Ex Parte Rai

Patent Trial and Appeal Board

Sep 29, 2017

11779464 (P.T.A.B. Sep. 29, 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.
11/779,464 07/18/2007 SudhenduRai 20061667USNP/106681.18901 2237
75313 7590 10/03/2017
YKROY TORPOR ATTON T/O FONT ROTHSOHTT D T T P
EXAMINER
Princeton Pike Corporate Center ANDERSON, FOLASHADE
997 Lenox Drive, Building 3
Princeton, NJ 08648-2311 ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
ipdocket @ foxrothschild. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUDHENDU RAI
Appeal 2016-002560
Application 11/779,464
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and
AARON W. MOORE, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a non-final rejection
of claims 13—24 and 26—39. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-002560
Application 11/779,464
STATEMENT OF THE CASE
Appellant’s invention is directed to “a method of scheduling and
routing a print job stream in a print production environment” (Spec. 12).
Independent claim 13, reproduced below, is exemplary of the subject
matter on appeal.
13. A computer-implemented method of scheduling a plurality of
print jobs in a document production environment, the method comprising:
receiving, by a workflow management system in a document
production environment, a plurality of print jobs and at least one setup
characteristic corresponding to each print job, wherein each print job has a
corresponding job size, wherein the at least one setup characteristic
comprises at least one of a form type setup characteristic and an insert type
setup characteristic;
determining, by the workflow management system, for each print job,
whether the corresponding job size exceeds a job size threshold;
grouping, by the workflow management system, each print job having
a job size that exceeds the job size threshold into a large job subgroup;
grouping, by the workflow management system, each print job having
a job size that does not exceed the job size threshold into a small job
subgroup;
routing the small job subgroup to a small job autonomous cell
comprising one or more print production resources for processing the small
job subgroup;
identifying one or more setup characteristics associated with the large
job subgroup, wherein each setup characteristic has one or more associated
types;
for each setup characteristic, determining the number of types
associated with the large job subgroup;
for each setup characteristic, determining a threshold number of types
by performing, by the workflow management system, one more simulations,
wherein the determined threshold number of types optimizes a workflow of
the print jobs in the large subgroup;
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Application 11/779,464
classifying, by the workflow management system, the large job
subgroup as a high setup subgroup in response to the number of types
associated with the large job subgroup exceeding the threshold number of
types, otherwise classifying the large job subgroup as a low setup subgroup;
and
routing the large job subgroup to a large job autonomous cell wherein,
if the large job subgroup is a high setup subgroup, the large job autonomous
cell comprises one or more first print production resources for processing the
large job subgroup and wherein, if the large job subgroup is a low setup
subgroup, the large job autonomous cell comprises one or more second print
production resources for processing the large job subgroup.
REJECTIONS
The Examiner rejected claims 13—24 and 26—39 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.1
ANALYSIS
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v.
CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work.”). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, the application
1 The Examiner finds claims “13—24 and 26—39 are allowable over the prior
art” (Non-Final Act. 8).
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Application 11/779,464
of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293—94
(2012). In Mayo, the Court stated that “to transform an unpatentable law of
nature into a patent eligible application of such a law, one must do more
than simply state the law of nature while adding the words ‘apply it.”’ Id. at
1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these 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.” Id. If the claims are directed to a
patent-ineligible concept, then 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. (quoting Mayo, 132 S.
Ct. at 1298, 1297).
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. (brackets in original) (quoting
Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea
“cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment or adding insignificant post-solution
activity.” Bilski v. Kappos, 561 U.S. 593, 610—11 (2010) (citation and
internal quotation marks omitted). The Court in Alice noted that “‘[sjimply
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Application 11/779,464
appending conventional steps, specified at a high level of generality,’ was
not ‘enough’ [inMayo] to supply an ‘inventive concept.”’ Alice, 134 S. Ct.
at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Step one: Are the claims at issue directed to a patent-ineligible concept?
Claim 1 recites various steps of: receiving; determining; grouping;
routing; identifying; and classifying. Each of these steps involve
information. This is the essence of the information processing (receiving,
determining, grouping, identifying, classifying) and routing a print job to a
particular printer or groups of printers.
On the record before us, Appellant asserts claims 13—24 are not
directed to an abstract idea because they “describe a system of
interconnected physical devices that operate in a specific manner” (underline
omitted) (App. Br. 13). Appellant relies on Freeny v. Murphy Oil Corp.,
Case No. 2:13-CV-791-RSP (E.D. Tex. May 2015), which is not controlling
on our jurisdiction. Moreover, even if we rely on Freeny, we do not agree
with Appellant’s analysis. We note a workflow management system is the
only device cited in the method claims. Further, we agree with the Examiner
neither Appellant’s claims nor their Specification calls for specific types of
electronic devices; as the Examiner finds, the “devices appear to be general
and generic, and the networking of devices appear to be in an old, well-
known and conventional manner. In other words the device and the network
are performing in the manner for which they were designed” (Ans. 9). Thus,
there is no specific type of electronic device claimed, as there was in Freeny.
Additionally, Appellant has not addressed the holding in Alice, which is
controlling. As such, we agree with the Examiner and find claims 13—24
abstract.
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Application 11/779,464
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
To establish a prima facie case, the Examiner must consider whether
the elements of the claims, individually or collectively, add significantly
more than the abstract idea.
“A claim that recites an abstract idea must include ‘additional features'
to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].”’ Alice, 134 S. Ct. at 2357 (brackets in
original) (quoting Mayo, 132 S. Ct. at 1297). The prohibition against
patenting an abstract idea “cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment or adding
insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. at 610-11
(citation and internal quotation marks omitted). The recitations in claim 13
pertain to conventional steps analogous to the recitation of a conventional
“computer” discussed in Alice, and not “an innovation in print processing”
reflecting “an improvement to another technology (i.e., print production
resources),” which is more than simply performing an idea by a computer, as
Appellant asserts (App. Br. 19).
Additionally, as recognized by the Federal Circuit in Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski’s “machine-or-
transformation” (MoT) test can also provide a “useful clue” in the second
step of the Alice framework. See Bilski, 561 U.S. at 611. Under Bilski’s
MoT test, a claimed process can be considered patent-eligible under § 101 if:
(1) “it is tied to a particular machine or apparatus”; or (2) “it transforms a
particular article into a different state or thing.” Bilski, 545 F.3d 943, 954
(Fed. Cir. 2008) (citing Gottschalk, 409 U.S. at 70). Here, Appellant does
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not rebut the Examiner’s findings that method claim 13 and its
corresponding system claim 26 are neither sufficiently “tied to a particular
machine or apparatus” nor involved in any type of transformation of any
particular article.2 As the Examiner correctly finds, the additional elements
of the claim do not improve another technology or the functioning of a
computer (Ans. 8). Neither claim 13 nor claim 26 specify any particular
entity that performs the recited “receiving, determining, grouping, routing,
and identifying steps, other than citing a “workflow management system”
(claim 13) and “a workflow management system” that includes a
“computing device” and a “computer readable storage medium” (claim 26).
Such steps could be practiced mentally. Adding a mental step cannot
patentably transform an otherwise abstract idea into an inventive concept. In
re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“mental processes—or
processes of human thinking—standing alone are not patentable even if they
have practical application”).
Further, the computer cited in the claims is a generic computer. 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 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, 772 F.3d at 715—16 (claims merely reciting the abstract
idea of using advertising as currency as applied to particular technological
2 Alice also confirmed that if a patent’s systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360.
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Application 11/779,464
environment of the Internet not patent eligible); Accenture Global Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir.
2013) (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” not patent eligible); and Dealertrack, 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” (internal citation omitted)).
Limiting such an abstract concept of “scheduling a plurality of print jobs in a
document production environment” to generic components, such as a
computing device, does not make the abstract concept patent-eligible under
35U.S.C. § 101.
Because Appellant’s independent claims 13 and 26, argued for
substantially the same reasons, are directed to a patent-ineligible abstract
concept and do not recite something “significantly more” under the second
prong of the Alice analysis, we sustain the Examiner’s rejection of these
claims as well as respective dependent claims 14—24 and 26—39, not
separately argued, under 35 U.S.C. § 101 as being directed to non-statutory
subject matter in light of Alice and its progeny.
DECISION
The Examiner’s decision rejecting claims 13—24 and 26—29 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)(l)(iv).
AFFIRMED
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