Ex Parte Lew et al

Patent Trial and Appeal Board

Jan 30, 2018

11853576 (P.T.A.B. Jan. 30, 2018)

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.
11/853,576 09/11/2007 Melvin Lew GOLDl 1-00040 3277
132787 7590
Docket Clerk-GOLD
P.O. Drawer 800889
Dallas, TX 75380
EXAMINER
ROJAS, HAJIME S
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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 @ munckwilson. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MELVIN LEW, SYED HUSAIN,
PERRY FOTINATOS, and JOHN WOSCHINKO
Appeal 2016-007788
Application 11/853,576
Technology Center 3600
Before HUNG H. BUI, JOSEPH P. LENTIVECH, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants seek rehearing of the August 28, 2017 Decision on Appeal
(the “Decision”), wherein we affirmed the rejection of claims 1,7, 10, 18,
19, and 25—29 under 35 U.S.C. § 101 and under 35 U.S.C. § 103(a) as
unpatentable over Apte et al. in view of Official Notice.
We have reconsidered the Decision in light of Appellants’ October 30,
2017 Request for Rehearing (the “Request”), but are not persuaded any
points were misapprehended or overlooked. See 37 C.F.R. § 41.52.
Appeal 2016-007788
Application 11/853,576
ANALYSIS
Section 101 — Step 1
Appellants first argue their claims “are not directed to an abstract
idea” because they “recite specific processes that use particular information
and techniques and that are specifically designed to achieve a particular
result.” (Request 4.) Appellants then paraphrase the claim language in a
bullet point list. (Id.) This is not an argument that was overlooked. It was
made in the Appeal Brief on pages 10—11 (using the same bullet point list,
but double spaced) and specifically addressed at pages 4—5 of the Decision.
Nor is it an argument that, even on further consideration, is persuasive.
Claims that manipulate and compare data—regardless of whether the
manner of manipulation is “specific,” or the data is of a “particular” type—
are not eligible for patenting. (See Decision 3^4 (citing cases).)
This case is not like Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016), or McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016). The Enfish claims were eligible because they recited
a “self-referential table” that was “a specific type of data structure designed
to improve the way a computer stores and retrieves data in memory.”
Enfish, 822 F.3d.at 1339. Appellants’ claimed process does not “improve
the way a computer stores and retrieves data in memory” or otherwise
improve how the computer itself operates; instead, it uses conventional
computer programming techniques to implement a system for reconciling
inventory that otherwise could be done by hand. The claimed method in
McRo “allow[ed] computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’ that
previously could only be produced by human animators,” providing “an
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Application 11/853,576
improved technological result in conventional industry practice.” Id. at
1313, 1316. Appellants’ claims are directed to an allegedly improved
business process, not “an improved technological result.” To accept
Appellants’ attempt to analogize their claims to the Enfish and McRo claims
would be to find that virtually any method implemented on a computer is
eligible, a position that cannot be squared with either Alice itself or
increasingly voluminous Federal Circuit case law.
Appellants also argue “[t]he Decision overlooks the . . . argument that
the claims cannot possibly be interpreted as covering any and all forms of
the abstract idea and do not preempt the use of the alleged abstract idea.”
(Request 5.) The preemption argument is not persuasive because, although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
We are instructed that “[wjhere 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.
Section 101 — Step 2
For step 2, Appellants argue “[t]he elements recited in the claims
show that the claims amount to significantly more than ‘reconciling
inventory,”’ as “[f]or example, the actual elements recited in Claim 1 . . .
involve applying dynamically changing exception data to prioritizing
differences in data from different data sources.” (Request 6.) We are not
persuaded. The claims are directed to an abstract idea for how to reconcile
inventory in which two data sets are compared, one is updated to match the
other, and an exception is generated in the case of a mismatch, where the
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Application 11/853,576
exception is assigned an importance based on a condition, such as its age.
We do not agree that any aspect of the claims is significantly more than the
abstract idea itself. Appellants’ argument that “[n]o cited references disclose
or suggest the . . . elements of Claim 1 as recited in the overall combination
of the claim” is not persuasive because “a claim for a new abstract idea is
still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016).
Section 101 — Claim 10
Claim 10 adds to claim 1 “altering or implementing a workflow
process to avoid exceptions of a same type as the generated exception.”
Appellants argue “[njeither the Examiner nor the Decision explains why the
elements of Claim 10 do not amount to significantly more than the
exception.” (Request 8.) We do not agree with that assessment. We
explained that altering or implementing a workflow process is simply an
abstract idea (see Decision 6), which, necessarily, is not “significantly
more.” Further reflection only confirms that to be the case. The claim
places no bounds on “workflow process,” which therefore includes a set of
steps contained only in a person’s mind.1 It is an abstraction, and not
“significantly more,” for a person to decide to do something in a different
order, or in a different way. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (explaining that “a method that
1 See Spec. 1131 (describing how a “person may require that an asset be
scanned . . . before the asset is powered on” or “that certain new assets (e.g.,
new servers) are only delivered to a particular location (e.g., the server
room)”).
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Application 11/853,576
can be performed by human thought alone is merely an abstract idea and is
not patent-eligible under § 101”).
Section 103
Appellants argue “[t]he Decision has not demonstrated that assigning
and varying at least one importance level to generated exception data ... is
in any way related to aging of help desk or service desk tickets” and “the
Decision has overlooked the difference between an aging asset and an aging
task.” (Request 10.) We are not persuaded that anything was overlooked
because, as we explained, “Appellants’ focus on the specific ‘help desk’
context of the Examiner’s example is too narrow.” (Decision 7.) We agree
with the Examiner’s finding that the general concept of prioritizing older
items was widely known and that it would have been obvious to vary the
importance level of an exception based upon age.
DECISION
We grant Appellants’ request to reconsider our Decision, but deny the
request that the Decision be modified. Our Decision is final for purposes of
judicial review. See 37 C.F.R. § 41.52(a)(1).
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).
DENIED
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