Ex Parte Weinstein et al

Patent Trials and Appeals Board

May 13, 2019

14601272 - (D) (P.T.A.B. May. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/601,272 01/21/2015
27752 7590 05/15/2019
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Ben Weinstein
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.
13690 1082
EXAMINER
KYEREME-TUAH, AKOSUA P
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
05/15/2019 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEN WEINSTEIN, CHRISTOPHER GEROLD STOLTZ,
JOSE M. ORTEGA, BROOKS MONTGOMERY STEIN,
EDWARD DEWEY SMITH, III, and HENRIQUE A VEIR0 1
Appeal2018-003975
Application 14/601,272
Technology Center 3600
Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and LINZY T.
McCARTNEY, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claim 1. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, The Procter & Gamble Company is the real
party in interest. App. Br. 1.
Appeal2018-003975
Application 14/601,272
INVENTION
The invention is directed to a method for defining transportation
logistic needs for a product which involves determining the product's
environmental sensitivity, its transportation path and based upon a
simulation of the weather along the path determining the adverse effects of
environmental exposure during transportation. Spec. 1, 1. 19 - 2, 1. 6. Claim
1 is illustrative of the invention and is reproduced below.
1. A computer implemented method for defining transport
logistic needs for a product, the method comprising:
a) providing the product's environmental sensitivity
profile;
b) providing the product's shipment configuration
profile;
c) defining a product shipment path;
d) creating a weather model associated with the product
shipment path;
e) simulating the weather along the path during the
selected timing;
f) calculating an environmental exposure of the product
according to the shipment configuration profile and the
simulated weather;
g) determining adverse product effects according to the
environmental exposure and the environmental sensitivity
profile; and
h) altering at last one of the: product, product shipment
configuration, and product shipment path according to the
determined adverse product effects.
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Application 14/601,272
EXAMINER'S REJECTIONS 2
The Examiner rejected claim 1 under 35 U.S.C. § 101 for being
directed to patent-ineligible subject matter. Final Act. 8-11.
The Examiner rejected claim 1 under 35 U.S.C. § 102(a)(l) as being
anticipated by Hoyt (US 6,397,163 B 1; iss. May 28, 2002). Final Act.
11-14.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have not persuaded us of error in the
Examiner's rejections of claim 1 under 35 U.S.C. § 101 or 35 U.S.C.
§ 102(a)(l).
Rejection under 35 U.S.C. § 101
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 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 35 U.S.C. § 101: "[l]aws of
2 Throughout this Decision we refer to the Appeal Brief filed October 11,
2017 ("App. Br."); Final Office Action mailed May 12, 2017 ("Final Act.");
and the Examiner's Answer mailed November 28, 2017 ("Answer").
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nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 573 U.S. 208,216 (2014) (internal quotation marks and citation
omitted); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
70 (2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217-18 (citing Mayo, 566 U.S. at 75-77). In
accordance with that framework, we first determine what concept the claim
is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561
U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the
basic concept of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 573 U.S. at 221 (internal citation
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The United States Patent and Trademark Office "USPTO" recently
published revised guidance on the application of§ 101. USPTO's January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
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Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that
guidance, we first determine whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
("MPEP") § 2106.0S(a}-(c), (e}-(h) (9th Ed., Rev. 08.2017, Jan.
2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
ANALYSIS
Abstract Idea
The Examiner determines the claim is not patent eligible as it is
directed to a judicial exception without reciting significantly more. Final
Act. 9-10. Specifically, the Examiner determines the claim recites an
abstract idea, a mental process of obtaining and comparing data. Final Act.
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10, Answer 3 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, (Fed. Cir. 2011) and Electric Power Grp., LLC v. Alstom S.A., 830
F.3d 1350 (Fed. Cir. 2016)).
Appellants argue the Examiner's analysis is in error as the claim
recites "the tangible, rather than abstract, actions of: providing, creating,
simulating, calculating, and then making alterations, as opposed to an
abstract idea such as envisioning, or desiring, to make alterations" and as
such, "[t ]he claim is directed toward more than simply an idea of itself."
App. Br. 2.
We concur with the Examiner's finding that representative claim 1
recites elements directed to a mental process. Claim 1 recites limitations
"providing the product's environmental sensitivity profile"; "providing the
product's shipment configuration profile"; and "defining a product shipment
path." These limitations are data gathering steps, which typically do not
make an otherwise non-statutory claim statutory. CyberSource, 654 F.3d at
1370 ("mere data-gathering steps cannot make an otherwise non-statutory
claim statutory") (internal quotation marks, bracketed alterations, and
citations omitted). The step of "creating a weather model associated with
the product shipment path" is discussed in Appellants' Specification as
having a broad scope, being based upon heat and mass transfer principles or
may be simply assigning a constant value. Spec. 3, 11. 23-24, 4, 11. 11-15.
Thus, the broadest reasonable interpretation, is that the creation of a model
as merely selecting a constant value, which is also a data gathering step.
When, interpreting the model as just a constant value, the steps of
"simulating the weather along the path"; "calculating an environmental
exposure of the product"; and determining the adverse product effects are
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steps that a person can perform in their mind ( an observation, evaluation, or
judgment), and as such the claim recites a mental process. Our reviewing
court, in the Electric Power decision, cited by the Examiner, states "we have
treated 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." Electric Power Grp., 830 F.3d at 1354.
Finally, the step of "altering at least one of the: product, shipment
configuration, and product shipment path" are also steps a person could
perform in their mind, a judgment.
We are not persuaded by Appellants' argument that the Examiner
erred as the claim recites a tangible change in the system. As discussed
above, the claim merely recites data gathering and analysis, steps a person
could do in their mind, as such the claim recites a mental process. The step
of "altering one of the: product, shipment configuration and product
shipment path" does not recite a specific change in the product ( a tangible
change), rather it is just one alternative which is generically discussed in the
Specification and recited in the claim (see Spec. 8, 11. 15-17). Similarly
altering the shipment configuration or the path, is not a tangible change,
rather just a change in the planed logistics for the shipment. Thus,
Appellants' arguments have not persuaded us the Examiner erred in finding
claim 1 recites an abstract idea.
Practical Application/Significantly more than Abstract Idea
The Examiner finds that the claim does not include additional
elements that are sufficient to amount to more than the judicial exception.
Final Act.
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10. Appellants contend that the claim is directed to machines associated
with defining transport logistics and is directed to more than an abstract idea.
App. Br. 3.
We are not persuaded of error and concur with the Examiner. Claim 1
recites a "computer implemented method" and as discussed above, the
remainder of the limitations are directed to data gathering, and analysis that
a person could do in their mind. The recitation of the analysis being
performed on a computer is insufficient to transform the abstract idea to
patent eligible subject matter. "A claim that recites an abstract idea must
include 'additional features' to ensure 'that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea]."' Alice, 573 U.S.
at 221 (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic
computer implementation[] fail[ s] to transform that abstract idea into a
patent-eligible invention." Id. Appellants' Specification describes the
method as directed to solving the time-consuming problem of determining
environmental exposure of a product during transit. Spec. 1, 11. 19-28.
Thus, the method is not directed to improving the operation of the computer,
or a specific machine, rather it is a method for use in planning. Further, as
discussed above, the final method step of altering does not result in the
transformation of a product, and is just a plurality of alternative solutions,
which are generically discussed in the Specification.
Finally, the Examiner finds that the claim does not recite the use of
any novel or non-routine components. Answer 4. Appellants have not
contested this finding. Further, Appellants' Specification discusses using a
generic computer to perform the claimed method further providing support
for the Examiner's findings. See Spec. 11, 11. 8-25. Accordingly, we concur
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with the Examiner that claim 1 recites using well-known, routine, and
conventional devices.
In summary, Appellants' arguments have not persuaded us of error in
the Examiner's determination that the claim is directed to an abstract idea; a
mental process (an observation, evaluation, and judgement). Further,
Appellants' arguments have not persuaded us that the Examiner erred in
finding that the claim is not directed to: an improvement in the functioning
of the computer or to other technology or other technical fields; a particular
machine; performing or affecting a transformation of an article to a different
state or thing; and/or using a judicial exception in some meaningful way
beyond linking the exception to a particular technological environment such
that the claim as a whole is more than a drafting effort to monopolize the
judicial exception.
Accordingly, we sustain the Examiner's rejection of claim 1 under 35
U.S.C. § 101 as being directed to patent ineligible subject matter.
Rejection under 35 U.S.C. § 102(a)(l)
Appellants' arguments recite limitations d) through h) of claim 1 and
assert that they are not taught by Hoyt and specifically asserts that step d) is
not taught. App. Br. 5. Appellants argue that Hoyt teaches providing
ambient temperature data from a database and that gathering data is not
creation of a temperature model. Id. Appellants state the claim is to
"creation of a mathematical model of the weather relevant to the selected
travel route not merely gathering historical data." App. Br. 5---6. Appellants
argue that Hoyt teaches the temperature data is applied to the product
container rather than "using the claimed weather model to simulate the
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weather along the route in all of its possible variations." Id. at 6. Further
Appellants argue, "[a]s no weather model was created and no simulation of
the weather was undertaken, no calculation of an environmental exposure
based upon the simulated weather, determination of an adverse effect
according to the calculated environmental exposure, or alteration according
to the determined adverse effect is possible." Id.
The Examiner provides a comprehensive response finding that Hoyt
teaches using the ambient temperature along the defined route meets the
claimed weather model. Answer 5---6 (citing Hoyt, col. 6, 11. 1-7). We
concur with the Examiner. We note claim 1 does not recite the model is a
mathematical model, and as discussed above, the model may just be a
constant temperature and an ambient temperature. See generally Spec. 3, 4.
Further, in as much as Appellants' arguments are drawing a distinction
between temperature and weather, which is neither claimed or required by
the Specification, and Hoyt contemplates tracking other environmental
parameters of weather such humidity and cloud cover (see col. 5, 11. 1--4,
11-12, col. 10, 11. 3-10, col. 11, 11. 29-30). Thus we are not persuaded that
the Examiner erred in finding that Hoyt teaches limitation d) directed to the
weather model.
Appellants' arguments directed to limitations e) through h) are
premised upon Hoyt not teaching the modeling limitation of limitation d)
and are, thus, not persuasive for the reasons discussed above. Nonetheless,
the Examiner has provided a detailed response with respect to the limitations
of e) simulating, f) calculating environmental exposure, g) determining
adverse product effects, and h) altering product or shipment, explaining how
Hoyt teaches these limitations. Answer 6-8 ( citing col. 6, 11. 7-14, 18-24,
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and col. 8, 11. 50-54). We have reviewed the teachings cited by the
Examiner and concur. We additionally note that claim 1 does not recite
simulating "the weather along the route in all of its possible variations" as
argued by Appellants on page 6 of the Brief. Thus, we are not persuaded of
error in the Examiner's anticipation rejection of claim 1 and we sustain the
rejection.
DECISION
We affirm the Examiner's rejections of claim 1 under 35 U.S.C. § 101
and under 35 U.S.C. § 102(a)(l).
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
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