply Br." for the Reply Brief, filed October 18, 2016.
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solving, by a linear programming model solution unit
executed by the computer system, the linear programming
model to yield a cost model; and
extracting, by a cost extraction unit executed by the
computer system, costs from the cost model for use with the
automated supply chain optimizer that optimizes the supply
chain based on costs for evaluating supply chain management
solutions.
App. Br. 18 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence ofunpatentability under 35 U.S.C. § 103(a), the
Examiner relies on the following prior art:
Erke et al. ("Erke")
Pokorny et al. ("Pokorny")
Sarthi et al. ("Sarthi")
US 2003/0061126 Al Mar. 27, 2003
US 2003/0154144 Al Aug. 14, 2003
US 7,627,493 Bl Dec. 1, 2009
(filed Aug. 25, 2000)
The Rejections on Appeal
Claims 1-18 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 6-7; Ans. 3.
Claims 1-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Pokorny and Sarthi. Final Act. 8-19; Ans. 3.
Claims 15-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Pokorny, Sarthi, and Erke. Final Act. 20-22; Ans. 3.
ANALYSIS
We have reviewed the rejections in light of Appellants' arguments
that the Examiner erred. For the reasons explained below, we concur with
the Examiner's conclusions concerning unpatentability under§ 101 and
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§ 103(a). We adopt the Examiner's findings and reasoning in the Final
Office Action (Final Act. 3-22), Advisory Action (Adv. Act. 2), and Answer
(Ans. 4---6). We add the following to address and emphasize specific
findings and arguments.
The§ 101 Rejection of Claims 1-18
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme
Court explained that § 101 "contains an important implicit exception" for
laws of nature, natural phenomena, and abstract ideas. See Diamond v.
Diehr, 450 U.S. 175, 185 (1981 ). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter:
First, "determine whether the claims at issue are directed to" a patent-
ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If so,
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements" add enough to
transform the "nature of the claim" into "significantly more" than a patent-
ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016).
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Step one in the Mayo/Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Step two involves
the search for an "inventive concept." Alice, 134 S. Ct. at 2355; Elec. Power
Grp., 830 F.3d at 1353. An "inventive concept" requires more than "well-
understood, routine, conventional activity already engaged in" by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79--80). But "an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces." BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Under step two, "an inventive concept must be evident in the claims."
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
MAYO/ALICE STEP ONE
For Mayo/Alice step one, the Examiner concludes that claim 1 "recites
an abstract idea," in particular:
optimizing a supply chain based on costs, converting non-cost-
based definitions into costs for use by the optimizer, at least one
non-cost-based definition in the set of non-cost-based
definitions being a priority, using a linear programming model
to automatically convert the non-cost-based definitions into
costs to yield a cost model and using costs from the cost model
to optimize the supply chain based on costs for evaluating
supply chain management solutions.
Ans. 4; see Final Act. 6.
Appellants assert that the Examiner "improperly alleges that Claim 1
'recites' an abstract idea without proper analysis of whether the claims are
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'directed to' a patent-ineligible abstract idea." Reply Br. 7 (emphasis
omitted). Appellants also assert that the Examiner "simplistically, but
erroneously, maps all of Claim 1 as being an abstract idea without
considering the specific requirements of the claim and failing to properly
determine what alleged abstract idea the claims are 'directed to."' Id. at 9.
Appellants add that the Examiner's analysis "oversimplifies the claims." Id.
Appellants' assertions do not persuade us of Examiner error. In the
Final Office Action, the Examiner concludes that claim 1 is "directed to" the
same abstract idea identified in the Answer. Compare Final Act. 6, with
Ans. 4. Appellants acknowledge that the Examiner "alleged that Applicant's
[sic] claims are directed to an 'abstract idea' specifically" the same abstract
idea identified in the Answer. Compare Reply Br. 5 (emphasis added), with
Final Act. 6, and Ans. 4.
Further, for Mayo/Alice step one, the Examiner accurately assesses the
"focus" of the claims. See Elec. Power Grp., 830 F.3d at 1353. The
Examiner explains that claim 1 encompasses two concepts: ( 1) "comparing
new and stored information and using rules to identify options," i.e.,
"optimizing a supply chain based on costs, converting non-cost-based
definitions into costs"; and (2) "organizing information through
mathematical correlations," i.e., "using a linear programming model to
automatically convert the non-cost-based definitions into costs to yield a
cost model and using costs from the cost model to optimize the supply chain
based on costs for evaluating supply chain management solutions." Ans. 4.
The Examiner's analysis comports with Federal Circuit decisions. In
SmartGene, the Federal Circuit decided that claims directed to "comparing
new and stored information and using rules to identify medical options" did
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not satisfy Mayol Alice step one. See SmartGene, Inc. v. Advanced
Biological Labs., SA, 555 F. App'x 950, 951-52, 955-56 (Fed. Cir. 2014).
And in Digitech, the Federal Circuit decided that claims directed to
"organizing information through mathematical correlations" did not satisfy
Mayo/Alice step one. See Digitech Image Techs., LLC v. Elecs.for Imaging,
Inc., 758 F.3d 1344, 1350-51 (Fed. Cir. 2014). Adding one abstract idea
("optimizing a supply chain based on costs, converting non-cost-based
definitions into costs") to another abstract idea ("using a linear programming
model to automatically convert the non-cost-based definitions into costs to
yield a cost model and using costs from the cost model to optimize the
supply chain based on costs for evaluating supply chain management
solutions") does not suffice for patent eligibility under Mayo/Alice step one.
See RecogniCorp, 855 F.3d at 1327.
Further, the Federal Circuit has ruled that claims merely requiring
data collection and analysis-like claim 1----did not pass muster under a
§ 101 review for patent eligibility. See, e.g., Smart Sys. Innovations, LLC v.
Chi. Transit Auth., 873 F.3d 1364, 1368-73 (Fed. Cir. 2017); Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1047, 1054--56 & n.6
(Fed. Cir. 2017); Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1339-40 (Fed. Cir. 2017); Elec. Power Grp., 830 F.3d
at 1351-54.
Appellants argue that: (1) the Examiner "has made no showing that
Appellant's [sic] claims disproportionately pre-empt uses of, or
improvements to, the alleged abstract idea"; and (2) claim 1 "does not
disproportionately pre-empt or prohibit other persons from using, or making
other improvements to, 'the automated supply chain optimizer that optimizes
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the supply chain based on costs for evaluating supply chain management
solutions,"' for example, "by using a set of definitions other than the set of
non-cost-based definitions" specified in claim 1. Reply Br. 11-12; see App.
Br. 10-11.
Appellants' arguments regarding preemption do not persuade us of
Examiner error. While preemption may denote patent ineligibility, its
absence does not demonstrate patent eligibility. See FairWarning, IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims
covering a patent-ineligible concept, preemption concerns "are fully
addressed and made moot" by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
Appellants contend that claim 1 is "like the claims in McRO" because
claim 1 uses "unconventional rules" to "optimize a supply chain." Reply
Br. 7 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1312 (Fed. Cir. 2016)). Appellants misplace their reliance on McRO. The
claims in McRO recited a "specific ... improvement in computer animation"
using "unconventional rules that relate[ d] sub-sequences of phonemes,
timings, and morph weight sets." McRO, 837 F.3d at 1302---03, 1307---08,
1314--15. In McRO, "the incorporation of the claimed rules, not the use of
the computer," improved an existing technological process. Id. at 1314. In
contrast to the claims in McRO, claim 1 does not improve an existing
technological process. See Alice, 134 S. Ct. at 2358 (explaining that "the
claims in Diehr were patent eligible because they improved an existing
technological process"). Instead, claim 1 concerns "computer-supported
optimization techniques" for "supply chain optimization." See Spec. i-f 1,
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Abstract. In addition, Appellants do not direct us to any evidence that the
claimed "linear programming model" or "non-cost-based definitions"
correspond to unconventional rules. See App. Br. 9-13; Reply Br. 4--12.
Appellants contend that claim 1 is "like the claims in Enfzsh." Reply
Br. 9. Enfish does not help Appellants. The claims in Enfzsh were directed
to a "specific improvement to the way computers operate," i.e., an improved
database configuration that permitted faster searching for data. Enfzsh,
822 F.3d at 1330-33, 1336. We note that the claims at issue are silent
regarding a database. Nor do Appellants describe an advance in hardware or
software that, for example, causes a computer to operate faster or more
efficiently. The alleged improvement to "computer-supported optimization
techniques" for "supply chain optimization" does not parallel the
improvement in Enfzsh and does not impart patent eligibility under
Mayo/Alice step one. See Secured Mail Sols. LLC v. Universal Wilde, Inc.,
873 F.3d 905, 910 (Fed. Cir. 2017) (explaining that the claims in Enfzsh
"focused on an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity"). Claim 1 uses a computer in its ordinary capacity. Accordingly,
the Examiner determines that claim 1 fails to recite an improvement to either
"the functioning of the computer itself' or "another technology or technical
field." Final Act. 7; see id. at 3; Ans. 5.
Appellants assert that claim 1 concerns "a particular process for
achieving the desired result." Reply Br. 9-10 (emphasis omitted). That
assertion does not persuade us of Examiner error. At best, claim 1 limits the
abstract idea to one field of use or particular environment. See Final
Act. 3--4; see also Adv. Act. 2. "[L ]imiting an abstract idea to one field of
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use" does not impart patent eligibility under Mayo/Alice step one. See Bilski
v. Kappas, 561 U.S. 593, 612 (2010); Intellectual Ventures I, 850 F.3d
at 1340; see also Parker v. Flook, 437 U.S. 584, 589--90 (1978); Affinity
Labs, 838 F.3d at 1259. As the Examiner reasons, the claims in Bilski "fell
outside section 101 notwithstanding the fact that they disclosed a very
specific method of hedging against price increases." Final Act. 3--4 (citing
Bilski, 561 U.S. at 599---601).
For the reasons discussed above, Appellants' arguments have not
persuaded us that claim 1 satisfies Mayo/Alice step one.
MAYO/ALICE STEP Two
For Mayo/Alice step two, the Examiner "consider[s] the claims as a
whole" and determines that "no element or combination of elements in the
claims are sufficient to ensure that the claims amount to significantly more
than the abstract idea itself." Final Act. 6-7; see id. at 3; Adv. Act. 2. For
claim 1, the Examiner finds that: (1) "the computer system including a
processor and a memory" is "nothing more than a generic computer,
performing generic, well-understood and routine computer functions"; and
(2) the processor and the memory "are generic computer devices and are
merely being used for their intended purpose." Final Act. 7; Adv. Act. 2.
Appellants do not dispute the Examiner's findings. See App. Br. 9-13;
Reply Br. 4--12.
Consequently, we conclude that claim 1 lacks meaningful limitations
needed to transform it into significantly more than a patent-ineligible
abstract idea, and thus fails to satisfy Mayo/Alice step two. See Final Act.
3--4, 6-7; Adv. Act. 2.
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SUMMARY
For the reasons discussed above, Appellants' arguments have not
persuaded us that the Examiner erred in rejecting claim 1 under § 101.
Hence, we sustain the § 101 rejection of claim 1.
Appellants do not argue patentability separately for independent
claims 12 and 14 or dependent claims 2-11, 13, and 15-18. App. Br. 9-13;
Reply Br. 4--12. Because Appellants do not argue the claims separately, we
sustain the § 101 rejection of claims 2-18 for the same reasons as claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
The§ 103(a) Rejections of Claims 1-18
A NON-COST-BASED DEFINITION BEING A
PRIORITY ASSIGNED TO A BUSINESS REQUIREMENT
Appellants argue that the Examiner erred in rejecting claim 1 because
Pokorny "fails to disclose, teach or suggest" the following limitation in
claim 1: "providing, by a definitions unit executed by the computer system,
a set of non-cost-based definitions, at least one non-cost-based definition
in the set of non-cost-based definitions being a priority assigned to a
business requirement." App. Br. 14--15; Reply Br. 4. In particular,
Appellants contend that Pokorny's disclosure of calculating "the cost of
waste and/or delay events during manufacturing based on event information"
and "setting a cost-based alert criterion for automatic report generation"
differs substantially from the disputed limitation in claim 1. App. Br. 15. In
addition, Appellants contend that "Pokorny describes only inputting [Process
Information Per Event] PIPE data ... into the 'other software systems"' and
the "titles or names for the 'other software systems"' differ "from and do not
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correspond to" example business priorities discussed in the Specification.
Reply Br. 3; see Spec. i19, Fig. 2.
Appellants' arguments do not persuade us of Examiner error because,
as the Examiner finds, Pokorny discloses (1) calculating the cost of delay
events and (2) setting cost-based alert criteria for automatic report
generation based on cost thresholds for delay events. Pokorny i-fi-f 19, 66, 69;
see Final Act. 8, 15-16. Pokorny describes different delay events, such as
transport delays and production delays, and discloses displaying the "top N"
delay events and charting the "top ten categories" of delay events in terms of
cost. Pokorny i1i150, 55, 62, 69, 88. Pokorny's different delay events
correspond to different business requirements, and different cost thresholds
assigned to different delay events correspond to different priorities assigned
to different business requirements. See Spec. i19, Fig. 2. Thus, Pokorny
teaches or suggests the disputed limitation in claim 1. Although Pokorny
uses different language than claim 1, there is no requirement for identical
terminology. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
SUMMARY
For the reasons discussed above, Appellants' arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Pokorny and Sarthi. Hence, we sustain the§ 103(a) rejection of
claim 1.
Appellants do not argue patentability separately for independent
claims 12 and 14 or dependent claims 2-11, 13, and 15-18. App. Br. 14--16;
Reply Br. 2--4. Because Appellants do not argue the claims separately, we
sustain the§ 103(a) rejections of claims 2-18 forthe same reasons as
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
We affirm the rejection of claims 1-18 under 35 U.S.C. § 101.
We affirm the rejections of claims 1-18 under 35 U.S.C. § 103(a).
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(f).
AFFIRMED
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