Ex Parte Podgurny et al

Patent Trial and Appeal Board

Jun 23, 2017

13166659 (P.T.A.B. Jun. 23, 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.
13/166,659 06/22/2011 Leonard John Podgurny 31252-0004001 /
85549-297
6383
26161 7590 06/27/2017
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
DELICH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEONARD JOHN PODGURNY, ALAN BRUCE RANDALL,
MATTHEW OREN OWENS, and MICHAEL ANTHONY MOROZ
Appeal 2015-001298
Application 13/166,6591
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 27—592. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify Canadian National Railway Company as the real party
in interest. (Appeal Br. 1).
2 Claim 60 was canceled by Amendment dated 10/24/2013.
Appeal 2015-001298
Application 13/166,659
THE INVENTION
Appellants claim a method and system for enabling a user to bid on a
work assignment. (Spec. 1).
Claim 27 reproduced below, is representative of the subject matter on
appeal.
27. A method for employees of a ground transportation
company to bid simultaneously on multiple jobs in an inventory
of jobs, the method including:
a. storing in an employee database a plurality of
employee records associated with respective employees and
storing in one or more of the employee records employee
preference information describing job preferences, the
employee preference information including information
identifying a preferred colleague the employee would like to
work with;
b. storing in a jobs database a plurality of records
associated with respective jobs of the inventory of jobs;
c. generating a Graphical User Interface (GUI) on a
display, the GUI implementing:
(a) an information display area for displaying a
plurality of job bulletins, each job bulletin being associated
with a plurality of jobs from the inventory of jobs and on which
the employees can bid;
(b) first, second and third independently operable
control components;
d. in response to operation of the first control component,
processing with a Central Processing Unit (CPU) data from the
jobs database on the basis of employee profile information from
the employee database to identify among the plurality of job
bulletins at least one job bulletin having two or more jobs on
which the preferred colleague has placed a bid;
e. in response to operation of the second control
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component in association with a selected job bulletin among the
job bulletins identified by the processing, identifying in the
display area the two or more jobs among the jobs of a selected
job bulletin on which the preferred colleague has placed a bid;
and
f. in response to operation of the third control component
simultaneously placing a bid for the two or more jobs, including
generating a signal to create an association between the record
of the employee in the employee database and the records of the
two or more jobs in the jobs database indicating that the
employee has placed a bid for each of the two or more jobs.
The Examiner relies upon the following as evidence of
unpatentability:
The following rejections are before us for review.
Claims 27—59 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.3
Claims 27—30, 36-41, 44-47, and 53—58 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cartledge and Boegner.4
3 We treat the Examiner’s reference to canceled claim 60 at page 18 of the
Answer as inadvertent error.
4 We treat the Examiner’s reference to canceled claim 60 at page 12 of the
Answer as inadvertent error.
THE REJECTION
Boegner
Cartledge
Kimbrel
US 2009/0006160 A1 Jan. 1, 2009
US 2009/0132331 A1 May 21, 2009
US 2011/0246994 A1 Oct. 6, 2011
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Application 13/166,659
Claims 31—34 and 48—51 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cartledge, Boegner, and Official Notice.
Claims 35, 42, 43, 52, and 59 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cartledge, Boegner, and Kimbrel.
FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 18—19 of the
Answer concerning the rejection made under 35 U.S.C. § 101.
ANALYSIS
35 U.S.C. § 101 REJECTION
We agree with the Examiner’s finding that claims 27—59 are “directed
to non-statutory subject matter because the claims as a whole, considering
all claim elements both individually and in combination, do not amount to
significantly more than an abstract idea.” (Answer 18).
Claim 27 recites in pertinent part, viz.,
displaying a plurality of job bulletins, each job bulletin
being associated with a plurality of jobs from the inventory of
jobs and on which the employees can bid;
and
processing . . . data from the jobs database on the basis of
employee profile information from the employee database to
identify among the plurality of job bulletins at least one job
bulletin having two or more jobs on which the preferred
colleague has placed a bid.
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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, we
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,
we 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
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp., Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294,
1296-98 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
While the Court in Alice made a direct finding 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 27 recites that it is for “employees of a ground
transportation company to bid simultaneously on multiple jobs in an
inventory of jobs.” The steps in claim 27 result in creating “an association
between the record of the employee in the employee database and the
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records of the two or more jobs in the jobs database indicating that the
employee has placed a bid for each of the two or more jobs.” The
Specification at page 1, lines 9—10 recites that the invention relates to
“employee resource management.” Thus, all this evidence shows that
claim 27 is directed to an employee management preference scheme.
It follows from prior Supreme Court cases, and Gottschalk v. Benson,
409 U.S. 63 (1972) in particular, that the claims at issue here are directed to
an abstract idea. Like the algorithm in Gottschalk, determining a preferred
colleague-based work force is a mathematical algorithm that preempts all
implementations and uses. The Examiner found, and we agree, that
determining a preferred colleague work force through bidding on jobs
constitutes a method of organizing human activities. (Answer 18). Thus,
determining a preferred colleague work force is an “abstract idea” beyond
the scope of § 101. See Alice Corp. Pty. Ltd., 134 S. Ct. 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 performing a mathematical algorithm in Gottschalk
and the concept of determining a method of organizing human activities
related at issue here. Both are squarely within the realm of “abstract ideas”
as the Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at
2357. That the claims do not preempt all forms of the abstraction or may be
limited to the abstract idea in the ground transportation setting do not make
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them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1360-1361 (Fed. Cir. 2015). Perhaps more to the point, claim 1 does
no more than match people who prefer to work with each other in the same
job. Preference, as such, is a disembodied concept that is the epitome of
abstraction.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two. Alice Corp. Pty. Ltd., 134 S. Ct. at 2357. The Supreme
Court explained that
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 (alterations in original) (citations
omitted).
Instead, at step two, “the relevant question is whether the claims here do
more than simply instruct the practitioner to implement the abstract idea . . .
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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 take in data and compute a result from a database amounts to
electronic data query and retrieval—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. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite a method of organizing human activities, i.e., an abstract idea,
related as performed by a generic computer. 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.
Instead, the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of determining a preference-based work
force 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., 134 S. Ct. at 2360.
As to the system claims, they
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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 “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360 (alterations in original).
The Examiner’s rejection of claims 27—59 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter is affirmed.
35 U.S.C. § 103 REJECTIONS
Independent claims 27, 42, 43, 44, and 59 each recites, in pertinent
part,
in response to operation of the third control component
simultaneously placing a bid for the two or more jobs, including
generating a signal to create an association between the record
of the employee in the employee database and the records of the
two or more jobs in the jobs database indicating that the
employee has placed a bid for each of the two or more jobs.
Claims App’x., Claim 27.
The Examiner found concerning this limitation that:
Cartledge does not explicitly recite that the requests and
successfully assigned requests associated with other
employees/teams are based on bids for the multiple jobs which
are placed simultaneously. However, Boegner teaches in at
least the Abstract how each crew[ jmember is able to request
which trips they wish to schedule and which days they want off
by placing bids on different schedules of work which are then
determined based on seniority, preferences, availability, and
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legality while also satisfying company constraints. Boegner
further teaches:
• employees of a transportation company to bid simultaneously
on multiple jobs, employees can bid on jobs, and employee bids
can be displayed and selected for task assignment (Boegner Fig.
1 illustrates in at least item 29 how multiple bids can be
executed simultaneously, Fig. 3 illustrates sending bid results to
a GUI for bidders, Fig. 5 illustrates starting a bidding process,
Fig. 6 illustrates how multiple bids can exist simultaneously,
see BIDS 1-4 in item 180, item 184 illustrates displaying line
data to a GUI with a list of bid trips for each bid, Fig. 9
illustrates how multiple criteria, or at least 3 components are
used for determinations, a MESSAGE is displayed regarding a
user's displayed bid in relation to the multiple jobs available for
bidding, Fig. 10 illustrates how one bid can comprise a request
for multiple tasks, illustrating a bid for multiple jobs
simultaneously, [0013] describes the system maintaining recent
bid submissions from other bidders which can be compared and
used in the evaluation which determines who is awarded the
work, [0031] describes how individuals for example, airline
crew members, can evaluate the efficacy of bids for particular
trips simultaneously during a bid submission period, see also
[0073-0074]).
(Final Act. 9—10).
Appellants argue:
Boegner, FIG. 3 “illustrates the preferential bidding system
(PBS) engine that drives the allocation of trips to crew
members” (id., paragraph [0051]); and FIG. 5 shows a bidding
process (id., paragraph [0068]). However, in this process, no
bid is simultaneously placed “for the two or more jobs,
including generating a signal to create an association between
the record of the employee in the employee database and the
records of the two or more jobs in the jobs database indicating
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that the employee has placed a bid for each of the two or more
jobs.” Although FIG. 6 shows tabs “BID 1,” “BID 2,” “BID 3,”
and “BID 4,” a crew member selects a tab and enters a bid, one
at a time (id., paragraph [0069]). The four bids are not
“simultaneously placed,” let alone placed “for the two or more
jobs, including generating a signal to create an association
between the record of the employee in the employee database
and the records of the two or more jobs in the jobs database
indicating that the employee has placed a bid for each of the
two or more jobs.” FIG. 9 shows a trip search process
(paragraph [0073]). Although Boegner describes that: “Once
the crew member is satisfied with the criteria, then at step 225 a
request is made to build a list of trips which satisfy the
particular criteria as closely as possible” (id.), building the list
of trips is not the same as “simultaneously placing a bid for the
two or more jobs [on which the preferred colleague has placed a
bid].” FIG. 10 shows a crew member adding various trips to a
bid (id., paragraph [0075]). However, the description does not
describe “simultaneously placing a bid for the two or more jobs
[on which the preferred colleague has placed a bid].”
(Appeal Br. 12—13).
We agree with Appellants. Our review of Boegner at paragraphs 13,
31, 73 and 74 reveals no disclosure of generating a signal to create an
association between the record of the employee in the employee database
and the records of the two or more jobs in the jobs database indicating that
the employee has placed a bid for each of the two or more jobs. The
Examiner does not offer any explanation of where either Boegner or
Cartledge discloses features which would lead one having ordinary skill in
the art to arrive at the claim limitation cited above. At best, paragraph 13 of
Boegner discloses that, “the process has aspects similar to an auction, in that
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Application 13/166,659
subsequently submitted bids by higher-seniority crewmembers may impact
the bid awards previously tentatively assigned by the bid award process.” In
paragraph 31 Boegner only discloses an “essentially continuous” bid award
process wherein, “[t]he results are ranked and determined by the evaluation
criteria for that individual...” In paragraph 73 Boegner only discloses
building “a list of trips which satisfy the particular criteria as closely as
possible.” In paragraph 74, Boegner only discloses an identifier that
identifies a crew member and is used by the server to “identify additional
information that may be required.” The server “then executes the desired
action.” Boegner 174. In sum, although Boegner does disclose the claimed
simultaneous bid feature, albeit not explicitly from a single employee, it
does not disclose the limitation of generating a signal to create an
association between the record of the employee in the employee database
and the records of the two or more jobs in the jobs database indicating that
the employee has placed a bid for each of the two or more jobs.
Because claims 28—38, 45—59 depend from claims 27 and 44,
respectively, and because we cannot sustain the rejection of claims 27 and
44, we likewise cannot sustain the rejection of claims 28-38, 45—59.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 27—59 under
35U.S.C. § 101.
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We conclude the Examiner erred in rejecting claims 27—59 under 35
U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 27—59 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).
AFFIRMED
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