Ex Parte Mccoy

Patent Trial and Appeal Board

Apr 5, 2017

12256502 (P.T.A.B. Apr. 5, 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.
12/256,502 10/23/2008 RICHARD A. MCCOY US20080685 5331
173 7590 04/07/2017
WHIRLPOOL CORPORATION - MD 3601
2000 NORTH M63
BENTON HARBOR, MI 49022
EXAMINER
HUNTER, SEAN KRISTOPHER
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
04/07/2017 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):
whirlpool_patents_co@whirlpool.com
mike_lafrenz @ whirlpool .com
deborah_tomaszewski@whirlpool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD A. MCCOY
Appeal 2015-0065991
Application 12/256,5022
Technology Center 3600
Before HUBERT C. LORIN, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 from the rejection of
claims 1—10, 12—24, and 26—34. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Dec. 1,
2014) and Reply Brief (“Reply Br.,” filed June 29, 2015), and the
Examiner’s Answer (“Ans.,” mailed Apr. 29, 2015) and Final Office Action
(“Final Act.,” mailed June 30, 2014).
2 According to Appellant, the real party in interest is Whirlpool Corporation.
Appeal Br. 1.
Appeal 2015-006599
Application 12/256,502
BACKGROUND
According to Appellant, “[t]he invention relates to a method of
inventory management using container-based sensors for determining an
attribute of a substance and for selectively introducing and activating self-
reporting containers for participating in an inventory management system.”
Spec. 11.
CLAIMS
Claims 1—10, 12—24, and 26—34 are on appeal. Claim 1 is the only
independent claim on appeal and recites:
1. A method of activating, into an automated inventory
system in communication with a data processing system with a
memory, a portable self-reporting container containing a
consumable substance and having a sensing and reporting
system and a memory provided on the container storing a first
identifier, the method comprising the steps of:
generating a second identifier at the sensing and
reporting system of the container;
transmitting the second identifier from the sensing and
reporting system to the data processing system;
adding the second identifier to the memory of the data
processing system; and
replacing the first identifier with the second identifier in
the memory provided on the container;
wherein the generating the second identifier and
replacing the first identifier with the second identifier are
triggered by a substance access event at the container.
Appeal Br. 14.
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Application 12/256,502
REJECTIONS
1. The Examiner rejects claims 1—10, 12—24, and 26—343 under 35 U.S.C.
§ 103(a) as unpatentable over Hart4 in view of Carr.5
2. The Examiner rejects claims 1—10, 12—24, and 26—34 under 35 U.S.C.
§ 101 as directed to ineligible subject matter.
DISCUSSION
Obviousness
With respect to claim 1, the Examiner finds that Hart discloses a
method as claimed including the steps of generating a second identifier;
transmitting the second identifier; and adding the second identifier to the
memory of the data processing system. Final Act. 3 (citing Hart Abstract;
7, 16—18, 179). The Examiner acknowledges that Hart does not teach
replacing the first identifier with the second identifier, for which the
Examiner relies on Carr. Final Act. 3 (citing Carr H 1,10, 16—18). The
Examiner concludes it would have been obvious to expand the method of
Hart to include replacing the first identifier with the second identifier
because it would “provide[] safe pharmaceutical prescription dispensing
directly by physicians, pharmacists, and other trained or licensed
practitioners operating in small to medium size locations in a cost effective
manner.” Final Act. 3^4 (citing Hart 115).
We are persuaded of error in the rejection because we agree with
Appellant that the Examiner has not established that Carr teaches the step of
3 Although the heading for this rejection lists claims 1—33 as rejected, we
note that claims 11 and 25 have been cancelled and the body of the rejected
addresses claim 34. See Final Act. 3—10.
4 Hart et al., US 2003/0216831 Al, pub. Nov. 20, 2003.
5 Carr et al., US 2002/0183883 Al, pub. Dec. 5, 2002.
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Application 12/256,502
replacing the first identifier with the second identifier. Appeal Br. 9. Carr
discloses a product package and method of labeling a product package via an
integrated circuit device included on the package. See Carr || 7, 10. Using
this package, Carr discloses “a method of providing enhanced inventory
control and dissemination of product information.” Id. at 116. As part of
this method, Carr discloses that product information may be written on the
package’s integrated circuit or that only a unique identification code may be
written on the integrated circuit, which is linked to information about the
produce in an electronic database. Id. Although Carr appears to
contemplate a variety of information written on the package’s integrated
circuit or associated with the package’s unique identifier, we see no
indication in the cited portions of Carr that any information is used to
replace other information, i.e. Carr does not appear to expressly disclose
replacing a first identifier with a second identifier.
In response to Appellant’s argument, the Examiner states
that the capability as taught by Hart in view of Carr, to “write
information on” an “integrated circuit device” would include
the ability to write, and/or replace a “first identifier” with a
“second identifier” in the memory that is provided on the
container. As such, the Examiner respectfully submits that Hart
in view of Carr seemingly suggests, “replacing a first identifier
with a second identifier in the memory provided on the
container”, as recited by the Appellant.
Ans. 16. However, we agree with Appellant that “[t]he mere capability of a
prior art structure to perform a method or a particular step of a method does
not, in the absence of other support, [suggest] the method or step.” Reply
Br. 6. The Examiner has not provided any adequate explanation as to why
one of ordinary skill in the art would have found it obvious to implement the
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step of replacing the first identifier with the second identifier in Hart based
on the disclosure of Carr.
For these reasons, we are do not sustain the rejection of claim 1 as
obvious. We also do not sustain the rejection of the dependent claims, 2—10,
12—24, and 26—34, for the same reasons.
Ineligible Subject Matter
In the Answer, the Examiner enters a new ground of rejection, finding
that all of the claims on appeal are directed to ineligible subject matter.
Ans. 10—11. In particular, the Examiner finds that the claims are directed to
the abstract concept of comparing new and stored information and using
rules to identity options and that the claims do not include any elements that
amount to more than the abstract concept “because the computer as recited is
a generic computer component that performs functions” and “a first
identifier, a second identifier, a self-reporting container, a sensing and
reporting system and a data processing system,... do not add meaningful
limitations to the idea . . . beyond generally linking the system to a particular
technological environment, that is, implementation via computers.” Id.
As discussed below, we are not persuaded of reversible error by
Appellant’s arguments.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355. Appellant challenges the
Examiner’s finding that the claims are directed to the abstract idea of
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Application 12/256,502
comparing new and stored information and using rules to identify options,
and Appellant argues that the claims are clearly directed to the statutory
category of a process. Reply Br. 1—2. More specifically, Appellant argues
that claim 1 does not include any limitation related to “the identification of
options.” Id. at 2. We are not persuaded of error and agree with the
Examiner that the claims are directed to an abstract idea. Specifically, we
find that the claims are directed to the abstract concept of inventory
accounting, i.e. updating inventory information for a particular item, an idea
long prevalent in our system of commerce. Taken to a further level of
abstraction, we agree this essentially equates to the abstract idea identified
by the Examiner, i.e. using rules to replace stored information with new
information. Further, the options provided in the context of the claim are
whether or not to overwrite the old, stored information.
Step two is “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, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). Claim 1 generally recites a method of activating, including
generating and transmitting a second identifier, adding the second identifier
to memory, and replacing a first identifier with the second identifier. These
each may be said to relate to generic computer functions. Further, we agree
with the Examiner that the addition of a container with a sensing and
reporting system does not “amount to significantly more than the judicial
exception.” Ans. 10—11. On this point, we are guided by the descriptions of
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Application 12/256,502
the technology used to implement the methods as described in the
Specification. In particular, the Specification states:
In general, a container 16 may be manufactured and
configured with sensing and reporting system 20.
The sensing and reporting system may include analog or
digital componentry which is able to determine information
about a substance 30 or information associated with a substance
like amount, temperature, and the like. In particular, as shown
in FIGURES 2 and 2A a sensing and reporting system 20 may
include sensing apparatus, such as a sensor 34, and reporting
apparatus, such as a transmitter 36.
Spec. 48-49. Further, regarding the sensors and transmitters, the
Specification discloses:
A sensor is any active or passive device capable of
obtaining information in a form which may be either actively or
passively communicated to another device for use by the other
device. A communication of information is the delivery of
information from a first device to a second device either by the
active transmission from the first device to the second device or
by the reading of the second device by the first device. A
transmitter is any device which wirelessly communicates
information to other devices using any form of active or passive
transmission including optical or electromagnetic waves.
Id. at 134. Thus, the Specification indicates that the disclosed methods of
the inventory control system, and specifically the sensing and reporting
system, use generic sensors and transmitters, i.e. generic computer
components to perform their functions. Thus, we are not persuaded that the
claims require “a highly specific structure of a portable self-reporting
container containing a consumable substance and having a sensing and
reporting system and a memory provided on the container.” Reply Br. 2.
Adding generic computer parts and functions to a container does not elevate
the claims to eligibility. Rather, we find that the steps of the claims, taken
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both individually and as an ordered combination, do not transform the nature
of the claim into a patent-eligible application. See Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (citing Alice, 134
S. Ct. at 2358; Mayo, 132 S. Ct. at 1294) (“Limiting the field of use of the
abstract idea to a particular existing technological environment does not
render any claims any less abstract.”)
Finally, Appellant’s preemption argument does not alter our analysis.
See Reply Br. 2—3. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability. Alice, 134
S. Ct. at 2354 (‘We have described the concern that drives this exclusionary
principle as one of pre-emption[.]’). For this reason, questions on
preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Preemption concerns are, thus, fully addressed and rendered moot where a
claim is determined to disclose patent ineligible subject matter under the
two-part framework described in Mayo and Alice. Although “preemption
may signal patent ineligible matter, the absence of complete preemption
does not demonstrate patent eligibility.” Id.
For these reasons, we sustain the rejection of claims 1—10, 12—24, and
26—34 as directed to ineligible subject matter.
CONCLUSION
For the reasons set forth above, we conclude as follows:
We REVERSE the rejection of claims 1—10, 12—24, and 26—34 under
35 U.S.C. § 103(a) as unpatentable over Hart in view of Carr.
We AFFIRM the rejection of claims 1—10, 12—24, and 26—34 under
35 U.S.C. § 101 as directed to ineligible subject matter.
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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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