Ex Parte Budnik et al

Patent Trial and Appeal Board

Oct 19, 2016

11809660 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111809,660 05/31/2007
52237 7590
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
10/20/2016
FIRST NAMED INVENTOR
Daniel J. Budnik
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.
PA-085.11687-US (05-708) 1341
EXAMINER
DANNEMAN, PAUL
ART UNIT PAPER NUMBER
3627
MAILDATE DELIVERY MODE
10/20/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL J. BUDNIK and SHIH-LIEN LEON CHU
Appeal2014-005879
Application 11/809,660
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-11 and 13-20. We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF THE DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.
1 Our decision references Appellants' Appeal Brief ("Br.," filed Jan. 27,
2014), the Examiner's Answer ("Ans.," mailed Mar. 11, 2014), and the Final
Office Action ("Final Act.," mailed July 29, 2013).
2 Appellants identify the real party in interest as "United Technologies
Corporation" (Br. 1 ).
Appeal2014-005879
Application 11/809,660
CLAIMED INVENTION
The claimed invention relates to "configuration valid bills of material
planning and auditing" (Spec. i-f 1 ). Claims 1 and 9 are the independent
claims on appeal. Claim 1, reproduced below, is illustrative of the subject
matter on appeal (Br. 15, Claims App.).
1. A computer-implemented process for planning a
configuration valid bill of materials for a product, comprising:
inputting at least one MOD from a MOD list into a
planning module in a computer to generate a part genealogy of a
product;
using said computer to identify a senior MOD of said
MOD list based upon a progression level value and a ranking
value for at least one location identifier;
determining a shortest path in said part genealogy from at
least one base-part of said product to said senior MOD for said
at least one location identifier using said computer;
identifying a complete progression from each of said at
least one base parts to each corresponding said at least one senior
MODs for each of said at least one location identifiers using said
computer;
generating a configuration valid bill of materials for said
product using said computer; and
conveying said configuration valid bill of materials.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Hawman
Knight
US 2003/0040826 Al
US 2009/0070296 Al
2
Feb.27,2003
Mar. 12, 2009
Appeal2014-005879
Application 11/809,660
Claims 1-11 and 13-20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Knight and Hawman. 3
ANALYSIS
Independent claim 1 requires, inter alia, "using said computer to
identify a senior MOD of said MOD list based upon a progression level
value and a ranking value for at least one location identifier" (Br. 15, Claims
App.).
The Examiner finds the claimed "progression level" in the
hierarchical arrangement of elements of a product disclosed in, inter alia,
paragraphs 64, 66, 100, 101, and 105 of Knight (Final Act. 2-8). According
to the Examiner, "Appellant's published Specification in paragraphs [0048
and 0052] defines 'progression level' as the level of indenture for each part
number and service bulletin combination with the location identifier (LD)
genealogy tree." (Ans. 5).
Appellants dispute this finding (Br. 6-10). We are persuaded by
Appellants' arguments.
With respect to the "progression level" of claim 1, we agree with the
Examiner's interpretation in light of paragraph 52 of the Specification.
What is missing from the rejection is any explanation for how the limitation,
as construed by the Examiner, is found in Knight. Specifically, the
Examiner has not made any finding for a "level of indenture," nor has the
3 Although the Examiner ostensibly relies on Hawman in the heading of the
rejection, the Examiner only actually makes findings in Hawman with
respect to claims 8, 10, 11, 13, and 16-20 (see Final Act.).
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Appeal2014-005879
Application 11/809,660
Examiner made any finding for "part number and service bulletin
combination with the location identifier (LID)."
A rejection based on § 103 clearly must rest on a factual basis. The
Examiner has the initial duty of supplying the factual basis for the rejection
and may not resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in its factual basis. We have reviewed
the cited portions of Knight, and we see no disclosure of "level of
indenture," or "part number and service bulletin combination with the
location identifier (LID)." Thus, we fail to see and the Examiner does not
adequately explain how Knight discloses a "progression level" as required
by claim 1.
Accordingly, we do not sustain the rejection of independent claim 1 as
obvious over Knight and Hawman. Independent claim 9 similarly requires
"a progression level" and the Examiner's findings regarding this limitation
are also deficient as in claim 1. For the same reasons, we do not sustain the
rejection of dependent claims 2-8, 10, 11, and 13-20. Cf In re Fritch, 972
F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the
independent claims from which they depend are nonobvious").
NEW GROUND OF REJECTION
Claims 1-11 and 13-20 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank Intern., 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
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Appeal2014-005879
Application 11/809,660
directed to a patent-ineligible concept," such as an abstract idea. Alice, 134
S. Ct. at 2355.
Taking independent claims 1 and 9 as representative of the claims on
appeal, the claimed subject matter is directed to configuration planning and
configuration auditing.
Appellants' Specification indicates that configuration planning (claim
1) and configuration auditing (claim 9) are conventionally done manually
but consume a significant amount of time and require multiple audits to
ensure accuracy (see Spec. i-fi-1 4--8). Therefore, the claims are directed to a
computer-implemented process for automating a task that was
conventionally performed manually. As such, the claims are directed to an
abstract idea. Specifically, claim 1 is directed to the abstract idea of
configuration planning, and claim 9 is directed to the abstract idea of
configuration auditing.
Step two of the Alice framework 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 (quoting
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289).
In that regard, we see nothing in the subject matter claimed that
transforms the abstract idea of configuration planning or configuration
auditing into an inventive concept.
Claim 1 describes a "computer-implemented process" for planning a
configuration. The configuration planning of claim 1 inputs conventional
MOD data into "a planning module," identifies a senior MOD, determines a
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Appeal2014-005879
Application 11/809,660
shortest path to the senior MOD, identifies a complete progression for each
location identifier, generates a configuration, and conveys the configuration.
Claim 9 describes a "computer-implemented process" for auditing a
bill of material. The auditing process of claim 9 includes dispositioning a
part, inputting a configuration into "an auditing module," determining a
status of each part, inputting a scheduled modification, generating variables,
and conveying an audited MOD list.
Each of these steps characterize known variables in manually
planning and auditing a configuration tied to a generic "computer." The
abstract idea of configuration planning or auditing is not meaningfully
transformed by automating it using a computer and taking into account
known variables using generic computer components. Accordingly, the
recited claim limitations, both individually and as an ordered combination,
fail to transform the nature of the claims into a patent-eligible application.
DECISION
The Examiner's rejection under 35 U.S.C. § 103(a) is reversed.
Claims 1-11 and 13-20 are newly rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
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Appeal2014-005879
Application 11/809,660
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED; 37 C.F.R. § 41.50(b)
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