Ex Parte Cozad

Patent Trial and Appeal Board

Feb 25, 2019

13713962 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/713,962 12/13/2012 Thomas Michael Cozad JR.
25315 7590 02/27/2019
LOWE GRAHAM JONES, PLLC
701 FIFTH A VENUE
SUITE4800
SEATTLE, WA 98104
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.
PINC-1-2401 8947
EXAMINER
RACIC, MILENA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
patentdocketing@lowegrahamjones.com
docketing-patent@lowegrahamjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS MICHAEL COZAD JR.
Appeal2017-009044
Application 13/713,962
Technology Center 3600
Before ELENI MANTIS MERCADER, JASON J. CHUNG, and
SCOTT E. BAIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
1-16, 35, 36, 38--40, 51, and 53-57. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellant is the real party in interest. Br. 1.
Appeal2017-009044
Application 13/713,962
CLAIMED SUBJECT MATTER
The claims are directed to systems and methods for managing product
location information. Claims 1 and 51, reproduced below, are illustrative of
the claimed subject matter:
1. A method for managing product location information, the
method comprising:
in a mobile computing device, receiving an indication of
an initial position in a store, the indication of the initial position
identifying a shelf or location that includes multiple items
arranged in order from a first end of the shelf to a second end of
the shelf, wherein the mobile computing device includes a user
interface that includes a first control configured to indicate that
a last item in a shelf has been scanned, a second control
configured to indicate that a last item in a section has been
scanned, and a third control configured to specify a pattern in
which items on a shelf are to be scanned;
specifying, via the third control of the user interface, a
pattern of scanning the multiple shelves;
receiving a series of item identifiers that each correspond
to one of the multiple items, the item identifiers received from a
scanner operated by a user who is traversing the shelf, in a right
or left direction specified via the third control of the user
interface, from the first end to the second end;
receiving an indication that the user has reached the
second end of the shelf; and
in response to receiving the indication that the user has
reached the second end of the shelf and without receiving any
additional inputs from the user, recording store aisle location
information for each of the multiple items including, for each
item, an aisle identifier, a side identifier, a section identifier, a
shelf identifier, and an itemization order.
51. A method for managing product location information, the
method comprising:
at a scanner, managing location information about
products arranged on an aisle of a store, the aisle comprising
multiple sections each having multiple shelves that each have a
2
Appeal2017-009044
Application 13/713,962
first and a second end, and that each include at least some of the
products, wherein each shelf has an associated attached
machine-readable location indicator device that encodes a
location corresponding to the shelf, by:
receiving an indication of a location corresponding to a
first one of the shelves, wherein the scanner is operated by a
user to scan a first machine-readable location indicator device,
wherein the first machine-readable location indicator device is
located at a first end of the first shelf;
in response to receiving the indication of the location,
preparing data structures for storing product location
information;
receiving one or more indicators of products on the first
shelf, the indicators received from the scanner operated by the
user;
recording the received product indicators in association
with location information for each of the products, based on the
received location indication, the recording including
automatically determining product shelf positions by
maintaining a counter that is incremented as each product
indicator is received; and
preparing to record product indicators for a second shelf
by: receiving a rescan of the first machine-readable location
indicator device, receiving a scan of a second machine-readable
location indicator device that is located the second end of the
first shelf, and/or receiving a scan of a third machine-readable
location device indicator that is attached to a second shelf.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Doyle
Linaker
Benson
Chaves
Liu
us 5,426,284
US 8,009,864 B2
US 2005/0256726 Al
US 2009/0231135 Al
US 2011/0179160 Al
3
June 20, 1995
Aug. 30, 2011
Nov. 17, 2005
Sept. 17, 2009
July 21, 2011
Appeal2017-009044
Application 13/713,962
REJECTIONS
Claims 1-16, 35, 36, 38--40, 51, and 53-57 stand rejected under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more.
Claims 1-16, 51, and 53-57 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Chaves in view of Doyle and further in view of
Benson.
Claims 35, 36, 38, and 39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chaves, Doyle, and Benson and further in view of
Linaker.
Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chaves, Doyle, Benson, Linaker, and further in view of
Liu.
OPINION
Except where indicated, we adopt the Examiner's findings in the
Answer and Final Office Action and we add the following primarily for
emphasis. We note that if Appellant failed to present arguments on a
particular rejection, we decline to review unilaterally those uncontested
aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI
2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir.
2008) (the Board may treat arguments Appellant failed to make for a given
ground of rejection as waived).
4
Appeal2017-009044
Application 13/713,962
Claims 1-16, 35, 36, 38-40, 51, and 53-57 rejected
under 35 US.C. § 101
Appellant argues that the claims are directed to an improvement of
computer functionality. Br. 7. In particular Appellant argues that the
claimed techniques provide for the efficient collection and synthesis of
product location information via specific technical contributions, including
improved user interface constructs and/or location indicator devices. Id.
Appellant asserts that the functioning of the computing system is coupled to
and reflective of the layout of the store or other location being scanned. Br.
8. Appellant argues that this improves the functioning of a computer system
by naturally driving the operation of the computer system to take specific
actions in response to a pattern of scans. Id.
Appellant further argues with respect to claims 51 and 54 that the
limitation of "automatically determining item shelf positions by maintaining
a counter that is incremented as each item identifier is received" or similar
language, allows for a computer to perform a collection of shelf positions
without any additional inputs from a user as items are scanned one after the
other. Br. 8-9. According to Appellant this limitation explicitly improves
the functioning of a computer system, because the computer system cannot
otherwise track shelf item positions. Br. 9.
Appellant also argues that the specific combination of features of the
present claims improves the prior technology of inventory management, just
as McRO 's2 claims improved animation technology. Br. 11.
Appellant further argues that the claims are not directed to a
fundamental economic practice because they are not directed to finance,
2 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
5
Appeal2017-009044
Application 13/713,962
economics, or business relationships, such as hedging or mitigating risks.
See id. Appellant asserts that the claims are directed to computer-
implemented methods, systems, and computer readable media for the
efficient collection and synthesis of product location information. Id.
Appellant argues that such techniques are not mere abstractions simply
because they may involve human actions, be used in a business context, or
otherwise deliver economic efficiencies. Id.
Appellant also argues that the claims do not pre-empt others and add
significantly more to the abstract idea. Br. 12-17.
We are not persuaded by Appellant's argument. An invention is
patent-eligible if it claims a "new and useful process, machine, manufacture,
or composition of 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 Bankint'l, 573 U.S. 208,216 (2014) (internal quotation
marks and citation omitted).
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. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
6
Appeal2017-009044
Application 13/713,962
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, 191
( 1981) ); "tanning, dyeing, making water-proof 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))).
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 176; 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. ( 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.").
7
Appeal2017-009044
Application 13/713,962
If the claim is "directed to" an abstract idea, we tum 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 (internal 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. (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 PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupmgs 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 (see Manual of Patent Examining
Procedure (MPEP) § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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:
8
Appeal2017-009044
Application 13/713,962
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.0S(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 Memorandum.
In the instant case, claim 1 as a whole recites a method of mental
processes being performed in the mind or by a human using a pen and paper.
In particular, the method of claim 1 allows recording store aisle location
information for each of multiple items including, for each item, an aisle
identifier, a side identifier, a section identifier, a shelf identifier, and an
itemization order. This limitation, as drafted, is a process that, under its
broadest reasonable interpretation, covers performance of the limitation in
the mind or by a human using a pen and paper but for the recitation of
generic computer components. That is, other than reciting "in a mobile
computing device" at a high level of generality, nothing in the claim
elements precludes the steps from being performed in the mind or by a
human using a pen and paper. Furthermore, the "in a mobile computing
device" language encompasses the user manually recording an aisle
identifier, a side identifier, a section identifier, a shelf identifier, and an
itemization order. Similarly, the steps of keeping track of the direction of
the scan and the beginning and the end of a shelf constitute mental processes
because it encompasses the user keeping track of the direction of the scan
mentally or by using pen and paper. Thus, the claim recites mental
processes.
9
Appeal2017-009044
Application 13/713,962
Because the claims recite a method of a mental process under Alice
step 1, prong 1, we proceed to Alice step 1, prong 2-i.e., we determine
whether the method of a mental process is integrated into a practical
application.
Here, the claim further recites specifying via a user interface, a pattern
of scanning multiple shelves, receiving a series of item identifiers that each
correspond to one of the multiple items, the item identifiers received from a
scanner operated by a user who is traversing the shelf, in a right or left
direction specified via a user interface, from the first end to the second end
and receiving an indication that the user has reached the second end of the
shelf. The claim recites
in response to receiving the indication that the user has reached
the second end of the shelf and without receiving any additional
inputs from the user, recording store aisle location information
for each of the multiple items including, for each item, an aisle
identifier, a side identifier, a section identifier, a shelf identifier,
and an itemization order
( emphases added). Accordingly, the "mobile computing device" and
the user interface are recited at a high level of generality, i.e., as a generic
processor and user interface performing a generic computer function of
processing data (receiving information regarding location of store items in a
shelf). This generic processor limitation is no more than mere instructions to
apply the exception using a generic computer component. The mere
nominal recitation of a generic mobile computing device and the use of a
GUI to enter the items into a computer listing does not take the claim
limitation out of the mental processes grouping. As explained in OIP
Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
10
Appeal2017-009044
Application 13/713,962
2015), "relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible." See also Alice,
573 U.S. at 224 ("use of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions" is not an
inventive concept). "[I]nterchangeability of certain mental processes and
basic digital computation ... help explain why the use of a cmnputer in an
otherwise patent-ineligible process for no more than its most basic function .
. . fails to circumvent the prohibition against patenting abstract ideas and
mental processes." Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.
(US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). In other words, "[u]sing a
computer to accelerate an ineligible mental process does not make that
process patent-eligible." Bancorp Servs, 687 F.3d at 1279. "Simply adding a
'computer aided' limitation to a claim covering an abstract concept, without
more, is insufficient to render the claim patent eligible." Dealertrack, Inc. v.
Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). Accordingly, the additional
elements do not integrate the abstract idea into a practical application
because it does not impose any meaningful limits on practicing the abstract
idea.
Claim 1 is directed to an abstract idea. Similarly independent claims
51 and 54 and dependent claims 2-16, 35, 36, 38--40, 53, and 55-57 are
directed to an abstract idea for the same reasons set forth above.
Regarding Appellant's arguments (Br. 12-17) pertaining to Alice step
2, we disagree. That is, Appellant's assertion regarding pre-emption is
unpersuasive, because "[ w Jhile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility .... Where a patent's claims are deemed only to disclose
11
Appeal2017-009044
Application 13/713,962
patent ineligible subject matter under the Afayo framework, as they are in
this case, preemption concerns are fully addressed and made moot" Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP, 788 F.3d at 1362---63 ("that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract").
Thus, we sustain the Examiner's rejection of claim 1 and for the same
reasons the Examiner's rejection of claims 2-16, 35, 36, 38--40, 51, and 53-
57.
Claims 1-16, 35, 36, 38-40, 51, and 53-57 rejected
under 35 USC§ 103(a)
Appellant argues that the combination of Chaves in view of Doyle
does not teach or suggest "automatically determining item shelf positions by
maintaining a counter that is incremented as each item identifier is
received," or similar as recited in claims 51 and 54. Br. 18-19.
We do not agree. The Examiner finds, and we agree, that
Chaves teaches the object location data 120 may include multiple
entries 122 (represented here in tabular form) that include
location information for items, such as products on store shelves.
For instance, an entry 122 may include fields or values such as
an item identifier 124 (e.g., A, B or D), a location 126 (e.g.,
"Shelf X"), and a timestamp 128. Such information may define,
for example, the last known location of a particular item at a
given time, such as the last time that the RFID tag for a, particular
item was read by the mobile reader 102. [T]he entry 122 a for
item A may indicate that item A 106 a is stored on "Shelf X,"
and the timestamp 128 may indicate that the most recent scan of
item A occurred at "09:29" on "2008-02-29" (i.e., 9:29 AM on
Feb. 29, 2008). Notably, in an initial state, the object location
data 120 does not include an entry for item C 106 c.
12
Appeal2017-009044
Application 13/713,962
Ans. 11-12, citing para. 38 (emphasis omitted). Chaves also teaches the
timestamp 128 scanned may be updated with more up to date scan times, for
example timestamp 9:29 for entry 122b may be updated with the later scan
time 1 7: 19 and updated information may be sent to the ERP system at
scheduled intervals. Ans. 12, citing paras. 41--42 and Fig. 2B-2D.
Accordingly, we agree with the Examiner's findings that the items A, B, C,
and D are incremented automatically when updates are performed. See Ans.
12.
Appellant further argues that neither the Figures nor the text of
Benson teach or even suggest the specific user interface controls recited by
claim 1, including a "third control configured to specify a pattern in which
items on a shelf are to be scanned." Br. 20. Appellant asserts that Benson is
directed to a planogram viewer application instead of a scanning application,
and Benson would not include controls that specify scanning patterns. Id.
We are not persuaded by Appellant's argument. "[O]ne cannot show
non-obviousness by attacking references individually where ... the
rejections are based on combinations of references." In re Keller, 642 F.2d
413,426 (CCPA 1981). The Examiner finds, and we agree, that Chaves
teaches an output-module configured to transmit the low-level query via the
mobile reader, and to output an indicia of items that respond to the low-level
query (para. 12) scanning in programmable directions to the left or to the
right (para. 55) and begin scanning items within a scan envelope 112 defined
in part, for example, by scan directions 114a and 114b (pattern in which
items on a shelf are to be scanned) (paras. 35, 62---63). Ans. 12-13. The
Examiner then turns to Benson disclosing a display screen of a planogram
viewer application depicting a graphical depiction user selected planogram
13
Appeal2017-009044
Application 13/713,962
(Fig. 4-14B) wherein the store header table contains an entry for every
commodity in every department of every store. Ans. 13. Each entry
includes the POG and location information for the planogram identified by
the POG. Ans. 13. Accordingly, the combination teaches the disputed
limitation.
Appellant further argues with respect to claim 3 5 that "planograms ...
are not determined based on 'a scanned identifier of one item located in the
one section."' Br. 20-21.
We do not agree. The Examiner finds, and we agree, that Linaker
"scans" items using image processing techniques, the image 300 is captured
by an image capture device positioned approximately at the height of the
top-most shelf 302. Ans. 14, citing Figs. 2, 3.
Accordingly, we affirm the Examiner's rejection of claim 1 and the
rejections of claims of 1-16, 35, 36, 38--40, 51, and 53-57.
DECISION
We affirm the Examiner's rejection of claims 1-16, 35, 36, 38--40, 51,
and 53-57.
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
14