Jessica Billingsley et al.Download PDFPatent Trials and Appeals BoardJun 1, 202013092188 - (D) (P.T.A.B. Jun. 1, 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. 13/092,188 04/22/2011 Jessica Billingsley 1313-001 6042 143770 7590 06/01/2020 Nolte Intellectual Property Law Group 24610 Kingsland Blvd Katy, TX 77494 EXAMINER YU, ARIEL J ART UNIT PAPER NUMBER 3687 NOTIFICATION DATE DELIVERY MODE 06/01/2020 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): billing@nolteip.com docketing@nolteip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JESSICA BILLINGSLEY and AMY POINSETT Appeal 2019-006596 Application 13/092,188 Technology Center 3600 Before GREGG I. ANDERSON, MICHAEL M. BARRY, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, 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, 3–9, 11–20, and 22–24. 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(a). Appellant identifies the real party in interest as MJ Freeway, LLC. Appeal Br. 2. Appeal 2019-006596 Application 13/092,188 2 CLAIMED SUBJECT MATTER The claims relate to “tracking inventory and, in particular, to tracking product inventory in association with specific consumers.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for tracking inventory, comprising: obtaining, by a scanner associated with a retail store, information identifying a specific end consumer of the retail store and disposal information associated with a specific plant; receiving, by a processor, information identifying the specific end consumer of the retail store, said information identifying the specific end consumer being received from the scanner; monitoring, by the processor, in association with the specific end consumer of the retail store, progression of the specific plant, identified by a unique plant id, through multiple stages from a raw form, wherein the multiple stages include planting, growth, application of an additive, harvesting, finishing, assembling into at least one product, packaging and delivery; tracking, by the processor, in association with the specific end consumer, disposal of at least a portion of the raw form of the specific plant and at least a portion of the product resulting from assembling the specific plant, wherein tracking includes receiving disposal information from the scanner associated with at least a portion of the raw form of the specific plant and at least a portion of the product resulting from assembling the specific plant; and updating, by the processor, inventory of the specific plant based on the disposal of the portion of the raw form of the specific plant and the portion of the product resulting from assembling the specific plant. Appeal Br. 18 (Claims Appendix). Appeal 2019-006596 Application 13/092,188 3 REJECTION Claims 1, 3–9, 11–20, and 22–24 stand rejected under 35 U.S.C. § 101 as being directed to ineligible subject matter. Non-Final Act. 3–6. ANALYSIS Standard for Patent Eligibility In issues involving subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court instructs us to “first determine whether the claims at issue are directed to a patent-ineligible concept,” id. at 218, and, in this case, the inquiry centers on whether the claims are directed to an abstract idea. If the initial threshold is met, we then move to the second step, in which 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 217–18 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court describes the second step 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. (quoting Mayo, 566 U.S. at 72–73). The USPTO has published revised guidance on the application of § 101 consistent with Alice and subsequent Federal Circuit decisions. USPTO, 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 2019-006596 Application 13/092,188 4 (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) (referred to Step 2A, prong 1 in the Guidance); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (referred to Step 2A, prong 2 in the Guidance). See Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then move to Step 2B of the Guidance. There, we 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, 84 Fed. Reg. at 56. Examiner’s Findings and Conclusion The Examiner rejects claim 1 as being directed to a judicial exception without significantly more under Alice. Non-Final Act. 3–6. In the first step of the Alice inquiry and under Step 2A of the Guidance, the Examiner determines claim 1 is directed to a mental process “similar to the concept that has been identified as abstract by the courts, such as ‘sending information, directing sent information, and receipt of sent information’ step in Two Way Media.” Non-Final Act. 3. The Examiner further determines claim 1 is abstract because: The limitation[s] of monitoring, tracking, and updating steps as drafted, are processes that under broadest reasonable interpretation, cover performance of the limitation in the mind Appeal 2019-006596 Application 13/092,188 5 but for the recitation of generic computer components. That is, other than reciting “a processor”, “a scanner” and “a memory having stored thereon instructions which, when executed by the processor”, nothing in the claim element precludes the steps from practically being performed in the mind. For example, but for the “by the processor” language, “monitoring” in the context of these claims encompasses a user/consumer manually observe progression of the specific plant. Similarly, but for the “from the scanner”' language, “tracking” in the context of these claims encompasses a user/consumer manually measure disposal portion and assembling portion of the specific plant. But for the “by the processor” language, “updating” in the context of these claims encompasses a user/consumer manually record disposal portion and assembling portion of the specific plant. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. Ans. 3–4. The Examiner further determines the claims do not recite additional elements sufficient to integrate the claim into a practical application. Specifically, the Examiner determines: This judicial exception is not integrated into a practical application because obtaining and receiving steps amount to mere data gathering, which is a form of insignificant extra- solution activity. These claims recite additional elements - using a scanner to perform both obtaining and receiving steps and using the processor and the memory to perform receiving, monitoring, tracking, and updating steps. The claimed scanner is not specially programmed and performs functions as all other scanners can do. Therefore, the scanner is not considered as “particular machine” (See MPEP § 2106.05(b)). The claimed processor and the memory are not specially programmed and Appeal 2019-006596 Application 13/092,188 6 cannot be specially identified. Therefore, the processor and the memory are not considered as “particular machine” (See MPEP § 2106.05(b)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Ans. 4. Under Alice step 2 (Step 2B of the Guidance), the Examiner determines that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of a processor, memory, and scanner are generic computer components and their use does no more than generally link the judicial exception of a mental process for performing inventory management to a particular technological environment. Ans. 6 (citing MPEP §§ 2106.05(b), 2106.05(h). Appellant’s Contentions Appellant argues the Examiner’s analysis is deficient because “[t]he Examiner has not indicated that the claims are directed to subject matter that falls under one of the groupings identified in the Guidance.” Appeal Br. 8. Appellant further argues that the Examiner’s comparisons to the claims in Two Way Media is improper because that approach has been “explicitly rejected in and superseded by the Guidance.” Appeal Br. 9. Appellant further contends the claims integrate any purported abstract idea into a practical application because the “claimed technology is very clearly directed to improvements in computer technology for a practical application (i.e., monitoring, tracking, and updating inventory of a specific plant and products assembled from the specific plant in association with a specific end consumers.” Appeal Br. 12. Appellant further asserts the inventory tracking Appeal 2019-006596 Application 13/092,188 7 features recited in the claims provide a technological improvement sufficient to integrate the abstract idea into a practical application because “[b]y tracking inventory of the plant at each stage, any loss can be accurately accounted for” and “a plant may be tracked at each stage in increments as small as e.g., 1/100th of a gram.” Appeal Br. 13–14 (citing Spec. ¶ 82). Under Step 2B, Appellant asserts additional recited elements that provide an inventive concept under the Guidance. Appellant reiterates the argument that the “monitoring, tracking, and updating inventory” recited in the claim is unconventional. Appeal Br. 15. Appellant further argues the claims are patent-eligible because “the Office Action does not allege that the claim elements are well-understood, routine, and conventional, and the claims do not stand rejected as being anticipated or obvious” and “it is evident and undisputed by the Examiner that the elements recited claims 1, 8, and 15 are unconventional and contain an inventive concept.” Appeal Br. 15; see also Reply Br. 4–5. Revised Guidance, Step 2A, Prong One 2 The Judicial Exception Applying the Guidance, we are not persuaded the Examiner has erred in rejecting claim 1 as being directed to patent-ineligible subject matter. The Guidance instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim. The Guidance identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic 2 Throughout this opinion, we give the claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2019-006596 Application 13/092,188 8 practices and commercial interactions (including . . . advertising, marketing or sales activities or behaviors; business relations), and (3) mental processes. We focus our analysis on the second and third groupings—certain methods of organizing human activity and mental processes.3 We conclude the limitations of claim 1 recite an abstract idea under the Guidance. For example, the Claim 1 recites the limitation: obtaining, by a . . . retail store, information identifying a specific end consumer of the retail store and disposal information associated with a specific plant. Appeal Br. 18 (Claims Appendix). This limitation recites both a commercial interaction (a certain method of organizing human activity) and a mental process under the Guidance. This limitation is a commercial interaction because it involves acquiring customer information and product information. A claim recites a mental process when the claim encompasses acts people can perform using their minds or pen and paper. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (determining that a claim whose “steps can be performed in the human mind, or by a human using a pen and paper” is directed to an unpatentable mental process). This limitation is a mental process because it can be performed by a person via observation. For example, a person associated with the retail 3 Appellant’s arguments against the § 101 rejection are made to the claims generally. Appeal Br. 16 (“The analysis regarding claim 1 applies to independent claims 8 and 15 and the claims that depend from claims 8 and 15.”). We treat claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv) (2018) (“When multiple claims subject to the same ground of rejection are argued as a group or subgroup by Appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone.”). Appeal 2019-006596 Application 13/092,188 9 store could obtain the information by reviewing store records on paper or being told the information. Claim 1 also recites: receiving . . . information identifying the specific end consumer of the retail store. Appeal Br. 18 (Claims Appendix). This limitation also recites a commercial interaction, and also is a mental process which can be performed through observation. Claim 1 further recites: monitoring . . . in association with the specific end consumer of the retail store, progression of the specific plant, identified by a unique plant id, through multiple stages from a raw form, wherein the multiple stages include planting, growth, application of an additive, harvesting, finishing, assembling into at least one product, packaging and delivery; tracking, by the processor, in association with the specific end consumer, disposal of at least a portion of the raw form of the specific plant and at least a portion of the product resulting from assembling the specific plant, wherein tracking includes receiving disposal information from the scanner associated with at least a portion of the raw form of the specific plant and at least a portion of the product resulting from assembling the specific plant; and updating . . . inventory of the specific plant based on the disposal of the portion of the raw form of the specific plant and the portion of the product resulting from assembling the specific plant. Appeal Br. 18 (Claims Appendix). These limitations, like those before it, also recite commercial interactions. Here, these limitations recite the commercial practice of following the progress of producing and fulfilling a customer’s order, and then updating inventory accordingly. In addition, these three limitations also recite mental steps which can be accomplished Appeal 2019-006596 Application 13/092,188 10 by a person using observation and with the aid of pen and paper (for maintaining inventory records). Accordingly, we conclude the claimed process for tracking inventory set forth in claim 1 recites judicial exceptions of both a mental process and of a commercial interaction, which is a certain method of organizing human activity under the Guidance. Revised Guidance, Step 2A, Prong Two Integration of the Judicial Exception into a Practical Application Having determined that the claim 1 recites a judicial exception, our analysis under the Guidance turns now to determining whether there are additional elements that integrate the judicial exception into a practical application. See 84 Fed. Reg. at 54–55 (citing MPEP § 2106.05(a)–(c), (e)– (h)). Under the Guidance, limitations that are indicative of “integration into a practical application” include: 1. Improvements to the functioning of a computer, or to any other technology or technical field — see MPEP § 2106.05(a); 2. Applying the judicial exception with, or by use of, a particular machine — see MPEP § 2106.05(b); 3. Effecting a transformation or reduction of a particular article to a different state or thing — see MPEP § 2106.05(c); and 4. Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception — see MPEP § 2106.05(e). Appeal 2019-006596 Application 13/092,188 11 In contrast, limitations that are not indicative of “integration into a practical application” include: 1. Adding the words “apply it” (or an equivalent) with the judicial exception, or merely include instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea — see MPEP § 2106.05(f); 2. Adding insignificant extra-solution activity to the judicial exception — see MPEP § 2106.05(g); and 3. Generally linking the use of the judicial exception to a particular technological environment or field of use — see MPEP § 2106.05(h). See 84 Fed. Reg. at 54–55 (“Prong Two”). As shown above, most of the claim limitations in claim 1 recite abstract ideas. Additional to those abstract limitations, claim 1 recites that (a) certain data is collected by “a scanner associated with a retail store,” and (b) various process steps are performed “by a processor.” We conclude that these limitations are insufficient to integrate the recited judicial exception into a practical application. Each of these limitations merely recite the use of conventional computer technology to implement the otherwise abstract process on a computer. It is well- established, however, that the use of generic technology to implement an abstract idea is insufficient to integrate it into a practical application. See 84 Fed. Reg. at 55 (citing MPEP 2106.05(f) and explaining that it is not indicative of integration into a practical application where the claims “merely include instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea”). Appeal 2019-006596 Application 13/092,188 12 As we noted above, Appellant argues the claims integrate the abstract idea into practical application because the “claimed technology is very clearly directed to improvements in computer technology for a practical application (i.e., monitoring, tracking, and updating inventory of a specific plant and products assembled from the specific plant in association with a specific end consumers.” Appeal Br. 12. We do not find this argument persuasive. The purported improvement identified by Appellant is not an improvement to technology. Instead, any improvement provided by these process steps improves the abstract idea itself—tracking inventory. It is well-established, however, that improvements in the abstract idea are insufficient to confer eligibility on an otherwise ineligible claim. SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Nor do we find persuasive Appellant’s contention that the inventory tracking features recited in the claims provide a technological improvement because “[b]y tracking inventory of the plant at each stage, any loss can be accurately accounted for”. Appeal Br. 13. The purported benefit of accurately accounting for loss of inventory is also an improvement to the abstract idea of inventory tracking, and not an improvement to technology. Appellant also asserts that a practical application is provided because “a plant may be tracked at each stage in increments as small as e.g., 1/100th of a gram.” Appeal Br. 14 (citing Spec. ¶ 82); see also Reply Br. 3 (reiterating argument in additional detail). We do not find this argument persuasive at least because this benefit of granularity is not reflected in the language of the claim. Accordingly, we conclude claim 1 is directed to a judicial exception. Appeal 2019-006596 Application 13/092,188 13 The Inventive Concept – Step 2B Having determined the claim is directed to a judicial exception, we proceed to evaluating whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)) or 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, 84 Fed. Reg. at 56. Our review of the Examiner’s rejection under Step 2B is guided by the revised examination procedure published online by the USPTO on April 19, 2018, entitled “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (“Berkheimer Memorandum”), which imposed a new fact finding requirement for Examiners applicable to rejections under § 101. Consistent with the Berkheimer Memorandum, we agree with the Examiner that the claim does not add specific limitations beyond what is well-understood, routine, and conventional. Appellant’s arguments with respect to Step 2B generally restate those made in connection with Step 2A, prong 2 above. For example, Appellant argues “the monitoring, tracking, and updating inventory” are claim steps which “are unconventional.” Appeal Br. 15. We are unpersuaded by this argument for the same reasons as above—that these steps form part of the abstract idea itself, and to the extent they are improvements, they improve the abstract idea. In Step 2B, however, our analysis focuses on the additional elements—those beyond what is abstract. SAP Am. Inc., 898 F.3d Appeal 2019-006596 Application 13/092,188 14 at 1168 (“What is needed is an inventive concept in the non-abstract application realm.”). We also do not find persuasive Appellant’s argument that the claims supply an inventive concept because there is no prior art rejection made against the claims. This argument lacks merit because it presupposes that any claim found to be novel and non-obvious over prior art cannot be found to be lacking an inventive concept in the Alice/Mayo framework. We are aware of no authority or case supporting this proposition, nor does Appellant cite to any. Patent-eligibility under 35 U.S.C. § 101 is a threshold requirement that must be satisfied in addition to being novel, nonobvious, and fully and particularly described. See Bilski v. Kappos, 561 U.S. 593, 602 (2010). A finding of novelty or non-obviousness does not necessarily lead to the conclusion that subject matter is patent-eligible. “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). Appellant’s approach to the Alice step 2 search for an inventive concept is inconsistent with the legal framework established in the Patent Act, as it would limit the application of 35 U.S.C. § 101 to only those claims found to be otherwise unpatentable under other sections of the Act (e.g., 35 U.S.C. §§ 102, 103, and 112). Because the Examiner correctly concluded claim 1 is directed to a judicial exception, and because Appellant does not identify any error in the Examiner’s determination under step 2B of the Guidance, we sustain the rejection of representative claim 1 under 35 U.S.C. § 101, as well as of the remaining claims. Appeal 2019-006596 Application 13/092,188 15 CONCLUSION The Examiner’s rejection is affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 3–9, 11–20, 22–24 101 patent eligibility 1, 3–9, 11–20, 22–24 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