Anthony Villardito

Patent Trials and Appeals Board

Oct 2, 2019

13770142 - (D) (P.T.A.B. Oct. 2, 2019)

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.
13/770,142 02/19/2013 Anthony Villardito 26478US01 2160
23446 7590 10/02/2019
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
SHEIKH, ASFAND M
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTHONY VILLARDITO
____________

Appeal 2018-004427
Application 13/770,142
Technology Center 3600
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1, 3–7, and 9–21, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Sears Brands, L.L.C. as the real party in interest. App.
Br. 2.
2 This Decision refers to the Examiner’s Final Office Action mailed September 2,
2016 (“Final Act.”); Appellant’s Appeal Brief filed January 30, 2017 (“App. Br.”);
the Examiner’s Answer mailed January 24, 2018 (“Ans.”); Appellant’s Reply Brief
filed March 23, 2018 (“Reply Br.”); and the original Specification filed
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STATEMENT OF THE CASE
The Claimed Invention
Appellant’s invention relates to “managing inventory distributed across
multiple locations” when “[t]echnicians . . . travel to a customer’s residence or
place of business in order to service or repair an item” and “may not have the parts
and/or tools desired for the job.” Spec. ¶¶ 1–2.
Claims 1, 10, and 16 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal:
1. A method, comprising:
dispatching a person to a service location to perform a service;
receiving, from the dispatched person at the service location, a
request for a part that the dispatched person needs in order to complete
the service at the service location;
in response to said receiving, identifying one or more vehicles in
a vicinity of the service location;
selecting, based on an on-board inventory of parts for each
vehicle of the identified one or more vehicles, a vehicle that has the
requested part in its on-board inventory; and
coordinating a transfer of the requested part from the selected
vehicle to the dispatched person at the service location.
App. Br. 37 (Claims App’x).

February 19, 2013 (“Spec.”).
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References and Rejections
The Examiner relies on the following references as evidence of
unpatentability:
Morris et al. US 7,069,333 B1 Pub. June 27, 2006
(“Morris”)
O’Meara et al. US 2002/0077876 A1 Pub. June 20, 2002
(“O’Meara”)
Nielsen et al. US 8,612,276 B1 Pub. Dec. 17, 2013
(“Nielsen”) (Filed Feb. 4, 2010)
Bruecken US 7,305,350 B1 Pub. Dec. 4, 2007
Claims 1, 3–7, and 9–21 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 4.
Claims 1, 3–7, and 9–21 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Morris in view of O’Meara, Nielsen, and Bruecken. Final
Act. 5–14.
ANALYSIS
Rejection 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, or [a] new and useful
improvement thereof.” 35 U.S.C. § 101. However, the Supreme Court has long
interpreted § 101 to “contain[] an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS
Bank Int'l, 573 U.S. 208, 216 (2014) (quoting Ass'n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, the Supreme Court reiterated the two-step framework previously set
forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77
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(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. The first step in this analysis is to “determine
whether the claims at issue are directed to one of those patent-ineligible concepts,”
e.g., to an abstract idea. Id. Concepts determined to be abstract ideas include
certain methods of organizing human activity, such as fundamental economic
practices (id. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes
(Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). If it is determined that the claims
are directed to a patent-ineligible concept, the second step of the analysis requires
consideration of the elements of the claims “individually and ‘as an ordered
combination’” to determine whether there are additional elements that “‘transform
the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217
(quoting Mayo, 566 U.S. at 78, 79). In other words, the claims must contain an
“inventive concept,” or some element or combination of elements “sufficient to
ensure that the patent in practice amounts to significantly more than a patent upon
the [abstract idea] itself.” Id. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
The PTO recently published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“2019 Guidance”). Under that guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing human activity
such as fundamental economic practices, or mental processes) (“Step 2A,
Prong 1”); and
(2) additional elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017,
Jan. 2018)) (“Step 2A, Prong 2”).
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2019 Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then, under “Step 2B,” look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, and conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
2019 Guidance, 84 Fed. Reg. at 56.
The Examiner determines that claims 1, 3–7, and 9–21 are directed to an
abstract idea and that the claim elements, considered both individually and in
combination, do not include additional elements that are sufficient to amount to
significantly more than the abstract idea. Final Act. 4. In particular, the Examiner
finds that “the abstract idea of the present invention focuses on a fundamental
economic practice (e.g., item delivery).” Id. at 2 (emphasis omitted); see also
Ans. 3–4. The Examiner further determines that the claimed concepts “can further
be implemented . . . as a mental process (thinking) that can be performed in the
human mind, or by a human using a pen and paper.” Ans. 5 (internal quotation
marks omitted).
Appellant argues that the Examiner has failed to establish that the claims are
directed to patent ineligible subject matter. App. Br. 13. Specifically, Appellant
argues that the claims do not recite “agreements between people in the form of
contracts, legal obligations, and business relations” and are thus not directed to a
fundamental economic practice. Id. at 13–15 (citing PTO’s July 2015 Update:
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Subject Matter Eligibility3); see also Reply Br. 3–4. Appellant further argues that
each claim “includes aspects that simply cannot be performed in the human mind
or by a human using pen and paper,” and that “a human would require access to
other tools (e.g., computer systems, telephones, etc.) to perform such tasks.” Reply
Br. 5. According to Appellant, the invention addresses the problem of a technician
being dispatched to a service location without having the parts and/or tools to
perform the service, and is “directed to a practical embodiment or implementation
of how to deliver parts to a person at a service location.” App. Br. 18–19. Finally,
Appellant argues that the claims “are sufficiently narrow enough to avoid
preempting an entire field of innovation and are thus directed to significantly more
than the abstract idea itself.” Id. at 18; see also Reply Br. 7–8.
Step 2A, Prong 1
Under Step 2A, Prong 1 of the 2019 Guidance, we agree with the Examiner
that the claims recite a judicial exception, i.e., an abstract idea. See Final Act. 2.
Regardless of Appellant’s argument that the claims do not recite a fundamental
economic practice (App. Br. 13–15; Reply Br. 3–4), we agree with the Examiner
that the claimed concepts “can be performed in the human mind” (see Ans. 5).
Accordingly, we determine that the claims recite a mental process.
For example, independent claim 1 recites “in response to said receiving [a
request for a part], identifying one or more vehicles in a vicinity of the service
location” and “selecting, based on an on-board inventory of parts for each vehicle
of the identified one or more vehicles, a vehicle that has the requested part in its
on-board inventory.” Under their broadest reasonable interpretation, these
“identifying” and “selecting” limitations recite steps that can be performed in the

3 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf.
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mind, as can corresponding limitations in claims 10 and 16, but for the recitation of
generic components. That is, other than the “computing system” recited in
independent claim 10 and the “management system” recited in independent claim
16 as performing similarly recited steps, nothing in the claim limitations precludes
those steps from being performed in the mind. For example, but for the recitation
of the “computing system” and “management system,” the claims encompass a
method of mentally identifying one or more vehicles in a vicinity of the service
location in response to receiving a request for a needed part, and mentally selecting
a vehicle that has the requested part in its on-board inventory.
Accordingly, these limitations recite a mental process as identified in the
2019 Guidance, and, thus, an abstract idea.
Step 2A, Prong 2
Under Step 2A, Prong 2 of the 2019 Guidance, we next look to whether the
claims recite additional elements that integrate the abstract idea into a practical
application. We determine that they do not. For example, claim 1 additionally
recites “dispatching a person to a service location to perform a service,”
“receiving, from the dispatched person at the service location, a request for a part
that the dispatched person needs in order to complete the service at the service
location,” and “coordinating a transfer of the requested part from the selected
vehicle to the dispatched person at the service location.” The “dispatching” and
“receiving” steps are recited at a high level of generality (i.e., as general means of
assigning a person, e.g., a technician, to a service job/location and receiving
information on what service part is needed) and amount to insignificant
pre-solution activity. The “coordinating” step is also recited at a high level of
generality (i.e., as a general means of delivering the needed service part) and
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amounts to insignificant post-solution activity. See 2019 Guidance, 84 Fed. Reg.
at 55; MPEP § 2106.05(g).
As discussed above, independent claims 10 and 16 recite that a “computing
system” and “management system,” respectively, perform all of the recited steps.
Claim 10 additionally recites “processors” and “storage devices” with
“instructions,” and claim 16 additionally recites a “tracking system” and an
“inventory system.” These additional elements are recited at a high level of
generality, i.e., as generic components performing generic functions of computer
processing. Notwithstanding Appellant’s argument that a human performing the
“receiving,” “identifying,” and “selecting” steps would “require access to other
tools (e.g., computer systems, telephones, etc.) to perform such tasks” (see Reply
Br. 5), we agree with the Examiner that such generic limitations, when recited,
merely apply the abstract idea using generic components. See Final Act. 2–4; Ans.
5; 2019 Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(f). The claim limitations
do not include any particular machine that is integral to the claim. See 2019
Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(b). And, as noted by the
Examiner, the claim limitations do not reflect an improvement in the functioning of
a computer, or to any other technology or technical field. See Final Act. 3; 2019
Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(a).
Thus, even in combination, the additional limitations do not integrate the
abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea.
Accordingly, we agree with the Examiner that the claims are directed to an
abstract idea.
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Step 2B
Under Step 2B of the 2019 Guidance, we agree with the Examiner that the
additional elements recited in the claims (e.g., computing system, processors,
storage devices, instructions, tracking system, inventory system, management
system) (see independent claims 10 and 16) are mere recitations of generic
computer structures performing generic computer functions that are
well-understood, routine, and conventional, and thus do not amount to significantly
more than the abstract idea. See Final Act. 2–4. As discussed above, those
additional elements amount to no more than mere instructions to apply the abstract
idea using generic computer components. Mere instructions to apply an abstract
idea on a generic computer do not provide an inventive concept. Alice, 573 U.S. at
223–24. Appellant has not shown that the claims on appeal add any specific
limitation beyond the judicial exception that is not “well-understood, routine, and
conventional” in the field. See MPEP § 2106.05(d).
Reevaluating the extra-solution activity of “dispatching a person to a service
location to perform a service,” “receiving, from the dispatched person at the
service location, a request for a part that the dispatched person needs in order to
complete the service at the service location,” and “coordinating a transfer of the
requested part from the selected vehicle to the dispatched person at the service
location” (see 2019 Guidance, 84 Fed. Reg. at 56), we find nothing unconventional
in these steps of assigning a person to a service job/location, receiving information
on what service part is needed, and arranging for the delivery of the needed service
part. Although Appellant argues that the claims “set[] forth an unconventional
process of processing requests for parts received from persons dispatched to
service locations” (Reply 7), Appellant provides no evidence of how the ordered
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combination is unconventional or amounts to significantly more than the abstract
idea to which the claims are otherwise directed.
We are unpersuaded by Appellant’s argument that the claims “are
sufficiently narrow enough to avoid preempting an entire field of innovation and
are thus directed to significantly more than the abstract idea itself.” App. Br. 18;
see also Reply Br. 7–8. As noted by the Examiner, the absence of complete
preemption is not dispositive. Ans. 4; see, e.g., Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption may
signal patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.”); Ultramercial, Inc. v. Hulu, LLC, 722 F.3d
1335, 1346 (Fed. Cir. 2013) (“[T]he Supreme Court has stated that, even if a claim
does not wholly pre-empt an abstract idea, it still will not be limited meaningfully
if it contains only insignificant or token pre- or post-solution activity—such as
identifying a relevant audience, a category of use, field of use, or technological
environment.”) (citations omitted), vacated and remanded, WildTangent, Inc. v.
Ultramercial, LLC, 573 U.S. 942 (2014) (remanding for further consideration in
light of Alice). Thus, even if the claims do not preempt the abstract idea, that alone
is insufficient to render the claims patent-eligible.
Accordingly, considering the claim elements individually and as an ordered
combination, we agree with the Examiner that there are no meaningful claim
limitations that represent sufficiently inventive concepts to transform the nature of
the claims into a patent-eligible application of the abstract idea.
For the foregoing reasons, we sustain the Examiner’s rejection of claims 1,
3–7, and 9–21 under 35 U.S.C. § 101.
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Rejection Under 35 U.S.C. § 103
Addressing independent claim 1, Appellant argues that the proposed
combination of Morris, O’Meara, Nielsen, and Bruecken fails to teach “selecting,
based on an on-board inventory of parts for each vehicle of the identified one or
more vehicles, a vehicle that has the requested part in its on-board inventory.”
App. Br. 29. Specifically, Appellant argues that while O’Meara teaches assigning
taxis based on their location, it does not consider the on-board inventory of each
taxi. Id. at 24. Appellant further argues that while Nielsen teaches dispatching
service technicians based on the inventory available in a technician’s vehicle,
Nielsen does not “indicate that a vehicle is selected from one or more vehicles
identified in a vicinity of a service location, especially where that selection is based
on whether the on-board inventory of the vehicle has a part that was requested by a
technician at the service location.” Id. at 25. Finally, Appellant argues that, in
Bruecken, “the location of vendor vehicles 430 proximate the customer are
identified prior to receiving a request from the customer for particular goods,” and
vendor vehicles are eliminated from consideration not because they lack a part
requested by the customer, but, rather, based on the vendor having insufficient
inventory or another incapability to deliver goods and/or perform services. Id. at
27; see also Reply Br. 10.
Addressing claim 3, which depends from claim 1, Appellant argues that the
combination of Morris, O’Meara, Nielsen, and Bruecken fails to teach “requesting
each vehicle of the plurality of vehicles to indicate whether the vehicle has the
requested part; wherein said selecting comprises selecting the vehicle with which
to coordinate the transfer based on indications received from the plurality of
vehicles.” App. Br. 29–31. Appellant reiterates that “O’Meara is not concerned
with the on-board inventory of the respective taxis,” arguing that a reasonable
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construction of “the requested part” as claimed does not include seating in a taxi.
Id. at 30; see Final Act. 8–9. Appellant further argues that, even if “the requested
part” included a taxi’s “seating,” “O’Meara is silent with respect to requesting each
taxi to provide an inventory of their seats and selecting a taxi based on such
inventory.” App. Br. 30. Finally, Appellant argues that, in Bruecken, “vendors
504 inform the host 502 when they have insufficient inventory prior to receiving
any request from a customer.” Id. at 31.
We find these arguments unpersuasive, as Appellant attacks the references
individually without consideration of what the combined teachings would have
suggested to one of ordinary skill in the art. As noted by the Examiner, one cannot
show nonobviousness by attacking references individually where the rejection is
based upon a combination of references. In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986); see Ans. 6–11. The test for obviousness is what the combined
teachings of the references would have suggested to one of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). We agree with the Examiner that
the method of claim 1, including the step of “selecting, based on an on-board
inventory of parts for each vehicle of the identified one or more vehicles, a vehicle
that has the requested part in its on-board inventory,” would have been obvious in
view of combining O’Meara, Nielsen, and Bruecken with Morris’s teaching of
receiving a request for a part from a dispatched person (e.g., technician) at the
service location and then coordinating a transfer of the requested part from a
mobile warehouse vehicle to the dispatched person at the service location. See
Final Act. 5–8 (citing Morris 21:40–22:42); Ans. 9–10. We also agree with the
Examiner that claim 3 would have been obvious over that teaching by Morris (i.e.,
first receiving a request for a part from the dispatched person) combined with the
teachings of O’Meara and Nielsen, in view of Bruecken’s teaching of vendors
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reporting their inventory. See Final Act. 8–9 (citing Bruecken 10:20–25; 14:5–11).
Accordingly, we are unpersuaded of error in the Examiner’s rejection of claims 1
and 3.
Addressing claims 7 and 9, which both depend from claim 1, Appellant
argues that none of the references teach that “the request received from the
dispatched person further requests a tool required for the service to be performed at
the service location” or that “the request received from the dispatched person
further requests a product required for the service to be performed at the service
location.” App. Br. 32–34. The Examiner cites Morris’s teaching of receiving a
request for a part from a technician at the job site (Morris 22:26–42), Bruecken’s
teaching of on-site services such as installation, maintenance, and repair services
(Bruecken 4:21–41), and Nielsen’s teaching of scheduling technicians based on
“available inventory needed to attend to activities (e.g., is inventory available in
technician’s vehicle . . .)” (Nielsen 6:22–33). Final Act. 11–12; see also Ans. 12–
13. Bruecken’s installation, maintenance, and repair services would generally
require tools, and one of ordinary skill would have understood Nielsen’s
“inventory needed to attend to activities” to include tools. Thus, we agree with the
Examiner that the applied combination of references would have taught or at least
suggested “further request[ing] a tool required for the service to be performed at
the service location” (claim 7) to one of ordinary skill in the art. We also agree
with the Examiner that “a product required for the service to be performed at the
service location” (claim 9) encompasses the part requested by the technician in
Morris, as well as the inventory available in the technician’s vehicle in Nielsen.
Thus, the applied combination of references also teaches or suggests claim 9.
For the foregoing reasons, we sustain the Examiner’s rejection of claims 1,
3, 7, and 9, as well as claims 4–6 and 10–21 not separately argued by Appellant,
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under 35 U.S.C. § 103 as being unpatentable over Morris in view of O’Meara,
Nielsen, and Bruecken.
CONCLUSION
We affirm the Examiner’s rejection of claims 1, 3–7, and 9–21 under
35 U.S.C. § 101.
We affirm the Examiner’s rejection of claims 1, 3–7, and 9–21 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claims Rejected Basis Affirmed Reversed
1, 3–7, 9–21 § 101 1, 3–7, 9–21
1, 3–7, 9–21 § 103 – Morris, O’Meara, Nielsen, and Bruecken 1, 3–7, 9–21

Overall Outcome 1, 3–7, 9–21