Ex Parte Perkins et al

Patent Trial and Appeal Board

Aug 31, 2018

13798138 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/798, 138 03/13/2013
26379 7590 09/05/2018
DLA PIPER LLP (US )
2000 UNIVERSITY A VENUE
EAST PALO ALTO, CA 94303-2248
FIRST NAMED INVENTOR
Matthew R. Perkins
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.
388938-991184 1065
EXAMINER
KANAAN, MAROUN P
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
PatentDocketing US-PaloAlto@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW R. PERKINS, WEI GENG, and BRIAN WICKS
Appeal2017-006180
Application 13/798, 138
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-24.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is A warepoint
Corporation. App. Br. 1.
2 Appellants indicate they are unaware of any other related appeals. See
App. Br. 1. However, we have determined that Appeal 2017-006075
(Application 14/253,833) and Appeal 2018-004901 (Application
13/798,081) are related to this appeal and are directed to the same
underlying inventions and issues. See 37 C.F.R. § 41.37(c)(ii).
Appeal2017-006180
Application 13/798, 138
STATEMENT OF THE CASE
Appellants' invention relates to a system and method utilizing context
aware location tracking (Spec. ,r 1 ). Exemplary claim 1 under appeal reads
as follows:
1. A method for workflow modification in a facility,
the method comprising:
receiving a plurality of signals at a plurality of sensors
from a plurality of communication devices, each of the plurality
of communication devices associated with an object or a person,
each of the plurality of sensors positioned at a plurality of
locations in a facility for real-time location tracking of persons
and/or objects;
transmitting from the plurality of sensors the plurality of
signals to a location engine;
determining at the location engine a location of at least one
object or person based on one or more of the plurality of signals;
determining a first workflow from at least one location of
the object or the person; and
determining a departure from the first workflow.
Claims 1-24 stand rejected under 35 U.S.C. § 101 as not being
directed to patent-eligible subject matter. See Final Act. 2.
Claims 1-24 stand rejected under 35 U.S.C. § I02(e) as being
anticipated by Breazeale, Jr. (US 2009/0204434 Al; published Aug. 13,
2009) ("Breazeale"). See Final Act. 3-5.
PRINCIPLES OF LAW
Patent-Eligible Subject Matter
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
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from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)). According to this framework, a determination is made to consider
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas). See id. If so, a further
determination must be made to 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. Id. "The question of whether a claim element or combination
of elements is well-understood, routine and conventional to a skilled artisan
in the relevant field is a question of fact." Berkheimer v. HP Inc.,
881 F.3d 1360, 1368 (Fed. Cir. 2018).
Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the
claim, but this is not an ipsissimis verb is test, i.e., identity of terminology is
not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. We are not persuaded the Examiner
erred, and we adopt as our own the findings and reasons set forth by the
Examiner. See Final Act. 2---6; see also Ans. 2-8. We highlight and address
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specific findings and arguments for emphasis as follows.
Rejection Under 35 U.S. C. § 1 OJ
Independent claims 1, 10, and 17 recite a method and system for
workflow modification in a facility, and are, therefore, directed to one of the
four statutory categories ofpatentability enumerated by 35 U.S.C. § 101
(process, machine, manufacture, or composition of matter). Applying the
first part of the Alice analysis, the Examiner finds the claims are directed to
the abstract idea of tracking a location of an object/person and using rules to
determine a workflow of that object/person. See Ans. 2-3. As found by the
Examiner, the claims recite a method and system for performing steps that
can be performed mentally, which indicates that the concept is "an idea of
itself," which is one of the four types of abstract ideas set forth in Alice. See
Ans. 3. As further found by the Examiner, the recited steps correspond to
concepts identified as abstract ideas by the courts, such as comparing new
and stored information (i.e., comparing sensor information to track a
location of an object) and using rules to identify options (i.e., determine a
workflow based on the tracked location) as seen in SmartGene, Inc. v.
Advanced Biological Laboratories, SA, 555 Fed. Appx. 950, 954--55
(Fed. Cir. 2014). See Ans. 3. Applying the second part of the Alice analysis,
the Examiner finds the claims do not include additional elements that are
sufficient to amount to significantly more than the abstract idea because the
additional computer elements, which are recited at a high level of generality,
provide conventional computer functions that do not add meaningful limits
to practicing the abstract idea. See id. More specifically, as found by the
Examiner, the recited sensors, communication devices, and location engine
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are recited at a high level of generality and are recited as performing generic
computer functions routinely used in computer applications. See Ans. 3--4. 3
Beginning with the first step of the Alice analysis, we must determine
"whether the claims at issue are directed to one of those patent-ineligible
concepts," including abstract ideas. Alice, 134 S. Ct. at 2355. In performing
this determination, we ask whether the focus of the claims is on a specific
asserted improvement in computer capabilities or, instead, on a process that
qualifies as an "abstract idea" for which computers are invoked merely as a
tool. Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2358-59).
Appellants contend the claims are not directed to the alleged abstract
idea of tracking items in a medical facility for at least two reasons. See
App. Br. 8. First, according to Appellants, the Examiner has described the
claim at a high level of abstraction untethered from the language of the claim
when alleging that the claims are directed to tracking items in a medical
facility. See App. Br. 8-9. Second, Appellants contend the Final Office
Action fails to identify any persuasive prior court decisions that support the
argument that the claims are directed to patent ineligible subject matter. See
App. Br. 9. In their Reply Brief, Appellants further argue the reliance on
SmartGene in the Examiner's Answer is not persuasive because Smartgene
is a non-precedential decision and the facts of Smartgene do not uniquely
3 Although the Examiner's findings are explicitly directed to claim 1, the
Examiner further finds the additional claim elements of dependent claims 2-
9 fail to establish that the claims are not directed to an abstract idea without
significantly more, and the Examiner's findings also apply to claims 10-24.
See Ans. 4--5.
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match the facts in the present appeal. See Reply Br. 1. Appellants also
argue that the claims provide a technical solution directed
to improve an existing technological process, and thus, like the claims in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016), the claims are patent-eligible. See Reply Br. 2.
We are not persuaded by Appellants' arguments. Considering the
recited elements of the claims in light of Appellants' Specification, we agree
with the Examiner's findings that the claims are directed to a method and
system for performing the steps of receiving signals, transmitting the signals,
determining a location of at least one object, determining a workflow of the
object, and determining a departure from the workflow. See Ans. 3. We
further agree with the Examiner that the recited steps can be performed
mentally, and thus, the claims are directed to "an idea of itself," one of the
four types of abstract idea set forth in Alice. See id; see also Alice, 134 S. Ct
at 2355 ("[a]n idea of itself is not patentable."). Based on the recited
elements, the claims are directed to tracking and collecting location
information and analyzing the collected location information, which is an
idea of itself and which is similar to abstract ideas previously identified by
courts. See Content Extraction and Transmission LLC v. Wells Fargo Bank,
National Association, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding that
claims drawn to collecting data, recognizing certain data within the collected
data set, and storing the recognized data in memory are directed to an
abstract idea); see also Automated Tracking Solutions LLC v. Coca-Cola
Company, 723 Fed. Appx. 989, 993 (holding that claims directed to systems
for locating, identifying and/or tracking of an object using RFID components
are directed to an abstract idea).
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Regarding Appellants' contention that the claims are directed to a
technical solution that improves an existing technologic process, similar to
the claims at issue in McRO, we are not persuaded by this contention. In
McRO, the court held the claims were patent-eligible because the claims
recited specific computer-implemented rules that allowed a computer to
produce accurate and realistic lip synchronization and facial expressions in
animated characters that previously could only be produced by human
animators. See McRO, 837 F.3d at 1313. However, the present claims fail
to recite sufficient technical details to describe how a computer system
realizes an operational improvement via the claimed functionality. Thus,
contrary to Appellants' assertion, the claims fail to recite the improvement to
the computer system that Appellants argue the claims are directed to.
Because we conclude that the claims are directed to an abstract idea,
we tum to the next step of the Alice analysis. In step two, as previously
discussed, we consider the elements of the claims "individually and 'as an
ordered combination"' to determine whether the additional elements
"'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566 U.S. at 78).
Here, Appellants argue the claims are directed to substantially more
than an abstract idea because: (1) the claims are directed to improving
another technical field/technology; (2) the claims apply any alleged abstract
idea with a machine that does not perform generic computer functions; and
(3) the claims add meaningful limitations that amount to more than generally
linking an alleged abstract idea to a particular technological environment.
See App. Br. 9-10. Appellants further argue the claims are directed to a
particular arrangement of elements that provide a technical improvement
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(i.e., workflow modification in a facility) over prior ways of tracking items
in a medical facility, and thus, the claims are similar to the claims in
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016), the claims are directed to patent-eligible
subject matter. See App. Br. 10-11.
Considering the recited elements of the claims in light of Appellants'
Specification, we agree with the Examiner's findings that the claimed
sensors, communication devices, and location engine are recited at a high
level of generality and are recited as performing generic computer functions
routinely used in computer applications. See Ans. 4. Evidence supporting
the Examiner's findings is found in Appellants' Specification, which
discloses that the prior art includes various tracking systems and uses of
near-field communication devices, and further includes examples of the
claimed system components (e.g., sensors). See e.g., Spec. ,r,r 4--18, 64, 67,
69, 72. Therefore, considering the elements of the claims both individually
and in combination, we conclude the claims include no additional elements
that transform the nature of the claims into a patent-eligible application. See
Alice, 134 S. Ct. at 2355.
Regarding Appellants' contention that the claims are directed to a
particular arrangement of elements that provide a technical improvement
over prior ways of tracking items in a medical facility, similar to the claims
in BASCOM, we are not persuaded by this contention. In BASCOM, the
court characterized the claims as claiming a technology-based solution to
filter content on the Internet (implemented via customizable filtering
features at specific locations remote from a user) that overcomes problems
with other Internet filtering systems, as opposed to an abstract-idea based
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solution implemented with generic technical components in a conventional
way. BASCOM, 827 F.3d at 1351. Unlike the claims at issue in BASCOM,
the present claims do not introduce a technical advance or improvement.
The claims contain nothing that amounts to significantly more than a patent
upon the abstract idea itself. To the extent the claims add anything to the
abstract idea, it is a statement to use a computer system, to perform the
abstract idea. "[I]f a patent's recitation of a computer amounts to a mere
instruction to 'implemen[t]' an abstract idea 'on ... a computer,' that addition
cannot impart patent eligibility." Alice, 134 S. Ct. at 2358 (quoting Mayo,
566 U.S. at 84).
Appellants additionally argue the claims do not preempt any alleged
abstract idea, and are therefore patent-eligible for this additional reason. See
App. Br. 9. This argument is not persuasive either, as the Federal Circuit
has made clear that "the absence of complete preemption does not
demonstrate patent eligibility" of a claim. Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Therefore, we are not persuaded the Examiner erred in finding claims
1-24 recite patent-ineligible subject matter. Accordingly, we sustain the
rejection of claims 1-24 under 35 U.S.C. § 101.
Rejection Under 35 U.S.C. § 102(e)
Appellants contend Breazeale fails to disclose "transmitting from the
plurality of sensors the plurality of signals to a location engine," as recited in
claim 1, and similarly recited in claims 10 and 17. See App. Br. 11, 13.
Appellants argue Breazeale merely discloses a healthcare tracking system
that includes mobile devices associated with each user, and fails to disclose
the claimed location engine that receives signals from sensors. See
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App. Br. 12, 13. Appellants further argue Breazeale discloses a main server
system that hosts a scheduling system that interfaces with a scheduling
system on mobile devices, and the main server system only hosts the
scheduling system without receiving signals from proximity sensors. See id.
We are not persuaded by Appellants' contentions. Consistent with the
Examiner's findings, Breazeale discloses a healthcare facility where
proximity sensors are positioned throughout the facility to track movement
of objects in the facility, where patients and caregivers are associated with
transponders that are also tracked by the sensors within the facility, and
where a tracking system stores time/location information captured by the
sensors. See Ans. 7 (citing Breazeale ,r,r 32, 34); see also Final Act. 3 (citing
Breazeale ,r,r 32, 34). Thus, we agree with the Examiner that Breazeale
discloses "transmitting from the plurality of sensors the plurality of signals
to a location engine," as recited in claim 1, and similarly recited in claims 10
and 17.
Appellants also contend Breazeale fails to disclose "determining at the
location engine a location of at least one object or person based on one or
more of the plurality of signals," as recited in claim 1, and similarly recited
in claims 10 and 17. See App. Br. 12, 14. As argued by Appellants, since
Breazeale does not disclose the claimed location engine, Breazeale also does
not disclose the determining of a location by the location engine. See id.
We are not persuaded by this contention either. As described above,
Breazeale discloses a tracking system that stores location information of
patients, caregivers, and objects. See Ans. 7 ( citing Breazeale ,r,r 32, 34); see
also Final Act. 3--4 (citing Breazeale ,r,r 10, 290. Thus, we agree with the
Examiner that Breazeale also discloses "determining at the location engine a
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location of at least one object or person based on one or more of the plurality
of signals," as recited in claim 1, and similarly recited in claims 10 and 17.
Appellants also contend Breazeale fails to disclose "determining a
first workflow from at least one location of the object or the person," as
recited in claim 1 and similarly recited in claim 17, and "determining a
second workflow," as recited in claim 10. See App. Br. 12-14. Appellants
argue Breazeale merely discloses an audit module that has a workflow for
resolving exceptions and a schedule resolution module has a series of steps
to compare caregiver locations to patient locations. See App. Br. 12.
However, Appellants assert Breazeale fails to disclose the claimed
determining a first workflow from at least one location of an object or a
person. See App. Br. 12-13. Appellants further argue that the Examiner has
not cited any evidence for the claimed determining a second workflow, and
that Breazeale fails to disclose the aforementioned claim element for the
reasons described above. See App. Br. 14.
We are not persuaded by this contention. Consistent with the
Examiner's findings, Breazeale discloses a schedule resolution module that
resolves time and location information received from mobile devices with
schedule information for patients and caregivers, where the schedule
information sets forth the expected locations and durations associated with
the patients and caregivers. See Final Act. 4 ( citing Breazeale ,r 101 ); see
also Ans. 7-8. Similar to Appellants' Specification that discloses a
workflow is "at least one of a series of locations, a series of states, a series of
dwell times, a series of interactions, a series of milestones, or a series of
detected events," (Spec. ,r 89), Breazeale's schedule information discloses
the claimed "workflow." Thus, we agree with the Examiner that Breazeale
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also discloses "determining a first workflow from at least one location of the
object or the person," as recited in claim 1 and similarly recited in claim 17,
and "determining a second workflow," as recited in claim 10.
No separate arguments are presented for the remaining dependent
claims. See App. Br. 13-14. Therefore, we are not persuaded that the
Examiner erred in finding Breazeale anticipates the subject matter of claims
1-24. Accordingly, we sustain the rejection of claims 1-24 under 35 U.S.C.
§ 102(e).
DECISION
We affirm the Examiner's rejection of claims 1-24 under 35 U.S.C.
§ 101.
We affirm the Examiner's rejection of claims 1-24 under 35 U.S.C.
§ 102(e).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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