Stephen Lee. Spruell et al.

Patent Trials and Appeals Board

Aug 21, 2019

15188012 - (D) (P.T.A.B. Aug. 21, 2019)

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.
15/188,012 06/21/2016 Stephen Lee Spruell 60309.0093USU1/
SW-07-0759
9300
70289 7590 08/21/2019
MERCHANT & GOULD KS
Merchant & Gould P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402
EXAMINER
UBER, NATHAN C
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
08/21/2019 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):
USPTO70289@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHEN LEE SPRUELL, CHARLES A. MURRAH JR., and
CARTER EDWARD SMITH
____________

Appeal 2018-0058201
Application 15/188,012
Technology Center 3600
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–6, 8–11, and 13–22, which are all the pending claims.2 See App.
Br. 13–19 and Final Act. 1–5. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellants identify Southwire Company, LLC as the real party in interest.
App. Br. 2.
2 Claims 7 and 12 have been canceled. See Final Act. 1; App. Br. 21–30
(Claims App’x).
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Application 15/188,012

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Introduction
Appellants’ disclosure and claims relate to a specific set of rules for
determining a remaining amount of material in a material package (e.g., a
wooden wire reel) based on data including the material package’s moisture
content. See, e.g., Spec. ¶¶ 2–3, 12, 15, 17, 32–41, 55–61, Figs 3–4. Claims
1, 13, and 17 are independent, of which claim 1 is representative:
1. A method comprising:
receiving a beacon code in response to egress of a
material package from an operations area;
receiving the beacon code in response to ingress of the
material package back into the operations area;
receiving an ingress weight of the material package in
response to the ingress of the material package back into the
operations area;
querying, based upon the beacon code received in
response to the ingress of the material package back into the
operations area, for a material package record;
determining an ingress moisture content in the ingress
weight of the material package, wherein determining the ingress
moisture content comprises:
determining a first date, the first date being the last
date of a most recent dry weather period for the
operations area and having an associated moisture
content value comprising a dry weather period moisture
content value;
determining a second date, the second date being
the last date in a most recent wet weather period for the
operations area and having the associated moisture
content value comprising a wet weather period moisture
content value;
determining a third date, the third date being the
last date the material package was weighed and having
the associated moisture content value comprising a
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determined moisture content value for the material
package on the last date the material package was
weighed;
setting a seed date equal to a most recent date of
the first date, the second date, and the third date;
setting a seed moisture content value equal to the
associated moisture content value corresponding to the
most recent date of the first date, the second date, and the
third date;
adjusting the seed moisture content value, wherein
adjusting the seed moisture content value comprises:
decreasing the seed moisture content value
by a first predetermined amount for each day that
had precipitation for the operations area between
the seed date and a current date, and
increasing the seed moisture content value
by a second predetermined amount for each day
that had precipitation between the seed date and
the current date; and
determining the ingress moisture content value of
the material package equal to the adjusted seed moisture
content value;
determining a remaining amount of material
corresponding to the material package based upon the received
weight, data from the material package record found from the
material package record query, and the ingress moisture content
value of the material package; and
replacing the material package record with an updated
material package record comprising the remaining amount of
material corresponding to the material package.
App. Br 21–22 (Claims App’x).
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The Rejection
All pending claims stand “rejected under 35 U.S.C. [§] 101 because
the claimed invention is directed to an abstract idea without significantly
more.” Final Act. 3; see also id. at 2–6 and Ans. 2–6.
ANALYSIS
Appellants argue all pending claims together as a group based on the
independent claims, from which we select claim 1 as representative.
App. Br. 13–19; 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner’s Determinations
The Examiner determines “the claims are directed to an abstract idea.”
Final Act. 4; see also id. at 3–4. The Examiner explains that “the claims are
directed to a process of calculating various values based on collected
information that could be performed mentally” and that “[c]ourts have
treated claims involving 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.” Id. at 3 (internal
quotations and citations omitted). The Examiner further explains that “the
instant claims do not recite an improvement to the capability of a computing
system,” and “at best, . . . only employ computer elements as a tool for
performing the recited operations.” Id. at 4. According to the Examiner,
“the claims do not recite an inventive concept that is significantly more than
the abstract concept(s),” and “[r]eceiving package identifying information
and updating records with determined amounts are conventional in the
inventorying art” and “amount to insignificant extra-solution activity, or data
management ancillary to the abstract concepts.” Id. at 4–5. Additionally,
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the Examiner states that “there is no evidence the combination of elements is
any more than the sum of their parts.” Id. at 4.
Appellants’ Contention of Examiner Error
Appellants dispute the Examiner’s determination that the claims are
directed to a patent-ineligible abstract idea, arguing claim 1 is patent eligible
because it recites the use of specific rules (not present in the prior art) that
determine a moisture content value as part of the calculation of the amount
of material (e.g., cable) left in a package. App. Br. 13–19; see also Reply
Br. 2–6.
Legal Framework and 2019 Guidance on Patent Subject Matter Eligibility
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (internal citation
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In early 2019, the PTO published revised guidance on the application
of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50–57 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look
under “Step 2A” to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice,
or mental processes); and
(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–(c),
(e)–(h)).3
See 84 Fed. Reg. at 53–55. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, does the
office then under “Step 2B” look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or

3 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. at 56.
Analysis under Alice/Mayo Step One, Guidance Step 2A Prong One
Claim 1 recites a method that receives various information (“receiving
a beacon code,” “receiving the beacon code,” “receiving an ingress weight”),
queries certain information based on the received information (“querying,
based on the beacon code received . . . for a material package record”),
determines certain information (“determining an ingress moisture content”),
makes a further determination based on the received, queried, and
determined information (“determining a remaining amount of material in a
material package”), and updates information based on the further
determination (“replacing the material package record”). In view of these
limitations, the Examiner does not err in determining that claim 1 generally
recites limitations for “calculating various values based on collected
information that could be performed mentally” (Final Act. 3). These
limitations, under their broadest reasonable interpretation, include operations
that may, as a practical matter, be performed in the mind and, accordingly,
we conclude claim 1 recites an abstract idea in the category of mental
processes. See Guidance, 84 Fed. Reg. at 52–54; see also, e.g., Intellectual
Ventures I LLC v. Symantec Corp., 838 F. 3d 1307, 1318 (Fed. Cir. 2016);
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F. 3d. 1314, 1324
(Fed. Cir. 2016); Versata Dev. Grp. v. SAP Am., Inc., 793 F. 3d 1306, 1335
(Fed. Cir. 2015); CyberSource Corp. v. Retail Decisions, Inc., 654 F. 3d
1366, 1372 (Fed. Cir. 2011).
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Analysis under Alice/Mayo Step One, Guidance Step 2A Prong Two
We next consider whether, in light of the specification, the claim’s
“character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)
(emphasis added); see also Thales Visionix Inc. v. United States, 850 F.3d
1343, 1349 (Fed. Cir. 2017) (holding “it is not enough to merely identify a
patent-ineligible concept underlying the claim; we must determine whether
the patent-ineligible concept is what the claim is ‘directed to’”). In
particular, we consider
whether the claim as a whole integrates the recited judicial
exception into a practical application of the exception. A claim
that integrates a judicial exception into a practical application
will 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 judicial exception. When the exception is so
integrated, then the claim is not directed to a judicial exception.
Guidance, 84 Fed. Reg. at 54; see also id. at 55–56 (citing MPEP
§ 2106.05(a)–(c), (e)–(h))).
We conclude that claim 1 is not “directed to” an abstract idea; instead,
as with the claims in McRO, Inc. v. Bandai Namco Games America Inc., we
determine claim 1 includes limitations “sufficient to ‘transform the nature of
the claim into a patent-eligible application.’” 837 F.3d 1299, 1312 (Fed. Cir.
2016) (quoting Alice, 573 U.S. at 217).
In McRO, the Federal Circuit held the recited use of a set of specific,
limited rules resulted in the claims being directed to a specific improvement
in animation technology, i.e., realistic animations of facial expressions for
lip-synchronization. McRO, 837 F.3d at 1313–16. Similarly, the claims
here “are limited to rules with specific characteristics.” McRO, 837 F.3d at
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1313. In particular, claim 1 recites limitations for determining an ingress
moisture content of the material package by: determining three dates, each
date meeting a certain condition (most recent dry period, most recent wet
period, or last date material package was weighed); setting a seed date equal
to the most recent of the three dates; adjusting (i.e., increases and decreases)
the seed moisture content value based on certain precipitation occurrences;
and determining the ingress moisture content value of the material package
equal to the adjusted seed moisture content value. Id. The claim is limited
further by the rule of “determining a remaining amount of material
corresponding to the material package based upon . . . the ingress moisture
content value of the material package.”
As in McRO, here “[t]he specific, claimed features of these rules
allow for the improvement realized by the invention.” Id. In other words,
we agree with Appellants that “[t]he use of the moisture content value to
determine the amount of material remaining in a package is an advancement
in the art that is driven by the claimed rules.” App. Br. 15; see also id. at
17–19 and Reply Br. 3. Contrary to the Examiner’s determination, we find
no evidence “that the claims simply use a computer as a tool to automate
conventional activity.” Final Act. 4. As Appellants explain, and the
Examiner does not rebut, “allowing the moisture conditions to be accounted
for in determining the amount of materials where that could not previously
be done” has “‘eliminated many of the complications inherent in
conventional methods.’” Reply Br. 4 (quoting Core Wireless Licensing
S.A.R.L. v. LG Electronics, Inc. et al., 880 F.3d 1356, 1362 (Fed. Cir.
2018)).
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Appellants’ Specification explains that by accounting for moisture
content in determining a remaining amount of material in a material
package, “a more accurate amount of material . . . may be determined
because the fluctuation in the moisture content of the material package
before and after the job may be considered and removed.” Spec. ¶ 47.4 As
in McRO, while the recited rules may be “embodied in computer software
that is processed by general-purpose computers, [the Examiner] provided no
evidence that the process previously used . . . is the same as the process
required by the claims.” McRO, 837 F.3d at 1314; see Final Act. 2–5; Ans.
3–6.
Thus, the Examiner’s assertion “there is no evidence that limitations
of the asserted claims enable a computer to perform a task that it could not
accomplish before” is unpersuasive. Ans. 5. “It is the incorporation of the
claimed rules, not the use of the computer, that improve[s] the existing
technological process by allowing the automation of further tasks.” McRO,
837 F.3d at 1313 (also explaining that “processes that automate tasks that
humans are capable of performing are patent eligible if properly claimed”).
“While the result may not be tangible, there is nothing that requires a
method ‘be tied to a machine or transform an article’ to be patentable.” Id.
(quoting Bilski, 561 U.S. at 603).

4 See also Spec. ¶¶ 42 (“Because the amount of moisture in the material
package may fluctuate over time, the weight of the material package may not
only change due to material being removed, but the weight of the material
package may also change due to moisture being added or taken away from
the material package.”), 62 (“Many variables in the weather data may
influence [(i.e., increase or decrease)] the moisture content of the material
package . . . for a given point in time.”).
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In view of the foregoing, we are not persuaded by the Examiner’s
assertions that claim 1 is directed to a new—yet still patent-ineligible—
abstract idea (Ans. 5) and that its “limitations, taken together, are merely a
set formulaic determinations and operations with attendant data gathering for
generating the values identified by Appellants, i.e., algorithms” (id. at 4).
Rather, we agree with Appellants that claim 1 recites an inventive concept
and improvement that “transform[s] the nature of the claim into a ‘patent-
eligible application.’” App. Br. 14; see also Reply Br. 2–4.
Thus, in accordance with the Guidance, we determine the judicial
exception recited in claim 1 is integrated into a practical application and,
therefore, we agree with Appellants that the Examiner errs in determining
claim 1 is “directed to” an abstract idea. See Final Act. 2–5; Ans. 3–6.
Thus, we do not sustain the § 101 rejection of claims 1–6, 8–11, and 13–22,
and we conclude our analysis at step one of the Alice/Mayo analysis.
DECISION
We reverse the rejection of claims 1–6, 8–11, and 13–22 under
35 U.S.C. § 101.
REVERSED