Ex Parte Wulteputte et al

Patent Trial and Appeal Board

May 30, 2017

13046394 (P.T.A.B. May. 30, 2017)

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.
13/046,394 03/11/2011 Lieven Wulteputte 272104 4802
23460 7590 06/01/2017
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
LEVINE, ADAM L
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
Chgpatent @ ley dig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIEVEN WULTEPUTTE, DIRK VANDEN BERGHE,
KEN MEYFROODT, and EDWIN De BOCK
Appeal 2015-003641
Application 13/046,394
Technology Center 3600
Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the Final
Rejection of claims 18—27 and 32 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2015-003641
Application 13/046,394
THE INVENTION
The Appellants’ claimed invention is directed to a system and method
for the customized configuration and pricing of equipment built from
specified components (Spec., para. 1). Claim 18, reproduced below, is
representative of the subject matter on appeal.
18. A computer-implemented method for generating a sales
document relating to a system design, the method comprising the
steps of:
creating a plurality of design templates implementing a
plurality of standardized system designs,
receiving information from a customer concerning a system
desired by a customer;
correlating the information concerning the system desired by
the customer with at least one of the plurality of design templates
using the tangible, non-transitory computer media to obtain a
proposed system design;
preparing a preliminary price estimation for the proposed
system design based upon at least one of the plurality of design
templates;
transmitting the preliminary price estimation for the proposed
system design to a central location;
receiving a quotation from the central location, the quotation
generated as a result of electronically comparing the information
concerning the pre-defmed groupings of components used to generate
the at least one design template with standardized pricing information
using the tangible, non-transitory computer media;
creating a proposal from the quotation for a designed system;
and updating the plurality of design templates by causing the proposal
to be stored in the database as a revised quotation.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 18—27 and 32 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
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2. Claims 18—27 and 32 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Borders et al. (US 7,004,402 B2; Feb. 28, 2006) and
Bjomson et al. (US 6,662,062 Bl; Dec. 9, 2003).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
Rejection under 35 U.S.C. §101
The Appellants argue that the rejection of claim 18 is improper (App.
Br. 7, 8, Reply Br. 9, 10). The Appellants argue that the claim is not
directed to an abstract idea, but rather solves a technological problem (Reply
Br. 9). The Appellants also argue that even if the claim were directed to an
abstract idea, that the claim adds significantly more to transform the nature
of the claim (App. Br. 8, Reply Br. 9, 10).
In contrast, the Examiner has determined that the rejection is proper
(Ans. 2—7).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a “new and useful process, machine, manufacture,
or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: “laws of nature,
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/046,394
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 18 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of 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 of the abstract idea. Id.
This is a search for an “inventive concept” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention”. Id. at 2358.
Here, we find that the claim is directed and rooted to the concept
organizing human activities in altering a product based on a customer’s
specifications and then preparing a price estimate. This is a fundamental
economic practice long prevalent in our system of commerce, and is an
abstract idea beyond the scope of patent eligible subject matter under § 101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
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Application 13/046,394
not. The Appellants have argued in the Appeal Brief at page 8 that the
“database ... is a structure that changes over time” and for this reason
cannot be implemented by a generic computer, but we disagree with this
contention as the claim can be carried out using generic computer
components. Here, both individually and as an ordered combination, the
recited elements fail to transform the abstract nature of the claim.
For these above reasons this rejection of claim 1 is sustained. The
Appellants have provided the same arguments for the remaining claims and
the rejection of these claims is sustained for these claims as well.
Rejection under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 18 under 35 U.S.C.
§ 103(a) is improper and the cited combination would not have been obvious
(App. Br. 8—10, Reply Br. 10—12). Specifically, the Appellants argue that
improper hindsight has been used in making the combination of references
(App. Br. 8).
In contrast, the Examiner has determined that rejection of record is
proper (Final Rej. 9—13, Ans. 7).
We agree with the Examiner. The Appellants have not argued in the
Appeal Brief that the cited combination fails to disclose any specific claim
limitations, but rather that the combination would not have been obvious and
uses hindsight (App. Br. 8—10). Here, we agree with and adopt the rationale
presented by the Examiner in the Final Rejection at pages 9—14. The cited
combination in the rejection of record would have been an obvious,
predictable combination of the familiar elements cited from Borders and
Bjomson for the advantage of providing more options for users in using the
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combined benefits of each system as stated in the rejection of record. For
these reasons, this rejection of claim 18 is sustained. The Appellants have
provided the same arguments for the remaining claims and the rejection of
these claims is sustained as well, as no separate arguments have been
provided.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims as listed in the Rejections section above.
DECISION
The Examiner’s rejection of claims 18—27 and 32 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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