Ex Parte Ricketts

Patent Trial and Appeal Board

Sep 21, 2018

11200706 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/200,706 08/09/2005
7590 09/21/2018
Steven Fischman, Esq.
Scully, Scott, Murphy & Presser
400 Garden City Plaza
Garden City, NY 11530
FIRST NAMED INVENTOR
John A. Ricketts
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.
END920050032US 1
(18752)
EXAMINER
BOYCE, ANDRE D
3709
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
09/21/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN A. RICKETTS
Appeal2017---002551
Application 11/200, 706
Technology Center 3600
Before ANTON W. PETTING, MICHAEL W. KIM, and
JAMES A. TARTAL, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
John A. Ricketts (Appellant) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 1, 2, 4--9, and 11-22, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant's Appeal Brief ("Appeal
Br.," filed May 31, 2016) and Reply Brief ("Reply Br.," filed December 5,
2016), and the Examiner's Answer ("Ans.," mailed October 3, 2016) and
Final Action ("Final Act.," mailed December 29, 2015).
Appeal2017-002551
Application 11/200,706
The Appellant invented a way to perform resource buff er sizing in
organizations that perform services. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method of
sizing a resource buffer
comprised of resources available to provide an
identified service to a defined group of clients,
wherein the resources in the buffer are assigned to and
received back from said clients,
the method comprising the steps:
[ 1] providing a computer system including a model for
determining a buffer size, upper and lower warning levels, and
upper and lower threshold levels for said resource buffer, said
model including a plurality of parameters and constraints;
[2] executing the computer system, implementing a resource
buffer sizing program, for entering into the model values for
said parameters, and solving said model;
[3] identifying at least one most sensitive of said parameters of
said model;
[ 4] calibrating said at least one most sensitive of said
parameters;
and
[5] after said calibrating step, further executing the computer
system, implementing the resource buffer sizing program, for
re-solving the model to calculate the buffer size, the upper and
lower warning levels, and the upper and lower threshold levels
for said resource buffer, said upper warning level being less
than the upper threshold level, and the lower warning level
being above the lower threshold level, including translating said
buffer size and said upper and lower threshold levels from a net
consumption of the resources in the resource buffer over a
defined time period, wherein said net consumption is equal to
the number of resources assigned from said resource buffer to
said clients minus the number of resources received back in the
resource buff er from the clients over said defined time period,
2
Appeal2017-002551
Application 11/200,706
and generating output data representing the buff er size and the
upper and lower threshold levels;
[ 6] when the resources in the buffer are outside the upper and
lower warning levels and inside the upper and lower threshold
levels, taking a first specified action;
[7] when the resources in the buffer are outside the upper and
lower threshold levels, taking second specified actions,
including when the resources in the buffer are below the lower
threshold, adding resources to the buffer;
and
[8] when the resources in the buffer are above the upper
threshold level, removing resources from the buffer.
Claims 1, 2, 4--9, and 11-22 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 16 and 17 stand rejected under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the invention.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of indefiniteness matter tum primarily on whether one of
ordinary skill would understand the metes and bounds of claims 16 and 17.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
3
Appeal2017-002551
Application 11/200,706
Facts Related to Claim Construction
01. "This invention generally relates to managing capacity in
organizations that perform services. More specifically, the
invention relates to resource buffer sizing in such
organizations." Spec. para. 1.
02. The Specification lexicographically defines a resource buffer,
within the context of Replenishment for Services, as "a sufficient
number of practitioners to meet typical demand during the
time it takes to re-supply the enterprise with additional
resources." Spec. para. 6.
03. "An object of this invention is to improve methods and systems
for sizing resource buffers in organizations that perform
services." Spec. para. 8.
ANALYSIS
Claims 1, 2, 4-9, and 11-22 rejected under 35 US.C. § 101 as directed to
non-statutory subject matter
Before delving into the analysis, we must initially construe the limitation
"resource buffer," as the term is evocative of a computer buffer. Within the
scope of this case, however, a resource buffer is not a computer buffer, and,
indeed, a computer buffer is not even within the scope of a resource buffer.
The Specification lexicographically defines a resource buffer as "a
sufficient number of practitioners to meet typical demand during the time it
takes to re-supply the enterprise with additional resources." See also Reply
Brief 2-3 "Discussion." A resource buffer is accordingly not a computer
4
Appeal2017-002551
Application 11/200,706
buffer, nor is it any technological structure. It is "a sufficient number of
practitioners" in a service business.
Method claim 1 recites providing a computer system including a model,
executing a resource buffer sizing program and solving the model,
identifying and calibrating sizing parameters, re-solving the model to
compute and translate buffer size and threshold levels, and generating data
that tells one when to add or reduce staff levels. Thus, claim 1 recites
receiving, analyzing, and transmitting data to direct staffing changes. None
of the limitations recite implementation details for any of these steps, but
instead recite functional results to be achieved by any and all possible
means. Data reception, analysis and modification, and transmission are all
generic, conventional data processing operations to the point they are
themselves concepts awaiting implementation details. The sequence of data
reception-analysis-transmission is equally generic and conventional. The
ordering of the steps is, therefore, ordinary and conventional. The remaining
claims merely describe buffer planning parameters, with no implementation
details. The limitations regarding adding and removing resources as applied
to staffing numbers are no more than changing staffing levels. Changing
staffing levels is not part of a computer process, and is not a technological
operation, and is advisory in nature.
The Supreme Court
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, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
5
Appeal2017-002551
Application 11/200,706
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] 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., Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to sizing a service resource buffer comprised of resources available
to provide an identified service to a defined group of clients. Final Act. 3--4.
The claims themselves, and the Specification, provide enough information to
inform one as to what they are directed to.
The preamble to claim 1 recites that it is a method of sizing a resource
buffer comprised of resources available to provide an identified service to a
defined group of clients. The steps in claim 1 result in computing a buffer
size, and adding and removing resources relative to buffer size and
thresholds. The Specification, at paragraph 1, recites that the invention
relates to resource buffer sizing in organizations that perform services.
Thus, all this evidence shows that claim 1 is directed to computing the size
of a sufficient number of practitioners, and then adding and subtracting
practitioners accordingly, i.e. staffing. This is consistent with the
Examiner's finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of staffing is
6
Appeal2017-002551
Application 11/200,706
a fundamental business practice long prevalent in our system of commerce.
The use of staffing is also a building block of ingenuity in all forms of
human endeavor. Thus, staffing, like hedging, is an "abstract idea" beyond
the scope of§ 101. See Alice Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of staffing at
issue here. Both are squarely within the realm of "abstract ideas" as the
Court has used that term. See Alice Corp. Pty. Ltd. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 1 is directed to the abstract idea of receiving, analyzing, and
transmitting data. The limitations reciting adding and removing staff
(resources), although not computer operations, are fundamental staffing
7
Appeal2017-002551
Application 11/200,706
operations devoid of technological component, and serve only to express
how the buffer is used for staffing decisions. The claim as such is directed
to the buffer size, and not to using the buffer per se.
The remaining claims merely describe buffer planning parameters. We
conclude that the claims at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[ t ]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, analyze, and transmit data amounts to electronic data
8
Appeal2017-002551
Application 11/200,706
query and retrieval----one of the most basic functions of a computer. The
limitations of adding and removing resources are no more than staffing
changes resulting from following the transmitted data. All of these
computer functions are well-understood, routine, conventional activities
previously known to the industry. See Elec. Power Grp. v. Alstom S.A.,
supra.; see also In re Katz Interactive Call Processing Patent Litigation,
639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower
construction of the terms 'processing,' 'receiving,' and 'storing,' . . . those
functions can be achieved by any general purpose computer without special
programming"). In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, "even if a process of collecting and analyzing information is 'limited
to particular content' or a particular 'source,' that limitation does not make
the collection and analysis other than abstract." SAP America Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018)
Considered as an ordered combination, the computer components of
Appellant's method adds nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
transmission is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (sequence of data retrieval, analysis, modification, generation, display,
and transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
9
Appeal2017-002551
Application 11/200,706
controlling, and monitoring). The ordering of the steps is, therefore,
ordinary and conventional.
Viewed as a whole, Appellant's method claims simply recite the concept
of staffing as performed by a generic computer. To be sure, the claims recite
doing so by advising one to compute some size for the number of
practitioners in a service business, and let one know when staffing should
change based on this number. But this is no more than abstract conceptual
advice on the parameters for such staffing, and the generic computer
processes necessary to process those parameters, and do not recite any
particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 21 + pages of specification do
not diverge from that disclosure, but only spell out different generic
equipment2 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of staffing under different scenarios. They do not describe any
particular improvement in the manner a computer functions. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of staffing using some unspecified, generic computer.
2 "Any kind of computer/server system(s) - or other apparatus adapted for
carrying out the methods described herein - is suited. A typical combination
of hardware and software could be a general-purpose computer system with
a computer program that, when loaded and executed, carries out the
respective methods described herein." Spec. para. 76.
10
Appeal2017-002551
Application 11/200,706
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp. Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims m substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 in
ways that make patent eligibility 'depend simply on the
draftsman's art.'
Alice Corp. Pty. Ltd. at 2360.
As to Appellant's Appeal Brief arguments, we adopt Examiner's
determinations and analysis from Final Action 3-5 and Answer 5-10 and
reach similar legal conclusions. We now tum to the Reply Brief arguments.
We are not persuaded by Appellant's argument that "Resources are
tangible, physical things. Resources are not ideas or concepts. Sizing a
resource buffer is a specific, tangible process that has real-world, practical
applications. Claims 1, 2, 4--9 and 11-22 are directed to practical, concrete
processes for addressing a specific issue - sizing a resource buffer." Reply
Br. 5. As lexicographically defined, resources are human staff. Although
humans are tangible, no technological operations are recited as being
performed on or by the staff. The Examiner does not determine such
resources to be abstract. Rather, the Examiner determines that the claims
recite abstract conceptual advice as to functions to be performed without
implementation details to determine the number of such staff to apply, and
when to increase and decrease the number of staff. There is nothing tangible
about the process of computing a number, such as the size of a number of
11
Appeal2017-002551
Application 11/200,706
staff. Again, as lexicographically defined, a buffer is not a physical
container, such as a computer buffer, but a number of resource staff.
Appellant also attempts to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Reply Br. 5---6. In McRO, the court held that, although the
processes were previously performed by humans, "the traditional process
and newly claimed method ... produced ... results in fundamentally
different ways." FairWarning v. Iatric Systems, 839 F.3d at 1094
( differentiating the claims at issue from those in McRO). In McRO, "it
is the incorporation of the claimed rules, not the use of the computer, that
improved the existing technology process," because the prior process
performed by humans "was driven by subjective determinations rather
than specific, limited mathematical rules." 837 F.3d at 1314 (internal
quotation marks, citation, and alterations omitted). In contrast, the claims
of the instant application merely implement an old practice of using
decision criteria in making staffing decisions in a new environment.
Appellant has not argued that the claimed processes of selecting staff
numbers apply rules of selection in a manner technologically different
from those which humans used, albeit with less efficiency, before the
invention was claimed. Merely using threshold numbers in combination
with a base number of staff (buffer size) to aid decision making is both old
and itself abstract.
The claims in McRO were not directed to an abstract idea, but
instead to "a specific asserted improvement in computer
animation, i.e., the automatic use of rules of a particular type."
We explained that "the claimed improvement [was] allowing
computers to produce 'accurate and realistic lip synchronization
and facial expressions in animated characters' that previously
12
Appeal2017-002551
Application 11/200,706
could only be produced by human animators." The claimed
rules in McRO transformed a traditionally subjective process
performed by human artists into a mathematically automated
process executed on computers.
FairWarning, 839 F.3d 1089, 1094 (Fed. Cir, 2016) (differentiating the
claims at issue from those in McRO).
We are not persuaded by Appellant's argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in BASCOM
(Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Reply Br. 5-7. Initially, we remind the Appellant that Bascom did
not find claims eligible on the substance, but rather that the Appellee did not
provide sufficient evidence to support a 12(b )( 6) motion to dismiss in which
facts are presumed in the non-movant's favor.
The key fact in Bascom was the presence of a structural change in
"installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server." Bascom, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
Appellant contends that their steps for sizing resource buffers are
inventive because they are novel and useful. But a novel abstract idea
remains an abstract idea. "A claim for a new abstract idea is still an abstract
idea. The search for a § 101 inventive concept is thus distinct from
demonstrating§ 102 novelty." Synopsys, Inc. v. Mentor Graphics
Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016). And many abstract
ideas are highly useful, as for example, "a stitch in time saves nine" and "an
13
Appeal2017-002551
Application 11/200,706
ounce of prevention is worth a pound of cure" are the basis for the highly
useful billion dollar preventative maintenance industry. Novelty and utility
are not determinative. At bottom, there is nothing structural or technological
in the recited manner of selecting test subjects. Such a manner remains
abstract conceptual advice for how to do so.
Claims 16 and 17 rejected under 35 US. C. § l l 2(b) as failing to
particularly point out and distinctly claim the invention
We are persuaded by Appellant's argument that the claims are definite
and understandable to one of ordinary skill for the reasons Appellant
contends at Reply Brief 8-9.
CONCLUSIONS OF LAW
The rejection of claims 1, 2, 4--9, and 11-22 under 35 U.S.C. § 101 as
directed to non-statutory subject matter is proper.
The rejection of claims 16 and 17 under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the invention is improper.
DECISION
The rejection of claims 1, 2, 4--9, and 11-22 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
14