Ex Parte Corrigan et al

Patent Trial and Appeal Board

Oct 19, 2016

13562735 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/562,735 07 /31/2012 Kiara Groves Corrigan
56436 7590 10/21/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
83013399 1004
EXAMINER
YESILDAG, MEHMET
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIARA GROVES CORRIGAN and AMIP J. SHAH
Appeal2014-004752
Application 13/562,735
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Kiara Groves Corrigan and Amip J. Shah (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-18, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed November 19, 2013) and Reply Brief ("Reply Br.," filed February
13, 2014), and the Examiner's Answer ("Ans.," mailed December 19, 2013),
and Final Action ("Final Act.," mailed July 29, 2013).
Appeal2014-004752
Application 13/562,735
The Appellants invented a way to determine a supplier environmental
impact. Spec., para. 10.
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. A computer-implemented method for determining supplier
environmental impact (EI) comprising:
[ 1] identifying a number of tiers of suppliers for an activity of
an entity;
[2] mapping the activity of the entity to
an economic sector
and
an environmental sector
using data accessed from a public database;
[3] determining a final demand output for the activity of the
entity using data associated with the mapped economic sector,
and
wherein the final demand output of the activity includes
an estimate of sales to final markets;
[ 4] determining an EI for each supplier
in each of the number of tiers of suppliers
for the activity of the entity
based on the determined final demand output of the
activity of the entity and data associated with the mapped
environmental sector.
The Examiner relies upon the following prior art:
Reich-Weiser US 2011/0178938 Al July 21, 2011
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Application 13/562,735
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Reich-Weiser.
ISSUES
The issues of obviousness tum primarily on whether the art describes
arranging business suppliers in tiers for evaluating environmental impact.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Appellants 'Disclosure
01. Estimating a tier-based EI of suppliers of an entity can assist an
entity in identifying a tier of suppliers that has a higher EI than
other tiers, referred to as an EI hotspot. Spec. para. 7.
Facts Related to the Prior Art
Reich-Weiser
02. Reich-Weiser is directed to assessing the carbon footprint of a
business entity, using financial information of the business entity.
Reich-Weiser. Reich-Weiser para. 2.
03. Reich-Weiser refers to tier-pricing. Reich-Weiser para. 42.
Reich-Weiser has no other description of tiers.
04. The screen depicted in Figure 9 presents the GHG ("greenhouse
gas" (see Reich-Weiser para. 4)) emissions and GHG intensities
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Application 13/562,735
that are attributable to suppliers of business entity 101 (Fig. 1).
Each row in table 901 is related to a supplier, and contains
information about the GHG emission and GHG intensity of the
supplier. The rows within table 901 can be selected by a user.
When a row (i.e., a supplier) is selected, graph 902 and table 903
are updated to display carbon footprint information for the
selected supplier. As shown in the exemplary report of Figure. 9,
graph 902 is used to display spending and GHG emission trends
for the selected supplier. Table 903 is used to display the types of
commodities and services supplied by the selected supplier, and
the selected supplier's contribution to the carbon footprint of those
commodities and services. Here, tables 901 and 903 point to
supplier 311 (Fig. 3) as a significant carbon footprint contributor.
Reich-Weiser para. 77.
ANALYSIS
We are persuaded by Appellants' argument that Reich-Weiser fails to
describe determining an EI for each supplier in each of the number of tiers
of suppliers. App. Br. 10-12. Examiner responds that all suppliers form a
single tier. Ans. 3--4. As a tier is one of a series or a rank.,2 there must be
more than one instance of something that forms a tier. Examiner finds in the
alternative that Reich-Weiser paragraph 77 describes such a tier of suppliers.
2 Tier, THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE,
(5th ed. 2016), https://www.ahdictionary.com/word/search.html?q=tier
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Application 13/562,735
Id. We find no such description. Instead, Reich-Weiser paragraph 77
describes a table where each row corresponds to a supplier with no
separation and aggregation into tiers. Each independent claim recites a
similar limitation regarding tiers.
CONCLUSIONS OF LAW
The rejection of claims 1-18 under 35 U.S.C. § 103(a) as unpatentable
over Reich-Weiser is improper.
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 1-18 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claim 1 is a method claim of four steps, viz. (1) identifying a number of
tiers; (2) mapping the activity; (3) determining a final demand output for the
activity; and (4) determining an environmental impact for each supplier.
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
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Application 13/562,735
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. Ltd. v CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case's claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The preamble to claim 11 recites that it is for determining supplier
environmental impact. The four steps in claim 11 result in determining
supplier environmental impact. The Specification at paragraphs 1 and 5-7
recite that the invention relates to determining supplier environmental
impact. Thus, all this evidence shows that claim 1 is directed to determining
supplier environmental impact.
It follows from prior Supreme Court cases, and Gottschalk v. Benson,
409 U.S. 63 (1972) in particular, that the claims at issue here are directed to
an abstract idea. Like the algorithm in Gottschalk, determining some
representation of an impact is a mathematical algorithm that preempts all
implementations and uses. Thus, determining supplier environmental
impact is an "abstract idea" beyond the scope of§ 101. See Alice Corp. Pty.
Ltd., 134 S. Ct. at 2356.
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As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of performing a mathematical algorithm in Gottschalk
and the concept of determining supplier environmental impact at issue here.
Both are squarely within the realm of "abstract ideas" as the Court has used
that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357. That the claims do
not preempt all forms of the abstraction or may be limited to the abstract
idea in the environmental impact setting do not make them any less abstract.
See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-1361 (Fed.
Cir. 2015). Perhaps more to the point, claim 1 does no more than offer
advice as to how to measure an arbitrary value referred to as an impact.
Advice as such is a disembodied concept that is the epitome of abstraction.
The remaining method claims merely describe further data sources or
data selection targets.
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
eligibility. This conclusion accords with the preemption
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concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (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 Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data and compute a result from a database amounts to
electronic data query and retrieval---one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellant's method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants' method claims
simply recite the concept of advising one of how to evaluate some impact
measure as performed by a generic computer. The method claims do not, for
example, purport to improve the functioning of the computer itself. Nor do
they effect an improvement in any other technology or technical field.
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Instead, the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of selecting a part using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] . . . against" interpreting § 101
"in ways that make patent eligibility 'depend simply on the
draftsman's art. '"
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360 (alterations in original).
DECISION
The rejection of claims 1-18 is reversed.
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 1-18 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Our decision is not a final agency action.
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." 37 C.F.R. § 41.50(b) also provides:
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When the Board enters such a non-final decision, the appellant,
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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can
be found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED
37 C.F.R § 41.50(b)
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