Ex Parte Martinek et al

Patent Trial and Appeal Board

Jan 31, 2019

11762925 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/762,925 06/14/2007
63759 7590 02/04/2019
DUKEW. YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Brian Joseph Martinek
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.
07-0112-US-NP 2680
EXAMINER
CRAWLEY, TALIAF
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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 BRIAN JOSEPH MARTINEK, WARREN RICHARD KOCH,
JAMES ARTHUR HAMMOND, and
GEORGEE.ANDERSON
Appeal 2017-011304
Application 11/7 62,925
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-7, 9-14, and 21-27. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is The Boeing Company
of Chicago, Illinois. See App. Br. 2.
Appeal 2017-011304
Application 11/7 62,925
THE INVENTION
Appellants' claim 1 is directed to an improved data processing system
and in particular, to an inventory management systems. Still more
particularly, the invention is directed to a computer implemented method,
apparatus, and computer usable program code for an inventory inspection
and supplier quality management system. (Spec. ,r 1.)
Claim 1 is representative of the subject matter on appeal.
1. A method for managing inspection of items, the method
compnsmg:
receiving at an inventory management system an identifier
for an item in a shipment of items to form item received data;
outputting, by a processor unit, inspection criteria for the
item;
retrieving a quality history for the item from an inventory
management database, wherein the quality history is data
regarding result of inspections of a similar item received;
automatically adjusting, by the processor unit, inspection
criteria for inspecting the shipment of items using the quality
history to form adjusted inspection criteria, wherein the adjusted
inspection criteria include an inspection level and an inspection
sample size, wherein the inspection level includes at least one of
skip inspection, normal inspection, and tightened inspection;
inspecting the item using the adjusted inspection criteria,
wherein an inspection result is formed;
receiving the inspection result at the processor; and
updating, by the processor unit, the quality history for the
received item using the inspection result.
THE REJECTION
Claims 1-7, 9-14, and 21-27 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
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Application 11/7 62,925
ANALYSIS
We will sustain the rejection of claims 1-7, 9-14, and 21-27 under 35
U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, ... determine
whether the claims at issue are directed to one of
those patent-ineligible concepts .... If so, ... then
ask, "[ w ]hat else is there in the claims before us?"
. . . To answer that question, . . . consider the
elements of each claim both individually and "as an
ordered combination" to determine whether the
additional elements "transform the nature of the
claim" into a patent-eligible application .... [The
Court] described step two of this analysis as a search
for an "'inventive concept"'-i.e., 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. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that "the 'directed to' inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether 'their character
as a whole is directed to excluded subject matter."' See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
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Application 11/7 62,925
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that qualifies as an "abstract idea" for
which computers are invoked merely as a tool. See id. at 1335-36.
In so doing, we apply a "directed to" two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50-57 (PTO-P-2018-0053) (Jan. 7, 2019)
("Subject Matter Eligibility Guidance").
The Examiner determines that the claims are directed to comparing
new and stored information within a database, and using rules to identify
options that can be performed mentally and is, therefore, directed to an
abstract idea (Final Act. 5; Ans. 4). The Examiner finds that the claims do
not include additional elements that are sufficient to amount to significantly
more than the underlying abstract idea. (Final Act. 5.)
We agree with the Examiner that the steps of receiving an identifier,
outputting criteria, retrieving history, adjusting criteria, receiving results,
and updating history constitute analyzing information by steps people go
through in their minds. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016). Merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis. 5'ee, e.g., Content Extraction, 776 F.3d at
1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
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Application 11/7 62,925
Turning to the second prong of the "directed to test," claim 1 merely
requires a "processor unit" and a "database." The recitation of the words
"processor unit" and "database" do not impose "a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception." Subject Matter Eligibility Guidance
at 54. In this regard, there is no recitation of an improvement in the
functioning of the processor unit or database or other technology, and no
recitation of a particular machine or manufacture that is integral to the
claims, and no recitation of a transformation of a particular article to a
different state or thing. Id. In this regard, the claim does not recite the
processor unit or the database in any specific technical terms which would
relate to an improvement in the processor or the database.
We determine that the recitation of "inspecting the item using the
adjusted inspection criteria" is a recitation of post solution activity. The
Specification at paragraph 4 discloses that it is conventional to inspect
ordered items to ensure that the item conforms to the buyer's specification or
requirements for the item. The prohibition against patenting an abstract idea
"cannot be circumvented by attempting to limit the use of the formula to a
particular teclmo1ogical enviromnent or adding insignificant post[-]so1ution
activity." Bilski v. Kappos, 561 U.S. 593, 610----11 (2010) (inten1al citation
and quotation marks omitted). The Court in Alice noted that '"[s]irnply
appending conventional steps, specified at a high level of generality,' was
not 'enough' [in Afayo] to supply an 'inventive concept.''' Alice, 134 S. Ct.
at 2357 (quoting 1\1ayo, 566 U.S. at 82-83, 77-78, 72-73). See also Parker
v. Flook, 437 U.S. 584, 590 (1978) ("The notion that post-solution activity,
no matter how conventional or obvious in itself~ can transform an
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Application 11/7 62,925
unpatentable principle into a patentable process exalts form over
substance.").
Therefore, we agree with the Examiner that claim 1 is directed to an
"abstract idea."
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claims do not recite an application of a
mathematical algorithm or apply well known natural laws because the
Examiner does not rely on a determination that the claim is so directed.
Rather, the Examiner determines that the claims are directed to a method
that can be performed in the human mind. (App. Br. 14.)
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claims do not preempt all methods of
inspecting items. (App. Br. 14.) 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. 2015), cert. denied,
136 S. Ct. 701, 193 (2015) ("[T]hat the claims do not preempt all price
optimization or may 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
A!fayo framework, as they are in this case, preemption concerns are fully
addressed and made moot." Ariosa, 788 F.3d at 1379.
Turning to the second step of the Alice analysis, because we find that
the claims are directed to an abstract idea, the claims must include an
"'inventive concept"' in order to be patent-eligible, i.e., there must be an
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element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo, 566 U.S. at
72-73).
The introduction of a processor unit and a database into the claims
does not alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
"while adding the words 'apply it"' is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological
environment."' Stating an abstract idea while
adding the words "apply it with a computer" simply
combines those two steps, with the same deficient
result. Thus, 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. This conclusion
accords with the preemption concern that
undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of
"additional featur[ e ]" that provides any "practical
assurance that the process is more than a drafting
effort designed to monopolize the [ abstract idea]
itself."
Alice, 134 S. Ct. at 2358 (alterations in original) (internal citations omitted).
Instead, "the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 2359. They do not.
Taking the claim elements separately, the function performed by the
processor unit at each step of the process is purely conventional. Using a
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Application 11/7 62,925
computer to receive identifier data, output inspection criteria data, retrieve
quality history data, process the inspection criteria data, receive inspection
data and update quality history data amounts to electronic data retrieval and
analysis----one of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
previously known to the trading industry. See Elec. Power Grp., 830 F.3d at
1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d
1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of
the terms 'processing,' 'receiving,' and 'storing,' ... those functions can be
achieved by any general purpose computer without special programming").
In short, each step does no more than require a generic computer to perform
generic computer functions. As to the data operated upon, "even if a process
of collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately.
As we stated above, the claims do not, for example, purport to
improve the functioning of the computer itself and the claims do not affect
an improvement in any other technology or technical field. Thus, the claims
at issue amount to nothing significantly more than instructions to apply the
abstract idea of information access using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
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We are also not persuaded of error on the part of the Examiner by
Appellants' argument that the claims are directed to a novel and non-obvious
solution to a specific problem. (App. Br. 14.) To the extent Appellants
maintain that the limitations of claim l necessarily amount to "significantly
more'' than an abstract idea because the claimed apparatus is allegedly
patentable over the prior art, Appellants misapprehend the controlling
precedent. Although the second step in the Alice/lf ayo framework is tenned
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 (internal citation omitted). A
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
Appellants maintain that the claims are analogous to the claims the
Court upheld as patent-eligible in Diehr because the claims recite
"inspecting the item." (Reply at 9). But we fail to see how, and Appellants
do not adequately explain how, the claims in Diehr, which were directed to
an industrial process, i.e., an improved process for curing synthetic rubber,
that "significantly lessens the possibility of 'overcuring' or 'undercuring"'
(see Diamond v. Diehr, 450 U.S. 175, 187 (1981 )), relate to the claims at
issue here. As we stated above, in our view, the step of inspecting the item
is post solution activity. See Diehr, 450 U.S. at 191-92 ("insignificant post-
solution activity will not transform an unpatentable principle into a
patentable process.").
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In view of the foregoing, we will affirm the Examiner's rejection of
claim 1. We will also sustain this rejection as it is directed to claims 2-7 and
9-14 because the Appellants have not argued the separate eligibility of these
claims. We will also sustain the rejection as it is directed to claims 21-27
because the Appellants make the same arguments related to the patent
eligibility of these claims as was made in regard to the patent eligibility of
claim 1.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-7, 9-14,
and 21-27 under 35 U.S.C. § 101.
DECISION
The decision of the Examiner 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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