Ex Parte Sundstrom

Patent Trial and Appeal Board

Apr 5, 2017

14026622 (P.T.A.B. Apr. 5, 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.
14/026,622 09/13/2013 Robert J. Sundstrom I444C3/US 7012
52354 7590 04/07/2017
SCENERA RESEARCH, LLC
155 Fleet Street
Portsmouth, NH 03801
EXAMINER
COUPE, ANITA YVONNE
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
04/07/2017 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):
uspto.correspondence@sceneralabs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. SUNDSTROM
Appeal 2015-0021501
Application 14/026,6222
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
August 28, 2014) and Reply Brief (“Reply Br.,” filed December 1, 2014),
and the Examiner’s Second Answer (“Ans.,” mailed October 27, 2014) and
Final Office Action (“Final Act.,” mailed March 24, 2014).
2 Appellant identifies Scenera Technologies, LLC as the real party in
interest. App. Br. 3.
Appeal 2015-002150
Application 14/026,622
CLAIMED INVENTION
Appellant’s claimed invention “relates to coverage monitoring” and,
more particularly, “to methods, systems, and computer program products for
calendar-based coverage monitoring” (Spec. 12).
Claims 1, 13,21, and 22 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for calendar-based coverage monitoring,
the method comprising:
receiving a coverage rule defining at least one covering
entity for performing an activity for a covered entity and at least
one period of time during which the at least one covering entity
is to perform the activity;
monitoring individual calendars for the at least one
covering entity and detecting a change in at least one of the
calendars;
determining whether the change causes at least one of the
coverage rule to be violated and a threshold criteria to be met;
and
in response to determining that the change causes the at
least one of coverage rule to be violated and the threshold criteria
to be met, automatically performing an action,
wherein at least one of the preceding actions is performed
on at least one electronic hardware component.
REJECTIONS
Claims 1—22 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—22 are rejected under 35 U.S.C. § 102(b) as anticipated by
Garcia et al. (US 2006/0074740 Al, pub. Apr. 6, 2006, hereinafter
“Garcia”).
2
Appeal 2015-002150
Application 14/026,622
ANALYSIS
Non-Statutory Subject Matter
Appellant argues claims 1—22 as a group (Reply Br. 4—9). We select
claim 1 as representative. The remaining claims stand or fall with claim 1.
See 37 C.F.R. §41.37(c)(l)(iv).
Under 35U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of these concepts.” Alice Corp.,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts,”
id., e.g., to an abstract idea. 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 there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct.
at 1297).
3
Appeal 2015-002150
Application 14/026,622
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. 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).
Turning to the framework set forth in Alice, and as the first step of
that analysis, we agree with the Examiner that claims 1—22 are directed to
human resource management, i.e., a method of organizing human activity,
and, therefore, to an abstract idea (Ans. 7). Claim 1, for example, recites a
method comprising, inter alia, (1) receiving a coverage rule defining at least
one covering entity for performing an activity and at least one period of time
during which the activity is to be performed; (2) determining whether a
change in at least one of the calendars for the at least one covering entity
causes at least one of the coverage rule to be violated and a threshold criteria
to be met; and (3) in response to determining that the change causes the at
least one of the coverage rule to be violated and the threshold criteria to be
met, automatically performing an action. Claim 1 recites that “at least one
of the preceding actions is performed on at least one electronic hardware
component.” Yet the steps, at best, involve no more than abstract concepts
that could be performed in the human mind, or by a human using a pen and
paper, without the need of any computer or other machine. “A method that
can be performed by human thought alone is merely an abstract idea and is
not patent-eligible under § 101.” CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372—73 (Fed. Cir. 2011); see also Gottschalkv.
4
Appeal 2015-002150
Application 14/026,622
Benson, 409 U.S. 63, 67 (1972) (“[phenomena of nature . . ., mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work.”). Moreover, mental
processes remain unpatentable even when automated to reduce the burden
on the user of what once could have been done with pen and paper.
CyberSource, 654 F.3d at 1375 (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson”).
Referencing the Supreme Court decision in Alice, Appellant argues
that although the Alice Court did not provide a definition of “abstract idea,”
the Court’s statements in Alice “strongly suggests or implies [sic] that it
intended to limit the concept of ‘abstract ideas’ to concepts which are
fundamental and long prevalent, such as concepts which have been well-
known and extensively used for hundreds of years — like the hedging of
Bilski and the intermediated settlement of Alice’'’ (Reply Br. 6—7). Pointing
to the method steps recited in claim 1, Appellant, thus, maintains that the
pending claims “do not embody ‘abstract ideas’ as outlined by Alice”
because these operations “neither embody nor are analogous to fundamental
economic practices (e.g., intermediated settlement), methods of organizing
human activities (e.g., steps to hedge risk), ‘an idea in itself (e.g., principle,
an original cause, a motive), or a mathematic relationship/formula” {id. at 7).
Yet Appellant does not explain why, and we fail to see why, claim 1, which
involves coordinating and monitoring the individual calendars of covering
entities, i.e., individuals available to provide coverage for an activity, cannot
be properly characterized as being directed to a method of organizing human
activity.
5
Appeal 2015-002150
Application 14/026,622
Moreover, Appellant cannot reasonably deny that the claimed method,
as recited in claim 1, can be performed manually or mentally, without the
use of a computer or any other machine. Indeed, it is telling that claim 1
only requires that “at least one of the preceding actions is performed on at
least one electronic hardware component,” without any indication of which
action is performed on the hardware component.
Turning to the second step of the Alice analysis, we are not persuaded
of Examiner error by Appellant’s argument that “the elements of Applicants’
claims . . . recite ‘significantly more’ than the abstract idea of human
resource management” (Reply Br. 7). Appellant notes that claim 1 recites
“monitoring individual calendars for the at least one covering
entity and detecting a change in one of the calendars” and
“receiving a coverage rule defining at least one covering entity
for performing an activity for a covered entity and at least one
period of time during which the at least one covering entity is to
perform the activity,”
and Appellant ostensibly argues that these limitations add “significantly
more” than the abstract idea of human resource management (id.). Yet,
receiving a coverage rule that defines a covering entity for performing an
activity, and monitoring individual calendars for the covering entity to
ensure the entity’s continued availability to perform the activity are merely
part of the abstract idea itself. The only claim element beyond the abstract
idea of human resource management is the “at least one electronic hardware
component” on which “at least one of the preceding actions is performed.”
And, that element adds nothing that is not already present when the steps of
the method are considered separately.
Finally, we are not persuaded by Appellant’s argument that the claims
“embody ‘improvements to a technical field’” (id. at 8). The only portion of
6
Appeal 2015-002150
Application 14/026,622
the claimed method that could be considered “technological” is the use of
generic computer hardware, i.e., the claimed “at least one electronic
hardware component” on which “at least one of the preceding actions is
performed,” which is not enough to confer subject matter eligibility.
See Alice Corp., 134 S. Ct. at 2358 (“[I]f a patent’s recitation of a computer
amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a
computer,’ that addition cannot impart patent eligibility.”). To the extent
that claim 1 represents an improvement in the abstract idea of human
resource management, we are not persuaded that the improvement is to any
technology as opposed to an improvement to a general business practice.
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2—22, which fall with
claim 1.
Anticipation
Appellant argues independent claims 1, 13, 21, and 22 as a group
(App. Br. 11—20). We select claim 1 as representative. The remaining
claims stand or fall with claim 1. See 37 C.F.R. §41.37(c)(l)(iv).
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 102(b) because
Garcia does not disclose “receiving a coverage rule defining at least one
covering entity for performing an activity for a covered entity and at least
one period of time during which the at least one covering entity is to perform
the activity,” as recited in claim 1 (App. Br. 11—15). Instead, we agree with
the Examiner that Garcia discloses rules regarding the level of care patients
7
Appeal 2015-002150
Application 14/026,622
need and the skill level of employees and, thus, discloses a coverage rule, as
called for in claim 1 (Final Act. 3; see also Ans. 8).
Garcia is directed to a medical facility employee scheduling method;
in accordance with the method, an acuity level is assigned to each facility in­
patient, and is used by an employee scheduling program to calculate the
number of employees that are required to provide care to the patients
(Garcia, Abstract). A profile also is compiled for each employee specifying
that person’s patient care capability; the calculated number of employees
and the employee profiles are then used to schedule employees during the
work shifts at the medical facility (id.). Garcia discloses that the actual
amount of time that each employee has worked and the amount of time the
employee is scheduled to work in the future are used to project whether the
employee will work overtime; if so, a supervisor is alerted to the projected
overtime and may reschedule employees to avoid incurring overtime
expenses (id.).
Appellant argues that Garcia’s rules regarding the level of care
patients need and the skill level of employees do not constitute “a coverage
rule,” as recited in claim 1, because the rule “at most only specifies the skills
that are required for a particular job and activities that may have to be
performed” and “does not specify at least one period of time during which
the at least one covering entity is to perform the activity” (App. Br. 14).
However, we agree with the Examiner that the Garcia scheduling program is
used to provide coverage for at least one covered entity (i.e., a patient) by at
least one covering entity (i.e., a hospital employee) during a shift, which is
“at least one period of time during which the at least one covering entity is to
8
Appeal 2015-002150
Application 14/026,622
perform the activity” (Ans. 8 (citing Garcia Tflf 34—37; Fig. 3 (element 49);
Fig. 6 (element 85)).
Appellant next argues that the rejection of claim 1 should be reversed
because Garcia does not disclose “determining whether the change causes at
least one of the coverage rule to be violated and a threshold criteria to be
met” (App. Br. 15—19). Appellant’s argument is not persuasive because it is
not responsive to the Examiner’s interpretation of Garcia, as set forth in the
Answer.
Addressing Appellant’s arguments in the Answer, the Examiner
observes that the “determining” step is drafted in the alternative; therefore,
the change need only cause “at least one” of the coverage rule to be violated
and the threshold criteria to be met (Ans. 8). The Examiner posits that the
scheduling system in Garcia monitors both the previously created coverage
schedule and employees’ actual work time (via identification badge swipes,
i.e., employees swipe the identification badge upon entering and leaving the
hospital) and reasons that if an employee badge swipe creates a new actual
time record, e.g., an unscheduled work period which the employee
performed, the scheduling system notes the schedule change, and checks if
the increased hours cause the overtime threshold, i.e., the number of
allowable overtime hours, to be met (id.). Appellant does not address this
line of reasoning in either their Appeal Brief or in the Reply Brief.
We are not persuaded on the present record that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 102(b). Therefore, we sustain the
Examiner’s rejection of independent claim 1, and independent claims 13,21,
and 22, which fall with claim 1. We also sustain the Examiner’s rejection
9
Appeal 2015-002150
Application 14/026,622
under 35 U.S.C. § 102(b) of dependent claims 2—12 and 14—20, which are
not argued separately.
DECISION
The Examiner’s rejection of claims 1—22 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1—22 under 35 U.S.C. § 102(b) 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
10