Ex Parte ROGUT et al

Patent Trial and Appeal Board

Mar 18, 2019

13689016 (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/689,016 11/29/2012
54640 7590 03/20/2019
PERRY+ CURRIER INC.
1300 YONGE STREET
SUITE 500
TORONTO, ON M4T-1X3
CANADA
FIRST NAMED INVENTOR
Robert ROGUT
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.
P3854USOO 7543
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/20/2019 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@pckip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT ROGUT, KATERYNA L YASHCHENKO, and
TOMASZ KRZEPKOWSKI
Appeal2018-000570
Application 13/689,016 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, 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 1-6 and 8-20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Lean Supply Solutions
Inc. (Appeal Br. 3.)
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Application 13/689,016
CLAIMED SUBJECT MATTER
Appellants' "invention relates generally to data collection, and more
particularly to a system and method for supply chain data management."
(Spec. ,r 1.)
Claims 1 and 19 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method of collecting supply chain information for one
or more items on a handheld computing device comprising:
receiving, via at least one input device, a selection of a
task, said task including subtasks linked by a workflow specific
to one or both of a type of and a customer of the one or more
items, said task being configured to process said one or more
items according to a supply-chain process, said subtasks being
configured to collect data about said one or more items, said data
including at least identifying information and quantity of said
one or more items undergoing the supply-chain process;
rendering, in a graphical-user interface at an output device
of said handheld computing device, a first set of subtasks to
perform based on said workflow, said rendering at said
graphical-user interface including outputting information for an
operator of said handheld computing device describing a specific
element of said data to be collected and including a symbolic or
textual indication of a type of a data-collection device to be used
to collect said specific element of said data, said data collection
device being separate from said handheld computing device;
receiving, via at least said data-collection device, data-
collection input for each subtask of said first set of subtasks, the
data-collection input including identifying information and
quantity of said one or more items;
determining, by a processor, from said data-collection
input if said first set of subtasks is performed; and
if said first set of subtasks is determined to be performed,
rendering, in said graphical user interface at said output device
of said handheld computing device, a second set of subtasks to
perform based on said workflow.
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REJECTIONS
Claims 1---6 and 8-20 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.
Claims 1---6 and 8-20 are rejected under 35 U.S.C. § I03(a) in view of
Sholl (US 2011/0035326 Al, pub. Feb. 10, 2011) and Official Notice.
ANALYSIS
The § 101 rei ection
"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
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 573 U.S. 208,216 (2014) (quoting Assoc.for 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, then the second
step of the framework is applied to determine if "the elements of the
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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 "[t]he claims are directed to the
abstract ideas of ... collecting and comparing known information ... ;
comparing new and stored information and using rules to identify options
... ; using categories to organize, store and transmit information ... ;
organizing human activity." (Final Action 5.)
Appellants disagree and argue
that claim 1 is focused on and directed to improving computer
functionality itself and is not directed to an economic or other
task for which a computer is used in an ordinary capacity. Claim
1 is directed to a specific improvement to the way a computer
system functions to retrieve data related to supply chain
information more efficiently and accurately.
(Appeal Br. 10.)
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
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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.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the "invention
relates generally to data collection, and more particularly to a system and
method for supply chain data management." (Spec. ,r 1.) Claim 1 provides
further evidence. Claim 1 recites "[a] method of collecting supply chain
information ... comprising: receiving ... a selection of a task, said task
including subtasks linked by a workflow," "rendering ... a first set of
subtasks to perform based on said workflow," "receiving ... data-collection
input for each subtask," "determining ... if said first set of subtasks is
performed," "and if said first set of subtasks is determined to be performed,
rendering ... a second set of subtasks to perform based on said workflow."
In short, claim 1 is directed to the abstract idea of organizing human activity,
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i.e., "managing personal behavior or relationships" and "following rules or
instructions." (See 2019 Guidance at 52.) This is accomplished by
receiving information, analyzing information and displaying results,
receiving additional information, analyzing the additional information and
displaying results.
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.
We note that claims, like claim 1, directed to receiving information
and generating tasks to be performed based on identified rules, have been
determined to be directed to an abstract idea. See Accenture Glob. Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013)
("The abstract idea at the heart of system claim 1 of the '284 patent is
'generating tasks [based on] rules ... to be completed upon the occurrence of
an event."'). "[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
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ancillary part of such collection and analysis." Id. "Here, the claims are
clearly focused on the combination of those abstract-idea processes." Id.
Appellants do not argue that they invented a handheld computing
device, a graphical user interface, or a processor. Nor do we see how the
recitation of a handheld computing device, a graphical user interface, and a
processor, even in conjunction with the recited functions, "ensure[ s] '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.) Claim 1 uses generic computer components as tools to perform the
abstract idea. (See Spec. ,r,r 25, 26, 31; see also Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (and cases cited
therein).)
With regard to Appellants' argument that claim 1 is "directed to
improving computer functionality" (Appeal Br. 10, emphasis omitted),
Appellants provide no persuasive evidence in support of this assertion. (See
Appeal Br. 10-11; see also Answer 14.) The asserted improvement is to a
method of organizing human activity, and, in particular, to a business
practice regarding data collection for supply chain management. (See Spec.
,r 1.) In short, "[ t ]hese claims in substance [are] directed to nothing more
than the performance of an abstract business practice ... using a
conventional computer. Such claims are not patent-eligible." DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
In view of the above, we agree with the Examiner that claim 1 is
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
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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 "claim 1 at least recites rendering output as well
as making a determination based on the input received." (Appeal Br. 12.)
As discussed above, claim 1 is directed to the abstract idea of
organizing human activity, i.e., "managing personal behavior or
relationships" and "following rules or instructions." (See 2019 Guidance
at 52.) The additional elements of a handheld computing device, a graphical
user interface, and a processor, do not recite significantly more than the
ineligible concept itself. Nor, as discussed above, do Appellants argue that
they invented a handheld computing device, a graphical user interface, or a
processor.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it' " is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea " 'to a particular technological environment.' "
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility.
Alice, 573 U.S. at 223 ( citations omitted).
"[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." Id. at 225. They do not. Claim 1 relates to receiving
information, analyzing information and displaying results, receiving
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additional information, analyzing the additional information and displaying
results.
Taking the claim elements separately, the function performed by the
generic computer components at each step is purely conventional.
Receiving information, analyzing information and displaying results 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.").
Considered as an ordered combination, the generic computer
components of Appellants' method add nothing that is not already present
when the steps are considered separately. For example, claim 1 does not, as
discussed above, purport to improve the functioning of the components
themselves. Nor does it effect an improvement in any other technology or
technical field. Instead, claim 1 amounts to nothing significantly more than
an instruction to apply the abstract idea using generic computer
components. That is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225-26.
Appellants' other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
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of error. (See 2019 Guidance at 51 ("Eligibility-related guidance issued
prior to the Ninth Edition, R---08.2017 of the MPEP (published Jan. 2018)
should not be relied upon.").)
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under § 101. Claims 2-6 and 8-20 are not separately
argued (see Appeal Br. 12) and fall with claim 1 (see 37 C.F.R.
§ 4I.37(c)(l)(iv)).
The § 103 (a) reiection
Claim 1 recites, in part,
rendering at said graphical-user interface including
outputting information for an operator of said handheld
computing device describing a specific element of said data to be
collected and including a symbolic or textual indication of a type
of a data-collection device to be used to collect said specific
element of said data, said data collection device being separate
from said handheld computing device;
receiving, via at least said data-collection device, data-
collection input for each subtask of said first set of subtasks ....
Appellants argue that Sholl does not teach a separate data collection
device and "that Sholl fails to teach or contemplate a GUI for outputting an
'indication of a type of a data-collection device to be used' whatsoever."
(Appeal Br. 15, emphasis omitted.)
The Examiner finds that Sholl need not teach this limitation because
the "indication of a type of a data-collection device to be used"
simply refers to a description of the data collection device, which
is merely depicted in a graphical-user interface. This data
content is not used for any additional purpose and it has no
bearing on the structural or functional limitations in the claims.
It is non-functional, descriptive material.
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(Answer 15.)
As an initial matter, we note that "printed matter may well constitute
structural limitations upon which patentability can be predicated." In re
Gulack, 703 F.2d 1381, 1385 n.8 (Fed. Cir. 1983). However, "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). The Federal Circuit
found in In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994), that a
computer-based structural database was not printed matter, not
because it involved a computer, but because the data structures
"contain[ ed] both information used by application programs and
information regarding their physical interrelationships within a
memory." Lowry, 32 F.3d at 1583-84.
(Id.) Here, claim 1 recites that a particular "type of a data-collection device
[is] to be used to collect said specific element of said data." That is, the
recitation in claim 1 of a particular "type of a data-collection device" is
interrelated with a "specific element of said data." It is also interrelated with
"receiving via at least said data-collection device, data-collection input for
each subtask of said first set of subtasks" and "determining ... from said
data-collection input if said first set of subtasks is performed," as also recited
in claim 1. Therefore, even though the recitation in claim 1 of "a symbolic
or textual indication of a type of a data-collection device" relates to printed
matter, for the reasons discussed, we find that the limitation is entitled to
patentable weight.
Regardless, the Examiner additionally finds that "Official Notice has
been taken that it was old and well-known in the art at the time of
Applicant's invention to combine functions into a single device or to offer
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various functions in separate dedicated devices" and that "[ m ]odifying Sholl
to distribute functions among various divides is a substitutable option."
(Answer 15; see also Final Action 10-11.) But the Examiner does not
sufficiently explain the reasoning with rational underpinnings to modify
Sholl in view of Official Notice to "output[] information ... describing a
specific element of said data to be collected and including a[ n] ... indication
of a type of a data-collection device to be used to collect said specific
element of said data," as recited in claim 1. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007), citing In re Kahn, 441 F.3d 997,988 (Fed.
Cir. 2006).
Therefore, we agree that the Examiner erred in rejecting claim 1 and
dependent claims 2---6 and 8-18 under§ 103(a). Independent claim 19
contains similar language and, for similar reasons, we agree that the
Examiner erred in rejecting claim 19 and dependent claim 20.
DECISION
The Examiner's rejection of claims 1---6 and 8-20 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejection of claims 1-6 and 8-20 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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