Ex Parte Barry et al

Patent Trial and Appeal Board

Nov 20, 2018

11780811 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/780,811 07/20/2007 James Barry
30636 7590 11/20/2018
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
40125 /025 02 4728
EXAMINER
NELSON, FREDA ANN
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
11/20/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES BARRY, JAMES COLE, JEFFREY DEVANEY,
THOMAS O'HALLORAN, and MATT MARCELLA
Appeal2017-008581
Application 11/780,811 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-11 and 13-19. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' invention relates to a method and system for determining
fuel pricing for aircraft. (Spec. ,r 3.)
1 According to Appellants, the real party in interest is Passur Aerospace, Inc.
(f/k/a Megadata Corporation). (Appeal Br. 2.)
Appeal2017-008581
Application 11/780,811
Claims 1 and 11 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A non-transitory computer-readable storage medium
storing a set of instructions executable by a processor, the set of
instructions being operable to:
receive an aircraft identifier corresponding to an aircraft;
retrieve information on the basis of the aircraft identifier,
the information comprising a comparison between a predicted
fuel requirement determined from at least one previous visit and
an actual fuel purchase from the at least one previous visit;
determine an attractiveness of an operator of the aircraft as
a potential customer based on at least the retrieved information,
the attractiveness being decreased when the comparison
indicates at least a predetermined disparity between the predicted
fuel requirement and the actual fuel purchase; and
determine a suggested fuel price based on at least the
attractiveness of the operator as a potential customer, wherein a
suggested fuel price for an operator having a high attractiveness
is lower than a suggested fuel price for an operator having a low
attractiveness.
REJECTION
Claims 1-11 and 13-19 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
ANALYSIS
"Whoever 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, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
2
Appeal2017-008581
Application 11/780,811
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 2357 (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that claim 1 is "directed to the abstract idea of 'determining a
suggested fuel price based on at least the attractiveness of the operator as a
potential customer."' (Final Action 8, emphasis omitted.)
Appellants argue that the Examiner erred by "oversimplifying the
asserted abstract idea." (Appeal Br. 8.)
Under step one of the Alice framework, we "look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
3
Appeal2017-008581
Application 11/780,811
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification is titled "Method and System for
Determining Fuel Pricing." (Spec. 1, emphasis omitted.) Claim 1 provides
further evidence. Claim 1 recites "receive an aircraft identifier," "retrieve
information on the basis of the aircraft identifier," "determine an
attractiveness of an operator of the aircraft as a potential customer," "and
determine a suggested fuel price." In other words, information is received,
related information is retrieved, a rule/algorithm is applied, and results are
determined.
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." Id.
at 1241.
"[W]e have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas." Elec. Power Grp., 830 F.3d at 1353. "In
a similar vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Id. at 1354.
Here, the limitations recited in claim 1 could be performed by a person using
a pencil and paper, or with ordinary mental steps. See id. at 1355. "And we
have recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
4
Appeal2017-008581
Application 11/780,811
collection and analysis." Id. at 1354. "Here, the claims are clearly focused
on the combination of those abstract-idea processes." Id.; see also Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776
F.3d 1343, 1347 (Fed. Cir. 2014) (determining claims directed to collecting,
recognizing, and storing data in a computer memory to be directed to an
abstract idea).
Regardless, Appellants argue that "the claims are not directed to a
conventional activity, such as a bank activity, wherein the only modification
is the addition of a computer. Instead, the claimed invention is directed to
an entirely unconventional method of determining a suggested fuel price."
(Appeal Br. 7.)
We do not find this argument persuasive. While we agree with
Appellants that the claims are directed to determining a fuel price, as noted
above, the steps could be performed by a person with ordinary mental steps
or using a pencil and paper. (See Final Action 8-9; see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (discussing "the
fundamental economic concept of offer-based price optimization through the
use of generic-computer functions").) To the extent Appellants' argument is
that because the steps are novel, the claim recites patent eligible subject
matter, we disagree. "The 'novelty' of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89
(1981).
Moreover, the limitations of claim 1 do not recite implementation
details. Instead, they recite functional results to be achieved. In other
5
Appeal2017-008581
Application 11/780,811
words, claim 1 does not recite "a particular way of programming or
designing the software ... , but instead merely claim[ s] the resulting
systems." Apple, Inc., 842 F.3d at 1241. "Indeed, the claim language here
provides only a result-oriented solution, with insufficient detail for how a
computer accomplishes it. Our law demands more." Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
Nonetheless, Appellants seek to analogize claim 1 to the claims in
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016). (Appeal Br. 9--11.) We disagree.
In McRO, the court determined that
the claimed improvement here is allowing computers to produce
"accurate and realistic lip synchronization and facial expressions
in animated characters" that previously could only be produced
by human animators. As the district court correctly recognized,
this computer automation is realized by improving the prior art
through "the use of rules, rather than artists, to set the morph
weights and transitions between phonemes." The rules are
limiting in that they define morph weight sets as a function of the
timing of phoneme sub-sequences.
McRO, 837 F.3d at 1313 (citations omitted). Here, the asserted
improvement is to a business method regarding determining fuel pricing for
aircraft. Claim 1 refers to processors at only a high level of abstraction, e.g.,
"instructions executable by a processor." (Claim 1.) Indeed, "without the
computer[/processor] limitations nothing remains in the claim[] but the
abstract idea." Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada
(US.), 687 F.3d 1266, 1280 (Fed. Cir. 2012). In other words, unlike McRO,
"[ t ]hese claims in substance [are] directed to nothing more than the
performance of an abstract business practice ... using a conventional
6
Appeal2017-008581
Application 11/780,811
computer. Such claims are not patent-eligible." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
In view of the above, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Step two of the Alice framework has been described "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."' Alice, 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 72-73).
Taking the claim elements separately, the function performed by the
computer at each step is purely conventional. Receiving data, retrieving
data, analyzing data, and providing results are basic computer functions. In
short, each step does no more than require a generic computer to perform
routine computer functions.
Considered as an ordered combination, the instructions in Appellants'
claim add nothing that is not already present when the steps are considered
separately. The claims do not, for example, purport to improve the
functioning of a computer. Nor do they effect an improvement in any other
technology or technical field. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea. That is not
enough to transform an abstract idea into a patent-eligible invention. Alice,
134 S. Ct. at 2360; see also Final Action 9-10.
Moreover, "[i]t has been clear since Alice that a claimed invention's
use of the ineligible concept to which it is directed cannot supply the
inventive concept that renders the invention 'significantly more' than that
7
Appeal2017-008581
Application 11/780,811
ineligible concept." BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018).
Nonetheless, Appellants argue that "under the analysis used in
[BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016)], the ordered combination of elements that are
arranged to produce an improvement in the field [ of aviation] would amount
to 'significantly more."' (Appeal Br. 12.)
In BASCOM, the court determined that "an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces." BASCOM, 827 F.3d at 1350. Specifically, "[t]he
inventive concept described and claimed in the '606 patent is the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user." Id. at 1350. The
Federal Circuit determined that this "particular arrangement of elements is a
technical improvement over prior art ways of filtering." Id. Appellants do
not indicate what element(s) in claim 1 correspond to, e.g., the "filtering tool
at a specific location, remote from the end-users," nor do Appellants indicate
how the claimed arrangement of steps is a technical improvement over the
prior art. Therefore, we do not find this argument persuasive.
In view of the above, we agree with the Examiner that claim 1 is
directed to a judicial exception under § 101 without significantly more.
Appellants do not present separate arguments for claim 2-11 and 13-19.
(See Appeal Br. 12-13.) Therefore, claims 2-11 and 13-19 fall with
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
8
Appeal2017-008581
Application 11/780,811
DECISION
The Examiner's rejection of claims 1-11 and 13-19 under 35 U.S.C.
§ 101 is affirmed.
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)(l )(iv).
AFFIRMED
9