Ex Parte Luhman et al

Patent Trials and Appeals BoardAug 24, 2018

11756677 - (D) (P.T.A.B. Aug. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/756,677 06/01/2007 63759 7590 08/28/2018 DUKEW. YEE YEE & AS SOCIA TES, P.C. P.O. BOX 802333 DALLAS, TX 75380 FIRST NAMED INVENTOR Thomas Stewart Luhman 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. 07-0223-US-NP 1248 EXAMINER PEACHER, LORENA R ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 08/28/2018 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): 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 THOMAS STEWART LUHMAN, JOHN JOSEPH ESPOSITO, JAMES DEAN COTTON, EDDY JOE SHARP, and GEROULD K. YOUNG 1 Appeal2017-005608 Application 11/756,677 Technology Center 3600 Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and NINA L. MEDLOCK, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellant, the real party in interest is The Boeing Company of Chicago, Illinois. See App. Br. 2. Appeal2017-005608 Application 11/756,677 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134 of the Examiner's final decision rejecting claims 1, 2, 4--12, and 19-28. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). BACKGROUND Appellants' invention is directed to an improved data processing system and in particular to a method and apparatus for processing data. Spec. 1 Claim 1 is illustrative: 1. A method of designing and building a part for a product using technology readiness levels for materials for the part, the method comprising: identifying properties for use in designing the part to form identified properties; storing a plurality of entries including cost and cost to change the technology readiness level for material, the entries further identifying materials and the technology readiness levels for the materials in a database, the technology readiness levels being a measure used to assess maturity of materials and comprising a numerical scale of technology readiness and the materials including allowable materials and materials in a developmental pipeline; developing a first design for the part using a first material selected from the database, wherein the first material has a first technology readiness level from the database, the first technology readiness level defined by a first number of identified properties including structural properties; developing a second design for the part using a second material selected from the database, wherein the second material has a second technology readiness level from the database, the second technology readiness level defined by a 2 Appeal2017-005608 Application 11/756,677 second number of identified properties including property test matrixes; comparing on a computer the first design to the second design using the first technology readiness level and the second technology readiness level to form a comparison, wherein the comparing includes: comparing a property of the first material to the property of the second material, comparing a cost of the first and second material, comparing a cost and a time to change the technology readiness level of at least one of the first material and the second material, and comparing how much time is present before production of the product is to begin with a particular time needed to increase the technology readiness level for a material to a desired technology readiness level; selecting a selected material from the first material and the second material using the comparison, the selected material corresponding to a corresponding design selected from the first design and a second design; developing the selected material to an allowable material within an amount of time present before production of the product is to begin, if the selected material is not an allowable material when selected; and physically building the part according to the corresponding design using the selected material. Appellants appeal the following rejection: Claims 1, 2, 4--12, and 19-28 under 35 U.S.C. Â§ 101 as directed to non-statutory subject matter. PRINCIPLES OF LAW An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The 3 Appeal2017-005608 Application 11/756,677 Supreme Court, however, has long interpreted Â§ 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S.Ct. 2347, 2354 (2014). In determining whether a claim falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court's two- step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). In accordance with that framework, we first determine whether the claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356 ("[O]n 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."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing respondents' claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the Â§ 101 categories of possibly patentable subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978) ("Respondent's application simply provides a new and presumably better method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S. 63, 64 (1972) ("They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals."). The patent-ineligible end of the spectrum includes fundamental economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611; mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of 4 Appeal2017-005608 Application 11/756,677 scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent- eligible side of the spectrum are physical and chemical processes, such as curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores," and a process for manufacturing flour, Gottschalk, 409 U.S. at 69. If the claim is "directed to" a patent-ineligible abstract idea, we then consider the elements of the claim-both individually and as an ordered combination-to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Alice, 134 S. Ct. at 2355. This is a search for an "inventive concept"-an element or combination of elements sufficient to ensure that the claim amounts to "significantly more" than the abstract idea itself. Id. In addition, the Federal Circuit has held that if a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent-eligible under Â§ 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible underÂ§ 101."). Claims involving data collection, analysis, and display are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (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"); see also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). Claims that recite an improvement to a particular computer 5 Appeal2017-005608 Application 11/756,677 technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) ( detennining claims not abstract because they "focused on a specific asserted improvement in computer animation"). The prohibition against patenting an abstract idea "cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity." Bilski, 561 U.S. at 610----11 (internal citation and quotation marks omitted). The Court in Alice noted that "' [ s ]imply appending conventional steps, specified at a high level of generality,' was not 'enoughÂ· [in ~~![ayo] to supply an 'inventive concept"' Alice, 134 S. Ct. at 2357 (quoting lviayo, 132 S. Ct. at 1300, 1297, 1294). ANALYSIS Rejection under 35 USCÂ§ 101 The Examiner determines that the claims are directed to the abstract idea of designing parts. The Examiner determines that the steps of identifying properties for use in designing a part, storing a plurality of entries including cost and cost to change the technology readiness level ("TRL") for materials in a database, developing a first design using a first material, developing a second design using a second material, comparing designs, selecting designs and building the design describe the abstract idea. Fin. Act. 5. Claim 1 is, therefore, directed to collecting, comparing, developing and selecting data and, as such, is directed to collection, analysis, and display of data and thus, we agree that claim 1 is directed to an abstract idea. 6 Appeal2017-005608 Application 11/756,677 The Examiner finds that the claim elements other than the abstract idea are routine and conventional activities that do not add meaningful limitations beyond further narrowing the abstract idea and, thus, do not amount to significantly more. Fin. Act. 6. We agree that claim 1 does not include significantly more than the abstract idea of collecting, analyzing and displaying data. In addition to the abstract idea of collecting, analyzing and displaying data, claim 1 recites a database and a computer. Claim 1 does not recite an improvement to computer or database capabilities but instead recites a method of collecting, analyzing, and displaying data for which a database and a computer are used as tools in their ordinary capacity. Claim 1 also recites developing the selected material to an allowable material and physically building the part according to the corresponding design using the selected material. These limitations do not reflect a patent- eligible application of the patent-ineligible abstract idea. To the contrary, these limitations are recited at a high-level of generality and comprise routine techniques and post-solution activity that does not impart a sufficient inventive concept to claim L See Mayo, 132 S. Ct. at 1298 ("well- understood, routine, conventional activity previously engaged in by scientists who work in the field ... is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such law."); see also Parker v. F'look, 437 U.S. at 590 (''The notion that post-solution activity, no matter how conventional or obvious in itseH: can transform an unpatentable principle into a patentable process exalts form over substance"). Appellants have not persuasively shown otherwise. 7 Appeal2017-005608 Application 11/756,677 We have reviewed all the arguments (App. Br. 9-19, Reply Br. 4--9) Appellants have submitted concerning the patent eligibility of the claims. We find that our analysis above substantially covers the substance of all the arguments which have been made. But for purposes of completeness, we will address various arguments in order to make individual rebuttals of the same. Appellants analogize the claimed invention to the invention at issue in LVI cRO. App. Br. 6. Appellants contend that, as in iVfcRO, the instant claims "use a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results." App. Br. 12. vVe are not persuaded that the claimed invention is analogous to the claimed invention in AfcRO. The clairns in 1WcRO were directed to a specific asserted improvernent in computer animation, i.e., the automatic use of rules of a particular type. McRO, 837 F.3d at 1313. By contrast, claim 1, even as argued by Appellants, is a process that uses a combined order of specific rules that renders information into a specific format which simply amounts to collecting and analyzing data only. \Ve are also not persuaded of error on the part of the Examiner by Appellants' argument that claim 1 is not taught by any previously applied and overcome prior art rejections. App. Br. 13. To the extent .Appellants maintain that the limitations of claim l necessarily amount to ''significantly more" than an abstract idea because the claimed method is allegedly patentable over the prior art, Appellants misapprehend the controlling precedent. Although the second step in the Aliceli'\lfayo framework is termed a search for an "inventive concept," the analysis is not an evaluation of 8 Appeal2017-005608 Application 11/756,677 novelty or non-obviousness, but rather, a search for '"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"' Alice, 134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304. The Appellants' argument that the Examiner ignores the emphasis on preemption is also not persuasive. App. Br. 18. "While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir.), cert. denied, 136 S. Ct. 701 (2015) (''[T]hat the clairns do not preernpt all price optimization or rnay be limited to price optimization in the e-commerce setting do not make them any less abstract."). And, ''[ w ]here a patent's claims are deemed only to disclose patent ineligible subject matter under the Aiayo framework, as they are in this case, preemption concerns are fully addressed and made moot" Ariosa, 788 F.3d at 1379. In view of the foregoing, we will sustain the Examiner's rejection of claim 1. We will also sustain the rejection as it is directed to the remaining claims because Appellants have not argued the separate eligibility of these claims. DECISION We affirm the Examiner'sÂ§ 101 rejection. 9 Appeal2017-005608 Application 11/756,677 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l.136(a). See 37 C.F.R. Â§ l.136(a)(l) (2009). ORDER AFFIRMED 10