Ex Parte Walker et al

Patent Trial and Appeal Board

Mar 7, 2017

12429795 (P.T.A.B. Mar. 7, 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.
12/429,795 04/24/2009 Marcia Elaine Walker 09AB094-US 1750
42982 7590 03/09/2017
Rockwell Automation, Inc./FY
Attention: Linda H. Kasulke E-7F19
1201 South Second Street
Milwaukee, WI 53204
EXAMINER
SINGH, GURKANWALJIT
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/09/2017 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):
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 2015-001374
Application 12/429,7951
Technology Center 3600
Before HUBERT C. LORIN, KENNETH G. SCHOPFER,
and AMEE A. SHAH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Marcia Elaine Walker, et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1—11, 13, 14, and 18—20. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Rockwell Automation Technologies, Inc. as the
real party in interest. App. Br. 2.
Appeal 2015-001374
Application 12/429,795
THE INVENTION
Claim 18, reproduced below, is illustrative of the subject matter on
appeal.
18. A method for facilitating sustainability tracking in connection with
use or consumption of a manufactured product comprising:
employing one or more sensors for monitoring a state of the
manufactured product during an entire lifecycle of the manufactured
product, wherein the state is monitored with respect to a set of
sustainability factors;
determining, via one or more computers, an impact to a
sustainability score associated with at least one sustainability factor
included in the set as a function of the state, wherein the impact
relates to energy consumption, energy efficiency, energy providers,
water usage or other resource utilization, emissions, carbon footprint,
waste, effluent, worker safety, corporate policy, labor policy,
regulatory mandates, or some combination thereof, associated with the
manufactured product; and
updating, via one or more computers, the sustainability score
based upon the impact.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sousa US 2008/0319812 A1 Dec. 25,2008
Jawahir, L. S., et al. Total life-cycle considerations in product design
for sustainability: A framework for comprehensive evaluation. PROC.
10th Int. Research/Expert Conf. (TMT 2006), Barcelona, Spain,
2006. [Jawahir]
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Application 12/429,795
The following rejections are before us for review:
1. Claims 1—11, 13, 14, and 18—20 are rejected under 35 U.S.C. §101 as
being directed to non-statutory subject matter.
2. Claims 11, 13, and 14 are rejected under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the
invention.
3. Claims 1—11, 13, 14, and 18—20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jawahir and Sousa.
ISSUES
Did the Examiner err in rejecting claims 1—11, 13, 14, and 18—20
under 35 U.S.C. §101 as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 11, 13, and 14 under
35 U.S.C. §112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which
applicants regard as the invention?
Did the Examiner err in rejecting claims 1—11, 13, 14, and 18—20
under 35 U.S.C. § 103(a) as being unpatentable over Jawahir and Sousa?
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.
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ANALYSIS
The rejection of claims 1-11, IS, 14 and 18-20 under 35 U.S.C. §101 as
being directed to non-statutory subject matter.
The Appellants argued these claims as a group. See Reply Br. 3—7.
We select claim 18 as the representative claim for this group, and the
remaining claims 1—11, 13, 14, 19, and 20 stand or fall with claim 18.
37C.F.R. §41.37(c)(l)(iv).
The Appellants set forth two general arguments: “The present claims
do not merely recite abstract ideas'1'’ (Reply Br. 3) and “The combination of
features recited by the present claims amount to significantly more than
the abstract ideas themselves'’'’ {id. at 5). Neither is persuasive as to error in
the rejection.
“The present claims do not merely recite abstract ideas ”
The Appellants specifically argue that “the present claims recite a
particular process (e.g., using information from periodic updates of the state
of the manufactured product) for determining the sustainability of products.”
Reply Br. 5. Emphasis added. But the question is not whether claims recite
subject matter with specificity.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) 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. Emphasis added.
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In that regard the Examiner found that the claim(s) is/are directed to
the abstract idea of sustainability monitoring and tracking for a product over
the course of the entire lifecycle of the product - obtaining a sustainability
score for the product. Ans. 3.
The Appellants challenge this finding on the ground that, as set forth
in Preliminary Examination Instructions in view of the Supreme Court
Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al.,
Memorandum, June 25, 2014, Andrew H. Hirshfeld, Deputy Commissioner
For Patent Examination Policy, “the present claims do not fall into any of
these categories of exemplary abstract ideas [“(1) fundamental economic
practices, (2) certain methods of organizing human activities, (3) ‘[a]n idea
of itself,” and (4) mathematical relationship s/formulas”] nor are the present
claims comparable in scope or context to the provided examples.” Reply
Br. 3. However, there is abundant evidence that monitoring and tracking are
building blocks of human ingenuity and as such are abstract ideas. “[I]n
applying the § 101 exception, we must distinguish between patents that
claim the ‘buildin[g] block[s]’ of human ingenuity and those that integrate
the building blocks into something more ... .” Alice, 134 S. Ct. at 2354.
Furthermore, monitoring and tracking are like concepts that the Federal
Circuit has held to be patent-ineligible abstract ideas. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (“[t]he
mere collection and organization of data” held patent-ineligible).
Our reviewing Court has provided further guidance regarding the
“directed to” inquiry set forth in Alice:
The “directed to” inquiry [ ] cannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every routinely
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patent-eligible claim involving physical products and actions involves a
law of nature and/or natural phenomenon—after all, they take place in
the physical world. See Mayo, 132 S. Ct. at 1293 (“For all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.”) Rather, the “directed to” inquiry
applies a stage-one filter to claims, considered in light of the
specification, based on whether “their character as a whole is directed
to excluded subject matter.” Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v.
MerialL.L.C., 2016 WL 1393573, at *5 (Fed. Cir. 2016) (inquiring into
“the focus of the claimed advance over the prior art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). It
can be helpful to determine whether “the claims at issue in [ ] can readily be
understood as simply adding conventional computer components to well-
known business practices” or not. Id. at 1338. See also Affinity Labs of
Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). The
specification supports viewing the claims as being directed more toward the
former category than the latter.
In that regard, the Specification states that “[t]he claimed subject
matter relates generally to monitoring the state of a manufactured product
and more particularly to determining a sustainability factor impact resulting
from the state.” Para. 1. Thus, in light of the Specification, it is reasonable
to find that claims are directed to monitoring and tracking. The Appellants
advocate for a more specific description that finds the claimed subject matter
directed to “monitoring the state of a manufactured product and more
particularly to determining a sustainability factor impact resulting from the
state” but that simply describes the abstract idea at a lower level of
abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed.
Cir. 2016) (“An abstract idea can generally be described at different levels of
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abstraction. As the Board has done, the claimed abstract idea could be
described as generating menus on a computer, or generating a second menu
from a first menu and sending the second menu to another location. It could
be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.”) Furthermore, the
more specific description the Appellants favor amounts to a practical
application of the monitoring and tracking concept. But that is not enough
to transform the monitoring and tracking concept form being an abstract
idea. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d at 1371
(“The Court [Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that
the recitation of a practical application for the calculation could alone make
the invention patentable.”)
The Appellants argue that
The present claims more closely resemble those in Diehr
[Diamond v. Diehr, 450 U.S. 175, 187 (1981)] than Flook and are
therefore believed to be patent eligible. That is, the claims at issue
involve systems and methods intended to determine a current or future
sustainability score for a product based on periodic updates about the
state of the manufactured product. In other words, the claims describe
systems and methods that quantitatively evaluate the sustainability of
a product based on decisions and actions that involve the product after
manufacturing. Previous systems and methods focused exclusively on
the types of materials and processes used to manufacture the product.
See Specification, paragraph 3. Therefore, as in Diehr, the present
systems and methods do include steps that require application of
mathematical equations on a computer, but each system or method,
when taken as a whole, transforms existing systems and methods for
evaluating the sustainability of a product.
Reply Br. 4-5. We disagree. A plain reading of claim 18 reveals that it
includes no step of manufacturing. Unlike the claims in Diehr, which were
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directed to “operating a rubber-molding press for precision molded
compounds with the aid of a digital computer,” claim 18 provides no similar
limitation. The preamble to claim 18 states that the subject matter is
“facilitating sustainability tracking in connection with use or consumption of
a manufactured product” Emphasis added. Then the claim presents three
steps: “employing one or more sensors for monitoring;” “determining, via
one or more computers, an impact to a sustainability score,” and, “updating,
via one or more computers, the sustainability score based upon the impact.”
One practicing the claimed method would not be placed in the same position
of performing a manufacture as one would be in practicing the Diehr
method. Rather, claim 18 is like the claims in Electric Power Group v
Alstom S.A. (Fed. Cir., 2015-1778, 8/l/2016)(see US 7,233,843 B2). Like
claim 18, the claims in Electric Power involved, inter alia, monitoring.
Similarly, the Court in Electric Power found such claims directed to an
information collection and analysis abstract idea.
Finally, the Appellants “contend that the present claims would not
cause pre-emption of the field of sustainability tracking.” Reply Br. 5. This
is not a persuasive argument. “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir.), cert, denied, 136
S. Ct. 701, 193 L. Ed. 2d 522 (2015)] (“[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”)."
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“The combination of features recited by the present claims amount to
significantly more than the abstract ideas themselves ”
The appellants contend that the present claims clearly provide
improvements in sustainability engineering. More specifically, the
ability of the recited physical computing devices to determine
sustainability scores for manufactured products based on periodic
updates about the state of the products improves consumer and
supplier awareness of sustainability for various products and provides
information for product design and manufacturing decisions.
In addition, the appellants contend that the present claims
include meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. More
specifically, the meaningful limitations include the recited physical
computing devices generating sustainability scores for a product
based on periodic updates about the state of the manufactured
product. Indeed, it is these meaningful recitations as provided in the
claims at issue that prevent pre-emption in the field of sustainability
tracking by the present claims.
Reply. Br. 5-6. The contentions are unpersuasive as to error in the rejection.
The contentions are a reiteration of the arguments made with respect
to step one of the Alice framework; that is, that the method as claimed is
directed to a specific application of monitoring and tracking.
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.’” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). We need to “consider the elements of each claim both individually
and ‘as an ordered combination’ to determine whether the additional
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elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).
In that regard, we see nothing in claim 18 that transforms the
monitoring and tracking abstract idea into a patent-eligible application. The
Specification discloses generic devices for performing the steps as claimed
(see para. 44 for monitoring sensors and paras. 57—63 for generic score­
determining computers). In light of the Specification, claim 18 reasonably
broadly covers a monitoring and tracking scheme performed via generic
devices well known for their capability to perform said functions as a matter
of routine. “[T]he use of a computer in an otherwise patent-ineligible
process for no more than its most basic function—making calculations or
computations—fails to circumvent the prohibition against patenting abstract
ideas and mental processes.” Bancorp Services, L.L.C. v. Sun LifeAssur.
Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). To be sure,
claim 18 calls for “sensors” rather than a generic computer per se. But that
does not adequately transform the abstract idea to which the claims as whole
are directed to. This is so because the claims term “sensors” reasonably
broadly covers any device that senses data, including for example cameras
and devices with “optical state recognition module[s]” (see Spec. para. 44),
such as scanners. In that regard, see Content Extraction & Transmission v.
Wells Fargo Bank, N.A., 776 F.3d 1343, 1348 (Fed. Cir. 2014) (“There is no
‘inventive concept’ in CET’s use of a generic scanner and computer to
perform well-understood, routine, and conventional activities commonly
used in industry.”).
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Although the scheme is limited to a particular technological
environment - that is “generating sustainability scores for a product based
on periodic updates about the state of the manufactured product” (Reply Br.
6) as the Appellants have argued - “[limiting the field of use of the abstract
idea to a particular existing technological environment does not render any
claims less abstract.” Affinity Labs, 838 F.3d at 1258.
We have considered all the arguments set forth in the Reply Brief and,
for the foregoing reasons, find them unpersuasive as to error in the rejection.
Accordingly, the rejection is sustained.
The rejection of claims 11, 13, and 14 under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention.
Regarding claim 11, the Examiner finds that “it is unclear what it
means to update a label (in lieu of the lack of clarity of what this label is in
the first place) and how this updating takes place” and “[i]t is unclear what
the indicia is and how it is associates with any combination of the current
sustainability score, a future sustainability score, or the impact value. The
claim is left completely open and unclear.” Final Act. 28. The Examiner
finds claim 13 also contains unclear language. The Appellants disagree. We
find that the Appellants have the better position. See App. Br. 5—10.
The difficulty with the Examiner’s determination is that the
Specification has not been taken into consideration. “That determination
requires a construction of the claims according to the familiar canons of
claim construction. Only after a thorough attempt to understand the
meaning of a claim has failed to resolve material ambiguities can one
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conclude that the claim is invalid for indefiniteness.” All Dental Prodx LLC
v. Advantage Dental Prods. Inc., 309 F.3d 774, 780 (Fed. Cir. 2002). The
familiar canons of claim construction require that claims be given the
broadest reasonable construction in light of the Specification as it would be
interpreted by one of ordinary skill in the art.
For example, the Specification discloses the claimed “label update
704 can relate to or include a set of instructions for adjusting a product label
or an interface presented or displayed by product 108.” Spec. para. 45.
Thus, the claimed “label update” is associated with adjusting a product label.
In light of the Specification, it is not unclear. Rather, the Examiner has
made a case for the breadth of the claim, but not its indefmiteness. Cf. In re
Goffe, 526 F.2d 1393, 1398 (CCPA 1975) (“The mere fact that the claims
cover a large number of possible process steps and imaging member
materials does not in and of itself make the claims indefinite.”) The phrase
“a label update” is indeed immense, “[hjowever, ‘Breadth is not
indefmiteness.’” In re Robins, 429 F.2d 452, 458 (CCPA 1970)(citations
omitted).
We reach the same conclusion as to the claim 11 term “indicia” (see
para. 5: “other indicia or representation of the sustainability score or other
sustainability metrics”) as well as those at issue with respect to claim 13.
The rejection is not sustained.
The rejection of claims 1—11, IS, 14, and 18—20 under 35 U.S.C. § 103(a) as
being unpatentable over Jawahir and Sousa.
Independent claim 1 - and thus, claims 2—11, 13, and 14 depending
from claim 1 as well - includes the limitation “an acquisition component
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that, in operation, receives at least one status update associated with a state
of a manufactured product during a product lifecycle of the manufactured
product.” We agree with the Appellants that Jawahir fails to disclose this.
The Examiner found said claim limitation disclosed at “[p]age 3, first
paragraph - page 7, last paragraph, page 6, first paragraph - third paragraph
[see steps 1 and 2]” of Jawahir. Final Act. 30. We have reviewed said
disclosure but have been unable to find an acquisition component as
claimed. The Examiner (Ans. 9) appears to equate the statement “Product
developers will have to conduct a detailed life-cycle assessment (LCA) of all
influencing factors that they have identified in the previous step to obtain the
absolute values of these factors to represent the anticipated sustainability
levels” (Jawahir, page 6, Step 2) with the limitation at issue. However, that
still does not show Jawahir discloses a “status update” as claimed.
Obtaining an absolute value as Jawahir discloses does not lead one of
ordinary skill to “an acquisition component that, in operation, receives at
least one status update'1'’ as claimed.
The other independent claim, claim 18 - and thus claims 19 and 20
depending from claim 18 as well — includes the limitation “employing one or
more sensors for monitoring a state of the manufactured product during an
entire lifecycle of the manufactured product.” We agree with the Appellants
that the cited prior art fails to disclose this.
The Examiner relied on findings relative to claim 1. See Final Act.
39. But, unlike claim 18, claim 1 does not include a limitation to “sensors.”
There is a discussion about “sensors” with respect to claim 10 and paras
18—21, 36-45 and claims 11—16 of Sousa are relied on. It would appear that
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Sousa is the evidence the Examiner means to rely on to find that said claim
18 limitation to “sensors” was disclosed in the prior art. The Answer
confirms this. See Ans. 31. Nevertheless, we agree with the Appellants that
“Sousa’s system is intended to be used only in product design, not during a
lifecycle of the product.” App. Br. 18. As the Appellants point out, this is
shown in para. 45 of Sousa (“In operation, the users 102 are using the
system 100 to answer direct LCA questions and perform LCA-centric ‘what
if scenarios in an effort to design their products more sustainably.”) We do
not see any disclosure of “the use of sensors in monitoring in product
lifecycle environments” as there Examiner found.
Accordingly, the rejection is not sustained on the ground that a prima
facie case of obviousness has not been made out in the first instance by a
preponderance of the evidence.
CONCLUSIONS
The rejection of claims 1—11, 13, 14, and 18—20 under 35 U.S.C. §101
as being directed to non-statutory subject matter is affirmed.
The rejection of claims 11, 13, and 14 under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention is
reversed.
The rejection of claims 1—11, 13, 14, and 18—20 under 35 U.S.C.
§ 103(a) as being unpatentable over Jawahir and Sousa is reversed.
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DECISION
The decision of the Examiner to reject claims 1—11, 13, 14, and 18—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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