Thomas Michael. Cozad

Patent Trials and Appeals Board

Oct 1, 2019

13713962 - (R) (P.T.A.B. Oct. 1, 2019)

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.
13/713,962 12/13/2012 Thomas Michael Cozad JR. PINC-1-2401 8947
25315 7590 10/01/2019
LOWE GRAHAM JONES, PLLC
701 FIFTH AVENUE
SUITE 4800
SEATTLE, WA 98104
EXAMINER
RACIC, MILENA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
docketing-patent@lowegrahamjones.com
patentdocketing@lowegrahamjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS MICHAEL COZAD JR.
____________________

Appeal 2017-009044
Application 13/713,962
Technology Center 3600
____________________

Before ELENI MANTIS MERCADER, JASON J. CHUNG, and
SCOTT E. BAIN, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant1 requests rehearing under 37 C.F.R. § 41.52 of our
Decision, mailed on February 27, 2019 (“Decision”), in which we affirmed
the Examiner’s rejection under 35 U.S.C. § 101 of claims 1–16, 35, 36, 38–
40, 51, and 53–57. Appellant timely filed a Request for Rehearing (“Req.
Reh’g”) on April 26, 2019.

1 Appellant is the real party in interest. Br. 1.
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We have reconsidered our Decision in light of Appellant’s Request for
Rehearing, but we decline to change the final disposition of the Decision for
the reasons discussed, infra.

DISCUSSION
On February 27, 2019, we issued our Decision in which we affirmed
the Examiner’s Decision rejecting claims 1–16, 35, 36, 38–40, 51, and 53–
57 under 35 U.S.C. § 101 and under pre-AIA 35 U.S.C. § 103(a). Decision
4–14. Appellant seeks rehearing of our Decision solely related to our
affirmance of the Examiner’s rejection under 35 U.S.C. § 101. Req. Reh’g
3–6.
As we stated in our Decision, “[t]he Supreme Court’s two-step
framework guides our analysis of patent eligibility under 35 U.S.C. § 101.”
Decision 6–9 (citing Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208,
217 (2014)). Additionally, we noted that the Office published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). Id. The Decision analyzed claim 1 consistent
with the Court’s two-step framework and the Office Guidance. See Decision
9–12. We also adopted the Examiner’s findings in the Answer and Final
Office Action and we emphasized our findings based on the new guidelines
with respect to claim 1 and for at least the same reasons and the Examiner’s
findings in the Final Action and Answer we affirmed the Examiner’s
rejections for all pending claims 1–16, 35, 36, 38–40, 51 and 53–57. See
Decision 4–12.
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In the Decision, we found that claim 1 as a whole recites a method of
mental processes being performed in the mind or by a human using a pen
and paper. Decision 9. We explained that claim 1 allows recording store
aisle location information for each of multiple items including, for each
item, an aisle identifier, a side identifier, a section identifier, a shelf
identifier, and an itemization order. Id. As we stated in our Decision this
limitation, as drafted, is a process that, under its broadest reasonable
interpretation, covers performance of the limitation in the mind or by a
human using a pen and paper but for the recitation of generic computer
components. Id. That is, other than reciting “in a mobile computing device”
at a high level of generality, nothing in the claim elements precludes the
steps from being performed in the mind or by a human using a pen and
paper. Id. Furthermore, the “in a mobile computing device” language
encompasses the user manually recording an aisle identifier, a side identifier,
a section identifier, a shelf identifier, and an itemization order. Id.
Similarly, we found that the steps of keeping track of the direction of the
scan and the beginning and the end of a shelf constitute mental processes
because it encompasses the user keeping track of the direction of the scan
mentally or by using pen and paper. Id. Thus, we concluded that the claim
recites mental processes. Id.
Because the claim recited a method of a mental process which is a
judicial exception (i.e., under the analysis according to Memorandum Step
2A, Prong 1) we further determined whether the method of a mental process
is integrated into a practical application. Id. at 10.
We found that
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the claim further recites specifying via a user interface, a pattern
of scanning multiple shelves, receiving a series of item identifiers
that each correspond to one of the multiple items, the item
identifiers received from a scanner operated by a user who is
traversing the shelf, in a right or left direction specified via a user
interface, from the first end to the second end and receiving an
indication that the user has reached the second end of the shelf.

Id. We further found that the claim recites the additional elements of
in response to receiving the indication that the user has reached
the second end of the shelf and without receiving any additional
inputs from the user, recording store aisle location information
for each of the multiple items including, for each item, an aisle
identifier, a side identifier, a section identifier, a shelf identifier,
and an itemization order

(emphases added). We determined that the “mobile computing device” and
the user interface are recited at a high level of generality, i.e., as a generic
processor and user interface performing a generic computer function of
processing data (receiving information regarding location of store items in a
shelf). Id. We found that the generic processor limitation is no more than
mere instructions to apply the exception using a generic computer
component. Id. We concluded that the mere nominal recitation of a generic
mobile computing device and the use of a GUI to enter the items into a
computer listing does not take the claim limitation out of the mental
processes grouping. Id.
As explained in OIP Techs, Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015), “relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”
Decision 10–11 (also quoting Alice, 573 U.S. at 224 (“use of a computer to
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create electronic records, track multiple transactions, and issue simultaneous
instructions” is not an inventive concept). “[I]nterchangeability of certain
mental processes and basic digital computation . . . help explain why the use
of a computer in an otherwise patent-ineligible process for no more than its
most basic function . . . fails to circumvent the prohibition against patenting
abstract ideas and mental processes.” Bancorp Servs., L.L.C. v. Sun Life
Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). In other
words, “[u]sing a computer to accelerate an ineligible mental process does
not make that process patent-eligible.” Bancorp Servs, 687 F.3d at 1279.
“Simply adding a ‘computer aided’ limitation to a claim covering an abstract
concept, without more, is insufficient to render the claim patent eligible.”
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we concluded that the 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. Decision 11 (i.e., under
the analysis according to Memorandum Step 2A, Prong 2 there are no
additional elements that integrate the abstract idea into a practical
application).
We note that while we did not explicitly state it in our Decision, in the
instant case the same analysis as we discussed above with respect to Step
2A, prong 2 applies in Step 2B, we clarify this premise here. In particular,
with respect to the additional elements, i.e., mere instructions to apply an
exception using a generic computer component and a user interface
performing a generic computer function of processing data cannot integrate
a judicial exception into a practical application at Step 2A or provide an
inventive concept in Step 2B. While we did not explicitly state it, the
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adopted Examiner’s findings (see Decision 4) state it explicitly. See Ans. 5.
In particular, the Examiner finds that the representative claims 1, 51 and 54
recite additional elements such as “[m]obile computing device, user
interface, first, second and third control, scanner, aisle, shelf, section,
location indicator device, counter . . [. ,] processor, memory” but these
additional elements under Step 2B “operate using well-understood, routine
and conventional functions . . . such as receiving, processing and storing
data, receiving and transmitting data over a network, automating human
operations/mental tasks, and/or performing repetitive calculations.” Id.
The Examiner more particularly finds that claims 1, 51, and 54 do not
require any nonconventional computer, network, or display components, or
even a nonconventional and non-generic arrangement of known,
conventional pieces, but merely call for performance of the claimed
information collection, storing, analysis, and outputting functions on a set of
generic computer components. Id. at 6. Nothing in the claims, understood
in light of the Specification, requires anything other than off-the-shelf,
conventional computer, network, and display technology for gathering,
sending, and presenting the desired information. Id.
Furthermore with respect to the dependent claims, including claim 35,
we adopted the Examiner’s finding that the additional elements recited in the
dependent claims is an attempt to further define the field of use of the
abstract idea. See, e.g., Ans. 5. In other words the “automatically
populating a user interface display of the one section to present identifiers of
other of the items in one section . . . without requiring additional scanning”
as recited in claim 35 do not improve the computer itself but rather as the
Examiner points out “manifested only in the procedure of tracking
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individual shelf locations for items” (Ans. 9) and similar to claims 1, 51, and
54 the tracking of inventory items and managing inventory location pertain
to the abstract idea of collecting and comparing information which has been
repeatedly found by our reviewing Court as an idea itself. See Ans. 6–8.
Thus, based on the above analysis we do not agree with Appellant’s
argument that the Board misapprehended or overlooked recited features of
claims 35, 51, and 54. Req. Reh’g 3. In particular Appellant asserts that the
Board did not discuss Appellant’s argument with respect to claim 35. Id.
According to Appellant, the Board’s incorporation and adoption of the
Examiner’s analysis and findings do not cure this deficiency because the
Examiner did not separately address dependent claim 35. Id. (citing
Decision 4).
We do not agree with Appellant’s argument because the adopted
Examiner’s finding and our additional findings based on the new Guidelines
addressed the rejections of the independent claims 1, 35, 51, and 54 as stated
supra. See Decision 4.
We also do not agree with Appellant’s argument that the Board’s
Decision did not fill in the gaps between the Examiner’s analysis and the
requirements of the Revised Guidance under the second prong of Step 2A.
Req. Reh’g 5. According to Appellant the Board’s analysis, focusing on the
use of “generic” computer elements, is just a thinly disguised “significantly
more” inquiry, which is specifically forbidden under the second prong of
Step 2A. Id. We specifically addressed the applicable limitations of claim 1
as indicated above under Step 2A and similarly addressed the applicable
limitations of claims 51, 54, and their dependents.
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Finally with respect to the efficiencies gained by exploiting
planogram data as argued regarding claim 35 and interaction between the
scanner and machine-readable location indicators of claims 51 and 54, again
these pertain to gathering and organizing data using conventional methods
and equipment. As we sated above, and explained in OIP Techs., 788 F.3d
at 1363, “relying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.” Decision
10–11.
For at least the foregoing reasons, we disagree with Appellant that we
misapprehended or overlooked any points in rendering our Decision.

DECISION
We have considered the arguments raised by Appellant in the Request
for Rehearing, but Appellant has not persuaded us that we misapprehended
or overlooked any points in rendering our Decision. Although we have
considered our prior Decision in light of the Request for Rehearing, we
decline to modify our prior Decision in any respect.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

REHEARING DENIED