Ex Parte Hurtis et al

Patent Trial and Appeal Board

Apr 26, 2017

11951074 (P.T.A.B. Apr. 26, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/951,074 12/05/2007 George M. Hurtis RPS920070246US1 (109) 7675
50594 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33487
EXAMINER
AMSDELL, DANA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
04/28/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE M. HURTIS,
BRIAN T. KREIFELS, and MANIVANNAN THAVASI
Appeal 2016-000021
Application 11/951,0741
Technology Center 3600
Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Non-Final Office Action of claims 1—20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. Appeal Brief filed April 20, 2015, hereafter “Appeal
Br.,” 2.
Appeal 2016-000021
Application 11/951,074
BACKGROUND
The invention relates to commercial asset control, and, more
particularly, to dynamic asset control. Specification, hereafter “Spec.,” 11.
The invention includes the use of a first electronic sensor coupled to an
asset, a second electronic marker for a transport mechanism, and third
information comprising asset locations, as well as the use of rules that may
be modified based on the statistical use of empirical data. Id. Tflf 4, 19.
Representative method claim 1 is reproduced from page 24 of the
Appeal Brief (Appeal Br, Claims App.) as follows:
1. A method for controlling movement of assets, comprising:
reading a first information into memory of a computer by
a processor from a first electronic marker coupled to an asset;
reading a second information into the memory by the
processor from a second electronic marker of a transport
mechanism in possession of the asset;
storing by the processor in a record in the memory the
first information, the second information and a third
information comprising a location of the asset;
retrieving from the memory at least one rule comprising
at least one value and an action, wherein the at least one value
is based on empirical data;
executing by the processor a statistical test on the first
information from the first electronic marker, the second
information from the second electronic marker of the transport
mechanism in the record and the third information that
comprises the location of the asset in the record as compared to
the at least one value;
executing the action by the processor of the at least one
rule if a result of the statistical test is outside a predefined
confidence level; and
adding information from the record by the processor to
the empirical data.
2
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Application 11/951,074
In a Non-Final Office Action, the Examiner rejects: claims 1—20
under 35U.S.C. § 101 as directed to non-statutory subject matter; claims 7
and 20 under (pre-AIA) 35 U.S.C. § 112, second paragraph as indefinite;2
claims 1—6 and 8—19 under 35 U.S.C. § 103(a) as obvious over Lin3 and
Bridgelall;4 and claims 7 and 20 under 35 U.S.C. § 103(a) as obvious over
Lin, Bridgelall, and Gould5. Non-Final Action, hereafter “Non-Final Act.,”
2—9, mailed November 17, 2014; Answer, hereafter “Ans.,” 2, mailed
July 17, 2015.
DISCUSSION
The Appellants argue the indefmiteness rejection of claims 7 and 20
on similar issues. Appeal Br. 6—8. The Appellants also argue the rejections
under § 101 of all the claims on the same issues. Id. at 9—15. The
obviousness rejections of claims 1—6 and 8—19 are argued on similar issues,
with claim 1 selected as representative. Id. at 16—23. The obviousness
rejections of claims 7 and 20 are argued on the same grounds as claim 1, and
standing or falling thereto. Id. at 23. We will address the issues in a similar
manner, using claim 1 as representative of the §§ 101 and 103(a) issues, and
claim 7 as representative of the § 112, second paragraph rejection.
35 U.S.C. $ 112, second paragraph. Dependent claim 7 recites the
limitation that “the statistical test is a statistical Z-test,” and claim 20 recites
a similar limitation. Appeals Br., Claims App. 26, 31. The Examiner
determines that it is unclear from claim 7 which values to compare in a Z-
2 The current application was filed prior to the effective date of the AIA
(America Invents Act), and therefore the pre-AIA statute applies.
3 U.S. Publication No. 2007/0156545 Al, published July 5, 2007.
4 U.S. Publication No. 2006/0033609 Al, published February 16, 2006.
5 U.S. Publication No. 2008/0125883 Al, published May 29, 2008.
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Application 11/951,074
test, in light of the claims it directly or indirectly depends from, namely,
claims 1 and 6. Non-Final Act. 6.
6. The method of claim 1, wherein the at least one value
includes:
a first value for at least one of a unique identifier for the
asset, an asset type and a part number;
a second value for at least one of a unique identifier of a
person, a type of employee, a shift indicator and an area
indicator; and
a third value for at least one of a unique identifier of the
location and a location type.
Appeal Br., Claims App. 26.
Referring to claim 6, the Examiner determines that the “first,”
“second,” and “third” values are not empirical values as required by claim 1,
and it is not clear what values the Appellants are relying on for the Z test.
Ans. 4. The Examiner questions whether there are three Z-test results
required by claims 7 and 20, and further determining that additional
information is required to discern the scope of the claim. Id. (citing Spec.
114AA6).
The Appellants argue that claim 7 states that the “statistical test” of
claim 1 is a Z-test “which in of itself, can process many values in a
distribution.” Appeal Br. 6. Moreover, the Appellants contend that from the
context of claim 1, it can be discerned that “a statistical test is executed by a
processor on the first, second and third information as compared to the one
or more values.” Id. at 6—7. The Appellants also allege that the Examiner’s
determinations effectively result in the Z-test being more narrowly defined,
and that is not required, nor does it represent an indefmiteness issue. Reply
Brief, hereafter “Reply Br.,” 4, mailed September 17, 2015. The Appellants
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allege that the Examiner’s determinations appear to represent an intent to
reject claim 6, and not claim 7, on the basis of indefmiteness. Id. at 3. The
Appellants further argue that the respective values of claim 6, that is, the
first value for at least one of a unique identifier for the asset, an asset type
and a part number, the a second value for at least one of a unique identifier
of a person, a type of employee, a shift indicator and an area indicator, and a
third value for at least one of a unique identifier of the location and a
location type, represent respective Markush groupings. Id. at 3^4.
After considering the Appellants’ arguments and the evidence
presented in this Appeal on the indefmiteness rejection, we are not
persuaded that the Appellants identify reversible error with the Examiner’s
determinations, nor is there is an adequate response provided why claims 7
and 20 are not indefinite. “[Wjhen the USPTO has . . . issued a well-
grounded rejection [identifying] ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant fails to
provide a satisfactory response, the USPTO can properly reject the claim” as
indefinite. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
Here, the “statistical test,” that is, the Z-test of claim 7, is performed
on the first information from the first electronic marker, the second
information from the second electronic marker of the transport mechanism
in the record, and the third information that comprises the location of the
asset in the record, as compared to the “at least one value,” and where the “at
least one value” is “based on empirical data.”
The “empirical data” is disclosed in the Specification as that derived
from “events” that are collected and logged related to the movement of
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Application 11/951,074
assets. See Spec. 23, 24, 30, Figs. 4, 7. Data is collected on the actual
movement of the assets, and therefore “empirical data” represents data from
actual events. See id. 140, Fig. 4. The Specification states that “[cjertain
attributes are more germane to issues of employee permissions for moving
assets,” and statistical tests may be applied to different empirical data for
selected attributes. See id. ]Hf 45, 46. The rules that control the movement
of assets can be updated based on the empirical data. See id. Tflf 48, 49, Fig.
7.
We agree with the Examiner that claims 7 and 20 are ambiguous
because claim 7 requires a “Z-tesf ’ be used as the “statistical test” used on
the respective “information[s]” and the “at least one value,” and it is not
possible to discern the parameters that the Z-test should be performed upon.
See Ans. 4 (“what does the Appellant rely upon as values for the statistical
test?”). More particularly, the “at least one value” is claimed to include a
“first value,” “second value,” and “third value,” and it is unclear which of
the values of the “at least one values” that the Z-test should be applied to in
comparison with the “first information,” “second information,” and “third
information.” We also agree with the Examiner that claim 7 is ambiguous
because it requires Z-test be applied to include “at least one value,” and
neither the claim, related claims, nor Specification disclose or suggest that
value is based upon empirical data as claimed— the claim does not recite
that the claimed “values” are actual event data, and, instead recites that
“values” are instead “identifiers” related to assets, employees and locations.
Thus, we sustain the indefmiteness rejections of claims 7 and 20.
35 U.S.C. $ 101. The Examiner determines that claims 1—20 are
directed to non-statutory subject matter that does not amount to significantly
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Application 11/951,074
more than an abstract idea because the claims are directed to controlling the
motion of assets, which is “considered both a fundamental economic
practice and a method of organizing human activity.” Non-Final Act. 8.
Additional elements of the method are: “a computer memory that receives
generic information from multiple sources, as well as retaining a logic rule
(a value with an associated action), using the computer to compare received
values to pre-stored rule using known statistical techniques, and update the
pre-stored rule.” Id. The Examiner determines that when these elements are
considered individually, they “execute in a manner routinely and
conventionally expected,” and in combination, “together do not offer
substantially more than the sum of the functions of the elements when each
is taken alone.” Id.
The Appellants argue that the “invention presents functional and
palpable applications in the field of computer technology in which a
computer performs steps in memory by a processor to achieve results outside
of the ordinary function of a computer under comparable circumstances.”
Appeal Br. 14. The Appellants refer to the Specification’s disclosure of the
various ways that the asset control functions may be performed, arguing that
“Applicants’ claims are drawn to a specific way of ‘doing something with a
computer’—in this case a ‘server’ coupled to a ‘scanner.’” Id. at 14—15.
The Appellants assert that the claims “require complex programming to
enable the scanning of the electronic markers and the sending of data
garnered from the markers to the server for determination by the server,” and
because the claims “include limitations that attach the underlying idea of the
claim to a specific application of the underlying idea, Applicants’ claims are
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Application 11/951,074
directed to statutory subject matter.” Id. at 15 (emphasis omitted) (citing
Spec. 123).
After considering the Appellants’ arguments and the evidence
presented in this Appeal for the § 101 rejection, we are not persuaded that
the Appellants identify reversible error in the Examiner’s determinations.
To provide context, 35 U.S.C. § 101 provides that a new and useful
“process, machine, manufacture, or composition of matter” is eligible for
patent protection. The Supreme Court has made clear that the test for patent
eligibility under Section 101 is not amenable to bright-line categorical rules.
See Bilski v. Kappos, 561 U.S. 593, 610 (2010). There are, however, three
limited, judicially-created exceptions to the broad categories of patent-
eligible subject matter in § 101: laws of nature; natural phenomena; and
abstract ideas. See Mayo Collaborative Services v. Prometheus Labs., Inc.,
566 U.S. 66, 70 (2012).
In Alice Corporation Pty, Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) (“Alice’''), the Supreme Court reiterated the framework set forth
previously in Mayo, “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 (citation omitted).
Under Alice, the first step of such analysis is to “determine whether the
claims at issue are directed to one of those patent-ineligible concepts.” Id.
(citation omitted). If determined that the claims are directed to a patent-
ineligible concept, the second step in the analysis 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. (citing Mayo, 566 U.S. at 78—79). In other
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Application 11/951,074
words, the second step is to “search for an ‘inventive concept’—i.e., 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. (citingMayo, 566 U.S. at 72—73).
With this context in mind, we evaluate the Examiner’s rejection of
representative claim 1.
Claim 1 requires reading information from a first electronic marker
coupled to an asset; reading other second information from an electronic
marker of a transport mechanism possessing the asset; storing that, as well as
information on the location of the asset; retrieving one rule comprising at
least one value and an action, with the one value based on empirical data;
executing a statistical test on the information from the first electronic
marker, the information from the second electronic marker and the
information on the location of the asset; executing rule(s) if a result of the
statistical test is outside a predefined confidence level; and adding
information to the empirical data—and these steps are all related to
controlling movement of assets. See Appeal Br., Claims App. 24. In other
words, representative claim 1 is directed to reading and storing information
and performing statistical tests on data. We agree with the Examiner that the
claim as a whole is directed to a method of organizing human activity, that
is, storing and organizing data related to the movement of assets. These
processes remain unpatentable even when automated to reduce burden.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalkv. Benson, [409 U.S. 63 (1972)].”).
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Moreover, as to the second step of the Alice analysis, we agree with
the Examiner’s determination that the claims are a computer implementation
of receiving and analyzing data. See Ans. 6. We are not persuaded by the
Appellants’ arguments that the claims represent that the claims require
complex programming representing “significantly more” than the abstract
idea exception because, as the Examiner found, the claims are directed to the
storage and statistical manipulation of data, and the Appellants fail to
identify why the programming is (or should be) complex or provide details
on it. App. Br. 14—15. Although the Appellants refer to a portion of the
Specification that discusses the use of electronic markers that are scanned,
and computer server coupled to a scanner, it fails to provide any evidence
that the related programming would entail anything atypical from
conventional programming. Id. at 15 (citing Spec. 123). As the Federal
Circuit stated: “after Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.” DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014) (citing Alice, 134 S. Ct. at 2358). The bare fact that a
computer exists in the physical rather than purely conceptual realm “is
beside the point.” Id. Unlike DDR, the instant claims are not “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks,” nor is there any evidence that
the programming reflected in the invention is anything but routine. DDR,
773 F.3d at 1257.
We therefore sustain the Examiner’s rejection of claims 1—20 under
§101.
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35 U.S.C. $ 103(a). The Appellants allege that neither Lin nor
Bridgelall teaches a statistical test on information from two electronic
markers pertaining to an asset, the location of the asset compared to values
in the retrieved rule, whether the statistical test is outside a predefined
confidence level, and, if so, the execution of an action in the same rule from
where the values were extracted. Appeal Br. 16—17. More specifically, the
Appellants allege that Lin fails to teach the claimed execution of a statistical
test, as it is directed to the generation of statistics only. Id. at 19—20. The
Appellants argue that Lin’s disclosure of the determination “of whether or
not the removal and substitution of a bottle from a supply chain will cause
the bottle to move from one data reading point to a next data reading point in
an amount of time that is statistically longer than past bottles,” is insufficient
to teach the claimed limitation because it does not perform the statistical test
on the information that is in the claim (i.e., the first, second, and third
information). Id. at 20—21 (citing Lin 1136). The Appellants allege that
“no teaching is present in Lin that teaches the conduct of a statistical test on
data retrieved from two different electronic markers relating to an asset and
its transport, and also the location of the asset.” Id. at 21.
After considering the Appellants’ arguments and the evidence
presented in this Appeal for the § 103 rejection, we are not persuaded that
the Appellants identify reversible error in the Examiner’s determination that
representative claim 1 is unpatentable under 35 U.S.C. § 103(a) over Lin and
Bridgelall.
We concur with the Examiner’s findings that Lin teaches the use of
information associated with the respective “information” as claimed, that is,
Lin discloses the use of asset electronic marker, transport mechanism, and
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asset location information, the use of rules, as well as the use of statistical
models, for asset control. See Non-Final Act. 10—14 (citing, e.g., Lin || 12,
68, 97, 136). The Appellants’ argument that Lin is insufficient to teach the
claimed limitation is misplaced. More specifically, Lin discloses the use of
the “first, second, and third information.” See Lin 17 (RFID tag), 121,
125 (pallet), | 8 (location). Lin also discloses that:
For example, when many bottles of pharmaceutical pills move
through the supply chain, their progress can monitored by
tracking devices 112-118 at various data reading points 706-
718. Then, the progress of an individual bottle is determined to
have validly passed through the supply chain 704, tracking
information about the valid passage through the supply chain
can be stored and used to validate the passage of future bottles.
In one implementation, statistical models can be generated
based on the historical data to predict the relative time at which
a bottle will pass through each of the data reading points.
When a later bottle moves through the supply chain 740, and an
event message to verily the progress through the chain is
missing, the timing information about the passage of the bottle
though the data reading points in the supply chain can be
compared to the historical data to validate the progress of the
bottle through the supply chain. Such an analysis may be used
to, for example, to detect the removal of a bottle from the
supply chain and the substitution of counterfeit pills for
authentic pills in the bottle, if the removal and substitution
cause the bottle to move from one data reading point to a next
data reading point in an amount of time that is statistically
longer than past bottles.
Lint 136.
We are not persuaded by Appellants’ contention that Lin fails to teach
the execution of a statistical test, as it is directed to the generation of
statistics only, because the argument takes too limited a view of Lin’s
disclosures. Lin teaches that statistical models are generated based on
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historical data to predict the relative time of the progress of a bottle — so that
model is used to “statistical[ly] test on the first information from the first
electronic marker [identification of a specific bottle] . . . and the third
information that comprises the location of the asset in the record [the
location of the specific bottle in the process] as compared to the at least one
value [empirical historical data on location],” thus disclosing that Lin’s
statistical model is used for statistical testing as claimed. Lin 1136
(emphasis added). As to the Appellants’ argument that Lin fails to teach the
statistical test on the information that is in the claim (i.e., the first, second,
and third information), we are also not persuaded. As discussed above, Lin
teaches the use of the first (asset identification), second (transport
identification),6 and third information (location identification), which are
directed to use in asset control. Lin also teaches the execution of a statistical
test on at least some of that information as compared to the at least one
value, and this test is also used for asset control. “[A]ny need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed,” and the disclosure of the statistical tests on bottles in a specific
supply chain could reasonably be used for similar testing of locations of
bottles on pallets (“second information),” thus using all the “first, second,
6 The Examiner finds that Lin teaches the use of multiple “transport
mechanisms,” i.e., pallets, that are in possession of the asset, and relies on
Bridgelall for the teaching of an electronic marker (“second electronic
marker”). See Non-Final Act. 14 (citing Lin 1121, Bridgelall 120). We
find no error with the Examiner’s conclusion that it would have been
obvious to one of ordinary skill in the art was made to modify Lin with
Bridgelall and include the second electronic marker “in order to provide
greater degree of accuracy and greater resolution of the location of an asset
within that area.” Id.
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and third information” in the statistical test. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 420 (2007).
We therefore sustain the rejection of representative claim 1 under
35U.S.C. § 103(a).
SUMMARY
The rejection of claims 7 and 20 under 35 U.S.C. § 112, second
paragraph, is affirmed.
The rejection of claims 1—20 under 35 U.S.C. § 101 is affirmed.
The rejection of claims 1—20 under 35 U.S.C. § 103(a) is affirmed.
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
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