Ex Parte Riggs et al

Patent Trial and Appeal Board

May 16, 2016

11873969 (P.T.A.B. May. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111873,969 10/17/2007
72550 7590
Robert M. Bauer, Esq.
Bauer Law Offices
Griswold Plaza Building
1314 Griswold Plaza
Erie, PA 16501
05/16/2016
FIRST NAMED INVENTOR
Glenn E. RIGGS
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.
78820.0008 1592
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
MAILDATE DELIVERY MODE
05/16/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLENN E. RIGGS, JOHN H. KIVELA,
ROBERT H. SHELLMAN, JOSEPH F. ROCKY, JR.,
STANLEY M. BAINOR, RALPH K. BRECHTER, DOUGLAS L. CLARK,
JAMES R. CLARK, JON L. CLOW, AMY DALEY, LARRY HU,
LOUIS F. INDELICATO, WILLIAM J. LOHAN,
MICHAEL M. NAUGHTON, PETER P. NELSON,
ALAND. SHOLLENBERGER, M. NADINE WILLETT,
DOUG JOHNSTON, DONALD H. MUELLER, MICHAEL D. MICHAUD,
ROBERT PHANEUF, and JOSEPH J. BAINOR
Appeal2013-005548
Application 11/873,969
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
NINA L. MEDLOCK, Administrative Patent Judges.
CRAWFORD, 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 decision rejecting claims 9-22. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). Appellants appeared for oral hearing on April 5,
Appeal2013-005548
Application 11/873,969
2016. We enter a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b).
BACKGROUND
Appellants' invention is directed to logistics methods for the
transportation of goods.
Claim 9 is illustrative:
9. A method of arranging for the shipment of goods from
an origin to a destination, said method comprising:
retrieving routing information for a plurality of different
transport modes;
retrieving carrier information relating to each one of a
plurality of different carriers for each one of said plurality of
different transport modes;
determining a routing for the shipment of goods from
said origin to said destination based on said retrieved routing
information; and
scheduling, via a computer network, the shipment of
goods from said origin to said destination based on said carrier
information.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Arunapuram
Letti ch
US 2002/0019759 Al
US 2002/0049622 Al
Feb. 14,2002
Apr. 25, 2002
Hickey, A Perfect Match, Traffic World, v. 263, n. 2, p. 37 (July 10,
2000) (hereinafter "Hickey").
Webmodal Names Sam F. Niness III Vice President of Business
Development; Intermodal Industry Veteran to Lead Webmodal 's Strategic
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Appeal2013-005548
Application 11/873,969
Business Development Efforts, Business Wire (July 5, 2000) (hereinafter
"Webmodal").
Appellants appeal the following rejections:
Claims 9-11, 15 and 17 under 35 U.S.C. § 103(a) as unpatentable
over Hickey, Webmodal, and Arunapuram.
Claims 12-14, 16, and 18-22 under 35 U.S.C. § 103(a) as
unpatentable over Hickey, Webmodal, Arunapuram, and Lettich.
ANALYSIS
Non-statutory subject matter
Pursuant to our authority under 37 C.F.R. § 41.50(b) we enter a new
ground of rejection under 35 U.S.C. § 101 of claims 9-22 as being directed
to patent-ineligible subject matter.
In determining whether the claims on appeal comply with 35 U.S.C.
§ 101, we have considered the claims in light of the Supreme Court's
explanations of the law regarding patent eligible subject matter. See Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014). "Whoever invents
or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court has enunciated three specific
exceptions to the broad categories of § 101: laws of nature, natural
phenomena, and abstract ideas. Bilski v. Kappas, 561 U.S. 593, 625 (2010).
"The 'abstract ideas' category embodies the longstanding rule that ' [a Jn idea
of itself is not patentable."' Alice, 134 S. Ct. at 2355 (citing Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)). In Alice, the Supreme Court referred to the
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Application 11/873,969
two-step analysis set forth in Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289 (2012), as providing "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." Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1289).
Under the framework "[ w ]e must first determine whether the claims at issue
are directed to a patent-ineligible concept." Id. Next, "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." Id. (citing Mayo, 132 S. Ct. at
1297-98). Under Mayo, to be patentable, a claim must do more than simply
state the law of nature or abstract idea and add the words "'apply it."' Mayo,
132 S. Ct. at 1294; Benson, 409 U.S. at 67. For example, "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
• 1 • ' ' ' 1 • •1 1 • ' • ' ' A 1 • 1 ,.... A n ,,..-...; ' ' I"\,.... !""' {") ''~1 • I' 10ea mw a pacenc-eng101e mvennon. Atzce, u.:+ ~-LL ac L.J:J~. ·· inus, n 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." Id. (internal citation omitted). A patent claim,
properly construed, must incorporate enough meaningful limitations to
ensure that it claims more than just an abstract idea and not just a mere
"drafting effort designed to monopolize the [abstract idea]." Alice, 134 S.
Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1297). "Simply appending
conventional steps, specified at a high level of generality," is not enough for
patent eligibility. Id. (quoting Mayo, 132 S. Ct. at 1300).
Accordingly, we first look at claim 9 to determine whether the claim,
when given its broadest reasonable interpretation, embodies a patent-eligible
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Application 11/873,969
application of an abstract idea or merely the abstract idea itself. The claim is
directed to determining routing and scheduling for the shipment of goods
based on routing information related to a plurality of transport modes and a
plurality of carriers. In other words, claim 9 is directed to the abstract
concept of determining the best carrier and route to use to ship goods and
scheduling shipment based on the carrier and route information. We hold
that the broadest reasonable interpretation of the claim encompasses a
method that can be completely performed as mental steps by a person with
or without the aid of a computer or pen and paper. Our reviewing court has
held that a method that can be performed by human thought alone is merely
an abstract idea and is not patent-eligible under § 101. Cy her Source v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011). "Sets of steps
occurring only in the mind have not been made subject to patenting because
mental processes are but disembodied thoughts, whereas inventions which
Congress is constitutionally empowered to make patentable are tangible
embodiments of ideas in the useful, or technological, arts." In re Sarkar,
588 F.2d 1330, 1333 (CCPA 1978). Accordingly, we conclude that claim 9
is directed to an abstract idea.
Regarding the second prong of the test articulated by the Supreme
Court in Alice, we further consider the elements of the claims "both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297-
1298)). 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. "Thus, if a patent's recitation of a computer amounts to a
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Appeal2013-005548
Application 11/873,969
mere instruction to 'implemen[t]' an abstract idea 'on ... a computer,' that
addition cannot impart patent eligibility." Id. (internal citation omitted).
In the instant case the recitation of "via a computer network" in
claim 9 is not enough to transform the ineligible abstract idea into patent
eligible subject matter because this recitation amounts to no more than the
implementation of the abstract idea using a computer network.
We reach the same conclusion regarding claims 10 to 22 because each
of these claims only adds subject matter that further defines the transport
modes of the abstract idea of claim 9.
We do not reach the Examiner's rejections in this case in view of the
new ground of rejection and in view of Appellants' desire, expressed during
oral argument, to have an opportunity to address the patent eligibility issue.
DECISION
We enter a new ground of rejection of claims 9-22 under 35 U.S.C.
§101.
We do not reach the Examiner's prior art rejections.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that, "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) further provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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Appeal2013-005548
Application 11/873,969
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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).
ORDER
37 C.F.R. § 41.50(b)
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