Ex Parte Kestenbaum

Patent Trial and Appeal Board

Sep 25, 2017

13587016 (P.T.A.B. Sep. 25, 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.
13/587,016 08/16/2012 Gerald Isaac Kestenbaum 23302.003US 3096
54205 7590 09/27/2017
NORTON ROSE FULBRIGHT US LLP
98 San Jacinto Blvd, Suite 1100
Austin, TX 78701
EXAMINER
STROUD, CHRISTOPHER
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
aoipdocket @ nortonrosefulbright .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD ISAAC KESTENBAUM
Appeal 2015-002455
Application 13/587,0161
Technology Center 3600
Before, JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1—29 and 31. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies BuildingLink.com, LLC as the real party in interest.
App. Br. 1.
Appeal 2015-002455
Application 13/587,016
THE INVENTION
Appellant states that the claims relate to “an apparatus and a method
for providing building management information and/or for providing
building-related services.” Spec. 1:6—8.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A service request management system that enables
collaborative information sharing between an occupant of a
building and an individual associated with building
operations, the system comprising:
one or more memories storing instructions; and
one or more processors capable of executing the
instructions to perform:
receiving, from the occupant, a new service
request requesting a service or maintenance
task to be performed at the building, the new
service request including service request
information that describes at least one
characteristic of the new service request;
storing at least part of the new service request in a
service request database of the service
request management system;
receiving, from the individual associated with
building operations, a request to be
presented with outstanding service requests
stored in the service request database that
are of a service category corresponding to an
expertise of the individual associated with
building operations;
in response to the request received from the
individual associated with building
operations, selecting ones of a plurality of
outstanding service requests stored in the
service request database based on the service
category corresponding to the expertise of
the individual associated with building
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operations, the selected ones of the plurality
of outstanding service requests including the
new service request;
presenting, to the individual associated with
building operations, the selected ones of the
plurality of outstanding service requests;
receiving, from the individual associated with
building operations, a selection of the new
service request from the selected ones of the
plurality of service requests;
receiving, from the individual associated with
building operations, service request
modification information to modify the
service request information stored in the
database; and
updating the service request information stored in
the database based on the service request
modification information.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Spix et al.
(hereinafter “Spix”)
US 6,195,676 B1 Feb. 27, 2001
Do wens et al.
(hereinafter “Dowens”)
US 2002/0037074 Al Mar. 28, 2002
Derzay et al.
(hereinafter “Derzay”)
US 6,434,572 B2 Aug. 13, 2002
Marpe et al.
(hereinafter “Marpe”)
US 2002/0184191 Al Dec. 5, 2002
Corrigo Unveils Compelling Maintenance and Customer Service
Solution for Property Managers at MultiTech 2000, Business Wire
(Mar. 16, 2000), http://proquest.umi.com/pqdweb?did=
51112243&sid= l&Fmt=3&clientld=19649&RQT=309&
VName=PQD (hereinafter “Corrigo”).
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Application 13/587,016
The following rejections are before us for review.2
Claims 1—3, 5, 6, 8—12, 14—18, 20, 21, 23-27, 29, and 31 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Derzay and Spix.
Claims 4 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Derzay, Spix, and Corrigo.
Claims 7 and 22 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Derzay, Spix, and Marpe.
Claims 13 and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Derzay, Spix, and Dowens.
Claims 1—29 and 31 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
ANALYSIS
35 U.S.C. § 103 REJECTION
We will not sustain the rejection of claims 1—29 and 31 under
35 U.S.C. § 103.
Each of independent claims 1,16, and 31 recites, in one form or
another:
receiving, from the individual associated with building
operations, service request modification information to
2 The final rejection breaks down the rejection of claims 1—29 and 31 into
four separate rejections using multiple references. (See Final, 2, 8 9 and 11).
But, the Answer on page 6 groups all claims in a single rejection using the
broadest combination of Derzay and Spix. We consider the Examiner’s
handling of the rejection in the Answer to be a shorthand way of addressing
the claims which are appealed, given that the arguments made by Appellants
are only directed to Dezray and Spix.
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Application 13/587,016
modify the service request information stored in the
database; and updating the service request information
stored in the database based on the service request
modification information.
Appellant argues,
Derzay describes performing a "sweep" of a diagnostic system
for system data and updating the "service data records for the
particular diagnostic system" by storing the system data.
Derzay, at 20:28-46. Adding information to a collection of
previously stored information related to a medical diagnostic
system, as described in Derzay, is not the same as updating a
service request itself, as required by claim 1.
Appeal Br. 12 (emphasis omitted).
The Examiner however found concerning claims 1 and 16 that this
limitation is disclosed by Spix at column 15, lines 42-67 and column 16,
lines 1-39. (Final Act. 4, see also Answer 6). The Examiner found
concerning claim 31, “Derzay teaches receiving, from a computing device
associated with the occupant, a request to be presented with the new service
request, including the updated service request information (Fig 10, column
15, lines 1-15; column 11, lines 44-49, 65-67; column 12, lines 1-5, 57-65;
column 14, lines 46-49)” (Final Act. 8 (emphasis omitted)).
We agree with Appellant. Our review of Derzay at the sections cited
by the Examiner reveals that Derzay at best discloses a messaging system in
which a user may select a particular “current or saved message[] ... for
viewing by selection of the entire or a portion of the text defined in the
tabulated message list.” Derzay, col. 15,11. 9-16. We fail to see, and the
Examiner does not explain, how providing access to current and saved
messages on a message page equates to the claimed “updating the service
request information stored in the database based on the service request”
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given that, in Derzay, the message page is not strictly dedicated to service
request information. Derzay explicitly discloses that the message page
includes messages from plural sources e.g., “information on service and
other messages received by the diagnostic system via a network connection.”
(Derzay, col. 15,11. 5—6). Thus, the message page cannot be read as service
request modification information which modifies stored service request
information because other messages which are currently stored on that
message page may not pertain to a standing service request also listed on the
page.
Therefore, we will not sustain the rejection of independent claims 1,
16 and 31. Since claims 2—15 and 17—29 depend from claims 1 and 16,
respectively, and since we cannot sustain the rejection of claims 1 and 16,
the rejection of the dependent claims likewise cannot be sustained. We note
that the references cited by the Examiner in addition to Derzay and Spix do
not remedy the shortfalls discussed above.
35 U.S.C. § 101 REJECTION
We will sustain the 35 U.S.C. § 101 rejection of claims 1—29 and 31.
Claim 1 is illustrative of the subject matter in each of the independent
claims and recites in pertinent part:
receiving, from the individual associated with building
operations, a request to be presented with outstanding
service requests stored in the service request database
that are of a service category corresponding to an
expertise of the individual associated with building
operations;
in response to the request received from the individual
associated with building operations, selecting ones of a
plurality of outstanding service requests stored in the
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service request database based on the service category
corresponding to the expertise of the individual
associated with building operations, the selected ones of
the plurality of outstanding service requests including the
new service request;
presenting, to the individual associated with building
operations, the selected ones of the plurality of
outstanding service requests;
receiving, from the individual associated with building
operations, a selection of the new service request from
the selected ones of the plurality of service requests;
receiving, from the individual associated with building
operations, service request modification information to
modify the service request information stored in the
database; and
updating the service request information stored in the database
based on the service request modification information.
App. Br. 18, Claims App’x (claim 1).
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis as a 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.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 72-73 (2012)).
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To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble of claim 1 recites it “enables collaborative information
sharing between an occupant of a building and an individual associated with
building operations.” The steps in claim 1 result in receiving, from the
individual associated with building operations, service request modification
information to modify the service request information. The Specification
recites:
Problems are routinely encountered when management or
maintenance departments fail to follow-up on occupant or
tenant requests, fail to keep records of same, and/or fail to
respond to same. Failing to organize building management
and/or maintenance information can also result in a lack of
continuity in responding to the needs of occupants and/or
tenants in a satisfactory manner.
Spec. 2:16—3:5.
Thus, all this evidence shows that claim 1 is directed to collaborative
information sharing between an occupant of a building and an individual
associated with building operations. It follows from prior Supreme Court
cases, and Gottschalk v. Benson, 409 U.S. 63 (1972), in particular, that the
claims at issue here are directed to an abstract idea. Claim 1 insures against
management/maintenance departments failing to follow-up on occupant or
tenant requests, failing to keep records of same, and/or failing to respond to
same. Spec. 2:16—3:5. Independent claim 1, thus, organizes how building
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managers respond to tenants’ service requests, and thus represents a method
of organizing human behavior of the maintenance workers, which is not
patentable subject matter. See Alice, 134 S. Ct. at 2355—56. Thus, enabling
collaborative information sharing between an occupant of a building and an
individual associated with building operations is an “abstract idea” beyond
the scope of § 101.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
of enabling collaborative information sharing and response, between an
occupant of a building and an individual associated with building operations.
Both are squarely within the realm of “abstract ideas” as the Court has used
that term. That the claims do not preempt all forms of the abstraction or
may be limited to property management setting, does not make them any
less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1360-61 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
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eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data, compute a result, and return the result to a
designated user amounts to electronic data query and retrieval—some of the
most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s claims simply
recite the concept of enabling collaborative information sharing and
response, between an occupant of a building and an individual associated
with building operations. The claims do not, for example, purport to
improve the functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
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at issue amount to nothing significantly more than instructions to enable
collaborative information sharing and response, between an occupant of a
building and an individual associated with building operations. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd., 134 S. Ct._at 2360 (alterations in original).
We thus disagree with Appellant’s arguments that the claims “recite
subject matter not taught or suggested in the prior art of record for at least
the reasons explained below. This alone suffices as an ‘inventive concept’
under § 101.” Reply Br. 7.
We are not persuaded by Appellant’s argument that because the
standard for patentability under 35 U.S.C. § 103(a) is obviousness, the
standard for patentability under 35 U.S.C. § 102 is novelty, and the standard
for patent eligibility under 35 U.S.C. § 101 is abstract idea. Each of these
standards are separately required to be met before patentability can be
conferred on invention, which is not the case here based on the latter
standard. “The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.” Diamond v. Diehr, 450 U.S. 175, 188—89 (1981).
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We further disagree that “because Appellant's claims do not
"monopolize" any method of organizing human activity or any fundamental
economic principle of service management, the claims are not directed to an
abstract idea as contended in the Examiner's Answer.” (Reply Br 6.) Again,
that the claims do not preempt all forms of the abstraction or may be limited
to property management setting, does not make them any less abstract. See
OIP Techs., Inc., 788 F.3d at 1360-61 (Fed. Cir. 2015).
Finally we disagree with the Appellant’s contention that,
The collaborative information sharing system addresses known
problems in the industry related to disorganization of service
requests and a lack of continuity and communication between a
building occupant and building personnel in responding to
service requests. The claimed system solves these problems in
the service management industry in a way not addressed by
prior art systems.
Reply Br. 7—8 (citation omitted). The question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
technology” or are “directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) citing Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). In this case,
claim 1 as a whole is focused on the goal of enabling “collaborative
information sharing between an occupant of a building and an individual
associated with building operations.” This facilitates the management of the
property workers and not the computer system.
We thus affirm independent claims 1,16, and 31. We also affirm the
rejection of dependent claims 2—15 and 17—29 since Appellant has not
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challenged such with any reasonable specificity. See In re Nielson, 816 F.2d
1567, 1572 (Fed. Cir. 1987).
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1—29 and 31
under 35 U.S.C. § 103.
We conclude the Examiner did not err in rejecting claims 1—29 and 31
under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1—29 and 31 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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