Ex Parte Macmillan

Patent Trial and Appeal Board

Feb 5, 2018

13035746 (P.T.A.B. Feb. 5, 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.
13/035,746 02/25/2011 Bruce Macmillan MAC-101 3475
32205 7590 02/07/2018
Patti & Malvone Law Group, LLC
One North LaSalle St., 44th Floor
Chicago, IL 60602
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
02/07/2018 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):
info @ pattimalvonelg .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE MACMILLAN
Appeal 2016-0046701
Application 13/035,7462
Technology Center 3600
Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3—14, 17—29, and 40-43. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
September 14, 2015) and Reply Br. (“Reply Br.,” filed April 5, 2016), and
the Examiner’s Answer (“Ans.,” mailed February 9, 2016) and Final Office
Action (“Final Act.,” mailed July 7, 2015).
2 Appellant identifies the inventor, Bruce Macmillan, as the real party in
interest. App. Br. 3.
Appeal 2016-004670
Application 13/035,746
CLAIMED INVENTION
Appellant’s claimed invention “relates generally to methods and
apparatus for providing product information” (Spec. 1).
Claims 1, 14, 28, and 29 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method of facilitating
comparing and verifying of information, the method comprising:
receiving, by a computer system, information relating to
products and product supply chain operations from one or more
sources, said one or more sources comprising at least one of a
trusted third-party information provider and an entity associated
with said products and product supply chain operations, said
entity being one of a manufacturer, a supplier, or a distributor of
manufactured products, and said information from the entity
identifying the entity and including information about the entity;
validating, by the computer system, the information
received from the entity about itself based at least in part on the
information received from the at least one trusted third-party
information provider;
responsive to successful validation of the information
received from the entity about itself, providing, by the computer
system, a plurality of unique identifiers to the entity, said unique
identifiers uniquely identifying product items, for association by
that entity with those product items;
receiving information relating to an individual product
item and a corresponding supply chain operation from said entity
associated with said individual product item and said
corresponding supply chain operation, the information relating
to said individual product item including an identifier from the
plurality of identifiers provided to said entity;
storing and associating, by the computer system, the
information received from said one or more sources with the
information received from said entity in a database of said
computer system;
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receiving, by the computer system, a request for
information from a potential purchaser of said individual product
item, said request including said identifier;
looking up in real time, by the computer system, in the
database information associated with said individual product
item, using said identifier; and
transmitting in real time, by the computer system, at least
part of said information associated with said individual product
item to said potential purchaser.
REJECTION
Claims 1, 3—14, 17—29, and 40-43 are rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
ANALYSIS
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
Banklnt’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
Laboratories, 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. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
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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 nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 566 U.S. at 79, 78).
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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
“whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
finds that the pending claims are directed to “providing product
information,” i.e., to a fundamental economic practice and a method of
organizing human activities and, therefore, to an abstract idea; and that the
claims do not recite limitations that are “‘significantly more’ than the
abstract idea because the claims do not recite an improvement to another
technology or technical field, an improvement to the functioning of the
computer itself, or meaningful limitations beyond generally linking the use
of an abstract idea to a particular technological environment” (Final Act. 4).
Addressing the first step of the Mayo/Alice framework, Appellant
notes that each of independent claims 1, 14, 28, and 29 recites “in real time,”
i.e., “looking up in real time . . . information associated with [an] individual
product item” and “transmitting in real time ... at least part of [the]
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information ... to [a] potential purchaser,” as recited in claim 1 and
similarly recited in claims 14, 28, and 29 (App. Br. 14). And Appellant
asserts that “[t]he claims’ recitation of ‘in real time’ renders moot the
Examiner’s suggestion” that the claims are directed to a fundamental
economic practice and a method of organizing human activities {id. at 15).
Appellant maintains that providing product information to a potential
purchaser in real-time is not an abstract idea {id. at 15). But we fail to see
how or why, and Appellant does not explain how or why, the recitation that
product information is gathered and conveyed in real-time adds anything to
the abstract idea of “providing product information” beyond merely
qualifying the timing of the data-gathering and conveying operations, i.e.,
the “looking up,” and transmitting steps. Cf. Elec. Power Grp. LLC v.
Alstom, S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (finding claims to a
system and method for performing real-time performance monitoring of an
electric power grid by collecting data from multiple data sources, analyzing
the data, and displaying the results were directed to an abstract idea because
“[t]he advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions.”).
Appellant argues that providing product information to a potential
purchaser in real time is “only possible on a computer” {id. at 15—16; see
also Reply Br. 4—5). Yet, claims to an abstract idea are not made less
abstract simply because a computer is required.
We find no indication in the Specification, nor does Appellant point to
any indication, that any specialized hardware or inventive computer
components are required or that the claimed invention is implemented using
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other than generic computer components to perform generic computer
functions, i.e., receiving, processing, storing, and transmitting information.
And, as the Supreme Court made clear in Alice, the recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. See Alice Corp., 134 S. Ct. at 2358 (holding that if a patent’s
recitation of a computer amounts to a mere instruction to implement an
abstract idea on a computer, that addition cannot impart patent eligibility).
Appellant asserts that the claims require a computer to perform
functions that are “far from being well-understood, routine, and
conventional,” as evidenced by the fact that the only rejection is under § 101
(App. Br. 16). Yet, to the extent Appellant maintains that the claimed
invention is patent-eligible and/or that the recited functions are not “well-
understood, routine, and conventional activities” because the claims are
allegedly novel and/or non-obvious in view of the prior art (id. at 16—18; see
also Reply Br. 4—5, 10), Appellant misapprehends the controlling precedent.
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo!Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of 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
Corp., 134 S. Ct. at 2355. “Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.” Ass ’n. for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and
non-obvious claim directed to a purely abstract idea is, nonetheless, patent-
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ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S.
175, 188—89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1, 3—14, 17—29, and 40-43 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection.
DECISION
The Examiner’s rejection of claims 1, 3—14, 17—29, and 40-43 under
35 U.S.C. § 101 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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