Ex Parte Luhman et al

Patent Trial and Appeal Board

Aug 24, 2018

11756677 (P.T.A.B. Aug. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/756,677 06/01/2007
63759 7590 08/28/2018
DUKEW. YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Thomas Stewart Luhman
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.
07-0223-US-NP 1248
EXAMINER
PEACHER, LORENA R
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
08/28/2018 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS STEWART LUHMAN, JOHN JOSEPH ESPOSITO,
JAMES DEAN COTTON, EDDY JOE SHARP, and
GEROULD K. YOUNG 1
Appeal2017-005608
Application 11/756,677
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is The Boeing Company
of Chicago, Illinois. See App. Br. 2.
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Application 11/756,677
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1, 2, 4--12, and 19-28. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
BACKGROUND
Appellants' invention is directed to an improved data processing
system and in particular to a method and apparatus for processing data.
Spec. 1
Claim 1 is illustrative:
1. A method of designing and building a part for a
product using technology readiness levels for materials for the
part, the method comprising:
identifying properties for use in designing the part to
form identified properties;
storing a plurality of entries including cost and cost to
change the technology readiness level for material, the entries
further identifying materials and the technology readiness levels
for the materials in a database, the technology readiness levels
being a measure used to assess maturity of materials and
comprising a numerical scale of technology readiness and the
materials including allowable materials and materials in a
developmental pipeline;
developing a first design for the part using a first material
selected from the database, wherein the first material has a first
technology readiness level from the database, the first
technology readiness level defined by a first number of
identified properties including structural properties;
developing a second design for the part using a second
material selected from the database, wherein the second
material has a second technology readiness level from the
database, the second technology readiness level defined by a
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second number of identified properties including property test
matrixes;
comparing on a computer the first design to the second
design using the first technology readiness level and the second
technology readiness level to form a comparison, wherein the
comparing includes:
comparing a property of the first material to the property
of the second material,
comparing a cost of the first and second material,
comparing a cost and a time to change the technology
readiness level of at least one of the first material and the
second material, and
comparing how much time is present before production
of the product is to begin with a particular time needed to
increase the technology readiness level for a material to a
desired technology readiness level;
selecting a selected material from the first material and
the second material using the comparison, the selected material
corresponding to a corresponding design selected from the first
design and a second design;
developing the selected material to an allowable material
within an amount of time present before production of the
product is to begin, if the selected material is not an allowable
material when selected; and
physically building the part according to the
corresponding design using the selected material.
Appellants appeal the following rejection:
Claims 1, 2, 4--12, and 19-28 under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
PRINCIPLES OF LAW
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
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Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S.Ct. 2347,
2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("[O]n their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
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scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an "inventive concept"-an element
or combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are ''a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claims that recite an improvement to a particular computer
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technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( detennining claims not abstract because they "focused on a specific
asserted improvement in computer animation").
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 post-solution activity."
Bilski, 561 U.S. at 610----11 (internal citation and quotation marks omitted).
The Court in Alice noted that "' [ s ]imply appending conventional steps,
specified at a high level of generality,' was not 'enough· [in ~~![ayo] to supply
an 'inventive concept"' Alice, 134 S. Ct. at 2357 (quoting lviayo, 132 S. Ct.
at 1300, 1297, 1294).
ANALYSIS
Rejection under 35 USC§ 101
The Examiner determines that the claims are directed to the abstract
idea of designing parts. The Examiner determines that the steps of
identifying properties for use in designing a part, storing a plurality of
entries including cost and cost to change the technology readiness level
("TRL") for materials in a database, developing a first design using a first
material, developing a second design using a second material, comparing
designs, selecting designs and building the design describe the abstract idea.
Fin. Act. 5. Claim 1 is, therefore, directed to collecting, comparing,
developing and selecting data and, as such, is directed to collection, analysis,
and display of data and thus, we agree that claim 1 is directed to an abstract
idea.
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The Examiner finds that the claim elements other than the abstract
idea are routine and conventional activities that do not add meaningful
limitations beyond further narrowing the abstract idea and, thus, do not
amount to significantly more. Fin. Act. 6.
We agree that claim 1 does not include significantly more than the abstract
idea of collecting, analyzing and displaying data. In addition to the abstract
idea of collecting, analyzing and displaying data, claim 1 recites a database
and a computer. Claim 1 does not recite an improvement to computer or
database capabilities but instead recites a method of collecting, analyzing,
and displaying data for which a database and a computer are used as tools in
their ordinary capacity.
Claim 1 also recites developing the selected material to an allowable
material and physically building the part according to the corresponding
design using the selected material. These limitations do not reflect a patent-
eligible application of the patent-ineligible abstract idea. To the contrary,
these limitations are recited at a high-level of generality and comprise
routine techniques and post-solution activity that does not impart a sufficient
inventive concept to claim L See Mayo, 132 S. Ct. at 1298 ("well-
understood, routine, conventional activity previously engaged in by
scientists who work in the field ... is normally not sufficient to transform an
unpatentable law of nature into a patent-eligible application of such law.");
see also Parker v. F'look, 437 U.S. at 590 (''The notion that post-solution
activity, no matter how conventional or obvious in itseH: can transform an
unpatentable principle into a patentable process exalts form over
substance"). Appellants have not persuasively shown otherwise.
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We have reviewed all the arguments (App. Br. 9-19, Reply Br. 4--9)
Appellants have submitted concerning the patent eligibility of the claims.
We find that our analysis above substantially covers the substance of all the
arguments which have been made. But for purposes of completeness, we
will address various arguments in order to make individual rebuttals of the
same.
Appellants analogize the claimed invention to the invention at issue
in LVI cRO. App. Br. 6. Appellants contend that, as in iVfcRO, the instant
claims "use a combined order of specific rules that renders information into
a specific format that is then used and applied to create desired results."
App. Br. 12.
vVe are not persuaded that the claimed invention is analogous to the claimed
invention in AfcRO. The clairns in 1WcRO were directed to a specific
asserted improvernent in computer animation, i.e., the automatic use of rules
of a particular type. McRO, 837 F.3d at 1313. By contrast, claim 1, even as
argued by Appellants, is a process that uses a combined order of specific
rules that renders information into a specific format which simply amounts
to collecting and analyzing data only.
\Ve are also not persuaded of error on the part of the Examiner by
Appellants' argument that claim 1 is not taught by any previously applied
and overcome prior art rejections. App. Br. 13. To the extent .Appellants
maintain that the limitations of claim l necessarily amount to ''significantly
more" than an abstract idea because the claimed method is allegedly
patentable over the prior art, Appellants misapprehend the controlling
precedent. Although the second step in the Aliceli'\lfayo framework is termed
a search for an "inventive concept," the analysis is not an evaluation of
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novelty or non-obviousness, but rather, a search for '"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"' Alice, 134 S. Ct. at 2355. A novel and nonobvious claim directed to
a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct.
at 1304.
The Appellants' argument that the Examiner ignores the emphasis on
preemption is also not persuasive. App. Br. 18. "While 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); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir.), cert. denied,
136 S. Ct. 701 (2015) (''[T]hat the clairns do not preernpt all price
optimization or rnay be limited to price optimization in the e-commerce
setting do not make them any less abstract."). And, ''[ w ]here a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Aiayo framework, as they are in this case, preemption concerns are fully
addressed and made moot" Ariosa, 788 F.3d at 1379.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 1. We will also sustain the rejection as it is directed to the remaining
claims because Appellants have not argued the separate eligibility of these
claims.
DECISION
We affirm the Examiner's§ 101 rejection.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l) (2009).
ORDER
AFFIRMED
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