Ex Parte CRAWLEY et al

Patent Trial and Appeal Board

Dec 19, 2018

13678456 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/678,456 11/15/2012
26379 7590 12/21/2018
DLA PIPER LLP (US )
2000 UNIVERSITY A VENUE
EAST PALO ALTO, CA 94303-2248
FIRST NAMED INVENTOR
EdwardF. CRAWLEY
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.
380218-991101 4410
EXAMINER
GUILIANO, CHARLES A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
12/21/2018 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):
PatentDocketing US-PaloAlto@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD F. CRAWLEY, CY HOADLEY KILBOURN, ZIV
ROZENBLUM, AMOS BENNINGA, NICK SISLER,
and BLAKE BISSON
Appeal2017-006372
Application 13/678,456 1
Technology Center 3600
Before ELENI MANTIS MERCADER, JOHNNY A. KUMAR and
JENNIFER S. BISK, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL 2
Appellants, listed above, seek our review under 35 U.S.C. § 134(a) of
the Examiner's rejection of claims 1-21. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
1 Appellants identify the real party in interest as Ekotrope. App. Br. 1.
2 Throughout this Decision we have considered the Specification filed
November 15, 2012 ("Spec."), the Final Rejection mailed September 3, 2015
("Final Act."), the Appeal Brief filed October 3, 2016 ("App. Br."), the
Examiner's Answer mailed January 10, 2017 ("Ans."), and the Reply Brief
filed March 10, 2017 ("Reply Br.").
Appeal2017-006372
Application 13/678,456
STATEMENT OF THE CASE
Appellants' invention relates to determining building components.
Spec. 1: 13-14. For example, identifying the best building materials for
energy efficient buildings. Id. at 2:1-13.
Claim 1 is illustrative:
1. A green building design determining system, comprising:
a computer-implemented green building unit;
one or more client computing devices, each client
computing device having a processor and memory
and being capable of connecting to the green
building unit over a link; and
the green building unit having a decision engine that
receives a set of building related inputs for a
building project for each client, determines all
designs that meet the set of building related inputs
and generates a display with all of the designs for
the building project for the client that comply with
a utility function associated with the particular
building project, wherein the utility function
generates a score based on a desire of the client, a
financial goal of the client, environmental
awareness of the client and code requirements of
the client.
THE REJECTIONS
1. The Examiner rejected claims 1-21 under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 15-16.
2. The Examiner rejected claims 1-21 under 35 U.S.C. § 103(a) as being
unpatentable over Kennedy (US 2004/0239494 Al, published Dec. 2, 2004)
and Teller (US 2012/0323535 Al, published Dec. 20, 2012). Final Act. 16-
25.
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ANALYSIS
THE§ 101 REJECTION
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. For the following reasons, we
sustain the Examiner's rejection.
For purposes of the§ 101 rejection, Appellants argue all the claims as
a group. See App. Br. 4--12. We select claim 1 as representative. Claims 2-
21 stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Legal Framework
To determine whether claims are patent eligible under§ 101, we apply
the Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd.
v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of nature,
natural phenomena, and abstract ideas. Id. at 2354--55. If so, we then
proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
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Application 13/678,456
Alice Step One
The Examiner concludes that the claimed invention is directed to "the
abstract ideas of fundamental economic activities and mathematical
relationships/formulas, namely analyzing costs of alternative building
designs based on a function." Final Act. 15. The Examiner compares the
claims to those at issue in Electric Power, stating that the claims "analyz[ e]
costs of alternative building designs based on a function." Ans. 5 ( citing
Electric Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)).
Appellants contend that "the claims at issue are directed to a green
building design determining system and method which is clearly not a
fundamental economic principle (financial risk hedging) that existed for
hundreds of years before the claims." App. Br. 10. According to
Appellants, "the present claims are directed to improving an existing
technological process (green building design)" similar to the claims found
patent-eligible in McRO. Id. at 10-11 (citing McRO, Inc. v. Bandai Namco
Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Appellants also
contend that the "present claims are limited to a specific process" and do not
pre-empt a general idea. Id. at 11; Reply Br. 1-2.
We agree with the Examiner that claims 1-21 are all directed to an
abstract idea-analyzing alternative green building designs using a utility
function, where the utility function is a mathematical determination. Spec.
9:1-7 ("The utility function can be one goad, a set of weighted goals that
include cost, desired payback, environmental goals, convenience etc. (For
example, a utility function can be defined as a sum of 20% upfront cost
reduction, 30% payback period reduction, 50% CO2 emission reduction) ...
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."); see also App. Br. 11 ("[T]he present claims are directed broadly to
building design that may be an abstract idea like the content filtering in
Bascom."). Our reviewing court has found similar methods to be abstract
ideas. In particular, we find the claims similar to those found to be directed
to an abstract idea in Electric Power, which did "not go beyond requiring the
collection, analysis, and display of available information in a particular field,
stating those functions in general terms, without limiting them to technical
means for performing the functions that are arguably an advance over
conventional computer and network technology." Elec. Power, 830 F.3d at
13 51. "[W]e have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas." Elec. Power, 830 F.3d at 1353 (citations
omitted); see also Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC.,
874 F.3d 1329, 1337-38 (Fed. Cir. 2017) (concluding claims directed to the
functional results of accumulating, converting, and monitoring records
manipulate data "but fail[] to do so in a non-abstract way"); Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d
1343, 1345, 1347 (Fed. Cir. 2014) (concluding the "claims generally recite .
. . extracting data ... [ and] recognizing specific information from the
extracted data" and that the "claims are drawn to the basic concept of data
recognition").
Similar to the claims at issue in Electric Power, the claimed invention
here gathers, manipulates, and analyzes information of a specified content,
but does not use any particular inventive technology for performing those
functions. That the information pertains to green building designs is of no
consequence here, for collecting and analyzing such information does not
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make the collection and analysis non-abstract. See SAP America, Inc. v.
Investpic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018), modified on reh 'g
(Fed. Cir. Aug. 2, 2018). Moreover, we are not persuaded that by reciting a
"decision engine" that uses a "utility function," Appellants have
distinguished their claims from those of Electric Power. See Reply Br. 1
( arguing that the claimed utility function "is the technical means to perform
the function of 'collecting information, analyzing it and displaying certain
results' so that the Electric Power Group case is not persuasive").
Nor are we persuaded that the claimed invention improves the
processor's functionality or efficiency, or otherwise changes the way that
device functions, at least in the sense contemplated by the Federal Circuit in
Enfzsh, LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016),
despite Appellants' arguments to the contrary (App. Br. 26-27). The
claimed self-referential table in Enfzsh was a specific type of data structure
designed to improve the way a computer stores and retrieves data in
memory. Enfzsh, 822 F.3d at 1339.
Nor do we find Appellants' reliance on McRO, Inc. v. Bandai Namco
Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) (App. Br. 26-27, 29--
30) persuasive. There, the claimed process used a combined order of
specific rules that rendered information in a specific format that was applied
to create a sequence of synchronized, animated characters. McRO, 837 F.3d
at 1315. Notably, the recited process automatically animated characters
using particular information and techniques-an improvement over manual
three-dimensional animation techniques that were not directed to an abstract
idea. Id. at 1316.
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But unlike McRO that improved how the physical display operated to
produce better quality images, the claimed invention here analyzes
information to determine the desirability of a design based on certain
goals-a determination that is not only directed to a fundamental economic
practice, but also does not improve a display mechanism as was the case in
McRO. Although the claimed invention requires computer components, it is
the incorporation of those components-not a claimed rule-that
purportedly improves the existing process. Cf Fair Warning IP, LLC v.
Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016).
In short, the claimed invention does not solve a technical problem, but
rather solves a business problem, namely analyzing green building designs.
Ans. 5-8. The Examiner's point in this regard is well taken. Although the
claimed invention may be beneficial as Appellants contend, a claim for a
useful or beneficial abstract idea is still an abstract idea. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379-80 (Fed. Cir.
2015).
We, therefore, agree with the Examiner that the claims are directed to
an abstract idea.
Alice Step Two
Because the claims are directed to an abstract idea, we proceed to step
two to determine whether the claims include additional limitations that
individually, or as an ordered combination, ensure the claims amount to
"significantly more" than the abstract idea. Alice, 134 S. Ct. at 2357. For
example, we look at whether the claims focus on a specific means or method
that improves the relevant technology or instead are directed to a result or
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effect that, itself, is the abstract idea and merely invoke generic processes
and machinery. See Enfzsh, 822 F.3d at 1336.
The Examiner concludes the claimed elements, either individually or
as an ordered combination, do not add significantly more to the abstract idea
such that the claimed invention is rendered patent-eligible. Final
Act. 15-16; Ans. 8-10. The Examiner adds that the decision engine adds
no more than mere instructions to apply or implement the
abstract idea using a generic computer and generic computer
functions and appending to the recited abstract idea a recitation
of well-understood routine and conventional activities
previously known to the industry, which is not sufficient to
transform an abstract idea into a patent eligible invention.
Ans. 9 (citing Spec 4:7-16).
Appellants argue the claims recite additional elements that amount to
significantly more than the identified abstract idea. App. Br. 11-12.
According to Appellants, the claims are like those found patent-eligible in
Bascom in that they "are a technical improvement over the prior art ways of
green building design." App. Br. 11.
We agree with the Examiner that the claims recited additional
elements that are no more than instructions to apply the abstract idea using
generic hardware and software. See Ans. 7-10. Unlike the claims found
patent-eligible in Enfzsh, the focus of the claims here is not on such an
improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools. Enfzsh, 822 F.3d at 1335-36.
Moreover, the analysis of Alice's step two is not an evaluation of
noveltv or nonobviousness. but rather. a search for "an element or
N ; ;
combination of elements that is ·sufficient to ensure that the patent in
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practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 134 S. Ct. at 23 5 5 ( alteration in original) ( quoting
}.;Jayo Collaborative Servs. v. Prornetheus Lab., 132 S. Ct. 1289, 1294
(2012)). The question in the second step is not vvhether the claimed
invention is noveL but rather whether the implementation of the abstract idea
invo1ves '"rnore than perfon:nance of 'well-understood, routine, [and]
conventional activities previously known to the industry.'" Content, 776
F.3d at 1347---48 (quoting Alice, 134 S. CL at 2359).
Consequently, even ifwe were to agree with Appellants that the claim
recites a particularly novel and useful method for green building design, the
Examiner determines, and Appellants do not persuasively refute, that the
computer implementation of the claimed methodology requires only
computer equipment and functions that are well-understood, routine, and
conventional, such as storing, receiving, processing, and displaying data.
Final Act. 3---6; Ans. 7-10; see, e.g., 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."); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir.
2014) (quoting Alice, 134 S. Ct. at 2357) ("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."');
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355 (Fed. Cir. 2014)
(finding computer-implemented system for guaranteeing performance of an
online transaction to be ineligible).
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That the Specification indicates that standard off-the-shelf computer
technology is usable to implement the claimed invention only bolsters the
notion that the claimed invention does not focus on an improvement in
computers as tools, but rather certain independently abstract ideas that use
computers as tools. Spec. 4:1-27, see Elec. Power, 830 F.3d at 1354.
We do not find Appellants' reliance on Bascom persuasive. Reply
Br. 7 (citing BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016)). In BASCOM, the claims were generally
directed to filtering content. 827 F.3d at 1348. Although the court
determined the claims recited generic computer, network, and Internet
components that were not inventive by themselves, the court found the
ordered combination of the limitations provided the requisite inventive
concept. Id. at 1349-1350 ("[A]n inventive concept can be found in the
non-conventional and non-generic arrangement of known, conventional
pieces"). There, the patent extensively claimed and explained how a
particular arrangement of elements was "a technical improvement over prior
art ways of filtering such content." Id. at 1350 ("According to BASCOM,
the inventive concept harnesses this technical feature of network technology
in a filtering system by associating individual accounts with their own
filtering scheme and elements while locating the filtering system on an ISP
server."). Here, other than providing general conclusory statements,
Appellants do not persuasively explain how the claims are similar to those in
BASCOM.
Lastly, we find unavailing Appellants' contention that the claims are
patentable because they do not pre-empt a general idea. App. Br. 11.
Where, as here, the claims cover a patent-ineligible concept, preemption
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concerns "are fully addressed and made moot" by an analysis under the
Alice framework. See Ariosa, 788 F.3d 1371, 1379 (Fed. Cir. 2015). The
Examiner's point in this regard is well taken. See Ans. 13.
For the foregoing reasons, then, the recited elements----considered
both individually and as an ordered combination----do not contain an
"inventive concept" sufficient to transform the claimed abstract idea into a
patent-eligible application.
Conclusion
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 1-21 under § 101.
THE § 103 REJECTION
The Examiner rejects claims 1-21 as obvious over the combination of
Kennedy and Teller. Final Act. 16-25; Ans. 11-17. Appellants direct their
arguments to the limitations of independent claims 1 and 14. See App. Br.
20-22; Reply Br. 2-5. Claims 2-13 and 15-21 stand or fall with claims 1
and 14. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 1 and 14 recite receiving a set of user parameters for a client,
which include "a desire of the client, a financial goal of the client,
environmental awareness of the client and code requirements of the client"
(the "receiving parameters" limitation). The Examiner relies on Kennedy
for receiving parameters, including energy efficiency, cost savings, project
cost, for a building design using a GUI. Final Act. 17 ( citing Kennedy
,r,r 20-26, 71), 22 (citing Kennedy ,r,r 30, 67-70, Fig. 6); Ans. 11 (citing
Kennedy Fig. 6, ,r 67), 13. Because Kennedy does not explicitly disclose
"wherein the utility function generates a score based on a desire of the client,
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a financial goal of the client, environmental awareness of the client," the
Examiner relies on Teller's disclosure of various parties, including
architects, developers, and property tenants collaborating to enter design
details. Final Act. 18 (citing Teller Figs. 2, 7, ,r,r 44, 56, 60), 23; Ans. 14--15
( citing Teller ,r,r 30, 43--44, 48--49, 65). The Examiner explains that "one of
ordinary skill in the art understands that developers are clients are
architects." Ans. 14; see also Ans. 15 ("Examiner interprets 'the client'
recited in the claims of the present invention includes 'the developer' of a
structure discussed in Teller.").
Appellants argue that the cited references do not teach the receiving
parameters limitation because "Kennedy only discloses that optimization
occurs on a single model using a parameter" and "the parameters used to
generate the quality or fitness function ( alleged to be akin to the claimed
utility function score) in Teller are static" and not different for each client.
App. Br. 12-15 (citing Kennedy ,r,r 21, 22, 25, 30; Teller ,r,r 56, 59; Reply
Br. 2-5). 3
Appellants' arguments do not persuade us of Examiner error because
they attack the references individually, while the Examiner relies on the
combined disclosures in the references to reject the independent claims. See
Final Act. 16-18, 22-24. Where a rejection rests on the combined
disclosures in the references, an appellant cannot establish nonobviousness
by attacking the references individually. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Here, the combined disclosures in Kennedy
3 We note that Appellants' arguments regarding the§ 103 rejection in the
Reply Brief appear to be exactly the same as those in the Appeal Brief.
Compare App. Br. 12-15; Reply Br. 2-5.
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and Teller teach the disputed receiving parameters limitation. See Final
Act. 16-18, 22-24; Ans. 11-17.
Moreover, we agree with the Examiner (Ans. 12-13) that Kennedy is
not restricted to optimizing based on a single parameter. For example,
Kennedy states that "model parameters can be adjusted prior to performing
an energy analysis (or 'simulation run') of one or more buildings" and
"[ e Jach parameter can be held constant or restricted to a range of possible
values." Kennedy ,r 67 (emphasis added). In addition, Kennedy discusses
running multiple simulations "to exhaust all combinations of parameters
and/or to optimize a given set of building features" and ranking results
according to "criteria such as energy efficiency, cost savings, project cost,
and/or other suitable factors." Id. ,r 70 (emphases added).
We also agree with the Examiner (Ans. 14--16) that Teller is not
restricted to static parameters that are not variable for different users. Teller
states that "[ s ]ystem 50 may provide each user with a customizable attributes
quantification interface" and "[i]n general, attributes of a structure will be
the same across users ... [t]he ability to change attributes would be a matter
of permission within the system." Teller ,r,r 55, 59. We agree with the
Examiner that "even though the attributes may be the same across all users
of the system for a particular structure, the attributes may also be different
for each user and need not be the same for each developer (i.e. client) across
different structures." Ans. 16.
For these reasons, we are not persuaded of any error in the Examiner's
rejection of independent claims 1 and 14. Appellants do not argue claims 2-
13 and 15-21 separately with particularity. App. Br. 13, 15; Reply Br. 3, 5.
Thus, for the same reasons as discussed with respect to independent claims 1
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and 14, Appellants' arguments are not persuasive of any error in the
Examiner's determination.
DECISION
We affirm the Examiner's decision to reject claims 1-21.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
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