Ex Parte Gonen et al

Patent Trial and Appeal Board

Feb 23, 2018

12354504 (P.T.A.B. Feb. 23, 2018)

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.
12/354,504 01/15/2009 Ron Gonen REC033 4908
71136 7590 02/27/2018
Maldjian Law Group LLC
106 Apple Street
Suite 200N
Tinton Falls, NJ 07724
EXAMINER
HAMILTON, MATTHEW L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
02/27/2018 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):
j maldj ian @ mlgiplaw. com
mlgdocketing @ mlgiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RON GONEN and MORLEYIVERS
Appeal 2017-0014561
Application 12/354,5042
Technology Center 3600
Before HUBERT C. LORIN, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—8 and 15—28. We have jurisdiction under 35 U.S.C.
§§ 134 and 6(b).
We AFFIRM.
1 Our Decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
Feb. 25, 2016) and Reply Brief (“Reply Br.,” filed Oct. 25, 2016), and the
Examiner’s Final Office Action (“Final Act.,” mailed Nov. 14, 2014) and
Answer (“Ans.,” mailed Aug. 25, 2016).
2 According to Appellants, the real party in interest is RecycleBank LLC.
Appeal Br. 3.
Appeal 2017-001456
Application 12/354,504
Introduction
Appellants’ application relates to “managing an incentive-based
recycling program through administering a dynamic customer loyalty
rewards program associated therewith.” Spec. 12.
Claims 1 and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A method of managing an incentive-based recycling
system comprising:
inputting customer data into a collective database;
generating a customer account from the customer data;
inputting hauler data into the collective database;
generating a hauler report from the hauler data;
inputting vendor data into the collective database;
quantifying a comingled recycling activity associated
with the customer account on the collective database, wherein
the comingled recycling activity is recorded quantified by use
of a measurement apparatus capable of producing a quantifiable
measurement;
allocating credits to the customer account, in an amount
correlating to the comingled recycling activity associated with
the customer account, on the collective database; and
enabling a customer to manage the credits associated
with the customer account.
Appeal Br. 14, Claims App.
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejections:
I. Claims 1—8 and 15—28 stand rejected under 35 U.S.C.
§ 101 as being directed to an abstract idea. Final Act. 2,
4.
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II. Claims 1—5, 7, 8, 15—17, 19—25, 27, and 28 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Krupowicz (US 2005/0038572 Al, pub. Feb. 17,
2005), Bhagavatula (US 2001/0037451 Al, pub. Nov. 1,
2001), Honegger (US 2005/0216369 Al, pub. Sept. 29,
2005), Compton (US 2004/0200689 Al, pub. Oct. 14,
2004), and Hiranoya (US 2006/0271423 Al, pub. Nov.
30, 2006).
III. Claims 6, 18, and 26 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Krupowicz,
Bhagavatula, Honegger, Compton, Hiranoya, and Berry
(US 2002/0194144 Al, pub. Dec. 19, 2002).
ANALYSIS
Rejection I (Unpatentable Subject Matter)
Claims 1—8 and 15—28
The Court in Alice emphasized the use of a two-step framework for
analysis of patentability under 35 U.S.C. § 101:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[wjhat else is there in the claims before us?” To answer that
question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application.
See Alice Corp. Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012)).
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The Examiner determines that the actions being performed in the
claim (i.e., claims 1—8 and 15—28) read upon certain methods of organizing
human activities in terms of organizing how rewards or points are provided
to the customer commensurate with the recycling material provided by the
customer. Final Act. 5,7. The Examiner determines that that the additional
elements, or combination of elements, are not sufficient to amount to
significantly more than: (i) mere instructions to implement the idea on a
computer; and (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry. Id. at 6—
8.
Appellants argue that methods of organizing human behavior are not
necessarily abstract. Appeal Br. 6—8. Appellants argue that although the
Supreme Court found that hedging is a “method of organizing human
activity” in Alice, that this determination was dicta, and the hedging was
only unpatentable subject matter because it is a fundamental economic
practice. Appeal Br. 7—8 (discussing A lice). Appellants state that in
addition to appearing in the majority opinion in Alice, this phrase also
appears in a concurrence in Alice and in a concurrence in In re Bilski, 545
F.3d 943 (Fed. Cir. 2008). Id. However, the fact that the hedging in Alice
was a “fundamental economic activity” does not mean that it is irrelevant to
being a “method of organizing human activity.” See, e.g., Richmond Screw
Anchor Co. v. United States, 275 U.S. 331, 340 (1928) (“It does not make a
reason given for a conclusion in a case obiter dictum, because it is only one
of two reasons for the same conclusion.”). In the final analysis, a “method
of organizing human activity” is generally an abstract idea because it is part
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of the fundamental building blocks of human ingenuity. See Alice, 134 S.
Ct. at 2354.
Appellants further argue that PTO guidance provides that not all
methods of organizing human activity are abstract ideas and this category
description is not meant to cover human operation of machines. Appeal Br.
8—9 (citing July 2015 Update: Subject Matter Eligibility published on July
30, 2105 (“IEG Update”) to 2014 Interim Guidance on Patent Subject Matter
Eligibility published on December 16, 2014, Federal Register, Vol. 79, No.
241 (“IEG”)). Appellants assert that the IEG Update states that the phrase
“certain methods of organizing human activity” is used to describe concepts
relating to interpersonal and intrapersonal activities, such as managing
relationships or transactions between people, social activities, and human
behavior; satisfying or avoiding a legal obligation; advertising, marketing,
and sales activities or behaviors; and managing human mental activity. Id.
at 8. Appellants agree that the claim is directed to incentive-based recycling
but argue that waste disposal does not deal with interpersonal relationships.
Appeal Br. 10. Nevertheless, the claimed invention of crediting for
recycling is based on interpersonal relationships as it is based on underlying
contractual relationships, i.e., for the amount of material and its value. See
USPTO, 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
Fed. Reg. 74,618, 74,622 (Dec. 16, 2014) (illustrative examples of abstract
ideas include creating a contractual relationship.).
Further, we determine that the claimed invention is also directed to a
fundamental economic practice, i.e., to provide credit for re-using goods.
For example, returning a milk bottle or an aluminum can from a carbonated
beverage (e.g., “soda” or “pop”) is a part of a longstanding economic
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practice of returning containers. Moreover, re-using and repurposing goods
is itself a fundamental economic practice.
Moreover, the claimed invention of providing incentives for recycling
based on valuation is similar to the subject matter of other claims determined
to be patent ineligible. See, e.g., Audatex North America, Inc. v. Mitchell
Int’l, Inc., 703 F. App’x 986 (Fed. Cir. 2017) (non-precedential) (“We
conclude that the proposed claims are directed to the abstract idea of
‘providing a vehicle valuation through the collection and use of vehicle
information.’”); see also Inventor Holdings, LLC v. Bed Bath & Beyond,
Inc., 876 F.3d 1372 (Fed. Cir. 2017) (“The idea that a customer may pay for
items ordered from a remote seller at a third-party’s local establishment is
the type of fundamental business practice that, when implemented using
generic computer technology, is not patent-eligible under Alice.”)', Smart
Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364 (Fed.
Cir. 2017) (“Taken together, the Asserted Claims are directed to the
formation of financial transactions in a particular field (i.e., mass transit) and
data collection related to such transactions.”).
Appellants assert that claim 1 recites “quantifying a comingled
recycling activity ... by use of a measurement apparatus capable of
producing a quantifiable measurement.” Reply Br. 4—5, App. Br. 10-12
(citing Spec. 135). As to the quantitative measure, we agree with the
Examiner that the quantification is an extra-solution activity of merely
obtaining input data of the sort, which does not render an invention non­
abstract. See Mayo, 566 U.S. at 78 (“Purely ‘conventional or obvious’
‘[pre]-solution activity’ is normally not sufficient to transform an
unpatentable law of nature into a patent-eligible application of such a law.”)
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(citing Parker v. Flook, 437 U.S., 574, 590 (1978); Bilski, 561 U.S. 593
(2010); Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).
Appellants further argue that the claimed system measures weight,
require a measurement apparatus, and that there is no evidence that this can
be performed using pen and paper or mentally (or manually), nor that it is an
idea of itself. See Appeal Br. 10-11; Reply Br. 4, 6—7. Appellants argue
that the Examiner erred in comparing the claimed invention to the one in
Ultramercial because in that case the invention was directed to intangible
information and the current case relates to “a process performed on tangible,
physical items” and measures physical characteristics. Reply Br. 3 (citing
Ultramercial, Inc. v. Hulu, 772 F.3d 709 (Fed. Cir. 2014); Diamond v.
Diehr, 450 U.S. 175 (1981)).
We agree with the Examiner that the claimed invention is abstract
under step one of Alice, i.e., as directed to crediting recycling. Further, we
determine that the use of a quantification measurement apparatus such as a
scale does not add significantly more here to remove the idea from the realm
of the abstract. In particular, the use of weights and scales are part of the
fundamental economic practice of trade in goods, and the invention is not
directed to an improvement in scales. See also Electric Power Group, LLC
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“The advance they
purport to make is a process of gathering and analyzing information of a
specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions.”). To the
extent that the claims recite a “quantifiable measurement” (e.g., claim 1), the
claim does not even recite the type of device used to measure the load; this
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could be a scale but it could also be another type of device such as a set of
calipers.
Appellants argue that the invention fills a need for information
technology in recycling. Appeal Br. 10. However, this is an argument that
goes to the issue of utility rather than abstractness. In any event, the
Examiner correctly finds that the recited computer functions are generic and
routine. As such, the improvement at most would be one in the abstract idea
of recycling rather than an improvement rooted in computer science. See
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Based on a review of the additional limitations, taken individually, and as a
whole, we determine that the additional limitations of claims 2—8 and 15—28
are directed to the same abstract idea of an incentive program for recycling
and do not add significantly more to remove the claims from the realm of the
Abstract.
Accordingly, we sustain the Examiner’s rejection under § 101 of
claims 1—9, 21, and 22.
Rejection II (Obviousness)
Appellants argue the patentability of claims 1—5, 7, 8, 15—17, 19-25,
27, and 28 together. We select claim 1 as representative, such that claims 2—
5, 7, 8, 15—17, 19-25, 27, and 28 stand or fall therewith. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants argue that Honegger fails to disclose comingled
recyclables, as recited in independent claim 1, i.e., “quantifying a comingled
recycling activity associated with the customer account on the collective
database, wherein the comingled recycling activity is recorded quantified by
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use of a measurement apparatus capable of producing a quantifiable
measurement.” Appeal Br. 11. Appellants argue that Honegger describes
only quantifying individual materials, not comingled materials. Id. (citing
Honegger 117). We are unpersuaded by this argument.
The Examiner’s rejection is based on a claim construction that
interprets “comingled” as satisfied by measuring a combination of materials.
The Examiner interprets the limitation “quantifying a comingled recycling
activity associated with the customer account on the collective database,
wherein the comingled recycling activity is quantified by use of a
measurement apparatus of producing a quantifiable measurement” as
measuring or determining the weight of a consolidation or combination of
recyclable materials associated with a user or consumer having an account
on the database or storage device, the weight of the recyclable material is
determined by a particular device (e.g., scale). Ans. 8—9. We disagree with
the Examiner’s construction because “comingled” or “commingled” refers to
items that are combined in the same bin. See, e.g., www.merriam-
webster.com/dictionary/commingle (“1: to blend thoroughly into a
harmonious whole ... 2: to combine (funds or properties) into a common
fund or stock. Proceeds from the sale have been commingled with other
funds.”) (last visited Feb. 23, 2018).
Nevertheless, the Examiner relies on paragraph 7 of Honegger, which,
in conjunction with paragraph 19 of Honegger, describes sorting materials
immediately before it describes quantifying them. See Honegger | 19
(“Each of the sorting stations 12 sort, and gather data relating to the
incoming recyclable material 11.”). As such, we find that Honegger
discloses, either expressly or implicitly, the quantification of “comingled”
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materials, as recited in claim 1. Therefore, we sustain the Examiner’s
rejection under 35 U.S.C. §103 of claims 1—5, 7, 8, 15—17, 19-25, 27, and
28.
Rejection III (Obviousness)
Appellants do not argue the patentability of claims 6, 18, and 26
separately from that of claim 1. Therefore, we sustain the Examiner’s
rejection under 35 U.S.C. §103 of claims 6, 18, and 26, for similar reasons
as for independent claim 1.
DECISION
The Examiner’s decision to reject claims 1—8 and 15—28 under 35
U.S.C. § 101 is affirmed.
The Examiner’s decision to reject claims 1—8 and 15—28 under 35
U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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