Ex Parte Olsen et al

Patent Trial and Appeal Board

Oct 25, 2017

13650004 (P.T.A.B. Oct. 25, 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.
13/650,004 10/11/2012 Howard W. Olsen P002.01 (57059.0006) 1010
26582 7590 10/27/2017
HOLLAND & HART, LLP
222 South Main Street, Suite 2200
P.O. Box 11583
SALT LAKE CITY, UT 84147
EXAMINER
MARCUS, LELAND R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
patentdocket @ hollandhart. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD W. OLSEN, NANCY D. OLSEN, ERICA J. OLSEN,
JOHNATHAN WAGONER, and RUSSEL PERSSON
Appeal 2016-008056
Application 13/650,0041
Technology Center 3600
Before HUNG H. BUI, KARA L. SZPONDOWSKI, and JOYCE CRAIG,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 18—34 and 36-42, which are all the
claims pending in the application. Claims 1—17 and 35 have been cancelled.
Ans. 6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the real party in interest is M3 Planning, LLC.
App. Br. 1.
2 Our Decision refers to Appellants’ Appeal Brief (“App. Br.”) filed June
24, 2015; Reply Brief (“Reply Br.”) filed August 22, 2016; Examiner’s
Answer (“Ans.”) mailed June 22, 2016; Final Office Action (“Final Act.”)
mailed May 23, 2015; and original Specification (“Spec.”) filed October 11,
2012.
Appeal 2016-008056
Application 13/650,004
STATEMENT OF THE CASE
Appellants’ invention relates to “an automated strategic planning
system” [e.g., software tool] that is “highly interactive and leads the user
through a series of stages to develop a strategic plan and/or manage
execution or modification of a strategic plan.” Spec. 117; Abstract.
According to Appellants, “the system can automatically organize the user’s
responses to queries in order to provide strategic planning output or manage
execution or modification of the plan.” Id.
Claims 18, 24, and 28 are independent. Claim 18 illustrates the
subject matter at issue, as reproduced below with disputed limitations in
italics:
18. An automated strategic planning method
comprising, through a computer system and a strategic planning
computer software program running on the computer system:
(A) providing an automated first user-interface computer
page display requesting user identification on the first user-
interface page of a plurality of hierarchy level actions for an
organization including a first hierarchy level action and a
second hierarchy level action;
(B) providing a second user-interface computer page
display (i) automatically identifying the first hierarchy level
action among the plurality of hierarchy level actions for the
organization and (ii) requesting user identification on the second
user-interface page of a first sub-entity action for a first sub­
entity among a plurality of sub-entities within the hierarchy level
of the organization; and
(C) providing an automated project management user-
interface computer display (i) automatically identifying the first
sub-entity action and (ii) including an action item execution
tracking section.
App. Br. 29 (Claims App’x.).
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Examiner’s Rejections and References
(1) Claims 18—34 and 36-42 stand rejected under 35U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
Ans. 2—6.3
(2) Claims 18, 19, 24, 25, 28, and 294 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Muell (US 2006/0178920 Al;
published Aug. 10, 2006). Final Act. 4—7.
(3) Claims 20-23, 26, 27, and 30-42 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Muell and Bowen (US
2004/0260588 Al; published Dec. 23, 2004). Final Act. 7—11.
3 Claims 18—34 and 36-42 were newly rejected in the Examiner’s Answer.
Ans. 2—6. The Examiner explained that, because the Answer contains a new
ground of rejection, Appellants were required, within two months from the
date of the Answer, either (1) to reopen prosecution before the primary
examiner by filing a reply under 37 C.F.R. § 1.111 relevant to the new
ground of rejection or (2) to maintain their appeal by filing a reply brief
under 37 C.F.R. § 41.41 addressing the new ground of rejection, in order to
avoid sua sponte dismissal of the appeal as to all claims subject to the new
ground of rejection. Id. at 14—15; see 37 C.F.R. § 41.39(b). In response
thereto, Appellants filed a Reply Brief within the allotted two-month period,
addressing the § 101 rejection of claims 18—34 and 36-42. As such, we
discern no procedural error in the Examiner’s rejection of claims 18—34 and
36-42 under 35 U.S.C. § 101.
4 The Examiner identified claims 20 and 21 in both obviousness rejections.
The Examiner, however, discusses claims 20 and 21 only in the body of the
obviousness rejection of claims 20-23, 26, 27, and 30-42 over Muell and
Bowen. We consider the Examiner’s inclusion of claims 20 and 21 in the
§103 rejection over Muell alone to be harmless error, and we present the
correct claim listing for clarity.
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ANALYSIS
§101 Rejection of Claims 18—34 and 36—42
In Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 566
U.S. 66, 79 (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, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts,” such as an abstract idea. Id. If the
claims are directed to a patent-ineligible concept, the second step in the
analysis is to consider the elements of the claims “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. (citing Mayo, 566 U.S. at 78—79). In other words, the second step is to
“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.’” Id.
(citing Mayo, 566 U.S. at 72—73).
In rejecting claims 18—34 and 36-42 under 35 U.S.C. § 101, the
Examiner finds these claims are directed to an abstract idea of “using
categories to organize, store and transmit information, specifically strategic
planning.” Ans. 2—3. The Examiner also finds that:
Taken as an ordered combination, the limitations ... are
not enough to quality as significantly more when recited in a
claim with an abstract idea include, as a non-limiting or non­
exclusive examples: (i) mere instructions to implement the idea
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on a computer, and/or (ii) recitation of generic computer
structure that serves to perform generic computer functions that
are well-understood, routine, and conventional activities
previously known to the pertinent industry.
Viewed as a whole, these additional claim element(s) do
not provide meaningful limitation(s) to transform the abstract
idea into a patent eligible application of the abstract idea such
that the claim(s) amounts to significantly more than the abstract
idea itself.
Ans. 5—6.
Appellants do not dispute the Examiner’s findings that claims 18—34
and 36-42 are directed to an abstract idea. Instead, Appellants present
several arguments, including: (1) the Examiner has not shown that “any of
the Claims are directed to well understood, routine, or conventional
activities”; (2) the Supreme Court’s rulings in Alice are limited to “a
fundamental (and thus prior art) economic practice” as an “abstract idea”;
(3) Appellants’ “claimed data collection, processing, and display actions —
that is, as actually stated in the claims — has not been shown, or even
contended, to be old much less directed to an old, fundamental practice of
any type”; and (4) Appellants’ claims 18—34 and 36-42 are directed to
patent eligible subject matter — “to a new machine that provides entirely
new and advantageous data collection, processing, and display techniques.”
Reply Br. 9—10.
Appellants’ arguments are misplaced and do not address the
requirements under Alice. At the outset, we note the Supreme Court’s
rulings in Alice are not limited to “a fundamental economic practice” as an
“abstract idea.” Instead, the Supreme Court’s Alice two-step framework is
applicable to all claims that are directed to an abstract idea. As correctly
recognized by the Examiner, Appellants’ claims 18—34 and 36-42, when
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considered in light of the Specification, are directed to an abstract idea of
“using categories to organize, store and transmit information, specifically
strategic planning.” Ans. 2—3. For example, ah the steps recited in
Appellants’ method claim 18, including: (1) “providing an automated first
user-interface computer page display requesting user identification on the
first user-interface page of a plurality of hierarchy level actions for an
organization”; (2) “providing a second user-interface computer page display
(i) automatically identifying the first hierarchy level action among the
plurality of hierarchy level actions for the organization and (ii) requesting
user identification on the second user-interface page of a first sub-entity
action for a first sub-entity among a plurality of sub-entities within the
hierarchy level of the organization”; and (3) “providing an automated project
management user-interface computer display (i) automatically identifying
the first sub-entity action and (ii) including an action item execution tracking
section” are abstract processes of collecting, arranging, and analyzing
information of a specific content. Nevertheless, information as such is
intangible. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 451 n.12
(2007). Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011).
Turning now to the second step of the Alice inquiry, we find nothing
in Appellants’ independent claims 18, 24, and 28 that adds “significantly
more” to transform the abstract concept of collecting, arranging, and
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analyzing information into a patent-eligible application. Alice, 134 S. Ct. at
2357. Appellants do not argue any of the steps recited in claims 18, 24, and
28 are individually inventive. Nor do Appellants argue the ordered
combination of these elements is inventive. Reply Br. 9—10. Instead,
Appellants’ claims 18—34 and 36-42 simply incorporate a general-purpose
computer and generic components such as “storage medium” and “computer
displays” to perform the abstract concept of collecting, arranging, and
analyzing information.
Limiting the abstract concept of collecting, arranging, and analyzing
information to a general purpose computer having generic elements, such as
the processor, memory, and computer readable storage medium recited in
Appellants’ claims 18—34 and 36-42, does not transform the abstract idea
into a patent eligible invention under 35 U.S.C. § 101. As recognized by the
Supreme Court, “the mere recitation of a generic computer cannot transform
a patent ineligible abstract idea into a patent-eligible invention.” See Alice,
134 S. Ct. at 2358, 2359 (concluding claims “simply instructing] the
practitioner to implement the abstract idea of intermediated settlement on a
generic computer” are not patent eligible); see also Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715—16 (Fed. Cir. 2014) (concluding claims
merely reciting abstract idea of using advertising as currency as applied to
particular technological environment of the Internet are not patent eligible);
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1344-45 (Fed. Cir. 2013) (concluding claims reciting “generalized software
components arranged to implement an abstract concept [of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer” are not patent eligible); Dealertrack,
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Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir. 2012) (“[sjimply adding a
‘computer aided’ limitation to a claim covering an abstract concept, without
more, is insufficient to render [a] claim patent eligible”).
Separately, we note that Appellants’ claims 18—34 and 36-42 can
further be considered as a series of mental steps or “mental processes.” See
Gottschalk v. Benson, 409 U.S. 63 (1972). All the functions or steps recited
in claims 18, 24, and 28 can be performed in the human mind, or by a human
using pen and paper.
Lastly, we also note that none of the steps recited in Appellants’
claims 18, 24, and 28 provides, and nowhere in the Specification can we
find, any description or explanation as to how these data manipulation steps
are intended to provide, for example: (1) a “solution . . . necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks,” as explained by the Federal Circuit in
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014); (2) “a specific improvement to the way computers operate,” as
explained by the Federal Circuit in Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016); or (3) an “unconventional technological
solution ... to a technological problem” that “improve[s] the performance of
the system itself,” as explained by the Federal Circuit in Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1306, 1302 (Fed. Cir. 2016);
see also Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1352 (Fed. Cir. 2016); Thales Visionix Inc. v. United States, 850
F.3d 1343, 1347, 1349 (Fed. Cir. 2017).
Because Appellants’ claims 18—34 and 36-42 are directed to a patent-
ineligible abstract concept, and do not recite something “significantly more”
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under the second prong of the Alice analysis, we sustain the Examiner’s
rejection of these claims under 35 U.S.C. § 101 as being directed to non-
statutory subject matter in light of Alice and its progeny.
§ 103(a) Rejection of Claims 18—21, 24—25, and 28—29 based on Muell
Independent claim 18 recites an automated strategic planning method
comprising three separate user-interface computer page displays, including:
(A) “an automated first user-interface computer page display requesting
user identification on the first user-interface page of a plurality of hierarchy
level actions for an organization”; (B) “a second user-interface computer
page display (i) automatically identifying the first hierarchy level action
among the plurality of hierarchy level actions for the organization and (ii)
requesting user identification ...” and (C) “a second user-interface computer
page display (i) automatically identifying the first hierarchy level action
among the plurality of hierarchy level actions for the organization and (ii)
requesting user identification.”
Independent claim 24 is similar to claim 18, but recites “a plurality of
computer displays” including: (A) “an automated entity strategic planning
section” including various user input fields; (B) “an automated department
strategic planning section” that automatically displays various items; and (C)
“an automated team member strategic planning section” that automatically
displays different items.
Independent claim 28 is narrower than claims 18 and 24. Claim 28
contains similar limitations of claim 18, but further recites the “second
automated user-interface page display” to request “user identification ... of
a department goal and an action items for each among a plurality of
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departments in the organization, including (a) a first department goal and a
first department action item and (b) a second department goal and a second
department action item.
In support of the obviousness rejection of independent claim 28, the
Examiner finds Muell teaches an automated strategic planning method
including all the elements and the “separate page displays”, except for
specific information shown or entered on what page display. Final Act. 4—6
(citing Muell Tflf 28—32, 50, 85, 93, Fig. 2C). Based on Muell’s disclosures,
the Examiner concludes “it would have been obvious ... to modify Muell to
include separate page displays for each hierarchical level of the strategy
development.” Id. at 6.
Appellants acknowledge “Muell describes and illustrates a complex,
awkward method that instructs the user to analyze and determine a strategy
based on goals determined by function within the organization rather
organizational entity within the organization.” App. Br. 11 (citing Muell
116, 29, and 91) (emphasis added). In this regard, Appellants argue Muell
discloses “the awkward, complex, functionally — not organizationally —
centric strategic planning interface.” Id.
Appellants also argue: (1) “paragraphs 28—32 [of Muell] only discuss
high level, functional strategic planning theory of the application” and
“make no reference to a user interface page display, much less one providing
the identification and request for user identification, much less as further
claimed in claim 28” and (2) “‘[paragraph 85 references two screen shoots,
but it includes no disclosure of a ‘department number goal,’ much less either
[(1)] for ‘a first department entity among a plurality of department entities in
the department’ or [(2)] ‘requesting user identification on the third user-
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interface page.’” Id. at 12. Appellants also argue the Examiner has
provided insufficient reasoning to modify Muell and improperly used
hindsight. App. Br. 9—10, 12—14.
We do not find Appellants’ arguments persuasive. Instead, we find
the Examiner provides a comprehensive response to Appellants’ arguments
supported by a preponderance of evidence. Ans. 6—14. As such, we adopt
the Examiner’s findings and explanations. Id. For example, as recognized
by the Examiner, Muell discloses the hierarchical nature of an organization,
shown in Figure 1, including the top level (corporate level), the second level
(functional unit level), the third level (task level), and the bottom level
(individual step). Ans. 7. Muell also describes the functional unit level as
the level of strategy formulation typically associated with a functional unit
of a corporation, such as marketing, finance, and production. Muell 129.
According to Muell, these units are “various narrower organizational units
[e.g., various departments] within a corporation.” Muell 136.
Moreover, we note Appellants’ claim 28 is very broad and simply
requires three separate user-interface computer page displays provided with
different types of information items, which are non-functional descriptive
material and, as such, does not distinguish Appellants’ claimed invention
relative to various computer page displays disclosed by Muell. See In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) and In re Lowry, 32 F.3d
1579 (Fed. Cir. 1994). Relevant case law and our precedential decisions on
the appropriate handling of claims that differ from the prior art only based
on “nonfunctional descriptive material” include: (1) Ex parte Nehls, 88
USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the
information being manipulated does not lend patentability to an otherwise
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unpatentable computer-implemented product or process.”); (2) Ex parte
Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative)
(“[Nonfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art.”),
aff’d, 191 Fed. App’x. 959 (Fed. Cir. 2006) (Rule 36); and (3) Ex parte
Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (“Nonfunctional
descriptive material cannot render nonobvious an invention that would have
otherwise been obvious.”), aff’d, No. 06-1003 (Fed. Cir. June 12, 2006)
(Rule 36).
With respect to independent claim 18, Appellants present similar
arguments that Muell does not teach the hierarchical structure of an
organization, i.e., “a plurality of hierarchy level actions for an organization
including a first hierarchy level action and a second hierarchy level action”
provided at the “user-interface computer page display” as recited in claim
18. App. Br. 16—17. Appellants also argue, with respect to independent
claim 24, that Muell does not teach various sections provided on “computer
displays” including: “(A) an automated entity strategic planning section”
including various input fields; “(B) an automated department strategic
planning section” displaying “an entity action item”; and “(C) an automated
team member strategic planning section” displaying “a department action
item” as recited in claim 24. App. Br. 18—19.
We are not persuaded by Appellants’ arguments for the same reasons
discussed relative to claim 28. For example, as shown in Muell’s Figure 1,
various hierarchy level actions are required to formulate a corporate strategy.
See Muell 29, 36. Planning sections for an organization, including its
various departments and teams are shown in Figures 3 A—3C, 4A-4M, and
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6A— 6B. Moreover, various information items recited in Appellants’ claims
18 and 24 are nothing more than nonfunctional descriptive material and, as
such, do not distinguish Appellants’ claimed invention relative to various
computer page displays disclosed by Muell.
For these reasons, Appellants have not persuaded us of error in the
Examiner’s obviousness rejection of independent claims 18, 24, and 28.
Accordingly, we sustain the Examiner’s obviousness rejection of claims 18,
24, and 28. We also sustain the Examiner’s obviousness rejection of
dependent claims 19, 25, and 29, for which Appellants make no additional,
substantive arguments. See App. Br. 14, 16, 17, 19.
With respect to dependent claims 20—23, 26, 27, 35, and 36-42,
Appellants reiterate the same arguments presented against claim 28. App.
Br. 21—21. For the same reasons discussed above, we also sustain the
Examiner’s obviousness rejection of claims 20—23, 26, 27, 35, and 36-42
based on Muell and Bowen.
With respect to dependent claims 30—34, 36, and 41, Appellants argue
Muell does not teach (1) the “automated learning user-interface page
display” recited in claim 30 (App. Br. 21—22); (2) “merely combining Muell
and Bowan to reject claims 31—34 [reciting the “automated financial
assessment user-interface page display”] would involve the improper
application of hindsight by use of the applicant’s inventive contribution”
(App. Br. 23—25); (3) “a report of all goals and action items entered during
the automated strategic planning method” as recited in claim 36 (App. Br.
26—27); and (4) “user-interface page displays include a strategic plan
development progress report” as recited in claim 41 (App. Br. 27). We
disagree and adopt the Examiner’s explanations provided on pages 13—14 of
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the Examiner’s Answer. Moreover, these page displays including various
types of information items are nothing more than non-functional descriptive
material and, as such, do not distinguish Appellants’ claimed invention
relative to various computer page displays disclosed by Muell.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 18—34 and 36-42 under
35 U.S.C. § 101 and § 103(a).
DECISION
As such, we affirm the Examiner’s rejection of claims 18—34 and 36—
42 under 35 U.S.C. § 101 and § 103.
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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