Ex Parte Ulwick

Patent Trial and Appeal Board

Aug 30, 2017

12592715 (P.T.A.B. Aug. 30, 2017)

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.
12/592,715 11/30/2009 Anthony W. Ulwick 25TY-157900 3291
69849 7590 09/01/2017
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
379 Lytton Avenue
Palo Alto, CA 94301
EXAMINER
EBERSMAN, BRUCE I
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
svpatents @ sheppardmullin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY W. ULWICK
Appeal 2016-002241
Application 12/592,7151
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1, 2, 4—20. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies Strategyn Holdings, LLC. as the real party in interest.
App. Br. 2.
Appeal 2016-002241
Application 12/592,715
THE INVENTION
Appellant claims configuring a virtual laboratory to facilitate design
of a product. (Claim 1, Appeal Br. 25).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method comprising:
parameterizing a job to identify steps;
defining a market as a job executor of the job;
deconstructing the job to determine achievable outcomes at
each step in the job;
gathering outcome statements associated with the achievable
outcomes;
uncovering segments of customers that struggle to achieve
desirable outcomes;
allocating customers into segments, with a processor of a first
system, in accordance with the outcome statements;
uncovering segments of customers, with the processor, that
struggle to achieve desirable outcomes at one or more steps of the job;
revealing an opportunity, with the processor, to help at least one
customer achieve desirable outcomes related to the market;
configuring a virtual laboratory to facilitate design of a product
on a second system distinct from the first system, the configuring the
2
Appeal 2016-002241
Application 12/592,715
virtual laboratory being with the processor, and the product helping
the at least one customer achieve desirable outcomes.
THE EVIDENCE AND REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ulwick US 5,963,910 Oct. 5, 1999
Burgel US 2002/0029236 A1 Mar. 7, 2002
Gibbs US 2010/0125566 A1 May 20, 2010
The following rejections are before us for review.
Claims 1, 2, and 4—20 are rejected under 35 U.S.C. § 101.
Claims 1, 2, 4—10, 12—17, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ulwick in view of Burgel.
Claims 11 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ulwick, Burgel, and Gibbs.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1, 2, and 4—20 under 35 U.S.C.
§101.
Claim 1 is representative of the independent claims before us on appeal,
which contain similar limitations, and is a method claim of the pertinent part
steps, viz.
3
Appeal 2016-002241
Application 12/592,715
parameterizing a job to identify steps; defining a market as a job executor of
the job; deconstructing the job to determine achievable outcomes at each
step in the job; gathering outcome statements associated with the achievable
outcomes; uncovering segments of customers that struggle to achieve
desirable outcomes; allocating customers into segments in accordance with
the outcome statements; uncovering segments of customers that struggle to
achieve desirable outcomes at one or more steps of the job; revealing an
opportunity to help at least one customer achieve desirable outcomes related
to the market; and configuring a virtual laboratory to facilitate design of a
product on a second system distinct from the first system, the product
helping the at least one customer achieve desirable outcomes.
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, we then ask, “[wjhat
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.”
4
Appeal 2016-002241
Application 12/592,715
Alice Corp., Pty. Ltd. v CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The steps in claim 1 result in configuring a virtual laboratory to facilitate
design of a product on a second system distinct from a first system, the
product helping the at least one customer achieve desirable outcomes. The
Specification at paragraph 11 states, “[individuals often try to determine, in
their head, which of the proposed solutions would best satisfy all the desired
outcomes.” The Specification at paragraph 20 recites:
Outcome Driven Innovation (ODI) creates an empirically valid
estimator of market demand by holistically identifying the jobs
that customers and key participants in the consumption chain
are trying to get done in a particular market and then collecting
quantitative data on importance and satisfaction levels
associated with all of these jobs and with the desired outcomes
associated with a specific core job of interest. This data is then
analyzed to identify needs that are underserved (representing
opportunities for new products and services) and those that are
overserved (representing areas that are ready for being
disrupted).
5
Appeal 2016-002241
Application 12/592,715
Thus, all this evidence shows that claim 1 is directed to identifying
needs that are underserved representing opportunities for new products and
services. It follows from prior Supreme Court cases, and Gottschalk v.
Benson, 409 U.S. 63 (1972) in particular, that the claims at issue here are
directed to an abstract idea. Identifying needs that are underserved
representing opportunities for new products and services is a fundamental
economic practice and thus is an abstract idea, preempting all
implementations and uses. The patent-ineligible end of the spectrum
includes fundamental economic practices. See Alice, 134 S. Ct. at 2357.
Also, we find allocating customers into segments in accordance with
outcome statements and uncovering segments of customers that struggle to
achieve desirable outcomes to be a method of organizing human behavior
based on unachieved outcomes, which is not patent-eligible subject matter.
See Alice, 134 S. Ct. at 2355—56. Thus, identifying needs that are
underserved representing opportunities for new products and services based
on uncovering segments of customers that struggle to achieve desirable
outcomes is an “abstract idea” beyond the scope of § 101. See Alice, 134 S.
Ct. at 2355-1257.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
performing a mathematical algorithm in Gottschalk and the concept of
identifying needs that are underserved representing opportunities for new
6
Appeal 2016-002241
Application 12/592,715
products and services based on uncovering segments of customers that
struggle to achieve desirable outcomes. Both are squarely within the realm
of “abstract ideas” as the Court has used that term. See Alice, 134 S. Ct. at
2355—2357. That the claims do not preempt all forms of the abstraction or
may be limited to the abstract idea in the new products setting, does not
make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1360-61 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the analysis
at Mayo step two
the 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 “implement[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
feature[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) (citations omitted).
7
Appeal 2016-002241
Application 12/592,715
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea ... on a generic
computer.” Alice, 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data and compute a result from a database amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s claims simply
recite the concept of identifying needs that are underserved representing
opportunities for new products and services based on uncovering segments
of customers that struggle to achieve desirable outcomes, as performed by a
generic computer. The claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. Instead, the claims at issue amount
to nothing significantly more than instructions to identify needs that are
underserved representing opportunities for new products and services based
on uncovering segments of customers that struggle to achieve desirable
8
Appeal 2016-002241
Application 12/592,715
outcomes, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice, 134 S. Ct. at 2360 (alterations in original).
Appellant’s argument that the use of the term “virtual laboratory”
itself makes the independent claims patent eligible (Appeal Br. 12) is
without merit because a definition of the term “virtual” does not require a
computer.2 Even so, the claimed use of the term “virtual laboratory” is
strictly in a generic sense which, as found supra, does not entitle Appellant
to Alice step-two eligibility.
Likewise unpersuasive is Appellant’s argument that “[t]he present
claims address problems associated with designing products in response to
an Outcome-Driven Innovation (“ODI”) framework.” (Appeal Br. 14).
Limiting the information of a claim to a particular technology does not
“change its character as information.” See Electric Power Group, LLC v.
Alstom S.A., 830 L.3d 1350, 1353-1355 (Led. Cir. 2016).
2 See e.g., being such in essence or effect though not formally recognized or
admitted, https://www.merriam-webster.com/dictionary/virtual (last visited
8/22/2017).
9
Appeal 2016-002241
Application 12/592,715
35 U.S.C. § 103 REJECTION
The Appellant argued claims 1, 2 and 4—11 as a group. (Appeal
Br. 22). We select claim 1 as the representative claim for this group, the
remaining claims standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
The Examiner found, “Burgel teaches configuring a virtual laboratory
to facilitate design of a product, using the processor, the product helping the
at least one customer achieve desirable outcomes. (See Paragraphs 15 and
56)[.]” (Answer 5).
Appellant argues,
The “posters” of Burgel are not analogous to the “products” that
are designed in the “virtual laboratory” of the claims. The
“products” designed in the “virtual laboratory” of the claims are
related to an ODI process that has allowed the “virtual
laboratory” to be appropriately configured. For example, the
“products” designed in the “virtual laboratory” of the claims are
related to claim language, such as “parameterizing a job ... ;
defining a market as a job executor of the job;... gathering
outcome statements ... ; uncovering segments of customers ... ;
allocating customers into segments ... ; uncovering segments of
customers, with the processor, that struggle to achieve desirable
outcomes at one or more steps of the job;..[.] [and] revealing an
opportunity.” In contrast the “posters” of Burgel are related to
known scientific processes that do not need to be determined
through ODI processes. In other words, using Burgel in
combination with Ulwick would only teach providing a poster
that documents the results of an ODI process. Therefore, the
“poster” of Burgel are not similar to the “products” designed in
the [“]virtual laboratory” of the claims. Accordingly, the
Examiner has not shown Burgel teaches, “configuring a virtual
10
Appeal 2016-002241
Application 12/592,715
laboratory to facilitate design of a product.”
(Appeal Br. 18).
In reply the Examiner found,
Here while applicant argues that the system is directed to “real
products” a search for a limiting definition of product does not
result in any such limited definition. In Burgel the products are
“distinct poster products”. (0013). Here, while applicant argues
that “posters” are not “products” to be designed, Burgel refers
to these posters as products and applicant does not limit
applicant products to a specific form such as a tangible product
like a screw or bolt. Thus, Burgel can teach a product which in
this case is a poster which may be designed. The poster in 0013
is said to be “a physical poster” which would appear to be a
product that could be designed.
(Answer 22).
Appellant’s argument is not well taken because Appellant is attacking
the reference individually when the rejection is based on a combination of
references, and the Examiner relies on Ulwick, and not Burgel, to disclose
the aspects of an ODI system, e.g., “revealing an opportunity, with the
processor, to help at least one customer achieve desirable outcomes related
to the market” is disclosed by Ulwick at columns 9, lines 8—25. (Final
Act. 4). See In re Keller, 642 F.2d 413 (CCPA 1981); In re Young, 403 F.2d
754, 757-58 (CCPA 1968).
Second, we find nothing in claim 1 which ties the designed product to
the steps which precede the last paragraph of the claim except for the prior
limitation of “uncovering segments of customers, with the processor, that
11
Appeal 2016-002241
Application 12/592,715
struggle to achieve desirable outcomes at one or more steps of the job.” The
Examiner finds the limitation of desirable outcome for customer(s) in
column 9 line 16 of Ulwick. (Final Act. 4). Correspondingly, we find
nothing in Burgel which would prevent the user who is constructing the
poster, from effecting such construction for a client, such as a drug
manufacturing company.3 As such, we find no error with the Examiner
combination of Ulwick and Burgel for the reasons set forth by the Examiner
in the Final Action. (Final Act. 5).
We also affirm the rejections of claims 19, 20, and 12—18 because
Appellant has not challenged such with any reasonable specificity (see In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)). (Appeal Br. 22).
CONCFUSIONS OF FAW
We conclude the Examiner did not err in rejecting claims 1,2, and 4—
20 under 35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claims 1, 2, 4—10,
12-17, 19, and 20 under 35 U.S.C. § 103.
3 The Appellant’s argument to the alleged Official Notice taken in the
Advisory Action is not addressed because as set forth above, the Notice is
not necessary because the record before us prior to the Advisory Action
suffices to support the Examiner’s prima facie case. We note that nothing in
claim 1 requires the claimed virtual office to have scientists or anyone else
for that matter to effect helping the at least one customer achieve desirable
outcomes.
12
Appeal 2016-002241
Application 12/592,715
We conclude the Examiner did not err in rejecting claims 11 and 18
under 35 U.S.C. § 103.
DECISION
The decision of the Examiner to reject claims 1, 2, and 4—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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
13