Ex Parte Porter et al

Patent Trial and Appeal Board

Feb 8, 2018

14489279 (P.T.A.B. Feb. 8, 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.
14/489,279 09/17/2014 Scott Porter 10448.2 8648
96605 7590 02/12/2018
nnHH r*n Riaok ptt r EXAMINER
370 S 300 E
Salt Lake City, UT 84111
ADE, OGER GARCIA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
02/12/2018 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):
docketing @ dcbip .com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT PORTER and QUINN BAKER
Appeal 2016-0063 831
Application 14/489,279
Technology Center 3600
Before ERIC S. FRAHM, LARRY J. HUME, and JOHN P. PINKERTON,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1-20, which are all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 "The real parties in interest in this matter are Scott Porter and Quinn Baker
(hereinafter 'Scott Porter et al.' or 'Appellant'). Scott Porter et al. are the
listed inventors of the instant application." App. Br. 3.
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STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to
"[a] system [and method] for automatically tracking employee hours."
Spec., Abstract; see also Claim App'x.
Representative Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to dispositive prior-art limitations):
1. A system for automatically tracking employee
hours, the system comprising:
a tracking component configured to:
determine the current location of the
employee;
determine if the current location of the
employee is within a designated location; and
track the time spent by the employee within
the designated location; and
an evaluation module configured to:
receive from the tracking component the
time spent by the employee within the designated
location; and
determine if the time spent by the employee
within the designated location exceeds a
predetermined threshold.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Dec. 9, 2015); Reply Brief ("Reply Br.," filed June 8, 2016); Examiner's
Answer ("Ans.," mailed Apr. 8, 2016); Non-Final Office Action ("Non-Final
Act.," mailed June 19, 2015); and the original Specification ("Spec.," filed
Sept. 17, 2014).
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Seubert et al. ("Seubert") US 2008/0120129 A1 May 22, 2008
Eick US 2012/0089920 Al Apr. 12, 2012
Burger et al. ("Burger") US 2012/0233044 Al Sept. 13, 2012
Rejections on Appeal3
Rl. Claims 1-20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Non-Final Act. 2—4.
R2. Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Burger and Seubert. Final Act. 5.
R3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Burger and Eick. Final Act. 7.
3 With respect to the prior-art Rejections R2 and R3 under § 103, the
Examiner further states:
9. Claims 13-16 recite similar limitations as claims 1-12
above. Therefore claims 13-16 are rejected under the same
rationale and same basis using the previously cited references:
Burger, Seubert, and Eick.
10. Claims 17-20 recite similar limitations as claims 1-12
above. Therefore claims 17-20 are rejected under the same
rationale and same basis using the previously cited references:
Burger, Seubert, and Eick.
Non-Final Act. 8; see also Ans. 9. We note claims 13-16 and 17-20 are of
different scope than claims 1-12, and further note the Eick reference was
only relied upon in the rejection of independent claim 4, which does not
have a corresponding claim of similar scope in claims 13-16 or 17-20.
Thus, we are at a loss in understanding the specific bases for the Examiner's
rejection of claims 13-16 and 17-20.
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CLAIM GROUPING
Based on Appellants' arguments (App. Br. 6-10), we decide the
appeal of non-statutory subject matter Rejection R1 of claims 1-20 on the
basis of representative claim 1.4 We decide the appeal of obviousness
Rejection R2 of claims 1-12 on the basis of representative claim 1; and we
separately address § 103 Rejection R3, infra. We further address the § 103
rejection of claims 13-20, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to prior-art Rejections R2 and R3 of claims 1-20 under § 103 for the specific
reasons discussed below.
However, we disagree with Appellants' arguments with respect to
non-statutory subject matter Rejection R1 of claims 1-20 and, unless
otherwise noted, we incorporate by reference herein and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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which this appeal is taken, and (2) the reasons and rebuttals set forth in the
Examiner's Answer in response to Appellants' arguments. We highlight and
address specific findings and arguments regarding claim 1 for emphasis as
follows.
1. $ 101 Rejection R1 of Claims 1-20
Issue 1
Appellants argue (App. Br. 2—4; Reply Br. 4-7) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Did the Examiner err in concluding "the claimed invention is directed
to a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more?" Non-Final Act. 2.
Analysis
Appellants first contend "[t]he interim guidance requires that the
claims as a whole be considered," and "the Examiner fails to follow the
interim guidance, and indeed doesn't even mention the interim guidance.
Instead, Examiner offers only the conclusory statements that the claims
'include an abstract idea' and 'do not include limitations that are 'significantly
more' than the abstract idea." App. Br. 6. Appellants go on to allege an
analysis under the USPTO's Examination Guidelines App. Br. 7.
We first note we have considered these guidelines, which are based on
controlling case law and USPTO policy at the time the guidelines were
issued. However, PTAB applies relevant U.S. Supreme Court and the
Federal Circuit case law to the facts of each patent application on appeal,
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and does not rely on guidelines intended to train Patent Examiners as a
controlling legal authority. We also emphasize, "[wjhether a patent claim is
drawn to patent-eligible subject matter is an issue of law that is reviewed de
novo." SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1331 (Fed.
Cir. 2010) (citation omitted).
Alice Step 1 —Abstract Idea
Appellants argue the "Examiner does not allege, indeed cannot allege,
that the current claims are similar to any of the examples provided by the
USPTO in 'part two' of the abstract idea examples (which includes examples
of ineligible patent claims). This is a good indication, but obviously not
determinative, that the claims are patent eligible under step 2A of the interim
guidance." App. Br. 7-8.
Appellants argue:
That is, claim 1 is directed to a "system" that is inextricably tied
to computer technology to "track the time spent by an employee
within the designated location" and determine if the total time is
within designated thresholds rather than the abstract idea, for
example, of "track[ing] the time spent by an employee within
the designated location".
Because claim 1 is not directed to an abstract idea under
the interim guidance, the interim guidance is clear that claim 1
is eligible subject matter the analysis need not proceed.
App. Br. 8-9.
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
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not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty Ltd. v. CLS Bank Infl, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Mayo!Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Alice, 134 S. Ct. at 2354. First, we "determine whether
the claims at issue are directed to a patent-ineligible concept." Id. at 2355.
If so, we "examine the elements of the claim to determine whether it
contains an 'inventive concept' sufficient to 'transform' the claimed abstract
idea into a patent-eligible application." Id. at 2357 (quoting Mayo, 566 U.S.
at 72, 79). Although the two steps5 of the Alice framework are related, the
"Supreme Court's formulation makes clear that the first-stage filter is a
meaningful one, sometimes ending the § 101 inquiry." Elec. Power Grp.,
LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (citations
omitted). We note the Supreme Court "has not established a definitive rule
to determine what constitutes an 'abstract idea'" for the purposes of step one.
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct. at 2357).
5 Applying this two-step process to claims challenged under the abstract
idea exception, the courts typically refer to step one as the "abstract idea"
step and step two as the "inventive concept" step. Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
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However, our reviewing court has held claims ineligible as being
directed to an abstract idea when they merely collect electronic information,
display information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "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. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law."(citation omitted)).
Under the "abstract idea" step we must evaluate "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, 838 F.3d at
1257 (citation omitted).
Turning to the claimed invention, claim 1 recites "[a] system for
automatically tracking employee hours." Claim 1 (preamble). System
claim 1 also requires:
a tracking component configured to:
determine the current location of the
employee;
determine if the current location of the
employee is within a designated location; and
track the time spent by the employee within
the designated location; and
an evaluation module configured to:
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receive from the tracking component the
time spent by the employee within the designated
location; and
determine if the time spent by the employee
within the designated location exceeds a
predetermined threshold.
Claim 1.
The Examiner concludes the claims are directed to "TIME
TRACKING AND PRODUCTIVITY SYSTEM" (Non-Final Act. 2), and
also concludes "tracking employee hours is a fundamental economic
practice, and thus the claims include an abstract idea." Non-Final Act. 3.6
Under step one, we conclude the inventions claimed in each of
independent claims 1, 13, and 17 are directed to an abstract idea, i.e., a
fundamental economic practice of organizing human activities pertaining to
workplace time monitoring and evaluation.
As the Specification itself observes the invention is directed to:
A system for automatically tracking employee hours. The
system includes a tracking component. The tracking component
is configured to determine the current location of the employee,
determine if the current location of the employee is within a
designated location and track the time spent by the employee
6 In the Answer, the Examiner further concludes:
Using claims 1 and 13 as [] example[s], the claims are directed
to a mathematical relationship/formula, such as "a tracking
component to track employee hours, and to determine the
current location of an employee". The phrase "mathematical
relationships/formulas" is used to describe mathematical
concepts such as mathematical algorithms, mathematical
relationships, mathematical formulas, and calculations.
Ans. 2.
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within the designated location. The system also includes an
evaluation module. The evaluation module is configured to
receive from the tracking component the time spent by the
employee within the designated location and determine if the
time spent by the employee within the designated location
exceeds a predetermined threshold and or to be used for the
purpose of billing or to monitor and improve coordination of
patient care.
Abstract.
Notwithstanding the recitation of "automatically" in claims 1 and 17,7 8
we find this type of activity, i.e., tracking employee hours and locations,
includes longstanding conduct that existed well before the advent of
computers and the Internet, and could be carried out by a human with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011) ("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.")}
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, although the Supreme
Court has altered the § 101 analysis in cases like Mayo and Alice, the court
continues to "treat[ ] analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category." Synopsys, Inc. v.
7 Although neither a computer nor a processor is explicitly recited in either
of independent claims 1 or 17, independent claim 13 recites "a logic device"
and "computer-executable instructions to be executed by the logic device."
However, this does not alter our analysis under Alice Step 1.
8 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101." CyberSource, 654 F.3d at 1373.
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Mentor Graphics Corp., 839 F.3d 1138, 1146^47 (Fed. Cir. 2016) (alteration
in original) (quoting Elec. Power Grp., 830 F.3d at 1354).
In this regard, the claims are similar to claims our reviewing court has
found patent ineligible in Elec. Power Grp., 830 F.3d at 1353-54 (collecting
information and "analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, [are] essentially
mental processes within the abstract-idea category" (citations omitted.)).
Therefore, we conclude claims 1,13, and 17 involve nothing more
than collecting, storing, comparing, and transmitting data, without any
particular inventive technology — an abstract idea. See Elec. Power Grp.,
830 F.3d at 1354. We further refer to Content Extraction, where the Federal
Circuit has provided additional guidance on the issue of statutory subject
matter by holding claims to collecting data, recognizing certain data within
the collected data set, and storing that recognized data in memory were
directed to an abstract idea and therefore unpatentable under § 101. Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n., 776 F.3d
1343 (Fed. Cir. 2014).
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims include an abstract idea.
Alice Step 2 —Inventive Concept
If the concept is directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
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of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Appellants argue:
[CJlaim 1 is directed to a "system" that is inextricably tied to
computer technology to "track the time spent by an employee
within the designated location" and determine if the total time is
within designated thresholds rather than the abstract idea, for
example, of "tracking] the time spent by an employee within
the designated location".
App. Br. 8.
Appellants further allege:
Claim 1 of the instant application marks an improvement in
employee time tracking, both from the standpoint of the user
and from the standpoint of the service provider, both of whom
gain efficiency via the use of the claimed system. In particular,
just some of the benefits recited within the specification include
an employer eliminating many opportunities for employee fraud
(since the tracking is done automatically), an employee not
fearing that he/she won't be credited for time spend working
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and ensuring that hospital personnel do not exceed statutory
limits on work hours.
App. Br. 9.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an "inventive concept" that
transforms the abstract idea of tracking employee time and location into a
patent-eligible application of that abstract idea. See Non-Final Act. 3; and
see Ans. 10.9 We agree with the Examiner because, as in Alice, we find the
recitation of time tracking and management system is simply not enough to
transform the patent-ineligible abstract idea here into a patent-eligible
invention. See Alice, 134 S. Ct. at 2357 ("[CJlaims, which merely require
generic computer implementation, fail to transform [an] abstract idea into a
patent-eligible invention.").
Accordingly, based upon the findings and conclusions above, on this
record, we are not persuaded of error in the Examiner's conclusion that the
appealed claims are directed to patent-ineligible subject matter. Therefore,
we sustain the Examiner's § 101 rejection of independent claim 1, and
grouped claims 2-20 which fall therewith. See Claim Grouping, supra.
9 We agree with the Examiner that (1) the "limitations are merely
instructions to implement the abstract idea on a computer and require no
more than a generic computer to perform generic computer functions that are
well-understood, routine and conventional activities previously known to the
industry" (Non-Final Act. 3), and (2) the "claimed elements are conventional
steps that are being executed in a conventional way at a high level of
generality using a computer system. There are no improvements to the
technical field or the technology, nor are there improvements to the
computer system itself. Consequently the claim is not patent eligible."
Ans. 10.
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2. $103 Rejection R2 of Claims 1-12
Issue 2
Appellants argue (App. Br. 11-15; Reply Br. 7-9) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Burger and Seubert is in error. These contentions present us
with the following dispositive issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] system for automatically tracking employee hours" having "
a tracking component configured to," inter alia, "determine if the time spent
by the employee within the designated location exceeds a predetermined
threshold," as recited in claim l?10
Analysis
The Examiner cites Burger paragraphs 24 and 26 as teaching or
suggesting the dispositive limitation. Non-Final Act. 5; Ans. 6.
Appellants contend "[njothing in Burger et al. discusses setting a time
threshold for employees or what actions to take if such a threshold is
exceeded." App. Br. 11-12.
We have reviewed the portion of Burger cited by the Examiner, see no
teaching or suggestion of the recited threshold therein, and therefore find
Appellants' arguments to be persuasive.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the cited prior
10 Appellants make further arguments, but we find this identified issue to be
dispositive of the appeal of the § 103 rejection.
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art combination to teach or suggest the disputed limitation of claim 1, such
that we find error in the Examiner's resulting legal conclusion of
obviousness. Therefore, we do not sustain the Examiner's obviousness
rejection of independent claim 1, and grouped claims 2-12 which fall
therewith. See Claim Grouping, supra.
3. Rejection R3 of Claim 4
In light of our reversal of the rejections of independent claim 1 from
which claim 4 depends, we also reverse obviousness Rejection R3 under
§ 103 of claim 4. On this record, the Examiner has not shown how the
additionally cited Eick reference overcomes the aforementioned deficiencies
with Burger and/or Seubert, as discussed above regarding claim 1.
4. $103 Rejection of Claims 13-20
The Federal Circuit has held, "the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007). The
Federal Circuit stated that this burden is met by "adequately explaining] the
shortcomings it perceives so that the applicant is properly notified and able
to respond." Id., at 1370. It is only "when a rejection is so uninformative
that it prevents the applicant from recognizing and seeking to counter the
grounds for rejection" that the prima facie burden has not been met and the
rejection violates the minimal requirements of 35 U.S.C. § 132. Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
In this case, as noted above (see n.3, supra), we find the Examiner has
not met the necessary burden in establishing a prima facie case of
unpatentability under § 103. We find the Examiner erred because claims
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13-20 are of different scope than claims 1-12, and the Examiner has not
showed how the different claim limitations map to the cited references.
Accordingly, we do not affirm the § 103 rejection of claims 13-20.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 4-11) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subject matter Rejection R1 of claims 1-20 under 35 U.S.C. § 101, and we
sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejections R2
and R3 of claims 1-20 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we do not sustain the rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. § 41.50(a)(1).
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DECISION
We affirm the Examiner's decision rejecting claims 1-20.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
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