Ex Parte Sloan et al

Patent Trial and Appeal Board

Sep 26, 2017

13026890 (P.T.A.B. Sep. 26, 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.
13/026,890 02/14/2011 Susan Leigh SLOAN 9203-98244 5740
42798 7590 09/26/2017
FITCH, EVEN, TAB IN & FLANNERY, LLP
120 South LaSalle Street, Suite 1600
Chicago, IL 60603-3406
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
09/26/2017 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 SUSAN LEIGH SLOAN, LAURENCE HELENE RABE,
and MICHAEL DAVID AMADO
Appeal 2016-007243
Application 13/026,890
Technology Center 3600
Before THU A. DANG, ELENI MANTIS MERCADER, and CATHERINE
SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 5—9, 11—15, and 17—22, which are all the
claims pending and rejected in the application. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
scheduling air travel. See generally Spec. 1. Claim 1 is exemplary:
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Application 13/026,890
1. A system to facilitate group travel on non-commercial aircraft,
comprising:
an aircraft operator-accessible database on an electronic
medium having a listing of registered, independent, and non­
commercial aircraft;
the aircraft operator-accessible database further having a
registry of non-commercial aircraft operators available to claim
a group of travelers for an identified trip segment, the aircraft
operator-accessible database including information to confirm
an itinerary and commit an aircraft for the group of travelers,
the aircraft operator-accessible database including information
on number of people in the group that reveals an amount of
operator revenue for a flight on the aircraft;
a grouping service including at least one computer
interface and at least one computer having access to the aircraft
operator-accessible database via a computer network, the at
least one computer interface of the grouping service being
configured to:
permit formation of the group to travel prior to
confirmation of an itinerary and assignment of a plane for the
group of travelers,
present the group of travelers prior to closure of the
group for review to a plurality of aircraft operators prior to the
confirmation of an itinerary and the assignment of a plane for
the group of travelers,
close the group of travelers and confirm the itinerary
prior to commitment of the aircraft operator and assignment of
the aircraft,
permit at least one aircraft operator, of the operators
available, to accept the closed group of travelers and to close
the group of travelers, prior to the confirmation of an itinerary
and the assignment of a plane for the group of travelers by the
aircraft operator, when a number of travelers is below the
predetermined minimum number of travelers,
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confirm the itinerary for the closed group of travelers and
assign the aircraft for the closed group of travelers,
transmit the closed group of travelers to the aircraft
operator in response to closure of the group of travelers; and
transmit closure of the group of travelers, the
confirmation of the itinerary and the assignment of the plane for
the group of travelers by the aircraft operator to the closed
group of travelers.
References and Rejections
Claims 1, 2, 5—9, 11—15, and 17—22 are rejected under 35 U.S.C. §101
because the claimed invention is directed to patent ineligible subject matter.
Claims 1, 2, 5—9, 11—15, and 17—22 are rejected under 35 U.S.C.
§112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter that the applicant regards as the
invention.
Claims 1, 2, 5, 6, 8, 9, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Becker (US 2004/0267580 Al; pub. Dec. 30, 2004),
Azzarello (US 2006/0020496; pub. Jan. 26, 2006), Schoeman (US
2009/0119135 Al; pub. May 7, 2009), and Block (US 2003/0055689 Al;
pub. Mar. 20, 2003).
Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Becker, Azzarello, Schoeman, Block, and Eagle (US 2009/0198624
Al; pub. Aug. 6, 2009).
Claims 11—13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Becker, Azzarello, Schoeman, Block, and Cornwell (US
2002/0013718; pub. Jan. 31, 2002).
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Application 13/026,890
Claims 14, 15, 20, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Becker, Schoeman, and Block.
Claims 17—19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Becker, Schoeman, Block, and Cornwell.
ANALYSIS
35 U.S.C. §101
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.1
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent ineligible subject matter. See Final Act. 2-4; Ans. 3^4.
In particular, the Examiner finds the claims are directed to the abstract idea
of matching a group of travelers to an aircraft operator, which is a method of
organizing human activities. See Final Act. 2-4; Ans. 3—A. The Examiner
further finds the claims use generic computer components to perform
generic computer functions. See Final Act. 2-4. Appellants argue the
Examiner erred. See App. Br. 11—15; Reply Br. 2-4.
Appellants have not persuaded us of error. Section 101 of the Patent
Act provides “[wjhoever 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. That provision “contains
1 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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Application 13/026,890
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Banklnt’l,
134 S. Ct. 2347, 2354 (2014). According to the Supreme Court:
[W]e 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. . . . We have
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., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has “treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
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790 F.3d at 1348-49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Natl Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014). “In a
similar vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Elec.
Power, 830 F.3d at 1354 (emphasis added); see also In re TLI Commc ’ns.
LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). “And we have
recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis.” Elec. Power, 830 F.3d at 1354 (emphasis added);
see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714—15 (Fed.
Cir. 2014).
The rejected claims “fall into a familiar class of claims ‘directed to’ a
patent-ineligible concept.” Elec. Power, 830 F.3d at 1353. Contrary to
Appellants’ arguments (App. Br. 11—15; Reply Br. 2—4), the claims are
similar to the claims of Electric Power, and are focused on the combination
of abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354.
For example, claim 1 is directed to collecting (including storing)
information, analyzing information, and presenting the results of abstract
processes of collecting and analyzing information.2 Claim 14 is similarly
2 Specifically, claim 1 (and similarly, claim 14) is directed to collecting
(including storing) information (“an . . . database . . . having . . .; the . . .
database further having . . . the . . . database including information . . ., the .
. . database including information . . . transmit the closed group of travelers .
. . ; and transmit closure . . . the confirmation . . . and the assignment. . .”),
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directed to collecting (including storing) information, analyzing information,
and presenting the results of abstract processes of collecting and analyzing
information. The dependent claims are directed to similar functions or
processes, and Appellants have not shown such claims are directed to other
non-abstract functions or processes. See claims 2, 5—9, 11—13, 15, and 17—
22.
Further, it is well established that during examination, claims are
given their broadest reasonable interpretation consistent with the
specification and should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art, but without importing
limitations from the specification. See In re Am. Acad, of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted); SuperGuide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Therefore, we
decline to import exemplary limitations (such as Figure 20) from the
Specification into the claims.3 As a result, Appellants advance many
arguments that are not commensurate with the scope of the claim. See, e.g.,
and analyzing information and presenting the results of abstract processes of
collecting and analyzing information (“permit formation of the group to
travel prior to confirmation . . . and assignment. . . present the group of
travelers prior to closure of the group for review . . . prior to the
confirmation . . . and the assignment. . . , close the group of travelers and
confirm the itinerary prior to commitment. . . and assignment. . . , permit at
least one aircraft operator ... to accept the closed group of travelers and to
close the group of travelers, prior to the confirmation of an itinerary and the
assignment. . . when a number of travelers is below the predetermined
minimum number of travelers, confirm the itinerary . . . and assign the
aircraft . . . .”).
3 Appellants’ assertion about how one skilled in the art understands the term
“computer interface” (Reply Br. 2) is unsupported by evidence and
unpersuasive.
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App. Br. 12—15 (discussing elements, such as a graphical input and graphic-
based interface, which are not recited in claims 1 or 14).4 Appellants
contend such a “graphic-based interface” is unlike other cited prior art (App.
Br. 14—15), but have not shown the claims require such an element or how
the obviousness issue—a separate statutory requirement—renders the claims
patent eligible. Appellants also argue the claims recite “configured to” and
reach “well beyond merely describing an intended or optional use” (App. Br.
13), but do not persuasively show why such arguments render the claims
patent eligible.
In addition, Appellants’ assertion regarding pre-emption (App. Br.
13—14) is unpersuasive, because “[w]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility .... Where a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015); see also OIP, 788 F.3d at 1362—63 (“that the claims do not
preempt all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract”); Ans. 3-4.
Regarding Alice step two, contrary to Appellants’ assertion (App.
Br. 11—15; Reply Br. 2-4), Appellants have not shown the claims in this
case require an arguably inventive set of components or methods, or invoke
any assertedly inventive programming. See Elec. Power, 830 F.3d at 1355.
4 In any event, Appellants have not persuasively shown how a graphical
input or graphic-based interface, which is a conventional computer
component, makes the claims patent eligible.
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Application 13/026,890
Contrary to Appellants’ arguments (App. Br. 11—15; Reply Br. 2-4),
the claims are similar to the claims of Electric Power, because they do not
require any nonconventional computer, network, or display components, or
even a “non-conventional and non-generic arrangement of known,
conventional pieces,” but merely call for performance of the claimed
information collection, analysis, and presentation functions on generic
computer components and display devices. See Elec. Power, 830 F.3d at
1355.5 The claimed aircraft operator-accessible database is a database that
is accessible to aircraft operators and the claimed “computer interface . . .
computer . . . computer network” are generic computer components, and
Appellants have not shown any of them is non-conventional. The dependent
claims call for similar generic components and devices, and Appellants have
not shown such claims require any non-conventional components or devices.
See claims 2, 5—9, 11—13, 15, and 17—22.
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer, network,
and display technology for collecting (including storing), analyzing, and
presenting the desired information. See Elec. Power, 830 F.3d at 1354.
Such invocations of computers and networks are “insufficient to pass the test
of an inventive concept in the application” of an abstract idea. See Elec.
Power, 830 F.3d at 1355.
5 See also claim 1 (reciting “an aircraft operator-accessible database . . .
having a listing of. . . further having . . . including information . . . including
information ... a grouping service including at least one computer interface
and at least one computer having access to the aircraft operator-accessible
database via a computer network, the at least one computer interface . . .
being configured to .. . .”) (emphases added). Claim 14 recites similar
conventional computer and networking components.
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Finally, contrary to Appellants’ assertion (Reply Br. 2—3), the rejected
claims are unlike the claims in Enfish. In Enfish, the court finds:
The . . . patents are directed to an innovative logical model for a
computer database. ... A logical model generally results in the
creation of particular tables of data, but it does not describe how
the bits and bytes of those tables are arranged in physical
memory devices. Contrary to conventional logical models, the
patented logical model includes all data entities in a single
table, with column definitions provided by rows in that same
table. The patents describe this as the “self-referential”
property of the database.
Enfish, 822 F.3d at 1330.
[T]he plain focus of the claims is on an improvement to
computer functionality itself, not on economic or other tasks for
which a computer is used in its ordinary capacity.
[T]he claims ... are directed to a specific improvement to the
way computers operate, embodied in the self-referential table.
Enfish, 822 F.3d at 1336.
The rejected claims are unlike the claims of Enfish because they are
not “an improvement to computer functionality itself.” Enfish, 822 F.3d at
1336. Instead, they are similar to the claims of Electric Power, because “the
focus of the claims is not on such an improvement in computers as tools, but
on certain independently abstract ideas that use computers as tools.” Elec.
Power, 830 F.3d at 1354.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claims 1, 2, 5—9, 11—15, and 17—22.
35 U.S.C. § 112, Second paragraph
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Claims must “particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention.” 35 U.S.C. § 112,
second paragraph.
Because Appellants do not contest the merits of the Examiner’s
rejection, we summarily affirm the Examiner’s rejection of claims 1,
2, 5—9, 11—15, and 17—22 under 35 U.S.C. § 112, second paragraph.
35 U.S.C. § 103
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in finding the cited portions of Becker
teach “permit formation of the group to travel prior to confirmation of an
itinerary and assignment of a plane for the group of travelers,” as recited in
independent claim 1 (emphasis added).6 See App. Br. 16—19; Reply Br. 4—5.
With respect to the claim element “prior to,” the Examiner finds:
The claim recites a number of temporal requirements that
certain functions occur “prior to” others. Even in a situation
where a reference does not explicitly disclose the timing of a
claimed function, the selection of any order of performing
process steps is prima facie obvious in the absence of new or
unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330
(CCPA 1946). In the case of the claimed invention, any
changes in the travel booking sequence would only yield
expected results (e.g., a committed flight segment without a
specifically assigned aircraft).
6 Appellants raise additional arguments with respect to the obviousness
rejections. Because the identified issue is dispositive of the appeal with
respect to the obviousness rejections, we do not reach the additional
arguments.
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Final Act. 7. The Examiner further cites Becker’s paragraphs 51, 60,
65, and 68 for teaching the disputed claim limitation. See Final Act.
5; Ans. 5.
We disagree. The Examiner’s above assertion incorrectly ignores the
express claim element “prior to” in the disputed limitation. Contrary to the
Examiner’s assertion, Burhans ’ holding about “the order of performing the
steps” in a method claim is inapplicable here, as the disputed limitation
expressly requires the “prior to” limitation. In re Burhans, 154 F.2d 690,
692 (C.C.P.A. 1946). Further, we have reviewed the cited Becker portions,
and they do not teach “permit formation of the group to travel prior to
confirmation of an itinerary and assignment of a plane for the group of
travelers,” as required by the claim (emphasis added). Absent further
explanation from the Examiner, we do not see how the cited Becker portions
teach the disputed claim limitation.
As applied by the Examiner, the teachings of Azzarello, Schoeman,
and Block do not remedy the deficiencies of Hoover. See Final Act. 6—7.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 1.
Independent claim 14 recites a claim limitation that is substantively
similar to the disputed limitation of claim 1. See claim 14. Therefore, for
similar reasons, we reverse the Examiner’s rejection of independent claim
14.
We also reverse the Examiner’s rejection of corresponding dependent
claims 2, 5—9, 11—13, 15, and 17—22. The Examiner cites additional
references for rejecting some dependent claims, but has not shown the
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additional references overcome the deficiency discussed above regarding the
rejection of claim 1. See Final Act. 8—13.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 5—9, 11—15,
and 17—22.
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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