Ex Parte MukherjeeDownload PDFPatent Trial and Appeal BoardMay 31, 201713115006 (P.T.A.B. May. 31, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/115,006 05/24/2011 Joydeb Mukherjee H0005397CIP (002.1318X1) 2608 89955 7590 06/02/2017 HONFYWFT T /T .KTlInhal EXAMINER Patent Services 115 Tabor Road NGUYEN, CHUONG P P.O.Box 377 ART UNIT PAPER NUMBER MUKK1S H JNJ U/SOU 3646 NOTIFICATION DATE DELIVERY MODE 06/02/2017 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): patentservices-us @ honey well, com DL-ACS-SM-IP@Honeywell.com docketing @LKGlobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOYDEB MUKHERJEE Appeal 2016-002621 Application 13/115,006 Technology Center 3600 Before MICHELLE R. OSINSKI, THOMAS F. SMEGAL, and NATHAN A. ENGELS, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Joydeb Mukherjee (Appellant)1 seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection2 under 35 U.S.C. § 101 in which the Examiner states that the claimed invention is directed to non-statutory subject matter as a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is Honeywell International, Inc. Appeal Br. 2. 2 Appeal is taken from the adverse decision of the Examiner as set forth the Final Office Action, dated February 13, 2015 (“Final Act.”). Appeal 2016-002621 Application 13/115,006 CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is reproduced below and illustrates the claimed subject matter. 1. A method of managing aircraft service information, comprising: collecting unstructured field service narrative data from a field service report utilizing self-training natural language processing algorithms; extracting problem data from the narrative data; extracting solution data from the unstructured field service narrative data, wherein extracting solution data is performed on the unstructured field service narrative data automatically by machine, such that a text representation of the narrative data is processed by machine to distinguish and parse at least one of problem data and solution data from the narrative by the self training natural language processing algorithms; tokenizing the extracted solution data to create word tokens; electronically tagging semantic descriptors to the word tokens; and populating an aircraft service information database with the extracted problem data and the related extracted solution data. OPINION We have reviewed the Examiner’s rejection in light of Appellant’s arguments in the Appeal Brief and the Reply Brief. We disagree with Appellant’s conclusions, and agree with, and adopt as our own, the Examiner’s findings and conclusions of law. Specific arguments are highlighted and addressed below for emphasis. 2 Appeal 2016-002621 Application 13/115,006 Rejection of Claims 1 and 3—10 as being directed to non-statutory subject matter Principles of Law A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. See Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293—94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted). In Alice, the Court reaffirmed the framework set forth previously in Mayo “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 the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice, 134 S. Ct. at 2355. If the claims are directed to a patent-ineligible concept, then the second step in the 3 Appeal 2016-002621 Application 13/115,006 analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297). In Gotts chalk the Court, citing O’Reilly v. Morse (56 U.S. 65 (1853)), cautioned that a claim “so abstract and sweeping as to cover both known and unknown uses” is not directed to patent-eligible subject matter under 35 U.S.C. § 101. Gottschalk, 409 U.S. at 68. In Alice the Supreme Court reaffirmed this principle: We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable. We have interpreted § 101 and its predecessors in light of this exception for more than 150 years. We have described the concern that drives this exclusionary principle as one of pre-emption. Laws of nature, natural phenomena, and abstract ideas are the basic tools of scientific and technological work. [Monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it, thereby thwarting the primary object of the patent laws. We have repeatedly emphasized this ... concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity. Alice, 134 S. Ct. at 2354 (quotations and citations omitted). Analysis The Examiner finds that claim 1 is directed is “the steps of how to manage aircraft service information [that] are only data gathering, parsing, and storing steps and thus an abstract idea.” Final Act. 2. More specifically, the Examiner determines the claim to be a “recitation of generic computer structure that serves to perform generic computer functions (i.e. extracting, 4 Appeal 2016-002621 Application 13/115,006 tokenizing, tagging, populating steps) that are well understood, routine, and conventional activities previously known to the pertinent industry,” and “do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.” Id. The Examiner concludes “the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.” Id. at 3 (citing Alice Corporation Pty. Ltd. v. CLS Bank International, et al). In taking issue with the analysis and conclusions presented in the Final Office Action, Appellant asserts that “the claimed method encompasses much, much more than merely gathering, parsing and storing.” Appeal Br. 123 Appellant contends that “the claimed method includes meaningful limitations that restrict it to an application, and unambiguously improve an existing technological process -managing aircraft service information.” Id. at 13. Further, Appellant lists as limitation examples, extracting, machine processing, tokenizing, and electronically tagging, while reasoning that “[tjhese features, together with the other steps recited in the claims, provide a significant improvement over the known art.” Id. at 13—14. Based on the foregoing, Appellant asserts that the claims “satisfy the first step (Bilski) in the Alice two-part test and are per se patent eligible.” Id. at 14; see also Reply Br. 5—6. In response, the Examiner provides a summary of the application of the two-part analysis test of Alice to claim 1 and explains that “[sjimply appending well-understood, routine and conventional activities previously 3 We have added page numbers to Appellant’s Appeal Brief. 5 Appeal 2016-002621 Application 13/115,006 known in the industry specified at a high level of generality are not enough to be ‘significantly more.’” Ans. 5. We agree. Analyzing analogous claims under the first step of the Alice test, the Federal Circuit explained in Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343 (Fed. Cir. 2014), that the claims at issue were directed to the “abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.” Id. at 1347. The Federal Circuit further explained that “[t]he concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.” Id. at 1347. Here, claim 1 is directed to a method for managing information—specifically, aircraft service information—and claim 1 recites collecting data, extracting and classifying certain of the data according to its content, and tokenizing, tagging, and storing the data in a database. See Ans. 5; Appeal Br. 17, Claims App’x. Like in Content Extraction, the concepts of claim 1 are well known and are routinely performed by humans. See, e.g., Spec. 1 5 (explaining as background that aircraft maintenance personnel generation field service reports that typically include “an unstructured written narrative that describes the symptoms observed that indicated the service was necessary, the actions taken in diagnosing and repairing the aircraft, the parts and equipment used, and the eventual solution to the fault”). Further, nothing in claim 1 requires more than computer implementation of well-understood, routine data processing techniques. See, e.g., Spec. 115 (generically describing “software executing on a computerized system, using algorithms 6 Appeal 2016-002621 Application 13/115,006 designed to parse the constituents of natural language” and a “database management function”). As such, having considered the Examiner’s rejection in light of each of Appellant’s arguments, we agree with the Examiner’s conclusion that “[njothing in the claims shows that the abstract idea is implemented beyond the claimed machine functions.” Ans. 6; see Content Extraction, 776 F.3d at 1347—48 (applying the second step of the Alice test, explaining that “[f]or the role of a computer in a computer implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of ‘well-understood, routine [and] conventional activities previously known to the industry”) (quoting Mayo, 132 S.Ct. at 1294). Accordingly, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Appellant does not provide any additional arguments for the patentability of dependent claims 3—10, aside from their dependency from claim 1. Appeal Br. 14—15; Reply Br. 6. Accordingly we also sustain the rejection of these claims under 35 U.S.C. § 101 as being directed to non- statutory subject matter. DECISION The Examiner’s § 101 rejection is AFFIRMED. 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 7 Copy with citationCopy as parenthetical citation