Ex Parte Dingler et al

Patent Trials and Appeals Board

Jan 28, 2019

13920690 - (D) (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/920,690 06/18/2013
46583 7590 01/30/2019
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
John R. Dingler
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.
END920080088US2 2366
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
docketing@rmsc2.com
lga11augher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. DINGLER, DAVID C. OLDS, JAMES R. RUDD, and
MATTHEWB. TREVATHAN
Appeal2017-005412
Application 13/920, 690 1
Technology Center 3600
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
HUNG H. BUI, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-13 and 15-21, which are all the
claims pending in the application. Claim 14 is cancelled. App. Br. 42--46,
Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, International Business Machines Corporation is
the real party in interest. App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief filed August 19, 2016
("App. Br."); Reply Brief filed February 10, 2017 ("Reply Br."); Examiner's
Answer mailed December 14, 2016 ("Ans."); Final Office Action mailed
March 18, 2016 ("Final Act."); and original Specification filed June 18,
2013 ("Spec.").
Appeal2017-005412
Application 13/920,690
STATEMENT OF THE CASE
Appellants' invention relates to "a system and method for providing
scheduling and reservation services [to users of mobile devices] using
location based services." Spec. ,r 1. According to Appellants,
[t]he reservation computer device is operable to prioritize a
reservation schedule of a service establishment [e.g., restaurant]
based on a route and projected arrival time of one or more
subscribing users such that earlier arriving users and users that
have already arrived at the service establishment are given
priority in the reservation schedule regardless of prearranged
reservations [of any of the patrons].
Abstract. "In this way, the late arriving patron can be requeued into the
system, while early arriving patrons can be given priority." Spec. ,r 16.
Claims 1, 12, and 15 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below:
1. A system implemented in a reservation computer device,
compnsmg:
computer executable code tangibly embodied on a
computer readable memory being operable to:
prioritize a reservation schedule of a service establishment
based on a route and projected arrival time of one or more
subscribing users such that earlier arriving users and users that
have already arrived at the service establishment are given
priority in the reservation schedule regardless of prearranged
reservations.
App. Br. 42 (Claims App'x).
EXAMINER'S REJECTIONS & REFERENCES
(1) Claims 1-13 and 15-21 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to an abstract idea without
significantly more. Final Act. 5-6.
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(2) Claim 21 stands rejected under pre-AIA 35 U.S.C. § 112, 2nd
paragraph as being indefinite. 3 Final Act. 6-7.
(3) Claims 1, 5, 8-12, 15, 19, and 21 stand rejected under pre-AIA
35 U.S.C. § I02(b) as being anticipated by Wheat (US 2002/0095312 Al;
published July 18, 2002). Final Act. 7-9.
(4) Claims 2--4 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being obvious over Wheat and Farris (US 2009/0325595 Al; published Dec.
31, 2009). Final Act. 9-10.
(5) Claims 6, 7, and 18 stand rejected underpre-AIA
35 U.S.C. § I03(a) as being obvious over Wheat and Shamilian (US
2009/0187488 Al; published July 23, 2009). Final Act. 10-11.
(6) Claims 13 and 16 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being obvious over Wheat, Shamilian, and Official
Notice as evidenced by Lapidot et al. (US 6,490,519 Bl; published Dec. 3,
2002). Final Act. 11-12.
(7) Claim 17 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
being obvious over Wheat, Farris, Shamilian, and Official Notice as
evidenced from Gounares et al. (US 2009/0164236 Al; published June 25,
2009). Final Act. 12-13.
(8) Claim 20 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
being obvious over Wheat and Addy (US 2009/0274104 Al; published Nov.
5, 2009). Final Act. 13-14.
3 Claim 13 was also rejected under pre-AIA 35 U.S.C. § 112, 2nd paragraph
as being indefinite. Final Act. 6-7. However, the Examiner withdrew the
rejection of claim 13. Ans. 3. As such, we need not address the rejection of
claim 13 herein.
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DISCUSSION
Patent-Eligible Subject Matter: Claims 1-13 and 15-21
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court's two-step framework articulated in Alice Corp.
Proprietary LTD. v. CLS Bank International, 573 U.S. 208,216 (2014).
First, we determine whether the claims are directed to a patent-ineligible
concept: laws of nature, natural phenomena, and abstract ideas. Id. at 217-
18. If so, we then proceed to the second step 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. at 219. 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.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
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abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
( 1) Mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations;
(2)Mental processes-concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
(3) Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions
between people (including social activities, teaching, and
following rules or instructions).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50, 52 (Jan. 7, 2019 ("PTO§ 101 Memorandum")) which is effective on
January 7, 2019. According to the PTO§ 101 Memorandum, "claims that
do not recite [subject] matter that falls within these enumerated groupings of
abstract ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
(abstract idea), and thus are patent-eligible, if "the claim as a whole
integrates the recited judicial exception into a practical application of that
judicial exception." 84 Fed. Reg. at 53. "Integration into a practical
application" requires an additional element or a combination of additional
elements in the claim to apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
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the claim is more than a drafting effort designed to monopolize the
exception. 84 Fed. Reg. at 53.
For example, limitations that are indicative of "integration into a
practical application" include:
a) Improvements to the functioning of a computer, or to any other
technology or technical field-see MPEP 2106.05(a);
b) Applying the judicial exception with, or by use of, a particular
machine - see MPEP 2106.05(b );
c) Effecting a transformation or reduction of a particular article to
a different state or thing - see MPEP 2106.05( c ); and
d) Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to
monopolize the exception - see MPEP 2106.05( e ).
In contrast, limitations that are not indicative of "integration into a
practical application" include:
a) Adding the words "apply it" ( or an equivalent) with the judicial
exception, or mere instructions to implement an abstract idea on
a computer, or merely uses a computer as a tool to perform an
abstract idea-see MPEP 2106.05(±);
b) Adding insignificant extra-solution activity to the judicial
exception-see MPEP 2106.05(g); and
c) Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP 2106.05(h).
See PTO§ 101 Memorandum, 84 Fed. Reg. at 54--55 ("Prong Two").
In rejecting claims 1-13 and 15-21 under 35 U.S.C. § 101, the
Examiner these claims are directed to an abstract idea of "adjusting a
reservation scheduled based on parties' estimated times of arrival," which is
(1) "an idea of itself," i.e., a mental process that could be performed in the
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human mind or by a human using a pen and paper, or (2) a "method of
organizing human activity" because the claims purport "to manage
interpersonal behaviors and future undertakings of human beings (i.e., a
schedule for reservation for people at a service establishment)," and include
limitations that are analogous or similar to ( 1) concepts of comparing new
and stored information and using rules to identify options as discussed in
Cyberfone and SmartGene, and (2) concepts of involving human activity
relating to commercial practices as discussed in Dietgoal Innovations and In
re Maucorp. Ans. 3--4; Final Act. 5---6 (quoting Cyberfone Sys., LLC v. CNN
Interactive Grp., Inc., 558 F. App'x 988 (Fed. Cir. 2014) (holding that
claims directed to "collecting information, separating, and transmitting that
information according to its classification" are not patent-eligible");
SmartGene, Inc. v. Advanced Biological Labs., SA, 852 F. Supp. 2d 42
(D.D.C. 2012), aff'd 555 F. App'x 950 (Fed. Cir. 2014) (holding that claims
directed to "comparing new and stored information and using rules to
identify medical options" are not patent-eligible); Dietgoal Innocation LLC
v. Bravo Media LLC, 599 Fed. Appx. 956 (Fed. Cir. 2015) (holding claims
directed to "computerized meal planning for a person" are not patent-
eligible ); In re Maucorps, 609 F.2d 481 (CCPA 1979) (holding that claims
directed to a computing system for determining optimal business visits to a
client are not patent-eligible); see also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
The Examiner also determines the claims fail to amount to
"significantly more" than the judicial exception" because (1) the additional
elements recited ... "are known and conventional generic computing
elements ('computer device,' 'memory')" and "only serve to perform well-
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understood functions ( e.g., receiving, organizing, analyzing, outputting data,
communicating via the Internet or SS7 protocol)"; (2) the claims "only
manipulate abstract data elements" and "do not present improvements to
another technological field or the functioning of the computer itself'; and (3)
none of the additional elements recited "offers a meaningful limitation
beyond generally linking 'the use of the [method] to a particular
technological environment'." Final Act. 6.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue
independent claims 1, 12, and 15 are not directed to an abstract idea, i.e., are
not (1) an "idea by itself' or (2) a "method of organizing human activity"
because the claimed invention uses technology, i.e., a reservation computer
device to prioritize a reservation schedule of a service establishment ( e.g.,
restaurant) to overcome the disadvantages that occur in traditional human
activity relating to prioritizing a reservation schedule of a service
establishment and, as such, does more than just "compare new and stored
information" as discussed in SmartGene, managing behavior as discussed in
Dietgoal Innovation, or optimizing the organization of sales representatives
in a business as discussed in In re Maucorps. App. Br. 5-8; Reply Br. 2--4.
Appellants' arguments are not persuasive. At the outset, we note the
Examiner is required to review all claims and characterize whether those
claims are directed to an abstract idea under Alice step 1. However, there is
no single definition of "abstract idea." As the Federal Circuit succinctly put
it:
The problem with articulating a single, universal definition of
"abstract idea" is that it is difficult to fashion a workable
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definition to be applied to as-yet-unknown cases with as-yet-
unknown inventions.
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016). Because there is no single definition of an abstract idea under
Alice step 1, the Federal Circuit has instructed us "to examine earlier cases
in which a similar or parallel descriptive nature can be seen-what prior
cases were about, and which way they were decided." Id. at 1294 (citing
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir.
2016); accord PTO Memorandum, July 2015 Update: Subject Matter
Eligibility (2015), https://www.uspto.gov/sites/default/files/documents/ieg-
july-2015-update. pdf ("PTO 2015 Update") (instructing Examiners that "a
claimed concept is not identified as an abstract idea unless it is similar to at
least one concept that the courts have identified as an abstract idea"). In this
case, the Examiner did what he was required to do, i.e., analyzed the claims
under Alice step 1 consistent with the guidance set forth in the USPTO' s
"2014 Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg.
74618 (Dec. 16, 2014), in effect at the time the rejection was made, i.e., on
Mar. 18, 2016, and provided analogous claims as discussed in Cyberfone,
SmartGene, Dietgoal Innovations, and In re Maucorp.
As acknowledged by the PTO§ 101 Memorandum, the Federal
Circuit's common law, analogy-driven approach (a.k.a. "analogous claim"
test) was effective soon after Alice was decided, but that approach has since
become impractical as the growing body of Federal Circuit precedent has
become increasing more difficult for the Office and examiners to apply in a
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predicable manner. 4 As a result, the PTO has synthesized, for purposes of
clarity, predictability, and consistency, the "abstract idea" exception to
include three categories of abstract ideas: (1) mathematical concepts-
mathematical relationships, mathematical formulas or equations,
mathematical calculations; (2) mental processes----concepts performed in the
human mind (including an observation, evaluation, judgment, opinion); and
(3) certain methods of organizing human activity-fundamental economic
principles or practices (including hedging, insurance, mitigating risk);
commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See PTO§ 101 Memorandum, 84 Fed. Reg.
at 54--55 ("Prong Two").
Contrary to Appellants' arguments, Appellants' Specification and
claims describe "a system and method for providing scheduling and
reservation services [ to users of mobile devices]." Spec. ,r 1. According to
Appellants,
[t]he reservation computer device is operable to prioritize a
reservation schedule of a service establishment [ e.g., restaurant]
based on a route and projected arrival time of one or more
subscribing users such that earlier arriving users and users that
have already arrived at the service establishment are given
4 Accord Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018)
(Denial of Petition For Rehearing En Banc) ("Individual cases, whether
heard by this court or the Supreme Court, are imperfect vehicles for
enunciating broad principles because they are limited to the facts
presented.").
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priority in the reservation schedule regardless of prearranged
reservations.
Abstract. "In this way, the late arriving patron can be requeued into the
system, while early arriving patrons can be given priority." Spec. ,r 16. For
example, Appellants' independent claims 1 and 12 define a computer device
in context of a system operable to:
prioritize a reservation schedule of a service establishment based
on a route and projected arrival time of one or more subscribing
users such that earlier arriving users and users that have already
arrived at the service establishment are given priority in the
reservation schedule regardless of prearranged reservations.
App. Br. 42, 44 (Claims App'x).
Alternatively, claim 15 recites the same computer device operable to:
at least adjust a reservation schedule of a service establishment
using received route information which is used to estimate a time
of arrival of subscribing and authenticated users during a
predefined time window and prioritizing an order of service in
the reservation schedule based on the estimated arrival time and
actual arrival time of the subscribing users.
App. Br. 45 (Claims App'x).
Appellants' claims 1, 12, and 15 are written broadly to recite the
concept of prioritizing a reservation schedule of a service establishment
(e.g., restaurant) without any particular practical application or specific
structure or particular means for accomplishing a result or function, i.e.,
prioritizing a reservation schedule. Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1308 (Fed. Cir. 2016).
As correctly recognized by the Examiner (Ans. 3), "prioritiz[ing] a
reservation schedule of a service establishment (i.e., restaurant), [whether]
based on a route or projected arrival time of one or more subscribing users,"
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as recited in Appellants' claims 1 and 12, or alternatively, "adjust[ing] a
reservation schedule ... and prioritiz[ing] an order of service in the
reservation schedule," as recited in Appellants' claim 15 are nothing more
than "mental processes" that could be performed in the human mind or by a
human using a pen and paper-a subject matter that falls within the three
types of abstract ideas identified by the PTO § 101 Memorandum. See
CyberSource, 654 F.3d at 1372-73 ("[A] method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under[§] 101."); see also In re Comiskey, 554 F.3d 967, 979 (Fed. Cir.
2009) ("[M]ental processes----or processes of human thinking-standing
alone are not patentable even if they have practical application.");
Gottschalkv. Benson, 409 U.S. 63, 67 (1972) ("Phenomena of nature, ...
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work." (Emphasis
added)). Additionally, mental processes remain unpatentable even when
automated to reduce the burden on the user of what once could have been
done with pen and paper. CyberSource, 654 F.3d at 1375 ("That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.").
Likewise, "prioritiz[ing] a reservation schedule of a service
establishment (i.e., restaurant), [whether] based on a route or projected
arrival time of one or more subscribing users," as recited in Appellants'
claims 1 and 12, or alternatively, "adjust[ing] a reservation schedule ... and
prioritiz[ing] an order of service in the reservation schedule," as recited in
Appellants' claim 15 are also considered as a "certain method of organizing
human activity" because (1) prioritizing and adjusting a reservation schedule
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are purported to manage interpersonal behavior or interactions between
people; and (2) prioritizing seating for people at a restaurant, as correctly
recognized by the Examiner (Ans. 4), "plainly are directed to organizing
human and commercial activity"-a subject matter that falls within the three
types of abstract ideas identified by the PTO § 101 Memorandum.
We discern no additional element ( or combination of elements)
recited in Appellants' claims 1, 12, and 15 that integrates the judicial
exception into a practical application. See PTO § 101 Memorandum, 84
Fed. Reg. at 54--55 ("Prong Two"). For example, Appellants' claims 1, 12,
and 15 do not (1) improve the functioning of a computer or other
technology, (2) are not applied with any particular machine, (3) do not effect
a transformation of a particular article to a different state, and (4) are not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.05(a}-(c), (e}-(h).
For these reasons, we agree with the Examiner that Appellants' claims
1, 12, and 15 are directed to an abstract idea that is not integrated into a
practical application.
Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue the claims
"recite elements that amount to 'significantly more' [i.e., inventive concept]
than the alleged abstract idea" because:
(1) "the claimed invention is an improvement to another
technology or technical field because the claimed
invention prioritizes a reservation schedule of a service
establishment based on a route and projected arrival time
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of one or more subscribing users such that earlier arriving
users and users that have already arrived at the service
establishment are given priority in the reservation
schedule regardless of prearranged reservations";
(2) "the claimed invention adds a specific limitation other
than what is well-understood, routine, and conventional in
the field by prioritizing a reservation schedule of a service
establishment based on a route and projected arrival time
of one or more subscribing users";
(3) "the claimed invention provides meaningful limitations
beyond generally linking the use of an abstract idea to a
particular technology environment since the claimed
invention requires that earlier arriving users and users that
have already arrived at the service establishment are given
priority in the reservation schedule regardless of
prearranged reservations"; and
(4) like the claims in Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016), "prioritizing a reservation schedule of a service
establishment based on a route and projected arrival time
of one or more subscribing users such that earlier arriving
users and users that have already arrived at the service
establishment are given priority in the reservation
schedule regardless of prearranged reservations using a
reservation computer device is a non-conventional and
non-generic arrangement of elements."
App. Br. 8-10. In the Reply, Appellants also argue "the features of the
claimed invention are unconventional, and improve the traditional method of
prioritizing a reservation schedule (see paragraph [0020] of the
specification)." Reply Br. 6.
Appellants' arguments are not persuasive. Under current Federal
Circuit precedent, an "inventive concept" under Alice step 2 can be
established by showing, for example, that the patent claims:
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(1) provide a technical solution to a technical problem unique
to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks"
(see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014));
(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each
end user" (see BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1352, 1350
(Fed. Cir. 2016)); or
(3) "entail[] an unconventional technological solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously
required massive databases)" and "improve the
performance of the system itself' (see Amdocs, 841 F.3d
at 1300, 1302).
Similarly, as recognized by the PTO § 101 Memorandum, an
"inventive concept" under Alice step 2 can also be evaluated based on
whether an additional element or combination of elements:
(1) "add a specific limitation or combination of limitations
that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present (see MPEP § 2106.05(d)); or
(2) "simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which
is indicative that an inventive concept may not be
present."
See PTO§ 101 Memorandum, 84 Fed. Reg. at 56.
In this case, however, we find no element or combination of elements
recited in Appellants' claims 1, 12, and 15 that contains any "inventive
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concept" or adds anything "significantly more" to transform the abstract
concept into a patent-eligible application. Alice, 134 S. Ct. at 2357. For
example, Appellants' "abstract idea of adjusting a reservation scheduled
based on parties' estimated times of arrival" is not rooted in computer
technology; nor does it (1) provide any technical solution to a technical
problem as required by DDR Holdings; (2) provide any particular practical
application as required by Bascom; or (3) entail an unconventional
technological solution to a technological problem as required by Amdocs.
Instead, Appellants' invention simply uses a generic computer device,
shown, for example, in Figure 1, to perform the abstract idea of "adjusting a
reservation scheduled based on parties' estimated times of arrival" (Spec.
,r,r 1, 8, 16, 20-21, 58; Abstract).
As recognized by the Examiner, "there is nothing unconventional
about prioritizing a reservation schedule." Ans. 4. In fact, "the only
'additional elements' recited merely implement the abstract idea on generic
computing elements ('computer device,' 'memory')." Id. However, the use
of a generic computer device does not alone transform an otherwise abstract
idea into patent-eligible subject matter. As our reviewing court has
observed, "after Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible." DDR, 773 F.3d at 1256 (citing Alice, 134 S. Ct. at 2358).
Moreover, Appellants have not shown any specific limitation in claims 1,
12, and 15 beyond the judicial exception that is not "well-understood,
routine, and conventional" in the field (see MPEP § 2106.05(d)).
With respect to dependent claims 2-11, 13, and 16-21, Appellants
reiterate the arguments that (1) "the claimed invention is also an
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improvement to another technology or technical field" and (2) these claims
recite features therein that are "not well-understood, routine, and
conventional activities." App. Br. 24--27. However, these arguments are not
persuasive because: (1) the claimed invention does not improve the
functioning of a computer, or to any other technology or technical field
(MPEP 2106.05(a)); (2) Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir.
2018) (where the Federal Circuit held that "[w]hether something [(i.e.,
additional elements beyond the abstract idea)] is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination") is limited to Alice step 2 and is only applicable after a
determination is made that a patent claim is directed to an abstract idea
under Alice step 1; and (3) the additional elements beyond the abstract idea
recited in claims 2-11, 13, and 16-21, such as the computer device and the
computer readable memory, cannot transform an otherwise abstract idea into
patent-eligible subject matter. Indeed, using a generic computer device and
memory to implement functions of an abstract idea, i.e., "prioritiz[ing] a
reservation schedule of a service establishment (i.e., restaurant)" is well-
understood, routine, and conventional to a skilled artisan as evidenced in the
cited prior art of record, including, for example: (1) Wheat ,r,r 45, 133-139,
149, Figs. 1-2, 16, 19-21; (2) Gounares Figs. 9-10; and (3) Lapidot Figs. 2,
10.
Because Appellants' claims 1, 12, and 15 are directed to a patent-
ineligible abstract concept and do not recite something "significantly more"
under the second prong of the Alice analysis, we sustain the Examiner's
rejection of claims 1-13 and 15-21 under 35 U.S.C. § 101.
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35 US.C. § 112, 2nd Paragraph: Claim 21
Claim 21 depends from claim 1, and further recites "wherein a
corresponding mobile device of the one or more subscribing users sends a
trust token to the reservation computer device in response to the one or more
subscribing users not being subscribed to location based services." App. Br.
46 (Claims App'x).
The Examiner concludes that claim 21 is indefinite because "it is
unclear how a user could be both 'a subscribing user' and 'not being
unsubscribed to location services'." Final Act. 7.
Appellants argue because (1) "one of ordinary skill in the art would
understand that 'a corresponding mobile device of the one or more
subscribing users' in claim 21 refers to a mobile device being subscribed to a
reservation computing device" and (2) "paragraph [0039] and FIG. 3
of the specification discloses that the one or more subscribing users do not
have to be subscribed to a location based service (see in particular steps 305,
310, and 315 and corresponding portions of FIG. 3)," "one of ordinary skill
in the art would understand that 'one or more subscribing users' in claim 21
can be subscribed to a reservation computing device, but not subscribed to a
location based service." App. Br. 28.
We agree with Appellants. Subscribing to a reservation system (i.e.,
reservation computer device) is not the same as subscribing to a location
based system (i.e., network carrier). See Spec. ,r,r 22, 39-40. However, both
location based services and reservation services are necessary for
Appellants' claimed "reservation computer device" to "prioritize a
reservation schedule of a reservation establishment based on a route and
projected arrival time." Paragraph [0039] of Appellants' Specification only
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describes the situation where a user is subscribed to both "location based
services and/or reservation services" in order to make the initial reservation.
There is no written support from Appellants' Specification for a
separate determination for making the initial reservation as required in
Appellants' claim 1, and then sending "a trust token to the reservation
computer device in response to the one or more subscribing users not being
subscribed to location based services" as recited in Appellants' claim 21.
However, indefiniteness under pre-AIA 35 U.S.C. § 112, 2nd paragraph is
separate and distinct from "written description" under pre-AIA
35 U.S.C. § 112, 1st paragraph. Accordingly, we do not sustain the
Examiner's rejection of claim 21 under pre-AIA 35 U.S.C. § 112, 2nd
paragraph. 5
35 US.C. § 102: Claims 1, 5, 8-12, 15, 19, and21
In support of the§ 102 rejection of independent claims 1, 12, and 15,
the Examiner finds Wheat discloses a reservation computer device
configured to "prioritize a reservation schedule of a service establishment
[ 1] based on a route and projected arrival time of one or more subscribing
users [2] such that earlier arriving users and users that have already arrived
at the service establishment are given priority in the reservation schedule
regardless of prearranged reservations" as recited in claims 1 and 12, or
5 In the event of further prosecution, the Examiner is invited to consider
rejecting claim 21 under pre-AIA 35 U.S.C. § 112, pt paragraph, for failing
to provide adequate "written description" for the limitation: "wherein a
corresponding mobile device of the one or more subscribing users sends a
trust token to the reservation computer device in response to the one or more
subscribing users not being subscribed to location based services."
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alternatively, to "adjust a reservation schedule of a service establishment
using [ 1] received route information which is used to estimate a time of
arrival of subscribing and authenticated users during a predefined time
window and [2] prioritizing an order of service in the reservation schedule
based on the estimated arrival time and actual arrival time of the subscribing
users" as recited in claim 15. Final Act. 7-8 ( citing Wheat ,r,r 45, 84, 133,
139, 149, Fig. 2) (emphasis and bracketing added).
Appellants argue Wheat's reservation system does not disclose ( 1)
prioritizing "a reservation schedule of a service establishment based on a
route" and (2) "earlier arriving users and users that have already arrived at
the service establishment are given priority in the reservation schedule
regardless of prearranged reservation" as recited in claims 1 and 12. App.
Br. 30-33. Separately, Appellants argue Wheat's reservation system does
not disclose (1) adjusting "a reservation schedule of a service establishment
using received route information" and (2) "prioritizing an order of service in
the reservation schedule based on the estimated arrival time and actual
arrival time of the subscribing users" as recited in claim 15. Id. at 34--35.
According to Appellants,
paragraph [0133] of Wheat discloses that arrival time of
subscriber mobile station (MS) 1925 at restaurant 1940 is
estimated by calculating a distance provided by MPC 1920 and
restaurant 1940 . . . that MPC 1920 is periodically triggered to
determine the location of MS 1925. Paragraph [0139] of Wheat
discloses sending a message to the subscriber indicting the new
time that the table will be ready if no tables are available.
Paragraph [O 149] of Wheat discloses sending an offer to the
subscriber of a free drink coupon to wait in the bar of the
restaurant for the next available table.
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Id. at 30, 32, 34. Appellants argue "a route is a path from point 'A' to point
'B"' and Wheat's disclosure of being "periodically triggered" to determine
the location of a user's mobile device (MS) is not the same as Appellants'
claimed "route" as recited in claims 1 and 12, or alternatively, Appellants'
claimed "route information" as recited in claim 15. Id. at 30, 32, 34.
Appellants' arguments are not persuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellants' arguments,
supported by a preponderance of the evidence. Ans. 6-7. As such, we adopt
the Examiner's findings and explanations provided therein. Id. For
additional emphasis, we note that anticipation under 35 U.S.C. § 102 is a
question of fact. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). A
claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described in a single prior art reference.
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987). However, there is no requirement that the prior art must use the same
words to describe a claim element in order to be deemed as teaching or
disclosing that claim element. "[T]he reference need not satisfy an
ipsissimis verb is test," i.e., identity of terminology is not required. In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Even in the context of
anticipation, "it is proper to take into account not only specific teachings of
the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826
(CCPA 1968).
More importantly, claim terms are given their broadest reasonable
interpretation consistent with the specification. In re Am. A cad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable
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interpretation, claim terms are given their ordinary and customary meaning,
as would be understood by one of ordinary skill in the art in the context of
the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007). However, every "claim construction analysis must begin
and remain centered on the claim language itself, for that is the language the
patentee has chosen to particularly point[ ] out and distinctly claim[ ] the
subject matter which the patentee regards as his invention." Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed.
Cir. 2004). "The claims, of course, do not stand alone." Phillips v. AWH
Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005). "Rather, they are part ofa
fully integrated written instrument, consisting principally of a specification
that concludes with the claims." Id. "For that reason, claims must be read in
view of the specification, of which they are a part." Id.
First, the term "route information" is specifically defined in
Appellants' claim 15 as being "used to estimate a time of arrival of
subscribing and authenticated users during a predefined time window."
Based on the express definition of Appellants' claim 15, we conclude the
claim term "route information" encompasses Wheat's information used in a
location based reservation system to calculate an estimated time of arrival
(ETA) of a subscriber. Wheat ,r,r 133, 137, 147. Moreover, each time the
waiter reassigns the table, Wheat's location based reservation system is in
fact "prioritizing an order of service in the reservation schedule based on the
estimated arrival time and actual arrival time of the subscribing users" as
recited in claim 15. Wheat ,r,r 139, 148-149.
Second, the term "route" recited in Appellants' claims 1 and 12 is not
defined in Appellants' claims or Specification. However, the term "route" is
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broadly described as part of a location of a user's mobile device used to
determine an estimated arrival time. Spee. ,r,r 2 0-21, 4 3--44, 5 8. In
particular, Appellants' Specification describes that the reservation system
"compares the location of the mobile device to a location of the reserved
establishment (i.e., restaurant)" and determines "an estimated arrival time."
Spec. ,r 43. According to Appellants' Specification, the location of a user's
mobile device can be identified and updated by way of ( 1) GPS or (2) cell
tow triangulation. Spec. ,r 44. Alternatively, Appellants' reservation system
"can attempt to locate the mobile device and its route based on the '911
method"'-a location service that is well-known by those skilled in the art.
Spec. ,r 58.
Based on Appellants' Specification and claim 15, the term "route" can
also be broadly, but reasonably, interpreted to encompass Wheat's
information used in a location based reservation system to calculate an
estimated time of arrival (ETA) of a subscriber. Wheat ,r,r 133, 137.
Third, with respect to the "priority" limitation given to those who
arrive early as recited in Appellants' claims 1 and 12, Wheat discloses a
situation where "the subscriber may be assigned [by the waiter] to another
table that may be made ready to accommodate the subscriber" if the
subscriber arrives to the restaurant earlier than the reservation. Wheat ,r 149.
As correctly found by the Examiner, "Wheat prioritizes early users without
regard to their actual place on the schedule based solely on their early ET A,"
and meets the limitation: "earlier arriving users and users that have already
arrived at the service establishment are given priority in the reservation
schedule regardless of prearranged reservation" as recited in Appellants'
claims 1 and 12.
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For these reasons, we sustain the Examiner's anticipation rejection of
independent claims 1, 12, and 15 and dependent claims 5, 8-12, 15, and 19,
which Appellants do not argue separately.
With respect to claim 21, Appellants argue Wheat does not disclose "a
trust token" and, as such, does not disclose sending "trust token to the
reservation computer device in response to the one or more subscribing users
not being subscribed to location based services." App. Br. 35. We disagree.
As correctly recognized by the Examiner, in the absence of an express
definition, the term "trust token" can be broadly, but reasonably, interpreted
to encompass Wheat's disclosure of secure validation between the user's
mobile device and the reservation system. Ans. 7 ( citing Wheat ,r,r 84, 87-
88). For this reason, we also sustain the Examiner's anticipation rejection of
claim 21.
35 US.C. § 103: Claims 2-4, 6, 7, 13, 16-18, and 20
Claim 7 depends from claim 1, and further recites:
wherein the reservation computer device is operable to take into
account a route time in prioritizing the reservation schedule
based on a lag time equation, wherein the lag time equation is:
Time to arrive= (zone 1 ( distance remaining I speed)+
zone n(distance remaining/speed)+ timelag +(known stops
*duration)),
where n is the zone number.
Claim 18 depends from claim 15, and recites the same limitations.
Appellants acknowledge Shamilian teaches a system for providing a
service to a customer, shown in Figure 1, including (1) communication
device 132 used to determine its GPS location and send its location
information to location engine 122, and (2) location engine 122 used to
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calculate an estimated customer arrival time. App. Br. 37 (citing Shamilian
,r,r 25-26, 31-34). However, Appellants argue Shamilian does not teach or
suggest the lag time equation recited in claims 7 and 18. Id.
The Examiner responds that Appellants fail to address the substance
of the obviousness rejection, including the failure to ( 1) "point out how the
lag time equations are different," and (2) address "any differences between
the formula as set forth in the claim and the formulas used in Shamilian are
solely part of the mathematical algorithm itself and not its application
( determining a predicted customer arrival time), and therefore the algorithm
'is treated as though it were a familiar part of the prior art'." Ans. 7-8.
We agree with Appellants. In rejecting claims under 35 U.S.C. § 103,
the Examiner bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Only if
this initial burden is met does the burden of coming forward with evidence
or argument shift to Appellants. Oetiker, 977 F.2d at 1445.
Here, the Examiner has not shown that ( 1) Shamilian teaches the lag
time equation recited in claims 7 and 18, or (2) the lag time equation recited
in claims 7 and 18 is well-known in the art. In the absence of any objective
teachings or suggestions in the prior art or knowledge generally available to
those skilled in the art, we do not sustain the Examiner's obviousness
rejection of claims 7 and 18.
Claim 13 depends from claim 12, and further recites the use of a "time
stamp" as part of "received location information." Claim 16 depends from
claim 15, and recites the same limitation in addition to a specific type of
signaling protocols used, i.e., "SS7 signal protocols."
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Appellants argue neither Shamilian nor Lapidot teaches or suggests
the use of a "time stamp" as part of "received location information" and the
"SS7 signal protocols" to transmit route information. App. Br. 38-39.
We disagree. As correctly recognized by the Examiner, Wheat
"teaches the received route information is received by SS7 signaling
protocols with a time." Final Act. 12 (citing Wheat ,r,r 111, 116, 130, 138).
Likewise, Lapidot teaches the use of a time stamp as part of location
information from a user's mobile device. Final Act. 12 (citing Lapidot
2:45-50).
For these reasons, we sustain the Examiner's obviousness rejection of
claims 13 and 16 as well as claims 2--4, 6, 17, and 20, which Appellants do
not argue separately.
CONCLUSI0N6
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting (1) claims 1-13 and 15-21
6 In the event of further prosecution, the Examiner is invited to consider
rejecting all Appellants' independent claims 1, 12, and 15 under 35 U.S.C. §
112, first paragraph, as reciting single means claims which are non-enabling
for the scope of the claims. For example, claim 1 recites nothing more than
a single means claim coupled with an intended use statement ("such that
earlier arriving users and users that have already arrived at the service
establishment are given priority in the reservation schedule regardless of
prearranged reservations"). See In re Hyatt, 708 F.2d 712, 714 (Fed. Cir.
1983) ("The long-recognized problem with a single means claim is that it
covers every conceivable means for achieving the stated result, while the
specification discloses at most only those means known to the inventor.").
As single means claims, claims 1 and 13 should be rejected under 35 U.S.C.
§ 112, first paragraph, as single means which are non-enabling for the scope
of the respective claims. See MPEP § 2164.08(a). See also In re Hyatt, 708
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under 35 U.S.C. § 101; (2) claims 1, 5, 8-12, 15, 19, and 21 under 35 U.S.C.
§ 102; and (3) claims 2--4, 6, 13, 16-17, and 20 under 35 U.S.C. § 103.
However, we also conclude Appellants have demonstrated the Examiner
erred in rejecting (1) claim 21 under pre-AIA 35 U.S.C. § 112, 2nd
paragraph; and (2) claims 7 and 18 under 35 U.S.C. § 103.
DECISION
As such, we AFFIRM the Examiner's rejection of (1) claims 1-13 and
15-21 under 35 U.S.C. § 101; (2) claims 1, 5, 8-12, 15, 19, and 21 under 35
U.S.C. § 102; and (3) claims 2--4, 6, 13, 16-17, and 20 under 35 U.S.C.
§ 103. However, we REVERSE the Examiner's rejection of (1) claim 21
under pre-AIA 35 U.S.C. § 112, 2nd paragraph; and (2) claims 7 and 18
under 35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 37
C.F.R. § 4I.50(a)(l).
F.2d at 714--15 (A single means claim which covered every conceivable
means for achieving the stated purpose was held non-enabling for the scope
of the claim because the specification disclosed at most only those means
known to the inventor); Ex parte Rodriguez, 92 USPQ2d 1395, 1406-11
(BP AI 2009) (precedential) ( discussing functional claiming and scope of
enablement ). In addition, our reviewing court has held that a statement of
intended use in an apparatus claim cannot distinguish over a prior art
apparatus that discloses all the recited structural limitations and is capable of
performing the recited function. See In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997). Additionally, "[a]n intended use or purpose usually will
not limit the scope of the claim because such statements usually do no more
than define a context in which the invention operates." See Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
(Fed. Cir. 2003).
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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
28