Ex Parte Liebelt et al

Patent Trials and Appeals Board

Apr 1, 2019

13484612 - (D) (P.T.A.B. Apr. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/484,612 05/31/2012
50441 7590
DUFT & BORNSEN, PC
1319 W BASELINE RD
SUITE IOOA
LAFAYETTE, CO 80026
04/03/2019
FIRST NAMED INVENTOR
Linda S. Liebelt
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.
BLD9-2011-0042-US 1 5127
EXAMINER
BATAILLE, FRANTZ
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
04/03/2019 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@db-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte LINDA S. LIEBELT, MARQUIS G. WALLER, and
SCOTT ZIEGLER
Appeal2018-003345
Application 13/484,612
Technology Center 2600
Before: ELENI MANTIS MERCADER, JENNIFER S. BISK, and
JOHN P. PINKERTON, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2018-003345
Application 13/484,612
CLAIMED SUBJECT MATTER
The claims are directed to generation of samples for a print job that
include resource usage estimates. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A system comprising:
memory to store different sets of printing parameters used to
output print jobs, each set of printing parameters identifying a
different combination of an International Color Consortium
(ICC) profile and a media type;
an interface operable to receive a print job that includes multiple
pages;
a control unit operable to identify a selection of a sample page
among the multiple pages to represent the print job, to generate
multiple versions of the sample page by rasterizing the sample
page multiple times using one of the different sets of printing
parameters for each rasterization, and to determine an estimate
of printing resource usage for each of the multiple versions of the
sample page using one of the different sets of printing parameters
for each estimate; and
a printer to print the multiple versions of the sample page using
one of the different sets of printing parameters for each print,
wherein each print includes an output of a version of the sample
page and an output indicating the estimate of printing resource
usage for the version of the sample page;
the control unit further operable to receive user input that
identifies a selected one of the different sets of printing
parameters used to print the sample page; and
the printer further operable to print the print job with the selected
one of the different sets of printing parameters.
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Appeal2018-003345
Application 13/484,612
REJECTIONS 1
Claims 1-20 stand rejected under 35 U.S.C §101 as being directed to
a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more.
OPINION
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014) (internal quotation marks and citaiton omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
1 We note that the Examiner construed the term "control unit" as recited in
claims 1-3 and 5-7 as a processor as appearing in paragraph 18 of
Appellants' Specification. Appellants have not contested this construction,
and thus, the Examiner's construction of the claim term "control unit"
stands.
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Appeal2018-003345
Application 13/484,612
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract .... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim recites an abstract idea, we tum to the second step of the
Alice and Mayo framework, where "we must examine the elements of the
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Appeal2018-003345
Application 13/484,612
claim to determine whether it contains an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application."
Alice, 573 U.S. at 221 (internal citation omitted). "A claim that recites an
abstract idea must include 'additional features' to ensure 'that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea]."' Id.
( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer
implementation[] fail[ s] to transform that abstract idea into a patent-eligible
invention." Id.
The PTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under that guidance, we
first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupmgs of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
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Appeal2018-003345
Application 13/484,612
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Revised Guidance.
In the instant case, the claim as a whole recites a mental
process. In particular, the method step of: "determin[ing] an estimate
of printing resource usage for each of the multiple versions of the
sample page using one of the different sets of printing parameters for
each estimate" allows for an evaluation of a cost estimate of a print
job based on certain parameters, which can be done in the human
mind, identified as a mental process in the Revised Guidance, and is
thus an abstract idea. Revised Guidance, 84 Fed. Reg. at 52, 53
(listing "Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion)"). Because
the claims recite an abstract idea under Alice step 1, prong 1, we
proceed to determine whether it is integrated into a practical
application.
Here, the claim recites a combination of additional elements
including:
memory to store different sets of printing parameters used to output
print jobs, each set of printing parameters identifying a different
combination of an International Color Consortium (ICC) profile and a
media type;
an interface operable to receive a print job that includes multiple
pages;
a control unit operable to identify a selection of a sample page among
the multiple pages to represent the print job, to generate multiple
versions of the sample page by rasterizing the sample page multiple
times using one of the different sets of printing parameters for each
rasterization, and to determine an estimate of printing resource usage
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Appeal2018-003345
Application 13/484,612
for each of the multiple versions of the sample page using one of the
different sets of printing parameters for each estimate;
a printer to print the multiple versions of the sample page using one of
the different sets of printing parameters for each print, wherein each
print includes an output of a version of the sample page and an output
indicating the estimate of printing resource usage for the version of
the sample page;
( emphases added).
Thus, the claim as a whole integrates the method of a mental process
into a practical application because the control unit rasterizes a sample page
multiple times based on different printing parameters stored in memory to
determine an estimate of printing resource usage for each of the multiple
versions and a printer prints the multiple versions of the sample page and an
output indicating the estimate of printing resource usage for the version of
the sample page. Accordingly, the claim cannot be performed by the human
mind. Moreover, this combination of elements reflects an improvement in
the functioning of computer printing technology. See Revised Guidance 84
Fed. Reg. at 55 (listing that whether the combination "reflects an
improvement in the function of a computer, or an improvement to other
technology or technical field" as a consideration of whether a combination
of elements may have integrated the exception into a practical application).
Therefore, the claim is patent eligible because it is not directed to the recited
judicial exception. We need not discuss whether the present claims are
significantly more than any abstract idea under Alice step 2 because the
present claims are integrated into a practical application.
Thus, we do not sustain the Examiner's rejection of claim 1 and, for
the same reasons, the Examiner's rejection of claims 2-20.
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Appeal2018-003345
Application 13/484,612
DECISION
The Examiner's rejection of claims 1-20 is reversed.
REVERSED
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