Ex Parte Nagata

Patent Trial and Appeal Board

Aug 7, 2017

13867610 (P.T.A.B. Aug. 7, 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.
13/867,610 04/22/2013 Masaya Nagata 70404.2301/ha 5205
54072 7590 08/09/2017
SHARP KABUSHIKI KAISHA
C/O KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
GLASS, RUSSELL S
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
08/09/2017 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):
JKEATING@KBIPLAW.COM
u spto @ kbiplaw. com
epreston @ kbiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAYA NAGATA
Appeal 2015-0083051
Application 13/867,6102
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—8 and 20-27. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“Br.,” filed
December 18, 2014) and the Examiner’s Answer (“Ans.,” mailed July 6,
2015) and Non-Final Office Action (“Non-Final Act.,” mailed August 1,
2014).
2 Appellant identifies Sharp Kabushiki Kaisha as the real party in interest.
Br. 1.
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CLAIMED INVENTION
Appellant’s claimed invention “is directed to service management
methods for degradables and consumables and service management network
systems related with the method” and, more particularly, to “management,
supply, billing, and other related methods for the degradable and
consumables, including those used in copying machines, printers, and other
image forming apparatuses, which the service receiver can keep a stock of
and be charged on the quantities of the products used” (Spec. 1—2).
Claims 1 and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A service management method, executing a
computer program on a computer, which comprises the steps of:
i) making an access to a management table for storing
therein data specifying a product-in-circulation delivered to a
service receiver and a current state of use of the product-in-
circulation by the service receiver as recorded when occasion
demands, and reading out from the management table an actual
amount of the product-in-circulation consumed by the service
receiver, which can be considered as a purchase; and
ii) calculating an account chargeable to the service
receiver based on the actual amount of the product-in-circulation
consumed read out in said step i).
REJECTIONS
Claims 1—8 and 20-27 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
Claims 1—8 and 20-27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brewster et al. (US 7,065,497 Bl, iss. June 20, 2006)
(hereinafter “Brewster”) and Addressograph-Multigraph (GB 546272,
pub. July 6, 1942).
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Application 13/867,610
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, 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 § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp.,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts,”
id., e.g., to an abstract idea. If the claims are not directed to a patent-
ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct.
at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
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technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Appellant does not contest the Examiner’s finding here that the claims
are directed to an abstract idea, i.e., to the fundamental economic practice of
charging a user per amount of product used (see Non-Final Act. 3). Instead,
Appellant argues that independent claims 1 and 20 recite significantly more
than an abstract idea because the claims improve the functioning of the
computer itself (Br. 6). Appellant ostensibly maintains that the functioning
of the computer is improved because “information is collected about the
product-in-circulation via the management table, and then an account is
chargeable to a service receiver based on the actual amount of product-in-
circulation, which could not be accomplished via a generic computer” (id.).
However, there is a fundamental difference between computer functionality
improvements, on the one hand, and uses of existing computers as tools to
perform a particular task, on the other. Indeed, the Federal Circuit applied
that distinction in Enfish, LLC v. Microsoft Corp., 822 F.3d. 1327 (Fed. Cir.
2016) in rejecting a § 101 challenge at the step one stage of the Alice
analysis because the claims at issue focused on a specific type of data
structure, i.e., a self-referential table for a computer database, designed to
improve the way a computer carries out its basic functions of storing and
retrieving data, and not on asserted advances in the uses to which existing
computer capabilities could be put. Id. at 1335—36.
We find no parallel here between independent claims 1 and 20 and the
claims at issue in Enfish nor any comparable aspect in either claim 1 or
claim 20 that represents an improvement to computer functionality. The
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alleged functionality that Appellant touts does not concern an improvement
to computer capabilities but instead relates to an alleged improvement in
charging users for the amount of product consumption for which a computer
is used as a tool in its ordinary capacity.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claims 1 and 20 under 35 U.S.C. § 101. We also sustain the
Examiner’s rejection of dependent claims 2—8 and 21—27, which are not
argued separately.
Obviousness
Appellant argues that the Examiner erred in rejecting claims 1 and 20
under 35 U.S.C. § 103(a) because Brewster does not disclose or suggest
“reading out from the management table an actual amount of the product-in-
circulation consumed by the service receiver, which can be considered as a
purchase” and “calculating an account chargeable to the service receiver
based on the actual amount of the product-in-circulation consumed read
out,” as recited in claim 1, and similarly recited in claim 20 (Br. 17—18).
That argument is not persuasive at least because claims 1 and 20 are rejected
under 35 U.S.C. § 103(a) as obvious over the combination of Brewster and
Addressograph-Multigraph, not over Brewster alone. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”).
Appellant’s argument also is not responsive to the Examiner’s
rejection. Although the Examiner finds that Brewster discloses a data
storage device that can be considered a management table, the Examiner
acknowledges that Brewster fails to teach reading out from the management
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table an actual amount of the product-in-circulation consumed by the service
receiver (Non-Final Act. 4; see also Ans. 7). And the Examiner cites
Addressograph-Multigraph as disclosing the argued features (id. ).
In view of the foregoing, we sustain the Examiner’s rejection of
independent claims 1 and 20 under 35 U.S.C. § 103(a). We also sustain the
Examiner’s rejection of dependent claims 2—8 and 21—27, which are not
argued separately.
DECISION
The Examiner’s rejection of claims 1—8 and 20—27 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejection of claims 1—8 and 20—27 under 35 U.S.C.
§ 103(a) 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)(l)(iv).
AFFIRMED
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