Ex Parte MacAuley et al

Patent Trial and Appeal Board

Feb 8, 2017

11997187 (P.T.A.B. Feb. 8, 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.
11/997,187 01/29/2008 James MacAuley U-11704US;67097-1018PUS1 3894
54549 7590 02/10/2017
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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):
ptodocket @ cgolaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES MACAULEY and NEIL FISK
Appeal 2015-0003731
Application 11/997,1872
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 4—9, 13—17, 21—24, and 26—28. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
June 11, 2014) and Reply Brief (“Reply Br.,” filed September 30, 2014), the
Examiner’s Answer (“Ans.,” mailed July 30, 2014) and Final Office Action
(“Final Act.,” mailed February 12, 2014).
2 Appellants identify United Technologies Corporation as the real party in
interest. App. Br. 1.
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Application 11/997,187
CLAIMED INVENTION
Appellants’ invention “relates generally to control and management of
repair and maintenance, and more particularly, to a method and system for
workscope management and control for a repair and maintenance process”
(Spec. 11).
Claims 1, 9, and 17 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of controlling a repair and maintenance
process for equipment comprising:
maintaining, using a computer system, a database of
source data based on original equipment manufacturer
information;
generating, using the computer system, a maintenance
plan based at least in part on the source data, the maintenance
plan designating a workscope;
generating, using the computer system, a maintenance
instruction based at least in part on the workscope;
communicating, using the computer system, a logical
order with a maintenance center for inspection of the equipment,
the logical order being based at least in part on the maintenance
instruction;
communicating, using the computer system, a repair
instruction to a repair unit, the repair instruction being based at
least in part on the inspection;
performing a repair task based at least in part on the repair
instruction;
inspecting the equipment based on the repair task
performed;
performing a comparison of the repair task performed with
the workscope;
generating a workscope compliance report based on the
comparison; and
modifying the maintenance plan based at least in part on
the workscope compliance report.
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Application 11/997,187
REJECTIONS
Claims 1, 4—9, 13—17, 21—24, and 26—28 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
Claims 1, 4—9, 13—17, 21—24, and 26—28 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Catalano (US 2006/0010152 Al, pub. Jan. 12,
2006) and Wetzer (US 2004/0254764 Al, pub. Dec. 16, 2004).
ANALYSIS
Non-Statutory Subject Matter
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 an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
BankInt7, 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., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of these 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 an abstract idea, the inquiry
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
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nature of the claim’ into a patent-eligible application.” Alice Corp.,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 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, 132 S. Ct. at 1293. 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).
Addressing the § 101 rejection, Appellants note at the outset that the
Examiner has entered a new ground of rejection of claims 1, 4—9, 13—17,
21—24, and 26—28 under § 101 although the Examiner previously determined
that the claims were patent-eligible (Reply Br. 2). Appellants assert that no
changes have been made to the claims, and that it is unclear why the
Examiner now rejects the claims under § 101 (id. ). But Appellants do not
contend that there are any bases here to preclude the Examiner’s
reinstatement of this ground of rejection.
Moreover, after the Final Office Action was mailed, the PTO issued
its “Preliminary Examination Instructions in view of the Supreme Court
Decision in Alice Corporation Pty., Ltd. v. CLS Bank International, et alC
on June 25, 2014 (the “Preliminary Examination Instructions”) in which the
PTO set forth then current guidance to the Patent Examining Corps for
analyzing claims involving abstract ideas. The Examiner subsequently
determined that claims 1, 4—9, 13—17, 21—24, and 26—28 are directed to non-
statutory subject matter; and, the Examiner entered a new ground of
rejection of the claims under 35U.S.C. § 101.
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Citing the Manual of Patent Examining Procedure (“MPEP”) § 2106,
Appellants maintain that the rejection under § 101 is misplaced, and that the
Examiner has failed to establish a prima facie case under § 101 because the
Examiner has provided “no support or factor analysis” for the assertion that
the claim elements do not amount to significantly more than an abstract idea
(Reply Br. 2). In fact, in rejecting the pending claims under § 101, the
Examiner analyzed the claims using the Alice/Mayo two-part analysis set
forth in the Preliminary Examination Instructions — guidance that supersedes
MPEP §§ 2106(II)(A) and 2106(II)(B). Specifically, the Examiner notified
Appellants that the claims are directed to managing a repair and maintenance
process for equipment, which is an abstract idea, and that the additional
claim elements or combination of elements in the claims amount to no more
than “mere instructions to implement the idea on a computer” and/or
“recitation of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry” (Ans. 18). The
burden, thus, shifted to Appellants to either amend the claims or make a
showing of why the claims are patent-eligible.
Applying the framework set forth in Alice, and as the first step of that
analysis, we agree with the Examiner that claims 1, 4—9, 13—17, 21—24, and
26—28 are directed to managing a repair and maintenance process for
equipment, i.e., to an abstract idea (Ans. 18). The underlying processes
recited in independent claims 1, 9, and 17, including, for example,
“generating ... a maintenance plan”; “generating ... a maintenance
instruction”; and “communicating ... a logical order with a maintenance
center for inspection of the equipment,” as recited in independent claim 1,
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are acts that could be performed by a human, e.g., mentally, using pen and
paper, and/or manually, without the use of a computer. A person could
generate, using pen and paper, a maintenance plan detailing the tasks to be
performed in maintaining/repairing a piece of equipment; and such a person
could likewise communicate orders to the maintenance staff for performance
of the one or more tasks via written communications. 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. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372-73 (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.”); Gottschalkv. Benson, 409 U.S. 63, 67 (1972)
(“[phenomena of nature . . ., mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work.”). Mental processes also remain unpatentable even
when automated to reduce the burden on the user of what once could have
been done with pen and paper. CyberSource, 654 F.3d at 1375 (“That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson,” 409 U.S. 63 (1972)).
Turning to the second step of the Alice analysis, Appellants argue that
even if the underlying claim elements are an abstract idea, additional claim
elements provide meaningful limitations that transform the abstract idea into
a patent eligible application of the abstract idea (Reply Br. 3). Yet the
claims, at best, “add” only a “computer system” (independent claim 1);
“control processing unit” (independent claim 9); and computer (independent
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claim 17), i.e., generic computer components, which does not satisfy the
inventive concept. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[AJfter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible. The bare fact that a computer exists in the
physical rather than purely conceptual realm is beside the point.” (internal
citations and quotation marks omitted)).
Appellants argue that claim 1 “clearly conveys” that the general
purpose computer is programmed with at least some of the steps of the
claimed method creating a special purpose computer, and that the computer
recited in claim 17 is similarly programmed to create a new special purpose
machine (Reply Br. 3.). Appellants also assert, with respect to claim 9, that
the recited “control processing unit is integral to achieve performance of the
method, which weighs toward [patent] eligibility” (id.). Yet, as described
above, the mere implementation of an abstract idea via generic computer
systems or code is not sufficient to render a claim patentable. See Alice,
134 S. Ct. at 2359 (noting, in carrying out the second step, that the “the
relevant question is whether the claims here do more than simply instruct the
practitioner to implement the abstract idea ... on a generic computer”).
There is no indication in the record that any specialized processor or
computer hardware is required or that the claims require more than generic
computer components performing generic computer functions and
conventional activities.
The challenged claims, in our view, simply require the performance of
the abstract idea of managing a repair and maintenance process for
equipment on generic computer components using conventional computer
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activities. As such, the claims do not pass either step of Alice’s two-part
framework.
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claims 1, 4—9, 13—17, 21—24, and 26—28 under
35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection.
Obviousness
We note at the outset that the present application was the subject of
earlier proceedings, Appeal No. 2011-009734 (the ‘“9734 appeal”), before
the Patent Trial and Appeal Board. The Board entered a decision in the
‘9734 appeal, on August 8, 2013 (the “August 2013 Decision”), affirming
the Examiner’s final rejection of claims 1—8, 17—24, 26, and 28 under
35 U.S.C. § 101, and claims 1—24 and 26—28 under 35 U.S.C. § 103(a) as
unpatentable over Catalano and Wetzer.
During subsequent prosecution, dependent claims 2, 3, 10—12, and
18—20, at issue in the ‘9734 appeal, were canceled; the limitations of
dependent claims 2 and 3 were incorporated into independent claim 1, at
issue here; the limitations of dependent claims 10—12 were incorporated into
independent claim 9; and the limitations of dependent claims 18—20 were
incorporated into independent claim 17 (id.).
Independent Claim 1 and Dependent Claims 5—8 and 14—16
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because neither Catalano nor Wetzer, individually or in
combination, discloses or suggests “modifying the maintenance plan based
at least in part on the workscope compliance report,” as recited in claim 1
(App. Br. 5—7) — a limitation that previously was recited in now canceled
claim 3.
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In the Appeal Brief filed in the ‘9734 appeal, Appellants asserted,
without providing any persuasive argument or technical reasoning, that
“modifying the maintenance plan based at least in part on the workscope
compliance report” was not disclosed or suggested by Wetzer, on which the
Examiner relied. The Board found that Appellants’ assertions failed to rise
to the level of a separate argument, i.e., a substantive argument, for
patentability. And the Board sustained the Examiner’s rejection of claim 3
under 35 U.S.C. § 103(a). See August 2013 Decision at 7—8.
The Examiner asserts here that even though the Board found that
Appellants’ assertions did not rise to the level of a separate argument, the
Board “nevertheless considered the scope of claim[ ] 3 . . . and chose to
sustain the Examiner’s rejection[ ]” (Ans. 20). The Examiner, thus, takes
the position that the issue has been decided and res judicata applies (id.).
Responding to the Examiner’s Answer, Appellants argue that if there
was no separate argument, the arguments presented now cannot be
considered repeat arguments (Reply Br. 4). Appellants, thus, maintain that
the issues now before the Board have not been previously considered (id.).
Under principles of issue preclusion, or res judicata, as the Examiner
terms it, a judgment on the merits in a first suit precludes relitigation in a
second suit of issues actually litigated and determined in the first suit.
See, e.g., In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994). Issue
preclusion is, thus, appropriate if: (1) the issue presented in the second suit is
identical to the one decided in the first action; (2) the issue was actually
litigated in the first action; (3) resolution of the issue was essential to a final
judgment in the first action; and (4) the plaintiff had a full and fair
opportunity to litigate the issue in the first action. Id.
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The issue before us here with respect to claim 1 is the same issue
presented in the ‘9734 appeal with respect to then pending claim 3. That
issue was actually “litigated” and decided by the Board in its August 2013
decision. And resolution of the issue was essential to the Board’s affirmance
of the Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Catalano and Wetzer.
Appellants argue that arguments presented now cannot be considered
“repeat arguments” (Reply Br. 4). Yet the relevant inquiry is not whether
the same arguments now presented were actually made in the earlier
proceedings, but rather whether Appellants had a full and fair opportunity to
“litigate” the issue, e.g., to make those arguments, in the earlier proceedings.
There is no indication, for example, in the record that the arguments
that Appellants now present are ones that could not have been previously
presented. Nor, for that matter, do Appellants contend that they are. We
also are aware of no other circumstances, e.g., Appellants are not
introducing new evidence in support of the patentability of claim 1, which
might preclude the application of res judicata.
We agree with the Examiner that res judicata applies. Therefore, we
sustain the Examiner’s res judicata rejection of claim 1. We also sustain the
rejection of dependent claims 5—8 and 14—16, which are not argued
separately except based on their dependence from claim 1 (App. Br. 7, 8).
Dependent Claim 4
The Examiner correctly observes that the rejection of claim 4 was
sustained by the Board in its August 8, 2013 decision (Ans. 21). Therefore,
we sustain the res judicata rejection of claim 4.
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Dependent Claim 13
Claim 13 depends from claim 1. Appellants argue that claim 13 is
patentable for the same reasons set forth with respect to claims 1 and 4 (App.
Br. 7, 8). We are not persuaded that the Examiner erred in rejecting claim 1.
Therefore, we sustain the Examiner’s rejection of claim 13.
Independent Claim 9
Appellants argue that independent claim 9 is patentable for the
reasons set forth with respect to claim 1 (App. Br. 7). We are not persuaded
that the Examiner erred in rejecting claim 1. Therefore, we sustain the
Examiner’s rejection of claim 9.
Independent Claim 17 and Dependent Claims 21—24 and 28
Appellants argue that independent claim 17 is patentable for the
reasons set forth with respect to claims 1 and 4 (App. Br. 7). We are not
persuaded that the Examiner erred in rejecting claims 1 and 4. Therefore,
we sustain the Examiner’s rejection of claim 17. We also sustain the
rejection of dependent claims 21—24 and 28, which are not argued separately
except based on their dependence from claim 17 (App. Br. 8).
Dependent Claim 26
The rejection of claim 26 was sustained by the Board in its August 8,
2013 decision. Therefore, we sustain the rejection of claim 26 under
principles of res judicata.
Dependent Claims 27 and 28
Claim 27 depends from claim 9 and claim 28 depends from claim 17.
Appellants argue that claims 27 and 28 are patentable for the reasons set
forth with respect to claim 26 (App. Br. 9). We are not persuaded that the
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Examiner erred in rejecting claim 26. Therefore, we sustain the Examiner’s
rejection of claims 27 and 28.
DECISION
The Examiner’s rejections of claims 1, 4—9, 13—17, 21—24, and 26—28
are 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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