Ex Parte Manucha et al

Patent Trial and Appeal Board

Sep 21, 2018

12544836 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/544,836 08/20/2009
21834 7590 09/25/2018
Tysver Beck Evans, PLLC
225 S. 6th Street, Suite 17 50
MINNEAPOLIS, MN 55402
FIRST NAMED INVENTOR
Rajiv Manucha
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.
5185 1115
EXAMINER
ZEROUAL, OMAR
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
docket@bitlaw.com
dtysver@bitlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJIV MANUCHA, STEVEN LLOYD CROZIER,
and ANTONIO GUILIANO
Appeal2017-005158
Application 12/544,836 1
Technology Center 2400
Before CARL W. WHITEHEAD JR., NABEEL U. KHAN, and
SHARON PENICK, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Non-Final
Rejection of claims 1-5, 7-15, 17-20, 31 and 32. Claims 6, 16, and21-30
are cancelled. Br. 15, 17, 18. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Management Systems Resources as the real party in
interest. Br. 3.
Appeal2017-005158
Application 12/544,836
BACKGROUND
THE INVENTION
According to Appellants, the invention relates to "importing and
exporting goods, and more particularly to a method [ and] apparatus for
providing frequent compliance checking of documentation and paperwork."
Spec. ,r 1.
Exemplary independent claim 1 is reproduced below.
1. A system for maintaining customs compliance, the system
compnsmg:
an entry database server storing underlying information
relating to component parts and storing a plurality of good entries
for a plurality of goods, each good entry identifying a good, and
each good entry including trade classification information for the
good and data associating the good entry with relevant
underlying information, wherein the underlying information
identifies component parts used to create the good, thereby
creating a hierarchy with lower-level underlying information that
identifies component parts being associated with higher-level
good entries that identify goods that contain the component parts,
further wherein the lower-level underlying information for each
good entry is used to develop the trade classification information
for the good entry;
a recompute server, comprising one or more processors,
coupled to the entry database server, the recompute server
configured to perform instructions that:
identify selected good entries in which the
underlying information pertaining to lower-level
component parts in the hierarchy has been changed,
determine updated trade classification information
for the selected good entries based on the changed lower-
level underlying information for each selected good entry,
and
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Application 12/544,836
provide the updated trade classification information
for the selected good entries to the entry database server
for storage.
REJECTION
Claims 1-5, 7-15, 17-20, 31 and 32 stand rejected under 35 U.S.C.
§ 101. Non-Final Act. 2-3.
DISCUSSION
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "'long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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, 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," such as an abstract idea. 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
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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, 1335-36 (Fed. Cir. 2016). 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 the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78-79).
Step One of Alice/Mayo Framework
Under the first step of the Alice/Mayo framework, the Examiner finds
the claims are "directed to storing entries, identifying changes made to pre-
existing information, and determining a trade classification information
based on given data, which constitute an abstract idea of methods of
organizing human activities." Non-Final Act. 3. The Examiner also finds
the steps of the claims may be performed as mental steps with the use of a
"record-keeping ledger." See Ans. 3--4.
Appellants argue "when the claims are viewed in their entirety and it
is realized that their respective recitations require actual machines ( albeit
servers and processors) then it is impossible to conclude that such claims are
directed to mere abstraction and instead ent[ er] the realm of concrete,
structural reality." Br. 10. Appellants specifically cite the claimed "entry
database server," the "recompute server," and "processors" as examples of
machines recited in the claims that make the claims "sufficiently concrete."
Br. 9-10.
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We tum to the Examiner's determination that the claims are directed
to an abstract idea. "The 'abstract idea' step of the inquiry calls upon us to
look at the 'focus of the claimed advance over the prior art' to determine if
the claim's 'character as a whole' is directed to excluded subject matter."'
Affinity Labs of Texas, LLC v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016)); see also Enfzsh, 822 F.3d at 1335 ("[T]he 'directed
to' inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether 'their character as a whole is directed to
excluded subject matter."' ( citation omitted)).
In this regard, the Specification describes that "in current systems
there is no convenient mechanism to update the classification of either
parties or goods in existing systems. As a result, in many cases goods are
transferred with improper classifications." Spec. ,r 2. The Specification
goes on to explain that such improper classifications can result in delays and
increased costs. Spec. ,r 2. Thus, "it would be desirable if a system was
available which maintained current classification information for both goods
and parties and updated itself as classification changes were provided by any
of the relevant government entities." Spec. ,r 2. Appellants' invention
addresses this problem by "utilize[ing] current, updated classification of
goods and parties when relevant documents are prepared and printed and
further updates relevant classification data contained in various records
either periodically or as changes are received." Spec. ,r 3.
Consistent with this description, claim 1 discloses an invention that
uses a database server to store "good entries" keeping track of trade
classification information for the good and the underlying component parts
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of the good, creating a hierarchy of entries relating the lower level
underlying information with the higher level goods. Additionally a
"recompute server" is used to identify goods that have had changes to their
underlying component information, determine an updated trade
classification of the good based on the changed underlying information, and
provide the update to the database server. Br. 14 (Claims App'x).
Based on a review of the Specification and the claims, we agree that
the focus of the claimed invention is "directed to storing entries, identifying
changes made to pre-existing information, and determining a trade
classification information based on given data." Non-Final Act. 3. We also
agree that the claimed processes and steps ( e.g. storing information about the
component parts of a good and determining that its trade classification has
changed based on changes to the component parts) can be performed as
mental steps with the aid of pen and paper for record keeping. Thus, we
agree with the Examiner's ultimate finding that the claims are directed to an
abstract idea. See Intellectual Ventures I LLC v. Symantec Corp., 83 8 F .3d
1307, 1318 (Fed. Cir. 2016) (finding an abstract idea where "with the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper"), see also CyberSource, 654 F.3d at 1372-
73 ("[A] method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under§ 101."); see also In re
Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental processes--or
processes of human thinking--standing alone are not patentable even if they
have practical application."); Gottschalkv. Benson, 409 U.S. 63, 67 (1972)
("Phenomena of nature ... , mental processes, and abstract intellectual
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concepts are not patentable, as they are the basic tools of scientific and
technological work" (emphasis added)).
We next tum to Appellants' argument that the claims are not abstract
because they recite machines, such as servers and processors that provide
concrete structural reality. We find this argument to be unpersuasive of
Examiner error. Our reviewing court has explained, "[i]t is well-settled that
mere recitation of concrete, tangible components is insufficient to confer
patent eligibility to an otherwise abstract idea." In re TL! Comms. LLC
Patent Litigation, 823 F.3d 607,613 (Fed. Cir. 2016). Similarly, "if a
patent's recitation of a computer amounts to a mere instruction to
'implemen[t]' an abstract idea 'on ... a computer,' ... that addition cannot
impart patent eligibility." Alice, 134 S. Ct. at 2358 (quoting Mayo
Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
In this instance, the claimed "entry database server" functions as one
would expect a database server to function-to store information. Here the
information is in the form of "good entries" that include information such as
the identity of the good, its "trade classification," and information
identifying the "component parts used to create the good." Similarly, the
claimed "recompute server" performs instructions that identify changes to
the underlying information relating to the component parts of a good,
determines an updated trade classification based on the changes, and
provides the updated trade classification to the entry database server. Both
the "entry database server" and the "recompute server" function to
implement the steps performed in the system. Thus, the mere presence of
these servers, or the fact that steps and instructions are performed by these
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servers, is insufficient to show that the claims are not directed to an abstract
idea.
Step Two of the Alice/Mayo Framework
Analyzing the claim limitations individually and as an ordered
combination, the Examiner finds "the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception, because the claims do not include improvements to another
technology or another technical field, improvements to the functioning of the
computer itself, or meaningful limitations beyond generally linking the use
of an abstract idea to a particular technological environment." Non-Final
Act. 3. The Examiner further finds the claims "require no more than a
performing of generic computer functions ( e.g. storing entries in a database,
maintaining data in hierarchical relationships, identifying a classification for
a given data, identifying changes made to data, and identifying a
classification based on updated data) that are well-understood, routine and
conventional activities previously known to the industry." Non-Final Act. 3.
Appellants argue that because the Examiner indicates the claims
would be allowable over the art of record, "the claims are inherently not
abstract." Br. 11. For the same reason, Appellants argue claims that are
both novel and non-obvious cannot be "well-understood, routine and
conventional" as the Examiner finds. Br. 12. Appellants further argue
"[t]he recomputing of trade classifications as well as other features described
in the instant claims provide a novel process that is both meaningful and
limited in its use in import and export transactions and which, through its
use, may minimize transaction delays and thus reduce costs associated with
such transactions." Br. 11-12.
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Reviewing the claim limitations individually and as ordered
combination, we agree that any limitations other than those directed at the
abstract idea do not transform the claim to something more than the abstract
idea. For example, the claims require "an entry database server," and a
"recompute server" comprising a "processor." Br. 14. These hardware
elements are used in their well-understood and routine ways to perform the
abstract idea of "storing entries, identifying changes made to pre-existing
information, and determining a trade classification information based on
given data." No evidence has been provided that demonstrates the claims
are directed at improving their functionality.
l\!Ioreover, the aspect of the claims Appellants point to, such as
maintaining good entries and recomputing the trade classification of goods
(see Br. 11) are directed to the abstract idea itself, rather than something
significantly more than the abstract idea. Thus, even if these elements were
novel processes, such novelty would not be sufficient in showing the claims
are directed to patentable subject matter. "[P]atent-eligibility does not tum
on ease of execution or obviousness of application. Those are questions that
are examined under separate provisions of the Patent Act." Rapid Litig.
kfgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016) (citing
1Hayo, 566 U.S. at 79, 78). Although the second step in the Alice!lvfayo
frarnework 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, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
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ineligible. See ]vfa_yo, 566 U.S. at 79, 78. Indeed, a "[g]roundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). Thus, merely because the Examiner has indicated the
claims may be patentable over the prior art of record does not signify that
"the claims are inherently not abstract" as Appellants argue (Br. 11 ).
Finally, we find unpersuasive the argument that claims are patent
eligible because they are "limited in its use in import and export
transactions." Br. 11-12. "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). Moreover, "[w]here a patent's claims are
deemed only to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362---63 (Fed. Cir.), cert, denied, 136 S. Ct. 701 (2015).
DECISION
The Examiner's rejection of claims 1-5, 7-15, 17-20, 31 and 32 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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