Ex Parte Davenport et al

Patent Trial and Appeal Board

Aug 24, 2017

12954051 (P.T.A.B. Aug. 24, 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.
12/954,051 11/24/2010 Andrew J. Davenport END920100159US1 4639
79980 7590 08/
Keohane & D'Alessandro
1881 Western Avenue Suite 180
Albany, NY 12203
EXAMINER
LOFTIS, JOHNNA RONEE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
drubbone @ kdiplaw. com
Docket @ Kdiplaw .com
lcronk @ kdiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW J. DAVENPORT, ARUN HAMPAPUR,
SHILPA N. MAHATMA, and LEXING XIE
Appeal 2016-0031531
Application 12/954,051
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 3, 4, 7, 10, 11,
13, 14, 17, and 23. We have jurisdiction to review the case under 35 U.S.C.
§§ 134 and 6.
1 The Appellants identify International Business Machines Corp. as the real
party in interest. Appeal Br. 1.
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Application 12/954,051
The invention relates generally to estimating failure risk, and
combining the risk with location information to create a maintenance
schedule. Spec. 12.
Claim 1 is illustrative:
1. A method for preventative maintenance comprising the
computer-implemented steps of:
structuring a system of hardware components in an
arrangement that performs the preventive maintenance, the
structuring comprising:
directly coupling, via one or more selected
hardware components, a location based asset/service
failure risk estimator - elevation based flooding risk
element and a location based asset/service failure risk
estimator - vandalism risk element to an external risk
estimates database that is directly coupled to, and feeds
into, an integrated failure risk database;
directly coupling, via one or more selected
hardware components, an asset database, maintenance
database and environment factors database to an intrinsic
failures risk estimator, which is directly coupled to an
integrated failure risk database;
directly coupling, via one or more selected
hardware components, location based asset/service failure
risk estimator - tree damage risk element, which directly
feeds the external risk estimates database;
retrieving the following from one or more databases:
identifying information about a plurality of assets,
maintenance records for each of the plurality of assets, and one
or more environmental factors for each of the set of plurality of
assets;
inputting the identifying information about the plurality of
assets, the maintenance records for each of the plurality of assets,
and the one or more environmental factors for each of the
plurality of assets into an intrinsic failure risk estimator to
determine an estimated intrinsic risk of failure of each asset of a
plurality of assets;
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Application 12/954,051
inputting, to the integrated failure risk database, the
estimated intrinsic risk of failure of each asset of the plurality of
assets determined by the intrinsic failure risk estimator;
retrieving, from the location based asset/service failure
risk estimator, the following information: an elevation-based
risk of flooding determined for each of the plurality of assets, and
a risk of deliberate damage determined for each of the plurality
of assets;
combining, in the external risk estimates database, the
elevation-based risk of flooding determined for each of the
plurality of assets, and a risk of deliberate damage determined
for each of the plurality of assets;
inputting, to the integrated failure risk database, the
elevation-based risk of flooding determined for each of the
plurality of assets and the risk of deliberate damage determined
for each of the plurality of assets combined in the external risk
estimates database;
retrieving, from a scheduling constraints database, each of
the following information about the plurality of assets: a
capability of maintenance personnel to perform maintenance on
each asset of the plurality of assets, wherein the capability is
based on an availability of the maintenance personnel and an
availability of maintenance resources relative to each asset of the
plurality of assets, and vendor contractual information about a
set of contracts with the maintenance personnel including
purchase, lease, rental, and warranty contracts;
combining the estimated intrinsic risk of failure of each
asset of the plurality of assets output from the intrinsic failure
risk estimator, the combined elevation-based risk of flooding
determined for each of the plurality of assets and the risk of
deliberate damage determined for 12/954,051 21 each of the
plurality of assets, the capability of maintenance personnel to
perform maintenance on each asset of the plurality of assets, and
the vendor contractual information;
inputting, to a scheduler, the combined estimated intrinsic
risk of failure of each asset of the plurality of assets output from
the intrinsic failure risk estimator, the elevation-based risk of
flooding determined for each of the plurality of assets and the
risk of deliberate damage determined for each of the plurality of
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assets, the capability of maintenance personnel to perform
maintenance on each asset of the plurality of assets, and the
vendor contractual information;
determining, by the scheduler, a preventative maintenance
schedule for the plurality of assets; and
storing the preventative maintenance schedule.
The Examiner rejected claims 1, 3, 4, 7, 10, 11, 13, 14, 17, and 23
under 35U.S.C. § 101 as being directed to ineligible subject matter in the
form of an abstract idea.
We AFFIRM.
ANAFYSIS
We are not persuaded by the Appellants’ argument of error on the part
of the Examiner because, according to the Appellants, the claimed invention
is “rooted in computer technology,” about computers, performed by
computers over computer networks, to overcome a problem specifically in
the realm of computers, that a human could not execute mentally “within a
reasonable amount of time,” to “solve a problem in a way which previously
did not exist.” Appeal Br. 17—19. The Appellants additionally argue “the
claimed invention, by customizing a maintenance schedule that can keep the
assets functioning correctly, does ‘. . . improve the functioning of the
computer itself (e.g., the plurality of assets).” Reply Br. 1.
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 implicit
exceptions: “[ljaws of nature, natural phenomena, and abstract ideas” are
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not patentable. E.g., Alice Corp. Pty. Ltd. v. CLSBanklnt’l, 134 S.Ct. 2347,
2354 (2014).
In determining whether a claim 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
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. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values”); Gottschalkv. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
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curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 67.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S.Ct. at 2355. 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.
Claim 1 recites that software estimator modules are linked via
computer hardware to databases containing data, that estimators estimate
various types of risk based on the stored data, that the determined risks are
combined, and that a schedule is generated using the determined data along
with other stored data.
The Appellants direct us to paragraphs 20 and 25—27, and Figure 3, in
support of the connecting, combining, and schedule determining steps of
claim 1. Appeal Br. 2-A. Paragraphs 20 and 25—27 describe the connecting
as being done by “connect[ing],” the “combining” being done by a step that
“combines the estimation with causative factors,” and a last step to
“combine the intrinsic parameters with causative factors such as weather and
independent external risk factors like vandalism and risk of flooding, as an
example.” Spec. Tflf 25—27. The Specification describes that the determining
of a schedule is performed by a step “to determine a preventative
maintenance schedule.” Id. 127. We, thus, construe the “connecting” as
normal links in a computer between application software logic and data,
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“combination” as the aggregating of data, and the “scheduling” as the
organization of the data.
Claim 1 is, thus, directed to storing and organizing information using
a computer.
This is very much like the method found to be an abstract idea in
Cyberfone, where the Court held that “using categories to organize, store,
and transmit information is well-established,” and “the well-known concept
of categorical data storage, i.e., the idea of collecting information in
classified form, then separating and transmitting that information according
to its classification, is an abstract idea that is not patent-eligible.” Cyberfone
Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 992
(Fed. Cir. 2014). Here, as in Cyberfone, information is stored and
organized, and claim 1, therefore, merely recites an abstract idea.
The Federal Circuit has held that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under § 101.”). Additionally, mental processes, e.g.,
estimating risk and determining a schedule, as recited in claim 1, remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. Id. at 1375 (“That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson,
[409 U.S. 63 (1972)].”).
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The method of claim 1, if the requirements to use a computer are set
aside, could be performed by a human using mental thought and pen and
paper. Although this method would be slower, a person could make the
same risk estimations, combine the same data, and generate and store a
schedule using the data. Thus, without the simple requirement to use a
computer, claim 1 is also an abstract idea because it is a method that can be
performed by a human.
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, the claim 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.
Claim 1 recites coupling using “hardware components,” and the use of
“databases.” The Specification describes a data processing system where a
“processor” is connected to “memory” via a “bus.” Spec. 122. The
Specification further describes “[mjemory 110 may further include External
Risk Estimates Database 142 for collecting and storing the external risks
estimates.” Id. The Specification describes at least one database “maintains
data.” Id. 126. We agree with the Examiner that the claims, when read in
light of the Specification, broadly recite the use of a generic computer and
storage of data. Answer 3. These components do not constitute an inventive
concept. “[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. The bare fact that a computer exists in the physical rather than
purely conceptual realm is beside the point.” DDR Holdings, LLC v.
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Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted).
Nothing in claim 1 purports to improve computer functioning or
“effect an improvement in any other technology or technical field.” Alice,
134 S. Ct. at 2359. For example, although the Appellants argue otherwise,
they have not advanced persuasive evidence or reasoning that merely
creating and storing a schedule, as recited by claim 1, has any positive effect
on any technology or industry, since the claims do not require the use of any
schedule, nor is there any comparison with alternatives. Reply Br. 1. Nor
do claims solve a problem unique to the Internet. See DDR Holdings, 773
F.3d at 1257. The claims also are not adequately tied to “a particular
machine or apparatus.” Bilski v. Kappos, 561 U.S. 593, 601 (2010).
Because claim 1 is directed to an abstract idea, and nothing in the
claim adds an inventive concept, the claim is not patent-eligible under § 101.
Dependent claim 3 refines the nature of one element of data to “weather,”
but does not alter the analysis. Therefore, we sustain the Examiner’s
rejection of claims 1 and 3 under 35 U.S.C. § 101. Although independent
method claim 14 explicitly requires each step to be performed by a
“computer,” this is also a generic computer when read in light of the
Specification. Therefore, we also sustain the rejection of independent
method claim 14 under 35 U.S.C. § 101.
We discern no meaningful distinction between independent method
claims 1 and 14, and either independent system claims 4 and 17, or
independent computer-readable storage device claim 11; the claims all are
directed to the same underlying invention. Therefore, we also sustain the
rejection of claims 4, 11, and 17 under 35 U.S.C. § 101, as well as dependent
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claims 7, 10, 13, and 23 whose limitations do not alter the analysis above.
As the Federal Circuit has made clear “the basic character of a process claim
drawn to an abstract idea is not changed by claiming only its performance by
computers, or by claiming the process embodied in program instructions on
a computer readable medium.” See CyberSource, 654 F.3d at 1375—76
(citing In reAbele, 684 F.2d 902 (CCPA 1982)).
DECISION
We affirm the rejection of claims 1,3,4, 7, 10, 11, 13, 14, 17, and 23
under 35 U.S.C. § 101.
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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