Ex Parte Zimmer et al

Patent Trial and Appeal Board

Feb 22, 2019

12628298 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/628,298 12/01/2009
63759 7590 02/26/2019
DUKEW. YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Nico Zimmer
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.
09-0801-US-NP 5664
EXAMINER
JOSEPH, TONY A S
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICO ZIMMER and ROSS M. BROWN
Appeal 2017-011479
Application 12/628,298 1
Technology Center 3600
Before HUNG H. BUI, JON JURGOV AN, and JOSEPH LENTIVECH,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 36-63, which are all the claims pending
in the application. App. Br. 21-30 (Claims App'x.). We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, The Boeing Company is the real party in
interest. App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief filed March 14, 2017
("App. Br."); Reply Brief filed September 13, 2017 ("Reply Br.");
Examiner's Answer mailed July 13, 2017 ("Ans."); Final Office Action
mailed November 18, 2016 ("Final Act."); and original Specification filed
December 1, 2009 ("Spec.").
Appeal 2017-011479
Application 12/628,298
STATEMENT OF THE CASE
Appellants' invention relates to "a method and apparatus for
identifying berths for ships in a harbor." Spec. ,r 1. According to
Appellants, "the invention as claimed is an automated method and system
that provides a tool that is used by the harbor master or another operator to
assign a berth to a ship" based on (1) information about a ship requesting a
berth from a plurality of berths available at a particular location, and (2)
real-time environmental information for that particular location. Spec.
,r,r 24--25; Abstract.
Claims 36, 46, and 55 are independent. Claim 36 is illustrative of the
claimed subject matter, as reproduced below:
3 6. A method of berthing a ship, comprising:
identifying, by a berth selection program running on a
computer system, all available berths at a location;
obtaining, by the berth selection program, [ 1] information
about the ship comprising [i] information identifying a current
draft of the ship, [ii] information identifying a predicted draft that
the ship will have when leaving a berth, and [iii] information
identifying driving characteristics of the ship, [iv] wherein the
current draft of the ship and the predicted draft that the ship will
have when leaving the berth are different, and [ v] wherein the
current draft is based on the driving characteristics of the ship;
obtaining, by the berth selection program, [2] real time
environmental information for the location, wherein the real time
environmental information for the location is selected from the
group consisting of [i] current weather conditions, [ii] wind
speed, [iii] wave heights, [iv] water currents, [ v] tide
information, [ vi] dimensions of the available berths, and [ vii]
water depths for the available berths;
identifying, by the berth selection program, suitable berths
for the ship from the available berths using [ 1] the information
about the ship and [2] the real time environmental information
for the location;
2
Appeal 2017-011479
Application 12/628,298
generating and displaying graphical indications of the
suitable berths on a graphical user interface comprising a display
device;
selecting the berth for the ship from the suitable berths
using the graphical user interface;
generating, by the berth selection program, berth
information identifying a position of the berth in response to
selecting the berth; and
using the berth information to move the ship into the berth.
App. Br. 21-22 (Claims App'x.) (bracketing added).
EXAMINER'S REJECTIONS & REFERENCES
(1) Claims 36-63 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to an abstract idea without significantly more.
Final Act. 3--4.
(2) Claims 36-38, 42, 44--45, 47-52 and 61 stand rejected under 35
U.S.C. § I03(a) as being obvious over Kuhlgatz et al. (US 2008/0147257
Al; published June 19, 2008; "Kuhlgatz"), Brown et al. ("Optimizing Ship
Berthing," Naval Research Logistics, Vol. 41, pp. 1-15, 1994; "Brown"),
"Cleaner Seas", by Sophy Gasson, OSIL., pp 20-21 (Winter 07 /08),
Sugiyama (WO 2009/101514 Al; published Aug. 20, 2009; "Sugiyama"),
Erskine, (US 2004/0133464 Al; published July 8, 2004; "Erskine"),
"Carefully to Carry", by Loss Prevention Department, Thomas Miller P&I
Ltd., May 2008, Official Notice, and Ship-Squat.com (Reference U of the
attached PT0-892; "Ship Squat"). Final Act. 5-9.
(3) Claims 45, 54, and 63 stand rejected under 35 U.S.C. § I03(a)
as being obvious over Kuhlgatz, Brown, Cleaner Seas, Sugiyama, Erskine,
Carefully to Carry, Hahn et al. (US 2003/0004613 Al; published Jan. 2,
2003; "Hahn"), and Ship Squat. Final Act. 9-10.
3
Appeal 2017-011479
Application 12/628,298
(4) Claims 39, 40, 49, 50, 58, and 59 stand rejected under 35
U.S.C. § I03(a) as being obvious over Kuhlgatz, Brown, Cleaner Seas,
Sugiyama, Erskine, Carefully to Carry, Ship Squat, and Navani et al. (US
2002/0069210 Al; published June 6, 2002; "Navani"). Final Act. 10-11.
(5) Claims 41, 51, and 60 stand rejected under 35 U.S.C. § I03(a)
as being obvious over Kuhlgatz, Brown, Cleaner Seas, Sugiyama, Erskine,
Carefully to Carry, Ship Squat, and "Berth Allocation", by Yongpei Guan
and Raymond K. Cheung, OR Spectrum (2004) 26: 75-92. Final Act. 11-
12.
(6) Claims 43, 52, and 61 stand rejected under 35 U.S.C. § I03(a)
as being obvious over Kuhlgatz, Brown, Cleaner Seas, Sugiyama, Erskine,
Carefully to Carry, Ship Squat, and "AUSTRALASIA", Industrial Bulletin,
February 19, 2008. Final Act. 12-14.
DISCUSSION
Patent-Eligible Subject Matter: Claims 36-63
To determine whether claims are patent eligible under§ 101, we apply
the Supreme Court's two-step framework articulated in Alice Corp. Pty. Ltd.
v. CLS Bankint'l, 573 U.S. 208 (2014). First, we determine whether the
claims are directed to a patent-ineligible concept: laws of nature, natural
phenomena, and abstract ideas. Id. at 217. If so, we then proceed to the
second step to consider the elements of the claims "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."
Id. In other words, the second step is to "search for an 'inventive concept'-
i.e., an element or combination of elements that is 'sufficient to ensure that
4
Appeal 2017-011479
Application 12/628,298
the patent in practice amounts to significantly more than a patent upon the
[ ineligible concept] itself."' Id. at 21 7-18 ( alteration in original) ( quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
The Federal Circuit has described the Alice step-I 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); Enfzsh, LLC v.
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).
Because there is no single definition of an "abstract idea" under Alice
step 1, the Federal Circuit (1) has adopted the common law, analogy-driven
approach (a.k.a. "analogous claim" test) to determine whether a claim is
directed to an abstract idea, and (2) has instructed us "to examine earlier
cases in which a similar or parallel descriptive nature can be seen-what
prior cases were about, and which way they were decided." Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing
Elec. Power Grp., 830 F.3d at 1353-54; accordUSPTO Memorandum, July
2015 Update: Subject Matter Eligibility, 3 (July 30, 2015),
https://www.uspto.gov/sites/ default/files/ documents/ieg-july-2015-
update. pdf (instructing examiners that "a claimed concept is not identified as
an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea").
5
Appeal 2017-011479
Application 12/628,298
The PTO has acknowledged that the Federal Circuit's common law,
analogy-driven approach (a.k.a. "analogous claim" test) was effective soon
after Alice, but recently concluded that approach has since become
impractical as the growing body of Federal Circuit precedent has become
increasing more difficult for the Office and Examiners to apply in a
predictable manner. In particular, the PTO has issued a new § 101
Memorandum that governs all patent-eligibility analysis under Alice and
§ 101 effective as of January 7, 2019. In that§ 101 Memorandum, the PTO
has synthesized, for purposes of clarity, predictability, and consistency, key
concepts identified by the courts as abstract ideas to explain that the
"abstract idea" exception includes the following three groupings:
( 1) Mathematical
mathematical
calculations;
concepts-mathematical
formulas or equations,
relationships,
mathematical
(2) Mental processes- concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
(3) Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50, 52 (Jan. 7, 2019) ("PTO§ 101 Memorandum"), which is effective on
January 7, 2019. According to the PTO§ 101 Memorandum, "claims that
do not recite [subject] matter that falls within these enumerated groupings of
6
Appeal 2017-011479
Application 12/628,298
abstract ideas should not be treated as reciting abstract ideas," except in rare
circumstances. PTO§ 101 Memorandum, 84 Fed. Reg. at 53. Even if the
claims recite any one of these three groupings of abstract ideas, these claims
are still not "directed to" a judicial exception ( abstract idea) and, thus, are
"patent-eligible" if "the claim as a whole integrates the recited judicial
exception into a practical application of that Uudicial] exception." PTO
§ 101 Memorandum, 84 Fed. Reg. at 53. "Integration into a practical
application" requires an additional element or a combination of additional
elements in the claim to apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the
exception. PTO§ 101 Memorandum, 84 Fed. Reg. at 53.
For example, limitations that are indicative of "integration into a
practical application" include:
1) Improvements to the functioning of a computer, or to any
other technology or technical field - see MPEP
§ 2106.05(a);
2) Applying the judicial exception with, or by use of, a particular
machine - see MPEP § 2106.05(b );
3) Effecting a transformation or reduction of a particular article
to a different state or thing-see MPEP § 2106.05(c); and
4) Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception - see MPEP
§ 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application" include:
7
Appeal 2017-011479
Application 12/628,298
1) Adding the words "apply it" (or an equivalent) with the
judicial exception, or mere instructions to implement an
abstract idea on a computer, or merely uses a computer as
a tool to perform an abstract idea - see MPEP
§ 2106.05(±);
2) Adding insignificant extra-solution activity to the judicial
exception-see MPEP § 2106.05(g); and
3) Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP § 2106.05(h).
See PTO§ 101 Memorandum, 84 Fed. Reg. at 54--55 ("Prong Two").
Examiner's Determination of Patent-Ineligibility
In rejecting claims 36-63 under 35 U.S.C. § 101, the Examiner
determines these claims are directed to an abstract idea of "determining a
berth location [ for a ship in a harbor]," which is considered ( 1) a method of
organizing human activity or (2) a mental process that can be performed in
the human mind or by a human using a pen and paper, and include
limitations, for example:
"identifying, by the berth selection program, suitable berths for
the ship from the available berths using [ 1] the information about
the ship and [2] the real time environmental information for the
location"
that are analogous or similar to the concept of "comparing new and stored
information and using rules to identify options" as discussed in SmartGene.
Final Act. 3--4; Ans. 3; see SmartGene, Inc. v. Advanced Biological Labs.,
SA, 852 F. Supp.2d 42 (D.D.C. 2012), aff'd 555 F. App'x 950, 955 (Fed.
Cir. 2014) (holding that claims directed to "comparing new and stored
information and using rules to identify medical options" are not patent-
eligible ); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370
8
Appeal 2017-011479
Application 12/628,298
(Fed. Cir. 2011) (holding that claims directed to "a method that can be
performed in the human mind, or by a human using a pen and paper" are not
patent-eligible).
The Examiner also determines that the claims fail to amount to
"significantly more than the judicial exception" or contain an "inventive
concept" because (1) "the additional elements or combination of elements in
the claims other than the abstract idea per se----(berth selection program,
computer system, graphical user interface, display device), amounts to no
more than the recitation of generic computer structure that services to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry"; (2)
"these additional elements" are "mere instructions to implement the idea on
a computer." Final Act. 4; Ans. 3--4.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue the
claims are not directed to an abstract idea because (1) "the Office Action's
'directed to' analysis does not comply with the current state of the law [i.e.,
Enfish]"; and (2) the claims, when considered as a whole, are directed to "a
method and system that comprises a graphical user interface that solves
problems relating to speed, accuracy, and usability of prior methods and
systems." App. Br. 11-13.
Appellants' arguments are not persuasive. At the outset, we note the
newly published PTO § 101 Memorandum now governs all patent-eligibility
analysis under Alice and§ 101 effective as of January 7, 2019. In particular,
the PTO has now synthesized, for purposes of clarity, predictability, and
consistency, the "abstract idea" exception to limit to three categories of
9
Appeal 2017-011479
Application 12/628,298
abstract ideas as outlined in the PTO§ 101 Memorandum, 84 Fed. Reg. at
54--55.
In this case, Appellants' invention relates to "a method and apparatus
for identifying berths for ships in a harbor." Spec. ,r 2. According to
Appellants, "the invention as claimed is an automated method and system
that provides a tool that is used by the harbor master or another operator to
assign a berth to a ship" based on (1) information about a ship requesting a
berth from a plurality of berths available at a particular location, and (2)
real-time environmental information for that particular location. Spec.
,r,r 24--25; Abstract.
Contrary to Appellants' arguments, generic components such as "a
graphical user interface" and "display device" are used as a tool to provide a
visual display of "graphical indications of the suitable berths," and does not
solve any "problems relating to speed, accuracy, and usability of prior
methods and systems," as Appellants argue. App. Br. 13. As correctly
recognized by the Examiner (Ans. 3--4), "determining a berth location [for a
ship in a harbor]" as recited in Appellants' independent claims 36, 46, and
55 is plainly directed to a "certain method of organizing human activity"
because selecting suitable berths for a ship in a harbor based on (1)
"information about the ship" and (2) real-time environment information of
the location" (Spec. ,r,r 24--25; Abstract) is nothing more than managing
relationships or interactions between ( 1) a harbor master and (2) the captain
of the ship exchanging information using certain rules or instructions-and
is thus a subject matter that falls within the three types of abstract ideas
identified by the PTO § 101 Memorandum. "Determining a berth location
[ for a ship in a harbor between a harbor master and the captain of the ship]"
10
Appeal 2017-011479
Application 12/628,298
is also the basic building block of a market economy and, as such, is an
"abstract idea" beyond the scope of§ 101. See Alice, 573 U.S. at 220.
Alternatively, "determining a berth location [ for a ship in a harbor
between a harbor master and the captain of the ship]" using rules as recited
in Appellants' independent claims 36, 46, and 55 is nothing more than
"mental processes" that could be performed in the human mind or by a
human using a pen and paper-a subject matter that falls within the three
types of abstract ideas identified by the PTO § 101 Memorandum. See
CyberSource, 654 F.3d at 1372-73 ("[A] method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101."); see also In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009)
("[M]ental processes----or processes of human thinking-standing alone are
not patentable even if they have practical application."); Gottschalk v.
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." (Emphasis added)).
Additionally, 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.").
For example, steps of "identifying ... all available berths at a
location" and "obtaining ... [i] information about the ship ... [i] real time
environmental information for the location" as recited in Appellants' method
claim 36 can be performed by the ship captain who simply collects various
information regarding the available berths at a location, the ship, and
11
Appeal 2017-011479
Application 12/628,298
weather conditions. Similarly, steps of "identifying," "displaying,"
"selecting the berth for the ship" and "using the berth information to move
the ship into the berth" can also be performed by the same ship captain who
reviews all available information, makes proper selection of an appropriate
berth and then moves the ship into the berth.
We discern no additional element ( or combination of elements)
recited in Appellants' claims 36, 46, and 55 that integrate the judicial
exception into a practical application. See PTO § 101 Memorandum, 84
Fed. Reg. at 54--55 ("Prong Two"). For example, Appellants' claims 36, 46,
and 55 do not (1) improve the functioning of a computer or other
technology, (2) are not applied with any particular machine ( except for a
generic computer), (3) do not effect a transformation of a particular article to
a different state, and ( 4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a}-(c), (e}-(h). As correctly recognized by the Examiner,
Appellants' "invention does not provide any improvement to software
technology" or improve the computer functionality as discussed in Enfish.
Ans. 4. Instead, generic computer components, such as graphical user
interface and display device, are merely used as a tool to facilitate the
selection of an appropriate berth. Enfzsh, 822 F.3d at 1335-36, 1338.
For these reasons, we agree with the Examiner's determination that
Appellants' claims 3 6-63 are directed to an abstract idea that is not
integrated into a practical application.
12
Appeal 2017-011479
Application 12/628,298
Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue, similar to the
claims in Trading Technologies Int'!., Inc. v. CQG, Inc., 675 Fed.Appx.
1001 ("Trading Technologies"), their claims also recite "a graphical user
interface" that is an "inventive concept" used to allow a harbor master to
"more efficiently and accurately select a berth for a ship" and, as such, "are
removed from abstract ideas, as compared to conventional computer
implementations and known procedures." App. Br. 13. In the Reply,
Appellants also argue "the claims [] include transformative steps of putting
the information obtained and analyzed therein to practical user, namely, by
moving a ship into an appropriate berth." Reply Br. 2-3 ( citing Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)).
Appellants' arguments are unpersuasive. At the outset, we note
Appellants' reliance on Trading Technologies is misplaced. In Trading
Technologies, the Federal Circuit agreed with the district court's analysis
that the claims there did not merely claim displaying information on a
graphical user interface, but rather required a specific structured interface in
order to address and resolve a specifically identified problem with prior GUI
devices in the computerized trading area, specifically improving speed,
accuracy and usability. 675 Fed.Appx. 1001. In contrast to Trading
Technologies, Appellants' claimed "graphical user interface" is only used as
a tool to display information. See Appellants' claims 36, 46, and 55.
Under current Federal Circuit precedent, an "inventive concept" under
Alice step 2 can be established by showing, for example, that the patent
claims:
13
Appeal 2017-011479
Application 12/628,298
(1) provide a technical solution to a technical problem unique
to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks"
(DDR Holdings, 773 F.3d at 1257));
(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each
end user" (BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1352, 1350 (Fed. Cir.
2016)); or
(3) "entail[] an unconventional technological solution ([e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously
required massive databases)" and "improve the
performance of the system itself' (Amdocs, 841 F.3d at
1300, 1302).
Similarly, as recognized by the PTO § 101 Memorandum, an
"inventive concept" under Alice step 2 can also be evaluated based on
whether an additional element or combination of elements:
( 1) adds a specific limitation or combination of limitations
that are not well-understood, routine, conventional activity
in the field, which is indicative that an inventive concept
may be present (see MPEP § 2106.05(d)); or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.
See PTO§ 101 Memorandum, 84 Fed. Reg. at 56.
In this case, however, we find no element or combination of elements
recited in Appellants' claims 36, 46, and 55 that contains any "inventive
14
Appeal 2017-011479
Application 12/628,298
concept" or adds anything "significantly more" to transform the abstract
concept into a patent-eligible application. Alice, 573 U.S. at 221-22. For
example, Appellants' abstract idea of "determining a berth location [ for a
ship in a harbor]" using information and rules as recited in Appellants'
independent claims 36, 46, and 55 is not rooted in computer technology; nor
does it (1) provide any technical solution to a technical problem as required
by DDR Holdings; (2) provide any particular practical application as
required by Bascom; or (3) entail an unconventional technological solution
to a technological problem as required by Amdocs. Instead, Appellants'
invention simply uses generic computer components to perform the abstract
idea of "determining a berth location [for a ship in a harbor]." In fact, as
recognized by the Examiner, the only "additional elements" recited in
Appellants' claims merely implement the abstract idea on generic computing
elements (i.e., computer system, graphical user interface, display device).
See Figs. 2-3. However, the use of a generic computer device does not
alone transform an otherwise abstract idea into patent-eligible subject
matter. As our reviewing court has observed, "after Alice, there can remain
no doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible." DDR Holdings, 773 F.3d at 1256
( citing Alice, 573 U.S. at 223). Moreover, Appellants have not shown any
specific limitation in claims 36, 46, and 55 beyond the judicial exception
that is not "well-understood, routine, and conventional" in the field (see
MPEP § 2106.05(d)).
Because Appellants' claims 36, 46, and 55 are directed to a patent-
ineligible abstract concept and do not recite something "significantly more"
15
Appeal 2017-011479
Application 12/628,298
under the second prong of the Alice analysis, we sustain the Examiner's
rejection of claims 36-63 under 35 U.S.C. § 101.
35 USC§ 103: Claims 36-63
In support of the§ 103 rejection of independent claims 36, 46, and 55,
the Examiner finds Kuhlgatz teaches an electronic system for managing a
ship, shown in Figure 1, including computer system 1, display device 13
with touchscreen and interfaces (i.e., graphical user interface), and programs
to evaluate available information and to identify a suitable berth for the ship
from all available berths at a location when the captain wants to anchor at a
ship's harbor. Final Act. 5 ( citing Kuhlgatz ,r 26).
Kuhlgatz's Figure 1 is reproduced below.
16
Appeal 2017-011479
Application 12/628,298
Kuhlgatz's Figure 1 shows an electronic system for managing a ship, shown
in Figure 1, including computer system 1, display device 13 with
touchscreen and interfaces (i.e., graphical user interface), and programs to
evaluate available information and identify a suitable berth for the ship.
According to Kuhlgatz, information available to the ship's captain
includes, for example: (1) information about available berths at the port
(Kuhlgatz ,r 26); (2) ship-related information and information about the
technical condition of the ship (Kuhlgatz ,r,r 15, 27); and (3) relevant current
meteorological and nautical data (i.e., Appellants' claimed "real-time
environmental data") including weather forecasts and weather reports
equipped with dynamic representations of weather images ( wind, air
pressure, wind sea, wave height, swell), and graphical representation of
weather conditions and weather warnings (Kuhlgatz ,r,r 17, 26).
While not necessary, the Examiner relies on Brown for expressly
teaching an optimized ship berthing program (1) "obtaining ... information
about the ship comprising information identifying a current draft of the
ship," and (2) "obtaining ... real time environmental information for the
location" to support the conclusion of obviousness, i.e., "to modify the
method of Kuhlgatz to include the teachings of Brown to determine which
berths can physically accommodate each ship, as taught by Brown." Final
Act. 5 (citing Brown pp. 3-5). In addition, the Examiner relies on additional
references to show several well-known features in the art, including, for
example:
( 1) Cleaner Seas for teaching a specific type of Appellants' claimed
"real time environmental information" "selected from the group
consisting of current weather conditions, wind speed, wave
heights, water currents, tide information, dimensions of the
17
Appeal 2017-011479
Application 12/628,298
available berths, and water depths for the available berths" (Final
Act. 5---6 ( citing Cleaner Seas ,r 5) );
(2) Sugiyama for teaching Appellants' claimed "graphical
indications of the suitable berths on a graphical user interface"
(Final Act. 6 ( citing Sugiyama ,r 24) );
(3) Erskine for teaching selection of an optical parking (berthing)
space (Final Act. 7 ( citing Erskine ,r,r 8, 11) );
(4) Carefully to Carry for teaching a specific type of Appellants'
claimed "information about the ship" including "information
identifying a predicted draft that the ship will have when leaving
a berth ... wherein the current draft of the ship and the predicted
draft that the ship will have when leaving the berth are different"
(Final Act. 7 (citing Carefully to Carry p. 6)); and
( 5) Ship-Squat for teaching another type of Appellants' claimed
"information about the ship" including "the current draft [ of the
ship] [] based on the driving characteristics of the ship" (Final
Act. 7 (citing Ship-Squat p. 2)).
Appellants present several arguments against the Examiner's
combination rejection. First, Appellants argue "the cited references do not
teach identifying suitable berths for a ship using information about the ship as
featured in the claims." App. Br. 12. Second, Appellants argue "there is no
rational underpinning for modifying the relatively simple on board
communication and display device of Kuhlgatz to include the information
required by the complex berthing model of Brown" because "[t]he skipper of
the yacht in Kuhlgatz has no interest in creating an optimal berthing plan for
an entire port, as taught by Brown." App. Br. 16. In addition, Appellants
argue:
[M]odifying the simple communication and display device of
Kuhlgatz to include information required by the complex
18
Appeal 2017-011479
Application 12/628,298
berthing model of Brown would both render the system of
Kuhlgatz unsatisfactory for its intended purpose and change the
principle of operation of the system of Kuhlgatz by turning a
simple communication and display device into a complex
modeling system.
App. Br. 16. In the Reply, Appellants further argue the Examiner's reason to
combine Kuhlgatz and Brown is conclusory. Reply Br. 3.
Appellants' arguments are not persuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellants' arguments
supported by evidence. Ans. 4--6. As such, we adopt the Examiner's
findings and explanations provided therein. Id. At the outset, we note that
Kuhlgatz teaches "identifying suitable berths for a ship using information
about the ship." See Kuhlgatz ,r,r 15, 26-27. For additional emphasis, we
also note that obviousness is a question of law based on underlying factual
findings, In re Baxter, 678 F.3d 1357, 1361 (Fed. Cir. 2012), including what
a reference teaches, In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992), and
the existence of a reason to combine references, In re Hyon, 679 F.3d 1363,
1365---66 (Fed. Cir. 2012).
As discussed, Kuhlgatz already teaches an electronic system for
managing a ship, shown in Figure 1, including computer system 1, display
device 13 with touchscreen and interfaces (i.e., graphical user interface), and
programs to evaluate available information and to identify a suitable berth
for the ship from all available berths at a location when the captain wants to
anchor at a ship's harbor (Kuhlgatz ,r 26). Kuhlgatz also teaches
information available to the ship's captain includes (1) information about
available berths at the port (Kuhlgatz ,r 26); (2) ship-related information and
information about the technical condition of the ship (Kuhlgatz ,r,r 15, 27);
19
Appeal 2017-011479
Application 12/628,298
and (3) relevant current meteorological and nautical data (i.e., Appellants'
claimed "real-time environmental data"). If the ship's captain wishes to
learn additional information about the ship, including the current draft of the
ship or real-time environmental information, as expressly taught by Brown,
the additional information can be made available to those skilled in the art,
as proffered by the Examiner. Final Act. 5. As such, we are not persuaded
that the Examiner's rationale for incorporating Brown's teachings into
Kuhlgatz's berth selection program in the manner suggested by the
Examiner is not supported by "rational underpinning" as required by KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007), and In re Kahn, 441 F.3d
977, 988 (Fed Cir. 2006).
Moreover, Appellants do not direct us to evidence to show Kuhlgatz's
system is simple or Brown's berthing model is complex or incompatible
with Kuhlgatz' s system. As such, modifying Kuhlgatz' s system with
Brown's berthing model in the manner proposed by the Examiner would
involve nothing more than an obvious combination of prior art elements
according to known methods to yield predictable results. KSR Int'! Co., 550
U.S. at 415-16.
For these reasons, we are not persuaded of Examiner error.
Accordingly, we sustain the Examiner's obviousness rejection of
independent claims 36, 46, and 55, and dependent claims 37-38, 42, 44--45,
47-52, and 61, which Appellants do not argue separately. For the same
reasons discussed, we also sustain the Examiner's obviousness rejection of
remainder claims 39-41, 43, 46, 53-54, and 56-63.
20
Appeal 2017-011479
Application 12/628,298
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 36-63 under
35 U.S.C. §§ 101 and 103.
DECISION
As such, we AFFIRM the Examiner's rejection of claims 36-63 under
35 U.S.C. §§ 101 and 103.
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
21