Ex Parte Miller

Patent Trial and Appeal Board

Oct 12, 2018

11894254 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/894,254 08/20/2007
530 7590 10/16/2018
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH A VENUE WEST
WESTFIELD, NJ 07090
FIRST NAMED INVENTOR
H. Roy Miller
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.
DYNAM 3.0-001 IV CIP 6516
EXAMINER
GOLDBERG, IV AN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/16/2018 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):
eOfficeAction@ldlkm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte H. ROY MILLER
Appeal2017---001674
Application 11/894,254
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
H. Roy Miller (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1, 3, 4, 7-13, 38, 41, 43, 45, and 46. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
The Appellant invented a form of strategic planning and revenue
management in transportation and other operations. Specification para. 2.
1 Our decision will make reference to the Appellant's Appeal Brief ("Br.,"
filed April 6, 2016) and the Examiner's Answer ("Ans.," mailed August 25,
2016), and Final Action ("Final Act.," mailed August 6, 2015).
Appeal2017-001674
Application 11/894,254
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method of strategic planning for a
first transportation organization including:
(a) operating one or more processors to derive a set of
demographics
representing potential sales of transportation by the first
transportation organization between origins and
destinations using one or more multi-player game models
by applying an internal strategy of the first transportation
organization and predicted external strategies of one or
more competitive organizations to information about the
market for transportation between the origins and
destinations,
at least one of the strategies including responses to one or
more changes in the information about the market;
(b) operating the one or more processors to develop:
(i) a feasible schedule for transportation based on the
demographics derived in step (a) and at least one set of
resources associated with the first transportation
organization
and
whereby the schedule is associated with the
internal strategy used in step (a),
such schedule specifying assignment of available,
particular vehicles and available, particular
crewmembers to specific transportation operations
between specific ones of the origins and specific
ones of the destinations at specific times,
(ii) costs for the assigned available, particular vehicles
and available, particular crewmembers
2
Appeal2017-001674
Application 11/894,254
calculated based at least in part on assignment of
the available, particular vehicles and the available,
particular crewmembers to the specific
transportation operations between the specific ones
of the origins and the specific ones of the
destinations at the specific times;
( c) operating the one or more processors to evaluate a financial
result for the schedule developed in step (b)
whereby the financial result is associated with the
internal strategy used in step (a),
the financial result for the schedule being based at least
in part on the costs of the assigned available, particular
vehicles and available, particular crewmembers
developed in step (b );
( d) repeating steps (a), (b ), and ( c) using a plurality of different
internal strategies;
and
( e) selecting the internal strategy associated with the best
financial result.
The Examiner relies upon the following prior art:
Walker US 2002/0156659 Al
Shetty US 2003/0191678 Al
Goel US 7,418,409 Bl
Oct. 24, 2002
Oct. 9, 2003
Aug.26,2008
Adler, Competition in a deregulated air transportation market,
European Journal of Operational Research 129 (2001) 337-345
Ahuja, A Neighborhood Search Algorithm for the Combined Through
and Fleet Assignment Model with Time Windows, NETWORKS-2004,
Published online in Wiley InterScience (www.interscience.wiley.com),
2004
3
Appeal2017-001674
Application 11/894,254
Claims 1, 3, 4, 7-13, 38, 41, 43, 45, and 46 stand rejected under
3 5 U.S. C. § 1 01 as directed to non-statutory subject matter.
Claims 1, 3, 4, 11-13, 38, 41, and 43 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Adler and Shetty.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Adler, Shetty, and Goel.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Adler, Shetty, and Walker.
Claims 45 and 46 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Adler, Shetty, and Ahuja.
ISSUES
The issue of eligible subject matter turns primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of obviousness tum primarily on whether Adler's iterative
optimization algorithm performs the steps of the claims.
4
Appeal2017-001674
Application 11/894,254
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Adler
01. Adler is directed to evaluating the most profitable hub-and-spoke
(HS) network for an airline in a competitive environment. Adler
337: Introduction.
02. Adler describes a game theoretic environment, in which each
airline chooses a network including hub( s) and their connections
to the spoke airports. This is attained through an integer linear
program. Subsequently, learning about competitors' decisions,
airlines attempt to maximize profits using a nonlinear
mathematical program. Adler 338: Bottom left-Top right
columns.
03. Adler describes airlines choosing their strategic network and
decision variables in two stages to facilitate the game-theoretic
approach. First, all airlines choose their networks and whether or
not to offer services concurrently, then they choose frequencies,
plane sizes and airfares simultaneously, based on the knowledge
of all the airlines' choices during the first stage. Adler 339:
Bottom left column.
04. Adler describes an integer linear programming approach being
used to generate potential networks, the profitability of which will
5
Appeal2017-001674
Application 11/894,254
be subsequently evaluated by a nonlinear mathematical
programming model. There are many possible methods of
producing a connected HS network, the most direct of which is to
simply connect spoke nodes to a chosen set of hub nodes
according to a minimum distance criterion using integer linear
programming. Adler 339: Top right column.
05. Adler describes the integer linear programing as minimizing
distance and may result in an almost pure HS system if one of the
hubs is geographically further away from all other nodes. Since
the hubs are supposed to represent the "centre" of the network,
with all other nodes acting as spokes, a second solution, whereby
both hubs have a reasonable number of connections, may also be
considered. In addition, a single hub may be unable to satisfy the
demand, given the severe congestion of large airports around the
world. Adler 339: Bottom right column.
06. Adler describes the mathematical program being based on a
micro-economic model for an airline acting under deregulation.
Decision variables include airfare per origin-to-destination trip,
traveler type and airline, aircraft size per leg per airline and
frequency per directed leg per airline. The nonlinear
mathematical program is also solved per airline per network
chosen. An airline's profit function is maximized subject to three
sets of constraints. The profit function is based on an airline's
revenue and cost functions. The revenue function includes
receipts based on airfares, maximal demand and the airline's
6
Appeal2017-001674
Application 11/894,254
Shetty
market share, which in tum is based on travelers' utility functions.
The airline's operating cost function is assumed to be a constant
elasticity-of-substitution function. Adler 340: Top left column.
07. Shetty is directed to scheduling systems. Shetty para. 1.
08. Shetty describes disruptions in an airline scheduling system being
entered into a computer program and ranked by a common
denominator such as cost by simulating the effects of the
disruptions on the actual servicing of the schedules. Disruptions
are prioritized based on their impact on the system if left
unattended. Each disruption is then considered individually based
on its rank, with the cascaded cost of proposed solutions
calculated. The least cost solution is scheduled, and the next
highest ranking cost disruption is then processed, until all
schedule disruptions are resolved. The program is initialized
periodically for entry of disruptions affecting that period, such as
daily. Shetty para. 6.
ANALYSIS
Claims 1, 3, 4, 7-13, 41, 43, and 45 rejected under 35 U.S.C. § 1 OJ as
directed to non-statutory subject matter
Method claim 1 recites iteratively performing the steps of deriving a set
of demographics representing potential sales of transportation, developing a
feasible schedule for transportation based on the demographics and
7
Appeal2017-001674
Application 11/894,254
developing costs for the assigned variables, and evaluating a financial result,
and then selecting an internal strategy associated with the optimal result.
Thus, claim 1 recites a classic format of an operations research optimization
algorithm, modelling some objective function under defined constraints to
derive an optimal solution. None of the limitations recite implementation
details for any of these steps, but instead recite functional results to be
achieved by any and all possible means. Data reception, analysis and
modification, and display are all generic, conventional data processing
operations to the point they are themselves concepts awaiting
implementation details. The sequence of data reception-analysis-display is
equally generic and conventional. The ordering of the steps is therefore
ordinary and conventional. As an optimization algorithm, iteratively
modifying variables representing model parameters under a set of constraints
with some objective function is the prototypical sequence of steps. The
remaining claims merely describe parameters used in the algorithm, with no
implementation details.
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
8
Appeal2017-001674
Application 11/894,254
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to
deriving demographics, representing sales of transportation
between origin and destination using game models by applying
an internal strategy of the transportation organization and
predicting external strategies of competitive organization about
the market for transportation between the origins and
destinations, where at least one strategy includes responses to
one or more changes in the information about the market;
developing a feasible schedule based on the demographics, the
schedule associated with the strategy and specifying assignment
of available vehicles and crewmembers to specific transportation
operations between the origins and the destinations; developing
costs for the assigned available vehicles and crewmembers based
on the assignment to the specific transportation operations,
repeating all of the steps using different internal strategies, and
then selecting the internal strategy associated with the best
financial result.
Final Act. 14. The Examiner thus determines the claims to be directed to
a series of steps directed to selecting an optimal strategy, i.e. an operations
research optimization algorithm. The Examiner further determines that this
"is a method of human activity and a fundamental economic practice
(selecting different strategies and then selecting the strategy and schedule
with the best financial result for an airline/transportation business), and
accordingly, is viewed as an abstract idea." Id.
9
Appeal2017-001674
Application 11/894,254
Although the Court in Alice made a determination 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 to claim 1 recites that it is a method of strategic planning
for a first transportation organization. The steps in claim 1 result in
selecting the internal strategy associated with the best financial result. The
Specification at paragraph 2 recites that the invention relates to strategic
planning and revenue management in transportation and other operations.
Thus, all this evidence shows that claim 1 is directed to selecting a strategy
to optimize results, i.e. optimizing operating results. This is consistent with
the Examiner's finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of optimizing
operating results is a fundamental economic practice long prevalent in our
system of commerce. The use of optimizing operating results is also a
building block of ingenuity in the academic field of operations research.
Thus, optimizing operating results, like hedging, is an "abstract idea"
beyond the scope of§ 101. See Alice Corp. Pty. Ltd. at 2356.
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 risk hedging in Bilski and the concept of optimizing
10
Appeal2017-001674
Application 11/894,254
operating results at issue here. Both are squarely within the realm of
"abstract ideas" as the Court has used that term. See Alice Corp. Pty. Ltd. at
2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc'ns LLC Patent Litig., 823 F.3d 607,611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 1 is directed to the abstract idea of receiving, analyzing, and
transmitting data.
The remaining claims merely describe parameters used in the algorithm.
We conclude that the claims at issue are directed to a patent-ineligible
concept.
11
Appeal2017-001674
Application 11/894,254
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the 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
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 ( 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 perform operations research optimization amounts to electronic
mathematical algorithm solving----one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp. v. Alstom S.A., supra. Also see In re Katz Interactive Call Processing
12
Appeal2017-001674
Application 11/894,254
Patent Litigation, 639 F.3d 1303, 1316 (Fed.Cir. 201 l)("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and 'storing,'
... those functions can be achieved by any general purpose computer
without special programming"). In short, each step does no more than
require a generic computer to perform generic computer functions. As to the
data operated upon, "even if a process of collecting and analyzing
information is 'limited to particular content' or a particular 'source,' that
limitation does not make the collection and analysis other than abstract."
SAP America Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018)
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. The sequence of data reception-analysis-display
is equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874
F.3d 1329, 1339 (Fed. Cir. 2017)(sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
Viewed as a whole, Appellant's method claims simply recite the concept
of optimizing operating results as performed by a generic computer. To be
sure, the claims recite doing so by advising one to use specific constraints
13
Appeal2017-001674
Application 11/894,254
and let one know when a solution is reached. But this is no more than
abstract conceptual advice on the parameters for such optimizing of
operating results and the generic computer processes necessary to process
those parameters, and do not recite any particular implementation.
The method 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. The Specification spells out
different generic equipment2 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of optimizing operating results under different
scenarios. They do not describe any particular improvement in the manner a
computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of
optimizing operating results using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp. Pty. Ltd. at 2360.
Further, claims directed to computational algorithms that can be
performed with paper and pencil and/ or the human mind, such as the recited
iterative optimization algorithm, are ineligible. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed.Cir.2011); also Elec. Power
Group, 830 F.3d at 1353.
2 Specification paragraph 92 describes generic equipment used to perform
the steps.
14
Appeal2017-001674
Application 11/894,254
As to Appellant's arguments, we adopt the Examiner's determinations
and analysis from Final Action 14--16 and Answer 2-6 and reach similar
legal conclusions.
Claims 38 and 46 rejected under 35 U.S.C. § 1 OJ as directed to non-
statutory subject matter
These are system claims performing the method of claim 1. 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 "warn[ ed] ... against" interpreting § 101 "in ways that
make patent eligibility 'depend simply on the draftsman's art.'
Alice Corp. Pty. Ltd. at 2360. Appellant argues these on the basis of
claim 1.
Claims 1, 3, 4, 11-13, 38, 41, and 43 rejected under 35 U.S.C. § 103(a) as
unpatentable over Adler and Shetty
Adler is applied for all of the recited steps. Shetty is only applied for
instantiating the steps in software. Adler describes integer programming, a
well-known iterative optimization algorithm for optimizing some objective
function under a set of constraints. Claim 1 does this. Appellant argues the
distinction in the particular constraints used for the algorithm.
In particular, Appellant contends that claim 1 "requires inclusion of the
specific scheduling process that assigns specific vehicles and crew members
to specific transportation operations ( e.g., flights) at specific times as an
15
Appeal2017-001674
Application 11/894,254
element in the strategic planning operation." App. Br. 9. Appellant also
contends that the recited claim is used to select strategy rather than follow
the selection of strategy. Id. at 12-14. But Appellant makes this contention
by stating "the selection of a strategy is based on comparing those specific
financial results, so that the results achieved in the specific scheduling step
directly influence the choice of strategy." Id. at 14.
As to the argument regarding use of specific constraints, such as
particular personnel, Appellant contends that Adler uses generic constraints.
This is unsurprising for a journal article that publishes research to the public.
Generic examples are both appropriate and the best that can be used absent
some particular target of the optimization. But when Adler's techniques are
applied by a particular company, the company knows its particular cost and
distance constraints, and both are predictable inputs to any financial
optimization computation for that organization. Thus, using particular
personnel, equipment, and transport network data are obvious
implementations of Adler's formulas.
As to the argument that the claims produce rather than follow strategy,
neither the claims nor the Specification define what is meant by strategy.
Appellant's contention that the selection of strategy is based on comparing
financial results means that a selection of action based on comparing
financial results is within the scope of the recited strategy. Claim 1 recites
that each iteration is associated with a different strategy. Iterative
optimization algorithms alter the variables to re-compute the objective
function in each iteration, and so that set of variable assignments represents
a strategy that results in the objective function result for that iteration.
16
Appeal2017-001674
Application 11/894,254
Thus, iterative optimization algorithms such as in Adler are within the scope
of the claim.
Appellant's arguments regarding improper combination and teaching
away are premised on the above arguments.
Claims 7 and 8 rejected under 35 U.S.C. § 103(a) as unpatentable over
Adler, Shetty, and Goel
These claims depend from claim 1.
Claims 9 and 10 rejected under 35 U.S.C. § 103(a) as unpatentable over
Adler, Shetty, and Walker
These claims depend from claim 1.
Claims 45 and 46 rejected under 35 U.S.C. § 103(a) as unpatentable over
Adler, Shetty, and Ahuja
These claims depend from claims 1 and 38.
CONCLUSIONS OF LAW
The rejection of claims 1, 3, 4, 7-13, 38, 41, 43, 45, and 46 under 35
U.S.C. § 101 as directed to non-statutory subject matter is proper.
The rejection of claims 1, 3, 4, 11-13, 38, 41, and 43 under 35 U.S.C.
§ 103(a) as unpatentable over Adler and Shetty is proper.
17
Appeal2017-001674
Application 11/894,254
The rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable
over Adler, Shetty, and Goel is proper.
The rejection of claims 9 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Adler, Shetty, and Walker is proper.
The rejection of claims 45 and 46 under 35 U.S.C. § 103(a) as
unpatentable over Adler, Shetty, and Ahuja is proper.
DECISION
The rejection of claims 1, 3, 4, 7-13, 38, 41, 43, 45, and 46 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) (2011).
AFFIRMED
18