Ex Parte WEISS

Patent Trial and Appeal Board

Jun 29, 2018

13648162 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/648,162 10/09/2012
26582 7590 07/03/2018
HOLLAND & HART, LLP
222 South Main Street, Suite 2200
P.O. Box 11583
SALT LAKE CITY, UT 84147
FIRST NAMED INVENTOR
Soenke WEISS
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.
87432.0002 3092
EXAMINER
JOSEPH, TONY A S
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
patentdocket@hollandhart.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SOENKE WEISS
Appeal2017-002386
Application 13/648, 162
Technology Center 3600
Before THU A. DANG, ELENI MANTIS MERCADER, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-002386
Application 13/648, 162
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 7, 8, 15-17, 25, 29, 32, 38--45, and 47-55.
App. Br. 2. 2 Claims 2-6, 9-14, 18-24, 26-28, 30, 31, 33-37, and 46 were
canceled. 3 We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse and designate a new ground of rejection for claim 1.
THE INVENTION
Appellant's invention is a method for managing room cleaning at a
hotel or other accommodation facility. Spec. 1:5-7. The method considers
the time required to clean a large number of rooms with different occupants.
Id.
Claim 1 is reproduced below:
1. A method of managing the cleaning of rooms at an
accommodation facility such as a hotel, including:
recording variables related to the occupancy of rooms at
the facility wherein the variables include at least:
a number of adults occupying the room,
1 Appellant identifies the real party in interest as Optii Holdings Pty Ltd,
Holland Park West, Queensland, Australia. App. Br. 1.
2 Throughout this opinion, we refer to the Final Rejection ("Final Act.")
mailed July 2, 2015; the Advisory Action ("Adv. Act.") mailed November
17, 2015; the Appeal Brief ("App. Br.") filed May 19, 2016; the Examiner's
Answer ("Ans.") mailed October 5, 2016; the Reply Brief ("Reply Br.")
filed December 5, 2016; and Supplemental Appeal Brief ("Supp. Br.") filed
April 18, 2017.
3 In the Briefs "STATUS OF THE CLAIMS" section, Appellant explains
that claim 46 is rejected. App. Br. 2. Claim 46, however, was canceled. See
Response filed June 17, 2015. The claim is correctly listed as canceled in
the Brief's Appendix. App. Br. 20;
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Application 13/648, 162
a number of children occupying the room and,
a reason for occupancy of room,
calculating, using a microprocessor, expected cleaning times for
each room in accord with the variables by:
determining a cleaning time interval for the recorded
variables relating to the room using a historical average cleaning
time obtained using data from cleaned rooms that are associated
with similar variables relating to the occupancy of the room, and
adding a time interval for any scheduled periodical
cleaning tasks to the cleaning time interval and,
determining cleaning plans for the facility by scheduling
room cleaning in accord with the expected cleaning times.
THE REJECTION
Claims 1, 7, 8, 15-17, 25, 29, 32, 38--45, and 47-55 stand rejected
under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
Final Act. 4--5.
ANALYSIS
The Supreme Court's two-step framework guides our analysis of
subject-matter eligibility under § 101. See Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2355 (2014). According to step one, "[w]e must first
determine whether the claims at issue are directed to a patent-ineligible
concept," such as an abstract idea. Id. Alice step one "calls upon us to look
at the 'focus of the claimed advance over the prior art' to determine if the
claim's 'character as a whole' is directed to excluded subject matter."
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016).
If the claims are directed to an abstract idea, the claims are analyzed
under step two to determine whether the limitations, when considered both
"individually and 'as an ordered combination,"' contain an "inventive
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concept" sufficient to transform the claimed abstract idea into a patent-
eligible application. Alice at 2355-58.
In identifying the specific claim limitations that are believed to be an
abstract idea, the Examiner only points to the limitation "determining
cleaning plans for a facility." Final Act. 4. The Examiner then finds the
remaining limitations, which include recording variables and determining
intervals, are well-understood, routine, and conventional. Id.
Appellant argues that the Examiner has not provided factual support
that these steps are well-understood or routinely practiced. App. Br. 11;
Supp. Br. 4--5. We agree with Appellant in this regard. Indeed, "[w]hether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination." Berkheimer v. HP Inc.,
881F.3d1360, 1369 (Fed. Cir. 2018). Here, the claim recites (1) recording
specific variables and (2) calculating cleaning times, but the Examiner
provides no evidence to support the finding that these limitations are
conventional. Final Act. 4. Because the Examiner's rejection is deficient in
this regard, we reverse the Examiner's rejection of claim 1.
The remaining claims were rejected under the same rationale.
Final Act. 4--5. Because we do not sustain the Examiner's rejection of claim
1 as being directed to ineligible subject matter, we also do not sustain the
rejection of independent claims 25 and 32, which recite similar limitations,
and dependent claims 7, 8, 15-17, 29, 38--45, and 47-55 for the same
reasons.
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NEW GROUND OF REJECTION FOR CLAIM 1
I
Although the Examiner erred in rejecting claim 1 as discussed above,
we disagree with Appellant that claim 1 is directed to patent-eligible subject
matter. For the reasons discussed below, we enter a new ground of rejection
for claim 1under35 U.S.C. § 101.
Appellant argues that the claims are not directed to an abstract idea.
App. Br. 10-12. According to Appellant, courts have not identified concepts
relating to cleaning-plan determinations as one of the types of patent-
ineligible concepts. Id. at 11 (citing Alice, 134 S. Ct. at 2356). Appellant
further contends that these concepts are not the "basic tools" that implicate
the policy behind the exclusionary principle of generic or fundamental
concepts. App. Br. 11 (citing Alice, 134 S. Ct. at 2354). Appellant argues
that they have presented a solution to a problem, similar to those claims held
patent eligible. Reply Br. 1 (citing TNS Media Research LLC v. TIVO
Research & Analytics, Inc., 223 F. Supp. 3d 168 (S.D.N.Y. 2016)).
Appellant also argues that claim 1 is similar to those in Trading
Technologies International, Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir.
2017) (non-precedential). Supp. Br. 3---6. Specifically, Appellant contends
the claims are directed to using "complex mathematical equations to
optimize a process that had previously been carried out using fixed numbers
without any variables." Id. at 6.
We disagree for the reasons discussed below.
Here, "determining cleaning plans for a facility" is similar to those
concepts described by the Federal Circuit as an idea of itself. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
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2011 ). Specifically, the claim requires that the recited determination need
only be "in accord with the expected cleaning times." Such a determination
could be carried out mentally by considering the calculated time. In
CyberSource, the Federal Circuit explained that, because the claims sought
to patent "'the use of human intelligence in and of itself,' the claims were
drawn to abstract ideas." Id. (quoting In re Comiskey, 554 F.3d 967, 981
(Fed. Cir. 2009)). Similarly, the claimed determination is a step that a
person can go through in their minds, and as such, is an abstract idea. See
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir.
2016) (holding that "analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, [are treated] as
essentially mental processes within the abstract-idea category" (citation
omitted)).
Furthermore, the recited determination in claim 1 is broadly functional
and result-oriented. For example, the claim does not recite how the
determination is made, only that the determination is "in accord" with the
calculations. The Federal Circuit has found that these types of claims are
drawn to an abstract idea because they claim a function, "not a particular
way of performing that function." Affinity Labs, 838 F.3d at 1258. Like
Appellant's claim 1, the court explained that "[t]here is nothing in [the
claim] that is directed to how to implement" the abstract idea, but rather, the
"the claim is drawn to the idea itself." Id. (emphasis in original).
Apart from the determination, the claim further recites ( 1) recording
variables and (2) calculating cleaning times. But "[a]dding one abstract idea
(math) to another abstract idea ... does not render the claim non-abstract."
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
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The Federal Circuit has explained that "collecting information, including
when limited to particular content (which does not change its character as
information), [is] within the realm of abstract ideas" and that "analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [is] essentially [a] mental process[] within the
abstract-idea category." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353-54 (Fed. Cir. 2016). Similarly, Appellant's claimed steps of
recording variables and calculating cleaning times are nothing more than
collecting and analyzing information. In fact, these steps are broadly
functional and result-oriented because they are only limited by the data they
operate on and their output. This further underscores claim 1 's abstract
nature.
That is, considering claim 1 as a whole, the recited method is directed
to collecting information (recording variables) and analyzing information
mentally and mathematically (calculating and determining) without more,
which is abstract. Id.
Therefore, claim 1 is directed to an abstract idea.
II
Because the claims are "directed to an abstract idea," we consider the
claim limitations "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 Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79
(2012)). The Supreme Court has described this analysis "as a search for an
'inventive concept."' Alice, 134 S. Ct. at 2355.
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Appellant argues that, even if claim 1 is directed to an abstract idea,
claim 1 is patent-eligible because (1) claim 1 does not preempt or
monopolize the entire field of room-cleaning management, and (2) claim 1
provides an inventive concept that goes significantly beyond the abstract
idea itself. App. Br. 12-15.
Regarding preemption, Appellant argues that claim 1 is not directed to
all possible applications of room-cleaning management. Id. But "[ w ]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Furthermore, "questions on preemption are inherent in and resolved by the
§ 101 analysis" that we have applied above in step one and the step two
analysis that follows. See id.
Appellant further argues that claim 1 recites more than computerizing
a well-known process. App. Br. 13. According to Appellant, "[t]he claimed
process has not been known or practiced in the hotel industry as indicated by
the lack of any facts suggesting otherwise." Id. Appellant argues that the
invention improves the field of cleaning. Id. at 14. According to Appellant,
the claims here are like those in Enfzsh because the claimed invention is
different from the prior art, instead of being well-known and commonly
practiced. Id. (discussing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016)). Appellant further argues that the claimed microprocessor
operates in a novel way. Reply Br. 2.
The Federal Circuit, however, explains that"[ e ]ligibility and novelty
are separate inquiries." Two-Way Media Ltd. v. Comcast Cable Commc 'ns,
LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) (citing Affinity Labs, 838 F.3d at
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1263 (holding that"[ e ]ven assuming" that a particular claimed feature was
novel does not "avoid the problem of abstractness")). "[A] claim for a new
abstract idea is still an abstract idea." Synopsys, 839 F.3d at 1151.
In the case that Appellant cites, Enfzsh, the Federal Circuit found that
the eligible claims were focused on a specific software-based improvement
to database techniques. 822 F.3d at 1335-36, discussed in App. Br. 13. By
contrast, Appellant's purported improvement is, at most, to the mathematical
calculations, not the computers themselves. See App. Br. 12-15. Similarly,
the Federal Circuit has recognized that "an invocation of already-available
computers that are not themselves plausibly asserted to be an advance, for
use in carrying out improved mathematical calculations, amounts to a
recitation of what is 'well-understood, routine, [and] conventional."' SAP
Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration
in original) (citing Mayo, 566 U.S. at 73).
Furthermore, we see no additional limitations in claim 1 apart from
the abstract idea itself that is anything more than mere instructions to
implement the above-identified concept on a computer. Considering the
limitations individually, the method gathers information then performs a
calculation of the expected cleaning times and determines intervals in
accordance with the abstract mathematical calculations. Notably, these
calculations are broadly functional and result-oriented in that they only
specify what is calculated rather than a specific algorithm for calculating the
cleaning times. Claim 1 's final step then calls for a determination that is "in
accord with" the cleaning times, which falls within the category of abstract
mental processes. Considering the full combination of limitations, the claim
encompasses making a mental determination that is "in accord with" a
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mathematical calculation. Therefore, considering the limitations
individually and in combination, claim 1 lacks an "inventive concept."
Here, all limitations fall squarely in the abstract-idea realm. Our step-two
analysis stands in contrast to the Examiner's in that the Examiner merely
concludes, without further support, that the calculations themselves are well-
known, routine, and conventional. See Final Act. 4.
We, therefore, enter a new ground of rejection for claim 1.
Our authority to enter a new ground of rejection is discretionary. See
37 C.F.R. § 41.50(b) (stating, inter alia, that "[s]hould the Board have
knowledge of any grounds not involved in the appeal for rejecting any
pending claim, it may include in its opinion a statement to that effect with its
reasons for so holding, and designate such a statement as a new ground of
rejection of the claim") (emphasis added). We decline to reject the
remaining claims under our discretionary authority. However, "no inference
should be drawn from a failure to exercise [our] discretion." MPEP
§ 1213.02 (9th ed. Rev. 08.2017, Jan. 2018). That is, our decision not to
reject every claim, as is the case here, does not mean that the remaining
claims are necessarily patentable. See id. ("The Board's reversal of a
rejection should not be interpreted as an instruction to the Examiner to allow
the claims so rejected."). Rather, we leave the patentability determination of
these claims to the Examiner.
DECISION
We reverse the Examiner's rejection of claims 1, 7, 8, 15-17, 25, 29,
32, 38--45, and 47-55.
With our discretionary authority under 3 7 C.F .R. § 41. 50(b ), we enter
a new ground of rejection for independent claim 1under35 U.S.C. § 101.
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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).
This decision contains a new ground of rejection under 3 7 C.F .R.
§ 41.50(b ), which provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review." This section
also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
REVERSED
37 C.F.R. § 41.50(b)
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