Ex Parte Hocquette et al

Patent Trial and Appeal Board

Jan 16, 2019

13709517 (P.T.A.B. Jan. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/709,517 12/10/2012
35525 7590 01/18/2019
IBM CORP (YA)
C/0 YEE & AS SOCIA TES PC
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Amelie Hocquette
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.
GB920110137US 1 8262
EXAMINER
ERB,NATHAN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
01/18/2019 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMELIE HOCQUETTE, VIU-LONG KONG,
and STEPHANIE MICHEL 1
Appeal2017-009679
Application 13/709,517
Technology Center 3600
Before ROBERT E. NAPPI, CATHERINE SHIANG, and CARLL.
SILVERMAN, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3 through 6, 8 through 11, 13 through 15, and 17
through 19.
We reverse.
INVENTION
The invention is directed to a method of automated partitioning of
transportation routing problems. Abstract. Claim 1 is illustrative of the
invention and is reproduced below:
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
Appeal2017-009679
Application 13/709,517
1. A method for automated partitioning of
transportation routing problems by a data processing
system, comprising:
determining, by the data processing system, a
threshold number of shipments per partition, wherein
determining a threshold number of shipments per
partition is determined dynamically based on a heuristic
function;
initially dividing, by the data processing system, a
routing problem into geographic centers to form a
plurality of geographic center routing problems for each
of the geographic centers;
selecting, by the data processing system, a
geographic center from the geographic centers;
mapping, by the data processing system, delivery
and/or pickup sites at geographic locations around the
geographic center;
scanning, by the data processing system, radially
around the geographic center to determine a sparsest or
densest region of the sites and selecting a starting point in
this region;
progressing, by the data processing system
responsive to the scanning, from the starting point
radially around the geographic center aggregating the
sites into partitions with a maximum of the threshold
number of shipments in each partition; and
outputting, for each of the partitions, a set of routes
that each comprise a vehicle, list of shipments for the
vehicle, and unload events associated with the vehicle.
REJECTION AT ISSUE
The Examiner rejected claims 1, 3 through 6, 8 through 11, 13
through 15, and
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Application 13/709,517
17 through 19 under 35 U.S.C. § 101 for being directed to patent-ineligible
subject matter. Final Act 6-8. 2
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: "[l]aws of
nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
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
2 Throughout this Opinion, we refer to the Appeal Brief, filed February 22,
2017 ("App. Br."), the Reply Brief, filed July 7, 2017 ("Reply Br."), the
Examiner's Answer, mailed June 20, 2017 ("Answer"), and the Final Office
Action, mailed November 17, 2016 ("Final Act").
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Application 13/709,517
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
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, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 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 192 ("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
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Application 13/709,517
to a known structure or process may well be deserving of patent
protection.").
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 ( quotation marks 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 determine whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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:
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(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.
ANALYSIS
Appellants argue on pages 8 through 19 of the Appeal Brief the
Examiner's rejection of independent claims 1, 11, and 18 is in error.
The dispositive issue presented by these arguments is: whether the Examiner
has shown that the independent claims are directed to an abstract idea.
Appellants argue the Examiner's characterization of the claims as being
directed to generating an optimal vehicle pick-up/delivery routes is improper
as it is characterizing the claims at a high level and is untethered to the
language of the claim. App. Br. 11. Appellants argue the claims recite a
partitioning front-end system that pre-processes information before passing
the information to a system that generates optimum vehicle results. App. Br.
11, 14. Further, Appellants argue the Examiner has not shown that the
claims are similar to those held to be abstract by the courts. App. Br. 12.
Additionally, Appellants argue the steps of the claims are not steps that can
be performed in the human mind. App. Br. 12, 14.
The Examiner responds that the characterization of the claim as
generating optimal vehicle pick-up/delivery routes is a shorthand summary
of the abstract idea. Answer 6-9. The Examiner identified in the Final
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Rejection, that the claimed, "concept relates to optimization of business
activities. The concept described in claims 1, 11, and 18 are not
meaningfully different than that economic concept and/or certain method of
organizing human activity found by the courts to be an abstract idea." Final
Act 7. The Examiner in the Answer identified that the claimed abstract idea
is similar to determining an optimal number of visits by a business
representative, which was held to be abstract by the courts. Answer 15
(citing In re Maucorps 609 F.2d 481 (CCPA 1979)).
We agree with the Appellants that the Examiner has not demonstrated
that the claims are directed to an abstract idea, further we do not see that the
claims are directed to one of the categories listed in the Memorandum. We
fail to see how the claimed process of partitioning transportation routing
problems is directed to an economic concept as discussed by the Examiner
on page 7 of the Final Action. Further, we disagree with the Examiner the
claims at issue recite an abstract idea similar to the claims at issue in In re
Maucorps. The claims at issue in Maucorps recited a mathematical
algorithm to calculate a number of regular visits by a business representative
to a client. In re Maucorps 609 F.2d 481,482. The decision inMaucorps,
was decided before Alice and applied the two step analysis set forth in In re
Freeman, 573 F .2d 1237, (CCP Al 978) to determine eligibility under 35
U.S.C. § 101 Id at 483. The court found that the claims recite an algorithm
and the claims as a whole preempt the recited algorithm. Id. Thus, the
claims at issue in Maucorps are different than the claims in the instant case
as the claims in Maucorps involve the recitation of a mathematical algorithm
( an abstract concept), whereas the claims in the current application do not
recite an mathematical algorithm. Thus, we do not find that the Examiner
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has demonstrated that claims recite an abstract idea and as such, the
Examiner has not demonstrated that the claims are directed to patent patent-
ineligible subject matter.
DECISION
The decision of the Examiner to reject claims 1, 3 through 6, 8
through 11, 13 through 15, and 17 through 19 is reversed.
REVERSED
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