Ex Parte Arnold et al

Patent Trial and Appeal Board

Mar 22, 2017

13411389 (P.T.A.B. Mar. 22, 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.
13/411,389 03/02/2012 William G. Arnold 06-0979-US-DIV 3566
63759 7590 03/24/2017
DTTKFW YFF
EXAMINER
YEE & ASSOCIATES, P.C. SHAAWAT, MUSSA A
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
03/24/2017 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
patentadmin @ boeing. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM G. ARNOLD,
BRIAN WARN, and
LEONARD JON QUADRACCI
Appeal 2015-007528
Application 13/411,3 891
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
William G. Arnold, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 21—38. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify The Boeing Company of Chicago, Illinois as the
real party in interest. App. Br. 2.
Appeal 2015-007528
Application 13/411,389
THE INVENTION
Claim 21, reproduced below, is illustrative of the subject matter on
appeal.
21. A method for identifying and interchanging interchangeable parts,
the method comprising:
identifying a set of attributes for each part in a set of parts,
wherein the set of attributes comprise a set of descriptions of a
set of physical properties of the set of parts;
assigning a rank to each part in the set of parts based on a
degree of correlation between the set of attributes for a part in
the set of parts and a set of identified attributes to form a set of
ranked parts;
identifying a set of interchangeable parts from the set of parts
using the set of ranked parts; and
altering a physical platform by replacing a specified part with at
least one of the set of interchangeable parts.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Spencer US 5,826,261 Oct. 20, 1998
Adegan US 2005/0125261 A1 June 9,2005
Roizen US 7,765,178 B1 July 27,2010
The following rejections are before us for review:
1. Claims 21—38 are rejected under 35U.S.C. §101 as being directed to
non-statutory subject matter.
2. Claims 21—24, 27, 28, 30-33 and 36-38 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Adegan and Roizen.
2
Appeal 2015-007528
Application 13/411,389
3. Claims 25, 26, 34 and 35 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Adegan, Roizen, and Spencer.
4. Claim 29 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Adegan and Roizen.
ISSUES
Did the Examiner err in rejecting claims 21—38 under 35 U.S.C. § 101
as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 21—24, 27, 28, 30—33 and
36—38 under 35 U.S.C. § 103(a) as being unpatentable over Adegan and
Roizen?
Did the Examiner err in rejecting claims 25, 26, 34 and 35 under 35
U.S.C. § 103(a) as being unpatentable over Adegan, Roizen, and Spencer?
Did the Examiner err in rejecting claim 29 under 35 U.S.C. § 103(a)
as being unpatentable over Adegan and Roizen?
ANALYSIS
The rejection of claims 21—38 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
The Appellants focus on claim 21. No other claim is argued. See
App. Br. 5—9 and Reply Br. 1—8. Accordingly, we treat the rejected claims
as a group and select claim 21, the claim the Appellants focus on, as the
representative claim for this group. The remaining claims 22—38 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
3
Appeal 2015-007528
Application 13/411,389
Alice Corp. Pty. 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 found
The claim(s) is/are directed to the abstract idea of identifying
interchangeable parts which falls under one or more of the following
examples of an abstract idea are (i) a fundamental economic practice
(e.g., hedging, insurance, financial transactions marketing, etc.), (ii) a
method of organizing human activities, (iii) an idea of itself, or (iv) a
mathematical relationship or formula (e.g. algorithms, spatial
relationships, geometry), (IV) basic legal theories (e.g. contracts,
dispute resolution, rules of law), (v) mental activity (e.g. forming a
judgment, observation, evaluation, or opinion), (vi) instructing "how
business should be conducted".
Final Act. 2—3. In the Answer, the Examiner elaborated:
In the instant case, claims 21 and 30 are directed to a method
and an apparatus.
The claims are analyzed to determine whether it is directed to a
judicial exception. The claims are directed to identifying a set of
attributes for each part in a set of parts ... ; assigning a rank to each
part in the set of parts based on a degree of correlation ... ; identifying
a set of interchangeable parts from the set of parts using the set of
ranked parts; and altering a physical platform by replacing a specified
part with at least one of the set of interchangeable parts, this idea is
similar to the basic concept of comparing new and stored information
and using rules to identify options, which has been found by the court
to be an abstract idea (see SmartGene, section IV.BA). Therefore the
claims are to an abstract idea.
Ans. 3 (emphasis original).
4
Appeal 2015-007528
Application 13/411,389
The Appellants disagree. According to the Appellants:
Step 2A [per USPTO’s patentability guidelines under 35 U.S.C. § 101
in view of the U.S. Supreme Court's decision in Alice v. CLS Bank
Corp.] is to determine whether the claim is directed to a law of nature,
a natural phenomenon, or an abstract idea. The result of this
determination is that claim 21 is not directed to any of these
problematic areas because the claim recites altering a physical
platform by replacing a specified part with at least one of the set of
interchangeable parts. Since the result of step 2A is "no", the claim
qualifies as eligible subject matter under 35 U.S.C. § 101.
App. Br. 7. The Appellants submit that:
The idea expressed in claim 21 is embodied in the preamble, "A
method for identifying and interchanging interchangeable parts, the
method comprising." This idea is backed up by the claim limitation of
actually interchanging physical parts. Thus, the idea expressed by
claim 21 is directed to a process, and accordingly is statutory under
step 1 of the required analysis. The error in the rejection is settled by
the first question in the required analysis for patentability. Thus, the
rejection should be reversed.
Reply Br. 4.
The Appellants’ arguments are unpersuasive.
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. Emphasis added.
The “directed to” inquiry [ ] cannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every routinely
patent-eligible claim involving physical products and actions involves
a law of nature and/or natural phenomenon—after all, they take place
in the physical world. See Mayo, 132 S. Ct. at 1293 (“For all
inventions at some level embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas.”) Rather, the
“directed to” inquiry applies a stage-one filter to claims, considered in
light of the specification, based on whether “their character as a whole
is directed to excluded subject matter.” Internet Patents Corp. v.
5
Appeal 2015-007528
Application 13/411,389
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see
Genetic Techs. Ltd. v. Merial L.L.C., 2016 WL 1393573, at *5 (Fed.
Cir. 2016) (inquiring into “the focus of the claimed advance over the
prior art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “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 Texas 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).
According to the Specification, “when a user enters a relational
database query to identify interchangeable parts in a set of parts catalogs, the
relational database may be unable to accurately identify all duplicate and/or
substitute parts for the specified part.” Para. 8. “To avoid this problem, a
human user can manually read through each parts catalog line by line to
identify duplicate and substitute parts. However, parts catalogs can be of
significant size. Therefore, this process can be time consuming,
burdensome, and cost prohibitive.” Para. 9. Accordingly, “it would be
advantageous to have an improved computer implemented method,
apparatus, and computer usable program code identifying interchangeable
parts in catalogs.” Para. 9. “Advantageous embodiments of the present
invention provide a computer implemented method for identifying
interchangeable parts in parts catalogs.” Para. 10. The Specification is
entirely devoted to describing embodiments to “provide a computer
implemented method, apparatus, and computer usable program code for
identifying interchangeable parts in parts catalogs.” Para. 46. For example,
6
Appeal 2015-007528
Application 13/411,389
In one illustrative embodiment, a set of catalogs is searched for first
attributes for a set of parts using an intelligent agent. The intelligent
agent compares the first attributes for the set of parts to a set of second
attributes for a selected part. A weight is assigned to each of the first
attributes based on whether each of the first attributes is correlated to
an attribute in the set of second attributes. Each part in the set of parts
is ranked using the weight assigned to each attribute in the first
attributes. A set of interchangeable parts is identified using the
ranking for each part in the set of parts.
Para. 46.
Accordingly, in light of the Specification, the “’focus of the claimed
advance over the prior art’” is not reflected in “the claim limitation of
actually interchanging physical parts” (Reply Br. 4; see also App. Br. 7) as
the Appellants argue. Rather, considered in light of the Specification, the
“focus of the claimed advance over the prior art” is on a more efficient
approach for identifying interchangeable parts - as reflected in the scheme
described by the first three steps (“identifying,” “assigning,” “identifying”)
of claim 21. Claim 2 l’s “character as a whole” is directed to a more
efficient approach for identifying interchangeable parts.
We agree with the Examiner that the more efficient approach for
identifying interchangeable parts that the claims are directed to is excluded
subject matter. The Examiner was correct is explaining that, more
specifically, “the claims are directed to identifying a set of attributes for each
part in a set of parts ... ; assigning a rank to each part in the set of parts based
on a degree of correlation ... ; identifying a set of interchangeable parts from
the set of parts using the set of ranked parts” (Ans. 3). It is important to
emphasize that the first three steps of claim 21 are not attached to any
device. They are reasonably broadly construed as covering mental steps. In
7
Appeal 2015-007528
Application 13/411,389
that regard, “mental processes are not patent-eligible subject matter because
the ‘application of [only] human intelligence to the solution of practical
problems is no more than a claim to a fundamental principle.’” CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011).
Nevertheless, as the Examiner points out, the claimed scheme is similar in
character to the ranking of available therapeutic treatment regimens to guide
the selection of a therapeutic treatment regimen covered by the claims at
issue in SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x
950 (Fed. Cir.), cert, denied, 135 S. Ct. 58, 190 L. Ed. 2d 32 (2014). There
the court found “the mental steps of comparing new and stored information
and using rules to identify medical options” to be an abstract idea. The same
is true for the approach for identifying interchangeable parts that the claims
here at issue are directed to.
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 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)).
The Appellants argue that “the claim feature of ‘altering a physical
platform by replacing a specified part with at least one of the set of
interchangeable parts’” amounts to significantly more than the abstract idea
itself. App. Br. 9. “[C]laim 21 amounts to ‘significantly more’ than simply
identifying attributes, assigning a rank, and identifying a set of
interchangeable parts because claim 21 adds meaningful limits on the results
8
Appeal 2015-007528
Application 13/411,389
of these abstract steps; namely, the alteration of a physical platform using
parts identified by the other features of claim 21.” Reply Br. 8.
The record belies the Appellants’ view.
The claim limitation “altering a physical platform by replacing a
specified part with at least one of the set of interchangeable parts” is not
attached to any device. Thus, it reasonably broadly covers a manual step of
replacing one item with another. The Specification does not suggest
otherwise. There is scant discussion about “the field of actual
manufacturing or rework of existing devices” (Reply Br. 5) and nevertheless
the claim is not limited to it. The only disclosure mentioning “altering” is in
the passage at para. 95:
If SME/engineer review 416 decides to alter a platform by
replacing a specified part with an alternate or substitute part
number for a specified part in the platform, revised parts
catalog input 404 may be entered to update parts catalog data
406 with data regarding the replacement part.
Furthermore, given the Specification’s near-complete focus on
describing a more efficient approach for identifying interchangeable parts,
said claim step of alternating a physical platform is fairly characterized as an
insignificant post-solution activity whereby parts identified via the first three
(mental) steps of claim 21 are used to (manually) replace a specified part.
Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244 (Fed. Cir. 2016) (“the
Board found such recitation of general manual modification to be
insignificant post-solution activity.”) A claim limitation to an insignificant
post-solution activity, as in manually replacing a specified part after a
replacement has been identified, does not serve to provide an inventive
concept. Id.
9
Appeal 2015-007528
Application 13/411,389
We note the Appellants’ discussion comparing the claimed method
with the process for curing synthetic rubber found patent eligible in
Diamond v. Diehr, 450 US 175 (1981). Reply Br. 6—8. But the two are not
comparable. In Diehr, the claimed process involved “installing rubber in a
press, closing the mold, constantly determining the temperature of the mold,
constantly recalculating the appropriate cure time through the use of the
formula and a digital computer, and automatically opening the press at the
proper time. ... the computer use incorporated in the process patent
significantly lessens the possibility of ‘overcuring’ or ‘undercuring’”. Diehr
at 187. Claim 21 at issue does nothing more than present a scheme for
identifying a part for replacing a specified part. Unlike the claimed process
in Diehr, the solution here to the problem of identifying interchangeable
parts is not rooted in technology but in the scheme defined by the first three
(mental) steps that are claimed. Cf. DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014) (“[TJhese claims stand apart because
they do not merely recite the performance of some business practice known
from the pre-Internet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.”).
We note the Appellants mean to show that the claimed process
accomplishes a transformation as in Diehr. (Reply Br. 7: “Like the rubber
manufacturing example, claim 21 is eligible at step 1 because the claim
recites a series of acts that effectuates an actual physical process.”) But the
Specification discloses that “[a]n interchangeable part is an identical part to
10
Appeal 2015-007528
Application 13/411,389
a specified part that has a different part number than the specified part”
(para. 4). Replacing a part in a platform with an identical part does not
transform the platform, notwithstanding it is “altered.”
We also note that “Applicant is not attempting to pre-empt the field of
comparing parts in an abstract sense, but is presenting a process of how to
more efficiently replace parts.” Reply Br. 5. But pre-emption is not a
separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time,
from practicing the claimed invention. See 35 U.S.C. § 154.
Rather, the animating concern is that claims should not be
coextensive with a natural law, natural phenomenon, or abstract
idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add “significantly more” to the basic principle, with the result
that the claim covers significantly less. See Mayo 132 S. Ct. at
1294. Thus, broad claims do not necessarily raise § 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
CLS Bank Inti. v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring). See also Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“[wjhile preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.”). Here, the Appellants
do not persuasively show that any claim limitation supports viewing said
focus and determination as not directed to an abstract idea but rather rooted
in technology. Instead, the Appellants make a case for “presenting a process
of how to more efficiently replace parts”. Reply Br. 5. But that supports the
Examiner’s position. It does little to ensure that the claimed subject matter
11
Appeal 2015-007528
Application 13/411,389
as a whole amounts to significantly more than the abstract idea itself. While
a more efficient approach may prevent pre-emption of all possible ways of
replacing parts, it does not make the claimed subject matter any less directed
to an abstract idea. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362-1363 (Fed. Cir.) {cert, denied, 136 S. Ct. 701, 193 L. Ed. 2d 522
(2015)) (“[T]hat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, [jpreemption concerns
are fully addressed and made moot.” Ariosa Diagnostics, 788 F.3d at 1379.
Finally, the Appellants state that “[t]he fact that the abstract
limitations of claim 21 make claim 21 patentable under 35 U.S.C. § 102 and
35 U.S.C. § 103(a) does not detract from the fact that claim 21 is patentable
under 35 U.S.C. § 101 due to what would otherwise be unpatentable steps
under 35 U.S.C. § 101 if taken alone.” Reply Br. 7.
Indeed, “[t]he ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v.
Diehr, 450 U.S. 175, 188—89 (1981) (emphasis added); see also
Mayo, 132 S. Ct. at 1303—04 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the
better established inquiry under § 101”). Here, the jury’s
general finding that Symantec did not prove by clear and
convincing evidence that three particular prior art references do
not disclose all the limitations of or render obvious the asserted
12
Appeal 2015-007528
Application 13/411,389
claims does not resolve the question of whether the claims
embody an inventive concept at the second step of Mayo/Alice.
Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016).
The remaining arguments are unpersuasive as to error in the rejection.
For the foregoing reasons, the rejection is sustained.
The rejection of claims 21—24, 27, 28, 30—33 and 36—38 under 35 U.S.C.
§ 103(a) as being unpatentable over Adegan and Roizen.
The rejection of claims 25, 26, 34 and 35 under 35 U.S.C. § 103(a) as being
unpatentable over Adegan, Roizen, and Spencer.
The rejection of claim 29 under 35 U.S.C. § 103(a) as being unpatentable
over Adegan and Roizen.
Both independent claims (claims 21 and 30) call for “identifying a set
of attributes for each part in a set of parts.” The Examiner found said claim
limitation in Adegan at paras. 0045-0047, 0092, 0142, and claim 1. Final
Act. 4. We have reviewed said disclosures but agree with the Appellants
(App. Br. 12) that the evidence does not support it.
As the Appellants argue, “Adegan discloses cross referencing the
same parts of different ID numbers, or perhaps by comparing different parts
to the vehicle identification number of a vehicle from which a used part
came. These numbers are not an ‘attribute’ for a part, but rather are mere
identifiers.” App. Br. 12. The Specification defines “attributes” thusly:
Attributes are discriminators used to compare part number
descriptions for parts with different part numbers. Attributes
include part-specific words, symbols, values, abbreviations, and
attribute patterns.
Para. 71.
13
Appeal 2015-007528
Application 13/411,389
For example, if the specified part number description contains
an attribute 2.5 inches for a fastener, prior art queries would
only recognize free text descriptions that contained “2.5
inches”.
Para. 72. Accordingly, the broadest reasonable construction of the claim
terms “attributes” in light of the Specification as one of ordinary skill in the
art would interpret it “are discriminators used to compare part number
descriptions for parts with different part numbers.” In that regard, we do not
see “attributes,” as that claim term is reasonably broadly construed,
disclosed in the cited Adegan disclosures. They disclose, for example,
“cross referencing the type of the used part with a used part identifier” and
“identifying actual used parts corresponding to the new part by searching a
used parts database based on the used parts identifier” (para. 142). But that
is insufficient to find that Adegan discloses or would lead one to “identify[ ]
a set of attributes for each part in a set of parts” as the claim term
“attributes” is reasonably broadly construed.
For the foregoing reasons, a prima facie case of obviousness has not
been made out in the first instance by a preponderance of the evidence for
the subject matter of claims 21 and 30. We reach the same conclusion for the
subject matter of the claims depending from claims 21 and 30.
The rejections are not sustained.
CONCLUSIONS
The rejection of claims 21—38 under 35 U.S.C. §101 as being directed
to non-statutory subject matter is affirmed.
The rejection of claims 21—24, 27, 28, 30-33 and 36—38 under 35
U.S.C. § 103(a) as being unpatentable over Adegan and Roizen is reversed.
14
Appeal 2015-007528
Application 13/411,389
The rejection of claims 25, 26, 34 and 35 under 35 U.S.C. § 103(a) as
being unpatentable over Adegan, Roizen, and Spencer is reversed.
The rejection of claim 29 under 35 U.S.C. § 103(a) as being
unpatentable over Adegan and Roizen is reversed.
DECISION
The decision of the Examiner to reject claims 21—38 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)(l)(iv).
AFFIRMED
15