Ex Parte Olsen et al

Patent Trial and Appeal Board

Aug 24, 2017

10842907 (P.T.A.B. Aug. 24, 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.
10/842,907 05/10/2004 John A. Olsen III 018360/269828 3208
I45744 7590 08/28/2017
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EXAMINER
Bank of America Plaza SENSENIG, SHAUN D
101 South Tryon Street, Suite 4000
Charlotte, NC 28280-4000 ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN A. OLSEN III, DAVID L. BRADLEY,
and RHESA M. JENKINS
Appeal 2016-007258
Application 10/842,907
Technology Center 3600
Before ERIC S. FRAHM, KRISTEN L. DROESCH, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—3, 5—11, 61—63, and 65—70, which are all the claims
pending and rejected in the application. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
Appeal 2016-007258
Application 10/842,907
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
shipping and delivering items. See generally Spec. 1. Claim 1 is exemplary:
1. A system for determining whether a customer has one or
more items to be picked up at a customer location comprising:
a service provider computing device comprising one or
more memory storage areas, one or more processors, and one or
more databases storing a plurality of location identifiers,
wherein (1) each location identifier (a) identifies a
customer location and (b) is associated with one or more network
addresses that correspond respectively to one or more customer
computing devices at the customer location, (2) each of the
respective customer computing devices (a) comprises one or
more memory storage areas and one or more processors and (b)
is associated with a network address for external
communications, and (3) the service provider computing device
and the respective customer computing devices are in
communication with one or more communications networks
operating in accordance with one or more communications
protocols for communicating between the service provider
computing device and the respective customer computing
devices,
wherein the service provider computing device is
configured to:
(a) receive input from a user selecting a location identifier
from the plurality of location identifiers,
(b) after receiving input selecting the location identifier,
determine whether the strength of a communications signal from
the customer computing device associated with the selected
location identifier meets or exceeds a predetermined value,
(c) after determining the strength of the communications
signal from the customer computing device associated with the
selected location identifier meets or exceeds the predetermined
value, establish electronic communication with the customer
computing device associated with the selected location identifier
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using the network addresses associated with the location
identifier, and
(d) after establishing electronic communication with the
customer computing device, receive data from the customer
computing device (i) indicating that a customer has an item to be
picked up, for shipment by a service provider, at the customer
location, the data further indicating a location in which the item
is to be shipped and a designated class, among a plurality of
classes, identifying a priority of the shipment of the item, and (ii)
comprising information about the item to be picked up from the
customer location.
References and Rejections
Claims 1—3, 5—11, 61—63, and 65—70 are rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
Claims 1—3, 5—11, 61—63, and 65—70 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Beard (US 6,124,800; issued Sept. 26,
2000), Jeong (US 5,912,628; issued June 15, 1999), French (US
2003/0041238 Al; published Feb. 27, 2003), and Bennett (US 7,458,612
Bl; issued Dec. 2, 2005)
ANALYSIS
35 U.S.C. § 101
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
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appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.1
The Examiner rejects the claims under 35U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Non-Final Act. 2—3;
Ans. 3—9. In particular, the Examiner finds the claims are direct to the
abstract idea of collecting, transferring, and comparing information. See
Ans. 3—8. The Examiner further finds the claims use generic computer
components to perform generic computer functions. See Ans. 3—9.
Appellants argue the Examiner erred. See App. Br. 6—21; Reply Br. 2—16.
Appellants have not persuaded us of error. Section 101 of the Patent
Act provides “[wjhoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title.” 35 U.S.C. § 101. That provision “contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Banklnt’l,
134 S. Ct. 2347, 2354 (2014). According to the Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
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
1 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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claim” into a patent-eligible application. . . . We have
described step two of this analysis as a 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.”
Alice Corp., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has “treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348-49 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission
LLC v. Wells Fargo Bank, Natl Ass ’n, 776 F.3d 1343, 1347 (Fed. Cir.
2014). “In a similar vein, we have treated analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category.”
Elec. Power, 830 F.3d at 1354 (emphasis added); see also In re TLI
Commons. LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). “And we
have recognized that merely presenting the results of abstract processes of
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collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis.” Elec. Power, 830 F.3d at 1354 (emphasis added);
see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714—15 (Fed. Cir.
2014).
The rejected claims “fall into a familiar class of claims ‘directed to’ a
patent-ineligible concept.” Elec. Power, 830 F.3d at 1353. Contrary to
Appellants’ arguments (App. Br. 6—12; Reply Br. 2—10), the claims are
similar to the claims of Electric Power, and are focused on the combination
of abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354.
For example, claim 1 is directed to receiving or collecting information
(“storing a plurality of location identifiers . . . receive input from a user . . .
receive data from the customer computing device”), and analyzing
information (“determine whether the strength of a communication signal. . .
.”). Similarly, claim 61 is directed to receiving or collecting information
(“receiving input from a user . . . receiving data from the customer
computing device”), analyzing information (“determining whether the
strength of a communication signal. . . .”), and displaying information
(“causing display”). See Elec. Power, 830 F.3d at 1353. Dependent claims
are directed to similar functions or processes, and Appellants have not
shown such claims are directed to other non-abstract functions or processes.
See claims 2, 3, 5—11, 62, 63, and 65—70.
Regarding the “efficient techniques” argued by Appellants (App. Br.
18—19; Reply Br. 9, 14),2 our reviewing court has declared:
2 Appellants also advance arguments that are not commensurate with the
scope of the claims. See, e.g., App. Br. 16—17; Reply Br. 8—9, 14—15. For
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While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself See Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter.”).
Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphases added).
Applying this reasoning to the rejected claims, we similarly find any
purported “efficient techniques” come from the capabilities of general-
purpose computers (the recited “service provider computing device” and
“customer computing device”), rather than the claimed steps or functions.* * 3
Similar to the claims of FairWarning, the rejected claims “are not directed to
an improvement in the way computers operate” and “the focus of the claims
is not on ... an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools.” FairWarning, 839
F.3d at 1095.
Further, Appellants’ assertion regarding pre-emption (App. Br. 20) is
unpersuasive, because “[wjhile preemption may signal patent ineligible
example, Appellants assert the claims “minimizes processing capacity of
communication devices and conserves memory space of communication
devices” (Reply Br. 14—15), but have not shown the claims require such
minimization or conservation. In any event, Appellants’ unsupported
assertion is unpersuasive, as discussed below in connection with
FairWarning.
3 Appellants argue for example, the recited “service provider computing
device” is a Delivery Information Acquisition Device (DIAD). App. Br. 17.
That example does not limit the term “service provider computing device” to
a DIAD.
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subject matter, the absence of complete preemption does not demonstrate
patent eligibility .... Where a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP, 788 F.3d at 1362—63 (“that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract”).
Regarding Alice step two, contrary to Appellants’ assertion (App. Br.
12—21; Reply Br. 10—16), Appellants have not shown the claims in this case
require an arguably inventive set of components or methods, or invoke any
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355.
Further, contrary to Appellants’ arguments (App. Br. 12—21; Reply
Br. 10—16), the claims are similar to the claims of Electric Power, because
they do not require any nonconventional computer, network, or display
components, or even a “non-conventional and non-generic arrangement of
known, conventional pieces,” but merely call for performance of the claimed
information collection, analysis, and display functions on generic computer
components and display devices. See Elec. Power, 830 F.3d at 1355; see
also Claim 1 (reciting “u service provider computing device . . . storing a
plurality of location identifiers, . . . respective customer computing devices .
. . wherein the service provider computing device is configured to: . . .
receive input. . . determine whether the strength of a communications signal
from the customer computing device associated with the selected location
identifier meets or exceeds a predetermined value . . . receive data from the
customer computing device”); Claim 61 (reciting “causing display, via a
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service provider computing device, of a plurality of location identifiers . . .
receiving data from the customer computing device”) (emphases added).
Dependent claims call for similar generic components and devices, and
Appellants have not shown such claims require any non-conventional
components or devices. See claims 2, 3, 5—11, 62, 63, and 65—70.
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer, network,
and display technology for collecting, analyzing, and presenting the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
computers and networks that are not even arguably inventive are
“insufficient to pass the test of an inventive concept in the application” of an
abstract idea. See Elec. Power, 830 F.3d at 1355.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claims 1—3, 5—11, 61—63 and 65—70.
35 U.S.C.§ 103
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in finding the cited prior art portions
teach “wherein the service provider computing device is configured to: (a)
receive input from a user selecting a location identifier from the plurality of
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location identifiers,” as recited in independent claim 1 (emphasis added).4
See App. Br. 26—28; Reply Br. 18—19.
The Examiner cites Beard and finds:
receiving input from a user selecting a location identifier from
the plurality of location identifiers (i.e. via at least Figure 1 with
accompanying description and/or Reference numerals 104 and
106 with corresponding detailed description and/or Abstract for
the proposition that the end location and provider are
communicating) [. ]
Non-Final Act. 4.
We agree with Appellants that the Examiner has not shown the
cited prior art portions teach the disputed limitation. See App. Br. 26—
28. As pointed out by Appellants, Beard teaches “a route delivery
vehicle 102 is utilized to transport goods and or services and related
equipment to a remote product or service end point location 104. . . .
The end point location 104 utilizes a notifier communication unit 106
to collect, process and store product information data.” See App. Br.
27; Beard 2:59—3:2. The Examiner cites Beard’s reference numerals
104 and 106 (Non-Final Act. 4) for the mapping, but does not explain
how Beard’s remote product or service end point location 104 and its
associated notifier communication unit 106 teach the disputed
limitation.
In response to Appellants’ arguments, the Examiner does not
clarity the mapping. See Ans. 13. Instead, the Examiner incorrectly
asserts “Appellants remarks on Bennett are not relevant.” Ans. 13.
4 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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As discussed above, Appellants’ arguments focus on Beard, which the
Examiner cites for the disputed limitation—not Bennett. The
Examiner also responds “French was used to teach the elements
related to geographic resources and location.” Ans. 13. The
Examiner’s finding about French—even if it is correct—does not
explain how under the Examiner’s mapping, the cited references teach
“wherein the service provider computing device is configured to: (a)
receive input from a user selecting a location identifier from the
plurality of location identifiers,” as required by the claim.
Further, as applied by the Examiner, the teachings of Jeong and
Bennett do not remedy the deficiencies discussed above. See Non-Final Act.
5-7.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 1.
Independent claim 61 recites a claim limitation that is substantively
similar to the disputed limitation of claim 1. See claim 61. Therefore, for
similar reasons, we reverse the Examiner’s rejection of independent claim
61.
We also reverse the Examiner’s rejection of corresponding dependent
claims 2, 3, 5—11, 62, 63, and 65—70.
DECISION
We affirm the Examiner’s decision rejecting claims 1—3, 5—11, 61—63,
and 65—70.
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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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