Ex Parte Nishimura et al

Patent Trials and Appeals Board

Feb 28, 2019

13564858 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/564,858 08/02/2012
37945 7590 03/04/2019
DUKEW. YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Y asutaka Nishimura
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.
JP920100058US2 4569
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUTAKA NISHIMURA, AK.IRA OHKADO, and
TADASHI TSUMURA
Appeal2018-001730 1
Application 13/564,8582
Technology Center 3600
Before HUBERT C. LORIN, BRADLEY B. BAY AT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 3, 4, and 6-17. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
June 23, 2017) and Reply Brief ("Reply Br.," filed Dec. 7, 2017), and the
Examiner's Answer ("Ans.," mailed Nov. 3, 2017) and Final Office Action
("Final Act.," mailed Apr. 21, 2017).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
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Application 13/564,858
CLAIMED INVENTION
Appellants' claimed invention "relates to a method of managing an
access right, and to a system and a computer program for the same." Spec.
Claims 1, 6, and 9 are the independent claims. Claim 9, reproduced
below, is illustrative of the claimed subject matter:
9. A method to manage an access right associated with
a work order in a digital format, or to an access control device
associated with an access path to the asset associated with the
work order, the method comprising steps executed by a computer
of:
at a scheduled start time for a work order to be executed,
or in response to reception of a report indicating a start of work
for the work order or a report indicating a completion of work for
a preceding work order to the work order, the computer loading
the work order into a memory of the computer, and authorizing
a worker entity, designated in the loaded work order, to have the
access right to the asset or the access control device; and
revoking a granted access right at a scheduled completion
time for a work order already started, or in response to reception
of a report indicating the completion of work for the work order
already started or a report indicating the start of a succeeding
work order to the work order already started, wherein the access
right to the asset or the access control device is managed online
by the computer, the method further comprising a step executed
by the computer of:
transmitting a message to the asset or the asset control
device indicating the granting of the access right of the worker
entity to the asset or the access control unit to which the message
indicating the granting is transmitted.
REJECTION
Claims 1, 3, 4, and 6-17 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
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ANALYSIS
Independent Claims 1, 6, and 9, and Dependent Claims 2, 5, 7, 8, 10, and 11
Appellants argue claims 1, 2, and 5-11 as a group. App. Br. 10. We
select independent claim 9 as representative. The remaining claims stand or
fall with claim 9. See 37 C.F.R. §4I.37(c)(l)(iv).
Under 35 U.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. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 573 U.S. at 217.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "individually and 'as an ordered combination"'
to determine whether there are additional elements that "'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
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instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
We are not persuaded, as an initial matter, by Appellants' arguments
the Examiner erred in determining that claim 9 is directed to an abstract
idea. App. Br. 10-14. The Federal Circuit has explained that
"the 'directed to' inquiry applies a stage-one filter to claims, considered in
light of the [S]pecification, based on whether 'their character as a whole is
directed to excluded subject matter."' Enfzsh, LLC v. Microsoft Corp., 822
F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d
at 1346). It asks whether the focus of the claims is on a specific
improvement in relevant technology or on a process that itself qualifies as an
"abstract idea" for which computers are invoked merely as a tool. See id.
at 1335-36.
The Background section of the Specification discloses that assets,
such as a computer, a lighting device, an air conditioner, and a power
generator, are managed and maintained based on a work process. Spec. ,r 3.
A work order issues based on the work process. Id. The work order allows
assets to be managed and maintained on a desired schedules, such as a
monthly or bi-monthly basis, or after every 300 operation hours. Id. Once
approved, the work becomes an executable work that is assigned to a
worker. The assignment of the worker considers several factors, such as the
date on which the work is to be executed; the needed skills and
qualifications of the worker; and a current amount of work assigned to the
worker. Id. The work order is approved through a process, and becomes an
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executable work. Id. The worker registers the start and completion of work
after assignment in an asset management application or reports the
information to an asset manager. Id. It is known for the access control to
manage an asset management target based on physical access control, such
as allowing a particular user access to an asset, and also role-based access
control, such as allowing a particular role access to a particular asset. Id. at
,r,r 8-9. The Background describes a problem, however, with "none of the []
access controls [being] associated with a work process." Id. at ,r 10. "An
object of the [ claimed] invention is to give a worker associated with a work
order an access right to an asset while the worker is performing management
and maintenance work in accordance with the work order." Id.
Claim 9 recites a method to manage an access right to an asset
associated with a work order. The method includes the following steps:
loading a worker order; authorizing a worker entity, designated in the loaded
work order, to have the access right to the asset or the access control device;
revoking a granted access right; and transmitting a message to the asset or
the asset control device indicating the granting of the access right of the
worker entity. The access right is tailored based on information in the work
order. Understood in light of the Specification, claim 9 is directed to
managing an access right to an asset/access control device associated with a
work order, which is a commercial interaction, i.e., a method of organizing
human activities and, therefore, an abstract idea. Therefore, we are not
persuaded that the Examiner erred in determining that the claims are directed
to concepts that are similar to other concepts the courts have held to be
abstract ideas. See Ans. 2--4; see also Final Act. 3.
We disagree with Appellants that the abstract idea to which the claims
are directed is not similar to any abstract idea identified by the courts in the
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body of precedential case law. See App. Br. 11-14; see also Reply Br. 2-5.
Here, we do not find the claims meaningfully different than the ideas found
to be abstract in other cases involving methods of organizing human activity.
In Prism Technologies, LLC v. T-Mobile USA, Inc., 696 Fed. Appx. 1014,
1017 (Fed. Cir. 2017), for example, the asserted claims recited a method for
restricting access to resources that involved: (1) receiving identify data from
a devices with a request for access to resources; (2) confirming the
authenticity of the identify data associated with that device; (3) determining
whether the device identified is authorized to access the resources requested;
and (4) if authorized, permitting access to the requested resources. Id.
(citation omitted). There, the Federal Circuit held that the concept of
"providing restricted access to resources" is an abstract idea analogous to
other patent ineligible methods of organizing human activities. Id. ( citing In
re TL! Commc'ns LLC Patent Litig., 823 F.3d 607,613 (Fed. Cir. 2016)
(finding the claims analogous to "inventions pertaining to methods of
organizing human activity"); Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (finding the claim at
issue "not meaningfully different from ideas found to be abstract in other
cases ... involving methods of organizing human activity")). Much like the
claims at issue in Prism Technologies, Appellants' representative claim 9
recites a method for managing a resource that involves receiving data
(loading a work order), processing the data to authorize and then revoke
access to the resource, and communicating the result of that processing to
the resource. In this way, claim 9 also is similar to other claims found to be
abstract involving collecting and analyzing data, and reporting the results of
the collection and analysis. Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (claims directed to collecting, analyzing,
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and displaying are directed to abstract ideas); see also FairWarning IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) (collecting
information, analyzing the information according to rules to determine if the
activity indicates improper access, and providing notification if improper
access has occurred is an abstract idea).
Appellants argue that the claims are distinguishable from those in
Fair Warning because the claims in Fair Warning related to the concept of
analyzing records of human activity to detect suspicious behavior, and a
human activity record analysis is not the same as a technique provided to
manage an access right to an asset/access control device. Reply Br. 3. But
the limitations recited in the claims need not be identical to those previously
held to be directed to abstract ideas. Nonetheless, examining earlier cases
can be helpful in deciding whether a claim is directed to an abstract idea.
See Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016) ( courts examine earlier cases in which a similar or parallel
descriptive nature can be seen to determine whether a claim is directed to an
abstract idea).
We also are not persuaded by Appellants' argument that the claims
are not directed to an abstract idea because the "actions [are] associated with
both a computer memory and a security device." App. Br. 13 ("Claim 1
does reference material objects (security device) performing non-routine,
non-generic steps/actions (a 'work order' driven asset access control
process), and is therefore not directed to an abstract idea itself'); see also
Reply Br. 5. As described above, we determine that the claim is directed to
a method of organizing human activities, and not a mental process or an idea
itself. Appellants do not identify, and we do not find, any indication that the
claims are tied to any particular novel machine or apparatus or are
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implemented other than using generic computer components. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) ("[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. ").
We are not persuaded by Appellants' argument regarding preemption.
See App. Br. 13-14. Although the Supreme Court has described "the
concern that drives [the exclusion of abstract ideas from patent eligible
subject matter] as one of preemption" (Alice, 134 S. Ct. at 2354),
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ f]or 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) (citing Alice, 134 S. Ct. at 2354). "[P]reemption may
signal patent ineligible subject matter, [but] the absence of
complete preemption does not demonstrate patent eligibility." Id.
Appellants argue that the claimed invention improves "the technical
field of asset management by using a 'work order' that controls the
particular timeframe for which access rights are granted and revoked for
accessing an asset, thereby improving overall security by limiting asset
access by a worker entity to particular time-based windows associated with a
particular work process." App. Br. 14; see also id. (the claimed invention
uses characteristics of the work order to "minimize the amount of time that
access to an access/access control device is granted to a worker). Yet, the
improvement that Appellants identify is an improvement to a process for
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managing an access right to an asset associated with a work order - the
abstract idea. And an improved abstract idea is still an abstract idea.
Contrary to Appellants' suggestion, we find no parallel between
claim 1 and the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the claims were directed
to retaining website visitors, and in particular to a system that modified the
conventional web browsing experience by directing a user of a host website
who clicks an advertisement to a "store within a store" on the host website,
rather directing the user to the advertiser's third-party website. DDR
Holdings, 773 F.3d at 1257-1258. The court determined "the claims address
a business challenge (retaining website visitors) [that] is a challenge
particular to the Internet." Id. at 1257. The court also determined that the
invention was "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
and that the claimed invention did not simply use computers to serve a
conventional business purpose. Id. Rather, there was a change to the
routine, conventional functioning of Internet hyperlink protocol. Id. Here,
we do not find, and Appellants do not identify, any analogous modification
to the routine and conventional functioning of computer network
technology. At best, the claimed invention appears to use generic computer
components ( e.g., work order in digital format, access control device,
computer, memory) to perform an abstract idea.
Appellants do not identify, and we do not find, anything in the
Specification that attributes a technological improvement to the claimed
invention or that otherwise indicates that the claimed invention integrates the
abstract idea into a "practical application," as that phrase is used in the
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USPTO's "2019 Revised Patent Subject Matter Eligibility Guidance," 84
Fed. Reg. 50, 55 (January 7, 2019). 3
Turning to step two of the Mayo/Alice framework, Appellants argue
that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because the claims amount to significantly more
than the alleged abstract idea. App. Br. 14--15. Specifically, Appellants
maintain that this is so at least because the claimed invention "recites
additional inventive concepts of using properties/characteristics of a work
order as the invocation/triggering mechanism for when access is both
granted and revoked in order to minimize the amount of time that access to
an asset/access control device is granted to a worker entity." Id. at 14. The
difficulty with Appellants' argument, however, is that these limitations are
part of the abstract idea itself (i.e., managing an access right to an
asset/access control device associated with a work order). As such, these
limitations are not additional elements to be considered when determining
whether the claims include additional elements or a combination elements
that is sufficient to amount to significantly more than the abstract idea.
3 In accordance with the USPTO' s revised guidance, a claim will be
considered "directed to" an abstract idea if (1) the claim recites subject
matter falling within one of the following groupings of abstract ideas: (a)
mathematical concepts; (b) certain methods of organizing human
interactions, e.g., fundamental economic principles or practices, commercial
or legal interactions; and ( c) mental processes, and (2) the claim does not
integrate the abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 54--55. "A claim that integrates a judicial
exception into a practical application will apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limitation on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception." Id. at 54.
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The Examiner determined here (Final Act. 4), and we agree, that the
only claim elements beyond the abstract idea are generic computer
components recited as performing generic computer functions. See, e.g.,
Spec. ,r,r 25-27, 29-31, 33, 35, 38, 39. Appellants cannot reasonably
contend, nor do they, that there is a genuine issue of material fact regarding
whether operation of the claimed components are well-understood, routine,
or conventional, where, as here, there is nothing in the Specification to
indicate that the operations recited in the claims require any specialized
hardware or inventive computer components or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 9 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection of claim 9 under 35 U.S.C. § 101, as well as claims 1,
2, and 5-11, which fall with claim 9.
Claim 4
Claim 4 recites that the start or completion of work for the work order
is reported by using the security device carried by the worker entity.
Appellants argue that this feature recites an inventive concept because the
"'security device' has dual-functionality of (1) facilitating access
authentication for the asset or access control device; and (2) reporting
work/state completion status for a particular work order." App. Br. 16. Yet
Appellants' Specification provides that a "security device" includes a cell
phone and a personal digital assistant ("PDA") (Spec. ,r 39), and using a cell
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phone or PDA to report information is not arguably inventive. Therefore,
we sustain the Examiner's rejection of claim 4 under 35 U.S. C. 101.
Claim 64
Independent claim 6 recites, in part, receiving a message inquiring
about whether the worker is authorized to access the asset or the access
control device; and, when authorized, transmitting a message indicating the
granting of the access right of the worker entity to the asset or asset control
device that transmitted the inquiry message. Appellants additionally
contend with respect to independent claim 6 that these limitations "facilitate
a direct association between the security device and the asset or control
device," thereby "further improving system interoperability using these
expanded communication capabilities that offers [sic] greater flexibility in
supporting the particular types of assets being managed using these
inventive concepts." App. Br. 16. Yet these limitations merely further
narrow the abstract idea with additional steps that themselves are abstract
(receiving and transmitting information). Therefore, Appellants additional
arguments do not apprise us of error in the Examiner's rejection of claim 6
under 35 U.S.C. § 101. Therefore, we sustain the Examiner's rejection of
claim 6.
Claim 17
Claim 1 7 depends from claim 1 and additionally recites that the
computer includes a configuration management system and a configuration
management database, the asset being a configuration item and the work
4 We treat the Appellants' identification of claims 7-11 in Group III as
inadvertent. See Reply Br. 6 (identifying only claim 6 in Group III); see
also App. Br. 16 (discussing only claim 6 in the Group III section of the
Appeal Brief).
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order being issued by a change management process or release management
process. Appellants argue that "the use of a change/release management
process in combination with a configuration management system and
configuration management provides an inventive concept not previously
known in the art." App. Br. 16-17. Yet Appellants do not explain, and it is
not readily apparent, how using a configuration management system with a
configuration management database involves more than the use of generic
computers in their ordinary capacity.
We are not persuaded that the Examiner erred in rejecting claim 17
under 35 U.S.C. § 101. Therefore, we sustain the Examiner's rejection of
claim 17.
DECISION
The Examiner's rejection of claims 1, 3, 4, and 6-17 under 35 U.S.C.
§ 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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