12965870 (P.T.A.B. May. 23, 2016)

Ex Parte Hansen et al

Patent Trial and Appeal BoardMay 23, 2016

12965870 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/965,870 12/11/2010 122219 7590 05/25/2016 Miller, Matthias & Hull LLP/ The Boeing Company One North Franklin, Suite 2350 Chicago, IL 60606 Allan M. Hansen 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. 03-0085-US-CIP 7655 EXAMINER EVERETT, CHRISTOPHER E ART UNIT PAPER NUMBER 2121 NOTIFICATION DATE DELIVERY MODE 05/25/2016 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): bmatthias@millermatthiashull.com patentadmin@boeing.com mloye@millermatthiashull.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALLAN M. HANSEN, BRADLEY K. JACKSON, LA WREN CE W. ROGERS, SCOTT A. SCHIEFERDECKER, DAVID W. PATTERSON, BRIAN K. THOMPSON, CARL A. BOUFFIOU, and THOMAS S. STREVEY Appeal2014-009440 Application 12/965,870 Technology Center 2100 Before ALLEN R. MacDONALD, ADAM J. PYONIN, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-009440 Application 12/965,870 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from a Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse and enter a new ground of rejection. THE INVENTION The application relates to "[d]esigning a new aircraft." (Spec. i-f 5.) Claims 1, 15, and 20, reproduced below, are illustrative: 1. A system comprising: a configurator for providing a configuration definition that specifies existing engineering designs and manufacturing capa- bility of aircraft structures that have already been designed and manufactured; and a processor for accessing the configuration definition from the configurator and filtering the configuration definition accord- ing to customer specifications for a new aircraft, wherein the fil- tering selects existing designs and identifies existing manufac- turing capability to fabricate structures for the new aircraft; whereby the manufacturing capability is considered during the design of the new aircraft and whereby existing designs and existing manufacturing capability are reused in the new aircraft. 15. A method comprising using a computer to: access a configuration definition that specifies engineering designs and manufacturing capability of aircraft structures that have already been designed and manufactured; and filter the configuration definition according to custom specifications for a new aircraft, including selecting existing designs and identifying existing manufacturing capability to fabricate structures for the new aircraft; 1 Appellants identify The Boeing Company as the real party in interest. (See App. Br. 1.) 2 Appeal2014-009440 Application 12/965,870 whereby the design and manufacturing capability are brought together to analyze options and whereby existing designs and existing manufacturing capability are reused. 20. A method comprising: receiving modifications to a baseline model of an aircraft; identifying existing engineering designs and manufacturing capability for the modifications, including searching a configu- ration definition that specifies existing engineering designs and manufacturing capability of aircraft structures that have already been manufactured; and generating a product definition that indicates whether the modified baseline model can be manufactured. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Pennisi et al. Gupta et al. us 5,659,478 us 5,825,651 Aug. 19, 1997 Oct. 20, 1998 THE REJECTIONS 1. Claims 1, 3, 5, 6, 12, 14--16, 19, and 20 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Gupta. (See Final Act. 5-17.) 2. Claims 2, 4, 7-11, 13, 17, and 18 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Gupta and Pennisi. (See Final Act. 17-26.) 3 Appeal2014-009440 Application 12/965,870 APPELLANTS' CONTENTION2 Appellants argue that the rejections are improper because "Gupta is silent about an aircraft." (App. Br. 10.) ANALYSIS Responding to Appellants' argument that Gupta does not disclose a system used for the manufacture of aircraft, the Examiner states that "the features upon which applicant relies (i.e., 'designing a product,' 'manufacturing a product,' and 'aircraft') are not recited in the rejected claims." (Ans. 24.) However, claim 15, for example, is directed to a method that includes "access[ing] a configuration definition that specifies engineering designs and manufacturing capability of aircraft structures that have already been designed and manufactured," and "filter[ing] the configuration definition according to a plurality of custom specifications for a new aircraft, including selecting existing designs, identifying existing manufacturing capability to fabricate structures for the new aircraft, and generating a product definition that indicates whether the custom specifications can be manufactured." The other independent claims include similar limitations. As there is no finding that the "aircraft" language is not limiting, Gupta can anticipate only if it either expressly or inherently describes the use of its system in the design of new aircraft. See King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (explaining that a 2 Because our resolution of this issue is dispositive of the prior art rejections, we do not reach Appellants' additional contentions of error. 4 Appeal2014-009440 Application 12/965,870 claim is anticipated only if each and every limitation is found either expressly or inherently in a single prior art reference). "Inherent anticipation requires that the missing descriptive material is 'necessarily present,' not merely probably or possibly present" in the anticipating reference. Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002). Gupta states that "[ e ]xamples of systems that can be maintained or configured using the invention include automobiles, computers, time clock machines, and shoes." (Gupta 5:44--46.) While this explains that Gupta's system can be used in industries that might be analogous to aircraft manufacture, it falls short of the "strict identity" required for anticipation. See Trintec, 295 F.3d at 1296 ("The difference between a printer and a photocopier may be minimal and obvious to those of skill in this art. Nevertheless, obviousness is not inherent anticipation."). 3 For this reason, we do not sustain the anticipation rejections and, on the same basis, we do not sustain the obviousness rejections, as the combination is not found by the Examiner to fill the gap described above. To be clear, however, we do not consider whether it would have been obvious to use Gupta's system, either as is or as modified in a way that would have been obvious to one of skill in the art at the time of the invention, in the design and manufacture of aircraft, as that question is not 3 Our conclusion is consistent with the maxim "that which would literally infringe if later in time anticipates if earlier," Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir. 1987), as the use of Gupta's system in the disclosed fields of automobiles, computers, time clock machines, and shoes would not infringe the pending claims directed to the manufacture of aircraft structures. 5 Appeal2014-009440 Application 12/965,870 before us in this appeal. The Examiner may wish to consider that issue should prosecution continue. NEW GROUND OF REJECTION We enter the following new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b): claims 1-20 are rejected under 35 U.S.C. Â§ 101. Section 101 of the Patent Act permits the patenting of "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. Â§ 101. Despite this broad language, the Supreme Court has "long held that this provision contains an important implicit exception: [l]aws 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) (internal citations omitted). The Supreme Court has established a now familiar, two-part test "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 is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. For example, abstract ideas include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea itself, and mathematical formulas or relationships. Id. at 2355-57. If the claims are directed to a patent-ineligible concept, the second step is to consider the elements of the claims "individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297-98 (2012)). In other words, the second step is to "search for an 'inventive 6 Appeal2014-009440 Application 12/965,870 concept,"' namely "an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Id. (brackets in original; quoting Mayo, 132 S. Ct. at 1294). Applying the first step of the Alice analysis, we consider claim 15, which is directed to a method of "using a computer to" (a) access a "configuration definition" that specifies existing engineering designs and manufacturing capability of aircraft structures, and (b) filter the configuration definition according to custom specifications for a new aircraft, selecting existing designs and identifying existing manufacturing capability to generate a product definition indicating whether the custom specifications can be manufactured, where ( c) the design and manufacturing capability are brought together to analyze options and existing designs and existing manufacturing capability are reused. We find this claim directed to the idea of using historical design and manufacturing information in the manufacture of new aircraft. We further conclude that this idea, which amounts to a scheme for storing, organizing, and using information, is abstract, as were similar concepts that have been considered by our reviewing Court. Cf In re TL! Communications LLC Patent Litigation, No. 2015-1372, 2016 WL 2865693, *3-5 (Fed. Cir. May 17, 2016) (finding claims "directed to the abstract idea of classifying and storing digital images in an organized manner" to be abstract); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) ("Here, the patent claims are directed to an abstract idea: tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting)."); Content Extraction & Transmission LLC v. Wells Fargo 7 Appeal2014-009440 Application 12/965,870 Bank, Nat. Ass 'n, 776 F.3d 1343, 1346-47 (Fed. Cir. 2014) (finding claims drawn to the "idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory" directed to an abstract idea); SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. Appx. 950, 954--55 (Fed. Cir. 2014) (determining that a claim directed to "the mental steps of comparing new and stored information and using rules to identify medical options" was abstract and "involve[ d] a mental process excluded from section 101 "). Because we find claim 15 directed to an abstract idea, we must determine whether the claim is directed to significantly more than the abstract idea itself, i.e., to a patent-eligible application of the abstract idea. See Alice, 134 S. Ct. at 2355. Looking at claim 15 as a whole, we find that it recites nothing more than the above abstract idea implemented "using a computer." Such a claim is not limited to a patent-eligible inventive concept because "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358; see In re TL! Communications, 2016 WL 2865693, at *6 (collecting "precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea"). We accordingly conclude that independent claim 15 does not amount to significantly more than an abstract idea, and is not patent-eligible. The same reasoning and result applies to independent claim 1, which is directed to a "system" for performing the method, 4 and claim 20, directed to a 4 The system of claim 1 includes only "a configurator" and "a processor," which, in the absence of any specific disclosure, we interpret to be implemented in a general purpose computer. The alternative would be to 8 Appeal2014-009440 Application 12/965,870 method similar to but broader than claim 1. We further find that the dependent claims, 2-14 and 16-19, do not add anything more patent-eligible than the abstract concepts of the independent claims. DECISION The Examiner's 35 U.S.C. Â§ 102(b) rejections of claims 1-20 are reversed. We enter a NEW GROUND OF REJECTION of claims 1-20 under 35 U.S.C. Â§ 101 pursuant to our authority under 37 C.F.R. Â§ 41.50(b) NEW GROUND This Decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b). 37 C.F.R. Â§ 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review" and that Appellants, 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: (1) reopen prosecution by submitting 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; or broadly construe "configurator" and "processor" to encompass people and/or a manually operated system, which would only be less favorable to patent- eligibility. 9 Appeal2014-009440 Application 12/965,870 (2) request that the proceeding be reheard underÂ§ 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. Â§ 1.136(a)(l )(iv). REVERSED; 37 C.F.R. Â§ 41.50(B) 10