Ex Parte Cook et al

Patent Trial and Appeal Board

Oct 17, 2017

13426674 (P.T.A.B. Oct. 17, 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.
13/426,674 03/22/2012 Andrew John Cook 12587-0300001 8141
26212 7590 10/19/2017
FTSH fr RICHARDSON P C (AfTrRNTTTRFJ
EXAMINER
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
COUPE, ANITA YVONNE
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/19/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW JOHN COOK, RAJENDRA TANNIRU PRASAD,
GAYATHRI PALLAIL, UMA BALASUBRAMANIAN,
LAKSHMI ABBURU, and SREEVIDYA PRASAD
Appeal 2015-007829
Application 13/426,6741
Technology Center 3600
Before BIBHU R. MOHANTY, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—5 and 7—22 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
1 According to the Appellants, Accenture Global Services Limited is the real
party in interest. App. Br. 1.
Appeal 2015-007829
Application 13/426,674
THE INVENTION
The Appellants’ claimed invention is directed to a productivity
prediction technique and system (Spec. 2). Claim 19, reproduced below, is
representative of the subject matter on appeal.
19. A method comprising:
receiving, by a computing device, user input defining workforce
capability parameters;
accessing, from an electronic storage, a prediction model that
quantifies an impact of workforce capability on productivity and that
was generated by applying statistical analysis on historical workforce
data for projects and historical process metrics data for the projects;
calculating, by the computing device and using the prediction
model, a productivity prediction for the workforce capability
parameters comprising calculating, using the prediction model, a
probability distribution of predicted productivity for the workforce
capability parameters;
storing the productivity prediction in the electronic storage; and
providing the productivity prediction for the workforce
capability parameters for presentation on a monitor by displaying, on
a graph presented on the monitor, the probability distribution of
predicted productivity for the workforce capability parameters.
THE REJECTION
The following rejection is before us for review:
Claims 1—5 and 7—22 are rejected under 35U.S.C. § 101 as directed to
non-statutory subject matter.
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Appeal 2015-007829
Application 13/426,674
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2
ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea and further that the additional
features of the claim add “significantly more” to the alleged abstract idea
(App. Br. 9). The Appellants provide further arguments in this regard and
also argue that the rejection does not address all the limitations in the claim
in the rejection (App. Br. 9—12). The Appellants have provided further
arguments in the Reply Brief at pages 2-4.
In contrast, the Examiner has determined that the rejection is proper
(Final Rej. 3—5, Ans. 3—5).
We agree with the Examiner. Under 35U.S.C. § 101, an invention is
patent-eligible if it claims a “new and useful process, machine, manufacture,
or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: “laws of nature,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLSBanklnt’l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2015-007829
Application 13/426,674
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an “inventive concept” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention”. Id at 2358.
Here, we find that the claim is directed to the concept of predicting
productivity for a workforce using a prediction model. This can be
performed using a mathematical model to make the prediction and can also
be considered a method of organizing human activities in a workforce
system and is an abstract idea beyond the scope of § 101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
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Appeal 2015-007829
Application 13/426,674
Here the claim is not rooted in technology but rather in the abstract
concept of using a mathematical model to predict productivity for a
workforce in organizing human activities using only generic computer
components in a conventional manner.
For these above reasons the rejection of claim 19 is sustained. The
Appellants have provided the same arguments for similar claims 1—5, 7, 8,
and 20 and the rejection of these claims is sustained as well.
With regard to claim 9, the Appellants argue that the claim limitation
for “historical automation data in calculating automation related
prediction data” takes the claim out of the realm of being an abstract idea.
Similarly, for claims 17 and 18, the Appellants argue that the claim
limitation to “tune a prediction model” takes the claim out of the realm of
being an abstract idea as well. We disagree with both these contentions.
Even taking these cited argued claim limitations into account, claims 9, 17,
and 18 are all essentially directed to the same abstract idea as claim 1, and
like that claim, the language of each of those respective claims also fails to
transform each claim from being “significantly more” than an abstract idea.
For these reasons, the rejection of these claims is sustained as well. The
Appellants have provided the same arguments for the remaining claims and
the rejection of these claims is sustained for the same reasons given above.
CONCLUSIONS OF LAW
We conclude that the Appellants have not shown that the Examiner
erred in rejecting claims 1—5 and 7—22 under 35U.S.C. § 101 as being
directed to non-statutory subject matter.
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Appeal 2015-007829
Application 13/426,674
DECISION
The Examiner’s rejection of claims 1—5 and 7—22 is sustained.
AFFIRMED
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