Ex Parte Khin et al

Patent Trial and Appeal Board

Jun 9, 2017

13247061 (P.T.A.B. Jun. 9, 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.
13/247,061 09/28/2011 Maung (Bob) A. Khin 014955-9002-US00 2766
23409 7590 06/13/2017
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
ROSEN, NICHOLAS D
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/13/2017 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAUNG (BOB) A. KHIN, JEFF KLINGLER,
ALEX F. JONARD, and DAVID S. HALLIN
Appeal 2016-002151
Application 13/247,061
Technology Center 3600
Before HUNG H. BUI, AMBER L. HAGY, and DAVID J. CUTITTAII,
Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—8, 10-14, and 16—25, which are all of the
pending claims.2 We have jurisdiction over these claims under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify Banner Service Corporation as the real party in interest.
(App. Br. 1.)
2 Claims 9 and 15 have been canceled. (App. Br. 18, 20 (Claims App’x.).)
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Application 13/247,061
STATEMENT OF THE CASE
Introduction
According to Appellants, “[t]his invention relates to systems,
methods, devices, and computer readable media for supply chain
management” for use in many industries, such as manufacturing of
automobiles and medical implants, that “have strict standards for the
materials that are used in the manufacturing process.” (Spec. 11) The
manufacturing supply chain is managed “to ensure compliance with” such
standards by using databases to “store information associated with material
vendors, customers, risk assessments, control parameters, and validation or
qualification information related to the use of machines and manufacturing
processes.” {Id. 13.) Appellants further state “[t]his information is used to
process a purchase order and ensure that a customer receives a
corresponding quote fulfilling the order and including materials that are in
compliance with their own manufacturing and materials standards, as well as
any relevant federal and industry-specific standards.” (Id. )
Exemplary Claim
Claims 1, 8, and 14 are independent. Claim 1, reproduced below, is
exemplary of the claimed subject matter:
1. A system for managing a manufacturing supply chain to
fulfill an order for a medical grade material and generate a
corresponding service quote, the system comprising:
a customer database configured to store a set of customer
data for each of a plurality of customers;
a vendor database configured to store a set of vendor data
for each of a plurality of vendors, the set of vendor data including
at least one raw material capable of being supplied by the vendor,
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the at least one raw material having an associated raw material
characteristic;
a risk analysis database configured to store a set of risk
analysis data related to at least one manufacturing process, the
risk analysis data associated with an effect on the at least one raw
material by the at least one manufacturing process; and
a controller including a resource planning module, the
controller configured to
receive the order for the medical grade material
from one of the plurality of customers, the medical grade
material having an attribute and being associated with the at least
one manufacturing process,
retrieve the set of customer data associated with the
one of the plurality of customers from the customer database,
select one of the plurality of vendors to provide the
at least one raw material based on the set of vendor data stored
in the vendor database, a comparison of the attribute of the
medical grade material to the raw material characteristic, and the
risk analysis data in the risk database associated with the effect
on the at least one raw material by the manufacturing process,
and
generate the service quote based on the comparison
of the attribute of the medical grade material to the raw material
characteristic, the service quote including the attribute of the
medical grade material, the selected one of the plurality of
vendors, and the raw material characteristic.
REJECTION
Claims 1—8, 10-14, and 16—25 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. (Final Act. 2—3.)
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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments the Examiner has erred. We disagree with Appellants’ arguments
and we adopt as our own: (1) the findings and reasons set forth by the
Examiner in the Final Office Action from which this appeal is taken (Final
Act. 2—3 and 10—13) and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief. (Ans. 2—12.)
We concur with the conclusions reached by the Examiner, and we highlight
the following for emphasis.3
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 three implicit exceptions: “[l]aws of nature, natural phenomena,
and abstract ideas.” See, e.g., Alice Corp. Pty. Ltd. v. CLS BankInt’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 Labs.,
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.), e.g., to an abstract
idea. If the claims are not directed to a patent-ineligible concept, the inquiry
3 Only those arguments made by Appellants have been considered in this
decision. Arguments Appellants did not make have not been considered and
are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
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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.” Alice
Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297).
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. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, in rejecting claims 1—8, 10-14, and 16—25 under 35 U.S.C.
§101, the Examiner concludes the claims are directed to “methods for
generating a service quote and/or fulfilling an order for a material,” which
the Examiner finds is “an abstract idea.” (Final Act. 2.) Appellants argue
“[t]he purpose of the claimed invention is to ensure compliance with . . .
laws and standards throughout the manufacturing supply chain. Such a
purpose is neither a ‘fundamental economic practice,’ a ‘method of
organizing human activities,’ an ‘idea itself,’ nor a mathematical relationship
or formula.” (App. Br. 8 (footnotes omitted).)
We are not persuaded of Examiner error. The Examiner finds, and we
agree, the claimed method and system “for selecting a vendor for the
purchase of raw material and generating a service quote based on
information in databases is an economic practice.” (Ans. 4.) Matching
customer needs with available vendors and supplies of appropriate raw
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materials is a fundamental economic process. In addition, choosing raw
materials to ensure compliance with regulatory laws and standards is also a
fundamental economic practice. Although Appellants argue their claimed
invention provides a “technological solution” (App. Br. 8; Reply Br. 2-4),
we agree with the Examiner’s conclusion that the “problem” addressed by
Appellants’ claims “is not, properly speaking, a technological problem, and
Appellants’ solution is not primarily technological.” (Ans. 5.) Rather, the
Examiner finds, and we agree, “[a] set of risk analysis data could be stored
on paper, and a human being could consult that and other data to select an
appropriate vendor.” (Id. ) The Examiner further finds, and we agree,
“[hjaving a generic computer with a controller that can be programmed to
carry out operations and a memory that can store databases of particular data
carry out a basically economic procedure does not make the computer a
technological advance.” (Id.) Additionally, our reviewing court has held
that if a method can be performed by human thought, these processes remain
unpatentable even when automated to reduce burden to the user.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalkv. Benson, [409 U.S. 63 (1972)].”). We, therefore, find no
reversible error with the Examiner’s conclusion that the claims are directed
to fundamental economic practices and are, therefore, directed to an abstract
idea. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
Because we agree with the Examiner, at step one of the Alice analysis,
that the claims are directed to an abstract idea, we turn to the second step of
the Alice analysis, in which we must determine whether the additional
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elements of the claims transform them into patent-eligible subject matter.
Appellants present several arguments, which we address in turn.
Appellants argue that “the claimed procedure is narrowly defined and
is tied to a specific process and system for managing a manufacturing supply
chain, generating a service quote, and/or fulfilling an order for a material,”
and “[a]s such, the eligibility of these claims will not preclude the use of
other effective techniques” for completing those tasks “that don’t utilize a
risk analysis data.” (App. Br. 10.) We note, however, the Supreme Court
has rejected the notion that “‘implement[ing] a principle in some specific
fashion’ will ‘automatically fal[l] within the patentable subject matter of
§ 101.’” Alice, 134 S. Ct. at 2358 (alterations in original) (citation omitted).
The Supreme Court has also held that the prohibition against patenting an
ineligible concept, such as an abstract idea, “‘cannot be circumvented by
attempting to limit the use of the [abstract idea] to a particular technological
environment’ or adding ‘insignificant post-solution activity.’” Bilski v.
Kappos, 561 U.S. 593, 610-11 (2010) (citation omitted). Here, the
Examiner finds as to each of the pending claims, and we agree, “the claims
do not amount to an improvement to another technology or technical field,
or to the functioning of a computer itself; and the claims do not move
beyond a general link of the use of an abstract idea to a particular
technological environment.” (Final Act. 2—3.) In addition, we find
Appellants’ Specification describes conventional computer software and
hardware for implementing the claimed functions including, inter alia,
“relational databases” and “a controller (e.g., a mainframe computer, a
server, etc.).” (Spec. 125.) We, therefore, are not persuaded the Examiner
erred in concluding “when considering the elements and combinations of
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elements, the claims as a whole do not amount to significantly more than the
abstract idea itself.” (Final Act. 3.)
Appellants’ argument that the Examiner has found no prior art
references (see Reply Br. 7) also does not apprise us of error in the rejection
under 35 U.S.C. §101. An abstract idea does not transform into an inventive
concept just because the prior art does not disclose or suggest it.
Appellants also reference the Federal Circuit’s holding in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). (Reply
Br. 4.) Appellants’ claimed invention is readily distinguishable from the
claims in DDR. There, the court addressed an invention that solved “a
challenge particular to the Internet” and found it patent-eligible because “the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
DDR, 773 F.3d at 1257. The court also found that the claimed “computer
network” did not operate “in its normal, expected manner.” Id. at 1258.
Here, the “database[s],” “controller,” and “processor” recited variously in
the claims operate in precisely the normal and expected manner, i.e., storing
and manipulating information, respectively. Appellants provide insufficient
evidence that the claims root the solution in any particular technology.
Rather, conventional elements of a generic database and computer system
are employed for their inherent functions to perform as expected. Here, as in
Alice, the claims “do not, for example, purport to improve the functioning of
the computer itself or effect an improvement in any other technology or
technical field.” Alice, 134 S. Ct. at 2351. Although using Appellants’
claimed method and/or system to select appropriate raw materials may, in a
causative sense, lead ultimately to end products that have “improved product
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longevity” (Reply Br. 5), that does not change our view that the claims, as
presented, are not directed to overcoming a technological problem.
Finally, we are not persuaded of Examiner error by Appellants’
argument that “the claims do not preempt the entire field of managing a
manufacturing supply chain.” (App. Br. 11.) We agree 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, 134 S. Ct. at 2354. But characterizing pre-emption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. As our reviewing court has
explained, “[t]he 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. 2015) (citing Alice, 134 S. Ct. at 2354). And although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Id.
Moreover, “[w]here a patent’s claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework . . . , preemption
concerns are fully addressed and made moot.” Id.', see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015), cert, denied,
136 S. Ct. 701 (2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the ecommerce
setting do not make them any less abstract.”).
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting independent claims 1,8, and 14 under 35U.S.C. § 101.
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Accordingly, we sustain the Examiner’s rejection of those claims, along with
the rejection of dependent claims 2—7, 10-13, and 16—20, 22, 23, and 25,
which Appellants do not argue separately. (App. Br. 12—14.)
Although Appellants purport to argue dependent claims 21 and 24
separately, Appellants’ arguments for those claims principally incorporate
by reference the arguments presented for the independent claims, which we
have addressed above. (See App. Br. 14—15.) Appellants also argue claims
21 and 24, which recite “performing the at least one manufacturing process
on the material,” and “’’controlling a manufacturing device to manufacture a
product using the material and the at least one manufacturing process,”
respectively, recite an “inventive concept” (id.), presumably because they
additionally recite the next step beyond choosing appropriate raw materials.
But the additional limitations added by claims 21 and 24 are merely generic
recitations of performing a manufacturing process. As noted supra, the
prohibition against patenting an ineligible concept, such as an abstract idea,
“‘cannot be circumvented by attempting to limit the use of the [abstract idea]
to a particular technological environment’ or adding ‘insignificant post­
solution activity.’” Bilski, 561 U.S. at 610-11 (citation omitted); see also
Parker v. Flook, 437 U.S. 584, 588—90 (1978) (insignificant post-solution
activity step found to be insufficient to impart patentability). As the
Examiner finds, and we agree, these claims “do[] not recite a technological
improvement in manufacturing devices or processes.” (Ans. 4.)
We are not persuaded of error in the Examiner’s rejection of claims 21
and 24 and we, therefore, sustain that rejection.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1—8, 10—14,
and 16—25 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
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