Ex Parte Civil et al

Patent Trial and Appeal Board

Aug 31, 2017

14099371 (P.T.A.B. Aug. 31, 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.
14/099,371 12/06/2013 AARON DANIEL CIVIL AUS920130192US2 4895
108794 7590
IBM POU IPLAW (GLF)
c/o Garg Law Firm, PLLC
4521 Copper Mountain Lane
Richardson, TX 75082
09/05/2017 EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
dpandy a @ garglaw. com
uspto@garglaw.com
garglaw @gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON DANIEL CIVIL, SIMEAO HILARIO JO AO,
JEFFREY G. KOMATSU, SATHISHKUMAR SELVARAJU, and
EMMANUEL YASHCHIN
Appeal 2016-007160
Application 14/099,371
Technology Center 3600
Before MAHSHID D. SAADAT, CARL L. SILVERMAN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—13, which are all the claims pending in this application. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest (App. Br. 2).
Appeal 2016-007160
Application 14/099,371
STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to supply chain management problem
mediation (Abstract).
Exemplary Claim
Claim 1 is illustrative of the invention and reads as follows.
1. A method for problem remediation in supply chain
management, the method comprising:
determining, using a processor and a memory, whether a data in
a data stream of a supply chain process is indicative of a problem in
the supply chain;
determining that an evidence curve corresponding to the data is
exhibiting an upward trend, the upward trend forming a positive slope
in the evidence curve;
assigning, responsive to determining that the data is indicative
of the problem, a confidence level according to the positive slope to a
diagnosis of the problem;
identifying, using a historical data repository, a symptom of the
problem, wherein the symptom identifies a point in the data stream
where the problem is manifested;
identifying, using the historical database, a remedy for the
problem when the positive slope exceeds a threshold variance,
wherein the remedy is recorded in the historical data repository with
the problem and the symptom at a previous time, wherein the previous
time is before receiving the data stream; and
applying the remedy to the supply chain.
The Examiner’s Rejections
Claims 1—13 stand rejected under 35 U.S.C. § 101 for being directed
to patent-ineligible subject matter (Final Act. 2—3).
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Claims 1, 2, 4—8, and 10-13 stand rejected under 35 U.S.C. § 103(a)
for being unpatentable over Linton (US 2014/0019471 Al, Jan.16, 2014)
and Bhatt (US 2012/0109842, May 3, 2012) (Final Act. ^U13).
Claim 3 stands rejected under 35 U.S.C. § 103(a) for being
unpatentable over Linton, Bhatt, and Gross (US 2009/0099830 Al, Apr. 16,
2009) (Final Act. 13-15).
Claim 9 stands rejected under 35 U.S.C. § 103(a) for being
unpatentable over Linton, Bhatt, and Scheer (US 7,324,966 B2, Jan. 29,
2008) (Final Act. 15).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
are unpersuaded by Appellants’ contentions and concur with the findings
and conclusions reached by the Examiner as explained below.
Rejection Under 35 U.S.C. §101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has held that
35 U.S.C. § 101 contains important implicit exceptions including laws of
nature, natural phenomena, and abstract ideas. Alice Corp. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court in Alice reiterated
the two-step framework previously set forth in Mayo Collaborative Services
v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for
distinguishing patents that claim laws of nature, natural phenomena, and
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abstract ideas from those that claim patent-eligible applications of these
concepts.” Alice, 134 S. Ct. at 2355. The first step in that analysis is to
determine whether the claims at issue are directed to one of those patent-
ineligible concepts, such as an abstract idea. Abstract ideas may include, but
are not limited to, fundamental economic practices, methods of organizing
human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 2355—57. If the claims are not directed to a patent-
ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination’ to determine whether the additional
elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298,
1297). We, therefore, look to whether the claims focus on a specific means
or method that improves the relevant technology or instead are directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
Step 1
Turning to the first step of the Alice!Mayo analysis, the Examiner has
determined that claims 1—13 are “directed to the abstract idea of problem
remediation in supply chain management” (Final Act. 2—3). According to
the Examiner,
[t]his abstract idea, including the determining,
assigning, identifying and applying steps are similar
to concepts involving an idea of itself,. . . including
concepts involving comparing new and stored
information and using rules to identity options (e.g.,
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Smartgene, Inc. v. Biological Labs[2]), concepts
involving organizing information (e.g., Digitech
Image Tech, LLC v. Electronics for Imaging, Inc.[3],
and Ultramercial v. Hulu[4]), and concepts
describing mathematical relationships and
algorithms (e.g., Benson[5], Flook[6], Diehr[7] and
Grams[8] 9), all of which have been found by the
courts to be abstract ideas
(Ans. 8) (footnotes added).
Appellants argue claim 1 is not directed to an abstract idea because
“[n]o idea similar to those previously found by the courts to be abstract has
been identified in the claim” (App. Br. 8—9).9
Appellants’ argument does not persuade us of Examiner error. The
Examiner has identified subject matter in claim 1 that is similar to subject
matter found by our reviewing courts to be abstract. The Examiner has
determined that each of the limitations of claim 1 is directed to at least one
of the following previously established abstract ideas: (1) An idea itself that
can be performed in the human mind or by a human using a pen and paper
(see Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed.
Cir. 2011)); (2) Comparing new and stored information and using rules to
identify options (see SmartGene); (3) Organizing information (see Digitech',
2 SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950,
951-52, 954—55 (Fed. Cir. 2014)
3 Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014)
4 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)
5 Gottschalkv. Benson, 409 U.S. 63 (1972)
6 Parker v. Flook, 437 U.S. 584 (1978)
7 Diamond v. Diehr, 450 U.S. 175 (1981)
8 In re Grams, 888 F.2d 835 (Fed. Cir. 1989)
9 Regarding the rejection under 35 U.S.C. § 101, Appellants designate claim
1 as representative of claims 1—13 (App. Br. 8).
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Application 14/099,371
see also Cyberfone Sys., LLC v. CNN Interactive Grp., 558 F. App’x 988
(Fed. Cir. 2014) and Content Extraction & Transmission LLC v. Wells
Fargo Bank, N.A., 776 F.3d 1343, 1358-59 (Fed. Cir. 2014)); and (4)
Mathematical concepts such as mathematical algorithms, mathematical
relationships, mathematical formulas and calculations (see Benson; see
Flook; see Diehr; see Grams) (see Ans. 8).
Appellants’ argument that “[n]o idea similar to those previously found
by the courts to be abstract has been identified in the claim” does not address
the Examiner’s specific reasoning and does not persuade us of Examiner
error (App. Br. 8—9).
Appellants additionally contend claim 1 is patent eligible because
“claim 1 recites a step of remediation, which includes a real-world action”
(App. Br. 9-10). Appellants proffer no legal precedent supporting the
argument that a claim comprising a real-world action is necessarily patent
eligible. As such, Appellants’ contention amounts to attorney argument
without supporting evidence, and does not persuade us of Examiner error.
Moreover, the remediation step amounts to insignificant extrasolution
activity. See Mayo, 132 S. Ct. at 1297—98 (measuring metabolites of a drug
administered to a patient); Flook, 437 U.S. at 589—90 (1978) (adjusting an
alarm limit variable to a figure computed according to a mathematical
formula).
Appellants further argue the Examiner’s reasoning for the rejection is
no more than mere paraphrasing of certain clauses without explaining in any
level of detail why those clauses apply to the claim at hand (App. Br. 10-
11). Appellants contend the Examiner essentially has made a legal
conclusion, without any supporting reasoning (id.). Appellants contend the
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Examiner’s rejection is “nothing more than a ‘bald’ assertion that the entire
claim is an abstract idea” (Reply Br. 2).
We are not persuaded of Examiner error. The “PTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies 35 U.S.C. § 132, in ‘notifying] the applicant. . . [by] stating the
reasons for [its] rejection, or objection or requirement, together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.’” In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011). The PTO violates § 132 “when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990). But if the PTO “adequately explain[s] the shortcomings it
perceives ... the burden shifts to the applicant to rebut the prima facie case
with evidence and/or argument.” Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
We conclude the Examiner adequately explains the rejection under
35 U.S.C. § 101. As discussed supra, the Examiner determined claims 1—13
are “directed to the abstract idea of problem remediation in supply chain
management” (Final Act. 2—3). Also as discussed supra, the Examiner
explained that each of the limitations of claim 1 is directed to at least one of
an idea itself that can that can be performed in the human mind, comparing
new and stored information and using rules to identify options, organizing
information, and mathematical concepts such as mathematical algorithms,
mathematical relationships, mathematical formulas and calculations (Ans.
8). The Examiner also identified several cases wherein subject matter
similar to that found in claim 1 was determined to constitute an abstract idea
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(id.). The Examiner further explained why additional claim limitations do
not transform the abstract idea into a patent-eligible application of the
abstract idea (Final Act. 2—3; Reply Br. 8—10). The Examiner’s statements
satisfy the provisions of 35 U.S.C. § 132 because they apply the Mayo!Alice
two-step analytical framework and apprise Appellants of the reasons for the
35 U.S.C. § 101 rejection based on that analysis.
Step 2
Turning to the second step of the Mayo!Alice analysis, because we
find that the claims are directed to an abstract idea, the claims must include
an “inventive concept” in order to be patent eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself (see
Enfish, 822 F.3d at 1336).
Appellants argue, even if, arguendo, claim 1 were directed to an
abstract idea, claim 1 recites limitations that are enough to quality as
significantly more because, inter alia, those limitations provide
improvements to another technology or technical field (App. Br. 12).
Appellants support this argument with the following statement.
Claim 1 is generally directed to remedying
problems in a supply chain. Supply chain
management is a well-established and recognized
technical field to which the inventive concept of
claim 1 relates. Claim 1 significantly improves the
supply chain management by (i) performing a
problem detection operation in a manner that the
existing supply chain management technology is
incapable of performing, and (ii) remedying the
problem when certain conditions are satisfied,
another operation that the existing supply chain
management technology is incapable of performing
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(id.).
Appellants additionally argue the limitations of claim 1 “comprise
significant data manipulations and non-trivial computational operations
based on those manipulations, which are performed separately from, and in
addition to, the routine operations in supply chain management” (id.).
Appellants assert “[tjherefore, claim 1 comprises patentable subject matter
according to Alice Corp. under 35 U.S.C. § 101” (id.).
We are not persuaded of Examiner error. Appellants list limitations of
claim 1 without any persuasive explanation of how the limitations amount to
significantly more than problem remediation in supply chain management or
any other technical field. Moreover, Appellants rely upon detail not recited
in claim 1. “[T]he name of the game is the claim.” In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998). The claims define the metes and
bounds of the invention entitled to the protection of the patent system.
See Zenith Labs. Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 1424
(Fed. Cir. 1994). Claim 1 does not recite the “significant data
manipulations and non-trivial computational operations based on those
manipulations” upon which Appellants base their arguments. Accordingly,
we are not persuaded of Examiner error.
Appellants argue the Examiner erred because the specification
explains that the invention may be implemented on a general purpose
computer or a special purpose computer (Reply Br. 4—5; see Specification
1135).
We are not persuaded of Examiner error. Although Appellants
contend the “limitations of claim 1 comprise significant data manipulations
and non-trivial computational operations based on those manipulations,”
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Appellants have neither shown, nor provided sufficient evidence, that the
claimed limitations are technically accomplished such that they are not
routine, conventional functions of a processor, memory, and a database
(App. Br. 12). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
Cir. 2014) (quoting Alice Corp. v. CLS Bank Inti, 134 S. Ct. 2347, 2357
(2014)) (“Instead, the claimed sequence of steps comprises only
‘conventional steps, specified at a high level of generality,’ which is
insufficient to supply an ‘inventive concept’”); BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)
(“An abstract idea on ‘an Internet computer network’ or on a generic
computer is still an abstract idea”); Alice Corp. v. CLS Bank Int 7, 134 S. Ct.
2347, 2358 (2014) (“the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention”);
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)
(“We have repeatedly held that such invocations of computers and networks
that are not even arguably inventive are ‘insufficient to pass the test of an
inventive concept in the application’ of an abstract idea.”) (citations
omitted); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1341 (Fed. Cir. 2017) (“Rather, the claims recite both a generic
computer element—a processor—and a series of generic computer
‘components’ that merely restate their individual functions—i.e., organizing,
mapping, identifying, defining, detecting, and modifying. That is to say,
they merely describe the functions of the abstract idea itself, without
particularity. This is simply not enough under step two.”); Intellectual
Ventures, 792 F.3d at 1370 (“[T]he ‘interactive interface’ simply describes a
generic web server with attendant software, tasked with providing web pages
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to and communicating with the user’s computer.”). The limitations of claim
1, viewed “both individually and as an ordered combination,” do not amount
to significantly more than the judicial exception sufficient to transform the
nature of the claim into patent-eligible subject matter. See Alice, 134 S. Ct.
at 2355 (quoting Mayo, 132 S. Ct. at 1297).
Rejection Under 35 U.S.C. §103
Claim 1 recites “identifying, using a historical data repository, a
symptom of the problem.” Appellants argue “the Examiner has failed to
specifically allege any teaching or suggest [Uc] of at least some manner of
‘identifying [a remedy] when the positive slope exceeds a threshold
variance’ in the manner of claim 1” (App. Br. 15—19; see Reply Br. 6).10
We are not persuaded of Examiner error. Appellants’ argument does
not address the Examiner’s specific findings. The Examiner finds Linton
teaches determining changes (remedies) to a supply chain when a problem
reaches a specified severity level (threshold) (Final Act. 4—5; Ans. 10-11;
Linton ]f]f 112, 116). The Examiner further finds Bhatt teaches a problem-
indicative evidence curve having a positive slope (Final Act. 5—6; Ans.
10—11; Bhatt 1157, Fig. 11). As correctly found by the Examiner, utilizing
Bhatt’s evidence curve, on which a threshold level may be identified, to
facilitate Linton’s determination of remedies triggered by a threshold level,
10 Regarding the rejections under 35 U.S.C. § 103, separate patentability is
not argued for claims 2, 4—8, and 10—13 (App. Br. 19; Reply Br. 6—7). With
respect to claims 3 and 9, Appellants’ arguments present us with the same
issue as claim 1 (App. Br. 19). Except for our ultimate decision, these
claims are not discussed further herein.
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teaches identifying a remedy for the problem when the positive slope of the
evidence curve exceeds a threshold variance (see Final Act. 4—6; Ans. 10—
11).
Appellants additionally contend “identifying ... a remedy for the
problem when the positive slope exceeds a threshold variance,” as recited in
claim 1, “is directed to solving a timing question — when should a problem
be remedied under certain circumstances” (App. Br. 18—19). Appellants
argue the Examiner erred because the combination of Linton and Bhatt does
not solve this timing problem (id.). Appellants’ argument is not
commensurate with the scope of the claims. Claim 1 includes no recitation
that is indicative of such timing criteria. Accordingly, we are not persuaded
of Examiner error.
CONCLUSION
The Examiner did not err in rejecting claims 1—13 under 35 U.S.C.
§101.
The Examiner did not err in rejecting claims 1—13 under 35 U.S.C.
§103.
DECISION
We affirm the Examiner’s decision to reject claims 1—13.
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
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