Ex Parte Casey et al

Patent Trial and Appeal Board

Oct 29, 2018

13448268 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/448,268 04/16/2012
113123 7590
Harrity & Harrity, LLP
11350 Random hills road
Suite 600
Fairfax, VA 22030
10/31/2018
FIRST NAMED INVENTOR
Lynn Ann Casey
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.
0095-0142Cl 4875
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
docket@harrityllp.com
mpick@harrity llp .com
ptomail @harrity llp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LYNN ANN CASEY and MAURINE T. SHIELDS
Appeal2017-006434
Application 13/448,268 1
Technology Center 3600
Before JOHNNY A. KUMAR, JENNIFER S. BISK, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 59--80, which constitute all of the claims pending
in the application. Claims 1-58 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Accenture Global Services Limited as the real party in
interest. App. Br. 3.
Appeal2017-006434
Application 13/448,268
STATEMENT OF THE CASE
The Invention
The invention relates to national border enforcement, and particularly,
to an "integrated" border management solution utilizing a computer
architecture connecting the various administrative and law enforcement
entities responsible for border security. Spec. ,r,r 2-3. According to
Appellants, the invention assists coordination among these entities, and
facilitates the "interchange of information" in order to provide a more
"complete view of a particular situation for assessing border management
decisions." Id. ,r,r 5---6.
Claims 59, 65, and 73 are independent. Claim 59 is illustrative of the
invention and the subject matter of the appeal, and reads as follows:
59. A computer-implemented method for managing a
border via a management application architecture on a
computer, the method comprising:
collecting, by the computer, case data via a set of access
channels connected to a set of core applications for standard
border management functions in a shared applications
architecture,
the set of access channels including at least one
access channel that connects the computer to a plurality of
devices located in geographically dispersed locations via
a network,
a channel specific interface being provided between
each access channel, of the set of access channels, and the
set of core applications,
the set of core applications including a set of case
management applications, a process imports application,
and one or more investigation applications, and
the case data including a plurality of alert data;
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Application 13/448,268
storing, by the computer, the collected case data in an
integrated border management database which is stored in a
centralized location and accessible by the set of core applications
via the set of access channels,
the channel specific interface restricting access to
only authorized core applications, of the set of core
applications, and authorized collected case data,
the integrated border management database and the
set of access channels being included in a netcentric
technology architecture that provides scalability as a
border management environment evolves;
receiving, by the computer and from a device of the
plurality of devices located in geographically dispersed locations
via the netcentric technology architecture, identification
information regarding a passenger or goods arrived at the border;
determining, by the computer and in real-time, whether the
identification information matches at least a piece of alert data
stored in the integrated border management database; and
sending, by the computer and to the device of the plurality
of devices located in geographically dispersed locations, an alert
via at least one access channel, of the set of access channels
included in the netcentric technology architecture, based on a
determination by the computer that the identification information
matches at least a piece of alert data stored in the integrated
border management database.
App. Br. 21-22 (Claims App.) (emphases added).
The Rejection on Appeal
Claims 59-80 stand rejected under 35 U.S.C. § 101 as directed to
ineligible subject matter. Final Act. 2---6.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
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Application 13/448,268
37 C.F.R. § 4I.37(c)(l)(iv). On the record before us, we are not persuaded
the Examiner erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner's
Answer, and provide the following discussion for highlighting and emphasis.
Re} ection Under 3 5 US. C. § 101
Appellants argue the Examiner erred in rejecting the claims as
directed to ineligible subject matter, namely, the abstract idea of border
management (including the use of rules to determine actions in border
management). 2 App. Br. 10-13; Final Act. 2. Specifically, Appellants
contend that the Examiner improperly relied on an overly "broad
characterization of the claims," that the claims are analogous to other claims
found patent-eligible by the Federal Circuit in other cases, and that even if
the claims include an abstract idea, they also recite "significantly more" than
the abstract idea. App. Br. 10-18; Reply Br. 2-10. For the following
reasons, however, Appellants' arguments do not persuade us of error.
Section 101 of the Patent Act provides "[ w ]hoever 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. The Supreme Court has long held that this
provision contains an implicit exception: "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589-590 (2013)). The
2 Appellants argue all claims on appeal as a group, and we choose claim 59
as representative of the group. 37 C.F.R. § 4I.37(c)(iv).
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Application 13/448,268
Court has set forth a two-part inquiry to determine whether this exception
applies. First, we must "determine whether the claims at issue are directed
to one of those patent-ineligible concepts." Id. at 2355. Second, if the
claims are directed to one of those patent-ineligible concepts, we consider
"the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77-78 (2012)).
Put differently, we must search the claims for an "inventive concept," that is,
"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."' Id. (quoting Mayo, 566 U.S. at 72-73).
We begin with step one of Alice. As the Examiner finds, claim 59 is
directed to a method ( via computer) of border management including steps
of "collecting" data, "storing" the collected data, "receiving" further data
(information), "determining" data matches, and "sending" data (an alert).
Final Act. 2-3; Ans. 4; App. Br. 21-22 (Claims App.). It is well established
that data gathering and data manipulation encompass an abstract idea. See,
e.g., Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016) ("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! 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).
Although claim 59 recites manipulation of a particular type of data
(border management), and applies certain rules in manipulation and storage,
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Application 13/448,268
these factors make it no less abstract. Ans. 2 ( citing CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) ("method for
verifying the validity of a credit card transaction over the Internet,"
including collecting data and applying algorithms or rules, is "an
unpatentable abstract idea"); Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) (claims directed to dynamically
managing eXtensible Markup Language ('XML') data] constitute abstract
idea of collecting, displaying, and rnanipulating data.")); see also Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014).
Appellants argue that the Examiner has "oversimplif-1ied]" claim 59,
and that it is analogous to the claims found patent-eligible in McRO, Enfish,
and DDR. App. Br. 10-12 (citing McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299 (Fed. Cir. 2016); Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016); DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014)); Reply Br. 5-9. The claims in Enfzsh,
however, were directed to a "specific improvement to the way computers
operate," i.e., an improved database configuration that permitted faster
searching for data. Enfzsh, 822 F.3d at 1330-33, 1336. Appellants' claim
59 is not directed to any advance in hardware or software that, for example,
causes a computer to operate faster or more efficiently. Similarly,
Appellants do not explain how claim 1 allegedly is analogous to the claims
in McRO, which involved a "technological improvement over the existing,
manual 3-D animation techniques," McRO, 837 F.3d at 1316, or the claims
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in DDR, which were "necessarily rooted in computer technology" and
solved a problem specific to e-commerce, DDR, 773 F.3d at 1257.
We are also unpersuaded by Appellants' argument that the claims do
not preempt the entire field of "providing information regarding border
management." App. Br. 19. Although "preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." FairWarning IP, 839 F.3d at 1098 (quoting
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), cert, denied, 136 S. Ct. 701, 193 (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."). Where, as here, "a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, ... preemption
concerns are fully addressed and made moot." Ariosa Diagnostics, 788 F.3d
at 1379.
Accordingly, Appellants have not persuaded us of error in the
Examiner's analysis under Alice step one, and we proceed to step two.
In step two of Alice,
we must examine the elements of the claim to determine whether
it contains an "inventive concept" sufficient to "transform" the
claimed abstract idea into a patent-eligible application. A claim
that recites an abstract idea must include "additional features" to
ensure "that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."
Alice Corp., 134 S. Ct. at 2357 (citations omitted). Much of Appellants'
argument under step two overlaps with step one, and is unpersuasive for the
reasons discussed above. App. Br. 15-17; Reply Br. 3--4. Appellants
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Application 13/448,268
further argue that the invention relies upon unconventional computer
technology which is "scalable" and communicates in "real time." App. Br.
17-18. Appellants' Specification, however, describes the computer
components in generic, conventional terms such as "business architecture,"
"application architecture," "technology architecture," "infrastructure," "core
applications," and "channels." See, e.g., Spec. ,r,r 44, 46, 59. The
Specification further states that multiple channels "provide the ability to
access" the applications and data resources via various generic electronic
devices, "such as computer workstations ... , laptops ... , as well as mobile
computing devices." Id. ,r 67. The use of such generic computing elements
"do[ es] not alone transform an otherwise abstract idea into patent-eligible
subject matter." FairWarning, 839 F.3d at 1096 (citing DDR Holdings, 773
F.3d at 1256); Ans. 9-10.
Appellants argue claim 59 includes limitations beyond "what is well-
understood, routine, and conventional in the field," but as discussed above,
the claim merely recites collecting, processing, storing, and comparing
various bits of data. Final Act. 2. In particular, Appellants' claim 59 lacks
any limitations directed to an improved computer system, processor,
memory, network, database, or Internet. Appellants further assert the recited
data processing features are not conventional "at least because ... the
claimed solution [is] novel and nonobvious." App. Br. 18-19. The
purported "novelty of any element or steps in a process, or even of the
process itself, is of no relevance," however, "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); Two-Way Media Ltd. v. Comcast Cable Comm., LLC, 874 F.3d
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1329, 1340 (Fed. Cir. 2017) ("[e]ligibility and novelty are separate
inquiries").
Appellants, therefore, do not persuade us the Examiner erred in the
second step of the Alice analysis.
For the foregoing reasons, we sustain the rejection of claims 59--80 as
directed to ineligible subject matter.
DECISION
We affirm the Examiner's decision rejecting claims 59-80.
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). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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