Ex Parte Owens et al

Patent Trial and Appeal Board

Aug 11, 2017

11554784 (P.T.A.B. Aug. 11, 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.
11/554,784 10/31/2006 Kenneth G. Owens 038190/315729 5941
67141 7590 08/15/2017
Boeing and Alston & Bird, LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/15/2017 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
patentadmin @ boeing. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH G. OWENS, WILLIAM E. KRECHEL,
and BRIAN N. SLACK
Appeal 2016-002218
Application 11/554,784
Technology Center 3600
Before JEAN R. HOMERE, JASON V. MORGAN, and
NABEEL U. KHAN, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 5—12, 14, 16—20, 22, and 24—28, which constitute all claims
pending in this application.1 Claims App’x. Claims 3, 4, 13, 15, 21, and 23
have been canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as The Boeing Company.
App. Br. 1.
Appeal 2016-002218
Application 11/554,784
Introduction
Appellants’ claimed subject matter relates to an enterprise-wide
system (10) including a control server (12) for managing and sharing with a
plurality of network access stations (14, 16, 18) inventory information
associated with parts obsolescence to mitigate the impacts thereof. Spec.
1, 5, Fig. 1. According to Appellants, the control server (12) includes a
plurality of case management elements (42, 44, 46), each containing an
inventory element (60, 62, 64), and a solution element (50, 52, 54). Fig. 3.
In particular, upon receiving a search query from a network access controller
regarding an inventory item, the control server communicates the search
query to a case management element, which communicates with other case
management elements to locate a corresponding solution element or to find a
suitable substitute if the requested inventory item is unavailable. Spec. H 6—
10.
Representative Claim
Independent claim 1 is representative, and reads as follows:
A system for managing decision support related events, cases,
and solutions relating to inventory item obsolescence and mitigation,
the system comprising:
a control server;
a plurality of network access stations associated with respective
units within an organization; and
a plurality of network access controllers, each network access
controller configured to control access by a respective network access
station to the control server via one or more security functions,
wherein the control server comprises a processor and memory
configured via execution of stored instructions to define:
a plurality of case management elements, and
a plurality of portal access controllers, each portal access
controller configured to control access by a respective user,
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Application 11/554,784
wherein each of the case management elements is in
communication with at least an associated one of the corresponding
plurality of portal access controllers to enable receipt of case
information for an inventory item, each of the portal access controllers
being associated with a corresponding one of a plurality of units
within the organization, and each of the case management elements
includes at least a corresponding one of a plurality of solution
elements, each of the solution elements being configured to receive
and store solution information regarding an inventory item
obsolescence and mitigation strategy from the at least one
corresponding portal access controller and to only enable modification
of the solution information stored by a respective solution element by
a portal access controller associated with a unit from which the
solution information is received while enabling access to view the
solution information by each other one of the solution elements,
wherein a solution element of a respective case management
element is configured to receive a search query regarding an inventory
item, to communicate the search query to the solution elements of
other case management elements and to then receive solution
information regarding an inventory item obsolescence and mitigation
strategy from a solution element of another case management element
regarding the inventory item, the solution element of the respective
case management element also being configured to modify the
solution information that was received and to then save a modified
representation of the solution information in conjunction with the
respective case management element,
wherein the solution elements of the plurality of case
management elements are configured to receive solution information
regarding an inventory item obsolescence and mitigation strategy for
the same inventory item from the portal access controllers associated
with a plurality of different units within the organization,
wherein the solution information comprises data regarding a
decision support related event relating to an inventory item
obsolescence and mitigation strategy associated with a case associated
with the corresponding unit.
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Appeal 2016-002218
Application 11/554,784
Rejection on Appeal
Claims 1, 2, 5—12, 14, 16—20, 22, and 24—28 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act.
2-7.
ANALYSIS
Appellants argue the Examiner erred in concluding that claims 1,2,
5—12, 14, 16—20, 22, and 24—28 are directed to the abstract idea of
“managing inventory item obsolescence.”2 App. Br. 7—16; Reply Br. 1—5.
In particular, Appellants argue the following:
The claims are not drawn to an abstract idea, but, instead,
to a particular technique for managing decision support related
events, cases and solutions relating to inventory item
obsolescence and mitigation. Moreover, the claims are not
directed to “a way of organizing human activities”. The
independent claims clarify that the system, method and
computer program product comprise and/or are performed, not
by a human, but by a particular machine. . . . Additionally, the
control server is further defined by amended independent Claim
1 to include, among other elements, a plurality of portal access
controllers configured to control access by respective user(s).
Each of these system components, e.g., the control server, the
network access stations, the network access controllers and the
portal access controllers, are particular machines with the
resulting system.
App. Br. 11.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed September 9, 2015) (“App. Br.”), the Reply
Brief (filed December 15, 2015) (“Reply Br.”), and the Answer (mailed
October 16, 2015) (“Ans.”) for the respective details.
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Application 11/554,784
[T]he Examiner’s Answer quotes selected passages from the
specification that describe a problem facing the industry and, in
general terms, the manner in which the problem is addressed.
Based on these selected passages from the specification, the
Examiner’s Answer then constructs an analogy to the problem
addressed by the present application and embodied by the
claims. It is noted, however, that while the claims are to be
interpreted in light of the specification, it is the claim language
that is of import in a determination as to whether the claims are
directed to an abstract idea and not selected passages from the
specification or an analogy constructed therefrom.
Reply Br. 2.
Further, Appellants ague that even if the claims were directed to an
abstract idea, they recite a combination of elements that amount to
significantly more than the abstract idea itself. App. Br. 13—14. According
to Appellants, the “claims include a lengthy recitation of particular
techniques for inventory item obsolescence and mitigation which do not ‘tie
up’ any broad concepts related to inventory management.” App. Br. 14.
These arguments are persuasive.
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101.3 In the first step, we determine whether the claims are directed to one
or more judicial exceptions (i.e., law of nature, natural phenomenon, and
abstract ideas) to the four statutory categories of invention. Id. (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1296—97 (2012)) (“Mayo”). In the second step, we “consider the
elements of each claim both individually and ‘as an ordered combination’ to
3 Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014).
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Application 11/554,784
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at
1297—98). In other words, the second step is to “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.’” Id. (citing Mayo, 132 S. Ct. at 1294).
At the outset, we note the Examiner’s acknowledgement that the
claimed invention is directed to “using networked computers and databases
in order to simplify the storing, retrieving, and displaying of information
regarding a large number [of] parts for a large number of makes of cars.”
Ans. 6. We agree with the Examiner that the claimed use of a networked
computer and database “leverages the well-known and routine capability of
computer networks in providing easy and instant access to large amounts of
information from different locations.” Id. at 6—7. Although we agree with
the Examiner that Appellants’ claims are directed to a well-known
distributed system for performing the abstract idea of tracking parts
availability (or a substitute thereof) requested by a client, we concur with
Appellants that the claimed invention is not primarily directed to the abstract
idea itself. App. Br. 11. That is, the claims are primarily directed to the
structure of the network (i.e., the interrelationship between the control
server, the network access controllers, the network access stations, the portal
access controllers, the case management elements, and the solution
elements). Id. Further, although the claimed computing system is used to
facilitate tracking the availability of parts and substitute thereof, the specific
functions of the claimed elements go beyond those of a general purpose
computer for merely storing, querying, retrieving, and receiving requested
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Application 11/554,784
parts information, as alleged by the Examiner. Ans. 8. For example, claim 1
recites a plurality of case management elements, each including a
corresponding one of a plurality of solution elements configured to receive
and store solution information regarding inventory item obsolescence,
wherein each case management element communicates to the corresponding
solution element a received search query regarding the inventory item.
Appellants correctly note that the Examiner’s findings do not explain why
such elements fail to add significantly more to the underlying exception.
App. Br. 13; Reply Br. 4—5. The Examiner finds that it is “a routine and
nominal use of the computer to convey information across a network” (Ans.
9) without showing that the recited elements are directed to merely
conveying information across a network. We therefore agree with
Appellants that the Examiner’s general characterization of the claimed
invention, as well as the Examiner’s proffer of an analogue to the problem
faced by the present invention, based upon limitations imported from the
Specification into the claims are insufficient to substantiate the Examiner’s
conclusion that the claims are directed abstract idea. Reply Br. 2—3 (citing
Ans. 9).
Consequently, we agree with Appellants that the Examiner has failed
to show on this record that the elements of claim 1 do not amount to
“significantly more” than the abstract idea of using a distributed computing
system to facilitate the tracking of parts, to mitigate the obsolescence
thereof, or that they do not add any meaningful limitations beyond generally
linking the abstract idea to the particular technological environment. Id.4
4 Considerations for determining whether a claim with additional elements
amounts to “significantly more” than the judicial exception itself include
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Application 11/554,784
Because Appellants have shown at least one reversible error in the
Examiner’s patent eligibility rejection, we need not reach Appellants’
remaining arguments. Accordingly, we reverse the Examiner’s non-
statutory subject matter rejection of claim 1, as well as the rejection of
claims 2, 5—12, 14, 16—20, 22, and 24—28, which were rejected on the same
basis.
DECISION
For the above reasons, we reverse the Examiner’s nonstatutory subject
matter rejection of claims 1, 2, 5—12, 14, 16—20, 22, and 24—28.
REVERSED
improvements to another technology or technical field (Alice Corp., 134 S.
Ct. at 2359—2360 (citing Diamond v. Diehr, 450 U.S. 175, 177—78 (1981)));
adding a specific limitation other than what is well-understood, routine
and conventional in the field, or adding unconventional steps that confine
the claim to a particular useful application (Mayo, 132 S. Ct. at 1299, 1302);
or other meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment (Alice Corp.,
134 S. Ct. at 2360).
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