Ex Parte Johnston

Patent Trial and Appeal Board

Jul 20, 2017

13444779 (P.T.A.B. Jul. 20, 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.
13/444,779 04/11/2012 Lenrick Johnston 352.06 1026
55409 7590 07/24/2017
TEMMERMAN LAW OFFICE
MATHEW J. TEMMERMAN
ONE MARKET STREET
SPEAR TOWER, 36TH FLOOR
SAN FRANCISCO, CA 94105
EXAMINER
FIELDS, BENJAMIN S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/24/2017 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):
MATHEW@TEMMERMANLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LENRICK JOHNSTON
Appeal 2016-007067
Application 13/444,779
Technology Center 3600
Before ROBERT E. NAPPI, SCOTT E. BAIN, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4—7, and 10-19. Br. 2.2 Claims 2, 3, 8, and 9 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellant identifies the real party in interest as Bioproduction Group, Inc.
Br. 2.
2 Throughout this opinion, we refer to (1) the Final Rejection (“Final Act.”)
mailed April 23, 2015, (2) the Appeal Brief (“Br.”) filed December 21,
2015, and (3) the Examiner’s Answer (“Ans.”) mailed May 6, 2016. The
Appeal Brief does not contain page numbers but we refer to the pages in
order starting from the signed cover page.
Appeal 2016-007067
Application 13/444,779
THE INVENTION
Appellant’s invention publishes and updates feasible finite schedules.
Spec. 111, 9. Finite scheduling is a constraint-based scheduling method
used by businesses to plan activities and resource use. Id. 12. A “feasible”
schedule is one that allocates tasks to resources in a way that does not break
the rules for a resource’s or machine’s operation. Id. 19. In one example, a
finite schedule is an allocation of cars to carwash machines. Id. 1 50. In this
example, the schedule is feasible when neither machine is washing two cars
at the same time. Id. 1 52.
Claim 1 is reproduced below:
1. A computer implemented method for real-time publishing
of a feasible finite schedule comprising a plurality of activities
and a plurality of resources, the method comprising the steps of:
(a) deriving at least one master schedule a, a=l... A
from an output of a finite schedule, the at least one master
schedule comprising at least one master activity instance ia,
ia=l . . . Ia associated therewith;
(b) providing at least one published schedule b,
b=l. . . B associated with the at least one master schedule a, the
at least one published schedule b including at least one published
activity instance ib, ib=l . . . E associated therewith;
(c) creating a schedule mapping table to store at least
one relationship between the at least one master schedule a and
the at least one published schedule b;
(d) creating an activity instance mapping table for the
at least one master schedule a, the activity instance mapping table
including at least one unique identifier to map the at least one
master activity instance ia and the at least one published activity
instance E in the at least one master schedule a and the at least
one published schedule b;
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(e) defining at least one property p, p= 1 . . . P for the
at least one master activity instance ia and the at least one
published activity instance h;
(f) iterating over each of the at least one master
schedule a, a=l... A and determining the existence of the at least
one published schedule b by checking the schedule mapping
table;
(g) creating a new published schedule if the at least one
published schedule b does not exist in the schedule mapping
table;
(h) iterating over each of the at least one master activity
instance ia and iterating over each of the at least one published
schedule b to determine if the at least one published activity
instance ib exists in the at least one published schedule b by
checking the activity instance mapping table;
(i) creating a new published activity instance if the at
least one published activity instance ib does not exist in the at
least one published schedule b and storing an entry ia/ib in the
activity instance mapping table for the at least one published
schedule b;
(j) iterating over each of the at least one property p,
p=l... P for determining if the at least one property of the at
least one master activity instance ia matches with the at least one
published activity instance h;
(k) altering the at least one published schedule b, the at
least one published activity instance ib and the at least one
property p to match with the at least one master schedule a and
registering an entry ia/ib in the activity instance mapping table as
not valid if the at least one property p of the at least one master
activity instance ia does not match with the at least one published
activity instance ib; and
(l) registering the entry ia/ib in the activity instance
mapping table as valid if the at least one property p of the at least
one master activity instance ia matches with the at least one
published activity instance h;
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Application 13/444,779
whereby the at least one master schedule is adaptable to
communicate with devices including but not limited to a
computer, a smart phone, a mobile phone and a mechanism
adaptable to view the at least one master schedule utilizing E-
mail/Calendar platforms.
THE REJECTIONS
The Examiner relies on the following as evidence:
Lyle et al. US 2008/0091504 A1 Apr. 17, 2008
Claims 1, 4—7, and 10-19 stand rejected under 35U.S.C. § 101 as
directed to non-statutory subject matter. Ans. 3—5.
Claims 1, 4—7, and 10-19 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lyle. Ans. 5—13.
THE REJECTION UNDER 35 U.S.C. § 101
Independent claims 1, 7, 13, and 19
The Examiner rejects claims 1, 7,3 13, and 19 under 35 U.S.C. § 101
because the claims as a whole (1) are directed to an abstract idea and (2) do
not contain an inventive concept sufficient to transform the claimed abstract
idea into a patent-eligible application. Ans. 3—5. For the reasons discussed
below, Appellant has not persuaded us of error.
3 Claim 7 in the Claims Appendix contains a strikethrough in step (k): “is
does”. Br. 29. Because the amendment deleting this text has been entered
(see, e.g., Final Act. 3), we treat the word “is” as deleted from claim 7 for
the purposes of this appeal.
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Application 13/444,779
I
The Supreme Court’s two-step framework guides our analysis. See
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014).
According to step one, “[w]e must first determine whether the claims at
issue are directed to a patent-ineligible concept,” such as an abstract idea.
Id.
Appellant argues that the invention includes a system compatible to
work with other devices and is not directed to an abstract idea. Br. 10.
According to Appellant, this system requires an algorithm and not merely a
generic computer. Id. at 10-11.
We, however, agree with the Examiner that the claims are directed to
an abstract idea of creating a schedule. Ans. 4.
The Specification underscores the abstract nature of the idea in the
claims. In particular, the claimed algorithm solves the problem of allocating
tasks to resources according to rules. Spec. 19. For example, one
embodiment allocates cars to carwash machines so that no machine is
washing two cars at the same time. Id. Tflf 50, 52. The Specification
explains that this constraint-based scheduling is used by businesses to plan
activities and resource use. Id. 12. Yet, businesses have engaged in this
type of activity well before computers.
Although Appellant’s algorithm is implemented on a computer, the
computer only accelerates what could otherwise be performed by a human
carrying out the steps manually and mentally. Specifically, claims 1,7, 13,
and 19 are directed to algorithms for determining and publishing the
schedule. The claimed algorithms use a “master schedule,” “published
schedule,” “properties,” “activity instances,” as well as tables to store the
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relationship between this data. But a computer is not required to maintain
the tables and other data. Rather, the diagrams shown in Figures 5 through
7J could represent this data on paper and still allow a person to follow the
recited steps—e.g., by creating, iterating over, and altering human-
transcribed information. See id. ]Hf 48—55 (describing the Figures).
To be sure, the claims recite that the master schedule is “adaptable to
communicate with devices,” as Appellant points out. See Br. 10-11. But
this feature does not change the claims’ character as a whole, which we must
look to in determining whether the claims are “directed to” excluded subject
matter in step one of the Alice framework. See Affinity Labs of Tex., LLC v.
DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). Rather, the claims, as
a whole, can be understood as simply adding conventional computer
components—i.e., networked devices—to a manually executable algorithm.
The Federal Circuit has recognized that similar manual and mental
processes are “directed to” abstract ideas. See, e.g., CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011)
(“[CJomputational 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.”) (citation omitted); Mortgage Grader, Inc. v. First Choice Loan
Servs., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (concluding that the claim was
directed to an abstract idea and explaining that “[t]he series of steps covered
by the asserted claims . . . could all be performed by humans without a
computer.”). Overall, the focus of claims 1,7, 13, and 19 is not on “an
improvement in computers as tools,” unlike claims that the Federal Circuit
has found eligible under § 101. See Elec. Power Grp., LLC v. Alstom S.A.,
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830 F.3d 1350, 1354 (Fed. Cir. 2016) (citing Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335—36 (Fed. Cir. 2016)). Rather, the focus of the claims
here is on an independently abstract idea that uses a computer as a tool, like
those claims that the Federal Circuit has found to be ineligible. See Elec.
Power, 830 F.3d at 1354.
On this record, we are unpersuaded that the Examiner erred in
concluding that claims 1,7, 13, and 19 are directed to an abstract idea.
II
Because the claims are “directed to an abstract idea,” we analyze the
claims to determine if the limitations, when considered both “individually
and as an ordered combination” contain an inventive concept sufficient to
transform the claimed abstract idea into a patent-eligible application. Alice,
134 S. Ct. at 2355-58.
Appellant argues that the claimed method resides in a computer,
which typically has a processor, control unit, a readable medium, storage
units, as well as input and output devices. Br. 11. According to Appellant,
the method creates a published schedule that uses the master schedule as a
reference, which is non-trivial and requires computer hardware. Id.
Appellant further argues that the method stores entries in a mapping table,
which requires a storage unit. Id. at 12. In Appellant’s view, the method
requires a computer for speed and accuracy and this amounts to significantly
more than data transcription using a generic computer. Id. at 12—13.
Appellant explains that the method requires “a high-speed processor” to
perform multiple activities dynamically and simultaneously. Id.
But there is no indication that the identified components (id. at 11—13)
produce “a result that overrides the routine and conventional” use of their
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known features. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1258 (Fed. Cir. 2014). Indeed, the Federal Circuit has distinguished
between claims that “merely recite the performance of some business
practice known from the pre-Internet world along with the requirement to
perform it on the Internet” and claims that are “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” Id. at 1257. The claims here are more
like the former.
Specifically, considering the claimed method steps individually, the
function performed by the computer at each step of the process is purely
conventional. Unlike the improvement to three-dimensional animation in
McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299, 1315 (Fed. Cir.
2016), Appellant does not point to a technical advance or improvement. See
Br. 11-13.
Rather, the claimed method merely uses a processor to accelerate the
calculations. To be sure, a computer likely iterates over the schedules faster
than a human can review them. But, even if a “high-speed processor”
performs multiple calculations in the claimed method dynamically and
simultaneously {id. at 12—13), this use of a computer is well-known and
routine. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1278 (Fed. Cir. 2012) (“The computer required by some of
Bancorp’s claims is employed only for its most basic function, the
performance of repetitive calculations, and as such does not impose
meaningful limits on the scope of those claims.”).
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The same is true for using a storage unit to store data in a mapping
table. See Br. 12. Storing data is “one of the most basic functions of a
computer.” Alice, 134 S. Ct. at 2359.
Lastly, we note that, although the recited master schedule is adapted
to communicate with devices (Br. 10—11), the computer’s role in
communicating, as broadly claimed here, does not add an “inventive
concept” under step two of the Alice framework. See buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (explaining that
“computers in Alice were receiving and sending information over networks
connecting the intermediary to the other institutions involved, and the Court
found the claimed role of the computers insufficient.”). In sum, the claimed
steps, considered individually, do not contain an inventive concept.
Considering the limitations as an ordered combination, the computer
involvement in the claimed method adds nothing that is not already present
when the steps are considered individually. Like those considered in Alice,
claims 1,7, 13, and 19 “amount to ‘nothing significantly more’ than an
instruction to apply the abstract idea” using a generic computer. 134 S. Ct.
at 2360. Claim 19, in particular, merely recites a system for performing the
method, which is insufficient. See id.
Therefore, Appellant has not persuaded us of error in the rejection of
independent claims 1,7, 13, and 19 under 35 U.S.C. § 101.
We sustain the Examiner’s rejection of claims 1,7, 13, and 19 under
§101.
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The Dependent Claims
Appellant does not argue dependent claims 4—6, 10—12, and 14—18
separately with particularity. Instead, Appellant relies on the arguments
presented for the independent claims. See Br. 13 (“For at least these
reasons, the Applicant respectfully submits that Independent Claims 1,7, 13
and 19, as well as all claims dependent from them are currently directed to
statutory subject matter and not an abstract idea under 35 U.S.C. § 101.”)
(emphasis added). Accordingly, we find Appellant’s arguments
unpersuasive for the reasons previously discussed.
We sustain the Examiner’s rejection of claims 4—6, 10—12, and 14—18
under § 101.
THE ANTICIPATION REJECTION
The disputed limitation of claims 1,7, 13, and 19 recites, in part, in
step (k), “registering an entry ia/ib in the activity instance mapping table as
not valid if the at least one property p . . . does not match with the at least
one published activity instance ib” and, in step (1), registering the entry as
“valid” if a property matches. The matches recited in steps (k) and (1) are
determined by iterating over the properties in step (j).
The Examiner finds Lyle discloses every recited element of claims 1,
7, 13, and 19. Ans. 6—12. According to the Examiner, Lyle performs the
recited iteration and registration in steps (j), (k), and (1) when determining a
conflict between scheduled calendar events. See id. at 10 (citing Lyle 110);
see also id. at 11—13.
Appellant argues that Lyle does not iterate over properties and register
the table entries as valid if they match. Br. 20. According to Appellant,
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Lyle only reschedules the event if a conflict occurs. Id. Appellant’s
argument (id.) is persuasive.
Lyle’s system resolves conflicts between events in an electronic
calendar. Lyle 11. In paragraph 10, Lyle’s component determines if there
is a conflict between one calendar event and another scheduled earlier.
Id. 110, cited in Ans. 10. Apart from disclosing that a component is
configured to perform this determination, paragraph 10 does not expressly
disclose that the system does so using a mapping table with the recited
registrations. See Lyle 110. Instead, Lyle only discloses that a component
notifies the sender about the recipient’s conflict. Id.', accord Br. 20.
Furthermore, the rejection lacks an explanation of how Lyle’s
component inherently registers based on matching properties, or must do so
using the recited table. See Ans. 10; see also Final Act. 10. Although the
Examiner explains that Lyle’s system is automatic (Ans. 15—16), this
explanation does not address how Lyle necessarily registers entries in a table
as recited (see Br. 20). Accordingly, the Examiner has not shown that Lyle
inherently or expressly discloses using or registering anything in a table in
the manner recited in steps (j), (k), and (1).
We take no position on whether these steps would have been obvious
in view of Lyle. The question before us is whether Lyle anticipates the
claims under section 102. And on this record, the Examiner’s anticipation
rejection cannot be sustained for the reasons discussed in this section.
Therefore, we are constrained by this record to find that the Examiner
erred in rejecting claims 1,7, 13, and 19 as anticipated by Lyle (see Ans. 6—
12), and in rejecting dependent claims 4—6, 10-12, and 14—18 for similar
reasons.
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CONCLUSIONS
We affirm the Examiner’s rejection of claims 1, 4—7, and 10—19 under
§101.
We reverse the Examiner’s rejection of claims 1, 4—7, and 10—19
under § 102(b).
DECISION
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).
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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