Ex Parte Grissom

Patent Trials and Appeals Board

Apr 1, 2019

13772649 - (D) (P.T.A.B. Apr. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/772,649 02/21/2013 Charles Ray Grissom
27997 7590 04/03/2019
Hultquist IP
P.O. Box 14329
Research Triangle Park, NC 27709
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.
219.0002 5602
EXAMINER
PADOT, TIMOTHY
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
04/03/2019 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):
hip@hultquistip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES RAY GRISSOM
Appeal2017-003037 1
Application 13/772,6492
Technology Center 3600
Before DENISE M. POTHIER, BARBARA A. BENOIT, and
JOHN D. HAMANN, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge JOHN D.
HAMANN.
Dissenting opinion filed by Administrative Patent Judge BARBARA A.
BENOIT
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
1 Our Decision relies upon Appellant's Appeal Brief ("App. Br.," filed June
14, 2016), Reply Brief ("Reply Br.," filed Dec. 22, 2016), and Specification
("Spec.," filed Feb. 21, 2013), as well as the Examiner's Answer ("Ans.,"
mailed Oct. 26, 2016) and the Final Office Action ("Final Act.," mailed Dec.
15, 2015).
2 According to Appellant, the real party in interest is Optricity Corporation.
App. Br. 1.
Appeal2017-003037
Application 13/772,649
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-13 and 21-27. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
THE CLAIMED INVENTION
Appellant's claimed invention relates to the "computerized placement
and organization of items in a warehouse and more specifically to
approaches for efficiently determining item slot assignments to improve the
movement of items in a warehouse." Spec. ,r 3. Claim 1 is representative of
the subject matter on appeal and is reproduced below.
1. A computer based method for assigning an item to
a slot in a warehouse storage facility having storage slots, the
method comprising:
applying a first sorting technique according to a specified
item ordering criteria to arrange a plurality of items m a
prioritized list of items stored in a memory;
applying a second sorting technique according to a
specified slot ordering criteria to arrange a plurality of slots in a
prioritized list of slots stored in a memory, the plurality of slots
corresponding to storage slots in the warehouse;
calculating a value Ci for each itemi in the prioritized list
of items, wherein the value Ci represents a total number of
currently available slots from the prioritized list of slots that the
itemi can be successfully assigned to according to specified
constraint rules, wherein during warehouse operations, the
count Ci of currently available slots changes as items are moved
into or out of the warehouse storage facility;
selecting an itemj from the prioritized list of items that
has a smallest numeric value Ck as compared to the Ci values of
the other items; and
selecting a first slot from the prioritized list of slots,
wherein the selected itemj having the smallest numeric value Ck
meets the specified constraint rules and is assigned to and
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Application 13/772,649
physically placed in the selected first slot of the warehouse
storage facility.
REJECTION ON APPEAL
The Examiner rejected claims 1-13 and 21-27 under 35 U.S.C. § 101
as being directed to patent ineligible subject matter. Final Act. 3-6.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner errs. We disagree with Appellant's arguments
for the reasons discussed below.
CLAIM GROUPING
Appellant substantively argues the pending claims as a group. See
App. Br. 12-16. More specifically, Appellant provides substantive
arguments alleging that the independent claims, as a group, contain patent
eligible subject matter. Id. As to the dependent claims, Appellant identifies
additional limitations that are recited, without making separate arguments
for their patentability. Id. at 16-17.
Accordingly, we select independent claim 1 as representative of the
pending claims, and we decide the appeal of the § 101 rejection on the basis
of representative claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv); In re King, 801
F.2d 1324, 1325 (Fed. Cir. 1986). We refer to the rejected claims
collectively herein as "the claims."
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§ 101 REJECTION
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("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."); see also 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.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); "tanning, dyeing, making waterproof cloth, vulcanizing India
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Application 13/772,649
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
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generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). 3 Under this guidance,
we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., elements that apply, rely on, or use
the judicial exception in a manner that imposes a meaningful
limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception
(see MPEP4 § 2106.05(a}-(c), (e}-(h)).
Id. at 54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
3 Available at www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-
28282.pdf.
4 All Manual of Patent Examining Procedure ("MPEP") citations herein are
to MPEP, 9th ed., Rev. 08.2017, January 2018.
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( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See id. at 54--56.
The Judicial Exception ~ Prong One of Step 2A
The Examiner determines that the claims recite the abstract idea of
"sorting items for storage in a warehouse storage facility[, which is] ... a
fundamental economic practice ([because] sorting, prioritizing and selecting
items for storage in a warehouse is [a] longstanding and ubiquitous
commercial practice)." Final Act. 5. As we discuss below, we find that
Appellant's claims recite one or more abstract ideas.
Generally, Appellant's claims concern selecting specific slots in a
warehouse, in which to place specific items, based on (i) prioritized lists of
the slots and items, and (ii) specified constraints ( e.g., slot weight limits,
equipment requirements such as sprinklers for flammable items, and similar
items not being placed in adjacent slots). See, e.g., App. Br. 20 (reciting
claim 1 ); Spec. ,r 33. More specifically, claim 1 recites "applying a first
sorting technique according to a specified item ordering criteria to arrange a
plurality of items in a prioritized list of items"; "applying a second sorting
technique according to a specified slot ordering criteria to arrange a plurality
of slots in a prioritized list of slots[,] ... the plurality of slots corresponding
to storage slots in the warehouse"; "selecting an item[] from the prioritized
list of items"; and "selecting a first slot from the prioritized list of slots,
wherein the selected item[] ... meets the specified constraint rules." App.
Br. 20 (Claims App.). These steps relate to maintaining an inventory of
items in a warehouse, which is a fundamental economic practice (i.e., the
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longstanding and ubiquitous commercial practice of inventorying items for
sale). See Mankes v. Fandango, LLC, 238 F. Supp. 3d 751, 757 (E.D.N.C.
2017) (finding that "the concept of allocating, tracking, and controlling
inventory is a fundamental business and economic practice 'long prevalent
in our system of commerce'") ( citations omitted), a.ff' d, 720 F .App 'x 1022
(Fed. Cir. 2018); see also Final Act. 5. Accordingly, we find that
Appellant's claims recite a fundamental economic practice, which is an
abstract idea within grouping (b) under the Revised Guidance. See Revised
Guidance, 84 Fed. Reg. at 52 ("(b) Certain methods of organizing human
activity-fundamental economic principles or practices.").
Appellant's claims also recite a mathematical algorithm which
calculates the order that items are placed in the slots, i.e., by starting with the
item that has the fewest available slots. See, e.g., App. Br. 20 (reciting claim
1 ). More specifically, claim 1 recites:
calculating a value Ci for each itemi in the prioritized list
of items, wherein the value Ci represents a total number of
currently available slots from the prioritized list of slots that the
itemi can be successfully assigned to according to specified
constraint rules, wherein during warehouse operations, the
count Ci of currently available slots changes as items are moved
into or out of the warehouse storage facility.
Id. This mathematical algorithm is an abstract idea within grouping (a)
under the Revised Guidance. Revised Guidance, 84 Fed. Reg. at 52 ("(a)
Mathematical concepts-mathematical relationships, mathematical formulas
or equations, mathematical calculations"); see also Digitech Image Techs.,
LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) ("[A]
process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.").
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"Adding one abstract idea (math) to another abstract idea"
(fundamental economic practice) "does not render the claim non-abstract."
See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir.
2017). Accordingly, we determine that claim 1 recites an abstract idea.
Alternatively, claim 1 recites a mental process, which is an abstract
idea within grouping ( c) under the Revised Guidance. Revised Guidance, 84
Fed. Reg. at 52 ("(c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion)"); see also
Ans. 4. More specifically, claim 1 's limitations discussed above cover
performance in the mind (but for a generic computer "memory"), and thus,
fall within the mental processes category. See Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) ("[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper."). For example, the broadest reasonable
interpretation of claim 1 's "applying ... sorting technique" steps to make
prioritized lists of items and slots allows for the steps to be performed
entirely in the human mind. Likewise, the step of calculating the total
number of currently available slots for each item does not foreclose a
human, mentally or with pen and paper, from performing the calculations.
Lastly, claim 1 's "selecting" steps also allow for a human, mentally or with
pen and paper, to perform, the steps.
Notably, claim 1 recites "a plurality of items" and "a plurality of
slots," and thus, claim 1 's method can be applied to as few as two items and
two slots, which easily can be accomplished by a human mentally, or with
pen and paper. See Electric Power Group, LLC v. Alstmn S.A., 830 F.3d
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1350, 1353----54 (Fed. Cir. 2016) (citations omitted) (finding that "analyzing
information by steps people go through in their minds ... without more, as
essentially mental processes within the abstract-idea category"); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) (quoting Benson, 409 U.S. at 67 (footnote omitted))
("[C]omputational methods which can be performed entirely in the human
mind are the types of methods that embody the 'basic tools of scientific and
technological work' that are free to all men and reserved exclusively to
none.").
Integration into a Practical Application~ Prong Two of Step 2A
Claim 1 recites, in addition to the abstract idea discussed above,
(i) that the prioritized lists of items and slots are "stored in a memory" and
(ii) "physically plac[ing]" the item in the selected slot in the warehouse.
App. Br. 20 (Claims App). As we discuss below, these additional elements
do not integrate the judicial exception into a practical application. See
Revised Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a}-(c), (e}-
(h)).
Appellant does not argue that the claims improve the functioning of a
computer itself or any other technology or technical field, which could be
indicative of the additional elements integrating the abstract idea into a
practical application. App. Br. 13; Revised Guidance, 84 Fed. Reg. at 55 &
n.25 (citing MPEP § 2106.05(a)). Rather, Appellant argues that the claims
improve the efficiency of assigning items to slots in a warehouse. App. Br.
13. This purported improvement relates to the abstract idea, and does not
improve a computer (the claims recite a generic "memory") or technology.
See McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299,
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1314 (Fed. Cir. 2016) ("We ... look to whether the claims in these patents
focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery.") ( citing Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)).
In addition, we are not persuaded by Appellant's reliance on DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Unlike
the current claims, DDR addressed a technological problem specific to a
particular technological environment by implementing a specific solution for
that technological environment and different from the routine or
conventional use for that environment. See DDR, 773 F.3d at 1257-58
( finding "the claims at issue here specify how interactions with the Internet
are manipulated to yield a desired result-a result that overrides the routine
and conventional sequence of events ordinarily triggered by the click of a
hyperlink."). In contrast, Appellant's claims recite only a generic
component (i.e., a memory) and a generic function (i.e., storing). Cf
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(finding the invocation of computers and generic functionality adds no
inventive concept); see also Spec. ,r 69 (disclosing off-the-shelf,
conventional computer components). Accordingly, the additional elements
do not integrate the judicial exception into a practical application under
MPEP § 2106.05(a).
Furthermore, because a particular computer is not required, the claims
do not define or rely on a "particular machine." See MPEP § 2106.05(b ).
Nor do "the claim[s] effect[] a transformation or reduction of a particular
article to a different state or thing." See id. at§ 2106.05(c). Instead, the
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claims simply concern selecting specific slots in a warehouse, in which to
place specific items, based on prioritized lists and specified constraints. As
such, the claims have no other meaningful limitations on the above
identified judicial exceptions. See id. at § 2106.05( e ). The claims, at best,
amount to nothing more than applying the abstract ideas using generic
computer components and functions, as discussed above. This occurrence
does not render the abstract idea eligible. See Alice, 573 U.S. at 222; MPEP
§ 2106.05(±).
In addition, we are not persuaded by Appellant's argument that the
additional element of having the item "physically placed in the selected
... slot of the warehouse" renders the claims patent eligible subject matter.
App. Br. 14. Rather, physically placing the item in the slot is insignificant
post-solution activity to the abstract idea, which does not integrate the
abstract idea into a practical application. See MPEP § 2106.05(g); see also
Bilski, 561 U.S. at 610-11.
We also are not persuaded by Appellant's argument that the claims
comprise patent eligible subject matter because they are tied "to a specific
context," i.e., "items to be stored in a warehouse." E.g., App. Br. 13.
"[L]imitations that amount to merely indicating a field of use or
technological environment [(i.e., a warehouse context)] in which to apply a
judicial exception do not amount to significantly more than the exception
itself." MPEP § 2106.05(g) ( citing Diehr, 450 U.S. at 192 n.14 ( 1981 )); see
also Electric Pmver, 830 F.3d at 1354 (finding that limiting an abstract idea . . ~ ~
to the electric power grid is simply an ineffective attempt to limit the use of
the abstract idea to a particular technological environment); Ans. 5---D.
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We also are not persuaded by Appellant's argument (e.g., App. Br.
13-14; Reply Br. 2) that the claims pose no risk of preempting the abstract
idea itself. A lack of preemption does not make a claim patent eligible. See
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.");
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.").
Thus, the claims do not integrate the judicial exception into a practical
application. On this record, we are unpersuaded that the Examiner erred in
determining that the claims are directed to an abstract idea. Final Act. 5.
The Inventive Concept - Step 2B
Claim 1 also lacks an inventive concept. To determine whether
claim 1 provides an inventive concept, we consider the additional elements,
individually and in combination, to determine whether (1) they add a
specific limitation beyond the judicial exception that is not well-understood,
routine, conventional activity in the field or (2) simply append
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Revised Guidance, 84 Fed. Reg. at 56.
Outside of the abstract idea, the additional elements only recite a
generic computer component and function that are well-understood, routine,
and conventional and insignificant post-solution activity. See Ans. 4---6;
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Spec. ,r 69; Alice, 573 U.S. at 226. Accordingly, we agree with the
Examiner that the claims are patent ineligible. See Final Act. 5---6.
Additionally, we are not persuaded by Appellant's argument (e.g.,
App. Br. 13) that the claimed subject matter must be unconventional because
it is not found in the prior art. A finding of novelty or nonobviousness does
not necessarily lead to the conclusion that subject matter is patentable
eligible. "Groundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
For the above reasons, we sustain the Examiner's rejection of
representative claim 1, as well as claims 2-13 and 21-27, grouped therewith.
DECISION
We affirm the Examiner's§ 101 rejection of claims 1-13 and 21-27.
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
14
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES RAY GRISSOM
Appeal2017-003037
Application 13/772,649
Technology Center 3600
BENOIT, Administrative Patent Judge, dissenting.
I respectfully dissent from the majority opinion affirming the
Examiner's rejection of the pending claims under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. I recognize the majority
opinion's well-reasoned application of the new guidance. See USPTO's
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) ("Guidance"). I, however, disagree with the characterization
of the representative claim and, therefore, disagree with the majority
opinion's conclusion.
The majority opinion focuses on claim 1, which recites:
1. A computer based method for assigning an item to
a slot in a warehouse storage facility having storage slots, the
method comprising:
applying a first sorting technique according to a specified
item ordering criteria to arrange a plurality of items m a
prioritized list of items stored in a memory;
applying a second sorting technique according to a
specified slot ordering criteria to arrange a plurality of slots in a
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prioritized list of slots stored in a memory, the plurality of slots
corresponding to storage slots in the warehouse;
calculating a value Ci for each itemi in the prioritized list
of items, wherein the value Ci represents a total number of
currently available slots from the prioritized list of slots that the
itemi can be successfully assigned to according to specified
constraint rules, wherein during warehouse operations, the
count Ci of currently available slots changes as items are moved
into or out of the warehouse storage facility;
selecting an itemj from the prioritized list of items that
has a smallest numeric value Ck as compared to the Ci values of
the other items; and
selecting a first slot from the prioritized list of slots,
wherein the selected itemj having the smallest numeric value Ck
meets the specified constraint rules and is assigned to and
physically placed in the selected first slot of the warehouse
storage facility.
App. Br. 20 ( claim 1 ).
Guidance: Prong One of Step 2A
Prong one of Step 2A requires a determination of whether any judicial
exception to patent eligibility is recited in the claim. The guidance identifies
three judicially-excepted subject matter groupings: (a) mathematical
concepts (including mathematical relationships, mathematical formulas or
equations, mathematical calculations), (b) certain methods of organizing
human activity (including fundamental economic principles or practices),
and ( c) mental processes----concepts performed in the human mind.
Guidance, 84 Fed. Reg. at 52. The majority opinion identifies each of the
three subject matter grouping as separate reasons that representative claim 1
is a judicial exception under prong one of Step 2A of the guidance.
Specifically, the majority opinion determines that the claim falls under the
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judicial exceptions of a fundamental economic practice, a mental process,
and a mathematical calculation.
First, I would not conclude that the claim "relates to maintaining an
inventory of items in a warehouse, which is a fundamental economic
practice." Maj. Op. 7. I disagree because each step recited in claim 1 relates
to a "computer-based method for assigning an item to a slot in a warehouse
storage facility having storage slots" (as set forth in claim 1). See App. Br.
20 (reciting claim 1 ). In my view, the assignment of an item to a slot of a
warehouse storage facility is only one aspect of maintaining an inventory of
items in a warehouse.
The specification describes receiving, storage, and shipping products
to grocery stores, department stores, and other "marketing endpoints" as
activities that are controlled by a warehouse or product distribution center
that receives products after manufacture. Spec. ,r 4. According to the
specification, "[ o ]perations performed in a warehouse include, for example,
assigning items to slots, storing items from a receiving docket into assigned
slots, and retrieving items from assigned slots to a transport dock."
Moreover, the specification describes a conventional system----called a
warehouse slotting system-as existing "to guide users as to where to place
items in a warehouse." In my view, the claims relate to assigning items to
slots of a warehouse storage facility and so reflect a warehouse slotting
system (rather than a broader practice of maintaining an inventor of items in
a warehouse). Therefore, in my view, the specification supports the view
that assigning products in inventory slots of a warehouse is only one aspect
of maintaining an inventory of items in a warehouse.
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Second, I would not conclude that claim 1 recites a mental process
that can be performed by a human, mentally or with pen and paper. Maj.
Op. 9-10. I find a determination that the claim could be applied to as few as
two items and two slots (and so be able to be performed by a human) to be a
strained reading of the claim. Id. at 9. I do not find it reasonable that the
particular steps of the claim would be performed to determine which one of
two items should be placed in each one of two slots in a warehouse storage
facility.
In addition, the claim recites performing a calculation within a
dynamic environment of a warehouse storage facility in which items are
being moved into or out of the facility. Specifically, the claim requires
calculating the number of currently available slots to which a particular item
can be assigned when the count of currently available slots changes "as
items are moved into or out of the warehouse storage facility" "during
warehouse operations." Claim 1 ("calculating a value Ci for each itemi in the
prioritized list of items, wherein the value Ci represents a total number of
currently available slots from the prioritized list of slots that the itemi can be
successfully assigned to according to specified constraint rules, wherein
during warehouse operations, the count Ci of currently available slots
changes as items are moved into or out of the warehouse storage facility").
This complexity recited in the claim bolsters the view that the recited steps
are not mental processes.
Third, the recited "calculating a value c1" that represents "a number of
currently available slots" is a mathematical calculation. I will not disagree
here with the conclusion of majority opinion that the calculating limitation
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falls within grouping (1 }-mathematical concepts and so is a judicial
exception. Maj. Op. 8.
In sum, for the reasons set forth above, I would find the claim recites a
judicial exception only because it recites a mathematical calculation and
falls within grouping (a). Thus, I agree with the majority opinion that the
claim is not eligible at prong one and requires further analysis in prong two
of Step 2A. Guidance, 84 Fed. Reg. at 54.
Guidance: Prong Two of Step 2A
Having determined that the claim recites a judicial exception, the
guidance requires determining whether there are "additional elements that
integrate the judicial exception into a practical application." Guidance, 84
Fed. Reg. at 54; see MPEP § 2106.05(a}-(c), (e}-(h). This evaluation is
performed for "the claim as a whole." Guidance, 84 Fed. Reg. at 54. The
guidance explains that "[a] claim that integrates a judicial exception into a
practical application of the exception ... will apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception." Id.
As explained in the specification, prior warehouse slotting systems
that assign slots to items (i.e., "guide users as to where to place items in a
warehouse") have "a common feature" that "item to slot matching is
generally down by considering a single item and candidate slot." Spec. ,r 5.
In reciting "a plurality of items" and "a plurality of slots," the claim imposes
the meaningful limit of considering more than one item and more than one
slots when matching an item to a slot. In reciting "pluralities," the claim
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does not cover the "common feature" of warehouse slotting systems that
consider a single item and a candidate slot.
Thus, requiring a plurality of items and a plurality of slots provides a
meaningful limitation to the recited calculation for each item of the total
number of currently available slots. Thus, I would determine that the claim
as a whole integrates the judicial exception of mathematical calculations into
a practical application of the exception. Furthermore, because the
meaningful limitation is found in the plurality of items and plurality of slots,
even if I were to agree that the claim recites a judicial exception of a
fundamental economic practice or a mental process, I would determine that
the claim as a whole also integrates these additional judicial exceptions into
practical applications of the exceptions.
In my view the "plurality" limitations, however, are not the only
meaningful limitations to the calculating judicial exception. In another
example, I would find that the limitation of calculating the value for each
item further is limited meaningfully by "wherein during warehouse
operations, the count Ci of currently available slots changes as items are
moved into or out of the warehouse storage facility," as recited in the claim.
This dynamic constraint of "during warehouse operations" further limits the
judicial exception to certain types of warehouse slotting systems-those in
which the count of Ci changes according to the receipt and removal of items.
The calculation of currently available slots for an item is further
limited "according to specified constraint rules." See claim 1 (reciting
"wherein the value Ci represents a total number of currently available slots
from the prioritized list of slots that the itemi can be successfully assigned to
according to specified constraint rules"). Thus, the claim requires the
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Application 13/772,649
calculation to include "specified constraint rules" by which an item can be
assigned to a slot.
For these separate reasons, I would determine that the claim as a
whole integrates the judicial exception of mathematical calculations into a
practical application of the exception. Furthermore, for these same reasons,
even if I were to agree that the claim recites a judicial exception of a
fundamental economic practice or a mental process, I would determine that
the claim as a whole also integrates these judicial exceptions into practical
applications of the exceptions. In my view, the human mind is not equipped
to perform item slotting as required in the claim given the dynamic
constraint of "during warehouse operations, the count Ci of currently
available slots changes as items are moved into or out of the warehouse
storage facility."
Conclusion
In sum, in considering prong one of Step 2A, I would determine for
the reasons discussed above that the claim recites a judicial exception only
because it recites a mathematical calculation and falls within grouping (a).
And, in considering prong two of Step 2A, I would determine for the reasons
discussed above that the claim as a whole integrates the judicial exception of
mathematical calculations into a practical application that imposes a
meaningful limit on the judicial exception.
In addition, I do not view the invention's ability to run on a general-
purpose computer as dooming the claim. See Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1338 (Fed. Cir. 2016) ("[W]e are not persuaded that
the invention's ability to run on a general-purpose computer dooms the
claims."). Rather, unlike the majority opinion, I view the claim as reciting a
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specific technique in a computer-based method to improve allotting
warehouse space to sales items after manufacturer and before delivery to a
store or other type of marketing endpoint. As such, in my view the claim
here is similar to those in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014), Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1339 (Fed. Cir. 2016), and McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1316 (Fed. Cir. 2016) that are directed to a particular
solution or improvements to technology or computer functionality and are
patent eligible. See also MPEP § 2106.06(a), (b).
For these reasons, I would conclude that the representative claim
recites eligible subject matter and would reverse the§ 101 rejection of the
claims. See Guidance, 84 Fed. Reg. at 54.
For these reasons, I respectfully dissent.
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