Ex Parte Mandava

Patent Trials and Appeals Board

Apr 29, 2019

12476854 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/476,854 06/02/2009
131406 7590 05/01/2019
Gilliam IP PLLC (CA)
7200 N. Mopac
Suite 440
Austin, TX 78731
FIRST NAMED INVENTOR
Srikanth Mandava
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.
104.20090041 6210
EXAMINER
PADOT, TIMOTHY
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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):
uspto@gilliamip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRIKANTH MANDA VA 1
Appeal2017-009642
Application 12/476,854
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 4, 7, 8, 10-14 and 17-30 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
1 The real party in interest is CA, Inc. (App. Br. 3)
Appeal2017-009642
Application 12/476,854
THE INVENTION
The Appellant's claimed invention is directed to a task assignment
and alert system using a device capable of providing location information
(Spec., para. 1 ). Claim 1, reproduced below with the italics added, is
representative of the subject matter on appeal.
1. A computerized process comprising:
determining a series of locations of a device based, at
least in part, on data periodically received from the device,
wherein the device is associated with a first person;
determining whether the device is moving away from a
particular location based, at least in part, on the determined
series of locations;
automatically assigning a task in an issue tracking
system or a work flow management system from the first
person to a second person in response to determining that the
device is moving away from the particular location based, at
least in part, on the
determined series of locations; and
transmitting an alert to the second person based on
automatically assigning the task to the second person from the
first person.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Thompson et al.
Olesen
Akhteruzzaman et al.
Ingman
Krumm
Kaji
Ellis et al.
US 2002/0029160 Al
US 6,366,216 Bl
US 6,580,787 Bl
US 2003/0204431 Al
US 2008/0032703 Al
US 2009/0201149 Al
US 2010/0100464 Al
2
Mar. 7, 2002
Apr. 2, 2002
June 1 7, 2003
Oct. 30 2003
Feb. 7,2008
Aug. 13, 2009
Apr. 22, 2010
Appeal2017-009642
Application 12/476,854
The following rejections are before us for review:
1. Claims 1, 4, 7, 8, 10-14 are rejected under 35 U.S.C. § 112,
second paragraph as being indefinite.
2. Claims 1, 4, 7, 8, 11-14, 18-19 and 21-30 are rejected under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
3. Claims 1, 4, 11, 12, 18, 21, 22, and 26 are rejected under 35
U.S.C. § 103(a) as unpatentable over Krumm, Ingman, and Olesen.
4. Claims 7, 13, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Krumm, Ingman, Olesen, and Thompson.
5. Claims 8, 14, 23, 24, 27, and 29 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Krumm, Ingman, Olesen, and Kaji.
6. Claims 10, 17, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Krumm, Ingman, Olesen, and Akhteruzzaman.
7. Claims 25, 28, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Krumm, Ingman, Olesen, and Ellis.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 12/476,854
ANALYSIS
Rejection under 35 USC§ 112, second paragraph
The Examiner has determined that in claims 1-10, 21, 24, and 25 that
the phrase "computerized process" is indefinite for failing to set the metes
and bounds of the particular manner in which the computer is used to
implement the claimed method (Ans. 3, Final Act. 3).
The Appellant argues that this rejection is improper (App. Br. 6).
We agree with the Appellant. Here, the term "computerized process"
does not render the claim indefinite as it is understood what is being claimed
and breadth does not mean indefiniteness. For these reasons, this rejection is
not sustained.
Re} ection under 3 5 US. C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (App. Br. 6-9). The Appellant
argues that in contrast the claim recites a "series of defined, ordered
operations to an identified improvement in the capabilities of an issue
tracking system or workflow management" (App. Br. 9).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 3---6; Ans. 4--9).
We agree with the Examiner. 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. v. CLS
Banklnt'l, 573 U.S. 208,216 (2014).
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Application 12/476,854
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 .... ").
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 ( Gottschalk v. 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, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 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 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
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Application 12/476,854
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. (internal citation omitted) ( 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.").
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to
whether the claim recites:
( 1) any judicial exceptions, including certain groupings 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 MPEP § 2106.05(a}-(c), (e}-(h)).
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
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
( 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 Guidance.
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an "'inventive
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concept'" sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( 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. ( alterations in original) ( 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.
Here, the Examiner has determined that the claim is directed to the
concept of using location-based rules to process a task assignment, which is
a method of organizing human activities and, therefore, an abstract idea
(Final Act. 4). We substantially agree with the Examiner in this regard as
claim 1 is directed to the steps italicized in the claim above. Here, for
example, the claimed limitations for "determining a series of locations ...
associated with a first person"; "determining whether .... moving away
from a particular location"; "automatically assigning a task ... from the first
person to a second person in response to determining that the device is
moving away from the particular location"; and "transmitting an alert to the
second person based on automatically assigning the task to the second
person" are steps directed to tracking locations of persons and using that
data to assign tasks. Here, these claimed limitations are drawn to a method
of organizing human activities, which is an abstract idea and judicial
exception. Here, the claim is directed to the same concept of a manager
assigning a task to a second person after determining that the first person has
left the work location, which is a method of organizing human activities and
an abstract concept. See Elec. Power Grp., LLC v. Alstom S.A., 830 F .3d
1350 (Fed. Cir. 2016) (collecting information, analyzing it, and displaying
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Application 12/476,854
results from certain results of the collection and analysis was held to be an
abstract idea). Thus, we consider the claim to be directed to an abstract idea
as identified above.
Turning to the next step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
"transform" the abstract nature of the claim into a patent-eligible application.
The claims do not improve computer functionality, improve another field or
technology, utilize a particular machine, or effect a physical transformation.
Rather, we determine that nothing in the claims imposes a meaningful limit
on the judicial exception, such that the claims are more than a drafting effort
to monopolize the judicial exception.
For example, in claim 1 the steps of [ 1] "determining a series of
locations of a device"; [2] "determining whether the device is moving away
from a particular location"; [3] "automatically assigning a task"; and [ 4]
"transmitting an alert" are merely conventional steps performed by a generic
computer that do not improve computer functionality. That is, these recited
steps [ 1 ]-[ 4] "do not purport to improve the functioning of the computer
itself," but are merely generic functions performed by a conventional
processor. Likewise, these same steps [ 1 ]-[ 4] listed above do not improve
the technology of the technical field and merely use generic computer
components and functions to perform the steps. Also, the recited method
steps [ 1 ]-[ 4] above do not require a "particular machine" and can be utilized
with a general purpose computer, and the steps performed are purely
conventional. In this case the general purpose computer is merely an object
on which the method operates in a conventional manner and does not
provide "significantly more" to the claim beyond a nominal or insignificant
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execution of the method. Further, the claim as a whole fails to effect any
particular transformation of an article to a different state in a manner that
would render the claim "significantly more" than the abstract idea. The
recited steps [ 1 ]-[ 4] fail to provide meaningful limitations to limit the
judicial exception and rather are mere instructions to apply the method to a
generic computer. Considering the elements of the claim both individually
and as "an ordered combination" the functions performed by the computer
system at each step of the process are purely conventional. Each step of the
claimed method does no more than require a generic computer to perform a
generic computer function.
Further the claim fails to add a specific limitation beyond the judicial
exception that is not well-understood, routine, and conventional in the field.
Rather the claim uses well-understood, routine, and conventional activities
previously known in the art at a high level of generality to the judicial
exception. The Specification at paragraph 8 for example describes using
conventional computer components such machine readable medium such as
ROM, RAM, magnetic disks, optical storage media, and flash memory
which are all conventional computer components. The claim specifically
includes a recitations for a "computerized process" to implement the method
in the preamble but the claimed functions are all used in a manner that is
well-understood, routine, and conventional in the field. The Appellant has
not shown these claimed generic computer functions which are used to
implement the claimed method are not well understood, routine, or
conventional in the field. The Appellant has not demonstrated that the
components and functions described in the Specification or the claim for
instance are not a general purpose computer components beyond those
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known to be routine and conventional known to perform similar functions in
a well-understood manner. Thus, the claimed elements fail to "transform"
the abstract nature of the claim.
The Appellant at page 7 of the Appeal Brief has also cited to Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the
claim is not abstract, but the claims in that case were not similar in scope to
those here, and were in contrast directed to a self-referential data table.
The Appellant at page 9 of the Appeal Brief has also cited to McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), but
the claims in that case are distinguished from this case in being directed to
rules for lip sync and facial expression animation.
For these above reasons the rejection of claim 1 is sustained. Similar
arguments have been presented for the remaining claims, which are drawn to
similar subject matter, and the rejection of these claims is sustained as well.
Rejection under 35 USC§ 103(a)
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitation requiring:
determining whether the device is moving away from a
particular location based, at least in part, on the determined
series of locations;
automatically assigning a task in an issue tracking system
or a work flow management system from the first person to a
second person in response to determining that the device is
moving away from the particular location
(App. Br. 10).
In contrast, the Examiner has determined that cited claim limitations
are shown by the combination of Krumm at paras. 31-33 and 59---61; Olesen
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Application 12/476,854
at the Abstract, col. 1, lines 19--21, lines 45--49, col. 2 , lines 19-21, 24--3 8,
col. 3, lines 8, 64--65; and Ingman at paras. 7, 28, 52, and 71, and Figures 2,
and 6-10 (Ans. 10-12).
We agree with the Examiner. Krumm at para. 31 for instance
discloses using a device to track user location. Ingman at paras. 7 and 28
discloses assigning a task to a worker based on matching algorithms.
Ingram at para. 7 5 also discloses task assignment location being considered
in making assignments. Olesen in the abstract discloses detection of the
direction of each transponder. Thus, the cited claim limitations have been
shown by the cited prior art. For these reasons, the rejection of claim 1
under this grounds is sustained. The Appellant has presented the same
arguments for the remaining claims and these rejections are sustained as
well.
CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1, 4, 7, 8, 10-14 under 35 U.S.C. § 112, second paragraph
as being indefinite.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 4, 7, 8, 11-14, 18-19 and 21-30 under 35 U.S.C. § 101
as being directed to non-statutory subject matter
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims under 35 U.S.C. § 103(a) as listed in the Rejections section
above.
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Application 12/476,854
DECISION
The Examiner's rejection of claims 1, 4, 7, 8, 10-14 and 17-30 is
sustained.
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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