Brandt, Gary Edward. et al.Download PDFPatent Trials and Appeals BoardMay 15, 20202018005284 (P.T.A.B. May. 15, 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. 13/415,140 03/08/2012 Gary Edward Brandt 1970.0015-0001 5047 152 7590 05/15/2020 CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP 111 SW Columbia Street Suite 725 PORTLAND, OR 97201 EXAMINER ERB, NATHAN ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 05/15/2020 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): patent.docket@chernofflaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GARY EDWARD BRANDT, GARY ALAN SNYDER, and ROBERT BRADLEY ASHTON ____________ Appeal 2018-005284 Application 13/415,140 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and AMEE A. SHAH, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). An Oral hearing was held on May 4, 2020. SUMMARY OF THE DECISION We AFFIRM-IN-PART. 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 Greenbrier Management Services, LLC. Appeal Br. 2. Appeal 2018-005284 Application 13/415,140 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to calculating the amount of car hire owed by a railroad transporter to an owner of transport equipment (Spec., para 11, Abstract). Claim 1, reproduced below with the italics added, is representative of the subject matter on appeal. 1. A computing device that automatically applies a plurality of reclaims to an ongoing movement cycle of a unit of railroad transport equipment, said computing device comprising: (a) an input that receives tracking data representing respective past movements of a plurality of shared said railroad transport equipment, said tracking data incrementally updated and comprising numerical codes each respectively associated with said ongoing movement cycle and representing statistical information about said ongoing movement cycle; (b) memory that, at a time before receipt of said numerical codes, stores said plurality of reclaims for which said ongoing movement cycle is potentially eligible, each said reclaim having at least one associated parameter, each said parameter specifying a respective eligibility condition for an associated said reclaim; (c) a processor that uses the tracking data to select and apply a first reclaim from said plurality of reclaims to said ongoing movement cycle by comparing said numerical codes associated with said ongoing movement cycle to said at least one associated parameter of said first reclaim; and (d) where said processor uses the applied said first reclaim and said tracking data of a plurality of said respective past movements of said plurality of shared said railroad equipment to automatically select a second reclaim, from among a subset of reclaims mutually exclusive to each other and within said plurality of reclaims, to also apply to said movement cycle, where said movement cycle is eligible for each reclaim in said subset, individually, wherein reclaims are mutually exclusive to each other when selection of any one reclaim in said subset precludes selection of all others in said subset. Appeal Br. 24 (Claims Appendix). Appeal 2018-005284 Application 13/415,140 3 THE REJECTIONS The following rejections are before us for review: 1. Claims 1–6 and 8–20 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over the Appellant’s prior art admission, Walker (US 2004/0117261 Al, published June 17, 2004), and Nageli (US 2004/0183673 Al, published September 23, 2004). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence2. ANALYSIS Rejection under 35 U.S.C. § 101 The Appellant argues that the rejection of claim 1 is improper because the claim is not directed to an abstract idea (Appeal Br. 5–16; Reply Br. 4–10). The Appellant argues further that the claim is “significantly more” than the alleged abstract idea (Appeal Br. 16–18; Reply Br. 10–12). In contrast, the Examiner has determined that the rejection of record is proper (Final Action 6–9; Ans. 2–14). We agree with the Examiner. An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2018-005284 Application 13/415,140 4 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 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, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof 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))). Appeal 2018-005284 Application 13/415,140 5 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 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. (internal citation omitted) (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.”). The PTO recently 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: (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, i.e., evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (see Guidance, 84 Fed. Reg. at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)). Appeal 2018-005284 Application 13/415,140 6 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. 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. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The Specification at the Abstract states that the invention generally relates to a system for calculating amounts of a car hire owed. Here, the Examiner has determined that the claim sets forth “applying reclaims to a piece of railroad transport equipment” and is a method of organizing human activities and fundamental economic practice (Final Act. 6). We substantially agree with the Examiner. We determine that the claim sets forth the subject matter in italics above which describes the concept of calculating amounts for a car hire owed by a railroad transporter and is a Appeal 2018-005284 Application 13/415,140 7 certain method of organizing human activity of a fundamental economic practice, or a mental process, i.e. a judicial exception. For example, in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), the court held collecting information, analyzing it, and displaying results from certain results of the collection and analysis to be an abstract idea. A system, like the claimed system, “a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” See Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). In Buysafe, Inc. v. Google, Inc. 765 F.3d 1350, 1355 (Fed. Cir. 2014), it was held that claims drawn to creating a contractual relationship are directed to an abstract idea. In Versata Development Group, Inc. v. SAP America, Inc., 793 F. 3d 1306, 1333 (Fed. Cir. 2015), it was held that determining a price, using organizational and product group hierarchies was held to be an abstract idea. In Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.. 876 F.3d 1372, 1376 (Fed. Cir. 2017), the local processing of payments for remotely purchased goods was held to be an abstract concept. We next determine whether claim 1 recites additional elements to integrate the judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h). Here, the claim does not improve computer functionality, improve another field of technology, utilize a particular machine, or effect a particular physical transformation. Rather, we determine that nothing in claim 1 imposes a meaningful limit on the judicial exception, such that the claims are more than a drafting effort to monopolize the judicial exception. Appeal 2018-005284 Application 13/415,140 8 For example, in claim 1 the steps of [1] “receiv[ing] tracking data”; [2] “stor[ing] . . . said plurality of reclaims for which said ongoing movement cycle is potentially eligible”; [3] “us[ing] the tracking data to select and apply a first reclaim from said plurality of reclaims to said ongoing movement cycle”; and [4] “us[ing] the applied said first reclaim and said tracking data of a plurality of said respective past movements of said plurality of shared said railroad equipment to automatically select a second reclaim” are merely steps performed by a generic computer that do not improve computer functionality. That is, these recited steps [1]–[4] “do not purport to improve the functioning of the computer itself” but are merely generic functions performed by a conventional processor. Likewise, these same steps [1]–[4] listed above do not improve the technology of the technical field and merely use generic computer components and functions to perform the steps of the abstract idea. Also, the recited method steps [1]–[4] above do not require a “particular machine” and can be utilized with a general purpose computer, and the steps performed are purely conventional. In this case the general purpose computer is merely an object on which the method operates in a conventional manner. Further, the claim as a whole fails to effect any particular transformation of an article to a different state. The recited steps [1]–[4] fail to provide meaningful limitations to limit the judicial exception and rather are mere instructions to apply the method to a generic computer. Considering the elements of the claim both individually and as “an ordered combination,” the functions performed by the computer system at each step of the process are purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic Appeal 2018-005284 Application 13/415,140 9 computer function. Thus, the claimed elements have not been shown to integrate the judicial exception into a practical application as set forth in the Revised Guidance which references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h). Turning to the second step of the Alice and Mayo framework, we determine that the claim does not contain an inventive concept sufficient to “transform” the abstract nature of the claim into a patent-eligible application. Considering the limitations of claim 1 both individually and as an ordered combination fails to add subject matter beyond the judicial exception that is not well-understood, routine, and conventional in the field. Rather the claim uses well-understood, routine, and conventional activities previously known in the art and they are recited at a high level of generality. The Specification at paragraph 22 for example describes using conventional computer components such as existing databases/computer systems in a conventional manner. The claim specifically includes recitations for a processor to implement the method, but the processor and computer components are used in a manner that is well-understood, routine, and conventional in the field. Here, the claimed generic computer components which are used to implement the claimed method are well understood, routine, or conventional in the field. Here, the claim has not been shown to be “significantly more” than the abstract idea. The Appellant, in the Appeal Brief at pages 11–14, has also cited to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the claim is not abstract. But the claims in that case were not similar in scope to those here and were, in contrast, directed to a self-referential data table. Appeal 2018-005284 Application 13/415,140 10 The Appellant cites to DDR Holdings, LLC v. Hotels, L.P., 773 F. 3d 1245 (Fed. Cir. 2014) and argues that the claim is “rooted in computer technology” (Appeal Br. 16, 17). We disagree as the Appellant has not shown how the claimed subject matter is rooted in technology given that the Specification describes only the use of generic computer equipment used in a routine, conventional, and generic manner. The Appellant, at pages 16–18 of the Appeal Brief, has also cited to McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), but the claims in that case are distinguished from this case in being directed to rules for lip sync and facial expression animation. The Declaration of Gary Snyder and Robert Bradley Ashton has been fully considered but is not persuasive to show that the claim is not directed to an abstract idea without substantially more. For these above reasons the rejection of claim 1 is sustained. The Appellant has provided the same arguments for independent claims 7 and 8 which are drawn to similar subject matter, and the rejection of these claims is sustained for the same reasons given above. With regard to dependent claim 3, the Appellant argues that the limitation that “said numerical codes represent automatically inferred information about said ongoing movement cycle, and at least one of said first reclaim and said second reclaim are selected based on said automatically inferred information” is directed to an improvement in computer technology (Appeal Br. 18, 19). The Appellant provides similar arguments for dependent claims 4, 5, 12, and 13, stating that they also address improvements to car hire calculation systems. We disagree because these claims are all directed to conventional computer operations of Appeal 2018-005284 Application 13/415,140 11 processing information. For example, the limitation above argued for claim 3 is directed to generic recognition and selection functions which are commonly used in computer systems. For these reasons, the rejection of claims 3–5, 12, and 13 is sustained. The Appellant argues that in claim 6, the limitation that “the selected fixed time reclaim is selectively and automatically applied by said processor using a logical grouping of a plurality of equipment movement events and non-movement events” is also an improvement in computer technology (Appeal Br. 19). The Appellant provides similar arguments for the dependent claim limitations “said processor sorts said plurality of fixed time reclaims into a precedence hierarchy and uses said hierarchy to automatically select a said fixed time reclaim” (claim 9); “said precedence hierarchy includes a first level hierarchy comprising a first plurality of prioritized categories of reclaims, and a sub-level hierarchy within each first level hierarchy comprising a second plurality of prioritized categories and where said processor automatically selects a said fixed time reclaim by navigating the precedence hierarchy to identify the highest priority fixed time reclaim in said precedence hierarchy” (dependent claim 10); “said logical grouping of a plurality of equipment movement events and non- movement events extends over an associated time interval, and where said processor iteratively applies sequential said fixed time reclaims until no time is left in said interval” (claim 11); and “said precedence hierarchy includes a first level hierarchy comprising a first plurality of prioritized categories of reclaims, and where said processor automatically selects a said up to reclaim by navigating the precedence hierarchy to identify the highest priority up to reclaim in said precedence hierarchy” (claim 14). We disagree with the Appeal 2018-005284 Application 13/415,140 12 Appellant as the above argued limitations are each drawn to conventional computer processing functions such as selecting and sorting, and are not “significantly more” than the abstract concept when considered in the context of each respective claim. For these reasons, the rejection of claims 6, 9, 10, 11, and 14 is not sustained as well. The Appellant has provided the same arguments for the remaining claims drawn to similar subject matter and the rejection of these claims is sustained as well. Rejection under 35 U.S.C. § 103 The Appellant argues that the rejection of claim 7 is improper because the rejection fails show the claim limitation of using “tracking data representing incrementally updated respective past movements of shared said railroad transport equipment, to apply an automatically-selected first reclaim to a movement cycle” and “said tracking data of a plurality of said respective past movements of said plurality of shared said railroad equipment, to automatically select a second reclaim” (Appeal Br. 21, 22). In contrast, the Examiner has determined that the cited claim limitation is disclosed by the Appellant’s Specification at paragraphs 2–11, 50, and 51 (Ans. 15–17). We agree with the Appellant. Here, the citations to the Specification at paragraphs 2–11, 50, and 51 fail to disclose the argued claim limitation. For example, although paragraphs 50 and 51 do give background on reclaims and their computation, the use of the specifically recited tracking data of incrementally updated respective past movements of shared said railroad transport equipment for computing a first reclaim; and tracking Appeal 2018-005284 Application 13/415,140 13 data of a plurality of said respective past movements of said plurality of shared said railroad equipment to calculate a second reclaim are not disclosed. For these above reasons, the rejection of claim 7 is not sustained. CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1–6 and 8–20 under 35 U.S.C. § 101 as listed in the Rejections section above. We conclude that Appellant has shown that the Examiner erred in rejecting claim 7 under 35 U.S.C. § 103 as listed in the Rejections section above. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 8–20 101 Eligibility 1–6, 8–20 7 103 Walker and Nageli 7 Overall Outcome 1–6, 8–20 7 Appeal 2018-005284 Application 13/415,140 14 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-IN-PART Copy with citationCopy as parenthetical citation