Ex Parte Ramalingamoorthy et al

Patent Trial and Appeal Board

Oct 19, 2017

13151580 (P.T.A.B. Oct. 19, 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.
13/151,580 06/02/2011 Muthuvel Ramalingamoorthy H0029573 4874/113779 5172
92556 7590
HONEYWELL/HUSCH
Patent Services
115 Tabor Road
P.O.Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
10/23/2017 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):
patentservices-us @ honey well, com
amy. hammer @ hu schblackwell .com
pto-chi@huschblackwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MUTHUVEL RAMALINGAMOORTHY,
SIVAKUMAR BALAKRISHNAN, and
NANDAKUMAR DHANDAPANI
Appeal 2016-004675
Application 13/151,580
Technology Center 3600
Before JUSTIN BUSCH, JAMES W. DEJMEK, and JASON M. REPKO,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—6 and 8—21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appeal 2016-004675
Application 13/151,580
CLAIMED SUBJECT MATTER
The claims relate generally to visitor management systems and
methods and, more specifically, to providing an e-badge to a visitor upon
authorization of a pre-registration request for a future visit to a building.
Spec. 11. Claim 1 is reproduced below:
1. A method comprising:
a processor receiving a pre-registration request for a future
visit to a building;
the processor transmitting the pre-registration request to a
personal device of a host of the future visit to the building;
the processor receiving authorization for the pre­
registration request from the personal device of the host of the
future visit to the building;
based on the received authorization, the processor
identifying the pre-registration request as authorized; and
the processor providing an e-badge to a guest mobile
device for the future visit to the building.
REJECTIONS
Claims 1—6 and 8—21 stand rejected under 35U.S.C. § 101 as being
directed to patent-ineligible subject matter. Ans. 10—11.
Claims 1—6, 8—11, 15—19, and 21 stand rejected under 35 U.S.C.
§ 103(a) as obvious in view of Lakin (US 2008/0120243 Al; May 22, 2008)
and Chung (2007/0136154 Al; June 14, 2007). Final Act. 2—7.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as obvious in view
of Lakin, Chung, and Plutowski (US 2005/0096960 Al; May 5, 2005).
Final Act. 7—8.
Claims 13, 14, and 20 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of Lakin, Chung, and Official Notice. Final Act. 8—10.
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ANALYSIS
Rejection of Claims Under 35 U.S.C. § 101
The Examiner rejects all of the pending claims under 35 U.S.C. § 101
because the claims as a whole are directed to the abstract idea of registering,
such as to allow for future access to a building, and do not contain
significantly more than the abstract idea so as to transform the claimed
abstract idea into a patent-eligible application. Ans. 10—11. The Examiner
finds the additional combination of elements beyond the abstract idea are
simply instructions to implement the abstract idea on a computer using
generic computer structure to perform well-understood, conventional, and
routine generic computer functions. Id.
Appellants contend the claims are patent eligible because they “are
directed to concrete, well-defined apparatus that receives specific inputs and
provides a tangible, useful output that is well-defined in its scope and use.”
Reply Br. 2. Appellants present no other argument or evidence in support of
their assertion that the claims are not directed to abstract ideas. Id.
Appellants do not clearly articulate whether they assert the claims are not
directed to an abstract idea or whether the claims recite significantly more
than the abstract idea itself. Id. Nevertheless, we disagree with Appellants’
arguments for the reasons that follow and agree with the Examiner that
Appellants’ claims are directed to ineligible subject matter under 35 U.S.C.
§101.
First, we note Appellants argue all the claims as a group; therefore,
with respect to the rejection under § 101, all claims stand or fall together.
Notably, claim 1 is directed to a method. Thus, although the method recites
using processors receiving and transmitting information, claim 1 is not
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directed to a concrete apparatus. Moreover, whether something claimed is
“concrete” and “physical” is not the test for determining whether claimed
subject matter is judicially-excepted from patent-eligibility. If that were the
case, any claims to computers would necessarily be patent eligible. But that
is not the case. See Alice, 134 S. Ct. at 2358—59 (internal citation omitted):
The fact that a computer “necessarily existfs] in the physical,
rather than purely conceptual realm” is beside the point. There is
no dispute that a computer is a tangible system (in § 101 terms,
a “machine”), or that many computer-implemented claims are
formally addressed to patent-eligible subject matter. But if that
were the end of the § 101 inquiry, an applicant could claim any
principle of the physical or social sciences by reciting a computer
system configured to implement the relevant concept.
As discussed in more detail below, we find Appellants’ claims are
similar to claims the Federal Circuit has found are directed to ineligible
subject matter, namely abstract ideas. Accordingly, we find Appellants’
claims also are directed to abstract ideas and sustain the Examiner’s
rejection.
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012), and Alice Corp. v. CLS Bank International, 134
S. Ct. 2347, 2354 (2014), the Supreme Court explained that § 101 “contains
an important implicit exception” for laws of nature, natural phenomena, and
abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185 (1981). In Mayo
and Alice, the Court set forth a two-step analytical framework for evaluating
patent-eligible subject matter: (1) “determine whether the claims at issue are
directed to” a patent-ineligible concept, such as an abstract idea; and, if so,
(2) “consider the elements of each claim both individually and ‘as an
ordered combination’ to determine whether the additional elements” add
enough to transform the “nature of the claim” into “significantly more” than
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a patent-ineligible concept. Alice, 134 S. Ct. at 2355 (quoting Mayo,
566 U.S. at 79); see Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Step one in the Mayo!Alice framework involves looking at the “focus”
of the claims at issue and their “character as a whole.” Elec. Power Grp.,
LLC v. Alstrom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). In this case, we
are not persuaded the Examiner erred in concluding that the claims are
directed to an abstract idea. In particular, the Examiner finds the focus of
the claims is on registering a person for a future visit to a building. Ans. 11.
Notably, the Examiner’s characterization is consistent with Appellants’
description of the problem and solution. See Spec. 1 6 (describing “a
continuing, ongoing need for systems and methods for establishing an e-
badge via mobile pre-registration for a visitor management system”), see
also id. 12—15. Thus, we agree with the Examiner that the claims’
character as a whole lies in longstanding conventional conduct—i.e.,
registration requests and authorization for a visitor to enter a building at a
future time.
The claims recite processes or methods implemented by processors
that receive and transmit registration requests, receive authorizations for
registration requests, identify those registration requests as authorized, and
provide an e-badge. The Federal Circuit has recognized that “[t]he concept
of data collection, recognition, and storage is undisputedly well-known,” and
“humans have always performed these functions.” Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014), cited in Ans. 4. We agree with the Examiner’s findings
because the claimed concept is similar to the above-discussed concepts
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found to be abstract by the Federal Circuit. Accordingly, we are
unpersuaded that the Examiner erred in concluding that the claims are
directed to an abstract idea.
Step two involves the search for an “inventive concept.” Alice, 134
S. Ct. at 2355; Elec. Power Grp., 830 F.3d at 1353. For an inventive
concept, “more is required than ‘well-understood, routine, conventional
activity already engaged in’” by the relevant community. Rapid Litig.
Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016)
(quoting Mayo, 566 U.S. at 79—80). Thus, because Appellants’ claims are
directed to an abstract idea, we must determine whether the limitations,
when considered both “individually and as an ordered combination” contain
an “inventive concept” sufficient to transform the claimed “abstract idea”
into a patent-eligible application. Alice, 134 S. Ct. at 2355—58.
First, we consider the claims’ limitations individually. See Alice,
134 S. Ct. at 2355—58. The claims recite conventional uses of a processor,
such as receiving and transmitting requests, identifying the requests as
authorized based on receiving an authorization of the request, and providing
an electronic badge. To perform these functions, the claims do not call for
non-conventional computer components. Rather, these functions—
transmission, reception, analysis, modification (i.e., identifying a request as
authorized), and generation (i.e., providing an electronic badge) of data—
merely require a generic processor, which does not supply an inventive
concept. Ans. 5—7; Fair Warning IP, LLC v. Iatric Sys. Inc., 839 F.3d 1089,
1095 (Fed. Cir. 2016).
Additionally, the steps acting upon the data are abstractly and broadly
recited as “receiving,” “transmitting,” “identifying,” and “providing”
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functions, instead of a concrete solution for carrying out these identifications
and determinations. Thus, the recited identifications and determinations “do
not invoke any assertedly inventive programming” to supply an inventive
concept. Elec. Power, 830 F.3d at 1354. In sum, the limitations, considered
individually, do not contain an inventive concept.
Next, we consider the limitations as an ordered combination. Unlike
the inventive distribution of function between the local computer and an ISP
server in BASCOM, the claims here merely recite a generic processor to
carry out the abstract idea. See BASCOM, 827 F.3d at 1352 (discussing the
specific location for the filtering system and role of networking accounts in
concluding that the claims did not preempt the abstract idea’s use).
Essentially, the claim recites an abstract idea with the instruction to apply it
on generic computing components.
“[R] dying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.” OIP Techs.
Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.), cert, denied, 136
S. Ct. 701, 193 L. Ed. 2d 522 (2015). So, even if a computer performs the
claimed steps with fewer errors or redundancies, we agree with the
Examiner that using a computer in this conventional way does not supply an
inventive concept. Ans. 5—7. For the reasons discussed above, we agree
with the Examiner that the claims are directed to ineligible subject matter
under 35 U.S.C. § 101
Rejection of Claims Under 35 U.S.C. § 103
The Examiner rejects each of the pending claims under 35 U.S.C.
§ 103(a) as being obvious in view of the combination of Lakin and Chung,
the combination of Lakin, Chung, and Plutowski (claim 12), or the
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combination of Lakin, Chung, and Official Notice (claims 13, 14, and 20).
Final Act. 2—10.
Appellants argue all of the claims as a group. See App. Br. 5—9.
Accordingly, we select claim 1 as representative with respect to Appellants’
arguments responding to the Examiner’s rejection under 35 U.S.C. § 103.
37 C.F.R. § 41.37(c)(l)(iv). In particular, Appellants generally contend
Lakin and Chung have “different functionality than” the claimed invention,
and Lakin and Chung do not disclose allowing “authorization of a visitor by
a host even if the host is out of his/her office (e.g., at lunch).” App. Br. 6.
Appellants also assert Lakin and Chung do not teach or suggest the majority
of the steps recited in claim 1 because Lakin is directed to obtaining building
permits and Chung is directed to smart cards. App. Br. 8. Appellants
expand on that argument in the Reply Brief, contending Lakin teaches
“neither a request for entry into a building nor a request for future entry into
the building” because Lakin simply discloses “a card that must be presented
to building personnel for authorization.” Reply Br. 3^4 (citing Lakin 175
(disclosing that building security may check a card prior to authorizing entry
into a building)).
The Examiner finds a general allegation that the functionality of the
pending claims is different than what Lakin and Chung disclose does not
identify specific differences between the claimed invention and the prior art.
Ans. 13. The Examiner further finds Appellants’ argument that Lakin and
Chung do not disclose allowing authorization even if the host is out of
his/her office unpersuasive because the location of the host is not claimed.
Ans. 13.
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We agree with the Examiner’s findings and conclusions. Specifically,
the Examiner points to, in part, Lakin’s Figures 1 and 2, and the
accompanying description, as teaching or suggesting the majority of the
steps recited in representative claim 1. Final Act. 3 (citing Lakin H 33, 63,
65—73, 80, Figs. 1, 2). Reviewing Fakin, we agree that Fakin teaches or
suggests receiving a pre-registration request, transmitting the request,
receiving authorization, marking the request authorized and issuing an
electronic badge.
In particular, the background of Fakin explains that the invention
relates to a smart card device (i.e., an electronic badge) that provides
contractors access to secure buildings. Fakin 12. Fakin further explains
that, when a contractor requests approval for work in a building, the
contractor must submit various information required by building security
personnel, even for access to a non-secure facility. Id. 110. Fakin states its
systems and processes address the problem of contractors working in various
facilities having to repeat the registration and authorization process “for
every building in which they must work.” Id. Fakin explains that, after a
contractor enters all necessary information, the contractor may be issued a
smart card that “can be used in multiple buildings provided they have the
proper access terminals.” Id. H 25—26.
Fakin further discloses that a contractor may apply for a card over the
Internet, the agency may receive and authorize the request, and issue a smart
card to the contractor. Id. H 34—50. As explained above with respect to
Fakin’s background, a contractor applies for a card both to request permits
and to gain access to buildings in which the contractor will be performing
work. Id. 110. Thus, given that Fakin’s agency receives requests from
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contractors, performs necessary checks on the information, authorizes
granting of credentials, and issues a smart card, we agree with the Examiner
that Lakin teaches or suggests the relevant recited limitations.
For the reasons discussed above, we are not persuaded the Examiner
erred in finding the combination of Lakin and Chung, the combination of
Lakin, Chung, and Plutowski, or the combination of Lakin, Chung, and
Official Notice teaches or suggests the subject matter recited in claims 1—6,
8—14, and 21. However, claim 15 recites additional limitations that the
Examiner fails to address. See Final Act. 3; Ans. 3. In particular, claim 15
recites steps of displaying and updating appointments that are not
commensurately recited in independent claim 1. Therefore, on this record,
we cannot sustain the Examiner’s rejection of claims 15—20 because the
rejection fails to identify what aspects of Lakin and/or Chung teach or
suggest the displaying and updating steps. See Final Act. 3; Ans. 3.
Accordingly, we sustain the Examiner’s rejection of claims 1—6, 8—14, and
21 under 35 U.S.C. § 103(a), but we do not sustain the Examiner’s rejection
of claims 15—20 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 1—6 and 8—21 under
35 U.S.C. § 101.
We affirm the Examiner’s rejection of claims 1—6, 8—14, and 21 under
35 U.S.C. § 103(a).
We reverse the Examiner’s rejection of claims 15—20 under 35 U.S.C.
§ 103(a).
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).
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AFFIRMED
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