Ex Parte Hyre et al

Patent Trial and Appeal Board

Sep 27, 2017

12912545 (P.T.A.B. Sep. 27, 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.
12/912,545 10/26/2010 Bruce H. Hyre RSW920100139US1 2269
138366 7590
LEE LAW, PLLC
IBM ENDICOTT IP
P.O. BOX 189
PITTSBORO, NC 27312
09/29/2017 EXAMINER
HARRINGTON, MICHAEL P
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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 @ leelawpllc .com
docketing_archive @ leelawpllc .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE H. HYRE, JOHN W. ROSS JR., JOHN K.
SENEGAL, and DONNIE A. SMITH JR.
Appeal 2016-005898
Application 12/912,5451
Technology Center 3600
Before JAMES R. HUGHES, JUSTIN BUSCH, and
SCOTT E. BAIN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1—24, which constitute all the
claims pending in this application. Final Act. 1—2.2 We have jurisdiction
under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is International Business
Machines Corp. See App. Br. 3.
2 We refer to Appellants’ Specification (“Spec.”) filed Oct. 26, 2010, Appeal
Brief (“App. Br.”) filed Sept. 22, 2015, and Reply Brief (“Reply Br.”) filed
May 12, 2016. We also refer to the Examiner’s Answer (“Ans.”) mailed
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Application 12/912,545
We affirm.
Appellants ’ Invention
The invention relates to inventory control systems, computer program
products, and methods of utilizing inventory controllers for receiving, from a
supplier, advance shipment data (associated with a shipment) and generating
a structured data collection model based upon a translation of the advance
shipment data into a container-based format usable to autonomously define
data collection templates to validate containers of the shipment. Spec. Tflf 1—
5; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A method, comprising:
by an inventory controller device:
receiving advance shipment data associated with a
shipment;
verifying the advance shipment data;
generating a structured data collection model based upon
a translation of the advance shipment data into a container-
based format usable to autonomously define data collection
templates to validate containers of the shipment;
defining at least one data collection template usable to
autonomously validate the containers of the shipment based upon
the generated structured data collection model;
storing the generated structured data collection model and
the defined at least one data collection template within a
memory;
Mar. 16, 2016, and Final Office Action (Final Rejection) (“Final Act.”)
mailed Apr. 23, 2015.
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autonomously validating the containers of the shipment in
response to receipt of the shipment using the defined at least one
data collection template within the memory; and
generating an indication of a target storage location within
a receiving facility for each validated container of the shipment
using a defined location topology model of the receiving facility
comprising available storage locations.
Rejections on Appeal
1. The Examiner rejects claims 1—24 under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter.
2. The Examiner rejects claims 1, 2, 5, 6, 9, 10, 13, 14, 17, 18, 21,
and 22 under 35 U.S.C. § 103(a) as being unpatentable over Tien (US
2005/0091129 Al, published Apr. 28, 2005), Aubuchon et al. (US
2008/0255864 Al, published Oct. 16, 2008) (“Aubuchon”), and Sekimoto et
al. (US 2007/0203808 Al, published Aug. 30, 2007) (“Sekimoto”).
3. The Examiner rejects claims 3,11, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Tien, Aubuchon, Sekimoto, and
Gregersen et al. (US 2010/0308975 Al, published Dec. 9, 2010 (filed Mar.
19, 2010)) (“Gregersen”).
4. The Examiner rejects claims 4, 12, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Tien, Aubuchon, Sekimoto, and Kumar
et al. (US 2009/0063233 Al, published Mar. 5, 2009) (“Kumar”).
5. The Examiner rejects claims 7, 8, 15, 16, 23, and 24 under 35
U.S.C. § 103(a) as being unpatentable over Tien, Aubuchon, Sekimoto, and
Young et al. (US 2010/0082151 Al, published Apr. 1, 2010) (“Young”).
ISSUES
Based upon our review of the record, Appellants’ contentions, and the
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Examiner’s findings and conclusions, the issues before us are as follows:
1. Did the Examiner err in rejecting claims 1—24 under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter?
2. Did the Examiner err in rejecting claims 17—24 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter (a transitory
propagating signal)?
3. Did the Examiner err in finding that Tien, Aubuchon, and
Sekimoto collectively would have taught or suggested “generating a
structured data collection model based upon a translation of the advance
shipment data into a container-based format usable to autonomously define
data collection templates to validate containers of the shipment” within the
meaning of Appellants’ claim 1 and the commensurate limitations of
Appellants’ claims 9 and 17?
ANALYSIS
The 35 U.S.C. § 101 Rejection of Claims 1—24
Appellants argue independent claims 1, 9, and 17 together as a group
with respect to the § 101 rejection. See App. Br. 83—89. We select
independent claim 1 as representative of Appellants’ arguments with respect
to claims 1—24. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner rejects the claims as being directed to patent ineligible
subject matter because the claims are directed to an abstract idea in that “the
functions within could be performed by human activities” (i.e., with the
human mind), and “the claims do not amount to significantly more than the
abstract idea itself since they require no more than a generic computer to
perform generic computer functions.” Final Act. 13 (see Final Act. 13—14;
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Ans. 28—35). Appellants contend that “Appellant’s claims are not directed
to an abstract idea, per se,” because “Appellant’s claimed subject matter is
not claiming an abstract idea to the exclusion of all others,” and “is not only
automation that enhances computing technology itself, but constitutes a
significant new and useful end result” (App. Br. 84). See App. Br. 83—89;
Reply Br. 20-22. Appellants further contend that the claim language [does]
not utilize human activities, it is not performed by human activities as
alleged, and it specifically excludes human activities in several phrases.
App. Br. 85.
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “Tong held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77—80 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts” {id.), e.g., to an
abstract idea. If the claims are not directed to an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
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of the claims are considered “individually and ‘as an ordered combination’
to determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting
Mayo, 566 U.S. at 78, 79).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims 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. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Turning to the first step of the eligibility analysis, the Examiner finds
that claim 1 could be performed solely in the human mind (see App. Br. 13;
Ans. 31—32), and is directed to the abstract idea of “using categories to
organize, store and transmit information” and “organizing information using
mathematical correlations” (Ans. 29). See Final Act. 13—14; Ans. 28—35.
Conversely, the Appellants contend that Appellants’ claim recites
“automation that enhances computing technology itself’ (App. Br. 84) and
comprises, inter alia, “an inventory controller device: . . . autonomously
validating the containers of the shipment in response to receipt of the
shipment using the defined at least one data collection template within the
memory” (App. Br. 84).
The independent claims (claims 1, 9, and 17) are directed to a process
for generating a structured data collection model and defining data collection
templates to validate containers of a shipment. Specifically, the method
receives advance shipment data, somehow “obtains a translation of the
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advance shipment data (this feature is not positively recited, but the model
generation (infra) is based on the translation) into a container-based format
and generates a structured data collection model based on the translation.
The method also uses the translated information to autonomously define data
collection templates, which are utilized to validate containers of the
shipment. The method further includes steps of defining at least one data
collection template usable to autonomously validate the containers of the
shipment based upon the generated structured data collection model, storing
the generated structured data collection model and the defined at least one
data collection template within a memory, autonomously validating the
containers of the shipment in response to receipt of the shipment using the
defined at least one data collection template within the memory, and using a
defined location topology model of the receiving facility to generate an
indication of a target storage location within a receiving facility for each
validated container of the shipment (claim 1). See Spec. Tflf 55—57, 93, 99.
That is, Appellants’ claim recites receiving an input (advanced shipment
data), modifying (translating) the input data into different data, generating a
model from the data, autonomously defining a template from the model,
storing the generated model and template in memory, and autonomously
validating the containers of the shipment using the template. The claim
consists entirely of data modification and manipulation utilizing undisclosed
and unclaimed algorithms.
To the extent Appellants assert the instant claims are similar to the
claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014), in that the claims improve a technical field (supra),
Appellants misconstrue DDR Holdings. In DDR Holdings, the court held
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that a claim may amount to more than any abstract idea recited in the claims
when it addresses and solves problems only encountered with computer
technology and online transactions, e.g., by providing (serving) a composite
web page rather than adhering to the routine, conventional functioning of
Internet hyperlink protocol. See DDR Holdings, 773 F.3d at 1257—59.
In contrast, claim 1 performs a process that manipulates and organizes
information (advanced shipment data) into a model and template (data
structures) and validates shipments against the template (data analysis)
utilizing a conventional computer. See Final Act. 13—14; Ans. 28—35; Spec.
107, 112; cf App. Br. 86—88; Reply Br. 20—22. Data analysis,
organization, and manipulation are not technical problems as discussed in
DDR, they are organization and/or efficiency problems. Utilizing a model
and templates to validate shipments is a commercial solution to the
organizational problem, not a technical solution. This commercial solution
may be assisted using a general purpose computer to perform the data
analysis, organization, and manipulation processes, but does not arise
specifically in the realm of computer networking or improve how the
computer itself functions.
The instant claims are more akin to the claims for analyzing
information found to be abstract in Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016), or the claims directed to image
data processing discussed in Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (finding
“a process that employs mathematical algorithms to manipulate [data or
information] to generate additional information is [abstract and] not patent
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eligible”). See Elec. Power Grp., 830 F.3d at 1353—54 (citing Digitech, 758
F.3d at 1351).
Having found Appellants’ claims are directed to an abstract concept
under Alice’s step 1 analysis, we next address whether the claims add
significantly more to the alleged abstract idea. See Final Act. 13—14;
Ans. 28—35. As directed by our reviewing Court, we search for an
‘“inventive concept’ sufficient to ‘transform the nature of the claim into a
patent-eligible application.’” McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2355).
Appellants contend claim 1 and the other independent claims “require
more than a generic computer to perform” the disputed limitations including
the autonomous validation (App. Br. 86; see App. Br. 86—88; Reply Br. 20-
22). We disagree with Appellants’ unsupported and conclusory arguments.
Appellants’ claim 1 recites processes for manipulating data, e.g., utilizing
database operations. As discussed supra, method steps of analyzing,
organizing, and manipulating information are all routine and conventional
computer functions (i.e., mathematical operations) of a general processor.
The Specification supports this view in discussing the processes
implemented in software which operates on generic computers to perform
the recited data manipulation steps. See Spec. 107, 112; Fig. 10.
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner’s rejection under § 101 of independent claims 1, 9, and 17, and
also dependent claims 2—8, 10-16, and 18—24, which fall with claims 1, 9,
and 17, respectively.
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The Additional 35 U.S.C. § 101 Rejection of Claims 17—24
Appellants argue claims 17—24 together as a group with respect to the
§101 rejection. See App. Br. 89-91. We select independent claim 17 as
representative of Appellants’ arguments with respect to claims 17—24.
37 C.F.R. §41.37(c)(l)(iv).
The Examiner rejects the claims as being directed to patent ineligible
subject matter because the claims “could be directed towards a transitory
propagating signal per se and considered to be non-statutory subject matter.”
Final Act. 14; see Ans. 35—36. Appellants contend the Examiner’s
interpretation of the claim is not consistent with Appellants’ Specification,
which distinguishes computer readable storage mediums (media) from
computer readable signal media. See App. Br. 90; Reply Br. 22 (citing Spec.
Tflf109-110). We agree with Appellants that the Specification distinguishes
the recited computer readable storage media from transitory signals as
proscribed by In reNuijten, 500 F.3d 1346, 1356—57 (Fed. Cir. 2007).
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that Appellants’ claims 17—24 are directed to
non-statutory (patent ineligible) subject matter. Accordingly, we do not
sustain the Examiner’s § 101 rejection of claims 17—24.
The 35 U.S.C. § 103(a) Rejection
The Examiner rejects independent claim 1 (and independent claims 9
and 17) as being obvious in view of Tien, Aubuchon, and Sekimoto. See
Final Act. 15—19; Ans. 2—17. Appellants contend Tien, Aubuchon, and
Sekimoto do not teach the disputed features of claim 1. App. Br. 33—57;
Reply Br. 2—12. Specifically, Appellants contend, inter alia, “the Patent
Office has not identified Appellant’s claimed structured data collection
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model within the evidence of record” (App. Br. 34) and the cited prior art
(Tien, Aubuchon, and Sekimoto) do not teach the recited data collection
model. See App. Br. 34-41; Reply Br. 3—9. The Examiner repeats the
language of the claim and cites multiple disparate portions of Tien,
Aubuchon, and Sekimoto, but never clearly maps the prior art to the specific
limitation of generating a structured data collection model from a translation
of the advance shipment data into a container-based format, nor does the
Examiner clearly explain how this feature is met by the prior art. See Final
Act. 16—19; Ans. 2—5.
Appellants persuade us of error in the Examiner’s obviousness
rejection. The Examiner provides no clear mapping or explanation between
the disputed claim limitation and disclosures of Tien and Aubuchon (and
Sekimoto). Further, the cited portions of Tien and Aubuchon appear to
conflate and contradict the various processes recited in Appellants’ claim 1.
See App. Br. 34-41; Reply Br. 3—9. Appellants, on the other hand, provide a
detailed discussion of Tien and Aubuchon and explain why the references do
not teach the disputed limitations. See id.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Tien, Aubuchon, and Sekimoto teach the
disputed limitations of Appellants’ claim 1. Independent claims 9 and 17
include limitations of commensurate scope. Dependent claims 2—8, 10-16,
and 18—24 depend on claims 1, 9, and 17, respectively, and stand with their
respective independent claims. Accordingly, we reverse the Examiner’s
obviousness rejection of claims 1—24.
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CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1-24 under 35 U.S.C. § 101.
Appellants have shown that the Examiner erred in rejecting claims
17—24 under 35 U.S.C. § 101 in that the claims are not directed to transitory
signals.
Appellants have shown that the Examiner erred in rejecting claims 1—
24 under 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
DECISION
We affirm the Examiner’s rejection of claims 1—24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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