Jessica Billingsley et al.

Patent Trials and Appeals Board

Jun 1, 2020

13092188 - (D) (P.T.A.B. Jun. 1, 2020)

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.
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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).

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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:
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(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
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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
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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
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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).
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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.”).
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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
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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).
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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”).
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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.
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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
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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.
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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