Ex Parte Schroeder

Patent Trial and Appeal Board

Sep 16, 2016

12846538 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/846,538 07/29/2010
53609 7590 09/20/2016
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Jonathan R. Schroeder
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.
507433 2177
EXAMINER
DUNHAM, JASON B
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
09/20/2016 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN R. SCHROEDER
Appeal2013-010979
Application 12/846,538 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jonathan R. Schroeder (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner's Final rejection of claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies Pacific Bearing Company as the real party in
interest. App. Br. 2.
Appeal2013-010979
Application 12/846,538
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of configuring an actuation system comprising:
establishing a connection, via an electronic communication
network, with a linear actuation system customer;
receiving data from the linear actuation system customer that
includes customer requirements for a linear actuation system, the data
transmitted over the electronic communication network;
presenting the customer with a series of options, based on the
customer requirements, from which to select components for the
linear actuation system;
configuring a linear actuation system having multiple
component parts based on customer selections; and
displaying a scaled representation of the linear actuation system
that includes the components selected by the customer.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bjornson et al.
("B j omson")
Koren
US 6,173,210 Bl
US 2007/0156540 Al
The following rejections are before us for review:
Jan.9,2001
July 5, 2007
1. Claims 1-9 are rejected under 35 U.S.C. §101 as being directed to
non-statutory subject matter.
2. Claims 1-16 and 18-20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Bjornson.
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3. Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bjornson and Koren.
ISSUES
Did the Examiner err in rejecting claims 1-9 under 35 U.S.C. §101 as
being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1-16 and 18-20 under
35 U.S.C. §103(a) as being unpatentable over Bjornson?
Did the Examiner err in rejecting claim 17 under 35 U.S.C. § 103(a) as
being unpatentable over Bjornson and Koren?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1-9 under 35 U.S. C. §1 OJ as being directed to non-
statutory subject matter.
The Appellant argued claims 1-9 as a group (App. Br. 5-6). We
select claim 1 as the representative claim for this group, and the remaining
claims 2-9 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(vii) (2007).
Notwithstanding that the framework for determining patent-eligible
subject matter that was applied in the Final Rejection (mailed Dec. 13, 2012)
- i.e., the "machine-or-transformation" test- has since changed (see Alice
Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014)), we make these
observations about the Appellant's response.
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First, the Appellant argues that the claimed subject matter satisfies the
"machine" prong of that former test because "the electronic communication
network is central to every step in claim 1." App. Br. 5. That is not a
persuasive argument.
The generic claim phrase "the electronic communication network"
provides no meaningful limit on the scope of the method claimed. The
generic claim phrase "the electronic communication network" covers the
well-known "internet" (see Specification, para. 30). There is no evidence
that when, for example, the "internet" is used to perform the process as
claimed anything but its most basic functions are involved (i.e., "establishing
a connection" and transmitting data (see first two steps in claim 1 ). See Cf
Bancorp Servs., L.L.C., v. Sun Life Assurance Co. of Cananda, 687 F.3d
1266 (Fed. Cir. 2012) ("The computer required by some ofBancorp's claims
is employed only for its most basic function, the performance of repetitive
calculations, and as such does not impose meaningful limits on the scope of
those claims.")
The Appellant also argue that "the electronic communication network
is central to every step in claim 1." App. Br. 5 (emphasis added). However,
we do not see that the scope of the method claimed, which is not
meaningfully limited by the inclusion of the generic claim phrase "the
electronic communication network," is limited any more meaningfully by
expressing, per se, that said "electronic communication network" is
employed to practice all the steps as claimed. Be that as it may, claim 1
does not in fact say that "the electronic communication network" is
employed to practice all the steps as claimed. Id. A plain reading of the
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claim reveals that only the first two steps of the claim require using an
"electronic communication network;" the last three steps do not- none of
which requires using a device. On that point - that "the electronic
communication network is central to every step in claim 1" (App. Br. 5,
(emphasis added)) - the Appellant's argument is not commensurate in
scope with what is claimed.
Second, the Appellant argues that the claimed subject matter satisfies
the "transformation" prong of the "machine-or-transformation" test because
it "call[ s] for the transformation of data representing customer requirements
into a physical representation of a linear actuator system, wherein the
physical representation is transmitted over an electronic network to be
displayed on a user's computer display." App. Br. 6. That is not a
persuasive argument. It is not based on a reasonable construction of what is
claimed. Claim 1 is far broader than argued. Claim 1 requires neither
(a) "transformation of data representing customer requirements into a
physical representation of a linear actuator system" nor (b) that " [a] physical
representation is transmitted over an electronic network to be displayed on a
user's computer display." Rather, the claim 1 process simply presents
selectable options for a configuration, makes a configuration based on the
options selected, and displays a scaled representation of said configuration.
Nonetheless, even if the argument was undergirded by a reasonably broad
construction of the claim, there is insufficient evidence on record to support
Appellant's argument that the claim 1 method "transforms" data.
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Accordingly, for the foregoing reasons, the Appellant's arguments
challenging the rejection of claims 1-9 under 3 5 USC 101, under the
framework articulated in the Final Rejection, are unpersuasive as to error.
The Examiner's finding that the subject matter of claims 1-9 is patent-
ineligible is not affected by the current framework. Alice identifies a two-
step framework for determining whether claimed subject matter is judicially-
excepted from patent eligibility under § 101. According to Alice step one,
" [ w] e must first determine whether the claims at issue are directed to a
patent-ineligible concept," such as an abstract idea. Alice, 134 S. Ct. at
2355.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to customer-driven product design. Customer-
driven product design is a fundamental economic practice. As such, it is
directed to an abstract idea.
Step two is "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."' Id.
We see nothing in the subject matter claimed that transforms the
abstract idea of customer-driven product design into an inventive concept.
Claim 1 reasonably broadly covers the "internet" (see Specification para. 30)
employed to perform its common functions of "establishing a connection"
and transmitting data and then, without a device, performing such common
activities as presenting a customer with selectable options, making a product
configuration based on what is selected; and then displaying the result -
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i.e., a scaled representation of said product configuration. The abstract idea
of customer-driven product design is not meaningfully transformed by
including the "internet" and then, without any device, presenting a customer
with selectable options for a displayable product configuration.
Thus, the rejection of claims 1-10 under 35 U.S.C. § 101 is sustained.
The rejection of claims 1-16and18-20 under 35 U.S.C. §103(a) as
being unpatentable over Bjornson.
The Appellant mentions certain phrases recited in claims 1 and 10 but
otherwise argues these claims as a group. See App. Br. 8-10. We select
claims 1 and 10 as the representative claims for this group, and the
remaining claims 2-9, 11-16 and 18-20 stand or fall with claims 1 and 10.
37 C.F.R. § 41.37(c)(l)(iv).
The Appellant argues that "the [Bjornson] apparatus does not perform
any system configuration, as required by claim l" (App. Br. 8) and "the
[Bjornson] apparatus does not perform any transformation of the data
received from the customer, nor does it perform any system configuration, as
required by claims 1 and 10." App. Br. 8. The arguments are unpersuasive
as to error in the rejection.
We agree with the Examiner (see Final Act. 4) that Fig. 33 depicts a
configuration. See Bjornson, col. 39, lines 11-12 ("A side view of the seal
provides an actual representation of the seal construction."). Furthermore,
the Appellant admits that, given Bjornson, "[t]he user can view the relevant
pump and choose from a number of seals that can be used in that pump."
App. Br. 8. That being the case, Bjornson necessarily presents a customer
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with selectable options, transforming a product configuration based on what
is selected; and then displaying the result (i.e., a pump with a chosen seal).
If there is a difference between Bjornson and what is claimed, it
resides in the product being designed. To be more accurate, the difference
lies in the content of the information to represent a particular product to be
designed. That is to say, both Bjornson and the claimed processes use
selectable options to design a displayable configuration. However, in the
claimed method, the configuration describes a linear actuation system while
in Bjornson a pump with a seal is described.
We agree with the Examiner that:
[t]he steps of establishing a connection, receiving data, presenting
options based on the data, configuring a system based on the selected
options and displayed a representation of the product based on
selected options would all be performed in the same manner
regardless of whether the product was a component pump seal, a
linear actuation system, a computer, a car or any product comprised of
parts or components.
Ans. 7. There is insufficient evidence that using the "internet" to perform its
common functions of "establishing a connection" and transmitting data and
then, without a device, performing such common activities as presenting a
customer with selectable options, making a product configuration based on
what is selected; and then displaying the result- i.e., a scaled
representation of said product configuration - is functionally affected by
describing a "linear actuation system." It is reasonable to characterize the
information related to a "linear actuation system" as printed matter. Given
that printed matter is not given patentable weight, the "linear actuation
system" claim limitations - as a distinction between the Appellant's
method and that of Bjornson - are not patentably consequential. They
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amount to nonfunctional descriptive material. "[N]on-functional descriptive
material, being useful and intelligible only to the human mind, is given no
patentable weight." Ex parte Graf, Appeal 2012-003941, 2013 WL
3873066, at *4 (PTAB July 23, 2013) (non-precedential), aff'd, In re Graf,
585 F. App'x. 1012 (Fed. Cir. 2014) (non-precedential); cf In re DiStefano,
No. 2015-1453 (Fed. Cir. 2015); as explained in In re Xiao, 462 F.App'x.
947, 950-52 (Fed. Cir. 2011) (non-precedential):
[T]he Board did not create a new "mental distinctions" rule in
denying patentable weight . . . . On the contrary, the Board
simply expressed the above-described functional relationship
standard in an alternative formulation---consistent with our
precedents-when it concluded that any given position label's
function . . . is a distinction "discemable only to the human
mind." Board Decision at 6; see In re Lowry, 32 F.3d 1579, 1583
(Fed. Cir. 1994) (describing printed matter as "useful and
intelligible only to the human mind") (quoting In re Bernhart,
417 F.2d 1395, 1399 (CCPA 1969)).
"The rationale behind this line of cases is preventing the indefinite patenting
of known products by the simple inclusion of novel, yet functionally
unrelated limitations." King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010).
We should also point out that the argued-over configuring step in
claim 1 and the transforming step in claim 10 are not required to be
performed via a device. As claimed, they add to the remaining claimed
subject matter nothing more than steps which could be performed in the
human mind. The distinction between these steps over the prior art,
notwithstanding they relate to a "linear actuation system," is one that is
"useful and intelligible only to the human mind." Lowry, 32 F.3d at 1583
(citing In re Bernhart, 417 F.2d 1395, 1399 (Fed. Cir. 1969)). Such a
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distinction carries no patentable weight. As already noted, "[t]he rationale
behind this line of cases is preventing the indefinite patenting of known
products by the simple inclusion of novel, yet functionally unrelated
limitations." King Pharms., Inc., 616 F.3d at 1279.
For the foregoing reasons, the Appellant's arguments are unpersuasive
as to error in the rejection. The rejection is sustained.
The rejection of claim 17 under 35 U.S. C. §103 (a) as being unpatentable
over Njornson and Koren.
Claim 1 7 further limits the method of claim 10 so that "the
information received from the customer [is transformed] into 3D
computer-aided-design models." The Examiner relied on Koren as evidence
that said transformation was known. See Final Act. 8. This is not
challenged. Rather the Appellant focuses on limitations carried over from
claim l 0 and repeats the arguments used to challenge the rejection of
claims 1 and 10. App. Br. 9. Those arguments were found unpersuasive
(see above) and remain unpersuasive albeit to challenge the rejection of
dependent claim 17. The rejection of claim 17 is sustained.
CONCLUSIONS
The rejection of claims 1-9 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter is sustained.
The rejection of claims 1-16 and 18-20 under 35 U.S.C. § 103(a) as
being unpatentable over Bjornson is sustained.
The rejection of claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over Bjornson and Koren is sustained.
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DECISION
The decision of the Examiner to reject claims 1-20 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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