Ex Parte ADDY

Patent Trial and Appeal Board

Sep 25, 2017

13661074 (P.T.A.B. Sep. 25, 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.
13/661,074 10/26/2012 Kenneth L. ADDY H0036773/4874/116182 4421
92556 7590
HONEYWELL/HUSCH
Patent Services
115 Tabor Road
P.O.Box 377
MORRIS PLAINS, NJ 07950
09/27/2017 EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
patentservices-us @ honey well, com
amy. hammer @ hu schblackwell .com
pto-chi@huschblackwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH L. ADDY
Appeal 2016-000189
Application 13/661,0741
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRADLEY B. BAYAT, and
SHEILA F. McSHANE, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kenneth L. Addy (“Appellant”) seeks our review under
35 U.S.C. § 134 from the final rejection of claims 10—15.2 We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies “Honeywell International Inc.” as the real party
interest. App. Br. 2.
2 Claims 1—9 are canceled. Id. at 9.
Appeal 2016-000189
Application 13/661,074
THE INVENTION
Appellant’s invention relates to a system and method of providing
monitoring service on demand. Spec., Title.
Claims 10 and 14 are the independent claims on appeal. Independent
claim 14, reproduced below with added formatting, is illustrative of the
claimed subject matter.
14. A method of providing third party monitoring of a
security system on demand, comprising:
[1] one or more processors establishing at least one date and
duration during which third party monitoring of a
security system, from a site displaced from the security
system, is required;
[2] establishing an appropriate financial credit to address
costs of the required monitoring;
[3] evaluating which one of a plurality of monitoring stations
should be selected to monitor the security system, and,
arranging to have the security system monitored thereby
in accordance with the at least one date and duration; and
[4] terminating the monitoring in accordance with the at least
one date and duration.
App. Br. 9, Claims Appendix (with added formatting).
THE REJECTION
The following rejection is before us for review:
Claims 10-15 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
ANALYSIS
Upon consideration of Appellant’s assertions in the Briefs (App. Br.
6—8; Reply Br. 2—4), we are not persuaded that the Examiner erred in
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Application 13/661,074
concluding that claims 10-15 are directed to non-statutory subject matter.
We concur with the applicable conclusions reached by the Examiner (Final
Act. 2—3; Ans. 3—5) and address each argument contesting the rejection
under § 101, in turn.
Appellant argues claims 10—15 as a group. See App. Br. 6. We select
independent claim 14 as the representative claim for this group, and the
remaining claims 10—13 and 15 stand or fall with claim 14. 37 C.F.R.
§41.37(c)(l)(iv).
Alice Corp. Party Ltd. v. CLS Bank International, 134 S.Ct. 2347
(2014), identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S.Ct. at 2355. The Examiner determined that the
claims are “directed to an on demand monitoring service”, an abstract idea.
Final Act. 3. Appellant disagrees.
Appellant argues that “[njone of claims 10-15 is directed towards an
abstract idea.” App. Br. 6 (emphasis omitted). In support of this argument,
Appellant asserts that “examples of abstract ideas discussed in Alice Corp.
include algorithms and mathematical formulas as well as methods of risk­
hedging and intermediated settlement, which are abstract ideas because they
are fundamental economic practices . . . [but] providing third party
monitoring of a security system on demand is not an algorithm, is not a
mathematical formula, and is not a method that involves only fundamental
economic practices.” Id.', see also Reply Br. 2—3.
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Application 13/661,074
Appellant’s argument is unpersuasive at least because abstract ideas
are not limited to algorithms, mathematical formulas, or fundamental
economic practices. “The ‘abstract idea’ step of the inquiry calls upon us to
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 Tex. v. DirectTV, 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)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). There is no definitive rule to determine what constitutes an
“abstract idea.” Rather, the Federal Circuit has explained that “both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases.” Enfish, 822 F.3d 1327, 1334 (Fed. Cir. 2016); see also Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir.
2016) (explaining that, in determining whether claims are patent eligible
under § 101, “the decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can be seen—
what prior cases were about, and which way they were decided”).
In this regard, claim 14 of the instant application is similar to the
claims in Electric Power, which did “not go beyond requiring the collection,
analysis, and display of available information in a particular field, stating
those functions in general terms, without limiting them to technical means
for performing the functions that are arguably an advance over conventional
computer and network technology.” Id at 830 F.3d at 1351. Specifically, our
reviewing Court held that “collecting information, including when limited to
particular content (which does not change its character as information), as
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Application 13/661,074
within the realm of abstract ideas” and that “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 1353—54 (citations omitted).3
Here, the preamble of claim 14 calls for the claimed method of
“providing third party monitoring of a security system on demand”, the basic
character of the claimed subject matter is that of satisfying certain conditions
in exchange for payment to a third party provider.
According to claim 14, upon establishing a date and duration for third
party monitoring of a security system and establishing financial credit to
address costs of the monitoring, arranging to have the security system
monitored in accordance with the date and duration. The advance over the
prior art is that “[f]or those people who are reluctant to pay a regular
monthly fee for security monitoring, it would be advantageous to be able to
order ‘monitoring-on-demand’.” Spec. 4; Id. 13 (“Unmonitored and self-
monitored systems do not require paying a monthly monitoring fee to a
displaced monitoring station, or, other third party monitoring service, and
are increasingly popular. The disadvantage however is that an event may be
missed.”). As such, the focus of the claim is on a process that qualifies as an
abstract idea for which computers are invoked merely as a tool. Unlike
Enflsh, the plain focus of the claim here is not on a specific asserted
3 See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375
(Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even
when performed by a computer, was precisely the holding of the Supreme
Court in Gottschalk v. Benson ”). “[A] method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101.”
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Application 13/661,074
improvement in computer capabilities, but rather, “on economic or other
tasks for which a computer is used in its ordinary capacity.” Enflsh, 822
F.3d at 1336; see Spec. 1 5 (“One way of providing monitoring-on-demand
would be to build a central station business model where the account is only
charged for an ‘arm-away’ event.”).
Step two is “a search for an ‘inventive concept’ — i.e., 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, 134 S.Ct. at 2355 (citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 72—73 (2012)).
Turning to step two of Alice, Appellant argues that “even if the Office
determines that each of claims 10-15 is directed towards an abstract idea (a
point that appellant does not concede), the claims contain an inventive
concept that transforms the claimed system and method into patent eligible
subject matter.” App. Br. 6. In support of this argument, Appellant merely
asserts that the claim “limitations, alone or in combination are more than a
generic system comprising commonly used elements performing common
tasks,” reproducing the limitations of each independent claim. See id. at 6—
7; Reply Br. 4 (“the claimed method is inventive and improves known
methods by evaluating which one of a plurality of monitoring stations should
be selected to monitor a security system and arranging to have the security
system monitored by the selected monitoring station.”). We are not
persuaded that this represents an improvement to any technology as opposed
to an improvement to a general business practice, as disclosed by the
Specification supra.
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Application 13/661,074
Looking at the claim steps separately, the function performed by the
processor at each step of the process is purely conventional. Using a
computer to obtain and analyze data are the most basic functions of a
computer. Programming conventional software or hardware to apply rules
and data is a routine and conventional practice. Moreover, there is no
indication in the record that any specialized computer hardware or other
“inventive” computer components are required. In fact, claim 14 merely
requires “one or more processors” in the first step of the claimed process,
with none of the remaining steps requiring or being tied to any computer.
Considered as an ordered combination, the processor component of
Appellant’s method adds nothing that is not already present when the steps
are considered separately. See Alice, 134 S. Ct. at 2359 (noting, in carrying
out the second step, that the relevant question is whether the claims here do
more than simply instruct the practitioner to implement the abstract idea on a
generic computer).
We also find no parallel here between claim 14 and the claims in
Diamond v. Diehr, 450 U.S. 175 (1981). See App. Br. 7—8 (“‘evaluating’
and ‘arranging’ steps transform the claimed method into an inventive
application of on demand monitoring.”). Appellant’s reliance on Diehr is
misplaced because the claims in Diehr were directed to a process for curing
synthetic rubber, and recited a series of steps (e.g., the loading of a mold
with raw, uncured rubber, closing the mold, constantly determining the mold
temperature, constantly recalculating the cure time, and automatically
opening the press at the proper time) that together provided a significant and
novel practical application of the abstract idea (i.e., the well-known
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Arrhenius equation) and transformed uncured synthetic rubber into a new
state or thing. See Diehr, 450 U.S. at 184—87.
Unlike the process claimed in Diehr, which was directed to a specific
industrial process, i.e., “a physical and chemical process for molding
precision synthetic rubber products,” id. at 184, the claims here merely recite
a computer-implemented system and method for identifying a data and
duration for third party monitoring of a security system, establishing a
financial credit account to cover the cost of the required monitoring,
evaluating which monitoring station should be selected to monitor the
security system, arranging to have the security system monitored for the
required data and time, and terminating the monitoring in accordance with
the date and duration. Contrary to Appellant’s assertions, we find the
computer implementation of claim 14 is neither sufficiently tied to a
particular machine or apparatus, nor involved in any type of transformation
of any particular article.4
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of claim 14, and claims 10-13 and 15, which fall with
claim 14.
4 See Accenture Global Servs., GmbHv. Guidewire Software, Inc., 728 F.3d
1336, 1344-45 (Fed. Cir. 2013) (claims reciting “generalized software
components arranged to implement an abstract concept [of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer” not patent eligible);
and Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir.
2012) (“[s]imply adding a ‘computer aided’ limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible” (internal citation omitted)).
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Application 13/661,074
DECISION
The decision of the Examiner to reject claims 10—15 is affirmed.
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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