Ex Parte FaulknerDownload PDFPatent Trial and Appeal BoardAug 27, 201813748389 (P.T.A.B. Aug. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/748,389 01/23/2013 Richard Faulkner 108449 7590 08/29/2018 Bookoff McAndrews, PLLC 2020 K Street NW Suite 400 Washington, DC 20006 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. 00010-0001-00000 1033 EXAMINER ANDERSON,FOLASHADE ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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): usptomail@bomcip.com KRoss@bomcip.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD FAULKNER Appeal2017-006690 Application 13/748,389 Technology Center 3600 Before CARL W. WHITEHEAD JR., AMBER L. HAGY, and PHILLIP A. BENNETT, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant 1 is appealing the final rejection of claims 1 -5, 7-1 7, and 19-21 under 35 U.S.C. § 134(a). Appeal Brief 4. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Introduction The invention is directed to "a system and method for workforce exchange." Specification, paragraph 1. Variations in demand for goods or services can result in significant workforce turbulence for an entity supplying such 1 According to Appellant, IQ Exchange, LLC is the real party in interest. Appeal Brief 2. Appeal2017-006690 Application 13/7 48,389 goods or services. For example, when demand for goods or services is low, an entity may have more employees than is necessary to meet demand. This employee surplus may significantly affect the revenue of the entity, and eventually force the entity to dismiss employees. Depending on the extent of the variations in demand, the entity may have to dismiss very talented and experienced employees. Specification, paragraph 2. Illustrative Claim 1. A computer-implemented method for temporarily transferring an underutilized employee of an offerer to a requester to increase utilization of the underutilized employee, the method comprising: providing access to a resource management computing system to a computing device of the offerer and a computing device of the requester, the access being provided over an electronic communications network, wherein (i) the resource management computing system is owned by a resource management service entity, (ii) each of the resource management service entity, offerer, and requester are separate entities, and (iii) the resource management computing system facilitates direct electronic communications between the offerer and requester; receiving, with the resource management computing system, employee data sent from the computing device of the offerer, wherein the received employee data describes one or more attributes of the underutilized employee currently under the employ of the offerer, and the one or more attributes are associated with one or more services the underutilized employee has performed for the offerer; storing the received employee data in an employee data database of the resource management computing system; receiving, with the resource management computing system, a search query sent from the computing device of the requester, wherein the search query describes one or more 2 Appeal2017-006690 Application 13/7 48,389 requester-desired employee attributes associated with fulfilling an employment need of the requester; generating one or more search results based on comparing the one or more requester-desired employee attributes with the one or more underutilized employee attributes using the resource management computing system; transmitting the one or more search results from the resource management computing system to the computing device of the requester to allow the requester to view the search results, the one or more search results including at least a portion of the stored employee data of the underutilized employee; directing one or more electronic messages regarding the underutilized employee from the computing device of the requester to the computing device of the offerer using the resource management computing system; generating, within the resource management computing system, one or more electronic data platforms for facilitating an agreement process between the offerer and requester to temporarily transfer the underutilized employee from the offerer to the requester, wherein the one or more electronic data platforms include one or more provisions for negotiation via electronic communications within the resource management computing system by the offerer and requester; receiving, with the resource management computing system, an input from at least one of the computing devices of the offerer and requester indicating termination of the temporary transfer; and updating the employee data stored in the employee data database of the resource management computing system to reflect that the temporary transfer has ended. Rejections on Appeal Claims 1-5, 7-17, and 19-21 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Answer 2-7. 3 Appeal2017-006690 Application 13/7 48,389 Claims 1-3, 5, 8, 10, 11, 13-15, 17, and 21 stand rejected under pre- AIA 35 U.S.C. § I03(a) as being unpatentable over Cotten (US 2006/0047551 Al; published March 2, 2006) and Smith, III (US 2003/0177052 Al; published September 18, 2003). Answer 7-18. Claim 4 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Cotten, Smith, III, and Jones (US 2009/0132500 Al; published May 21, 2009). Answer 18-19. Claims 7, 9, and 16 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Cotten, Smith, III, and Brimhall (US 2009/0276233 Al; published November 5, 2009). Answer 19-21. Claim 12 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Cotten, Smith, III, and Fallah (US 2011/0167059 Al; published July 7, 2011). Answer 21-22. Claims 19 and 20 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Cotten, Smith, III, Brimhall, and Cameron (US 2008/0300954 Al; published December 4, 2008). Answer 22-27. ANALYSIS Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed August 12, 2016), the Reply Brief (filed March 17, 2017), the Examiner's Answer (mailed January 19, 2017), and the Final Office Action (mailed December 17, 2015) for the respective details. 35 U.S.C. § 101 Rejection The Supreme Court has set forth an analytical "framework for distinguishing patents that claim laws of nature, natural phenomena, and 4 Appeal2017-006690 Application 13/7 48,389 abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine whether the claims at issue are "directed to" a judicial exception, such as an abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to be directed to an abstract idea, then we consider under step two whether the claims contain an "inventive concept" sufficient to "transform the nature of the claim into a patent-eligible application." Alice, 134 S. Ct. at 2355 (internal quotations and citation omitted). Noting that the two stages involve "overlapping scrutiny of the content of the claims," the Federal Circuit has described "the first-stage inquiry" as "looking at the 'focus' of the claims, their 'character as a whole,"' and "the second-stage inquiry (where reached)" as "looking more precisely at what the claim elements add-specifically, whether, in the Supreme Court's terms, they identify an 'inventive concept' in the application of the ineligible matter to which (by assumption at stage two) the claim is directed." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (internal citations omitted). In considering whether a claim is directed to an abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. 5 Appeal2017-006690 Application 13/7 48,389 Step One: Whether the Claims Are Directed to a Patent-Ineligible Concept (Abstract Idea) The Examiner finds the claims are directed to an abstract idea because: The instant claim receives and stores employee data including attributes (SmartGene stored information) then it receives requested desired employee attributes (SmartGene new information) and finally it compares the stored employee data to the requested attributes to generate search results (SmartGene using rules to identify options). The instant claim like SmartGene is found to be abstract. Answer 5---6. Appellant argues: Independent claim 1, however, recites features that cannot be performed using mental steps, including, for example, "facilitat[ing] direct electronic communications between the offerer and requester," and "generating . . . one or more electronic data platforms for facilitating an agreement process between the offerer and requester." Since claim 1 cannot be performed solely using mental steps, the abstract idea of SmartGene is sufficiently different from, and therefore inapplicable to, claim 1 . ... . . . . The Office Action offers no explanation as to how facilitating an agreement process to transfer an underutilized employee to a requester and the transaction performance guaranty in buySAFE are alike. Rather, the Office Action offers a mere conclusory statement that the facially disparate concepts are similar. Appeal Brief 19--20. The Federal Circuit has repeatedly confirmed since Alice that the category of abstract ideas embraces "fundamental economic practice[ s] long prevalent in our system of commerce," including "longstanding commercial practice[ s ]" and "method[ s] of organizing human activity." E.g., Intellectual 6 Appeal2017-006690 Application 13/7 48,389 Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016) (internal quotations and citation omitted). Our reviewing court has explained that claims directed to "the mere formation and manipulation of economic relations" and "the performance of certain financial transactions" are properly held to be directed to abstract ideas. Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); see also, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (finding computer-implemented system for "using advertising as a currency ... [on] the Internet" to be ineligible); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355 (Fed. Cir. 2014) (finding computer-implemented system for guaranteeing performance of an online transaction to be ineligible); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (finding computer-implemented system for "verifying the validity of a credit card transaction over the Internet" to be ineligible). Also, our reviewing court has repeatedly held that information collection and analysis, including when limited to particular content, is within the realm of abstract ideas. See, e.g., Elec. Power Grp., 830 F .3d at 1353 (holding that "collecting information, analyzing it, and displaying certain results of the collection and analysis" are "a familiar class of claims 'directed to' a patent-ineligible concept"); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (claims directed to collecting information and analyzing it according to certain rules were directed to an abstract idea); CyberSource, 654 F.3d at 1370 (computer- implemented system for "verifying the validity of a credit card transaction over the Internet" was patent-ineligible). 7 Appeal2017-006690 Application 13/7 48,389 Further, the Federal Circuit has repeatedly noted that "the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the Office carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, "together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal quotations and citation omitted). We have considered all of Appellant's arguments challenging the characterization of the pending claims as being directed to abstract ideas, but we do not find them to be persuasive of error (Appeal Brief 18-22). Rather, we agree with the Examiner, at step one of the Alice analysis, that the claims are directed to one or more abstract ideas because the focus of the claims is on "the mere formation and manipulation of economic relations" and "the performance of certain financial transactions," which as noted above, are properly held to be directed to abstract ideas under Federal Circuit precedent. Accordingly, we tum to the second step of the Alice analysis, in which we determine whether the additional elements of the claims transform them into patent-eligible subject matter. 8 Appeal2017-006690 Application 13/7 48,389 Step Two: Whether Additional Elements Transform the Idea into Patent-Eligible Subject Matter The Examiner finds: Where the steps of "providing access ... transmitting the one or more search results ... directing one or more electronic messages ... receiving, with the resource management computing system, an input ... updating the employee data," are viewed as pre/post extra solution activity that cannot transform the abstract idea into patent eligible subject matter. Answer 6-7. Appellant contends the limitations "directed to temporarily transferring underutilized employees to increase utilization, are just some of the improvements claim 1 makes to the technical field of workforce management." Appeal Brief 23. To the extent Appellant maintains that the claimed subject matter is significantly more than the abstract idea because it is novel, Appellant misapprehends the law. As the Federal Circuit has explained, a "' ... claim for a new abstract idea is still an abstract idea .... "' SAP Am., Inc. v. Investpic, LLC, No. 2017-2081, 2018 WL 3656048, *1 (Fed. Cir. August 2, 2018) (quoting Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016)). Although we disagree with Appellant's assertion of the claims' novelty over the prior art (as discussed in the next section), even assuming the technique claimed was"' ... innovative, or even brilliant,"' that would not be enough for the claimed abstract idea to be patent eligible. See SAP Am., 2018 WL 3656048 at *1 (internal citation omitted). Appellant contends the alleged particular machine described in claim 1 includes a resource management computing system that performs the 9 Appeal2017-006690 Application 13/7 48,389 claimed method and, therefore, claim 1 describes "aspects other than what is well understood, routine and conventional in the field, and add unconventional steps that confine the claim to a particular useful application," the functional aspects. Appeal Brief 24. Appellant argues, "[i]n making its Section 101 rejection, the Office Action for the most part ignores the recitations above from independent claim 1, and thus, the Office Action improperly disregards particular recitations that substantially define the reach of the claim." Appeal Br. 25. It is Appellant's position that disregarding "particular recitations that substantially define the reach of the claim" is counter to the to US PTO' s JULY 2015 UPDATE: SUBJECT MATTER ELIGIBILITY wherein "[t]he Update emphasizes that 'even if an element does not amount to significantly more on its own ... , it can still amount to significantly more when considered in combination with the other elements of the claim."' Id. (quoting JULY 2015 UPDATE2). The Examiner finds claim 1 's limitations do nothing more than call on a computing device with basic functionality to do what it has been programed to do - implement an abstract idea on a computer. Where the steps of "providing access . . . transmitting the one or more search results . . . directing one or more electronic messages ... receiving, with the resource management computing system, an input . . . updating the employee data," are viewed as pre/post extra solution activity that cannot transform the abstract idea into patent eligible subject matter. Answer 6-7. We find that the Examiner does not assert, without support, that the claim limitations were well understood, routine, and conventional in the 10 Appeal2017-006690 Application 13/7 48,389 field; instead, the Examiner provides specific rational for her position that the claims are directed to an abstract idea wherein the additional elements of the claims do not amount to significantly more because they do not "improve another technology, improve the functioning of the computer itself, or apply the judicial exception with or by use of a particular machine." Ans. 6. Appellant does not identify or otherwise explain the error in these determinations. Further, we find unpersuasive Appellant's conclusory arguments that the recitations the Examiner allegedly ignored amount to significantly more when considered with the other claim limitations or elements. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ( attorney arguments or conclusory statements are insufficient to rebut a prima facie case). Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of claims 1-5, 7-17, and 19-21. 35 U.S.C. § 103(a) Rejection Appellant argues that the Final Office Action "fails to explain where Cotten allegedly teaches the 'resource management computing system' of independent claim" and "the Office Action does not cite any paragraph numbers, figures, or reference numbers associated with the 'resource management computing system"' and "Smith does not remedy this deficiency of Cotten, and was not cited for such a purpose. (See id. at pp. 11-13.)" Appeal Brief 33. The Examiner finds: The prior art need[] not use the same language as the claim as long as one of ordinary skill in the art would have recognized the claimed invention in the prior art. The Office maintains that the event coordinator system of ... [Cotten] in combination with 11 Appeal2017-006690 Application 13/7 48,389 Smith would have recognized ... [Cotten's] "event coordinator system" [ element 202] as the functional equivalent of the claimed "resource management computing system." Answer 44. Appellant contends: Cotten fails to teach or suggest, "temporarily transferring an underutilized employee of an offeror to a requester" and "receiving . . . an input ... indicating termination of the temporary transfer," as recited in claim 1. Smith does not remedy this deficiency of Cotten, and was not cited for such a purpose. (See Examiner's Answer at pp. 10-12.) Another example of the deficiencies of Cotten (and Smith) is that Cotten does not teach or suggest that event operators 108 own event coordinator system 202. Rather, Cotten teaches that event operators 108 work for agencies 106, and agencies 106 contract with event coordinator 104 ( that uses event coordinator system 202) to provide event operators 108 for events. (See Cotten at paras. [0044] and [0047], and FIG. 1.) Accordingly, Cotten fails to teach or suggest, "the resource management computing system is owned by a resource management service entity," as recited in independent claim 1. Smith does not remedy this deficiency of Cotten, and was not cited for such a purpose. (See Examiner's Answer at pp. 10-12.) Reply Brief 6. We do not find Appellant's arguments persuasive. Smith, III discloses: A method of human resources management is provided to allow an employer with excess available employee resources to loan one or more employees to another employer with need for additional employees in an efficient manner by avoiding the costly conventional processes of laying off excess employees or hiring new employees. Smith, III, Abstract; see Answer 11-12. Further, the ownership of the event coordinator system is not a subject of novelty because, regardless of what 12 Appeal2017-006690 Application 13/7 48,389 entity owns the system, the system will perform in the same manner as it was designed. See Answer 45--46. Appellant argues, "Cotten fails to teach or suggest that 'the resource management computing system facilitates direct electronic communications between the offerer and requester,' and 'directing one or more electronic messages ... from the computing device of the requester to the computing device of the offeror. "' Reply Brief 7. Appellant further contends that Smith does not address the deficiency of Cotten because "Smith also does not teach or suggest that the web-based platform facilitates direction communication between the companies, but rather, teaches that the companies each communicate with the platform instead of directly with each other. (See Smith at para. [0032], indicating that a secure server 208 of the platform sends an e-mail to a company with an employee in the employee database.)" Reply Brief 7-8. We do not find Appellant's arguments persuasive because both Cotten and Smith, III disclose communications between the two interested parties (offerer, requester). See Answer 9-11. Further, claim 1 's direct communication limitation does not preclude email. It is understandable that in order for either Cotten or Smith, III to manage resources between at least two entities, there fundamentally has to be some form of communication between them. Appellant further argues, "[y Jet another example of the deficiencies of Cotten (and Smith) is that Cotten does not teach or suggest transmitting search results from event coordinator 104/event coordinator system 202 to manufacturer 102/manufacturer system 211." Reply Brief 8. Appellant contends, "[i]n para. [0051], Cotten teaches sending a report 130 to 13 Appeal2017-006690 Application 13/7 48,389 manufacturer 102. Cotten does not describe the content of report 130, and thus, does not teach that report 130 includes search results." Reply Brief 8. Cotten discloses in paragraph 51, "[b ]ased on the data received by the event coordinator 104, the event coordinator 104 provides further instructions to the agencies 106 or event personnel 108." "As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we do not find Appellant's arguments persuasive of Examiner error. Appellant contends, "Cotten fails to teach or suggest, 'generating, within the resource management computing system, one or more electronic data platforms for facilitating an agreement process between the offerer and requester,' as recited in independent claim 1" and "Smith does not remedy this deficiency of Cotten" because "Smith teaches a web-based platform for loaning employees of one company to another company. (See Smith at para. [0019].)" Reply Brief 9. Appellant's Specification discloses in paragraph 32, "[t]he resource management computing system 110 may facilitate the agreement process by providing electronic forms or other data platforms within the system that can be completed by the offerer 130 and/or requester 140 to negotiate the terms of the employee exchange from the offerer 130 to the requester 140." There is nothing novel about the claimed data platform based upon the Specification. It is evident that both Cotten and Smith, III disclose communication between the entities involved via electronic forms or other non-specified data platforms. See Answer 10-11. 14 Appeal2017-006690 Application 13/7 48,389 Consequently, we do not find Appellant's argument persuasive. For the foregoing reasons, we sustain the Examiner's obviousness rejections of claim 1, independent claims 15, 19, and 21, as well as dependent claims 2-5, 7-14, 16, 17, and 20 not separately argued. Reply Brief 9. DECISION The Examiner's 35 U.S.C. § 101 rejection of claims 1-5, 7-17, and 19-21 is affirmed. The Examiner's 35 U.S.C. § 103(a) rejections of claims 1-5, 7-17, and 19-21 are affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 1.136(a)(l)(v). AFFIRMED 15 Copy with citationCopy as parenthetical citation