Ex Parte Kratzer et al

Patent Trial and Appeal Board

Dec 17, 2018

13685324 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/685,324 11/26/2012
26211 7590 12/19/2018
FISH & RICHARDSON P.C. (NY)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Timo Kratzer
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.
21335-0006002 1260
EXAMINER
LAM, ELIZA ANNE
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
12/19/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMO KRATZER, HERBERT KRUG,
JESUS-MIGUEL CABEZA-GUILLEN, and HARAID RUENZ
Appeal2017-002376
Application 13/685,324
Technology Center 3600
Before BRUCE T. WIEDER, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 2-30. The Appellants' representative
appeared for oral argument on December 6, 2018. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Mar. 15, 2016), Reply Brief ("Reply Br.," filed Nov. 28,
2016), and Specification ("Spec.," filed Nov. 26, 2012), and to the
Examiner's Answer ("Ans.," mailed Oct. 3, 2016), and Final Office Action
("Final Act.," mailed Oct. 22, 2015).
2 According to the Appellants, the real party in interest is Carl Zeiss Vision
GmbH. Appeal Br. 1.
Appeal2017-002376
Application 13/685,324
STATEMENT OF THE CASE
The Appellants' invention relates generally to "dispensing eyeglasses"
(Spec. ,r 2) and more particularly to "obtaining an eyeglass prescription and
ordering eyeglass lenses for a person" (id. ,r 26).
Claims 2, 7, 13, 14, 19, 24, 25, and 30 are the independent claims on
appeal. Claim 25 (Appeal Br. 24 (Claims App.)) is illustrative of the subject
matter on appeal and is reproduced below.
25. A system, comprising:
a first computer, a second computer, and a third computer,
wherein the third computer is associated with a lens
manufacturing site, the third computer being in a location
different from the first computer and the second computer, and
(a) the first computer is programmed to:
receive information about a person's vision based
on one or more refractions of the person's eye and to send
the information about the person's vision over a network
to the second computer; and
receive prescription information from the second
computer and to send an order for a lens based on the
prescription information to the third computer;
(b) the second computer is programmed to:
receive the information about the person's vision;
calculate prescription information based on the
information about the person's vision, the prescription
information comprising at least one parameter selected
from the group consisting of sphere, cylinder, cylinder
axis, prism, and base; and
send the prescription information to the first
computer;
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Application 13/685,324
( c) the third computer is programmed to:
receive the order for the lens based on the
prescription information.
REJECTIONS
Claims 2-30 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more.
Claims 2-30 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Cabeza et al. (US 8,079,707 B2, iss. Dec. 20, 2011)
("Cabeza") and Cox et al. (US 6,499,843 Bl, iss. Dec, 31, 2002) ("Cox").
ANALYSIS
35 us.c. § 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 89 (2013)).
The Supreme Court in Alice reiterated the two-step framework, set forth
previously in Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 566 U.S. 66, 78-79 (2012), "for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. (emphasis added)
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(citing Mayo, 566 U.S. at 79). If so, the second step is to consider the
elements of the claims "individually and 'as an ordered combination"' to
determine whether the additional elements "'transform the nature of the
claim' into a patent-eligible application." Id. ( quoting Mayo, 566 U.S.
at 78-79).
The Appellants argue claims 2-30 as a group and make similar
arguments for each of the independent claims. See Appeal Br. 5, 8, 9. We
select claim 25 from the group, with claims 2-24 and 26-30 standing or
falling therewith. See 37 C.F.R. § 4I.37(c)(l)(iv).
Under the first step of the Alice framework, the Examiner determines
that claim 25 is directed to "comparing new and stored information and
using rules to identify options." Final Act. 2. The Appellants do not
ostensibly disagree with the Examiner's characterization of the claim. See
Appeal Br. 5. Rather, the Appellants contend that the Examiner's
determination under the second step of the Alice framework is in error
because "[ t ]he claims include additional elements that amount to
significantly more than the abstract idea alleged by the Examiner." Id. We
are not persuaded of Examiner error.
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."' Alice, 134 S. Ct. at 2355 (alteration in original)
(quoting Mayo, 566 U.S. at 72-73).
We find unpersuasive the Appellants' argument that the claimed
computers are not generic computers performing routine functions because
they communicate with each other from separate locations. See Appeal
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Br. 5-7. The Specification provides for an ordering computer, a calculation
computer, and a manufacturing computer. Spec. ,r,r 27, 30, Figs. 2, 3. These
computers "can be implemented in digital electronic circuitry, or in
computer hardware, firmware, software, web-enabled applications, or in
combinations thereof," with a system that includes "at least one
programmable processor coupled to receive data and instructions from, and
to transmit data and instructions to, a data storage system, at least one input
device, and at least one output device." Id. ,r 55. "Suitable processors
include, by way of example, both general and special purpose
microprocessors." Id. "Generally, a computer will include one or more
mass storage devices for storing data files, such devices include magnetic
disks, such as internal hard disks and removable disks magneto-optical disks
and optical disks." Id. As such, the Specification provides for a system
comprising general purpose computers operating in their conventional
capacities to send, receive, and calculate data. And, a generic computer or a
special purpose processor specially programmed to perform the conventional
functions of receiving, sending, and calculating data does not amount to an
inventive concept such that the claim is significantly more than the abstract
idea. See Alice, 134 S. Ct. at 2357---60 (applying an abstract idea, such as an
algorithm, on a general purpose computer is not enough to transform a
patent-ineligible abstract idea into a patent-eligible invention.); EON Corp.
IP Holdings LLC v. AT & T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir.
2015) ("A general purpose computer is flexible-it can do anything it is
programmed to do.").
Further, the benefits the Appellants describe from the arrangement of
the computers being in different locations (see Appeal Br. 6-7) do not
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comprise a technical improvement over prior art ways of dispensing
eyeglasses (see BASCOM Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)). The Specification describes
advantages to having separate first, second, and third computers of
"reducing the amount of data transferred" (Appeal Br. 6, citing Spec. ,r 29),
"allow[ing] a prescription to be ordered using existing ordering systems that
do not include fields for providing wavefront data" (id.), "generat[ing]
lenses having prescriptions based on wavefront data without having to
upgrade the manufacturing locations to perform such calculations" (id.),
"allow[ing] an eye care professional to review and adjust the prescription
prior to placing the order" (id. at 6-7), reducing "the amount of software and
data needed by" each computer (id. at 7, citing Spec. ,r 50), and requiring
updates "only to the second computer rather than each of the first
computers" (id., citing Spec. ,r 30). However, even assuming arguendo that
these alleged advantages, referenced in the Specification, constitute a
technical or technological improvement in dispensing eyeglasses or in
"comparing new and stored information and using rules to identify options,"
no such features are recited in the claims on Appeal. Other than having
multiple generic computers, the claim does not recite any elements that
reflects how these advantages are technologically or technically achieved.
Therefore, these purported advantages cannot signify any claim element( s)
amounting to significantly more than the abstract idea.
We also find unpersuasive the Appellants' argument that the claim is
significantly more than the abstract idea because it "addresses the data-
centric challenge of providing the best prescription based on input from a
wavefront sensor and manufacturing a lens based on that prescription" and,
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when considering the limitations as an ordered combination, there is a
"technologically rooted solution to a data-centric problem." Appeal Br. 7.
Claim 25 does not claim 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, 125757 (Fed. Cir. 2015). The problems of"providing the best
prescription based on input" and "manufacturing a lens based on that
prescription" (Appeal Br. 7) is a business problem that existed prior to the
Internet. And, the purported solution comprises the use of computers
operating in their normal and ordinary capacities. See Spec. ,r 55.
We further disagree with the Appellants that the Examiner overlooks
the recitations of the locations of the first and second computers, as claimed
in claims 14, 19, and 24, and "other tangible elements" of claims 4, 16,
and 27. See Appeal Br. 8; Reply Br. 3. The Examiner considers the
limitations and determines they are not significantly more than the abstract
idea. See Ans. 4--5. We note that the Appellants merely recite the
limitations of the other claims and assert for some that the limitation is "a
meaningful [one] beyond generally linking the use of an abstract idea to a
particular technological environment," without any further argument or
explanation. See Appeal Br. 8; Reply Br. 3.
Thus, we are not persuaded the Examiner erred in the rejection of
independent claim 25 under 35 U.S.C. § 101, and we sustain the rejection of
claim 25 and of claims 1-24 and 26-30, which fall with claim 25.
35 USC§ 103(a)
We agree with the Appellants that the Examiner does not adequately
show how the combination of the prior art teaches "'[a] first computer[]
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programmed to [] send[] information about [a] person's vision to [a] second
computer and receive a calculated lens prescription from the second
computer,"' as recited in claim 1, with similar subject matter recited in
independent claims 7, 13, 14, 19, 24, 25, and 30. Appeal Br. 9 (alterations in
original); see also Reply Br. 3.
The Examiner finds that Cabeza teaches receiving a calculated lens
prescription comprising at least the parameter of cylinder. See Final Act. 3.
The Examiner further finds that Cabeza does not explicitly "the distributed
network" (Ans. 6) of a first computer sending information to a second
computer and receiving calculated data from the second computer (see Final
Act. 3--4). The Examiner relies on Cox at column 6, lines 5---60 for curing
this deficiency (id. at 4) by providing "remote facilities ... to reduce cost
required to perform functions in low volume local locations" (id.).
Specifically, the Examiner finds that Cox's "practitioners' platform 140 is
analogous to the first computer, the service platform 300 is analogous to the
second computer, and the order/billing platform 18 is analogous to the third
computer." Ans. 5. Thus, the Examiner relies on the combination of Cabeza
and Cox to teach this limitation. See id.
Cabeza discloses a calculating device configured to calculate a
prescription, including determining a prescription value for cylinder.
Cabeza, col. 3, 11. 24--25, col. 4, 11. 7-11. Cox discloses practitioner's
platform 140, located at the practitioner's facility, that generates vision
diagnostic information, practitioner information, and other information. See
Cox, col. 6, 11. 7-13. The information is sent to service platform 300 that
generates billing information, sends that information to order/billing
platform 18, and generates lens design and manufacturing information that is
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sent to custom lens platform 20. Id., col. 6, 11. 13-22. The custom lens
information is received and used by custom lens platform 20 to produce
custom lens products that can be shipped to the practitioner or patient. Id.,
col. 6, 11. 24--28. Based on information, such as wavefront, vision, and/or
demographic data, service platform 300, lens platform 20, and/or billing
platform 18 can generate feedback to practitioner. Id., col. 6, 11. 32--41.
Even assuming arguendo that Cox's second computer, service
platform 300, as modified by Cabeza's device that calculates a prescription,
teaches the second computer sending the calculated prescription information,
the Examiner has not shown how Cox's system teaches that the calculated
information is sent by second computer 300 to the first computer,
practitioner platform 140, that then sends it to the third computer, either
order/billing platform 18 (as relied on by the Examiner) or custom lens
platform 20 (as disclosed by Cox as receiving prescription lens information).
Rather, the portions of Cox cited by the Examiner teach that the second
computer (service platform 300) receives information from the first
computer (practitioner platform 140), generates/calculates
custom/prescription information, and sends that information to a third
computer (billing platform 18 or lens platform 20), not back to first
computer 140. Although Cox teaches that second computer, service
platform 300, can generate feedback to the practitioner, the Examiner has
not explained, and we do not see, how that teaches, suggests, or combines
with Cabeza to teach sending the calculated prescription back to the first
computer, practitioner platform 140.
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Thus, we are persuaded the Examiner erred in the rejection of the
independent claims 1, 7, 13, 14, 19, 24, 25, and 30 under 35 U.S.C. § 103(a),
and we do not sustain the rejection of claims 2-30.
DECISION
The Examiner's rejection of claims 1-30 under 35 U.S.C. § 101 is
AFFIRMED.
The Examiner's rejection of claims 1-30 under 35 U.S.C. § 103(a) is
REVERSED.
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
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