International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardMay 28, 202014816548 - (D) (P.T.A.B. May. 28, 2020) Copy Citation 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. 14/816,548 08/03/2015 Douglas A. Wood AUS920140128US2 4532 134677 7590 05/28/2020 Terrile Cannatti & Chambers, LLP IBM - POU PO Box 203518 Austin, TX 78720 EXAMINER LINDSEY III, JOHNATHAN J ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 05/28/2020 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): USPTO@dockettrak.com tmunoz@tcciplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DOUGLAS A. WOOD Appeal 2019-006149 Application 14/816,548 Technology Center 3600 Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and BRADLEY B. BAYAT, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–6. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the assignee, International Business Machines Corp. Appeal Br. 1. Appeal 2019-006149 Application 14/816,548 2 CLAIMED SUBJECT MATTER The claimed invention relates to a method “for automating the layout of a space layout based upon organization requirements and space constraints.” Spec. ¶ 2. Sole independent claim 1, reproduced below, is representative of the subject matter on appeal: 1. A computer-implemented method for automating the layout of a space, comprising: receiving a first set of organization structure data associated with an organization structure, the organization structure data defining how activities are directed to achievement of organization aims, the activities comprising task allocation, coordination and supervision, the first set of organization structure data being received by an integrated workplace management system (IWMS), the organization structure data comprising data associated with an organization structure of an organization, the organization structure data comprising space entitlement rules of the organization, the space entitlement rules comprising whether an organizational role is entitled to an office, a minimum area for the space associated with the organizational role, a placement of the space associated with the organizational role and a feature associated with the organizational role; receiving a first building information model (BIM) comprising a first set of space constraint data associated with a first space, the first BIM being received by the IWMS; processing the first set of organization structure data and the first set of space constraint data to automatically generate a first space layout corresponding to the first space, the processing being performed by the IWMS; and, storing the first space layout in a BIM, the BIM comprising a shared knowledge resource for information about the first space layout, the BIM representing the first space layout as a combination of objects, each object of the combination of objects within the BIM having associated geometry, relations and attributes, the BIM allowing extraction of different views of the first space layout, each of the different views being based on a single definition of each object instance. Appeal 2019-006149 Application 14/816,548 3 REJECTIONS The Examiner rejected claims 1–6 under 35 U.S.C. § 101 as directed to a judicial exception without something more. The Examiner rejected claims 1–3 under 35 U.S.C. § 103 as obvious over Nagy et al. (US 2013/0246108 A1, pub. Sept. 19, 2003), Mohammed A. Hassanain, “Analysis of factors influencing office workplace planning and design in corporate facilities”, Journal of Building Appraisal, Vol. 6, No. 2, 2010, pp. 183–97 (“Hassanain”), Robin S. Liggett, “Automated facilities layout: past, present and future”, Automation in Construction 9, 2000, pp. 197–215 (“Liggett”), and Rasane et al. (US 2013/0169681 A1, published July 4, 2013) (“Rasane”). The Examiner rejected claim 4 under 35 U.S.C. § 103 as being unpatentable over Nagy, Hassanain, Liggett, Rasane, and Applicant- Admitted Prior Art (originally Official Notice). Claims Rejected 35 U.S.C. § Reference(s)/Basis 1–6 101 Eligibility 1–3 103 Nagy, Hassanain, Liggett, Rasane 4 103 Nagy, Hassanain, Liggett, Rasane, AAPA OPINION Rejection under 35 U.S.C. § 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract Appeal 2019-006149 Application 14/816,548 4 ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). 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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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. Kappos, 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 (Gottschalk v. 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 (1854))); 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 statutory does not become nonstatutory simply because it uses a Appeal 2019-006149 Application 14/816,548 5 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 turn 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 (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) (alterations in original). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO has published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: Appeal 2019-006149 Application 14/816,548 6 (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”) § 2106.05(a)–(c), (e)–(h)). 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 § 2106.05(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 Guidance. Prong One of Revised Step 2A of the Guidance The Appellant argues independent claim 1 and dependent claims 2–6 together as a group (Appeal Br. 2), so we select claim 1 as representative of the group. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determines the claims describe a method of analyzing information using mathematical techniques, similar to claims in SAP America, Inc. v. Investpic LLC, 898 F.3d 1161 (Fed. Cir. 2018), Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016), and Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Final Act. 2–3. The Examiner further finds the processing of information to generate a space layout is a mental process. Answer 4. Appeal 2019-006149 Application 14/816,548 7 Claim 1 includes the limitation “processing the first set of organization structure data and the first set of space constraint data to . . . generate a first space layout corresponding to the first space.” The Specification describes that “organization structure data includes space requirement and other information associated with an individual’s role.” Spec. ¶ 33. The Specification further describes that “space constraint data” may include data related to various architectural and physical characteristics of the target space, such as its shape and associated dimensions,” “the shape, dimensions, structural elements, and other aspects of the building shell that contains the target space,” “existing internal space divisions, the position of elevators, escalators, restrooms, kitchen facilities and other building services that are typically permanent,” “architectural data associated with the position and capacity of electrical and HVAC services, and the structural parameters of the target space,” “financial data, such as the average cost per square foot or associated utility costs,” or “legal data, such as the contractual terms of a lease or legal restrictions on the use of the space.” Spec. ¶ 42 (cited at Appeal Br. 2). The Specification does not describe the method by which a space layout is automatically generated from processing organization structure data and space constraint data, but does describe that “no known approach combines the physical constraints of a given building, and the business needs of the organization using the space, to provide an automated layout of business spaces.” Spec. ¶ 5. Based on Figures 4A and 4B, we construe a space layout to be a top-view drawing that graphically lays out an area of a building with walls, doors, furniture, and other physical objects, such a blueprint that includes furniture and fixtures. See Spec. ¶ 40. Appeal 2019-006149 Application 14/816,548 8 Drawings of this type have been created manually for ages. Taking into consideration data, such as shape, dimensions, and space requirements is a normal, mental process the designer goes through when creating a layout drawing. Because the person creating a layout drawing thinks about the input data requirements and constraints before and while creating the layout, the “processing” step is one that is normally performed mentally by a person. This is done by observing the organization and constraint data, evaluating it, making judgments about the data, and then creating a graphical layout drawing. Steps that can be performed mentally are encompassed within the type of judicial exception to patentability established by our reviewing courts. See Guidance at 52, n.14. Because the claimed invention relates to “automating the layout of a space layout based upon organization requirements and space constraints,” (Spec. ¶ 2), we find, based on the “processing” step, that the claim is directed to a judicial exception in the form of concepts performed in the human mind. Prong Two of Revised Step 2A of the Guidance Because we determine that the claim recites a judicial exception, the next step is to evaluate whether the claim recites “additional elements,” such that the judicial exception is integrated into a “practical application.” Guidance at 54. We use the term “additional elements” for “claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception.” See Guidance at 55 n.24. The “additional elements” in claim 1 are as follows: receiving a first set of organization structure data associated with an organization structure, the organization structure data defining how activities are directed to achievement of organization aims, the activities comprising task allocation, Appeal 2019-006149 Application 14/816,548 9 coordination and supervision, the first set of organization structure data being received by an integrated workplace management system (IWMS), the organization structure data comprising data associated with an organization structure of an organization, the organization structure data comprising space entitlement rules of the organization, the space entitlement rules comprising whether an organizational role is entitled to an office, a minimum area for the space associated with the organizational role, a placement of the space associated with the organizational role and a feature associated with the organizational role; receiving a first building information model (BIM) comprising a first set of space constraint data associated with a first space, the first BIM being received by the IWMS; . . . automatically . . . and, storing the first space layout in a BIM, the BIM comprising a shared knowledge resource for information about the first space layout, the BIM representing the first space layout as a combination of objects, each object of the combination of objects within the BIM having associated geometry, relations and attributes, the BIM allowing extraction of different views of the first space layout, each of the different views being based on a single definition of each object instance. The first two limitations, each reciting a “receiving” step, are directed to data gathering and thus are insignificant extra-solution activity. Guidance at 55; see also MPEP § 2106.05(g). The last limitation, that stores the layout and associated data, is a step that essentially generates and delivers output of the judicial exception step, and is also insignificant extra-solution activity. Guidance at 55; see also MPEP § 2106.05(g); Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (“Flook stands for the proposition that the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant postsolution activity.”’) (quoting Diehr, 450 U.S. at 191–92). Appeal 2019-006149 Application 14/816,548 10 The claim also requires that the “processing step” create the layout “automatically.” Because the Specification describes that “computer readable program instructions may be provided to a processor of a general purpose computer” (Spec. ¶ 22), we construe “automatically” to mean “performed by a computer.” Continuing the analysis, we note the method is directed to “automating the layout of a space layout based upon organization requirements and space constraints” (Spec. ¶ 2), and as such the claimed method does not improve another technology, because any improvement recited by the claims concerns improvements in the process of automating the layout of a space layout based upon organization requirements and space constraints. Guidance at 55; see also MPEP § 2106.05(a). The Specification describes that the processing is conducted by a general purpose computer (Spec. ¶ 22); the claim does not define or rely on a “particular machine.” Guidance at 55; see also MPEP § 2106.05(b). Further, the method does not transform matter. Guidance at 55; see also MPEP § § 2106.05(c). The method has no other meaningful limitations (MPEP § 2106.05(e)), and thus merely recites instructions to execute the recited judicial exceptions on a computer as a tool (MPEP § 2106.05(f)). Guidance at 55. As such, based on the guidelines articulated in the Guidance and MPEP, we determine that claim 1 does not integrate the recited judicial exception into a “practical application.” Appeal 2019-006149 Application 14/816,548 11 Step 2B of the Guidance In Step 2B, we consider whether an “additional element,” or combination of “additional elements,” adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which would be considered “something more” than the judicial exception. Guidance at 56. However, the “additional elements” identified above represent either a general-purpose computer, or steps that those computers normally perform, including the receiving and output steps, these steps are well-understood, routine, and conventional, because the operations of storing, analyzing, receiving, and writing data are primitive computer operations found in any computer system. See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those functions can be achieved by any general purpose computer without special programming.”). The “additional elements” thus do not introduce anything which is not already well-understood, routine, and conventional. Thus, our analysis of claim 1 under the Guidance leads us to understand that the claim is directed to an abstract idea without something more. The Appellant’s Arguments We are not persuaded by the Appellant’s argument that “the claims do not per se recite . . . mental processes.” Appeal Br. 2; see also Reply Br. 1 (“the claims do not per se (i.e., by itself) recite . . . mental processes”), Appeal 2019-006149 Application 14/816,548 12 Reply Br. 2 (“the claims include far more than a per se recitation [of] . . . mental processes”). As we established above, in our analysis, the claim is directed to an abstract mental “processing” step, and the additional limitations do not integrate the abstract idea into a “practical application,” or provide “something more” under the Guidance. The Appellant offers no other evidence or explanation of how the processing step cannot be performed manually. Instead, the argument appears to be an ipsissimis verbis argument that the claim doesn’t recite the word “mental.” This argument is not persuasive. We also are not persuaded by the Appellant’s assertion that the “claims are directed to a practical application,” because the claims generally automate the layout of a space using an integrated workplace management system. Appeal Br. 3; see also Reply Br. 2. This is inconsistent with the guidelines for determining if a judicial exception is “integrated into a practical application.” See Guidance at 54–55. Because we determine that the claim recites a judicial exception, does not integrate the exception into a “practical application,” and does not provide “something more,” we sustain the Examiner’s rejection of claims 1– 6 under 35 U.S.C. § 101. Appeal 2019-006149 Application 14/816,548 13 Rejection of Claims 1–3 under 35 U.S.C. § 103 The Appellant argues claims 1–3 together as a group (Appeal Br. 5), so we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). We are not persuaded by any of the three arguments the Appellant advances in the Appeal Brief. Each argument quotes portions of claim 1, and asserts that one of the references does not disclose or suggest the claim language quoted. Appeal Br. 4–5. For example, the Appellant argues that “nowhere within Nagy and Hassanain” is disclosed language that includes the “processing” limitation. Id. at 4. However, the Examiner finds the “processing” limitation in Liggett. Final Act. 15. Next, the Appellant argues that “nowhere within Liggett” is disclosed claim language that starts with a limitation that the Examiner finds in Nagy. Appeal Br. 4. Finally, the Appellant argues that “nowhere within Rasane” is disclosed language that starts with a limitation the Examiner finds also in Nagy. Id. at 5. The Appellant is thus arguing references individually, when the rejection relies on a combination of references, as the Examiner notes. See Answer 11. Because the Appellant does not persuade us of error by the Examiner, we sustain the rejection of claims 1–3. Rejection of Claim 4 under 35 U.S.C. § 103 In the Non-Final Action, mailed September 7, 2018, the Examiner rejected claim 4 as obvious over a combination of Nagy, Liggett, and Official Notice. Non-Final Act. 15–16. In the Appellant’s Response, filed December 5, 2018, no attempt was made to traverse the taking of Official Notice. Appeal 2019-006149 Application 14/816,548 14 In the Final Action, the Examiner rejected claim 4 as obvious over a combination of Nagy, Hassanain, Liggett, Rasane, and Official Notice. Final Act. 20–21. Specifically, the Final Office Action explains: the examiner concedes that the Nagy reference also fails to explicitly teach performing comparison operations to compare the first space layout to the second space layout, the performance of the comparison operations generating a first set of space utilization metrics respectively associated with the first space layout and the second space layout. Under the broadest reasonable interpretation of the claim, the limitation recites steps to evaluate space layouts according to one or more metrics such as cost or efficiency. Official Notice is taken that it is old and well known in the computer arts to determine the costs and/or efficiency of space layouts. Id. (emphasis omitted). Here the Examiner construes some claim language to a shorter form, and then takes Official Notice of that substituted meaning. In the Appeal Brief, the Appellant admits “it may be well known to determine costs or efficiency of space layouts,” but argues: it is not well known to perform comparison operations to compare a first space layout to a second space layout where the second space layout is generated from a second BIM (building information model) comprising a second set of space constraint data associated with a second space. It is also not well known to generate a set of space utilization metrics associated with the first space layout and the second space layout based upon the comparison operations. Appeal Br. 5. The Appellant is thus asserting the original claim language is not well-known, after admitting the substituted meaning is well-known, but does not provide further evidence, example, or reasoning to support the assertion. To adequately traverse the taking of Official Notice, which itself is a form of evidence, an applicant must come forth with information or Appeal 2019-006149 Application 14/816,548 15 argument that, on its face, casts reasonable doubt regarding the justification of the Official Notice. See In re Boon, 439 F.2d 724, 728 (CCPA 1971) (explaining that an applicant has the right to challenge the official notice and demand production of evidence in support thereof, provided such challenge is accompanied by adequate information or argument that, on its face, creates a reasonable doubt regarding the circumstances justifying the official notice); see also MPEP § 2144.03(C). Merely stating disagreement with the Examiner’s conclusions, as the Appellant did here, does not rise to the level of a traversal of Official Notice. Here, the Appellant is merely quoting claim language the Examiner construed with substitute language, and asserting “it is not well known.” Appeal Br. 5. Because the Appellant has not adequately traversed the Examiner’s taking of Official Notice, the facts of which the Examiner took Official Notice are admitted prior art. See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (where an applicant for a patent has failed to challenge a fact officially noticed by the Examiner, and it is clear that the applicant has been amply apprised of such finding so as to have the opportunity to make such challenge, the Examiner's finding shall be considered conclusive). For this reason, we sustain the rejection of claim 4 as obvious. CONCLUSION The Examiner’s rejections are AFFIRMED. Appeal 2019-006149 Application 14/816,548 16 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6 101 Eligibility 1–6 1–3 103 Nagy, Hassanain, Liggett, Rasane 1–3 4 103 Nagy, Hassanain, Liggett, Rasane, AAPA 4 Overall Outcome 1–6 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation