Ex Parte Barron et al

Patent Trial and Appeal Board

Dec 10, 2018

13270848 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/270,848 10/11/2011
27137 7590 12/12/2018
DIEDERIKS & WHITELAW, PLC
13885 HEDGEWOOD DR., SUITE 317
WOODBRIDGE, VA 22193
FIRST NAMED INVENTOR
Mark B. Barron
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PTS008CIP 8204
EXAMINER
SHUI,MING
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
MAIL@DWPATENTLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK B. BARRON and MICHAEL HAYS
Appeal2017-003549
Application 13/270,848 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, BART A. GERSTENBLITH, and
BRUCE T. WIEDER, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 11-27 and 29--41. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
BACKGROUND
Appellants' invention is directed to a system and method for remote
acquisition and delivery of goods. Spec. ,r 2.
1 Appellants identify Consumeron, LLC as the real party in interest. Brief 6.
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Claim 11 is illustrative:
11. A method for remote acquisition and delivery of
goods comprising:
locating a plurality of agents of a service provider at
various geographic locations, each agent having a mobile agent
system in communication with at least one remote server,
wherein each mobile agent system includes: a digital image
capture device and a communication device;
receiving a first acquisition request from a first customer
for a first set of one or more goods, including receiving product
data from the first customer regarding at least one of the one or
more goods, with the product data is in the form of one or more
of images, video, bar codes, QR codes, image recognition and
near field communication data;
contacting one of the plurality of agents for a location
having the first set of one or more goods;
electronically transmitting, in real-time, information on
the first set of one or more goods to the first customer using the
digital image capture device of the agent;
acquiring the first set of one or more goods via the agent;
and
providing for delivery of the first set of one or more
goods to a delivery site selected by the first customer.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Miller US 7,574,365 B2 Aug. 11, 2009
Winter US 2006/0111955 Al May 25, 2006
Hayes US 2006/0173772 Al Aug.3,2006
Kohl US 2007 /0203791 Al Aug.30,2007
Bell US 2008/0086386 Al Apr. 10, 2008
Stefanik US 2008/0281684 Al Nov. 13, 2008
Morse US 2009/0089211 Al Apr. 2, 2009
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Appellants appeal the following rejections:
Claims 11--40 are rejected under 35 U.S.C. § 101.
Claims 15 and 19 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Claims 11, 12, 15, 18, and 41 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor regards as the
invention. 2
Claims 11-15, 18-20, 22-24, 27, 29-39, and 41 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Winter in view of Stefanik and
in further view of Bell.
Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Winter, in view of Stefanik and in further view of Bell
and Hayes.
Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Winter in view of Stefanik and in further view of Bell and Miller.
Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Winter in view of Stefanik and in further view of Bell and
Kohl.
Claim 40 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Winter in view of Stefanik in further view of Bell and Morse.
PRINCIPLES OF LAW
2 The Examiner has withdrawn the 112, second paragraph, rejection as it
applied to other claims. Ans. 3--4, 9-11.
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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 implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim 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. See id. at 2356 ("On
their face, the claims before us are drawn to the concept of intermediated
settlement, i.e., the use of a third party to mitigate settlement risk."); Bilski v.
Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners'
application explain the basic concept of hedging, or protecting against
risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--595 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
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The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. 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.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) ("[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under§ 101.").
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
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Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016).
Claims that recite an improvement to a particular computer
technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
(determining claims not abstract because they "focused on a specific
asserted improvement in computer animation").
ANALYSIS
Rejection under 35 USC §101
The Examiner determines that the claims are directed to the remote
acquisition and delivery of one or more goods and are considered to be a
means for organizing human behavior. Final Act. 2. The Examiner also
determines that the current claim set is directed towards data gathering in
order to organize specific tasks to ensure the acquisition and delivery of
goods. We agree. In addition, the claims are directed to the collection,
analysis, and storage of data, which is also an abstract idea.
The Examiner finds that the recited components of the claims are
performing their most basic functions and are merely streaming data back
and forth between servers and computer interfaces. As such, the Examiner
finds that the additional elements do not amount to an improvement to the
functioning of a computer and do not move beyond a general link of the use
of the abstract idea to a particular technological environment. In addition,
the Examiner finds that the claims amount to nothing more than requiring a
generic computer to perform generic computer functions that are well-
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understood, routine and conventional activities previously known to the
industry. Id. at 4.
Appellants argue that the claims recite an improvement upon a typical
purchasing method, use particular machinery and include numerous specific
limitations beyond what would be routine or conventional for a purchasing
method. Appellants do not explain, however, what the improvement is or
which of the limitations of the claim are beyond what would be routine and
conventional. In regard to the recitation of particular machinery such as
digital image capture device and a communication device, we agree with the
Examiner's finding that these elements perform their most basic functions
and the functions performed are well-understood, routine and conventional.
This finding is supported by the disclosure in the Specification at
paragraph 7 that the digital image capture device is a digital camera in a cell
phone which is a well-understood, routine and conventional device for
capturing images.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that there is no evidence in the record that the claims
cover only an abstract idea. Brief 12. The Examiner recognizes that the
claims cover more than an abstract idea. The Examiner considers the other
elements that are in addition to the abstract idea in determination of whether
the claims include significantly more than the abstract idea.
Appellants' argmnent concerning the absence of evidence supporting
the detennination that the claims are directed to an abstract idea also does
not persuade us of Examiner e1Tor. Patent eligibility under § 101 presents an
issue of law. Accenture Glob. Servs., GmbH v. Guidewire Software, Inc.,
728 F.3d 1336, 1340 (Fed. Cir. 2013). There is no requirement that an
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examiner cite evidentiary support to conclude that a clairn is directed to a
patent-ineligible concept, such as an abstract idea. The courts consider the
detennination of whether a claim is eligible ( which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. See Rapid Litig. Mgmt. v. CellzDirect, 827 F .3d 1042, 104 7
(Fed. Cir. 2016). Thus, courts do not require "evidence" that a claimed
concept is a judicial exception, and generally decide the legal conclusion of
eligibility without resolving any factual issues. FairWarning IP, LLC v.
Iatric Sys., 839 F.3d 1089, 1097 (Fed. Cir. 2016) (citing Genetic Techs. Ltd.
v. Merial LLC, 818 F.3d 1369, 1373 (Fed. Cir. 2016)).
\Ve are also not persuaded of error on the part of the Examiner by
Appellants' argument that the specified uses of devices claimed do not tie up
people sending images over the internet or shopping for goods for that
matter. Brief 13. While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not dernonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362---63 (Fed. Cir. 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."). And,"[ w]here a
patent's claims are deemed only to disclose patent ineligible subject niatter
under the 1"11ayo framework, as they are in this case, preemption concerns are
fully addressed and made moot." Ariosa, 788 F.3d at 1379.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the invention is not directed to a fundamental
economic practice, an idea or even a mathematical relationship/formula.
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Even if Appellants are correct, the claims are clearly directed to the
collection, analysis, and storage of data and, therefore, are directed to an
abstract idea on that basis.
We are likewise not persuaded of error on the part of the Examiner by
Appellants' argument that claim 11 is not directed to an abstract idea
because it requires structural elements such as the digital capture device.
These structural elements are considered by the Examiner in the second step
of the analysis and we agree with the Examiner that these elements amount
to generic devices performing generic functions and as such do not amount
to significantly more than the abstract idea.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 11. We will sustain the rejection as it is directed to the remaining
claims because Appellants do not address the eligibility of these claims or
make similar arguments to those made in support of the eligibility of claim
1 1.
Rejection of claims 15 and 19 under 35 US. C. § 112, first paragraph
The Examiner determines that the disclosure does not adequately
describe "calculating which of the plurality of agents could most efficiently
carry out the first acquisition request," as recited in claim 15. Final Act. 11.
Specifically, the Examiner determines that the disclosure does not reveal the
manner in which the calculation----of which of the plurality of agents could
most efficiently carry out the first acquisition-is completed because there is
no meaningful structure/algorithm as to how this value is generated. Id. at
12.
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In regard to claim 19, the Examiner determines that there is no
disclosure of how calculating a price estimate based on the first acquisition
request is done because there is no disclosure of any meaningful
structure/algorithm. Id.
The issue of determining whether the disclosure satisfies 35 U.S.C.
§ 112, first paragraph is whether the Specification describes the claimed
invention in sufficient detail that a person skilled in the art could reasonably
conclude that Appellants had possession of the claimed subject rnatter as of
the filing date, see Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63
(Fed. Cir. 1991), i.e., that Appellants possessed the invention, including how
to perform the calculations recited in claims 15 and 19.
Claim 15 recites "calculating which of the plurality of agents could
most efficiently carry out the first acquisition request using the at least one
remote server." Claim 19 recites "calculating a price estimate based on the
first acquisition request."
The Federal Circuit has held that the written description requirement
may be satisfied when the particular steps, i.e., an algorithm, necessary to
perfonn the claimed function, are described in the Specification. See, e.g.,
Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-83 (Fed.
Cir. 2015). Appellants have not directed our attention to a disclosure in the
Specification of an algorithm ( whether in the form of a mathematical
fonnu1a, in prose, as a flow chart, or in any other rnanner) for perfon11ing the
claimed calculations. .Appellants have not directed our attention to a
disclosure in the Specification that describes the claimed invention in
sufficient detail that a person skilled in the art could reasonably conclude
that Appellants possessed the invention.
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Therefore, we sustain the Examiner's rejection of claims 15 and 19
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Rejections q{clairns 11. 12. 15, 18, 19, 21, and 41 under 35 U.S.C § 112,
second paragraph
The Examiner concludes that claims 11, 12, 21, and 41 are hybrid
claims. Ans. 8----9. The preamble of claim l recites a method and steps to
perform the method, however, the body of the claim recites a mobile agent
system, which includes a digital image capture device and a communication
device.
Claim 11 is similar to a claim found definite in Microprocessor
Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir.
2008). The claim structure was as follows:
A method of executing instn1ctions in a pipelined processor
compnsmg:
[structural limitations of the pipelined processor];
the method further comprising:
[ method steps implemented in the pipelined processor].
Id. at 1374 (quoting U.S. Patent No. 5,471,593 col. 129, 1. 27-
coL 130, 1. 32 (fi1ed Jan. 21, 1994)). As explained in llTC
Co,poration v. JPCom GmbH & Co., 667 F.3d 1270, 1277----78, the
Microprocessor claim made clear that direct infringement was limited
to practicing the claimed method in the pipelined processor possessing
the required structure. Id. Vv e agree with Appellants that
infringement would on 1y occur when the method steps of claim 11 are
performed with the claimed structure.
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In view of the foregoing, we will not sustain this rejection of
indefiniteness based on claim 11 as being a hybrid claims. We also
will not sustain the rejection using this rationale of claims 12, 21, and
41 for the same reason.
The Examiner also rejects claim 15 as indefinite because an
ordinary artisan cannot determine how to avoid infringement of the
calculating step, i.e., there is no disclosure of any meaningful
structure/algorithm explaining how one would generate the efficiency
value. Final Act 15
A claim is invalid for indefiniteness H: when read in light of the
specification, it fails to infonn, with reasonable certainty, those skilled in the
art about the scope of the invention. Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120, 2124 (2014). When the USPTO has initially issued a
well-grounded rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant fails to
provide a satisfactory response, the USPTO can properly reject the claim as
failing to meet the statutory requirements of§ 112, second paragraph. See In
re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
\Ve agree with the Examiner that claim 15 fails to pmiicularly point
out and distinctly claim the subject matter of the invention because it is not
clear how the calculating step is perfmmed thus rende1ing the claim
indefinite.
\Ve are not persuaded of en-or on the part of the Examiner by
Appellants' argument that the steps are clear, especially when read in light
of the Specification. Brief l 0-12 ( citing Spec. ,r,r 3 8-41 ). Appellants do not
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explain with any particularity how the identified portions of the
Specification disclose how the individual steps are implemented by a
computer, particularly the detennining step. Appellants do not, therefore,
persuade us that the Examiner eITecl.
In view of the foregoing, we will sustain this rejection as it is
directed to claim 15. \Ve will also sustain this rejection as it is
directed to claim 19 for the same reason.
The Examiner rejects claim 18 because the recitation "receiving
instructions from the first customer using the communication device
to remotely inspect the first set of one or more goods utilizing the
digital capture device" is unclear as to how the customer uses a device
he does not have. Ans. 9----10.
\Ve will not sustain this rejection because we agree with
Appellants that when claim 18 is read along with claim 11, from
which it depends, it is clear that the recitation of "using the
communication device" refers to the step of receiving. .As such,
claim 18 is clear that the mobile agent has the communication device
and uses this device to receive the instn1ctions from the customer.
Rejection under 35 U.S.C. § 103(a)
We will not sustain this rejection. The Examiner finds that Winter
discloses the invention as claimed except for receiving product data from the
first customer in the form of images, vides, bar codes, QR codes, etc. and
also does not disclose electronically transmitting real-time information to the
customer using digital image capture device of the agent Final. Act. 9----10.
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\Ve find that \Vinter discloses a customer appointment coordination
system and method and more particularly coordination of customer
appointment confirmation and management of mobile resources to the
customer appointment. \Vinter ~· 2. In the Winter system a work order is
determined by the system by identifying a piece of equipment or material or
supply that is required to provide the product or service to the customer. Id.
, 33. The system then generates a requisition to an inventory entity or
supplier to provide the equipment or material or supply to the agent prior to
their traveling to the customer location. Id. , 35. The system also selects
the agent to deliver the service or product to the customer from a plurality of
agents based on the agent status, customer location and agent location and
notifies the customer of the pending arrival of the agent to the customer's
location. Id., 36.
We agree with Appellants that there would have been no reason to
modify the system disclosed in \Vinter with the teachings of Bell so that
real-time information on the set of goods is electronically transmitted to the
customer using a digital image capture device of an agent as taught by Bell.
The vVinters system itself identifies any equipment or material or supply that
is required to provide the product or service requested by the customer. The
Examiner has not established that there would have been a reason to include
the step of contacting the customer with digital infonnation about the goods
as the goods have already been identified by the system.
In view of the foregoing, we will not sustain this rejection as it is
directed to claim 11 and claims 12----15, 18----20, 22----24, 30----38, dependent
therefrom. vVe will not sustain this reiection as it is directed to claims 29,
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39, and 41 because each rejection of these claims relies on the combined
teachings of \Vinter and Bell as well.
'-"
\Ve will not sustain the remaining rejections under 35 U.S.C. § 103(a)
for the same reason.
DECISION
We affirm the Examiner's§ 101 rejection.
We affirm the Examiner's§ 112, first paragraph, rejection.
We affirm the Examiner's§ 112, second paragraph, rejection of
claims 15 and 19.
We do not affirm the Examiner's§ 112, second paragraph, rejection
of claims 11, 12, 18, 21, and 41.
We do not affirm the Examiner's§ 103(a) rejection.
TIME PERIOD
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)(l) (2009).
ORDER
AFFIRMED
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