Ex Parte Ranganathan et al

Patent Trial and Appeal Board

Mar 1, 2019

13764330 (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/764,330 02/11/2013
92720 7590
HONEYWELL/MUN CK
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
03/05/2019
FIRST NAMED INVENTOR
Sriram Ranganathan
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.
H0036450-0102 3176
EXAMINER
ZEROUAL, OMAR
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
03/05/2019 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):
patentservices-us@honeywell.com
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRIRAM RANGANATHAN,
SRIDHAR SANKARANARA YANAN, and NARENDRA NAGALLA
Appeal2017-010684
Application 13/764,330 1
Technology Center 3600
Before BRUCE T. WIEDER, AMEE A. SHAH, and
MATTHEWS. MEYERS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-5, 7-14, and 16-22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' invention relates to "a system and method for managing
cargo transfer operations at a cargo distribution terminal." (Spec. ,r 3.)
1 According to Appellants, the real party in interest is Honeywell
International Inc. (Appeal Br. 2.)
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Application 13/764,330
Claims 1, 10, and 18 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method comprising:
wirelessly receiving a request associated with loading of
cargo at a terminal;
determining a recommended slot in response to the
request, the recommended slot comprising a time slot for loading
the cargo onto a cargo vehicle, the recommended slot determined
using at least one cost function having a plurality of input
parameters, the input parameters comprising an availability of
the cargo at a particular terminal bay for loading onto the cargo
vehicle, a measurement of existing cargo vehicle traffic in and
out of the terminal, and a current location of the cargo vehicle at
a time when the recommended slot is determined; and
wirelessly transmitting the recommended slot for delivery
to a mobile device of an operator of the cargo vehicle.
REJECTION
Claims 1-5, 7-14, and 16-22 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more. 2
ANALYSIS
Independent claims 1. 10. and 18
"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." 35 U.S.C. § 101. Section 101, however,
"contains an important implicit exception: Laws of nature, natural
2 The rejection of claims 1-5, 7-14, and 16-22 under 35 U.S.C. § 103(a)
was withdrawn. (See Answer 2.)
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phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(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, 573 U.S. at 217.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 221 (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, we apply a "directed
to" two prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim "appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception." See 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter "2019 Guidance").
Here, the Examiner determines that claim 1 is "directed to the abstract
idea of 'managing the loading and unloading of cargo truck [sic] within a
terminal."' (Final Action 4.) The Examiner further determines that "the
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concept of 'managing the loading and unloading of cargo truck [sic] within a
terminal' is a certain method of organizing human activity because it is a
concept that relates to managing transactions between people." (Id.)
Appellants disagree and argue that "simply because Claim 1 may
involve, at some level, managing the loading and unloading of a cargo truck
within a terminal does not mean that the claims are directed to that idea."
( Appeal Br. 11.) Rather, Appellants argue, "Claim 1 recites a specific
process that uses particular information and techniques and is specifically
designed to achieve an improved technological result." (Id.)
Under step one of the Alice framework, we "look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The 'directed to' inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon . . . . Rather, the 'directed to' inquiry applies a
stage-one filter to claims, considered in light of the
specification, based on whether 'their character as a whole is
directed to excluded subject matter.' Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework "asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an 'abstract idea' for
which computers are invoked merely as a tool." Id. at 1335-36; see also
2019 Guidance at 54--55.
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The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to "managing cargo transfer operations at a cargo distribution terminal."
(Spec. ,r 3.) Claim 1 provides further evidence. Claim 1 recites "receiving a
request associated with loading of cargo," "determining a recommended slot
in response to the request," and "transmitting the recommended slot ... to
... an operator of the cargo vehicle." In short, claim 1 is directed to a
method of organizing human activity, i.e., managing interactions between
people. (See 2019 Guidance at 52.) It is also directed to a mental process,
i.e., scheduling loading/delivery. (Id.) This is accomplished by receiving
information, analyzing information, and transmitting information.
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." Id.
at 1241.
Here, the limitations do not recite implementation details. Instead,
they recite functional results to be achieved. In other words, the claims do
not recite "a particular way of programming or designing the software ... ,
but instead merely claim the resulting [method]." Id. "Indeed, the claim
language here provides only a result-oriented solution, with insufficient
detail for how a computer accomplishes it. Our law demands more."
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342
(Fed. Cir. 2017). Claim 1 does not even recite a computer or processor. At
best, claim 1 recites "wirelessly receiving" and "wirelessly transmitting"
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information, and a generic mobile device. Appellants do not argue that they
invented wireless communication or a mobile device.
"[W]e have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas." Elec. Power Grp., 830 F.3d at 1353. "In
a similar vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Id. at 1354.
"And we have recognized that merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis." Id. at 1354. "Here, the claims are clearly
focused on the combination of those abstract-idea processes." Id. Claim 1
merely implements the abstract idea in the field of scheduling the
loading/delivery of cargo.
Appellants seek to analogize claim 1 to the claims in McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016).
(Appeal Br. 10-12.) Specifically, Appellants argue that "Claim 1 is limited
to a specific process using particular information and techniques to achieve
an improved technological result and does not preempt approaches that use
different information or different techniques." (Id. at 11.) We disagree. In
M cR O, the court determined that
the claimed improvement here is allowing computers to produce
"accurate and realistic lip synchronization and facial expressions
in animated characters" that previously could only be produced
by human animators. As the district court correctly recognized,
this computer automation is realized by improving the prior art
through "the use of rules, rather than artists, to set the morph
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weights and transitions between phonemes." The rules are
limiting in that they define morph weight sets as a function of the
timing of phoneme sub-sequences.
McRO, 837 F.3d at 1313 (citations omitted). In contrast, here, the asserted
improvement is to a business practice regarding scheduling the
loading/delivery of cargo that does not even recite a computer. Nor, as
discussed above, does the claim recite implementation details.
Appellants also argue that claim 1 recites significantly more than the
alleged abstract idea. (Appeal Br. 12.) Specifically, Appellants argue that
claim 1 "includes various recitations regarding a specific set of operations
using specific data, specific tangible objects (such as cargo, a cargo vehicle,
and a terminal bay), and specific technologies (such as at least one cost
function and mobile device wireless communications.)" (Id. at 13.)
We do not find this argument persuasive. 3 The Federal Circuit has
recognized that a process
that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent
eligible. "If a claim is directed essentially to a method of
calculating, using a mathematical formula, even if the solution is
for a specific purpose, the claimed method is nonstatutory."
Parker v. Flook, 437 U.S. 584, 595, 98 S. Ct. 2522, 57 L.Ed.2d
451 (1978) (internal quotations omitted).
Digitech Image Techs, LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014). Additionally, "under the Mayo/Alice framework, a claim
directed to a newly discovered law of nature ( or natural phenomenon or
3 We acknowledge that some of these considerations may be more properly
evaluated under step two of the Alice framework. However, for purposes of
maintaining consistent treatment within the USPTO, we evaluate it under
step one. See 2019 Guidance.
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abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility." Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). Moreover, "even if a process
of collecting and analyzing information is 'limited to particular content' or a
particular 'course,' that limitation does not make the collection and analysis
other than abstract." SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
The inclusion of a generic "interface" and "processing device" in
system claim 10 does not change our determination. (See Spec. ,r,r 24--26.)
"Our prior cases have made clear that mere automation of manual processes
using generic computers does not constitute a patentable improvement in
computer technology. In those cases, [as in this case,] 'the focus of the
claims is not on such an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools." Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017)
(quoting Elec. Power Grp., 830 F.3d at 1354).
Moreover, Appellants do not argue that they invented wireless
receiving or transmitting, or "a mobile device" ( claim 1 ), or an "interface,"
or "processing device" ( claim 10). Nor do we see how the recitations of
"wirelessly receiving," "wirelessly transmitting," "a mobile device," an
"interface," or a "processing device," even in conjunction with the recited
functions, "ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]." Alice, 573 U.S. at 221 (brackets in original)
( quoting Mayo, 566 U.S. at 77). In short, claims 1 and 10 use generic
computer and peripheral hardware as a tool to perform the abstract idea.
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See, e.g., Credit Acceptance Corp., 859 F.3d at 1055 (and cases cited
therein).
In view of the above, we agree with the Examiner that claims 1 and 10
are directed to an abstract idea.
Step two of the Alice framework has been described "as a 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, 573 U.S. at
217-18 (brackets in original) (quoting Mayo, 566 U.S. at 72-73).
Appellants argue that "the operations recited in Claim 1 combine to
create an ordered combination that is not well-understood, routine, or
conventional and that is not previously known in the industry." (Appeal
Br. 14.) We do not find this argument persuasive.
"It has been clear since Alice that a claimed invention's use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention 'significantly more' than the ineligible concept."
BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
In other words, "[i]f a claim's only 'inventive concept' is the application of
an abstract idea using conventional and well-understood techniques, the
claim has not been transformed into a patent-eligible application of an
abstract idea." Id. at 1290-91.
Claim 1 simply applies the abstract idea using wireless receiving and
transmitting, and a generic mobile device, i.e., inarguably conventional and
well-understood techniques and components. Even if we consider the
analysis performed in the determining step of claim 1 to be novel, as
discussed above, "under the Mayo/Alice framework, a claim directed to a
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newly discovered law of nature (or natural phenomenon or abstract idea)
cannot rely on the novelty of that discovery for the inventive concept
necessary for patent eligibility." Genetic Techs. Ltd., 818 F.3d at 1376.
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice, 573 U.S. at 225. They do not. Claim 1 relates to
receiving information, analyzing information, and transmitting information
to schedule loading/delivery.
Taking the claim elements separately, the functions performed by the
generic components (in both claims 1 and 10) at each step are purely
conventional. Receiving, analyzing, and transmitting information are basic
computer functions, i.e., they are well-understood, routine, and conventional
functions previously known to the industry. See Elec. Power Grp., 830 F.3d
at 1356 (The claims "do not include any requirement for performing the
claimed functions of gathering, analyzing, and displaying in real time by use
of anything but entirely conventional, generic technology. The claims
therefore do not state an arguably inventive concept .... "); see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming.").
Because claim 1 does "not call for the involvement of a computer ...
[it] cannot be characterized as an improvement in a computer as a tool.
[ Claim 1] add[ s] nothing to the abstract idea that rises to the level of an
'inventive concept' as required by precedent." Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1139 (Fed. Cir. 2016).
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Considered as an ordered combination, the generic computer
components of claim 10 and generic mobile device of claim 1 add nothing
that is not already present when the steps are considered separately. For
example, neither claim 1 nor claim 10 purport to improve the functioning of
the components themselves. Nor do they effect an improvement in any other
technology or technical field. Instead, claims 1 and 10 amount to nothing
significantly more than an instruction to apply the abstract idea using a
generic interface, processing device, and mobile device. That is not enough
to transform an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 225-26.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claims 1 and 10 under § 101. Independent claim 18 contains
similar language and is not separately argued. It falls with claims 1 and 10.
See 37 C.F.R. § 4I.37(c)(l)(iv). 4
Dependent claims 2, 11, and 19
Claim 2 recites: "The method of Claim 1, further comprising:
receiving a signal from the mobile device to open an entrance of the terminal
when the cargo vehicle arrives at the terminal; and in response to the signal,
opening the entrance of the terminal to allow the cargo vehicle to enter the
terminal."
4 With regard to Appellants' arguments pertaining to earlier-issued guidance,
we note that "[ e ]ligibility-related guidance issued prior to the Ninth Edition,
R---08.2017, of the MPEP (published Jan. 2018) should not be relied upon."
(2019 Guidance at 51.)
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Appellants argue that "the Examiner has not evaluated the recited
elements of Claims 2, 11, and 19." (Appeal Br. 17.) Nor, Appellants argue,
can it "be said that each of Claims 2, 11, and 19 is an abstract idea or that the
elements recited in Claims 2, 11, and 19 are purely conventional." (Id.)
The Examiner answers that "claims 2, 11, and 19 recite additional
generic computer components (i.e. [ sic, e.g.,] a signal) that perform routine
and conventional functions that are not significantly more than the abstract
idea identified above." (Answer 10.) The Examiner further answers that
"the electronic door opening via a wireless signal is a routine and
conventional function well known in the industry, and as claimed, has no
functional relationship to claim 1 with respect to the received request,
determined timeslot, or transmitted recommended time slot [sic]." (Id.
at 10-11.)
We are not persuaded of error. We note, again, that "the claim
language here provides only a result-oriented solution, with insufficient
detail for how a computer accomplishes it. Our law demands more."
Intellectual Ventures I LLC, 850 F.3d at 1342. Nor do Appellants
persuasively argue what claim elements are alleged to have not been
sufficiently evaluated or why the Examiner's determination that "door
opening via a wireless signal is a routine and conventional function" is in
error. (See Answer 10.)
Nor, applying a broadest reasonable interpretation, does claim 2
require more than, e.g., a terminal worker receiving a text message to open
an entrance when the vehicle arrives, and, in response, opening the entrance.
In short, claim 2, at best, recites the abstract idea of following instructions,
that is, a method of organizing human activity. And Appellants do not argue
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why the incorporation of two abstract ideas ( one from claim 1 and one from
claim 2) would render the claim non-abstract. See RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Claims 11 and 19 are not separately argued and fall with claim 2. See
37 C.F.R. § 4I.37(c)(l)(iv).
Claims 3, 12, and 20 and claims 4, 13, and 21
Claim 3 recites: "The method of Claim 1, further comprising: upon
completion of the loading of the cargo at the terminal, wirelessly
transmitting a digitally-signed document to the mobile device."
Claim 4 recites: "The method of Claim 3, wherein the digitally-
signed document comprises at least one of: a bill of lading and a filling
advisory note."
Again, Appellants argue that "the Examiner has not evaluated the
recited elements of Claims 3, 12, and 20." (Appeal Br. 18.) Nor, Appellants
argue, can it "be said that each of Claims 3, 12, and 20 is an abstract idea or
that the elements recited in Claims 3, 12, and 20 are purely conventional."
(Id.) Appellants make similar arguments for claims 4, 13, and 21. (See
Appeal Br. 19-20.)
The Examiner answers that "[s]imilarly, claims 3, 12 and 20 recite
additional generic computer components (i.e. transmitting a digitally-signed
document to the mobile device) that perform routine and conventional
functions that are not significantly more than the abstract idea identified
above." (Answer 11.) The Examiner also answers that the claims merely
"further describe the identified abstract idea" and that "[ n ]othing in
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dependent claims 4, 13, and 21 alter [sic] the significantly more analysis."
(Id.)
As an initial matter, we note that the Federal Circuit has "long held
that if a limitation claims (a) printed matter that (b) is not functionally or
structurally related to the physical substrate holding the printed matter, it
does not lend any patentable weight to the patentability analysis." In re
DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Here, the content of the
transmitted message is not functionally or structurally related to the mobile
device, and is entitled to no patentable weight.
Thus, claim 3 merely adds an additional step of "wirelessly
transmitting" and claim 4 merely adds printed matter entitled to no
patentable weight. Appellants do not persuasively argue why the Examiner
erred in determining that the step in claim 3 of wirelessly transmitting is
more than a routine and conventional function, or why "provid[ing] only a
result-oriented solution, with insufficient detail for how [it is accomplished]"
results in the claim becoming patent-eligible. See Intellectual Ventures I
LLC, 850 F.3d at 1342. We are not persuaded of error. Claims 12 and 20
are not separately argued from claim 3 and fall with claim 3, and claims 13
and 21 are not separately argued from claim 4 and fall with claim 4. See 37
C.F.R. § 4I.37(c)(l)(iv).
Claims 7. 17. and 22
Claim 7 recites: "The method of Claim 1, wherein transmitting the
recommended slot comprises transmitting the recommended slot to a
dispatch office of a carrier company that operates the cargo vehicle."
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Again, Appellants argue that "the Examiner has not evaluated the
recited elements of Claims 7, 17, and 22." (Appeal Br. 21.) Nor, Appellants
argue, can it "be said that each of Claims 7, 17, and 22 is an abstract idea or
that the elements recited in Claims 7, 17, and 22 are purely conventional."
(Id.)
Again, the Examiner answers that the limitation of claim 7 merely
"further describe[ s] the identified abstract idea." ( Answer 11.) We agree.
Appellants do not persuasively argue why specifying a particular
location to transmit information would alter the Examiner's determination
that the claims are directed to the abstract idea of managing the loading and
unloading of a cargo truck, or more simply scheduling the loading/delivery
of cargo by receiving information, analyzing information, and transmitting
information. And, again, "the claim language here provides only a result-
oriented solution, with insufficient detail for how a computer accomplishes
it. Our law demands more." Intellectual Ventures I LLC, 850 F.3d at 1342.
We are not persuaded of error. Claims 17 and 22 are not separately
argued and fall with claim 7. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
The Examiner's rejection of claims 1-5, 7-14, and 16-22 under
35 U.S.C. § 101 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
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