Yasutaka Nishimura et al.

Patent Trials and Appeals Board

Sep 4, 2019

13238404 - (D) (P.T.A.B. Sep. 4, 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.
13/238,404 09/21/2011 Yasutaka Nishimura JP920100059US1 8058
37945 7590 09/04/2019
DUKE W. YEE
YEE AND ASSOCIATES, P.C.
P.O. BOX 190809
DALLAS, TX 75219
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
ptonotifs@yeeiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YASUTAKA NISHIMURA, TAKASHI OGURA,
AKIRA OHKADO, and TADASHI TSUMURA
__________

Appeal 2018-004967
Application 13/238,404
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Yasutaka Nishimura et al. (“Appellants”)1 seek our review under
35 U.S.C. § 134(a) of the Final Rejection of claims 11, 12, and 14–38.2 We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

1 The Appellants identify International Business Machines Corporation as
the real party in interest. (App. Br. 2).
2 Claims 1–10 and 13 are canceled.
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THE INVENTION
Claims 11, 20, 31, and 34 are the independent claims on appeal.
Claim 11 is illustrative, and is reproduced below with indentation and
bracketed numerals added:
11. A machine that manages security of an asset associated with
a work order that specifies a work process used to manage the
asset, the machine comprising:
[(1)] a security monitoring system comprising an event
generating unit, a loading unit, a monitoring unit, and a data
processing device coupled to a storage device, wherein:
[(2)] at a scheduled start time for a work order to be executed,
or in response to reception of a report indicating a start of work
for the work order to be executed or a report indicating a
completion of work for a preceding work order to the work order
to be executed, the loading unit loads into a memory a security
policy associated with (i) the work order to be executed, or (ii)
the asset associated with the work order to be executed, and the
monitoring unit starts to monitor (i) a location of the asset
associated with the work order to be executed, or (ii) a location
of a moving object present around the asset,
[(2a)] wherein the security policy is (1) associated with both (i)
the asset and (ii) the work order and (2) stipulates a rule
governing usage of the asset identified by the work order;
[(3)] the event generating unit generates an event for managing
the security of the asset in response to (i) the location of the asset
or the moving object violating the security policy, or (ii) a change
in the location of the asset or the moving object violating the
security policy; and
[(4)] a controller that is configured, in response to the
generating of the event, to cause a monitoring video or a
monitoring camera that monitors the asset or the moving object
violating the security policy to operate zooming-in, panning, or
viewpoint adjustment on the asset or the moving object.

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THE REJECTIONS
The following rejections are before us for review:
1. Claims 11, 12, and 14–38 are rejected under 35 U.S.C. § 101 as being
directed to a judicial exception without significantly more.
2. Claims 11, 12, and 14–38 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ratcliff et al. (US 2008/0163347 A1, pub. July 3, 2008)
(“Ratcliff”), Fries et al. (US 2011/0087891 A1, pub. Apr. 14, 2011)
(“Fries”), Frink (US 2008/0177646 A1, pub. July 24, 2008), and Lazo et al.
(US 2004/0105006 A1, pub. June 3, 2004) (“Lazo”).

ISSUES
Did the Examiner err in rejecting claims 11, 12, and 14–38 under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more; and claims 11, 12, and 14–38 under 35 U.S.C. § 103 as
being unpatentable over Ratcliff, Fries, Frink, and Lazo?

BACKGROUND
We begin with a review of the file history and the history of
amendments to the independent claims in particular.
On December 15, 2016, in response to the Final Office Action mailed
November 2, 2016, the Appellants filed an after-final amendment wherein
Appellants proposed to amend each of independent claims 11, 20, 31, and 34
to recite “wherein the security policy is (1) associated with both (i) the asset
and (ii) the work order and (2) stipulates a rule governing usage of the asset
identified by the work order,” i.e., the limitation that we have labeled
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limitation (2a) in claim 11 above. The proposed amendment also proposed
to cancel claim 19, which prior to the amendment had contained a nearly
identical limitation to the one above. In the Advisory Action mailed
January 26, 2017, the Examiner indicated on page 1 that the proposed
amendments “will not be entered because . . . [t]hey are not deemed to place
the application in better form for appeal by material reducing or simplifying
the issues for appeal.” The Examiner also indicated, on page 2, that “the
proposed amendment of ‘wherein the security policy is (1) associated with
both (i) the asset and (ii) the work order and (2) stipulates a rule governing
usage of the asset identified by the work order’ would be taught by Milas
(US Patent Application Publication 2009/0205016).”
On May 2, 2017, the Appellants filed a Request for Continued
Examination (RCE) accompanied by amendments to each of the independent
claims, among other amendments. Although the Appellants’ proposed after-
final amendment filed December 15, 2016 was never entered by the
Examiner, the Appellants’ amendment filed May 2, 2017 included the above
limitation in each of independent claims 11, 20, 31, and 34 without
appropriate mark-up (i.e., underlining) to indicate that the limitation was
newly added to the independent claims.3 Notably, this amendment also

3 See Amendment Pursuant to Request for Continued Examination filed
May 2, 2017, page 2, wherein claim 11 is reproduced and contains the
limitation “wherein the security policy is (1) associated with both (i) the
asset and (ii) the work order and (2) stipulates a rule governing usage of the
asset identified by the work order” without underlining; page 4, wherein
claim 20 contains the same limitation without underlining; page 6 wherein
claim 31 contains the same limitation without underlining; page 7 wherein
claim 34 contains the same limitation without underlining.
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amended – but did not cancel – claim 19, notwithstanding claim 19
contained a nearly identical limitation to the one added to independent
claim 11.
On June 5, 2017, the Examiner mailed a Non-Final Rejection wherein
the Examiner indicated, on page 2, that “[t]he Applicant’s amendment filed
on May 2, 2017 is hereby acknowledged” and “Applicant’s submission filed
on May 2, 2017 has been entered.” Thus, notwithstanding the amendment
filed May 2, 2017 was non-compliant because it added language to the
claims without underlining,4 said amendment was entered by the Examiner
without objection.
On July 24, 2017, Appellants filed a Response to Office Action,
including claim amendments and remarks, in response to the Examiner’s
June 5, 2017 office action.
On November 1, 2017, the Examiner mailed a Final Rejection finally
rejecting claims 11, 12, and 14–38. This rejection is before us on appeal.

ANALYSIS
The rejection of claims 11, 12, and 14–38 under 35 U.S.C. § 101 as being
directed to a judicial exception without significantly more.
We do not consider the analysis put forward by the Examiner in the
first instance as placing the Board in a position to perform a meaningful
review of the rejection. Accordingly, we do not sustain the rejection.

4 See 37 C.F.R. § 1.121(c)(2) (“The text of any added subject matter must be
shown by underlining the added text.”)
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Preliminary comment
In their briefs, the Appellants refer to prior USPTO guidance. See
App. Br. 14, footnote 5 (citing the 2014 Interim Guidance on Patent Subject
Matter Eligibility, 79 Fed. Reg. 74619–633 (Dec. 16, 2014) and July 2015
update)). Said guidance has been superseded by the 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter “2019 Revised 101 Guidance”). 2019 Revised 101 Guidance,
84 Fed. Reg. at 51 (“Eligibility–related guidance issued prior to the Ninth
Edition, R–08.2017, of the MPEP (published Jan. 2018) should not be relied
upon.”).
Accordingly, our analysis will not address the sufficiency of the
Examiner’s rejection against the cited prior guidance. Rather, our analysis
will comport with the 2019 Revised 101 Guidance.

Introduction
35 U.S.C. § 101 provides that “[w]hoever 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.”
In that regard, claim 11 covers a “machine” and is, thus, statutory
subject matter for which a patent may be obtained.5 This is not in dispute.

5 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether a “claim is to a statutory category.” 2019
Revised 101 Guidance 53; see also id. at 53–54 (“[C]onsider[] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. [§] 101 . . . .”).
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However, the § 101 provision “‘contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claim 11 covers statutory subject
matter, the Examiner has raised a question of patent–eligibility on the
ground that claim 11 is directed to an abstract idea. Eligibility is a question
of law based on underlying facts. SAP Am. v. InvestPic, LLC, 890 F.3d
1016, 1020 (Fed. Cir. 2018).
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.

Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Id. at 218
(emphasis added).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that claims 11, 12, and 14–38 “are directed to the abstract idea of
loading a security policy associated with a work order and generating an
event for managing security.” Final Act. 5. According to the Examiner:
Claim 11 recites, in part, loading a security policy, and
generating an event; these steps describe the concept of using
categories to organize, store and transmit information, which
corresponds to concepts identified as abstract ideas by the
courts, such as collecting and analyzing information, which
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corresponds to concepts identified as abstract ideas by the
courts, such as Electric Power Group6 as well as Alice Corp.

Id. at 6. The Examiner concludes that “the description in claim 11 of
loading a security policy associated with a work order and generating an
event for managing security is an abstract idea.” Id. Responding to the
Appellants’ arguments in the Answer, the Examiner states that “when
considered singly or as a whole, the claimed limitations only generically use
computer processes to perform a monitoring process, the claim is not
directed towards a technological innovation but rather merely a surveillance
process that existed prior to the use of computers.” Ans. 3.
Claim 11 recites “[a] machine that manages security of an asset
associated with a work order that specifies a work process used to manage
the asset, the machine comprising” (1) “a security monitoring system
comprising an event generating unit, a loading unit, a monitoring unit, and a
data processing device coupled to a storage device.” Claim 11 specifies
functionality for each unit of the security monitoring system. For example,
claim 11 recites (3) “the event generating unit generates an event for
managing the security of the asset in response to (i) the location of the asset
or the moving object violating the security policy, or (ii) a change in the
location of the asset or the moving object violating the security policy.”
Each of independent claims 11, 20, 31, and 34 contains a similar limitation.
Claim 11 further recites (2a) “wherein the security policy is (1) associated
with both (i) the asset and (ii) the work order and (2) stipulates a rule
governing usage of the asset identified by the work order.” As discussed

6 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
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above in the “Background” section, each of independent claims 11, 20, 31,
and 34 contains a similar limitation.
The Examiner’s analysis does not adequately address the specific
limitations of claim 11.7 The Examiner characterizes the claims as “merely
a surveillance process” (Ans. 3), but the Examiner does not adequately
explain how the claimed surveillance process amounts to an abstract idea.
For example, the Examiner’s rejection lacks any analysis of limitation (2a).
The Examiner also does not explain why the claimed functionality of the
event generating unit amounts to “generically [using] computer processes to
perform a monitoring process” (Ans. 3).

Alice step two – Does the Claim Provide an Inventive Concept?8
Step two is “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

7 Prong One (a) of Step 2A of the 2019 Revised 101 Guidance states: “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: (a) Identify the specific limitation(s) in the claim under
examination (individually or in combination) that the Examiner believes
recites an abstract idea . . . .” 2019 Revised 101 Guidance 54.

8 This corresponds to Step 2B of the 2019 Revised 101 Guidance page 56
(“[I]f a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).”).
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concept] itself.’” Alice, 573 U.S. at 221 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
The Examiner determined that “[t]he claim recites the additional
limitations of a data processing device and a storage device,” and that
“[t]hese additional limitations are recited at a high level of generality and are
recited as performing generic computer functions routinely used in computer
applications.” Final Act. 6.
The Appellants argue that “[e]ven assuming arguendo that Claim 11 is
directed to an abstract idea” it “expressly recites meaningful limitations”
such as “(1) a loading unit,” “(2) a monitoring unit,” and “(3) an event
generating unit.” App. Br. 16. According to the Appellants, these elements
“provide significantly more” than the abstract idea identified by the
Examiner (i.e., “an inventive concept”). Id. at 17.
In the Answer, the Examiner does not respond to the Appellants’
arguments under step two of Alice. See generally Ans. 2–4. As noted
above, the Examiner identifies the “data processing device” and “storage
device” as the only additional elements of claim 11. The Examiner does not
explain why the claimed “loading unit,” “monitoring unit,” and “event
generating unit” of the security monitoring system do not amount to
additional elements to be analyzed under step two of Alice. The Examiner
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erred by not analyzing the claimed “loading unit,” “monitoring unit,” and
“event generating unit” under step two of Alice.9
For the foregoing reasons, the rejection is not sustained.
The rejection of claims 11, 12, and 14–38 under 35 U.S.C. § 103 as being
unpatentable over Ratcliff, Fries, Frink, and Lazo.
Independent claim 11 recites, inter alia, (2a) “wherein the security
policy is (1) associated with both (i) the asset and (ii) the work order and
(2) stipulates a rule governing usage of the asset identified by the work
order” (i.e., limitation (2a)). App. Br. 40 (Claims Appendix). Each of
independent claims 20, 31, and 34 contains a similar limitation. See id.
at 42, 45, 46. Our review of the Examiner’s Final Rejection and the
Examiner’s Answer indicates that the Examiner did not address this
limitation as to any of independent claims 11, 20, 31, and 34. See Final
Act. 7–9; Ans. 6–9.
We note that the Examiner addressed a similar limitation to
limitation (2a) with respect to claim 19. Final Act. 11. According to the
Examiner, “Ratcliff et al. (’347) discloses the machine according to
claim 11, wherein the security policy is associated with both the asset and
the work order and stipulates a rules governing usage of the asset identified
by the work order. (Figure 3, column 13, lines 11-31).” Id.

9 See 2019 Revised 101 Guidance, page 56 (“examiners should continue to
consider in Step 2B whether an additional element or combination of
elements . . . [a]dds a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present.”)
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Under different circumstances, we might attribute the Examiner’s
findings for this limitation in dependent claim 19 to the similar
limitation (2a) in independent claim 11. But the problem with the
Examiner’s finding is that Ratcliff does not contain any “Figure 3”; Ratcliff
contains only Figures 1, 2a, and 2b. Moreover, Ratcliff is a published patent
application and does not contain column and line numbers. As such, the
Examiner’s findings in Ratcliff are facially deficient and cannot support a
prima facie case of unpatentability of any pending claims.
For the foregoing reasons, the rejection is not sustained.

CONCLUSIONS
The rejection of claims 11, 12, and 14–38 under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more is not
sustained.
The rejection of claims 11, 12, and 14–38 under 35 U.S.C. § 103 as
being unpatentable over Ratcliff, Fries, Frink, and Lazo is not sustained.

DECISION
The decision of the Examiner to reject claims 11, 12, and 14–38 is
reversed.

REVERSED