Ex Parte Bou-Ghannam et al

Patent Trial and Appeal Board

Dec 14, 2018

13869107 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/869, 107 04/24/2013
48916 7590
Greg Goshorn, P.C.
9600 Escarpment Blvd.
Suite 745-9
12/14/2018
AUSTIN, TX 78749
FIRST NAMED INVENTOR
Akram Bou-Ghannam
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.
AUS920120036US2 6286
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3600
MAIL DATE DELIVERY MODE
12/14/2018 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 AKRAM BOU-GHANNAM AND MICHAEL J. DOCKTER
Appeal2017-011064
Application 13/869,107
Technology Center 3600
Before JENNIFER S. BISK, BETH Z. SHAW, and
SCOTT E. BAIN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1-8, all of which are
pending on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
WeAFFIRM. 2
1 The real party in interest is International Business Machines Corp. App.
Br. 3.
2 Our Decision refers to the Appeal Brief filed March 22, 2017 ("App. Br.");
Reply Brief filed August 25, 2017 ("Reply Br."); Examiner's Answer mailed
June 28, 2017 ("Ans."); and Final Office Action mailed August 23, 2016
("Final Act.").
Appeal2017-011064
Application 13/869,107
STATEMENT OF THE CASE
Appellants' invention relates to defining a fulfillment path solution for
milestones to be fulfilled with items undergoing an operational fulfillment
process. Abstract.
Claim 1 is illustrative of Appellants' invention, as reproduced
below:
1. A method, comprising:
defining a computer-implemented fulfillment path
solution (FPS) comprising a plurality of discrete items
undergoing an opt- operational fulfillment process (OPP);
wherein each of the plurality of items correspond to
corresponding work activity of a plurality of work activities
associated with a provisioning of resources; and,
wherein the FPS comprises a plurality of milestones to be
fulfilled by the plurality of items as the items travel the OPP;
and
wherein each milestone of the plurality of milestones
exerts a resistive force on each item of the plurality of items;
and
wherein a milestone is an event to be fulfilled by a
corresponding work activity of the plurality or work activities;
calculating, by a computing system, a plurality of sums,
each sum corresponding to a particular item and each sum a
total of all resistive forces exerted on the corresponding item by
each of the milestones; the calculating of each resistive force,
compnsmg:
calculating an initial resistive force, with respect to each
item, based upon a difference between a deadline associated
with the milestone and
the item, wherein an item with a deadline closer to the
current time
is set to a higher resistive force than an item with a deadline
farther
from the current time; and
increasing, by a computing system, each resistive force
on each item as a corresponding deadline approaches each item;
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Application 13/869,107
wherein a higher sum corresponding to a first item and a
lower sum corresponding to a second item indicates a need for
more immediate attention to the first item than the second item;
generating, by a computing system, a schedule for
performing the plurality of work activities based upon the
plurality of sums and corresponding work activities that
indicates the work activities and a corresponding attention that
each work activity requires to complete the OPP; and
executing the plurality of work activities in conformity
with the schedule.
REJECTIONS
Claims 1-8 stand rejected under 35 U.S.C. § 101 because the claimed
invention is directed to ineligible subject matter. Final Act. 4--7.
Claims 1---6 and 8 stand rejected under 35 U.S.C. § 103 as
unpatentable over Henry et al. (US PG Pub. No. 2009/0055228 Al,
published Feb. 26, 2009), [hereinafter Henry] in view of Steimle et al. (US
PG Pub. No. 2013/0145299 Al, published Jun. 6, 2013), [hereinafter
Steimle]. Final Act. 8-10. 3
CONTENTIONS AND ANALYSIS
SECTION 101 REJECTION
The Examiner concludes claims 1-8 are directed to ideas that have
been identified as abstract by our reviewing court. Final Act. 4--5; Ans. 15-
17. In particular, the Examiner concludes that the abstract idea underlying
3 The Examiner appears to have withdrawn the rejection of claim 7 under
35 U.S.C. § 112 (Final Act. 6), after an Amendment filed December 22,
2016 that amended claim 7 to remove the phrase "selected arbitrary." Ans.
13-14. We consider the rejection withdrawn.
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these claims is defining a fulfillment path solution, which is an idea of itself
tied to a mathematical relationship. Id. The Examiner also concludes
additional elements recited in the claims do not amount to significantly more
than the abstract idea itself. Ans. 16-17. According to the Examiner, the
claims require no more than performing generic computer functions. Id.
Appellants present several arguments against the 35 U.S.C. § 101
rejection. App. Br. 7-8. Appellants contend the claims recite a novel
concept of a resistive force and do not tie up any judicial exception. Id. at 7.
We do not find Appellants' arguments persuasive. Instead, we
conclude the Examiner has provided a comprehensive response to
Appellants' arguments supported by a preponderance of evidence. Ans. 15-
18. As such, we adopt the Examiner's findings and conclusions provided
therein. Id. We begin with a review of the applicable legal framework.
As the Supreme Court has held, "[l]aws of nature, natural phenomena,
and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). "The 'abstract ideas'
category embodies 'the longstanding rule that ' [ a ]n idea, of itself, is not
patentable.''" Id. at 23 5 5 ( alteration in original) ( quoting Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)). In Alice, the Supreme Court set forth an
analytical "framework for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Id. at 2355 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The first step in the
analysis is to "determine whether the claims at issue are directed to one of
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those patent-ineligible concepts," such as an abstract idea. Id. ( citing Mayo,
566 U.S. at 77-78).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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). In other words, the
second step is to "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."' Id. (alteration in original) ( quoting Mayo, 566 U.S. at 72-
73). The prohibition against patenting an abstract idea "'cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted).
In the present case, turning to the first step of the Alice inquiry, we
agree with the Examiner that Appellants' claims are directed to an abstract
idea of defining a fulfillment path solution tied to mathematical
relationships. Final Act. 5. The underlying concepts embodied by the
limitations recited in Appellants' claims, including, for example, "defining,"
"calculating," "increasing," "generating," and "executing," are directed to
abstract processes of defining, calculating, or generating data. Ans. 4.
Calculating and generating data is an abstract idea. See Elec. Power
Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) ("collecting
information, analyzing it, and displaying certain results of the collection and
analysis" is abstract); In re Salwan, 681 F. App'x 938,941 (Fed. Cir. 2017)
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(nonprecedential) ( affirming the rejection under § 101 of claims directed to
"storing, communicating, transferring, and reporting patient health
information," noting that "while these concepts may be directed to practical
concepts, they are fundamental economic and conventional business
practices"); Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F.
App'x 988, 992 (Fed. Cir. 2014) (nonprecedential) ("using categories to
organize, store, and transmit information is well-established"). Similarly, all
the steps recited in the pending claims are abstract processes of calculating
and generating data.
We also agree with the Examiner that "calculating the steps required
in order to traverse the FPS by determining a beginning time and required
end/ deadline difference by which the FPS must be performed" is a
mathematical relationship. Ans. 15. We conclude that the claim solves a
mathematical problem.
Turning to the second step of the Alice inquiry, we find nothing in
Appellants' claims that adds anything "significantly more" to transform
them into a patent-eligible application of the abstract idea. Alice, 134 S. Ct.
at 2357. The claimed steps are ordinary steps in data analysis and are recited
in an ordinary order.
We are not persuaded by Appellants' unsupported attorney argument
that the claims recite specific, technical improvements by virtue of reciting a
"novel" resistive force calculation. App. Br. 5, 6. Nothing recited by the
claims "offers a meaningful limitation beyond generally linking 'the use of
the [ method] to a particular technological environment,' that is,
implementation via computers." Alice 134 S. Ct. at 2360 (alteration in
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original) (quoting CLS Bankint'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269,
1291 (Fed. Cir. 2013) (Lourie, J., concurring)).
As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." Alice, 134 S. Ct. at 2358; see id. at 2359 (concluding
claims "simply instruct[ing] the practitioner to implement the abstract idea
of intermediated settlement on a generic computer" are not patent eligible);
see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir.
2014) (claims merely reciting the abstract idea of using advertising as
currency as applied to particular technological environment of the Internet
are not patent eligible); Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (claims reciting
"generalized software components arranged to implement an abstract
concept [ of generating insurance-policy-related tasks based on rules to be
completed upon the occurrence of an event] on a computer" are not patent
eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir.
2012) ("[s]imply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible"); Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044,
1056 (Fed. Cir. 2017) (generic computer elements did not represent
improvement in computer technology but rather were invoked merely as
tools, and did not transform the claims into significantly more than claims to
abstract idea itself); Elec. Power Grp., 830 F.3d at 1351 (rejection affirmed
for a method of performing real-time performance monitoring of an electric
power grid because "the claims do not go beyond requiring the collection,
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analysis, and display of available information in a particular field ... over
conventional computer and network technology").
Appellants assert that the pending claims cannot be directed to an
abstract idea because they do not "attempt to restrict others from practicing
every conceivable method [of] scheduling tasks." App. Br. 7. This
argument is not persuasive because, although "preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). Where a "patent's claims are deemed
only to disclose patent ineligible subject matter under the [Alice/Mayo]
framework ... , preemption concerns are fully addressed and made moot."
Id.
Because Appellants' claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more," we sustain the
Examiner's rejection of these claims under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
SECTION 103 REJECTION
Appellants argue Henry and Steimle fail to teach or suggest
"generating a schedule based upon a plurality of sums and corresponding
work activities that indicates the work activities and a corresponding
attention that each work activity requires," as required by claim 1. App. Br.
10. In particular, Appellants argue that neither Henry nor Steimle teach "the
resistive force is calculated from multiple deadlines corresponding to
multiple items," as required by the claims. Id. Appellants argue Henry's
"schedule uncertainty" does not teach the resistive force. Id.
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The Examiner determines Appellants have not explicitly provided a
definition of what constitutes a "resistive force." Final Act. 9-10; Ans. 19.
The Examiner interprets a "resistive force" as that which interferes with a
deadline to a task being completed. Id. The Examiner cites to various
portions of Henry (Abstract, Fig. 6) and Steimle (i1i18, 9, 42, and 43) as
teaching the resistive force. Id. Even assuming the Examiner's
interpretation of "resistive force" is reasonable, we agree with Appellants
that on this record, the Examiner has not sufficiently explained how these
portions of Henry or Steimle teach the claimed calculation of resistive force
for each item or how "each milestone of the plurality of milestones exerts a
resistive force on each item of the plurality of items," as claimed.
Although Henry teaches "uncertainty bars," these bars visually
indicate a work item's start date or finish date, or expected start or finish
dates. See Henry, Abstract, Fig. 6. It is unclear from this record how the
Examiner maps these uncertainty bars of Henry to the Examiner's definition
of resistive force as "that which interferes with a deadline to a task being
completed," or why one skilled in the art would find the elements of claim 1
obvious based on these teachings. Similarly, the Examiner does not
sufficiently explain how the cited paragraphs of workflow descriptions in
Steimle teach "that which interferes with a deadline to a task being
completed."
Accordingly, constrained as we are by this record, we do not sustain
the Examiner's§ 103 rejection of claim 1. For the same reasons, we do not
sustain the Examiner's§ 103 rejection of dependent claims 2---6 and 8.
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CONCLUSION
We conclude Appellants have not demonstrated the Examiner erred in
rejecting claims 1-8 under 3 5 U.S. C. § 1 01.
On the record before us, we conclude the Examiner erred in rejecting
claims 1---6 and 8 under 35 U.S.C. § 103.
DECISION
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's rejection of claims 1-8.
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).
AFFIRMED
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