Ex Parte Munster et al

Patent Trial and Appeal Board

Apr 24, 2017

10468187 (P.T.A.B. Apr. 24, 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.
10/468,187 02/13/2004 Ebbe Munster GRP0050US 9432
23413 7590 04/26/2017
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street JOSEPH, TONYA S
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EBBE MUNSTER
Appeal 2015-006757
Application 10/468,187
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
ROBERT J. SILVERMAN, 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 of the Non-
Final Rejection of claims 57—76, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was held on April 13, 2017.
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2015-006757
Application 10/468,187
THE INVENTION
The Appellant’s claimed invention is directed to the control of
production in a distribution system such as heat, electricity, gas, and water
for consumers (Spec. 4:5—8). Claim 57, reproduced below, is representative
of the subject matter on appeal.
57. Method of distributing a commodity in a distribution
system comprising a distributor and a plurality of customers,
wherein said commodity is distributed via a distribution net
connecting said plurality of customers, said commodity being
electricity, gas, heat or water, the method comprising:
said plurality of customers interacting with the distribution
net by producing or consuming said commodity,
the distributor communicating distributor information at
regular predetermined intervals occurring on an at least daily
schedule via a computer assisted process to said plurality of
customers, wherein the distributor information comprises future
prices per delivered unit of said commodity;
the distributor updating the distributor information by said
computer assisted process at regular predetermined intervals
occurring on an at least daily schedule;
at least one of said customers using the distributor
information to control interaction with the distribution net;
said at least one of said customers communicating
customer information at regular predetermined intervals via the
computer assisted process to the distributor, wherein the
customer information comprises estimated non-binding time
sequential plans for future interaction based on former
interaction and based on customer provided estimations for
future interaction;
the distributor using the customer information for
generating the distributor information;
wherein the communicating, updating, and using of
distributor information and the communicating and using of the
customer information comprises an iterative loop of time
sequential data where future prices per delivered unit of said
commodity provided in the distributor information approach a
final value valid for the time of interaction with each successive
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iterative loop due to the using of the customer information in said
generating of the distributor information.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 57—'761 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 57—76 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
3. Claims 57—76 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Liebl (US 5,289,362; iss. Feb. 22, 1994) and Johnson (US
2003/0023540 A2; publ. Jan. 30, 2003).
ANALYSIS
Rejection under 35 U.S.C. §101
The Examiner has rejected claim 57 under 35 U.S.C. § 101 (Ans. 2,
3). The Examiner has determined that the claim is directed to an abstract
idea in a fundamental economic practice and a method of organizing human
activities, and that the recited generic computer functions fail to transform
the nature of the claim (Ans. 2, 3).
In contrast, the Appellant argues that the rejection of claim 57 is
improper because the claim is not directed to an abstract idea and that the
recitations result in significantly more than an abstract idea (Reply Br. 2—6).
1 The new grounds of rejection under 35 U.S.C. § 101 lists the rejected
claims as being 57—75. The exclusion of claim 76 from this listing is
considered to be a typographical error as the subject matter of claim 76 is
similar to that of rejected claim 66.
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Application 10/468,187
We agree with the Examiner. Under 35U.S.C. § 101, an invention is
patent-eligible if it claims a “new and useful process, machine, manufacture,
or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: “[l]aws of
nature, natural phenomena, and abstract ideas” are not patentable. See, e.g.,
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 57 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an “inventive concept” — an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice, 134 S. Ct. at 2358.
Here, we find that the claim is directed to the concept of organizing
human activities in a commodity distribution system. This is a fundamental
economic practice long prevalent in our system of commerce, and is an
abstract idea beyond the scope of § 101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
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claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. For these reasons
the rejection of claim 57 is not sustained. The Appellant has provided the
same arguments for the remaining claims and the rejection of these claims is
sustained as well.
Rejection under 35 U.S.C. § 112, second paragraph
The Examiner has determined that in claim 57 that the phrase
“wherein the customer information comprises estimated non-binding time
sequential plans for future interaction based on former interaction and based
on customer provided estimations for future interaction” is unclear in plain
meaning (Non-Final Act. 2, 3).
In contrast, the Appellant argues that this rejection is improper (App.
Br. 7-9).
We agree with the Appellant. Here, it is clear what is being claimed
in the above identified phrase and this rejection is not sustained.
Rejection under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 57 is improper
because the cited prior art fails to disclose the claim limitation for:
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said at least one of said customers communicating
customer information at regular predetermined intervals via the
computer assisted process to the distributor, wherein the
customer information comprises estimated non-binding time
sequential plans for future interaction based on former
interaction and based on customer provided estimations for
future interaction.
(App. Br. 12-19).
In contrast, the Examiner has determined that the cited claim
limitation is found in Liebl at column 9, lines 7—14, column 17, lines 21—26,
column 17, lines 28—29, column 62, lines 67—68, column 63, lines 21—26,
and Johnson at paragraph 3 (Ans. 4, 5).
We agree with the Appellant. Here, the above citations to Liebl at
column 9, lines 7—14, column 17, lines 21—26, column 17, lines 28—29,
column 62, lines 67—68, column 63, lines 21—26, and Johnson at paragraph 3
do not disclose the above cited claim limitation and the rejection of claim 57
and its dependent claims is not sustained.
CONCLUSIONS OL LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 57—76 under 35U.S.C. § 101 as listed in the Rejections
section above.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 57—76 under 35U.S.C. § 112, second paragraph, and 35
U.S.C. § 103(a) as listed in the Rejections section above.
DECISION
The Examiner’s rejection of claims 57—76 is sustained.
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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)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED
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