Ex Parte Keene

Patent Trial and Appeal Board

Jun 19, 2017

13912427 (P.T.A.B. Jun. 19, 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.
13/912,427 06/07/2013 Robert A. Keene END920020096US2 4913
30449 7590 06/21/2017
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
ERB, NATHAN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
06/21/2017 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):
30449@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT A. KEENE1
Appeal 2016-007045
Application 13/912,427
Technology Center 3600
Before JAMES R. HUGHES, JOHNNY A. KUMAR, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—5, 7—11, and 13—18, which constitute all of the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellant identifies International Business Machines Corporation as the
real party in interest. App. Br. 1.
Appeal 2016-007045
Application 13/912,427
STATEMENT OF THE CASE
Introduction
Appellant describes the disclosed and claimed invention as follows
The present invention generally relates to a method,
system, and program product for generating a
demanufacturing price quote. Specifically, the present
invention allows price quotes to be generated for the
processing of end-of-life electronic equipment that is to be
dismantled, recycled or otherwise disposed of in an
environmentally safe manner.
Spec. I.2
Claims 1 and 7 are representative and reproduced below:
1. A recordable medium comprising processor readable
program code stored therein, said medium not being a transitory
propagating signal, said program code upon being executed by a
demanufacturing price quote processor implements a method for
generating a price quote for demanufacturing and disposing of a
given lot of end-of-life electronic equipment in an
environmentally safe manner, said method comprising:
receiving, by the demanufacturing price quote processor,
one or more default data values, said one or more default data
values comprising at least one default data value having a
monetary value;
storing, by the demanufacturing price quote processor, the
one or more default data values in each representative equipment
group of a plurality of representative equipment groups of
electronic equipment;
2 Our Decision refers to the Final Office Action mailed May 20, 2015
(“Final Act.”); Appellant’s Appeal Brief filed Oct. 20, 2015 (“App. Br.”);
the Examiner’s Answer mailed May 6, 2016 (“Ans.”); Appellant’s Reply
Brief filed July 6, 2016 (“Reply Br.”); and the original Specification filed
June 7, 2013 (“Spec.”).
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Application 13/912,427
computing, by the demanufacturing price quote processor,
a respective group quantity of electronic equipment in each
representative equipment group;
computing, by the demanufacturing price quote processor,
at least one product by multiplying each default data value of the
at least one default data value by the respective group quantity;
calculating, by the demanufacturing price quote processor,
a profit or loss for each representative equipment group in
dependence on the computed at least one product;
calculating, by the demanufacturing price quote processor,
a net profit or loss by adding together the calculated profit or loss
of the representative equipment groups of the plurality of
representative equipment groups;
ascertaining, by the demanufacturing price quote
processor, that the calculated net profit or loss is a net loss;
adjusting, by the demanufacturing price quote processor,
the net profit or loss by increasing the net loss by a specified
pricing contingency factor; and
determining, by the demanufacturing price quote
processor, the price quote using the adjusted net profit or loss,
wherein the demanufacturing price quote processor is
special purpose hardware.
7. A system comprising:
a shredder; and
a demanufacturing price quote processor and a recordable
medium having processor readable program code stored therein,
said processor being hardware, said medium not being a
transitory propagating signal, said program code upon being
executed by the processor implements a method for generating a
price quote for demanufacturing and disposing of a given lot of
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Application 13/912,427
end-of-life electronic equipment in an environmentally safe
manner, wherein the price quote for the demanufacturing and the
disposing includes a price for shredding the electronic
equipment, said shredder and said processor configured to
collectively perform a process pertaining to the demanufacturing
and disposing of the electronic equipment, said process
comprising the method, said process comprising:
receiving, by the demanufacturing price quote processor,
one or more default data values, said one or more default data
values comprising at least one default data value having a
monetary value;
storing, by the demanufacturing price quote processor, the
one or more default data values in each representative equipment
group of a plurality of representative equipment groups of
electronic equipment;
computing, by the demanufacturing price quote processor,
a respective group quantity of electronic equipment in each
representative equipment group;
computing, by the demanufacturing price quote processor,
at least one product by multiplying each default data value of the
at least one default data value by the respective group quantity;
calculating, by the demanufacturing price quote processor,
a profit or loss for each representative equipment group in
dependence on the computed at least one product;
calculating, by the demanufacturing price quote processor,
a net profit or loss by adding together the calculated profit or loss
of the representative equipment groups of the plurality of
representative equipment groups;
ascertaining, by the demanufacturing price quote
processor, that the calculated net profit or loss is a net loss;
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Application 13/912,427
adjusting, by the demanufacturing price quote processor,
the net profit or loss by increasing the net loss by a specified
pricing contingency factor;
determining, by the demanufacturing price quote
processor, the price quote using the adjusted net profit or loss;
and
shredding, by the shredder, the electronic equipment in
accordance with the price for shredding the electronic equipment
included in the price quote.
App. Br. 26-30 (Claims App.).
Rejection on Appeal3
Claims 1—5, 7—11, and 13—18 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Briefs. For the reasons discussed infra, we are not
persuaded by Appellant’s arguments that the Examiner erred in rejecting
claims 1—5, 7—11, and 13—18 under 35 U.S.C. § 101.
Applicable Law
In Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014), the
Supreme Court set 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, 134 S. Ct.
at 2355 (citing Mayo Collaborative Svcs. v. Prometheus Labs., Inc., 566 U.S.
3 The Examiner’s rejection of claims 7—11 under 35 U.S.C. § 112, first
paragraph, was withdrawn. Ans. 2.
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66, 75—77 (2012)). The first step in the analysis is to “determine whether the
claims at issue are directed to one of those patent-ineligible concepts.” Id.
For example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 2355—57. If, at the
first stage of the Alice analysis, we conclude that the claim is not directed to
a patent-ineligible concept, it is considered patent eligible under § 101 and
the inquiry ends. RapidLitig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042,
1047 (Fed. Cir. 2016).
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.” Alice, 134 S. Ct. at 2355 (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. Kappos, 561 U.S. 593, 610-11 (2010) (internal citation omitted).
In determining whether a process claim recites an abstract idea, we
must examine the claim as a whole, keeping in mind that an invention is not
ineligible just because it relies upon a law of nature or mathematical
algorithm. Digitech Image Tech. LLC v. Electronics for Imaging Inc., 758 F.
3d 1344, 1350 (Fed. Cir. 2014). As noted by the Supreme Court, “an
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application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.” Diamond v. Diehr,
450 U.S. 175, 187 (1981). The “directed to” inquiry asks not whether “the
claims involve a patent-ineligible concept,” but instead whether, “considered
in light of the specification,. . . ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (internal citations omitted). In that regard, we
determine whether the claims “focus on a specific means or method that
improves the relevant technology” or are “directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
Claims 1—5 and 13—184
Regarding step one of Alice, Appellant acknowledges that claim 1 is
“directed to the abstract idea of determining a price demanufacturing quote
based on mathematical relationships or formulas.” App. Br. 22. Regarding
step two of Alice, Appellant argues the claim recites “significantly more”
than the abstract idea because the claim recites “wherein the
demanufacturing price quote processor is special purpose hardware.” Id. at
22—23 (emphasis added). According to Appellant, page 16, lines 15—21 of
the Specification makes it clear that “the embodiment of the
demanufacturing price quote processor ... in special purpose hardware is
distinguished from a generic computer . . . and is thus significantly more
4 Appellant argues these claims as a group. See App. Br. 21—24; Reply Br.
7—9. We select claim 1 as the representative claim for this group, and the
remaining claims 2—5 and 14—18 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Application 13/912,427
than an abstract idea.” Reply Br. 8 (emphasis omitted). Appellant also
argues the details of the special purpose hardware are not necessary for it to
be significantly more than the abstract idea. Id. at 9.
We are not persuaded by Appellant’s arguments that the Examiner
erred. Instead, we agree with the Examiner that the recitation of “special
purpose hardware,” without more, is insufficient to ensure the claim
describes a process or product that applies the exception in a meaningful
way. Ans. 9-10. First, Appellant’s argument that the Specification
distinguishes “special purpose hardware” from a generic computer is not
persuasive because the Specification states that “[a]ny kind of
computer/server system(s), or other apparatus, such as special purpose
hardware or a circuit module, adapted for carrying out the methods
described herein, is suited.” Spec. 16:19-21. In other words, a generic
computer and special purpose hardware are functionally equivalent and
suitable, as long as they are “adapted for carrying out” the method for
generating a price quote. The claimed “special purpose computer” is not
distinguished based on any technological difference. Appellant’s alleged
distinction is, therefore, a distinction without a difference. Second, without
specifying any details of the claimed “special purpose hardware,” claim 1
does not “focus on a specific means or method that improves the relevant
technology,” but is “directed to a result or effect that itself is the abstract
idea and merely invoke[s] generic processes and machinery.” McRO, 837
F.3d at 1314; Enfish, 822 F.3d at 1336. Thus, we conclude claim 1 does not
recite “significantly more” than the abstract idea of generating a price quote
for demanufacturing. Accordingly, we affirm the Examiner’s rejection of
claim 1 under § 101 as being directed to non-statutory subject matter.
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Claims 7—11
Regarding step one of Alice, Appellant argues claim 7 is not directed
to an algorithm for calculating a manufacturing price quote as the Examiner
finds (see Final Act. 9), but “is directed to a system having a shredder and a
processor collectively performing a process pertaining to the
demanufacturing and disposing of the electronic equipment.” App. Br. 11.
Appellant argues that the price quote serves as input to, and “is subsidiary
to,” the shredding step, which recites “shredding, by the shredder, the
electronic equipment in accordance with the price for shredding the
electronic equipment included in the price quote.” Id. at 11—12. Citing
Enfish, Appellant argues “the fact that claim 7 involves a mathematical
relationship or formula does not imply that claim 7 is directed to an abstract
idea,” and the claim as a whole “is directed to the demanufacture and
disposal of electronic equipment, which is not an abstract idea.” Reply Br.
4—5.
We are not persuaded by Appellant’s arguments. Appellant’s
Specification is almost entirely directed to demanufacturing price quote
generation. This is not only the object of the invention, but each described
embodiment is directed to generating a demanufacturing price quote. See
Spec. 3—6. The word “shredded” and the word “shred” each appear once in
the Specification. Spec. 11. Consistent with the Specification, system claim
7 recites a process in which a demanufacturing price quote processor
generates a price quote for demanufacturing and disposing of a given lot of
electronic equipment. As set forth in claim 7, after receiving and storing
data values, the processor performs the steps of: “computing ... a
respective group quantity;” “computing ... at least one product by
multiplying . . .; “calculating ... a profit or loss for each . . . group in
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dependence on the computed . . . product;” “calculating ... a net profit or
loss;” “ascertaining . . . that the net profit or loss is a net loss;” “adjusting . . .
the net profit and loss,” and “determining ... the price quote using the
adjusted net profit or loss.” These portions of claim 7 recite mathematical
computations and a mathematical formula directed to the abstract idea of
calculating a demanufacturing price quote. It is well established that data
analysis and algorithms are abstract ideas. See, e.g., Alice, 134 S. Ct. at
2355; Parker v. Flook, 437 U.S. 584, 589, 59A-95 (1978) (“Reasoning that
an algorithm, or mathematical formula, is like a law of nature, Benson
applied the established rule that a law of nature cannot be the subject of a
patent”); Gottschalkv. Benson, 409 U.S. 63, 71—72 (1972).
System claim 7 also recites “a shredder” and the step of “shredding,
by the shredder, the electronic equipment in accordance with the price for
shredding the electronic equipment included in the price quote.” The recited
“shredder” is nothing more than a generic shredder, and the shredding step
merely performs the basic function of shredding based on the price quote.
Thus, considering clam 7 as a whole, it is directed to the abstract idea of
shredding electronic equipment based on a mathematically calculated price
quote. In other words, claim 7 is not directed to improving shredding
technology, but is directed to any shredding of electronic equipment based
on a calculated price quote. Claim 7 presents the classic situation in which
the claim is not directed to a specific invention, but instead attempts to
monopolize “the basic tools of scientific and technological work.” Alice,
134 S. Ct. at 2354 (internal quotation marks and citation omitted). “A patent
may issue ‘for the means or method of producing a certain result, or effect,
and not for the result or effect produced.’” McRO, 837 F.3d at 1314
(internal citation omitted). Here, claim 7 does not focus on a specific means
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or method to improve shredding, but is instead directed to the result or effect
itself—the abstract idea of shredding electronic equipment based on a
generated price quote—using only generic processes and apparatus. Id.
Regarding step two of Alice, Appellant argues that “the shredder and
the shredding are significantly more than an abstract idea to which claim 7 is
allegedly directed, at least because the shredder and the shredding are non­
abstract physical elements that are essential for implementing the
demanufacturing and disposing of electronic equipment.” App. Br. 14—16;
Reply Br. 5—7. We are not persuaded by Appellant’s argument, but instead
agree with the Examiner’s finding that the “shredder . . . does not render
patent-eligibility on account of representing well-understood, routine, and
conventional activities previously known to the industry.” Final Act. 10.
Appellant’s claimed generic shredder and well known shredding step are not
the type of additional features Alice envisioned as imparting patent
eligibility. See Alice, 134 S. Ct. at 2358 (“[T]he mere recitation of a generic
computer cannot transform a patent in-eligible abstract idea into a patent-
eligible invention. Stating an abstract idea while adding the words ‘apply it’
is not enough for patent eligibility”) (quoting Mayo, 566 U.S. at 72 (internal
quotation marks omitted)). Further, shredding by the shredder amounts, at
most, to mere insignificant post-solution activity and attempts to limit the
use of the abstract concept of generating and utilizing a demanufacturing
price quote to a particular technological environment. See Intellectual
Ventures ILLC v. Erie Indemnity Co., 850 F.3d 1315, 1328—29 (Fed. Cir.
2017) (citing Bilski v. Kappos, 561 U.S. at 612). Thus, considering the
features of claim 7 individually and as an ordered combination, we find there
are no additional elements that transform the nature of the claim into a
patent-eligible application. Alice, 134 S. Ct. at 2355.
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Accordingly, we sustain the Examiner’s rejection of claim 7 under
§ 101, as well as dependent claims 8—11, which are not separately argued.
DECISION
We affirm the Examiner’s decision rejecting claims 1—5, 7—11, and
13-18 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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