Ex Parte DeRieux et al

Patent Trial and Appeal Board

Dec 20, 2018

11836173 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/836,173 08/09/2007
26384 7590 12/20/2018
NAVAL RESEARCH LABORATORY
AS SOCIA TE COUNSEL (PA TENTS)
CODE 1008.2
4555 OVERLOOK A VENUE, S.W.
WASHINGTON, DC 20375-5320
FIRST NAMED INVENTOR
David A. DeRieux
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.
98625-USl 2737
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
12/20/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. DERIEUX and MICHAEL MANNING
Appeal2017-008238
Application 11/836, 173
Technology Center 3600
Before MAHSHID D. SAADAT, DENISE M. POTHIER, and
JAMES W. DEJMEK, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 15-17, which are all the claims pending in this application. 2 We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the Government of the United States of America, as
represented by the Secretary of the Navy, as the real party in interest. Br. 3.
2 Claims 1-14 have been previously canceled.
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Application 11/836, 173
STATEMENT OF THE CASE
Introduction
Appellants' Specification describes "a system and method to account
for first responders in a hazardous environment." Spec. 1: 5-7.
Exemplary Claim
Claim 15 is illustrative of the invention and reads as follows.
15. A method of automatically identifying a plurality
of first responders during a response to a hazardous site, the
plurality of first responders wearing a corresponding plurality
of active RFID transponders, the method comprising:
polling the plurality of active RFID transponders with an
active RFID reader on at least one first responder vehicle of a
plurality of first responder vehicles, when the at least one first
responder vehicle is powered up, thereby generating an
electronic ride list corresponding to the polled plurality of
active RFID transponders, the active RFID reader
communicating with a computer processor and coupled to a
display device;
continuously polling the plurality of active RFID
transponders with the active RFID reader, while the at least one
first responder vehicle is powered up, thereby generating a real-
time roll call list corresponding to the continuously polled
plurality of active RFID transponders;
generating by the computer processor an unaccounted
personnel list, after comparing the real-time roll call list with
the electronic ride list;
providing from the at least one first responder vehicle by
the computer processor the electronic ride list, the real-time roll
call list, and the unaccounted personnel list to a central database
comprising a host computer via a wireless data communication
system disposed on the at least one first responder vehicle;
generating by the host computer an aggregated ride list
for the hazardous site at the central database based on the
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electronic ride list, the real-time roll call list, and the
unaccounted personnel list from the plurality of first responder
vehicles;
generating by the host computer a missing personnel list,
after the unaccounted personnel list is compared with the
aggregated ride list;
transmitting the missing personnel list from the host
computer to the computer processor; and
displaying the missing personnel list on the display
device in the at least one first responder vehicle at the
hazardous site.
The Examiner's Rejections
Claims 15-17 stand rejected under 35 U.S.C. § 101 for being directed
to patent-ineligible subject matter. Final Act. 2--4.
Claims 15-17 stand rejected under 35 U.S.C. § I02(e) as anticipated
by McClanahan (US 2008/0297341 Al; pub. Dec. 4, 2008). Final Act. 5-7.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments ( Appeal Brief) that the Examiner has erred. We are unpersuaded
by Appellants' contentions and agree with and adopt the Examiner's
findings and conclusions in (i) the action from which this appeal is taken
(Final Act. 2-7) and (ii) the Answer (Ans. 2-8) to the extent they are
consistent with our analysis below.
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REJECTION UNDER 35 USC§ 101
Principles of Law
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 79 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If
the claims are not directed to a patent-ineligible concept, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered "individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting
Mayo, 566 U.S. at 79, 78). We, therefore, look to whether the claims focus
on a specific means or method that improves the relevant technology or
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instead are directed to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery. See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Alice Step 1
Considering the first part of the Alice/ Mayo analysis, the Examiner
concludes the claims are directed to the abstract idea of "Collecting and
Saving Data from Users (RFID Polling Data - Electronic Ride List),
Continuously Collecting and Saving Data from Users (RFID Polling Data -
Real-time Roll Call List)" and "Comparing saved data based on saved rules
(Electronic Ride List vs. Real-time Roll Call List), Transmitting results of
data comparison (missing personnel list) to central database, Collecting and
saving data (aggregated missing personnel data), Generating/Transmitting
aggregated missing personnel based on saved rules." Final Act. 2-3. The
Examiner finds the recited steps are similar to methods of organizing human
activities including organizing and transmitting information, and comparing
new and stored information (similar with court-defined abstract idea in
SmartGene). 3 Final Act. 3.
Appellants contend the Examiner erred. See Br. 6-7. Appellants
argue the claims "do not define human organization in some academic
fashion or abstract data manipulation for the sake of mere academic
interest," which allows "alerting first responders that a member of their own
is unaccounted for or is missing at a hazardous site." Br. 6. Appellants
further argue the claimed subject matter overcomes problems of"[ w ]hen the
[firefighters] left the hazardous site, there was no way for their incident
3 We understand the Examiner as referring to SmartGene, Inc. v. Advanced
Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014).
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commanders to know automatically whether any [firefighter], who did not
return to his original vehicle, was missing or was on another truck." Id.
We agree with the Examiner that the claims are directed to a method
of organizing human activity including: obtaining location information of
individuals ("polling the plurality of active RFID transponders"), processing
the information ("generating ... an unaccounted personnel list," "providing .
. . the real-time roll call list," and "generating ... a missing personnel list"),
and presenting the processed information ("transmitting" and "displaying the
missing personnel list"). See Final Act. 2-3. In SmartGene, the Federal
Circuit determined that claims for "comparing new and stored information
and using rules to identify medical options" were directed to an abstract
idea. 555 F. App'x at 951-52, 954--55. Also, like the claims here, the
claims in SmartGene required a computer and a database, i.e., a "computing
device," databases (e.g., knowledge bases) for storing information and rules,
andgenerating information based on the database information and rules See
id. at 951-52.
Appellants' claims recite the abstract idea of obtaining data from
RFID transponders and generating lists of real-time roll call and missing
personnel along with generic computer terminology ( e.g., "transponders,"
"computer processor," "display," etc.). Thus, the claims are merely directed
to the automation of manually obtaining presence data from transponders
and processing a computer and database, i.e., a "host computer," and a
central database's "unaccounted personnel list," a "real-time roll call list,"
and a "missing personnel list" described in Appellants' Specification (see,
e.g., Spec. pp. 4--6) using generic computer components. Such an
"improvement" in automating the process of data collection is not a
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patentable improvement in computer technology. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
Moreover, as stated by the Examiner, our reviewing court has found
similar methods to those in claim 15 to be abstract ideas. See Ans. 3. 4
"[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 Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) (citations omitted). "In a similar vein,
we have treated analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category." Id. at 1354. "And we have
recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis." Id.
4 In addition to the decision in Electric Power, the Examiner also relies on
the following decisions as examples of abstract idea:
Data recognition and storage ( Content Extraction and Transmission LLC v.
Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014)); Collecting and
analyzing information to detect misuse and notifying a user when misuse is
detected (FairWarning IP v. Iatric Systems, 839 F.3d 1089 (Fed. Cir. 2016));
Processes of organizing information that can be performed mentally
(Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344
(Fed. Cir. 2014)); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307 (Fed. Cir. 2016)); Obtaining and comparing intangible data
(CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011)). Ans. 3--4.
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Alice Step 2
Because the claims are directed to an abstract idea, we tum to the
second part of the Alice/ Mayo analysis. We analyze the claims to determine
if there are 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.
The Examiner determines:
The claims do not recite additional elements that are sufficient
to amount to significantly more than the judicial exception
because: (A) the additional elements or combination of
elements in the independent claims are recitation of generic
computer structure (i.e. a processor to execute instructions to
perform the method), which serves to perform generic computer
functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry, and do not
add a meaningful limitation to the abstract idea because they
would be routine in any computer implementation. The
processor system in the instant application merely receives,
processes and stores data.
Final Act. 3. Relying on page 3 of Appellants' Specification, the Examiner
finds the recited term "active RFID" and other computer and network
components are described as known and conventional such that "[t]aking the
additional claimed elements individually and in combination, the RFID
equipment components at each step of the process perform purely generic
RFID functions/functionality (No new technology has been disclosed,
No new use of well[-]known technology has been disclosed)." Final Act. 4.
Appellants argue that "the claims do not attempt to preempt the use of
generic RFID readers by themselves, host computers by themselves, or
computer processors by themselves in non-claimed fields." Br. 7-8.
Appellants further rely on the utility and the field applications of their active
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RFID for tracking first responders and argue their claims recite elements that
are significantly more than the abstract idea and, therefore, transforms the
claims into patent-eligible subject matter. Br. 8.
In response, the Examiner further explains:
Claims 15-17 recite the limitations of: Collecting and Saving
Data from Users (RFID Polling Data - Electronic Ride List),
Continuously Collecting and Saving Data from Users (RFID
Polling Data - Real-time Roll Call List), Comparing saved data
based on saved rules (Electronic Ride List vs. Real-time Roll
Call List), Transmitting results of data comparison (missing
personnel list) to central database, Collecting and saving data
(aggregated missing personnel data), Generating/Transmitting
aggregated missing personnel based on saved rules[.]
All of the claimed additional features to the abstract idea are
nothing more than a 'well-understood, routine, conventional
activity.'
Ans. 3--4. The Examiner additionally concludes the additional elements
recited in the dependent claims, similar to those of claim 15, "fail to
transform the abstract idea that they recite into patent-eligible subject matter,
because the claims simply instruct the practitioner to implement the abstract
idea with routine, conventional activity." Ans. 4. Relying on pages 4 and 5
of the Specification, the Examiner further determines, no new technology is
recited and the claimed systems and components "are not directed to a
specific improvement to computer functionality/technology." Id.
We agree with the Examiner. Considered "both individually and as an
ordered combination," the computer device and program steps of
Appellants' claims add nothing that is not already present when the steps are
considered separately. See Alice, 134 S. Ct. at 2355 (quotations omitted)
( quoting Mayo, 566 U.S. at 78). Similarly, "collecting, displaying, and
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manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). The claims
do not, for example, purport to improve the functioning of the RFID, the
processor or database, or how a roll call list and a missing personnel list is
created and displayed. In fact, Appellants' Specification describes collecting
data by an "active RFID" as a generic RFID that is available in the market.
See Spec. 5: 12-22. Appellants' Specification does not describe how this
collection of information relates to the functioning of the computer or the
manner an RFID functions. Nor do the claimed steps effect an improvement
in any other technology or technical field. "At best, the claims describe the
automation of the [ abstract idea] through the use of generic-computer
functions." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015). That is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 134 S. Ct. at 2360.
Also, as discussed above, Appellants have not persuasively argued,
nor provided sufficient evidence why the claim recitations regarding polling
the RFID transponders and generating an unaccounted personnel list, a real-
time roll call list, and a missing personnel list are not routine computer
functions. See, e.g., Elec. Power Grp., 830 F.3d at 1355 ("We have
repeatedly held that such invocations of computers and networks that are not
even arguably inventive are insufficient to pass the test of an inventive
concept in the application of an abstract idea.") ( quotations omitted);
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1348 (Fed. Cir. 2016) ("An abstract idea on 'an Internet computer network'
or on a generic computer is still an abstract idea."); Alice, 134 S. Ct. at 2358
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("[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.").
Additionally, lack of preemption does not make the claims any less
abstract. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (collecting cases); Accenture Global Services, GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013); Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility").
We, therefore, sustain the Examiner's rejection of claims 15-17 under
35 U.S.C. § 101.
REJECTION UNDER 35 USC§ 102
Appellants contend McClanahan does not disclose the claimed subject
matter recited in claims 15-17. Br. 9. Appellants argue McClanahan "does
not distinguish a host computer distinct from a computer processor" and
"can only be interpreted as disclosing a host computer at the monitoring
station, and as not disclosing a computer processor handling data processing
elsewhere." Id. Appellants further argue "[h]andling all of the data
processing remotely at the monitoring station may be acceptable for
McClanahan because McClanahan is dealing with an entirely different
problem." Br. 10. Appellants specifically assert
McClanahan is not dealing with the scenario of multiple cruise
ships, all having the same trip itinerary at the same time,
wherein a missing passenger may have gotten off his own ship,
but having boarded a sister cruise ship, or not having boarded
any of the ships. Likewise. McClanahan is not dealing with the
scenario of multiple buses, all having the same field trip
itinerary at the same time, wherein a missing passenger may
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Id.
have gotten off his own bus, but having boarded a sister bus, or
not having boarded any of the buses. McClanahan fails to even
consider how to coordinate data from multiple ships or multiple
buses. Gathering polling data from, for example, the dining
room, the pool, and the exercise room, as in McClanahan, is not
akin to gathering polling data from a plurality of first responder
vehicles, as in the instant invention.
In response, the Examiner explains McClanahan compares
unaccounted personnel list with the aggregated list of passengers using
multiple transponders placed in different areas of the ship. Ans. 7; see also
Final Act. 6. In other words, the Examiner characterizes collecting data
from the transponders in smaller areas in the ship and aggregating the data
from the list corresponding to each area as the recited "generating by the
host computer an aggregated ride list ... from the plurality of first responder
vehicles."
We are persuaded by Appellants' contentions that the Examiner erred.
Although in McClanahan, as stated by Appellants (Br. 10), "a missing
person's identification code is compared to all of the identification codes
transmitted by the transceivers to the monitoring station to determine where
in the ship the identification code is" (see McClanahan ,r,r 9, 13), there is no
"reason to generate a dining room passenger list, a pool passenger list, and
an exercise room passenger list, let alone a reason to generate some warning
if a passenger is missing from the dining room passenger list, the pool
passenger list, or the exercise room passenger list." Id. That is,
McClanahan does not necessarily disclose "generating ... a missing
personnel list, after the unaccounted personnel list is compared with the
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aggregated ride list" and "displaying the missing personnel list," as claim 15
requires. See Br. 12.
Accordingly, we do not sustain the 35 U.S.C. § 102(e) rejection of
claim 15, or claims 16 and 17 dependent therefrom.
DECISION
We affirm the rejection of claims 15-17 under 35 U.S.C. § 101, but
reverse the rejection of claims 15-17 under 35 U.S.C. § 102(e). Because we
have affirmed at least one ground of rejection with respect to each claim on
appeal, the Examiner's rejection of claims 15-17 is affirmed. See 37 C.F.R.
§ 4I.50(a)(l).
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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