Ex Parte Brannon et al

Patent Trial and Appeal Board

Nov 13, 2018

13896813 (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/896,813 05/17/2013 Harold Brannon
44639 7590 11/15/2018
CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC
20 Church Street
22nd Floor
Hartford, CT 06103
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.
ENG4-54223-US
(PPS0014US)
CONFIRMATION NO.
1089
EXAMINER
ADE, OGER GARCIA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
11/15/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAROLD BRANNON, BLAKE C. BURNETTE,
RONNIE D. HUGHES, BRENT NAIZER, and TED REED
Appeal2017-006294
Application 13/896,813
Technology Center 3600
Before LARRY J. HUME, JOYCE CRAIG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a rejection
of claims 1, 3-15, and 17-19, i.e., all pending claims. Because the claims
have been twice rejected, we have jurisdiction under 35 U.S.C. §§ 6(b) and
134(a). See ExparteLemoine, 46 USPQ2d 1420, 1423 (BPAI 1994)
(precedential).
We reverse.
1 Appellants identify the real party in interest as Baker Hughes Incorporated.
App. Br. 2.
Appeal2017-006294
Application 13/896,813
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns a "process of
managing inventory and delivery logistics of one or more chemical additives
used at a well treatment site" and an "automated additive inventory and
delivery logistics control system." Spec. ,r,r 3--4, Abstract. 2
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A process of managing inventory and delivery logistics
of one or more chemical additives used at a well treatment site,
the process comprising:
placing one or more trailer-mounted ISO bulk containers
at the well treatment site to maintain inventory capacity for one
or more chemical additives on-site for a well treatment
procedure;
connecting at least one of the trailer-mounted ISO bulk
containers to a portion of a hydraulic fluid processing system;
monitoring chemical additive inventory within the one or
more bulk containers;
making a determination, based on monitored chemical
additive inventory, whether additional additive is needed in the
one or more bulk containers;
generating, based on the determination, initiation of an
order for delivery of additional additive;
2 This Decision uses the following abbreviations: "Spec." for the
Specification, filed May 17, 2013; "Non-Final Act." for the Non-Final
Office Action, mailed March 10, 2016; "App. Br." for the Appeal Brief,
filed August 9, 2016; "Ans." for the Examiner's Answer, mailed
January 12, 2017; and "Reply Br." for the Reply Brief, filed March 3, 2017.
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Application 13/896,813
delivering the additional additive in a delivery bulk
container to the well treatment site;
and transferring the additional additive from the delivery
bulk container to a respective one of the one or more trailer-
mounted ISO bulk containers.
App. Br. 23 (Claims App.).
The Rejection on Appeal
Claims 1, 3-15, and 17-19 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Non-Final Act. 3---6.
ANALYSIS
We have reviewed the§ 101 rejection in light of Appellants'
arguments that the Examiner erred. Based on the record before us and for
the reasons explained below, we concur with Appellants' contention that the
Examiner erred in concluding that the claims fail to satisfy § 101.
Introduction
The Patent Act defines patent-eligible subject matter broadly:
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme
Court explained that § 101 "contains an important implicit exception" for
laws of nature, natural phenomena, and abstract ideas. See Diamond v.
Diehr, 450 U.S. 175, 185 (1981 ). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
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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. If so,
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements" add enough to
transform the "nature of the claim" into "significantly more" than a patent-
ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016).
Step one in the Mayo/Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Step two involves
the search for an "inventive concept." Alice, 134 S. Ct. at 2355; Elec.
Power, 830 F.3d at 1353. An "inventive concept" requires more than "well-
understood, routine, conventional activity already engaged in" by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F .3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80). But "an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces." BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
The Examiner's Position
For Mayo/Alice step one, the Examiner determines that the claims are
directed to the abstract idea of "managing inventory and delivery logistics of
chemical additives." Non-Final Act. 3, 5; Ans. 2, 5. To support that
determination, the Examiner cites various court decisions "that, if not
directly relevant to the present claims, at least represent 'methods of
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Application 13/896,813
organizing human activity' that include similar concepts as the present
claims." Non-Final Act. 4--5; Ans. 3-5.
For Mayo/Alice step two, the Examiner determines that "the
generically-recited computer elements ... do not add a meaningful
limitation to the abstract idea because the actions, functions, and/or steps
performed by the generically-recited computer elements would be routine
and conventional in any computer implementations." Non-Final Act. 3, 6;
Ans. 2-3, 6. Based on "the generically-recited computer elements," the
Examiner concludes that the claims lack an "inventive concept" sufficient to
transform them into "significantly more" than a patent-ineligible abstract
idea. Non-Final Act. 6; Ans. 6, 8.
Appellants' Position
For Mayo/Alice step one, Appellants assert that the determination
whether the claims are directed to an abstract idea was not made based on
the claims "as a whole, and was instead, incorrectly, a determination of
whether Claim 1 might 'involve' a patent-ineligible concept by a limited
review of the preamble." App. Br. 7; see Reply Br. 2. Appellants discuss
and distinguish each case cited by the Examiner and then contend that "none
of the ... case law involves a set of claims resembling the claims on
appeal." App. Br. 8-11, 18; see Reply Br. 2-3. Among other things,
Appellants argue that the claims include limitations that a computer cannot
implement. App. Br. 8-11, 18.
For Mayo/Alice step two, Appellants assert that the following
limitations in claim 1 and similar limitations in independent claim 14
"amount to 'significantly more' than an abstract idea":
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Application 13/896,813
placing one or more trailer-mounted ISO bulk containers
at the well treatment site to maintain inventory capacity for one
or more chemical additives on-site for a well treatment
procedure;
connecting at least one of the trailer-mounted ISO bulk
containers to a portion of a hydraulic fluid processing system;
monitoring chemical additive inventory within the one or
more bulk containers;
making a determination, based on monitored chemical
additive inventory, whether additional additive is needed in the
one or more bulk containers;
and transferring the additional additive from the delivery
bulk container to a respective one of the one or more trailer-
mounted ISO bulk containers.
App. Br. 12-13, 19-20; see Reply Br. 2--4.
Appellants argue that the identified limitations "are not 'token or
trivial' limitations" and "are not conventional and not routine and thus
amount to more than well-understood, routine, conventional activity
previously engaged in by 'researchers' in the field." App. Br. 15, 21; see
Reply Br. 2--4. Appellants also argue that the claims do not "rely[] on the
mere recitation of a generic computer to transform a patent ineligible
abstract idea into a patent-eligible invention." App. Br. 16, 21; see Reply
Br. 2--4. Further, Appellants assert that the claims include "limitations [that]
cannot possibly be run on a computer, and therefore the statement that
generically-recited computer elements do not add meaningful limitation ...
is without merit." App. Br. 16, 21. Appellants "note[] that neither Claim 1
nor Claim 14 specifically recite[s] a 'computer' yet the Examiner has alleged
patent ineligibility due to the lack of improvements to a computer system."
Reply Br. 5.
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Discussion
Based on the record before us, we agree with Appellants that the
claims satisfy Mayo/Alice step two. The claims recite a particular
arrangement of elements that when considered as an ordered combination
include enough to provide a sufficient "inventive concept" for patent
eligibility. Here, the specificity of the technical solution and the particular
arrangement of elements required by the claims more closely resemble
claims considered patent eligible by the Federal Circuit compared to the
patent-ineligible claims in the decisions the Examiner cites. See, e.g., Aatrix
Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1123-24,
1126-28 (Fed. Cir. 2018); Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1299-1306 (Fed. Cir. 2016); BASCOM, 827 F.3d
at 1349-51.
For the reasons discussed above, Appellants' arguments have
persuaded us that the Examiner erred in rejecting claims 1, 3-15, and 17-19
under § 101. Hence, we do not sustain the § 101 rejection.
DECISION
We reverse the Examiner's decision to reject claims 1, 3-15, and
17-19.
REVERSED
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