Ex Parte Stevens et al

Patent Trials and Appeals Board

Jun 26, 2019

13606775 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/606,775 09/07/2012 Marc Daniel Stevens
143177 7590 06/28/2019
Shook, Hardy & Bacon L.L.P.
(United Parcel Service, Inc.)
2555 Grand Blvd.
Kansas City, MO 64108-2613
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.
056182/422878 2544
EXAMINER
JONES, HUGH M
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC DANIEL STEVENS and
ALLAN BRADY COLE
Appeal2018-002539
Application 13/606,775 1
Technology Center 2100
Before MARC S. HOFF, JASON J. CHUNG, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's Final
Rejection of claims 1-20, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify United Parcel Service of America, Inc. as the real
party in interest. App. Br. 3.
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Application 13/606,775
STATEMENT OF THE CASE
Introduction
Appellants generally describe the disclosed and claimed invention as
follows:
Various embodiments provide a network planning tool
comprising one or more memory storage areas containing data
related to a plurality of transportation networks, and one or more
computer processors configured to: receive input data
comprising one or more modifications to one or more parameters
associated with the plurality of transportation networks; retrieve
at least a portion of the data contained in the one or more memory
storage areas; validate the input data against the portion of data
retrieved from the one or more memory storage areas, the
validating comprising at least calculating one or more impacts to
the integrated flow model based at least in part upon the received
input data; and calculate, based at least in part upon the identified
one or more impacts, one or more updated flow models for the
plurality of transportation networks.
Abstract. 2
Claims 1, 16, and 19 are independent claims. Claim 1 is
representative of the subject matter on appeal and reads as follows (with
format changes and brackets with numbers added):
1. A network planning tool for simulating an integrated flow
model for routing a plurality of packages within a plurality of
transportation networks, the tool comprising:
[ 1] one or more memory storage areas containing data
related to a plurality of existing loads contained within the
2 Our Decision refers to the Final Office Action mailed Mar. 6, 2017 ("Final
Act."), Appellants' Appeal Brief filed May 16, 2017 ("App. Br.") and Reply
Brief filed Jan. 5, 2018 ("Reply Br."), Appellants' Response to Notification
of Non-Complaint Appeal Brief filed June 28, 2017 ("Claims App'x."), the
Examiner's Answer mailed Nov. 11, 2017 ("Ans."), and the original
Specification filed Sept. 7, 2012 ("Spec.").
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plurality of transportation networks, the plurality of existing
loads being balanced in a predetermined manner relative to one
another; and:
[2] one or more computer processors configured to:
(A) receive input data comprising one or more
modifications to one or more parameters associated with the
plurality of transportation networks;
(B) retrieve at least a portion of the data
contained in the one or more memory storage areas;
( C) validate the input data against the portion of data
retrieved from the one or more memory storage areas, the validating
comprising at least calculating one or more impacts to the integrated
flow model based at least in part upon the received input data;
(D) calculate, based at least in part upon the identified one or
more impacts, one or more updated flow models for the plurality of
transportation networks, said calculation of said one or more updated
flow models being based at least in part upon:
where the one or more modifications comprise an
addition of a new service level alongside one or more existing service
levels, an addition of a new load within the plurality of transportation
networks so as to accommodate the new service level received and
upon accommodation of the new service level a rebalancing of the
new load and the existing loads relative to one another, wherein the
new and one or more existing service levels define one or more
handling parameters for transport of the plurality of packages; and
where the one or more modifications comprise a
deletion of at least one of the one or more existing service levels, a
rebalancing of the remaining existing loads relative to one another so
as to accommodate the one or more modifications received; and
(E) automatically generate and transmit instructions
configured to facilitate implementation of either:
where the one or more modifications comprise the
addition of the new service level, the rebalancing of the new load and
the existing loads relative to one another; or
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where the one or more modifications comprise the
deletion of the existing service level, the rebalancing of the existing
loads relative to one another so as to accommodate the one or more
modifications received.
Claims App'x. 2-3.
Rejections on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more. Ans. 2-4.
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Perry (US 2011/0047000 Al; published Feb. 24, 2011) in
view ofKocis et al. (US 20011/0231335 Al; published Sept. 22, 2011)
("Kocis"). Final Act. 11-44.
ANALYSIS
I. Section 101 Rejection
A. Applicable Law
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
"Laws of nature, natural phenomena, and abstract ideas are not patentable."
Alice Corp. v. CLS Banklnt'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is "directed to one of those patent-ineligible
concepts." Alice, 573 U.S. at 217. If so, we then examine "the elements of
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[the] claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an "inventive concept," "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. at217-18 (alteration in original) (quoting
Mayo, 566 U.S. at 72-73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) ("Revised Guidance"). Under the Revised Guidance, to
decide whether a claim is directed to an abstract idea, we evaluate whether
the claim ( 1) recites one of the abstract ideas listed in the Revised Guidance
("Prong One") and (2) fails to integrate the recited abstract idea into a
practical application ("Prong Two"). See Revised Guidance, 84 Fed. Reg. at
51, 54. If the claim is directed to an abstract idea, as noted above, we then
determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add "a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field" or "simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality." Revised Guidance, 84 Fed. Reg. at 56.
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With these principles in mind, we first analyze whether claim 1 is
directed to an abstract idea. 3
B. Abstract Idea
In analyzing the limitations of the claims, the Examiner concludes that
the claims "perform steps of receiving input data, retrieving at least a portion
of the data, validating the input data, calculating ... one or more updated
flow models, and generating and transmitting instructions configured to
facilitate implementation." Final Act. 3. The Examiner also concludes that
these steps "could be performed entirely by a person and are abstract steps."
Id. ( citing Alice).
Appellants contend that the Examiner's rejection of claim 1 under
35 U.S.C. § 101 is improper. See App. Br. 16-37; Reply Br. 4-7.
Appellants argue the Examiner has oversimplified the claims and failed to
consider all of the recited claim limitations as a whole. App. Br. 18-19
( citing Enfzsh4 and McR05). According to Appellants, "although the claimed
configuration combines certain elements that may be known and/or
conventional, it does so in a non-conventional and non-generic fashion,
thereby establishing uniqueness therefor and thus eligibility." Id. at 24
(citing Bascom,6 McRO, Enfish, andAmdocs7). Appellants also argue that
3 Appellants argue independent claims 1, 16, and 19 together. App. Br.
12-37. Thus, we decide the appeal based on representative claim 1. See 37
C.F.R. § 41.37(c)(l)(iv).
4 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
5 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
6 Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016).
7 Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016).
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the claimed configuration "calculates an updated flow model in a timely,
efficient, and accurate manner" and "'automatically generates and transmits
instructions configured to facilitate implementation"' of the rebalancing with
the addition of the new service level or deletion of the existing service level.
Id. at 26; see also id. at 35-36. Appellants further argue that the claims are
analogous to those deemed patentable in McRO, Enfzsh, DDR, and Amdocs.
Id. at 31-32, 35, 36. Moreover, Appellants argue the "claims recite
something more than an abstract idea in the particular application thereof so
as not to pre-empt the abstract idea itself such that others cannot practice it."
Id. at 31; see also id. at 25, 29. Further, according to Appellants, "the
claimed configuration provides an entirely unconventional technological
solution to a historical computer-limitation preventing prior computing
systems from providing highly detailed interactively updated models of
dynamically influenced networks and/or necessary rebalancing activities."
Id. at 37.
1. USPTO Step 2A, Prong One
Beginning with prong one of the first step of Alice, we must determine
"whether the claims at issue are directed to one of those patent-ineligible
concepts," including the abstract ideas enumerated in the Revised Guidance.
Alice, 573 U.S. at 217. One of the subject matter groupings identified as an
abstract idea in the Revised Guidance is "mental processes-concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion)." See Revised Guidance, 84 Fed. Reg. at 52, 53. The
Revised Guidance explains that "mental processes" include acts that people
can perform in their minds or using pen and paper, even if the claim recites
that a generic computer component performs the acts. See Revised
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Guidance, 84 Fed. Reg. at 52 n.14 ("If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.")
The Revised Guidance also identifies the subject matter grouping of
"mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations"-as an abstract idea. See
Revised Guidance, 84 Fed. Reg. at 52.
Here, apart from the "one or more memory storage areas" and "one or
more computer processors" recited in limitations [l] and [2], we determine
that the limitations of claim 1 recite the abstract ideas of "mental processes"
and "mathematical concepts." For example, limitation (A) recites "receive
input data comprising one or more modifications to one or more parameters
associated with the plurality of transportation networks." The function of
receiving data about modifications to parameters associated with
transportation networks can be performed by a person using a pen to write
on paper the specific changes to the parameters. Limitation (B) recites
"retrieve at least a portion of the data" related to a plurality of existing loads
contained within the plurality of transportation networks. The function of
retrieving a part of the data relating to at least two existing loads within at
least two transportation networks can be performed by a person examining
the data and recording it on paper using a pen. Thus, limitations (A) and (B)
of claim 1 recite the abstract idea of "mental processes."
Limitation (C) of claim 1 recites "validate the input data against the
portion of data retrieved ... the validating comprising at least calculating
one or more impacts to the integrated flow model based at least in art upon
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the received input data." (Emphasis added). Limitation (D) recites
"calculate ... one or more updated flow models ... based at least in part
upon: where the ... modifications comprise an addition of a new service
level ... a rebalancing of the new load and the existing loads ... and where
the one or more modifications comprise a deletion of the one or more
existing service levels, a rebalancing of the remaining existing loads .... "
(Emphasis added). The term "calculate," as used in limitations (C) and (D),
means "to determine by mathematical processes." See WEBSTER'S NINTH
NEW COLLEGIATE DICTIONARY, 196 (1985). The Specification also indicates
that "calculate" is a mathematical process. For example, paragraph 44 of the
Specification states:
The validation module 500 is configured to activate a model
validation tool, which calculates whether the input ( e.g., updated)
data results in any impacts to one or more parameters of the flow
model. Any identified impacted model data is presented to a user
of the tool and associated system 20. The optimization module
600 is then configured to activate a model optimization tool,
which applies one or more algorithms to generate one or more
optimized models based upon the existing data, the input data,
and the identified impacted data.
Thus, because limitations (C) and (D) expressly recite a mathematical
process of "calculating" or "calculate," we determine that these limitations
of claim 1 recite the abstract idea of "mathematical concepts."
Limitation (E) recites "automatically generate and transmit
instructions configured to facilitate implementation of either:" rebalancing
of the new load and the existing loads or where the modifications comprise
deletion of the existing service, rebalancing the existing loads relative to one
another. The Examiner finds that claim 1 "does not define to what these
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instructions are transmitted." Ans. 8. The Examiner also finds that because
claim 1 recites "to facilitate" an action, the claims does not require any
rebalancing of the loads. Id. In response, Appellants argue that because the
instructions are automatically generated and transmitted based on the
rebalancing calculation results, "it is inherent that their generation and
transmission results in the recited rebalancing." Reply Br. 4-5. Even if we
were to agree with Appellants, we nevertheless determine that limitation (E)
merely adds insignificant extra-solution activity to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 55 n.31. Accordingly, we also
determine Appellants argument that the claimed configuration provides "a
tangible result" is unavailing. See App. Br. 26.
Claim 1 is, therefore, directed to a combination of features that we
conclude are similar or analogous to claims in other cases that courts have
found are directed to an abstract idea. The Federal Circuit has found claims
reciting collecting and manipulating data in a certain way, and mathematical
relationships and calculations, to be directed to abstract ideas. See, e.g.,
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying, and
manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
13 54 (Fed. Cir. 2016) ( characterizing collecting information, analyzing
information by steps people go through in their minds, or by mathematical
algorithms, and presenting the results of collecting and analyzing
information, without more, as matters within the realm of abstract ideas);
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
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patent eligibility of the claimed subject matter."); see also SAP America, Inc.
v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) ("As many cases
make clear, even if a process of collecting and analyzing information is
'limited to particular content' or a particular 'source,' that limitation does
not make the collection and analysis other than abstract." (quoting Elec.
Power Grp., 830 F.3d at 1353, 1355 (citing cases)).
Based on the analysis above, we determine that claim 1 recites the
abstract ideas of "mental processes" and "mathematical concepts." In that
regard, we note that merely combining several abstract ideas does not render
the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd.,
855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea ... to
another abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) ( determining the pending claims were directed to a combination of
abstract ideas).
Accordingly, we conclude that claim 1, as a whole, recites a network
planning tool comprising mental processes and mathematical concepts, two
of the abstract idea groupings in the Revised Guidance. See Revised
Guidance, 84 Fed. Reg. at 52. Thus, we also conclude that claim 1 recites an
abstract idea.
2. USPTO Step 2A, Prong Two
Because we determine that claim 1 recites an abstract idea, we tum to
prong two of the first step of the Alice analysis and consider whether claim 1
integrates this abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether there are
any additional elements beyond the abstract idea that, individually or in
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combination, "integrate the [ abstract idea] into a practical application, using
one or more of the considerations laid out by the Supreme Court and the
Federal Circuit."8 Revised Guidance, 84 Fed. Reg. at 54-55.
The Examiner finds that the claims "require no more than a generic
computer to perform generic computer functions that are well-understood,
routine, and conventional activities, namely receiving and compiling data,
and this does not add significantly more to the abstract idea." Final Act. 3.
The Examiner also finds that the claims "do not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because receiving data, retrieving data, and storing data are mere data
gathering steps which only add insignificant extra-solution activities to the
judicial exception and the use of a processor which amounts to no more than
implementing mathematical relationships on a machine or computer." Id. at
3-4.
Appellants argue that, even assuming arguendo that the claims were
directed to an abstract idea, "each claim as a whole amounts to significantly
more than the exception itself." App. Br. 27-28. Specifically, according to
Appellants, "the claims (1) apply the judicial exception with, or by use of, a
particular machine; (2) add specific limitations other than what is well
understood, routine and conventional in the field; and/or (3) provide
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment." Id. at 28. Appellants also argue
8 We acknowledge that some of these considerations may be properly
evaluated under step 2 of Alice ( step 2B of the Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under step 1 of Alice (step 2A, prong two, of the Revised
Guidance). See Revised Guidance, 84 Fed. Reg. at 54-55.
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that "considered as a whole, the unconventional combination of features
recited in the independent claims constitute significantly more than any
abstract idea that may be present in any individual limitation of the
independent claims." Id. at 37.
We are not persuaded by Appellants' arguments. First, the Examiner
finds, and we agree, that Appellants do "not specify how the instant claims
improve [ o ]n the functionality of computers or provide a technological
solution to a technological problem." Ans. 11-12. In that regard,
Appellants have failed to demonstrate that claim 1 requires any asserted
inventive programming, requires any specialized computer hardware or
other inventive computer components, i.e., a particular machine, or that the
claimed invention is performed using other than generic computer
components. Nor have Appellants identified any disclosure in the
Specification of any inventive techniques or specialized computer
components to perform the recited limitations of claim 1.
Second, in regard to Appellants' argument that the claims ( 1) apply
the judicial exception with a particular machine, (2) add specific limitations
other than what is well understood, routine, and conventional in the field,
and (3) provide meaningful limitations beyond linking an abstract idea to a
particular technological environment, we agree with the Examiner's finding
that "it is not clear how the claims address any of these." Id. at 17.
Consistent with Appellants' arguments that the claims provide a
technological solution, Appellants' arguments in this regard are conclusory
and unsupported by the Specification or other persuasive evidence or
technical reasoning.
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Third, we do not agree with Appellants' arguments that claim 1 is
analogous to the claims in DDR, Enfish, McRO, Bascom, and Amdocs. The
method claim in DDR "address[ ed] the problem of retaining website visitors
that, if adhering to the routine, conventional functioning of Internet
hyperlink protocol, would be instantly transported away from a host's
website after 'clicking' on an advertisement and activating a hyperlink."
DDR Holdings, 773 F.3d 1245, 1257 (Fed. Cir. 2014). In contrast, the
problem addressed here by claim 1 is calculating updated flow models based
on adding or deleting a service level and rebalancing the loads, which is not
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks," as in DDR. Id.
In Enfish, the claims were "specifically directed to a self-referential
table for a computer database." Enfish, 822 F.3d at 1337. The claims were,
therefore, "directed to a specific improvement to the way computers
operate," rather than an abstract idea implemented on a computer. Id. at
1336. The claims here, in contrast, are not directed to an improvement in the
way computers operate, nor have Appellants identified any technical
advance or improvement or specialized computer components.
In McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a "technological improvement over
the existing, manual 3-D animation techniques" and "uses the limited rules
in a process specifically designed to achieve an improved technological
result in conventional industry practice." McRO, 837 F.3d at 1316.
Specifically, the Federal Circuit found that the claimed rules allow
computers to produce accurate and realistic lip synchronization and facial
expressions in animated characters that previously could only be produced
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by human animators; and the rules are limiting because they define morph
weight sets as a function of phoneme sub-sequences. Id. at 1313. Here,
Appellants have not identified any analogous improvement that is
attributable to the claimed invention. Although claim 1 may improve the
efficiency and accuracy of calculating an updated flow model, as Appellants
assert (see App. Br. 31 ), it does not achieve an improved technological
result. We see no parallel between the limiting rules described in McRO and
calculating an updated flow model, as recited in claim 1.
We also are not persuaded by Appellants' argument that the
configuration of claim 1 combines certain elements that may be known in a
non-conventional and non-generic fashion, thereby establishing uniqueness
and eligibility, similar to Bascom and Amdocs. App. Br. 24. Initially, we
remind Appellants that Bascom did not find claims eligible on the substance,
but rather because Appellees did not provide sufficient evidence to support a
Rule 12(b)(6) motion to dismiss in which facts are presumed in the non-
movant's favor. The key fact in Bascom was the presence of a structural
change in "installation of a filtering tool at a specific location, remote from
the end-users, with customizable filtering features specific to each end user.
This design gives the filtering tool both the benefits of a filter on a local
computer and the benefits of a filter on the ISP server." Bascom, 827 F.3d at
1350. Claim 1 has no analogous structural benefit.
The claims in Amdocs "entail[ ed] an unconventional technological
solution ( enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases)."
Amdocs, 841 F.3d at 1300. More specifically, the claims were "tied to a
specific structure of various components (network devices, gatherers, ISMs,
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a central event manager, a central database, a user interface server, and
terminals or clients)" such that the components were "purposefully
arrange[ d] ... in a distributed architecture to achieve a technological
solution to a technological problem specific to computer networks." Id. at
1301. We find no such analogous structural arrangement of components in
claim 1.
Moreover, we are not persuaded by Appellants' argument that the
"claims recite something more than an abstract idea in the particular
application thereof so as not to pre-empt the abstract idea itself such that
others cannot practice it." App. Br. 31; see also id. at 25, 29. "[Q]uestions
on preemption are inherent in and resolved by the§ 101 analysis." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216). Although "preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Id.
Appellants does not specifically argue that the Examiner erred in
determining that the only element in claim 1 besides the abstract ideas is a
generic computer. Ans. 3. We see nothing in claim 1 or the Specification
that suggests otherwise. As stated supra, claim 1 merely recites one or more
"memory storage areas" and "computer processors." Thus, we determine
that the additional elements recited in claim 1 do not integrate the recited
abstract ideas into a practical application. See Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) ("In this case, the
claims are directed not to an improvement in cellular telephones but simply
to the use of cellular telephones as tools in the aid of a process focused on an
abstract idea. That is not enough to constitute patentable subject matter.");
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Revised Guidance, 84 Fed. Reg. at 55 ( explaining that courts have identified
"merely us[ing] a computer as a tool to perform an abstract idea" as an
example of when a judicial exception may not have been integrated into a
practical application). Further, consistent with the Examiner's findings, and
in view of Appellants' Specification (e.g., ,i,i 39-49), we conclude that claim
1 does not integrate the judicial exception into a practical application, and
thus is directed to the judicial exception. In particular, we determine claim 1
does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)-(c), (e)-(h).
3. USPTO Step 2B - Inventive Concept
Finally, we consider whether claim 1 has an inventive concept, that is,
whether any additional claim elements "'transform the nature of the claim'
into a patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 78, 79). This requires us to evaluate whether the additional
claim elements add "a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field" or
"simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality."
Revised Guidance, 84 Fed. Reg. at 56.
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As stated supra, the Examiner finds that the claims "require no more
than a generic computer to perform generic computer functions that are well-
understood, routine, and conventional activities, namely receiving and
compiling data, and this does not add significantly more to the abstract
idea." Final Act. 3. The Examiner also finds that the claims "do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception." Id. at 3-4. Appellants argue that "each claim as a
whole amounts to significantly more than the exception itself." App. Br.
27-28. As stated, Appellants also argue that the claimed configuration
provides "an entirely unconventional technological solution to a historical
computer-limitation preventing prior computing systems from providing
highly detailed interactively updated models of dynamically influenced
networks and/or necessary rebalancing activities." App. Br. 37. Appellants
further argue that "considered as a whole, the unconventional combination
of features recited in the independent claims constitute significantly more
than any abstract idea that may be present in any individual limitation of the
independent claims." Id.
We are not persuaded by Appellants' arguments. As discussed supra,
we are not persuaded by Appellants' argument that claim 1 provides "an
entirely unconventional technological solution to a historical computer-
limitation" because Appellants' arguments are conclusory and unsupported
by persuasive evidence and technical reasoning identifying or explaining any
alleged technological advance in computer software or hardware. In that
regard, the Examiner finds, and we agree, that claim 1 does "not provide an
improvement in computer technology," but merely uses the computer "to
implement the abstract idea." Ans. 22-23. Moreover, we see nothing in
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claim 1 or the Specification suggesting that the "memory storage areas" and
"computer processors" recited in claim 1, are anything but generic computer
components that perform well-understand, routine, and conventional
activities. See, e.g., Spec. ,i,i 15-17, 23.
Thus, considering claim 1 as a whole, we determine that the additional
elements recited in claim 1 do not provide "a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field." Revised Guidance, 84 Fed. Reg. at 56.
Rather, these elements "simply append[] well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality." Id. Accordingly, we agree with the Examiner that
claim 1 does not have an inventive concept.
5. Conclusion
Because we determine that claim 1 is directed to an abstract idea and
does not contain an inventive concept, we sustain the Examiner's rejection
of claim 1 under 35 U.S.C. § 101. For the same reasons, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of independent claims 16 and
19, and dependent claims 2-15, 17, and 18, which are not argued separately.
II. Section 103(a) Rejection
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) for
obviousness over the combination of Perry and Kocis. Final Act. 11-44. In
particular, the Examiner finds that Kocis teaches the disputed portions of
limitations (D) and (E) of claim 1 reciting "where the one or more
modifications comprise an addition of a new service level ... rebalancing of
the new load and the existing loads relative to one another" and "where the
one or more modifications comprise a deletion of at least one of the ...
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existing service levels, a rebalancing of the remaining existing loads relative
to one another." (Emphasis added). Ans. 5-7 (citing Kocis ,i,i 96,213,230,
236, and 288-290 as teaching addition of the service level and a re-
optimized solution; citing Kocis ,i,i 156, 188, 213, and 288-290 as teaching
deletion of the service level and a re-optimized solution); see also Final Act.
14-18.
Appellants argue that the teaching in Kocis of a re-optimization of a
solution does not constitute "either of the recited rebalancing actions that
occur in the claimed configuration." App. Br. 14 (citing Kocis Fig. 3X,
,i,i 288-290). According to Appellants, in the claimed configuration,
rebalancing occurs in response to the modification involving the service
level itself, whereas at best, Kocis indicates that "vessels may be added
and/or rebalancing may occur only during the course of its modeling
procedures," which is not "analogous to rebalancing post-hiring and/or mid-
transport of materials (e.g., oil)." Id.; see also Reply Br. 2. Appellants also
argue that nothing in Kocis teaches or suggests rebalancing its vessels based
upon a change in transport requirements for its goods. App. Br. 15.
We are persuaded by Appellants' arguments that the Examiner erred.
Kocis teaches updating worksheets "whenever a new term vessel is added or
deleted" and "when a new port is added or port characteristics need to be
modified." Kocis ,i,i 213, 236. Paragraph 272 ofKocis explains that the
third step in the workflow process "is to calculate the optimal vessel
assignments, to cover all the voyages in the planning period, that maximizes
overall net margin." Paragraph 286 of Kocis explains that the fourth step in
the workflow process "is to re-optimize vessel assignments using to
additional user input constraints." Paragraph 286 also explains that the user
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may want to reassign vessels for operational reasons and the page illustrated
in Figure 3X "allows the user to run such what-if analysis cases." Kocis also
describes that the user can re-optimize the solution using a table on Figure
3X to force or forbid "a particular term vessel/voyage assignment" and
"[ w ]hen the re-optimization is complete, the user can view the impact of the
new what if constraints on total net margin." Kocis ,i,i 287-290.
Thus, based on our review of Kocis, we agree with the Examiner that
Kocis teaches adding a new vessel and re-optimizing vessel assignments to
determine the impact on total net margin. However, we agree with
Appellants that any addition of a vessel in Kocis is non-analogous to what
occurs when loads are added via the claimed configuration. Reply Br. 3. In
particular, Appellants argue, and we agree, that although Kocis may
introduce an additional vessel and load oil therein, "the claimed
configuration further rebalances the load (i.e., any oil, using the example of
Kocis) across all existing loads; thus rebalancing occurs across a
combination of the pre-existing and the added load(s)," which does not
occur in Kocis.
Accordingly, we determine that Koc is does not teach of suggest the
disputed portions of limitations (D) and (E) of claim 1 and, therefore, the
combination of Perry and Kocis does not render claim 1 obvious under
35 U.S.C. § 103(a). Thus, we do not sustain the Examiner's rejection of
claims 1, 16, and 19, and dependent claims 2-15, 17, and 18, under
35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 101.
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We reverse the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R.
§ 41.50(a)(l).
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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