Ex Parte Berge

Patent Trials and Appeals Board

Jul 5, 2018

10836714 - (D) (P.T.A.B. Jul. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/836,714 0413012004
67141 7590 07/09/2018
Boeing and Alston & Bird, LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Matthew E. Berge
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.
038190/277280 1318
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07 /09/2018 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):
usptomail@alston.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW E. BERGE
Appeal2017-000698 1
Application 10/836,7142
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
KEVIN W. CHERRY, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-13, 19-29, and 34--44. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
December 11, 2015) and Reply Brief ("Reply Br.," filed October 19, 2016),
and the Examiner's Answer ("Ans.," mailed August 19, 2016) and Final
Office Action ("Final Act.," mailed June 11, 2015).
2 Appellant identifies The Boeing Company as the real party in interest.
App. Br. 2.
Appeal2017-000698
Application 10/836,714
CLAIMED INVENTION
Appellant's claimed invention "relates generally to methods, systems
and computer program products for collaborative flow management" and,
more particularly, "to methods, systems and computer program products for
schedule recovery, such as airline schedule recovery in the event of adverse
weather conditions, system outages or the like" (Spec. 1, 11. 9--13).
Claims 1, 19, and 3 4 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of determining an alternative schedule
compnsmg:
identifying a plurality of leg replicants for at least some
legs of a plurality of itineraries;
evaluating, with a computer, different combinations of the
leg replicants for the respective legs of the plurality of itineraries
in order to construct schedules for the plurality of itineraries,
wherein evaluating different combinations of the leg replicants
comprises initially relaxing at least some capacity constraints;
and
employing an itinerization routine, once the schedules
have been constructed, for constructing an optimized set of
itineraries in order to assign particular aircraft to the set of
itineraries.
REJECTION
Claims 1-13, 19--29, and 34--44 are rejected under 35 U.S.C. § 101 as
directed to judicially excepted subject matter.
ANALYSIS
Appellant argues claims 1-13, 19-29, and 34--44 as a group (App.
Br. 4--12). We select independent claim 1 as representative. The remaining
claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
2
Appeal2017-000698
Application 10/836,714
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth 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 Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
3
Appeal2017-000698
Application 10/836,714
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that the claims are directed to "the series of steps
instructing how to recover an airline schedule after disruptions," which the
Examiner reasoned is a mathematical relationship and a method of
organizing human activity, and, therefore, an abstract idea; and that the
claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception (Final Act. 4---6).
Referencing the Supreme Court's decision in Alice, Appellant first
argues that the Supreme Court "has only recognized fundamental
economic practices long prevalent in our system of commerce as being
an abstract method of organizing human activity" (App. Br. 5).
Appellant, thus, ostensibly maintains that the pending claims are not directed
to a method of organizing human activities because determining an
alternative schedule for an airline is not a fundamental economic practice
long prevalent in our system of commerce (id. at 6).
As an initial matter, we find nothing in the Court's decision in Alice
that limits methods of organizing human activity to only fundamental
economic practices. Nor, for that matter, does Appellant point us to any
specific portion of the decision that sets forth any such limitation. Indeed, it
is telling in this regard that in enumerating broad examples of what might
constitute an abstract idea, the Court explicitly identified four separate
categories: ( 1) fundamental economic practices; (2) certain methods of
organizing human activities; (3) "an idea of itself'; and ( 4) mathematical
relationships or formulae (see Alice Corp., 134 S. Ct. at 2355-56)-
4
Appeal2017-000698
Application 10/836,714
without any indication that "certain methods of organizing human activities"
was intended to be subsumed within the category of "fundamental economic
practices."
The courts have generally used the phrase "methods of organizing
human activity" in subject matter-eligibility jurisprudence to "describe
concepts relating to interpersonal and intrapersonal activities, such as
managing relationships or transactions between people, social activities, and
human behavior; satisfying or avoiding a legal obligation; advertising,
marketing, and sales activities or behaviors; and managing human mental
activity." See Manual of Patent Examining Procedure ("MPEP")
§ 2106.04(a)(2)(II) (9th ed., Rev, 8, Jan. 2018) (collecting cases). 3 Here, the
Examiner asserts that because "the result of the method recited in the claims
provides direction to individuals managing an airline as to how to recover a
schedule after disruption by providing a new schedule," the claims can be
characterized as directed to "certain [methods] of organizing human
activity," as that phrase has been used by the courts (see Ans. 6). We are not
persuaded that the Examiner's position is unreasonable or otherwise
unsupported.
Appellant further argues that although the pending claims use a
mathematical approach, the claims are not directed to mathematical
relationships and mathematical formulas; instead, according to Appellant,
the claimed "method, system and computer program product for determining
3 Although the MPEP "does not have the force of law or the force of the
rules in Title 37 of the Code of Federal Regulations" (MPEP, Foreword (9th
ed., Rev. 8, Jan. 2018)), we refer to the MPEP, here, for its citation of case
law precedent.
5
Appeal2017-000698
Application 10/836,714
an alternative schedule" are examples of "a novel and useful structure
created with the aid of knowledge of scientific truth," which "was found by
[the Court in Parker v. Flook, 437 U.S. 584 (1978)] to define patent eligible
subject matter" (App. Br. 7).
That argument is similarly unpersuasive. The Federal Circuit has
explained that "the 'directed to' inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether 'their character as
a whole is directed to excluded subject matter."' Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents, 790
F.3d at 1346). Here, it is clear from the Specification, including the claim
language, that claim 1, considered as a whole, is directed to a method for
determining an alternative airline schedule using mathematical optimization,
i.e., Lagrangian relaxation, to produce an optimal set of itineraries (see, e.g.,
Spec. 13-15 (describing that identifying optimal itineraries is a primal
problem that may be formulated as an integral linear problem and solved
using commercially available software)). In this regard, claim 1 is similar to
subject matter that the courts have previously found to be abstract. See, e.g.,
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344,
1350-51 (Fed. Cir. 2014) (claims directed to "organizing information
through mathematical correlations" did not satisfy Mayo/Alice step one).
See also Diamond v. Diehr, 450 U.S. 175, 191 (1981) ("A mathematical
formula ... 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." (citation omitted)).
We also are not persuaded of Examiner error by Appellant's argument
that the pending claims do not seek to tie up all ways of determining an
6
Appeal2017-000698
Application 10/836,714
alternative schedule for an aircraft such that others cannot practice this idea
(App. Br. 8).
There is no dispute that the Supreme Court has described "the concern
that drives [the exclusion of abstract ideas from patent-eligible subject
matter] as one of pre-emption." Alice Corp., 134 S. Ct. at 2354. But
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ f]or this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility." Id.
Turing to step two of the Mayo/Alice framework, Appellant argues
that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because the claim elements amount to
"significantly more" than an abstract idea (App. Br. 8). Yet, to the extent
Appellant maintains that the claims are patent-eligible, i.e., that the claims
amount to "significantly more" than an abstract idea, and/or that the recited
functions are not "well-understood, routine, and conventional in the field,"
because this Board reversed the prior art rejections in its January 12, 2015
Decision, Appellant misapprehends the controlling precedent (id. at 9, 11 ).
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
7
Appeal2017-000698
Application 10/836,714
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "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
Corp., 134 S. Ct. at 2355 (alteration in original) (citation omitted).
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Diehr, 450 U.S. at 188-89 ("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.").
We also cannot agree with Appellant that the Examiner has failed to
provide a proper analysis under step two of the Mayol Alice test, or that the
Examiner has, otherwise, failed to adequately explain why the claims lack
additional elements that amount to significantly more than the judicial
exception (App. Br. 10). Appellant ostensibly maintains that in order to find
that the independent claims do not include additional features that constitute
more than an abstract idea, the Examiner must engage in an element by
element analysis and provide an explanation "for why each additional
element does not add significantly more to the exception" (id.). Yet, we are
aware of no controlling precedent, nor, for that matter, does Appellant
identify any controlling authority, that imposes any such requirement.
It also is significant here that under step two of the Mayo/Alice test,
the elements of each claim are considered both individually and "as an
8
Appeal2017-000698
Application 10/836,714
ordered combination" to determine whether the additional elements, i.e., the
elements other than the abstract idea itself, "transform the nature of the
claim" into a patent-eligible application. Alice Corp., 134 S. Ct. at 2355; see
also Mayo, 566 U.S. at 72-73 (requiring that "a process that focuses upon
the use of a natural law also contain other elements or a combination of
elements, sometimes referred to as an 'inventive concept,' sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the natural law itself' (emphasis added)). We are not persuaded here
that the features that Appellant identifies as amounting to "significantly
more," i.e., identifying a plurality of leg replicants for at least some legs of a
plurality of itineraries; evaluating different combinations of the leg
replicants for the respective legs of the plurality of itineraries by initially
relaxing at least some capacity constraints in order to construct schedules for
the plurality of itineraries; and employing an itinerization routine, once the
schedules have been constructed, for constructing an optimized set of
itineraries in order to assign particular aircraft to the set of itineraries (App.
Br. 10), are "additional elements," as opposed to being merely a part of the
abstract idea itself.
Finally, we cannot agree with Appellant that the claims involve a
transformation of a particular article to a different state or thing (id.), i.e.,
that the claims satisfy the transformation prong of the Bilski machine-or-
transformation test. 4 Appellant argues that the "construction of an optimized
set of itineraries serves to transform the legs of the original itineraries into a
different state, such as an optimized set of itineraries including leg
4 Bilski v. Kappas, 561 U.S. 593 (2010).
9
Appeal2017-000698
Application 10/836,714
replicants" and that "the transformation to a different state that is provided
by the claims weighs in favor of finding that the claims recite 'significantly
more' than an abstract idea" (id.). But these alleged "transformations" are,
at best, merely a manipulation of data, which is not sufficient to meet the
transformation prong under 35 U.S.C. § 101. See Gottschalkv. Benson,
409 U.S. 63, 71-72 (1972) (a computer based algorithm that merely
transforms data from one form to another is not patent-eligible).
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection of claim 1, and claims 2-13, 19-29, and 34--44, which
fall with claim 1.
DECISION
The Examiner's rejection of claims 1-13, 19-29, and 34--44 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)(l)(iv).
AFFIRMED
10