Ex Parte Gabrielson

Patent Trial and Appeal Board

Jun 4, 2018

13790376 (P.T.A.B. Jun. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
131790,376
91547 7590
Target Brands Inc.
1000 Nicollet Mall
TPS-3165
FILING DATE
03/08/2013
06/06/2018
Minneapolis, MN 55403
FIRST NAMED INVENTOR
Richard S. Gabrielson
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.
201204479 6476
EXAMINER
ALLEN, AKIBA KANELLE
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
06/06/2018 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):
USPTO.Mail@target.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD S. GABRIELSON
Appeal2017-001248 1
Application 13/790,376
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-20. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to managing the transportation of
freight. Spec. ,-r 24.
1 The Appellant identifies Target Brands, Inc. as the real party in interest.
Appeal Br. 3.
Appeal2017-001248
Application 13/790,376
Claim 7 is illustrative:
7. A computer-implemented method of moving product
from a plurality of product supply locations to a port of origin,
the method comprising:
generating via access to a computer database or computer
network a plurality of planning zones based upon one or more
customs districts;
identifying via the computer database or computer
network a plurality of partial container load product shipments to
be received from a plurality of product supply locations;
field consolidating a full container load from the partial
container load product shipments by generating at least one
multi-stop route within one of the plurality of planning zones;
centrally consolidating a full container load from the
partial container load product shipments by generating a plurality
of consolidator routes from the product supply locations to a
consolidator; and
determining by a computer field consolidation efficiency
by determining a percentage field consolidation based on a first
number of the plurality of partial container load product
shipments and a second number of field consolidated loads
actually built,
wherein the field consolidating step is practiced by
generating the at least one multi-stop route to achieve a
maximum field consolidation efficiency and by dispatching an
inland freight carrier along the multi-stop route to load or unload
the partial load freight shipments to achieve the maximum field
consolidation efficiency.
The Examiner rejected claims 1, 7, and 172 under 35 U.S.C. § 101 as
directed to ineligible subject matter in the form of an abstract idea.
We AFFIRM-IN-PART and enter a NEW GROUND of rejection.
2 The pending claims that depend from independent claims 1, 7, and 1 7 are
not indicated as being rejected. See Final Act. 2-3; Answer 3-5. The
Appellant acknowledges the state of these claims. Appeal Br. 15.
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Application 13/790,376
Claims 1-6
ANALYSIS
Independent claim 1 recites "wherein the means for field
consolidating comprises means for generating the at least one multi-stop
route to achieve a maximum field consolidation efficiency." In support of
this limitation, the Appellant directs us to paragraph 42 of the Specification.
Appeal Br. 5---6.
Paragraph 42 of the Specification describes a "Load Planning
Component 42" that consists of several subcomponents and "utilizes
information from the Profile Maintenance Component 40 to help field
consolidate inland freight shipments into container loads using multi-stop
routes (as opposed to consolidating inland freight shipments at container
freight stations, for example)." Spec. i-f 42. Load Planning Component 42 is
described as a part of Inland Freight Management Module 22, which itself is
a part of System 20. Spec. i-fi-123, 27; Fig. 2. The Specification further
describes that "various features of the System 20 are implemented as
interactive menus presented to one or more system users ... utilizing a user
interface including computer hardware, software, computer readable media,
and related components for displaying and receiving system information
such as a computer work station" (id. i-f 25), and that the menus "allow the
system user to view shipment planning information and make various load
planning and building selections" (id. i-f 44). There is no description,
however, of how the menus operate on the computer, or what algorithms are
provided in the software components and subcomponents to allow the user
to make selections to perform the "field consolidating."
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When there is insufficient description of an algorithm in the
Specification to support a computer-enabled means-plus-function limitation
in a claim, the disclosure will be considered inadequate to explain to one of
ordinary skill in the art what is meant by the claim language.
For computer-implemented means-plus-function claims where the
disclosed structure is a computer programmed to implement an algorithm,
"the disclosed structure is not the general purpose computer, but rather the
special purpose computer programmed to perform the disclosed algorithm."
WMS Gaming, Inc. v. Int'! Game Tech., 184 F.3d 1339, 1349 (Fed. Cir.
1999). Thus, the specification must disclose, at least to the satisfaction of
one of ordinary skill in the art, enough of an algorithm to provide the
necessary structure under§ 112, paragraph 6. The court permits a patentee
to express that algorithm in any understandable terms including as a
mathematical formula, in prose (see In re Freeman, 573 F.2d 1237, 1245--46
(CCPA 1978)), or as a flow chart, or in any other manner that provides
sufficient structure. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323,
1340--41 (Fed. Cir. 2008). Simply reciting software "components," without
providing some detail about the means to accomplish the function, is not
enough. See Aristocrat Techs. Aust!. Pty v. Int'! Game Tech., 521 F.3d
1328, 1333 (Fed. Cir. 2008) ("For a patentee to claim a means for
performing a particular function and then to disclose only a general purpose
computer as the structure designed to perform that function amounts to pure
functional claiming. Because general purpose computers can be
programmed to perform very different tasks in very different ways, simply
disclosing a computer as the structure designated to perform a particular
function does not limit the scope of the claim to 'the corresponding
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structure, material, or acts' that perform the function, as required by section
112 paragraph 6.").
When a Specification discloses no algorithm corresponding to a
computer-enabled means-plus-function limitation in a claim, an applicant
has necessarily failed to particularly point out and distinctly claim the
invention as required by the second paragraph of section 112. See also
Aristocrat, 521 F.3d at 1333 (quoting Harris Corp. v. Ericsson Inc., 417
F.3d 1241, 1249 (Fed. Cir. 2005) ("[T]he corresponding structure for a§ 112
i-f 6 claim for a computer-implemented function is the algorithm disclosed in
the specification."); Net MoneyIN, Inc. v. VeriSign, Inc. 545 F.3d 1359, 1367
(Fed. Cir. 2008) ("[A] means-plus-function claim element for which the only
disclosed structure is a general purpose computer is invalid if the
specification fails to disclose an algorithm for performing the claimed
function."). See also Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371
(Fed. Cir. 2009) (finding Blackboard's means-plus-function claims
indefinite because the patent describes an undefined component, i.e., a black
box, that performs the recited function but does not disclose how the
component performs the function). See further Ex parte Catlin, 90 USPQ2d
1603, 1605 (BP AI 2009) (precedential) (during prosecution, computer-
enabled means-plus-function claims will be held unpatentable under 35
U.S.C. § 112, second paragraph, as being indefinite if a Specification fails to
disclose any algorithm corresponding to the recited function in the claims).
Where claims do not particularly point out and distinctly claim the
invention as required by the second paragraph of35 U.S.C. § 112, a§ 103
rejection of the claims must be reversed as impermissibly involving
speculative assumptions as to the meaning of the claims. In re Steele, 305
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F.2d 859, 862-63 (CCPA 1962). Ifno reasonably definite meaning can be
ascribed to certain terms in the claim, "the subject matter does not become
obvious-the claim becomes indefinite." In re Wilson, 424 F.2d 1382,
1385 (CCPA 1970).
We apply the same rationale to the rejection of claim 1 under
35 U.S.C. § 101 as directed to abstract ideas, because we are unable to
determine precisely what the "means for generating" represents. As a result,
we are unable to determine if the claim language is directed to an abstract
idea, or whether the claims recite something more that would transform a
potentially abstract idea into patent-eligible subject matter.
Therefore, we do not sustain the rejection under 35 U.S.C. § 101 of
claim 1. Using our authority under 37 C.F.R. § 41.50(b), we newly reject
independent claim 1 under 35 U.S.C. § 112, second paragraph, as being
indefinite, based on our inability to determine the precise meaning of
"means for generating." We also reject dependent claims 2---6, because they
depend from the rejected independent claim, and, therefore, recite the same
indefinite language.
Claim 7
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: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int '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-
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step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-78 (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. Kappas, 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."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The following method is then used to determine whether what the
claim is "directed to" is an abstract idea:
[T]he decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were
decided. See, e.g., Elec. Power Grp., 830 F.3d at 1353-54. That
is the classic common law methodology for creating law when a
single governing definitional context is not available. See
generally Karl N. Llewellyn, The Common Law Tradition:
Deciding Appeals (1960). This more flexible approach is also
the approach employed by the Supreme Court. See Alice, 134 S.
Ct. at 2355-57. We shall follow that approach here.
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Amdocs (Israel) Limited v. Openet Telecom, Inc., 841F.3d1288, 1294 (Fed.
Cir. 2016).
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
curing rubber, Diamond, 450 U.S. at 183 n.7, "tanning, dyeing, making
water-proof 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.
The Examiner finds independent claim 7 is directed to "gathering and
combining data by reciting steps of organizing information through
mathematical relationships" (Final Act. 2), and "use[ s] mathematical
concepts such as mathematical relationships in order to determine a field
consolidation efficiency" (Answer 4). The Examiner further finds that all
recited steps in method claim 7 are "part of the abstract idea itself." Id. at 5.
The Appellant argues claim 7 recites identifying "partial load
shipments," and that "partial load freight shipments are not representative of
numbers but rather are actual physical products that are shipped by container
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from one party to another." Appeal Br. 12. We are not persuaded by the
Appellant's arguments.
In support of the "identifying ... a plurality of partial container load
product shipments," the Appellant directs us to paragraph 51 of the
Specification, which states that "the system user designates which of the
remaining shipments are appropriate for cross-planning-zone field
consolidation." Spec. i-f 51 (cited at Appeal Br. 8). We discern, from this
disclosure, that the identification is some form of data, which at least
nominally includes a numeric component for the number, size, or weight of
a load, but is not the physical load itself. See Spec. i-f 58 ("the number of
shipments comprising the load, the total cubic volume of the load").
We are also unpersuaded that the "consolidating" language in claim 7
"similarly does not relate to a mathematical relationship or any numerical
representation." Appeal Br. 12. In support of this claim language, the
Appellant directs us to paragraph 42 of the Specification, which states that
"one container planning hierarchy includes, 45 foot container loads first,
then 40 foot high cube container loads, then 40 foot standard container
loads." Spec. ,-r 42 (cited at Appeal Br. 8).
We similarly are unpersuaded by the Appellant's argument that the
claim "also refers to a freight carrier," and that the "freight carrier itself
could not possibly be considered merely a numerical representation or any
form of abstract idea for that matter." Appeal Br. 13; see also id. at 14
("[g]enerating a route and dispatching a freight carrier similarly falls short of
mere mathematical representations"), Reply Br. 1 ("field consolidation
efficiency, however, is based on the physical manipulation of partial load
freight shipments and thus has its basis in non-abstract physical
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characteristics"), id. at 2 ("the claimed field consolidating could not be
accomplished without the freight carrier," and "the result of the method is
achieved by dispatching an inland freight carrier").
The generation of a route, which creates data, and sending of a
message to dispatch a carrier, does not encompass the carrier itself; only data
about the route and the carrier. See Spec. i-f 65 ("The system user then
selects one or more options, for example equipment type and inland carrier,
and sends a booking request and routing instructions"). The claim language,
thus, refers to tangible, non-abstract items, but the claim itself only
encompasses data about the tangible items, such as loads and carriers.
We, therefore, agree with the Examiner that claim 7 is directed merely
to "gathering and combining data ... to generate additional information"
about loads, carriers, efficiency, and routes, and that all steps in the claim
fall within the abstract idea. See Final Act. 2-3. As generally asserted by
the Examiner (see id. at 4), the claim is similar to other claims found to be
directed to abstract ideas by our reviewing court, such as a claim that
"relates to customizing information based on (1) information known about
the user and (2) navigation data." Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015).
In addition, the entire method, except for the claimed use of
computers and menus to display and manipulate data, can be performed
mentally using pen and paper because it only deals with data. 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
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by human thought alone is merely an abstract idea and is not patent-eligible
under§ 101."). Additionally, mental processes, e.g., computing a score, 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.").
Therefore, the Appellant has not shown error in the Examiner's
determination that the claim is directed to an abstract idea.
We are unpersuaded by the Appellant's arguments that the claim
recites "something more" that transforms it into eligible subject matter
because the claim language does not "preempt others" use of, "tie up," the
abstract idea. Appeal Br. 14--15. "While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). And, "[ w ]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot." Ariosa,
788 F.3d at 1379.
We are not persuaded by the Appellant's argument that the
"identifying," "field consolidating," "centrally consolidating," "generating,"
and "dispatching" steps are outside the abstract idea (Appeal Br. 15),
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because, as we set forth above, none of the claim language falls outside the
scope of the abstract idea of "gathering and combining data ... to generate
additional information."
Finally, we also are unpersuaded that claims transform an abstract
idea into eligible subject matter because the claims "improve the existing
process for managing freight delivery." Reply Br. 3. The difficulty here is
that, although the Specification identifies a need for improvements (Spec.
i-f 3), no actual improvement that is a result of the claimed invention is
identified, and certainly none that is recited in the claim itself. See also
Appeal Br. 12 ("The specification identifies a need for improvements in
addressing the complexities of planning and executing the procurement and
transportation of goods from vendors.").
The Appellant, thus, does not establish sufficiently that the claimed
invention introduces "something more" that transforms the abstract idea to
which the claims are directed into patent-eligible subject matter.
For these reasons, we sustain the rejection of claim 7 under
35 U.S.C. § 101.
Claim 17
In addition to establishing the same arguments for claim 1 7 that were
directed to claim 7 (see Appeal Br. 12-15; Reply Br. 1-3), which are
unpersuasive for the same reasons we set forth above, the Appellant also
argues that the steps of identifying partial shipments to be received from a
plurality of supply locations, field consolidating a container load from the
partial shipments, assigning the container load to one of a plurality of
importation gateways, and field consolidating by adjusting the loading of
partial shipments based on an adjusted gateway capacity, as recited in
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independent claim 17, are "features [that] are not well-understood, routine or
conventional in the field and confine the abstract idea that is being alleged in
the claims to a particular useful application. This is evident by the lack of
prior art rejections in the Office Action." Appeal Br. 15.
The Appellants assertions are misplaced, because the Examiner did
not make any findings as to whether or not that these features were "well-
understood, routine or conventional." Id. Instead, the Examiner found
"there are no additional elements besides the abstract idea." Final Act. 3.
For these reasons, we sustain the rejection of claim 17 under
35 U.S.C. § 101.
§ 101.
DECISION
We REVERSE proforma the rejection of claim 1 under 35 U.S.C.
We AFFIRM the rejection of claims 7 and 17 under 35 U.S.C. § 101.
We enter a NEW GROUND of rejection of claims 1-6 under
35 U.S.C. § 112, second paragraph, as indefinite.
This decision contains a NEW GROUND of rejection pursuant to
37 C.F.R. § 41.50(b) (2008). 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 that 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:
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(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 proceeding will be remanded
to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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