Ex Parte Walker et al

Patent Trial and Appeal Board

Feb 16, 2018

14532673 (P.T.A.B. Feb. 16, 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.
14/532,673 11/04/2014 Marcia Elaine Walker 2009P-093-USl_ALBR:0446-l 6856
42982 7590 02/21/2018
Rockwell Automation, Inc./FY
Attention: Linda H. Kasulke E-7F19
1201 South Second Street
Milwaukee, WI 53204
EXAMINER
LEROUX, ETIENNE PIERRE
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
02/21/2018 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):
howell@fyiplaw.com
docket@fyiplaw.com
raintellectu alproperty @ ra.rockwell .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCIA ELAINE WALKER and PHILIP JOHN KAUFMAN
Appeal 2017-009503
Application 14/532,6731
Technology Center 2100
Before THU A. DANG, LARRY J. HUME, and SCOTT B. HOWARD,
Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—20, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the Applicant, Rockwell Automation Technologies,
Inc., as the real party in interest. App. Br. 2.
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Application 14/532,673
THE INVENTION
The disclosed and claimed invention is directed to a dynamic
sustainability search engine. Spec. 12.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A sustainability search system, comprising:
at least one processor coupled to memory retaining
instructions for:
a query component that searches at least one target for
data elements, wherein the query component is configured to:
receive a set of search criteria and a set of sustainability
factors, wherein the set of search criteria comprises a process
employed by an industrial automation system to produce a
product or an article of manufacture, the product made by the
process, the article of manufacture of the process, a plant
element carrying out the process, or any combination thereof,
and wherein the set of sustainability factors comprises one or
more measurements of an environmental impact, a socio-
environmental impact, or any combination thereof, for the
process, the product made by the process, the article of
manufacture of the process, the plant element carrying out the
process, or any combination thereof;
receive a set of weight values wherein each weight value
corresponds to one sustainability factor of the set of
sustainability factors; and
identify one or more data elements based on the set of
search criteria and the set of sustainability factors, wherein the
one or more data elements comprise data associated with the
process, the plant element carrying out the process, or any
combination thereof; and
an evaluation component configured to analyze the one
or more data elements identified by the query component based
on a sustainability score associated with each of the one or
more data elements, wherein the sustainability score is a
quantitative metric of the sustainability of the data elements and
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is based at least in part on the set of weight values and on the
set of sustainability factors associated with the data elements.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Ohnemus
Dilorenzo
Djabarov
Walker
US 2008/0059457 A1
US 2008/0059897 A1
US 8,010,523 B2
US 8,892,540 B2
Mar. 6, 2008
Mar. 6, 2008
Aug. 30, 2011
Nov. 18,2014
REJECTIONS
Claims 1—20 stand rejected on the ground of non-statutory
obviousness-type double patenting over claim 1 of Walker. Final Act. 2—7.
Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 7—9.
Claims 1—6, 8—10, and 12—20 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as being anticipated by Ohnemus. Final Act. 9—16.
Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ohnemus in view of Dilorenzo. Final Act. 16—17.
Claim 11 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ohnemus in view of Djabarov. Final Act. 17—18.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments regarding the pending claims.
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Double Patenting Rejection
Appellant has not identified any errors in the Examiner’s findings
regarding the double patenting rejection. “If an appellant fails to present
arguments on a particular issue — or, more broadly, on a particular rejection
— the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.” Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential). Accordingly, we summarily affirm the
Examiner’s rejection on the ground of non-statutory obviousness-type
double patenting.
Section 101 Rejection
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites:
Whoever 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 therefor,
subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70-71 (2012). Although an abstract idea, itself, is patent-
ineligible, an application of the abstract idea may be patent-eligible. Alice,
134 S. Ct. at 2355. Thus, we must 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.” Id. (citing Mayo, 132 S. Ct. at 1297—98). The claim must
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contain elements or a combination of elements that are “sufficient to ensure
that the patent in practice amounts to significantly more than a patent upon
the [abstract idea] itself.” Id. (quoting Mayo, 132 S. Ct. at 1294).
The Supreme Court set forth a two-part “framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Id. at
2355.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo,] 132 S. Ct., at
1296—1297. If so, we then ask, “[w]hat else is there in the
claims before us?” Id., at------- , 132 S. Ct., at 1297. To answer
that question, we 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. Id., at------- , 132 S.
Ct., at 1298, 1297. We have 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.” Id., at------- , 132 S. Ct., at
1294.
Id.
“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 Tex. as, LLCv. 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 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). There is no definitive rule to determine what constitutes an
“abstract idea.” Rather, the Federal Circuit has explained that “both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
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those claims already found to be directed to an abstract idea in previous
cases.” Enfish, 822 F.3d at 1334; see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent eligible under § 101, “the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided”).
The Examiner concludes claim 1 is directed to the abstract idea of
“collecting data, recognizing certain data within the collected data set, and
storing that recognized data in a memory (receive a set of search criteria and
a set of sustainability factors).” Final Act. 7; see also Ans. 19 (“The concept
of the invention as shown below is related to collecting, manipulating and
displaying data and is similarly abstract.”). The Examiner further
determines “[cjlaim 1 is directed to an abstract idea similar to concepts that
have been identified by the courts to be an abstract process, such as 1)
collecting data, 2) manipulating data and 3) displaying data.” Ans. 19
(citing Elec. Power, 830 F.3d at 1353—54).
We agree with the Examiner that the claims are directed to an abstract
idea of data gathering and manipulation. In this regard, the claims of the
instant application are similar to the claims in Electric Power, which did
“not go beyond requiring the collection, analysis, and display of available
information in a particular field, stating those functions in general terms,
without limiting them to technical means for performing the functions that
are arguably an advance over conventional computer and network
technology.” 830 F.3d at 1351. Specifically, our reviewing court held that
“collecting information, including when limited to particular content (which
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does not change its character as information), as within the realm of abstract
ideas” and that “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.” Id. at 1353—54 (citations
omitted). As in Electric Power, the combination of various abstract ideas
relating to data collection and analysis is itself an abstract idea.
For the reasons discussed below, Appellant does not persuade us that
the Examiner erred.
Appellant argues claim 1 is not abstract because the subject matter of
the claim is not identified in the list of categories of abstract ideas set forth
in the June 25, 2014 Memorandum issued by the Deputy Commissioner for
Patent Examination Policy entitled “Preliminary Examination Instructions in
view of the Supreme Court Decision in Alice Corporation Ply. Ltd. v. CLS
Bank International, et al.” (hereinafter “Memorandum”). App. Br. 7—9.
However, the Memorandum is not binding on the Board; instead, we follow
Supreme Court and Federal Circuit precedent. See In re Fisher, 421 F.3d
1365, 1372 (Fed. Cir. 2005) (“The MPEP and Guidelines ‘are not binding on
this court.”’) (citations omitted). Appellant has not cited any persuasive
legal authority demonstrating that abstract ideas are limited to the four
categories set forth in the Memorandum. Instead, as our reviewing court
instructs us, we “examine earlier cases in which a similar or parallel
descriptive nature can be seen—what prior cases were about, and which way
they were decided.” Amdocs, 841 F.3d at 1294.
Appellant further argues the claim is not directed to an abstract idea
because the claim, when taken as a whole, transforms systems and methods
to ones “that are capable of producing useful information related to
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sustainability of the production methods from the data.'” App. Br. 9.
However, because Appellant’s argument is not commensurate with the scope
of the claim, we are not persuaded that the Examiner erred.
Specifically, claim 1 recites a sustainability search system that
receives data and then evaluates that data. See App. Br. 13 (Claims App.).
However, claim 1 does not require the system to do anything with the
evaluation. See Id. Accordingly, contrary to Appellant’s assertion, the
claimed invention does not transform the system from an abstract idea to
patent-eligible subject matter.
Two Supreme Court cases discussing patent-eligible subject matter
are instructive. In Parker v. Flook, the Supreme Court held that because the
claim merely calculated an alarm limit—admittedly using a new and
presumably better method—it was not directed to patent-eligible subject
matter. 437 U.S. 584 (1978). In Diamond v. Diehr, the Supreme Court
found a process used to operate a rubber-molding press to be directed to
patent-eligible subject matter where the process acts to transform “an article,
in this case raw, uncured synthetic rubber, into a different state or thing.”
450 U.S. 175, 184 (1981). As the Court recognized, “[transformation and
reduction of an article ‘to a different state or thing’ is the clue to the
patentability of a process claim that does not include particular machines.”
Id. (quoting Gottschalkv. Benson, 409 U.S. 63, 70 (1972)).
As properly construed, the claims merely evaluate data and do not
recite any transformation of material. Accordingly, we determine claim 1 is
similar to those in Flook, which rely on various unknown variables to
compute a value but does not apply that value, and bear little, if any,
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similarly to those found patent-eligible in Diehr, in which a material was
transformed.
Appellant further argues claim 1 is similar to claims found not to
encompass an abstract idea in two recent Federal Circuit cases, Enfish and
McRo,2 App. Br. 10-12; Reply Br. 3^4. However, for the reasons discussed
below, we are not persuaded the claimed subject matter in the instant appeal
are sufficiently similar to the claims found to be patent-eligible in those
cases.
Appellant contends that in Enfish, the claims were “directed at a self-
referential table that has a specific type of data structure designed to improve
the way a computer stores and retrieves data in memory” and “directed to a
specific implementation of a solution to a problem in the software arts, and
thus are not directed to an abstract idea.” App. Br. 10 (emphasis omitted).
Appellant argues that, like the claims in Enfish, the claim 1 has a query, data
elements, a score, and query results. Id. Thus, Appellant argues, the
pending claims “are not merely directed to collection of data, but include a
specific implementation of a solution employing specific data structures that
improve a way that industrial processes may be monitored and/or managed,
as in Enfish” Id.', see also Reply Br. 3.
We disagree. In Enfish, the Federal Circuit relied on the distinction
made in Alice between improvements to computer functionality and uses of
existing computers as tools in aid of processes focused on “abstract ideas.”
See Enfish, 822 F.3d at 1335—36; see also Alice, 134 S. Ct. at 2358—59. The
present case is different from Enfish because the focus of the claims here is
2 McRo, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016)
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not on an improvement in computers as tools or upon an innovative way to
use computers or other devices; but, instead, the claim is directed to an
abstract idea that uses generic and routinely used computer equipment as
tools. That is, here, the arguably innovative technique of claim 1 is
inextricably a part of the abstract idea of manipulating data itself. Moreover,
nothing in claim 1, understood in light of the Specification, requires
anything other than an off-the-shelf, conventional computer equipment used
for collecting and processing/analyzing various information/data.
Appellant further contends the claims “in McRo were related to
allowing computers to produce ‘accurate and realistic lip synchronization
and facial expressions in animated characters’ that were previously produced
by human animators.” App. Br. 11 (citing McRo, slip op. at 22). According
to Appellant:
When determining that the claims at issue were directed to
eligible subject matter, the Federal Circuit noted that the
process recited in the claims goes beyond merely organizing
information into a new form or carrying out a fundamental
economic practice. See [McRo, slip op. at] 25. Indeed, the
Federal Circuit focused on the claimed process that uses a
combined order of specific rules that renders information into a
specific format that is then used and applied to create desired
results. See id. The Federal Circuit followed stated that the
“concern underlying exceptions to section 101 is not tangibility,
but preemption.” Id. The Federal Circuit then concluded that
when looked as a whole, the claims are directed to a patentable,
technological improvement over the existing, manual 3-D
animation techniques. See id., p. 27.
Id. Based on the above analysis of McRo, Appellant argues the pending
claims are patent eligible because
[the] specific rules set forth in the claims allow for improved
management and monitoring of industrial processes, and
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mitigate problems related to “vague or ambiguous indicators of
a products’ actual environmental or socio-environmental
impact,” “undesirable weight to . . . factors that are important to
different people and groups,” among other improvements over
approaches prior to this application.
Id. (citing Spec. 1 5); see also Reply Br. 4.
We are not persuaded by Appellant’s argument. First, Appellant’s
argument is not commensurate with the claims. Although the Specification,
discusses how the various rules set forth in the claims can be used, the
claims do not recite those uses. See App. Br. 13 (Claims App.).
Second, we are not persuaded by Appellant’s argument that there is
any similarity between the pending claims and the reason the claims were
found not directed to an abstract idea in McRo:
Here, the structure of the limited rules reflects a specific
implementation not demonstrated as that which “any [animator]
engaged in the search for [an automation process] would likely
have utilized.” Myriad,[3] 4133 S. Ct. at 2119—20 (quotation
marks omitted). By incorporating the specific features of the
rules as claim limitations, claim 1 is limited to a specific
process for automatically animating characters using particular
information and techniques and does not preempt approaches
that use rules of a different structure or different techniques.
See Morse,[4] 56 U.S. at 113. When looked at as a whole, claim
1 is directed to a patentable, technological improvement over
the existing, manual 3—D animation techniques. The claim uses
the limited rules in a process specifically designed to achieve an
improved technological result in conventional industry practice.
Alice, 134 S. Ct. at 2358 (citing Diehr, 450 U.S. at 177, 101 S.
Ct. 1048).
McRo, 837 F.3d at 1316.
3 Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576 (2013).
4 O Reilly v. Morse, 56 U.S. 62 (1853).
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Unlike the claims in McRo, claim 1 is not directed to a technological
improvement. Instead, claim 1 merely uses a generic computer to
manipulate data using conventional processes like those in Electric Power.
Appellant also argues the Examiner’s comparison of the pending
claims to those found to be an abstract idea in Electric Power is incorrect.
Reply Br. 5—6. Specifically, Appellant argues “the present claims include
significantly more than mere collection, analysis, and display of available
information in the field of sustainability.” Id. at 5. Instead, according to
Appellant, the claims “include [] at least an interaction between user and
system.” Id. (emphasis omitted). Additionally Appellant contends “the
evaluation component employing custom sustainability factors and weights
are technical means for performing the search that are specific to
sustainability factor analysis in industrial production, and thus, are beyond
conventional computer and network technology. Accordingly . . . they go
beyond routine collection, analysis, and display.” Id. at 5—6.
We are not persuaded by Appellant’s argument. First, we disagree
that the inclusion of user provided rules makes the claim less abstract. In
fact, contrary to Appellant’s assertion, using a computer to implement
human provided rules is an abstract idea. See SmartGene Inc. v. Adv. Bio.
Labs. SA, 555 Fed. Appx. 950 (Fed. Cir. 2014); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011). Moreover, Appellant has
not cited any case in which the use of user input has been a critical factor in
finding a claim not an abstract idea. Second, we disagree that the use of
customizable factors and weights makes the claim any less abstract. Instead,
those are merely elements of the abstract idea of evaluating data.
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The Examiner further determines that claim 1 does not recite
something more to transform the abstract idea into patentable subject matter.
See Final Act. 8—9; Ans. 20—22. Specifically, the Examiner determines:
Scoring a data element on one or more of a plurality of
attributes is well-known and expected in the art and does not
quality as significantly more. Significantly more is not realized
when at a high level of generality, a general purpose computer
performs generic functions that are well-known, routine and
conventional in the technological art, specifically, at least one
processor, a memory and a product/article of manufacture.
Final Act. 8—9; see also Ans. 21 (determining the claim “merely describes]
the functions of the abstract idea without particularity. This is not sufficient
under step two.”), 21—22 (determining the claims merely recite well-
understood, routine, and conventional activity).
Appellant “contend[s] that the present claims include meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment.'1'’ App. Br. 12. Specifically,
Appellant relies on the Federal Circuit’s decision in Bascom5 and Amdocs to
argue that the pending claims recite something more. See App. Br. 12—15;
Reply Br. 4—5. For the reasons discussed below, we are not persuaded by
Appellant’s arguments. Instead, we agree with and adopt the conclusions
and determinations of the Examiner.
Appellant contends that in Bascom, “the Federal Circuit noted that the
claims do not merely recite the abstract idea of filtering content along with a
requirement to perform on generic components.” App. Br. 13 (citing
Bascom, slip op. at 16). Appellant also contends that Federal Circuit held
5 Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
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that the claims did not “preempt all manners to filter content.” Id. (citing
Bascom, slip op. at 16). Based on Bascom, Appellant argues that because
“[t]he ordered combination of these limitations transforms the alleged
abstract idea into a particular application of that idea” and the “claims do not
preempt all manners of collecting data,” the claims are patent-eligible. Id.
We are not persuaded by Appellant’s argument. The key to the
court’s holding in Bascom was the claims’ recitation of different elements at
specific locations to obtain benefits that could not be achieved by placing the
elements at the same location. 827 F.3d at 1350. Specifically, the court held
that “an inventive concept can be found in the non-conventional and non­
generic arrangement of known, conventional pieces.” Id.
The inventive concept described and claimed in the ‘606 patent
is the installation of a filtering tool at a specific location, remote
from the end-users, with customizable filtering features specific
to each end user. This design gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a
filter on the ISP server. BASCOM explains that the inventive
concept rests on taking advantage of the ability of at least some
ISPs to identify individual accounts that communicate with the
ISP server, and to associate a request for Internet content with a
specific individual account.
Id. (citations omitted).
Here, unlike in Bascom, Appellant has not offered any evidence that
the claims recited a “non-conventional and non-generic arrangement of
known, conventional pieces.” See id. Instead, the claims simply recite a
conventional processor programmed to perform various types of
conventional data analysis.
Nor are we persuaded by Appellant’s contention the pending claims
do not preempt the field. Even if that contention was true, although the
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extent of preemption is a consideration, the absence of complete preemption
is not dispositive. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.”); Ultramercial, Inc. v. Hulu LLC, 722 F.3d
1335, 1346 (Fed. Cir. 2013) (“[T]he Supreme Court has stated that, even if a
claim does not wholly pre-empt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or post-solution
activity—such as identifying a relevant audience, a category of use, field of
use, or technological environment.”) (citations omitted), vacated and
remanded, WildTangent, Inv. v. Ultramercial LLC, 134 S. Ct. 2870 (2014)
(remanding for consideration in light of Alice, 134 S. Ct. 2347). Based on
the totality of the analysis, any lack of preemption is not sufficient to
demonstrate that the Examiner erred and that the claims are patent-eligible.
According to Appellant, in Amdocs, “the Federal Circuit explained the
claims are directed to an unconventional solution to a technological problem
and that the fact that the solution requires arguably generic components, the
claims’ enhancing limitations requires the generic components to operate in
an unconventional manner to achieve the improvement.” App. Br. 13—14
(citing Amdocs, slip op. at 22—23). Appellant further explains that,
“[although the Federal Circuit noted that the claimed method involves some
arguably conventional components, the claim at issue also recites
unconventional solutions to a technology problem involving limitations that,
when considered individually and as an ordered combination recite an
inventive concept.” Id. at 14 (citing Amdocs, slip op. at 25).
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We are not persuaded by Appellant’s argument. Specifically, in
finding the claims in Amdocs patent-eligible, the Court held the claim was
directed to a technological problem:
In other words, this claim entails an unconventional
technological solution (enhancing data in a distributed fashion)
to a technological problem (massive record flows which
previously required massive databases). The solution requires
arguably generic components, including network devices and
“gatherers” which “gather” information. However, the claim’s
enhancing limitation necessarily requires that these generic
components operate in an unconventional manner to achieve an
improvement in computer functionality.
841 F.3d at 1288. Appellant has not persuasively argued nor presented any
evidence to demonstrate that claim 1 is directed to a technological problem.
Instead, we agree with the Examiner that processor recited in claim 1 “does
not produce a new or improved technological process for producing a
sustainability score for a manufactured product because the above features
of the search system are well-known and expected in the art.” Ans. 21.
Accordingly, we sustain the Examiner’s rejection of claim 1 as
directed to patent-ineligible subject matter, along with the rejection of claims
2—20, which are not separately argued.
Prior Art Rejections
Appellant argues the Examiner erred in finding Ohnemus discloses “a
query component. . . configured to . . . receive a set of search criteria and a
set of sustainability factors, wherein the set of search criteria comprises a
process employed by an industrial automation system to produce a product
or an article of manufacture, the product made by the process, the article of
manufacture of the process, a plant element carrying out the process or any
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combination thereof,” as recited in claim 1. See App. Br. 16—18; Reply Br.
6—7. According to Appellant, “Ohnemus merely discloses a system for
producing sustainability ratings for certain legal entities such as companies
and governments.” App. Br. 16 (citing Ohnemus 133); see also Reply Br.
6. Appellant further argues “that sustainability ratings for legal entities are
not the same as a system capable of evaluating sustainability at the level of’
the products or processes recited in claim 1. App. Br. 16—17. Appellant also
argues “[t]o the extent that Ohnemus discusses queries that may appear
similar to the query recited in the claims, the specification describes a query
that retrieve a rating of a legal entity based on product query.” Id. at 17; see
also Reply Br. 6—7. Finally, Appellant argues “while Ohnemus allows a
user to compare two different legal entities by querying for the products
produced by the legal entities, Ohnemus does not anticipate a system that
allows a user to compare two products based on sustainability of the
production process, as the recited claims allow.” App. Br. at 18.
The Examiner finds Ohnemus discloses “company rating system using
at least one non-economic factor stored in a database” and that a “similar
scoring can be made on the product level.” Final Act. 9—10 (citing Ohnemus
1130, 106). More specifically, the Examiner finds Ohnemus discloses,
Search criteria for products:
Paragraph 30: the present invention provides a system for
rating the sustainability of legal entities, such as companies and
governments, senior executives and products,
Paragraph 106: It can be appreciated that while the foregoing
discussion has concerned the rating of companies and
industries, a similar scoring can be made at the product level.
Thus, if suitable data were gathered and maintained in the data
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repository 720 to permit an assessment of the environmental,
social, economic, and/or governance impact of manufacturing
particular products, say soft drinks, then a sustainability rating
can be made on the basis of one product versus another.
Ans. 23.
We are not persuaded by Appellant’s argument the Examiner erred.
Instead, we agree with and adopt the Examiner’s findings. Specifically,
Ohnemus specifically states that it can be used to determine a suitability for
“legal entities, . . . senior executive, and products.” Ohnemus 130
(emphasis added). Ohnemus goes on to state “a similar scoring can be made
on a product level” Id. 1106 (emphasis added). As an example, Ohnemus
states a sustainability score can be generated for a specific product (such as a
soft drink) so that two products can be compared to each other “from a level
of corporate responsibility rather than on test or price.” Id. Therefore,
Ohnemus disclose that a sustainability score can be performed and search
based on a product.
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejection of claims 12 and 17, which are argued on the same
reasoning, and dependent claims 2—6, 8—10, 11—16, and 18—20, which are
not separately argued.
With respect to dependent claims 7 and 11, Appellant merely
contends that, because the additional references used in the rejections of
these claims (Dilorenzo and Djebarov) do not cure the shortcomings of the
Ohnemus applied against claim 1, the Examiner failed to make a prima facie
case of obviousness for these claims. App. Br. 19—20, 21. Because we
determine that the rejection of claim 1 is not erroneous for the reasons
discussed above, we sustain the rejections of these claims.
18
Appeal 2017-009503
Application 14/532,673
DECISION
For the above reasons, we affirm the Examiner’s decisions 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
19