Ex Parte Slutsker et al

Patent Trial and Appeal Board

Dec 21, 2018

13140248 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/140,248 12/30/2011
490 7590 12/26/2018
VIDAS, ARRETT & STEINKRAUS, P.A.
Richard A. Arrett
8050 Washington Ave. S.
SUITE 100
Eden Prairie, MN 55344
FIRST NAMED INVENTOR
Ilya Slutsker
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.
Ol 7.21-14276-US02 6691
EXAMINER
GOTTSCHALK, MARTIN A
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
mail@vaslaw.com
rleaf@vaslaw.com
rarrett@vaslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IL YA SLUTSKER, YULIUS NICOLAUS, SCOTT ARCAND,
SASAN MOKHTARI, and BEHNAM DANAI
Appeal2017-008722
Application 13/140,248
Technology Center 3600
Before CAROLYN D. THOMAS, ADAM J. PYONIN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-17, the only claims pending in the
application on appeal. App. Br. 3. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Open Access
Technology, Inc. App. Br. 3.
Appeal2017-008722
Application 13/140,248
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention generally relates to "energy trading between
Regional Transmission Organizations (RTO), and in particular to software
that simplifies procurement of energy in one R TO market and its resale in
another [R TO market]." Spec. 1: 14--16. Claim 1, which is illustrative, reads
as follows:
1. A computer program product for use with a computer
having a graphics display device, the computer running the
computer program product, the computer program product
compnsmg:
a computer usable non-transitory medium having
computer readable program code embodied in the medium and
running in the computer for automating energy trading in which
energy in a first regional transmission organization (RTO) is
traded for energy in a second RTO, the computer program
product comprising:
computer readable program code running in the computer
to allow a processor of the computer to perform the step for
creating a template for an energy trade between the first R TO and
the second RTO, wherein the template comprises a plurality of
trade components, the plurality of trade components being
arranged in sequential order according to the first R TO and the
second R TO' s required order of execution, which eliminates the
need for a user to take action to schedule a trade, but allows an
automated trade;
computer readable program code running in the computer
to allow the processor of the computer to perform the step for
selecting a template for an energy trade between two R TOs;
computer readable program code running in the computer
to allow the processor of the computer to perform the step for
displaying a summary of a trade; and
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computer readable program code running in the computer
to allow the processor of the computer to perform the step for
monitoring and displaying a trade's status.
References
The Examiner relies on the following prior art in rejecting the claims:
Gilbert et al. ("Gilbert") US 2005/0027636 Al
Gooch et al. ("Gooch") US 2005/0149428 Al
Feb.3,2005
July 7, 2005
Brendan Ring, Larry Ruff, and Usman Hannan, Regional Electricity
Trading: Opportunities and Challenges for Ontario, Market Reform
(2008) ("Ring").
Rejections
Claims 1-17 stand rejected under 35 U.S.C. § 101 because the
claimed subject matter is judicially excepted from patent eligibility under
§ 101. Final Act. 2--4.
Claims 1-17 stand rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement. Final Act. 5---6.
Claims 1-17 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. Final Act. 6-7.
Claims 1-17 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Ring, Gilbert, and Gooch. Final
Act. 8-16.
ANALYSIS
Re} ection under 3 5 US. C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
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and useful improvement thereof." The Supreme Court has "long 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 Int 'l, 573 U.S. 208, 216 (2014) ( quoting Ass 'n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (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, 573 U.S. at 217. The first
step in that analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts," such as an abstract idea. Id. The
inquiry often is whether the claims are directed to "a specific means or
method" for improving technology or whether they are simply directed to an
abstract end-result. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1314 (Fed. Cir. 2016). If the claims are not directed to a patent-
ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the
second step, where the elements of the claims are considered "individually
and 'as an ordered combination' to determine whether the additional
elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78-79).
We, therefore, look to whether the claims focus on a specific means or
method that improves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
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The Examiner determines the claims are directed to "creating a
template for an energy trade." Final Act. 2. Creating a template for an
energy trade, according to the Examiner, is a fundamental economic practice
and a method of organizing human activities and, therefore, the claims are
directed to an abstract idea. Final Act. 2-3.
Appellants argue the claims "do not claim a mere abstract idea, but
require concrete steps and actions." App. Br. 6. Appellants argue claim 1,
for example, "requires 'the step for creating a template for an energy trade'
which is a concrete action and not a mere abstract idea." App. Br. 6.
Appellants further argue claim 1 is not directed to an abstract idea but,
instead, is directed to "a method of selecting criteria which mitigates user
error and determines locations." App. Br. 6.
Claim 1 is directed to the automation of energy trading between
regional transmission organizations. See Spec. Title, 1: 14--16. As
acknowledged by Appellants, "energy trading between R TO territories
existed prior to the filing of the present disclosure." App. Br. 16. We agree
with the Examiner (Final Act. 2-3) that energy trading between regional
transmission organizations is a fundamental economic practice and,
therefore, that claim 1 is directed to an abstract idea. See Ring 3 8 ("Even
before modem electricity markets developed, system operators would allow
trades to be scheduled with other regions either as imports to their system,
exports from their system, or 'wheeling' trades across their system.").
The Examiner determines the claims fail to recite significantly more
than the abstract idea because:
The additional elements or combination of elements in the claims
("automating," "selecting," "displaying," "monitoring,") other
than the abstract idea per se amounts to no more than: (i) mere
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instructions to implement the idea 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.
Final Act. 3. Appellants fail to present any arguments or evidence
persuasive to show that claim 1 recites significantly more than the abstract
idea. See App. Br. 6. Accordingly, we are not persuaded the Examiner
erred in determining claim 1 is directed to patent-ineligible subject matter
under 35 U.S.C. § 101.
Regarding claims 2-17, Appellants discuss the purpose and benefits
of the limitations recited in each of these claims. See App. Br. 6-13.
However, Appellants fail to explain how these purposes and benefits cause
the claims to be directed to something other than the abstract idea of energy
trading between regional transmission organizations or cause the claims to
recite significantly more than the abstract idea. As such, Appellants'
arguments fail to show that the Examiner erred in determining that claims 2-
17 are directed to patent-ineligible subject matter under 35 U.S.C. § 101.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claims 1-17 under 35 U.S.C. § 101.
Rejections under 35 USC§ 112
Regarding the rejection under 35 U.S.C. § 112, first paragraph, the
Examiner finds Appellants' Specification does not provide the required
written description support for automating energy trading "which energy in a
first regional transmission organization (RTO) is traded for energy in a
second RTO," as recited in claim 1, and "which eliminates the need for a
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user to take action to schedule a trade, but allows an automated trade," as
also recited in claim 1 and similarly recited in claim 16. Final Act. 5---6.
Regarding the rejection under 35 U.S.C. § 112, second paragraph, the
Examiner finds the limitation "which eliminates the need for a user to take
action to schedule a trade, but allows an automated trade," as recited in
claim 1, and similarly recited in claim 16, is indefinite because "[i]t is not
clear how the arrangement of the trade components leads to elimination of
the need for a user to take action to schedule a trade, 'but' allows an
automated trade" and that "[ t ]here appear[ s] to be essential missing steps."
Final Act. 7.
In the Appeal Brief, Appellants do not argue the rejections under
35 U.S.C. § 112, first and second paragraphs, separately; but instead, rely on
the same arguments for both rejections. See App. Br. 14. In particular,
Appellants argue:
[ A Jpplicant has previously amended claim 1 and claim 16 to
clarify that the energy in a first regional transmission
organization is traded for energy in a second R TO. The energy
trading to be automated is determined by the encrypted machine
intelligence which evaluates market conditions, decides which
steps need to be performed, the order in which said steps must be
performed, and constructing the data for those steps. In this
manner, the invention selects the templates that will be utilized
for facilitating user actions/communications between the two
R TOs based on certain external, trade-based criteria specific to
the inventive method in question, wherein the inventive method
operates to choose applicable templates for such use.
App. Br. 14. Regarding the rejection under 35 U.S.C. § 112, first paragraph,
Appellants' arguments fail to show where the Specification provides the
required written description support for automating energy trading "which
energy in a first regional transmission organization (RTO) is traded for
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energy in a second RTO," as recited in claim 1, and "which eliminates the
need for a user to take action to schedule a trade, but allows an automated
trade," as also recited in claim 1 and similarly recited in claim 16.
Appellants' arguments, therefore, are unpersuasive to show the Examiner
erred in rejecting the claims under 35 U.S.C. § 112, first paragraph.
With respect to the rejection under 35 U.S.C. § 112, second
paragraph, Appellants' arguments fail to explain how selecting the templates
that will be utilized for facilitating user actions/communications between the
two R TOs based on certain external, trade-based criteria eliminates the need
for a user to take action to schedule a trade and/ or allows for an automated
trade, as required by claims 1 and 16. Appellants' arguments, therefore, are
unpersuasive to show the Examiner erred in rejecting the claims under
35 U.S.C. § 112, second paragraph.
Rejection under 35 USC§ 103(a)
Appellants contend the combination of Ring, Gilbert, and Gooch fails
to teach or suggest "a computer usable non-transitory medium having
computer readable program code embodied in the medium and running in
the computer for automating energy trading in which energy in a first
regional transmission organization (RTO) is traded for energy in a second
RTO," as recited in claim 1. App. Br. 15. Appellants argue the cited
references fail to teach or suggest the disputed limitation because the
references do not teach or suggest "a system for automating," as required by
claim 1. App. Br. 15. In particular, Appellants argue:
Ring speaks only of the desirability of such a system. Ring says
"In an idealized market ... match those trades and take care of
all the transmission considerations automatically" (Ring, pg. 38,
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,r 5), and then that such a system does not exist "Now let us
consider the reality of a trade" (Ring, pg. 38, ,r 6), "it is not
possible to have the transaction scheduled simultaneously in all
those markets (Ring, pg. 3 8, ,r 7).
Further, Ring's discussion on the remainder of page 38
suggests that such a trading system is not possible because
electricity flows in an uncontrolled manner through the grid, and
may flow in to other markets. Thus, automatically matching
trades is not possible because the traded electricity may not flow
properly from buyer to seller.
The problems associated with Ring's system do not apply
to Applicant's automated system, as claimed, which is designed
not to address the uncontrollability of electricity, but to eliminate
the necessity of user action from scheduling trades. Ring also
does not explain how such a system could be implemented.
Thus, without further enabling art, Ring page 3 8 cannot be used
to show that the implementation of such a system was obvious at
the time of filing.
App. Br. 15. Appellants argue "Gilbert describes a market system, the one
where many buyers and sellers participate in trading merchandise" and "the
system described in Gilbert has no automation." App. Br. 17. Appellants
further argue the Examiner has not "provided analysis of either the proposed
prior-art disclosure" nor "an explanation of the relationship between the
two." App. Br. 17.
As articulated by the Federal Circuit, the Examiner's burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) ("preponderance of the
evidence is the standard that must be met by the PTO in making rejections").
"A rejection based on section 103 clearly must rest on a factual basis[.]" In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not ...
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resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis." Id.
We conclude the Examiner's analysis fails to meet this standard
because the rejections do not adequately explain the Examiner's findings of
fact. Particularly, the findings that the prior art discloses the argued "energy
in a first regional transmission organization (RTO) is traded for energy in a
second R TO" of claim 1, based upon the prior art disclosures of Ring,
Gilbert, and Gooch.
While we agree with the Examiner that Ring "recognizes the
advantages of promoting electricity trading between regions, such as R TOs"
and "Gilbert teaches a computerized system for affecting energy trades"
(Final Act. 9), the record before us does not support the Examiner's analysis:
it would have been obvious to one of ordinary skill in the art at
the time of Applicant's invention to modify the method of trading
between RTOs of Ring (Ring section 4.2, "PIM") with the
teachings of Gilbert who provides specific details of an
automated energy trading system, and notes the broader
application of his system to other trading areas such as
transmission and distribution (Gilbert: [00631-[0063]), as would
be useful to RTOs (i.e. "Regional Transmission Organizations").
This would have been an example of applying a known technique
(Gilbert) to a known method (Ring) ready for improvement to
yield the predictable result of enabling the trading of electricity
between regions, such as those governed by different R TOs.
Final Act. 9--10.
Ring teaches that the planning and scheduling process of energy
trading "does not happen in real-time, but is a culmination of a planning
process that commences a long time prior to real-time." Ring 37. Ring
describes "the reality of a trade from the mid-west to New York City" and
teaches that the transaction "must be scheduled in four different markets, all
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of which have subtle differences in their scheduling processes." Ring 38.
Ring further teaches "[i]t is not possible to have the transaction scheduled
simultaneously in all those markets" and "[ e ]ven once the transaction is
scheduled, real-time events can mean that the scheduled transaction might be
cancelled by one or more system operators, effecting the entire transaction."
Ring 38-39.
The Examiner's findings fail to explain why or how the system of
Gilbert could be applied to implement Ring's method of energy trading in
light of the complexities and problems associated with energy trading
between R TOs identified and described by Ring. We conclude, consistent
with Appellants' arguments, there is insufficient articulated reasoning to
support the Examiner's findings. Therefore, we conclude that there is
insufficient articulated reasoning to support the Examiner's final conclusion
that claim 1 would have been obvious to one of ordinary skill in the art at the
time of Appellants' invention.
Accordingly, we do not sustain the Examiner's rejection under
35 U.S.C. § 103(a) of claim 1; independent claim 16, which recites
corresponding limitations; and claims 2-15 and 17, which depend from
claim 1.
Because we find the issue discussed above to be dispositive as to the
rejection under 35 U.S.C. § 103(a) of all the pending claims, we do not reach
Appellants' additional allegations of error.
DECISION
We affirm the Examiner's rejection of claims 1-17 under 35 U.S.C.
§ 101.
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We affirm the Examiner's rejection of claims 1-17 under 35 U.S.C.
§ 112, first paragraph.
We affirm the Examiner's rejection of claims 1-17 under 35 U.S.C.
§ 112, second paragraph.
We reverse the Examiner's rejections of claims 1-17 under 35 U.S.C.
§ 103(a).
Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner 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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