Carsten Franke et al.

Patent Trials and Appeals Board

Jan 29, 2020

14136454 - (R) (P.T.A.B. Jan. 29, 2020)

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.
14/136,454 12/20/2013 Carsten Franke 65040-256137 3452
141164 7590 01/29/2020
Barnes & Thornburg LLP (ABB)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
STEWART, CRYSTOL
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CARSTEN FRANKE, IIRO HARJUNKOSKI,
and SLEMAN SALIBA
____________

Appeal 2018-002489
Application 14/136,454
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant1 filed a Request for Rehearing (“Req. Reh’g”), pursuant to
37 C.F.R. § 41.52, on December 3, 2019, seeking reconsideration of our
Decision on Appeal mailed October 9, 2019 (“Decision”), in which we
affirmed the Examiner’s rejection of claims 1–17 under 35 U.S.C. § 101 as

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed August 1, 2017) and Reply Brief (“Reply Br.,” filed January 3, 2018).
Appeal 2018-002489
Application 14/136,454

2
directed to patent-ineligible subject matter.2 We have jurisdiction over the
Request under 35 U.S.C. § 6(b).
DISCUSSION
Appellant alleges in the Request that, in applying Step 2A, Prong Two
and Step 2B of the patent eligibility test set forth in the U.S. Patent and
Trademark Office’s (the “USPTO’s”) 2019 REVISED PATENT SUBJECT
MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the
“2019 Revised Guidance”), the Board “did not fully consider the
specification’s teachings regarding the technological improvement provided
by the claimed invention” (Req. Reh’g 2 (citing Appeal Br. 6–7, Reply
Br. 2–3)). Appellant charges that “rather than merely ‘adapting the
generation of schedules based on real-time information,’ as characterized by
the Board,” the claimed invention has “a special architecture in which the
second processing unit adapts real time data from multiple sources and
multiple formats into a fixed format usable by the first processing unit,
which performs the resource allocation operations” (id. at 3). Appellant
argues that this special architecture “improves the responsiveness of the
system and eliminates the need to adapt the first processing unit and its
algorithms to be able to use multiple sources of real-time information that
may be in different formats” (id.), and that it also allows the first processing
unit to deliver an updated schedule faster than would otherwise be possible
(id. at 4) — features that, according to Appellant, reflect an improvement in
computer functionality (id.).

2 We reversed the Examiner’s rejections of claims 1–17 under 35 U.S.C.
§ 103.
Appeal 2018-002489
Application 14/136,454

3
Appellant asserts that the Board misapprehended or overlooked this
argument in applying Step 2A, Prong Two of the 2019 Revised Guidance,
and that the Board also overlooked Appellant’s argument that “the
combination of the first data processing unit and the second data processing
unit in the pending claims provides an arrangement of pieces that is non-
conventional and non-generic, thus providing the inventive concept under
Step 2B” (id. at 6). Yet, the Board could not have misapprehended or
overlooked these arguments because they are new arguments presented for
the first time in this Request for Rehearing.
Appellant argued in the Appeal Brief that claims 1–17 represent an
improvement to the “technological field of automated allocation of mobile
resources (e.g., technicians) to the locations of tasks (e.g., maintenance
tasks) based on changing, dynamic data from various sources” and that the
claims, in particular, are directed to “improving the technological process by
enabling a first data processing unit that is configured to efficiently generate
schedules (e.g., allocations of the mobile resources to tasks) . . . to adapt the
generation of the schedules based on dynamic data [sic] real-time data”
(Appeal Br. 6–7). Appellant also repeated this argument in its Reply Brief,
characterizing the claimed invention (and more particularly, the two
processing unit architecture, as it had in the Appeal Brief) as providing,
through the use of real-time data, a “more robust and precise allocation of
the mobile resources to tasks” (Reply Br. 2–3; see also Appeal Br. 7).
Appellant, thus, previously plainly characterized the “technical
improvement” as related to adapting the generation of schedules, i.e., the
allocation of mobile resources to tasks, based on real-time data — a
characterization also consistent with the written disclosure (see, e.g., Spec.
Appeal 2018-002489
Application 14/136,454

4
¶ 18 (describing that “embodiments of the present disclosure provide an
improved system and method for automatic allocation of mobile resources to
tasks so that the practicability and reliability of the generated schedules are
increased in order to be able to react more precisely to real-time events”)).
Appellant ostensibly maintains otherwise; but Appellant did not
previously argue (whether in the Appeal Brief or in its Reply Brief), as it
does now, that the claimed invention reflects an improvement in computer
functionality. Nor did Appellant previously argue that the combination of
the first and second data processing units is a non-conventional and non-
generic arrangement of known conventional pieces. Instead, Appellant
merely noted the Federal Circuit’s holding in BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) that an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces, without any explanation as to
how BASCOM impacts the patent eligibility of the pending claims (Appeal
Br. 7; see also Reply Br. 2).
A request for rehearing is properly limited to previously addressed
matters that were misapprehended or overlooked. See 37 C.F.R. § 41.52(a).
It is not an opportunity to further develop the record through the introduction
of either new evidence and/or arguments.
Appellant argues that the § 101 rejection is improper because the
pending claims reflect an improvement in computer functionality and further
ostensibly because the pending claims are analogous to the claims held
Appeal 2018-002489
Application 14/136,454

5
patent eligible in BASCOM. But, these arguments, which are presented for
the first time in this Request, are not a proper basis for rehearing.3
We are not persuaded that we overlooked or misapprehended any
point of law or fact in rendering our Decision. Therefore, we decline to
modify our original Decision.
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of Appellant’s Request, but is denied in
all other respects.
CONCLUSION
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1–17 101 Eligibility 1–17
Final Outcome of Appeal After Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–17 101 Eligibility 1–17

3 Under 37 C.F.R. § 41.52(a)(1), “[a]rguments not raised, and Evidence not
previously relied upon . . . are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) through (a)(4) of this section.”
Appellant may present a new argument based on a recent relevant decision
of either the Board or a federal court; new arguments responding to a new
ground of rejection designated as such under § 41.50(b), and new arguments
that the Board decision contains an undesignated new ground of rejection
also are permitted. § 41.52(a)(2)–(a)(4).
Appeal 2018-002489
Application 14/136,454

6
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)(1)(iv).
DENIED