Ex Parte Coleman et al

Patent Trial and Appeal Board

Feb 22, 2019

13709989 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/709,989 12/10/2012
720 7590 02/26/2019
OYEN, WIGGS, GREEN & MUTALA LLP
480 - THE ST A TION
601 WEST CORDOVA STREET
VANCOUVER, BC V6B IGI
CANADA
FIRST NAMED INVENTOR
Stanley T. Coleman
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.
C852 0004/GNM 9173
EXAMINER
BROCKINGTON III, WILLIAMS
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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@patentable.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STANLEY T. COLEMAN,
NICHOLAS MALCOLM,
JOSEPH GNOCATO,
DARYL NORMAN SPENCER,
and SIMON NESBITT HORNER
Appeal2017-003448
Application 13/709,989 1
Technology Center 3600
Before ANTON W. PETTING, KENNETH G. SCHOPPER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Copperleaf
Technologies Inc. (Appeal Br. 3).
Appeal2017-003448
Application 13/709,989
STATEMENT OF THE CASE2
Stanley T. Coleman, Nicholas Malcolm, Joseph Gnocato, Daryl
Norman Spencer, and Simon Nesbitt Homer (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-72, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellants invented automated tools useful for determining
replacement schedules for in-place capital assets. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. Apparatus for scheduling investments in capital assets, the
apparatus comprising:
[ 1] a data processor;
[2] a database accessible to the data processor, the database
storing asset information for each of a plurality of in-place
capital assets, the asset information for each of the in-place
capital assets comprising at least:
replacement deferral risk cost information,
first use cost information,
second use cost information,
and replacement cost information;
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed June 21, 2016) and Reply Brief ("Reply Br.," filed December 19,
2016), and the Examiner's Answer ("Ans.," mailed October 19, 2016), and
Final Action ("Final Act.," mailed June 25, 2015).
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[3] a non-transitory medium containing software instructions
readable by the data processor, the software instructions
configured to cause the data processor to:
for each of the in-place capital assets:
and
[ 4] execute a replacement deferral risk cost model
with the replacement deferral risk cost information
as an input, the replacement deferral risk cost
model estimating costs of failure risked by
deferring replacement of the in-place capital asset
as a function of time;
[ 5] execute a first use model with the use cost
information as an input, the first use model
estimating use costs of the in-place capital asset as
a function of time;
[ 6] execute a second use model with the second
use cost information as an input, the second use
model estimating use costs of a replacement asset
for the in-place capital asset as a function of time;
[7] execute a replacement cost model with the
replacement cost information as an input, the
replacement cost model estimating costs of
replacing the in-place capital asset with the
replacement asset as a function of time;
[8] determine from outputs of the replacement
deferral risk cost model, the first and second use
models and the replacement cost model a total cost
function for the in-place capital asset over a
planning period as a function of replacement date
for the in-place capital asset;
and
[9] determine a financially optimal replacement
date for the in-place capital asset based on the total
cost function;
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[10] store and/or output to non-transitory media a record
comprising the financially optimal replacement dates for
one or more of the in-place capital assets.
Claims 1-72 stand rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more.
Claims 1-72 stand rejected under 35 U.S.C. § 112(a) as lacking a supporting
written description within the original disclosure.
Claims 44 and 45 stand rejected under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the invention.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
The issues of written description matter tum primarily on whether
there are sufficient examples or structural description to support the broad
model genera recited.
Appellants do not contest the indefiniteness rejection.
ANALYSIS
Claims 1-72 rejected under 35 US.C. § 101 as directed to a judicial
exception without significantly more
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STEP 12
Claim 1, as an apparatus claim, nominally recites one of the
enumerated categories of eligible subject matter in 35 U.S.C. § 101. The
issue before us is whether it is directed to a judicial exception without
significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat else
is there in the claims before us? To answer that question, ...
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. [The Court] described step two of this
analysis as 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 Corp. Pty. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014) (citations
omitted) ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions ( a law of nature, a natural phenomenon, or an
abstract idea). Then, if claims recite a judicial exception, determining
3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019).
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whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception. If the claims are directed to a judicial
exception, then finally determining whether the claims provide an inventive
concept because the additional elements recited in the claims provide
significantly more than the recited judicial exception.
STEP 2A Prong 1
Claim 1, though nominally an apparatus claim, recites only a data
processor, a database storing data, and a non-transitory medium containing
software instructions as its structural elements. These are all parts of a
generic computer. The instructions recite a process, and so claim 1 is
essentially a process claim drafted as a generic computer to perform the
process. Thus, our analysis is the same as that for a method claim.
As to the process steps recited, claim 1 recites executing each of four
models expressed only in terms of inputs and outputs, determining outputs
from those models, and determining and storing data representing an optimal
date value. To execute models and determine their outputs from inputs and
further data from those outputs alone is generic analysis. Thus, claim 1
recites receiving, analyzing, modifying, and storing data. None of the
limitations recite technological implementation details for any of these steps,
but instead recite only functional results to be achieved by any and all
possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature. The next issue is whether it
recites the judicial exception of an abstract idea. To answer this, we next
determine whether it recites one of the concepts the courts have held to be
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lacking practical application, viz. mathematical concepts4, certain methods
of organizing human interactions 5, including fundamental economic
practices and business activities, or mental processes6•
The Examiner determines the claims to be directed to utilizing a series
of mathematical models to optimize an asset replacement schedule. Final
Act. 9.
The preamble to claim 1 recites that it is an apparatus for scheduling
investments in capital assets. The steps in claim 1 result in determining a
schedule date absent any technological mechanism other than a conventional
computer for doing so.
As to the specific limitations, limitations 1-3 recite a generic
processor, database, and data storage. Limitations 4--7 recite generic
modeling of cost data, and limitation 8 recites generic data determination
from the model outputs, which advise one to apply generic functions to get
to these results without any technological implementation details.
Limitation 9 is insignificant post solution storage activity.
4 See e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed. Cir.
2018).
6 See e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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The Specification at paragraph 2 describes the invention as relating to
automated tools useful for determining replacement schedules for in-place
capital assets. Thus, all this intrinsic evidence shows that claim 1 is directed
to computing asset replacement dates, i.e., asset management. This is
consistent with the Examiner's determination.
The concept of asset management is a fundamental business practice
long prevalent in our system of commerce. The use of asset management is
also a building block of ingenuity in capital formation. Thus, asset
management is an example of a conceptual idea subject to the Supreme
Court's "concern that patent law not inhibit further discovery by improperly
tying up the future use of these building blocks of human ingenuity." Alice,
573 U.S. at 216 (citations omitted). Claim 1 recites the idea of performing
various conceptual steps generically resulting in the asset management. As
we determined earlier, none of these steps recite specific technological
implementation details, but instead get to this result by advising one to
compute a date to replace an asset based on use and replacement cost
models. Thus claim 1 is directed to asset management, which is a
fundamental business practice.
This in tum is an example of commercial or legal interactions as a
certain method of organizing human interactions because asset management
is a commercial management activity that coordinates the actions of
organizational members in shepherding assets. The concept of asset
management as advised to be done by computing a date to replace an asset
based on use and replacement cost models is a heuristic such staff would
apply in making coordinated asset decisions. The steps recited in claim 1
are part of the way such an idea might work.
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Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362 (2015) (price optimization).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing,
modifying, and storing data mimic human thought processes of observation,
evaluation, judgment, and opinion, perhaps with paper and pencil, where the
data interpretation is perceptible only in the human mind. See 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). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, analysis,
modification, and storage and does not recite an improvement to a particular
computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract
because they "focused on a specific asserted improvement in computer
animation"). As such, claim 1 is directed to the abstract idea of receiving,
analyzing, modifying, and storing data, and not a technological
implementation or application of that idea.
Alternately, this is an example of a mathematical concept because the
steps of executing quantitative models and computing a date perform a
mathematical algorithm. The remaining steps are mere data gathering and
incidental post processing steps.
From this we conclude that at least to this degree, claim 1 is directed
to the abstract idea of asset management by advising one to compute a date
to replace an asset based on use and replacement cost models.
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STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e., integrated into a practical application. 7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, "all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. "[ A Jpplication[ s ]" of such
concepts " 'to a new and useful end,' " we have said, remain
eligible for patent protection.
Accordingly, in applying the § 101 exception, we must
distinguish between patents that claim the "'buildin[g]
block[ s] "' of human ingenuity and those that integrate the
building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[ t ]" an abstract
idea "on ... a computer," that addition cannot impart patent
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 ( citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely functional, devoid of
implementation details. Limitations 1-3 are, again, generic computer
components. Step 9 is insignificant post solution activity, such as storing,
transmitting, or displaying the results. Steps 4--8 recite generic computer
processing expressed in functional terms to be performed by any and all
possible means and so present no more than abstract conceptual advice.
Limitations describing the nature of the data do not alter this. All purported
inventive aspects reside in how the data is interpreted and the results desired,
and not in how the process physically enforces such a data interpretation or
in how the processing technologically achieves those results.
Viewed as a whole, Appellants' claim 1 simply recites the concept of
asset management as performed by a generic computer. To be sure, claim 1
recites doing so by advising one to compute a date to replace an asset based
on use and replacement cost models. But this is no more than abstract
conceptual advice on the parameters for such asset management and the
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generic computer processes necessary to process those parameters, and do
not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it affect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment8 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of asset management under different scenarios. They do not
describe any particular improvement in the manner a computer functions.
Instead, claim 1 at issue amounts to nothing significantly more than an
instruction to apply the abstract idea of asset management by advising one to
compute a date to replace an asset based on use and replacement cost models
using some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225-26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to affect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, affects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
8 The Specification describes a general-purpose computer. Spec. para. 164.
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the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to advising one to compute a
date to replace an asset based on use and replacement cost models to achieve
the functional result of asset management as distinguished from a
technological improvement for achieving or applying that result. The claim
does not integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provides significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for receiving, analyzing,
modifying, and storing data amounts to electronic data query and retrieval-
one of the most basic functions of a computer. All of these computer
functions are generic, routine, conventional computer activities that are
performed only for their conventional uses. See Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz
Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). None of
these activities are used in some unconventional manner nor do any produce
some unexpected result. Appellants do not contend they invented any of
these activities. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
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upon, "even if a process of collecting and analyzing information is 'limited
to particular content' or a particular 'source,' that limitation does not make
the collection and analysis other than abstract." SAP Am., Inc. v. InvestPic
LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (citation omitted).
Considered as an ordered combination, the computer components of
Appellants' claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification-storage is equally generic and conventional or otherwise held
to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.
Cir. 2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (sequence of data retrieval, analysis, modification, generation, display,
and transmission); and Two-Way Media Ltd. v. Comcast Cable
Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of
processing, routing, controlling, and monitoring). The ordering of the steps
is therefore ordinary and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim does not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
The remaining claims merely describe process parameters. We
conclude that the claims at issue are directed to a patent-ineligible concept
itself, and not to the practical application of that concept.
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LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of asset
management, without significantly more.
APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 9--10 and Answer 2-22 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument "that review of the
claims for compliance with 35 U.S.C. §101 must be conducted according to
the framework set out in at least the following documents." Reply Br. 2.
The review supra is conducted according to the framework set out in 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019), which supersedes the documents Appellants list.
We are not persuaded by Appellants' argument that "claim 1 is not
directed to the general idea of using mathematical models to optimize an
asset replacement schedule but is directed to a specific apparatus for
managing the replacement of equipment and a plurality of capital assets
using a specific methodology." Reply Br. 3. The apparatus is specific only
in the sense the claim specifies it in words. As we determine supra, the only
structural elements the apparatus recites are a processor, database, and
storage. The functions recited are just that, functions to be implemented by
any and all possible technological means. The methodology is abstract
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conceptual advice to compute a date to replace an asset based on use and
replacement cost models.
Appellants also attempt to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Reply Br. 3--4. In McRO, the court held that, although the
processes were previously performed by humans, "the traditional process
and newly claimed method ... produced ... results in fundamentally
different ways." FairWarning, 839 F.3d at 1094 (differentiating the
claims at issue from those in McRO). In McRO, "[i]t is the incorporation
of the claimed rules, not the use of the computer, that improved the
existing technology process," because the prior process performed by
humans "was driven by subjective determinations rather than specific,
limited mathematical rules." 837 F.3d at 1314 (internal quotation marks,
citation, and alterations omitted). In contrast, the claims of the instant
application merely implement an old practice of using cost models in making
asset decisions in a new environment. Appellants have not argued that the
claimed processes of selecting dates apply rules of selection in a manner
technologically different from those which humans used, albeit with less
efficiency, before the invention was claimed. Merely pigeon holing the
objects of decision making to aid decision making is both old and itself
abstract.
The claims in McRO were not directed to an abstract
idea, but instead were directed to "a specific asserted
improvement in computer animation, i.e., the automatic use of
rules of a particular type." We explained that "the claimed
improvement [was] allowing computers to produce 'accurate
and realistic lip synchronization and facial expressions in
animated characters' that previously could only be produced by
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human animators." The claimed rules in McRO transformed a
traditionally subjective process performed by human artists into
a mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from
those in McRO).
We are not persuaded by Appellants' argument that "[ e ]ven if,
arguendo, claim 1 does rely on mathematical relationships/principles, it is
not directed to these mathematical relationships/principles. Instead, it is
merely directed to a method which may, arguendo, rely on these
mathematical relationships/principles as rules for managing replacement of
equipment." Reply Br. 4. The problem for Appellants is that the
mathematical models recited do no more than compute a numeric date. The
use of that date outside the scope of the claim has no persuasive value or
patentable significance.
We are not persuaded by Appellants' argument that the claims do not
preempt an abstract idea. "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo [/Alice] framework,
as they are in this case, preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015).
We are not persuaded by Appellants' argument that
[ t ]he specific apparatus of claim 1 is an improvement of the
relevant technology ( e.g. apparatus and methods for scheduling
replacement of equipment). As discussed in the specification as
filed (e.g. at paras. [0007] and [0055]), determining schedules
for replacement of in-place assets that are cost-efficient and
meet various constraints is an undertaking with non-linear
computational complexity. This complexity increases
dramatically with increased refinement of the asset models
employed and the number of assets that must be considered.
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Claim 1 is directed to an automated tool which provides
reasonably accurate projections, particularly when theoretically
optimal ( or perfectly accurate) projections are infeasible to
compute directly. As described in the specification, this can
solve significant practical problems such as scheduling
replacement of a large pool of capital assets within constraints
imposed by the availability of resources (see, e.g., para.
[0004]), prioritizing replacement of capital assets in a complex
system as part of the determination of an optimum replacement
schedule (see, e.g., para. [0007]), and determining optimum
replacement schedules for diverse sets of assets with differing
wear, operating costs, replacement costs, lifespans, failure
consequences, and other considerations tied to the particular
technical and individual characteristics of each asset (see
paragraphs [0048] and [0061 ]). That is, claim 1 is directed at a
specific apparatus which recognizes a computational problem
and provides an improved computational solution. Claim 1, as a
whole, is rooted in this specific technical context, and is not
merely directed towards the general concept of replacing
equipment or the resulting plurality of replacement dates. Claim
1 is instead directed toward a specific apparatus which relies on
a series of specific rules by which these solutions are provided.
Reply Br. 5. The claim is not an improvement in technology as no
technological implementation is recited. Instead, as Appellants admit,
"claim 1 . . . recognizes a computational problem and provides an improved
computational solution." Id. The recited solution is abstract conceptual
advice to apply generic cost models without any technological
implementation details. Whether claim 1 is rooted in a technological context
is unhelpful. "The Supreme Court and this court have repeatedly made clear
that merely limiting the field of use of the abstract idea to a particular
existing technological environment does not render the claims any less
abstract". Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253,
1259 (Fed. Cir. 2016). Equally, the complexity of the computational
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problem is unpersuasive. "The difficulty of the programming details for this
functionality is immaterial because these details are not recited in the actual
claims. The degree of difficulty in implementing an abstract idea in this
circumstance does not itself render an abstract idea patentable." Apple, Inc.
v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016).
Claims 1-72 rejected under 35 USC§ l 12(a) as lacking a supporting
written description within the original disclosure
We adopt the Examiner's determinations and analysis from Final
Action 10-14 and Answer 22-26 and reach similar legal conclusions. The
Reply Brief only refers back to the Appeal Brief arguments. Reply Br. 6-7.
In particular, Appellants claim a vast genus in functional terms without
providing sufficient examples or structural directions to show possession of
the entire genus.
[A] generic claim may define the boundaries of a vast genus of
chemical compounds, and yet the question may still remain
whether the specification, including original claim language,
demonstrates that the applicant has invented species sufficient
to support a claim to a genus. The problem is especially acute
with genus claims that use functional language to define the
boundaries of a claimed genus. In such a case, the functional
claim may simply claim a desired result, and may do so without
describing species that achieve that result. But the specification
must demonstrate that the applicant has made a generic
invention that achieves the claimed result and do so by showing
that the applicant has invented species sufficient to support a
claim to the functionally-defined genus.
Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1349 (Fed.
Cir. 2010).
[A] sufficient description of a genus instead requires the
disclosure of either a representative number of species falling
within the scope of the genus or structural features common to
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Application 13/709,989
the members of the genus so that one of skill in the art can
"visualize or recognize" the members of the genus. We
explained that an adequate written description requires a precise
definition, such as by structure, formula, chemical name,
physical properties, or other properties, of species falling within
the genus sufficient to distinguish the genus from other
materials. We have also held that functional claim language can
meet the written description requirement when the art has
established a correlation between structure and function. But
merely drawing a fence around the outer limits of a purported
genus is not an adequate substitute for describing a variety of
materials constituting the genus and showing that one has
invented a genus and not just a species.
Id. at 1350. See also LizardTech, Inc. v. Earth Resource Mapping, Inc., 424
F.3d 1336, 1345 (Fed. Cir. 2005) for holding such written description
requirements in electrical and computer technology claims.
Here Appellants simply state that the recited models have exemplary
inputs and outputs. By itself, this is a functional specification, and at that in
the broadest of terms, without any implementation details for any species.
Appellants admit that the scope of how the models would operate is
extremely broad. "[D]etails of such models may vary among different types
of in-place capital assets, and that it is not . . . possible ... to exhaustively
list the mathematical constructions of all such models." App. Br. 32. There
is no guidance in the form of examples or structure as to how a processor
executes each of the recited models. As these are disclosed as being variable
and context dependent, at least some examples from a sufficient number of
contexts or some structural description of how to accomplish these in
various contexts is needed to show possession of the entire genus.
Claims 44 and 45 rejected under 35 US.C. § l 12(b) as failing to
particularly point out and distinctly claim the invention
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Application 13/709,989
This is an uncontested antecedent basis rejection. Appellants propose
to amend the claims in response. App. Br. 37.
CONCLUSIONS OF LAW
The rejection of claims 1-72 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 1-72 under 35 U.S.C. § 112(a) as lacking a
supporting written description within the original disclosure is proper.
The rejection of claims 44 and 45 under 35 U.S.C. § 112(b) as failing
to particularly point out and distinctly claim the invention is proper.
DECISION
The rejection of claims 1-72 is affirmed.
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)(iv) (2011).
AFFIRMED
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