Ex Parte Blatchley et al

Patent Trial and Appeal Board

Jan 27, 2017

11769084 (P.T.A.B. Jan. 27, 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.
11/769,084 06/27/2007 Robert David Blatchley END920070031US1 4167
30449 7590 01/31/2017
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
CRANFORD, MICHAEL D
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
01/31/2017 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):
30449@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT DAVID BLATCHLEY and
DONALD PAUL TAYLOR III
Appeal 2015-002884
Application 11/769,0841
Technology Center 3600
Before JOSEPH A. FISCHETTI, PHILIP J. HOFFMANN, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision to reject claims 16—22 and 37—50. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is International
Business Machines Corporation. Appeal Brief filed June 6, 2014, hereafter
“App. Br.,” 1.
Appeal 2015-002884
Application 11/769,084
BACKGROUND
The invention relates to labor cost tracking, and, more specifically, to
concurrently track labor expended for different projects. Abstract;
Specification, hereafter “Spec.” 3:2—3. The invention allows allocation of a
portion of labor time to each of several projects or accounts. Id. at 3:7—10.
Representative claim 16 is reproduced from pages 27—28 of the
Claims Appendix of the Appeal Brief (Claims App.) as follows, with
emphasis added to relevant claim limitations:
16. A method for tracking and billing time expended by a person
concurrently for a plurality of different projects or accounts, the method
comprising the steps of:
a computer displaying a list of the plurality of projects or accounts and
a respective plurality of fields for the plurality of projects or accounts to
allow a person to indicate that time subsequently expended by the person is
divided amongst the respective plurality of projects or accounts for billing;
in response to (a) a plurality of selections by the person in the
respective plurality of fields to indicate that time subsequently expended by
the person is divided amongst the respective plurality of projects or accounts
and (b) selection by the person of a start-timer to signal the computer that
the person has begun expending time concurrently for the plurality of
projects or accounts, the computer dividing amongst the respective plurality
of projects or accounts time subsequently and concurrently expended by the
person for the respective plurality of projects or accounts and allocating a
plurality of portions of the expended time to the plurality of projects or
accounts, respectively, for billing such that a total of the plurality of portions
substantially equals the expended time; and
the computer multiplying the respective portion of the expended time
allocated to each of the projects or accounts by a billing rate for the person
to generate a bill amount for the respective project or account attributed to
labor of the person; and wherein the portion of expended time and
corresponding bill amount for each of the projects or accounts are greater
than zero.
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Appeal 2015-002884
Application 11/769,084
In a Final Rejection, the Examiner rejects under 35 U.S.C. § 103(a)
claims 16, 17, 19-22, 37, 38, 40-45, and 47—50 as unpatentable over
Lambert2 and Eisenberg3, and claims 18, 39, and 46 are rejected over
Lambert, Eisenberg, and Walker4. Final Action, hereafter “Final Act.,” 3—
11, mailed March 4, 2014; Answer, hereafter “Ans.,” 7—17, mailed
November 17, 2014. In the Answer, the Examiner entered a new ground of
rejection for claims 16—22 and 37—505 under 35 U.S.C. § 101 because the
claims are directed to non-statutory subject matter. Ans. 4—7. The
Appellants exercised the option to maintain the appeal with the filing of a
Reply Brief, with the Reply Brief addressing each ground of rejection under
37 C.F.R. § 41.39(b)(2). Reply Brief, hereafter “Reply Br.,” 2—30, filed
January 15, 2015.
DISCUSSION
The Appellants argue the rejections of claims 16—22 and 37—50 under
§ 101 on common issues, using independent claims 16, 37, and 44 as
representative. See Reply Br. 5—9. We will address this rejection in a
similar manner.
The rejection of independent claims 16, 37, and 44 under § 103 are
argued together by the Appellants, with dependent claims 17—22, 38—43, and
45—50 standing or falling with the independent claims, and with some of the
remaining dependent claims argued on additional grounds. App. Br. 7—25.
2 US Publication2005/0052458 Al, published March 10, 2005.
3 US Publication 2003/0069815 Al, published April 10, 2003.
4 US Publication 2007/0100714 Al, published May 3, 2007.
5 There is no reference to claim 43 under the § 101 rejection. See Ans. 5—6.
We will address the § 101 rejection of claim 43 because it appears that the
omission was inadvertent error, and the Appellants have addressed
arguments pertaining to the rejection of this claim. See Reply Br. 2, 6.
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Application 11/769,084
In light of our disposition of the § 103 rejection, we need address only the
obviousness arguments presented for the independent claims, and we will
use claim 16 as representative.
35U.S.C.§ 101
The Examiner finds that claims 16—22 and 37—50 are directed to the
abstract idea of tracking and billing time expended by a person concurrently
for a plurality of different projects or accounts, which is a method of
organizing human activity. See Ans. 4—5. The Examiner also finds that the
additional elements of the claims do not amount to more than a recitation of
generic computer structure performing generic computer functions that are
well-understood, routine, and conventional activities, and do not provide
meaningful limitations to transform an abstract idea into a patent eligible
application of the abstract idea amounting to significantly more than the
abstract idea itself. See id. at 4—5.
The Appellants allege that the claims are not directed to an abstract
idea because the field of the claims is not a method of organizing human
activities, alleging that this requires an “active method step.” Reply Br. 3^4.
The Appellants argue that the “human activity” of the claims at issue “do not
organize such time and labor expended by the person,” but rather only track
time and generate a bill. Id. The Appellants contrast these claims with the
claims of Bilski, which involved risk hedging, and which the Appellants
allege involve an active step. Id. at 4 (citing Bilski v. Kappos, 561 U. S. 593
(2010)). The Appellants additionally argue that several of the claims’
limitations are not well understood, routine, or conventional. Id. at 5—6. It is
also alleged that the claims do not preempt inventive activity in the field of
tracking and billing concurrent time. Id. at 6—9.
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Appeal 2015-002884
Application 11/769,084
We find no reversible error with the Examiner’s findings. To provide
context, 35 U.S.C. § 101 provides that a new and useful “process, machine,
manufacture, or composition of matter” is eligible for patent protection. The
Supreme Court has made clear that the test for patent eligibility under
Section 101 is not amenable to bright-line categorical rules. See Bilski, 130
S. Ct. 3218, 3229-30. There are, however, three limited, judicially-created
exceptions to the broad categories of patent-eligible subject matter in § 101:
laws of nature; natural phenomena; and abstract ideas. See Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
(2012).
In Alice Corporation Pty, Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) (“Alice’''), the Supreme Court reiterated the framework set forth
previously in Mayo, “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355 (citation omitted).
Under Alice, the first step of such analysis is to “determine whether the
claims at issue are directed to one of those patent-ineligible concepts.” Id.
(citation omitted). If determined that the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims “individually and ‘as an ordered combination”’ to determine
whether the additional elements “‘transform the nature of the claim’ into a
patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at 1291, 1297). 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 the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. (citing Mayo, 132 S. Ct. at 1294).
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Application 11/769,084
With this context in mind, we evaluate the Examiner’s rejections of
the claims at issue.
Examining the claims as a whole, and using claim 16 as
representative, we determine that the Examiner’s finding that the claimed
tracking and billing of time expended by a person concurrently for a
plurality of different projects or accounts is a method of organizing human
activity and is, therefore, an abstract idea, because the finding is supported
by the language of the claim itself. Under Alice, abstract ideas embrace
“fundamental economic practice[s] long prevalent in our system of
commerce,” (quoting Bilski, 561 U.S. at 611, 130 S. Ct. 3218), including
“longstanding commercial practice[s]” and “method[s] of organizing human
activity.” Alice, 134 S. Ct. at 2356. We are not persuaded by the
Appellants’ argument that the claims do not represent active steps because
they “do not organize time and labor expended by the person,” but rather
only track time and generate a bill. Here, claim 16 recites “tracking and
billing time” that includes the steps, inter alia, of allowing a person to
indicate the division of the person’s time, where a computer then multiplies
the respective portion of the person’s allocated expended time by a billing
rate to generate a bill. These steps are directed to “organizing of human
activity,” that is, the activities associated with managing a person’s time by
allotment for billing purposes—all mental exercises.
As to the second step of the Alice analysis, the Appellants argue that
additional specific limitations of the claims “are not well-understood, routine
and conventional in the field of tracking and billing time,” but we are
unpersuaded by the Appellants’ argument because only a bald conclusory
statement is provided with no additional explanation provided. See Reply
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Br. 5—6. Finally, we are not persuaded by the Appellants’ argument that the
claims will not preempt other effective techniques for tracking and billing
time. Although it may be true that there are other methods to track and bill
concurrent time, that issue is not dispositive as to whether the claims are
patent eligible. SeeAriosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”).
We therefore sustain the Examiner’s rejection of claims 16—22 and
37—50 under § 101.
35U.S.C.§ 103
The Appellants contend that the prior art fails to teach the claims
limitations of independent claims “expending time concurrently for the
plurality of projects or accounts, the computer dividing amongst the
respective plurality of projects or accounts time subsequently and
concurrently expended by the person . . .”. App. Br. 7—9. More
specifically, the Appellants argue that “concurrent” means “occurring at the
same time,” and Lambert discloses that “[ojnly one of the task items of task
list 106 is permitted to be active at any given time.” Id. at 8 (citing Lambert
146). It is also alleged that Lambert does not disclose side session tasks
being performed concurrently, and work is actually performed non-
concurrently on different tasks in the same six-minute time interval. Id. at 9
(citing Lambert || 73—75; Fig. 11). In further support, the Appellants refer
to Lambert’s disclosure that “a professional bills time in six-minute
increments and . . . [i]f the professional spends two minutes on each of three
different tasks in a given six-minute time period, such is recorded as one six-
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minute session and two six-minute side sessions associated with the same
six-minute period.” Id. (citing Lambert 115). As such, the Appellants
allege that Lambert teaches that tasks are performed sequentially only in
Lambert, and not concurrently as claimed. Reply Br. 13—14. The
Appellants further contend that, based these teachings, Lambert does not
disclose the “dividing” limitation because it does not divide the six minute
time interval. App. Br. 10.
The Appellants additionally argue that Eisenberg fails to remedy the
deficiencies of Lambert for teaching the “concurrent” limitations because it
only teaches non-concurrent work on tasks. App. Br. 11—13. The
Appellants allege that, although the Examiner relies on a purported quote
from Eisenberg for a teaching on concurrency, that disclosure is not found in
the reference. Reply Br. 15—16 (referring to Ans. 23).
After considering the Appellants’ arguments and the evidence
presented in this Appeal for the § 103 rejection, we are persuaded that the
Appellants identify reversible error, and we therefore reverse the
obviousness rejections. We add the following for emphasis.
On the issue of the prior art teachings of the “concurrent” limitations
of independent claims 16, 37, and 44, the preponderance of the evidence
here favors the Appellants. Under Lambert’s teachings, a “side session”
allows time spent on a task in a common time session to have the same total
time for the session applied or recorded to other tasks too, such as the
example provided where a professional spends two minutes each on three
separate tasks, with the minimum six billing increment (the session) applied
to each respective two minute task. See Lambert || 14, 15. The claims
require, however, the selection of a start timer to signal that “that the person
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Application 11/769,084
has begun expending time concurrently for the plurality of projects or
accounts,” and a fair reading of Lambert is that under its disclosure a person
is not expending time for concurrent projects when on working on a
respective two minute task, thus failing to teach the claim limitation.
Eisenberg does not remedy this deficiency. Thus, we cannot sustain the
Examiner’s rejection of claims 16, 37, and 44, or claims 17—22, 38-43, and
45—50, which depend therefrom, under 35 U.S.C. § 103(a).
SUMMARY
We affirm the Examiner’s rejections of claims 16—22 and 37—50 under
35 U.S.C. § 101.
We reverse the Examiner’s rejections of claims 16—22 and 37—50
under 35 U.S.C. §103(a).
AFFIRMED
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