Ex Parte Shi et al

Patent Trials and Appeals Board

Feb 28, 2019

13644819 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/644,819 10/04/2012
106592 7590 03/04/2019
Klarquist Sparkman, LLP (SAP)
121 SW Salmon Street, Suite 1600
Portland, OR 97204
FIRST NAMED INVENTOR
Xingtian Shi
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.
8880-100975-01 1753
EXAMINER
DURAISAMYGURUSAMY, LAUTH M
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
docketing@klarquist.com
AS CChair@klarquis t. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XINGTIAN SHI, GUFEI SUN, HENG WANG, and
WEN-SYANLI 1
Appeal2017-006824
Application 13/644,819
Technology Center 3600
Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
JON M. WRGOV AN, Administrative Patent Judges.
Opinion for the Board by THOMAS, Administrative Patent Judge.
Dissenting opinion by BAUMEISTER, Administrative Patent Judge.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-15 and 17-20, all the pending
claims in the present application. Claim 16 is canceled (see Claims
Appendix). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants name SAP SE as the real party in interest (App. Br. 1 ).
Appeal2017-006824
Application 13/644,819
CLAIMED INVENTION
The present invention relates generally to matching orders with
incoming shipments (see Abstract).
Claim 1 is illustrative:
1. A system for matching orders with incoming
shipments, the system comprising:
at least one processor;
a non-transitory computer-readable storage
medium including instructions executable by one or more
processors, the instructions configured to implement,
a product shipment handler configured to receive
product shipment information specifying incoming products;
a product order handler configured to receive
product order information specifying a plurality of product
orders and input parameter information associated with each
product order;
a job dispatcher configured to create a plurality of
jobs based on the product shipment information and the product
order information, the job dispatcher configured to arrange and
group the incoming products and the product orders by product
type such that each individual job specifies incoming products
and products orders corresponding to a single type of product,
wherein, when a single product order specifies two or more
different types of products, the job dispatcher is configured to
split the single product order into multiple product orders such
that each of the multiple product orders has the single type of
product;
a modeling tool configured to model each job as a
separate constrained linear optimization problem; and
a linear solver configured to generate a delivery
plan for delivering products as specified by the product orders
by separately solving each constrained linear optimization
problem based on the input parameter information and the
product shipment information such that the incoming products
are matched with the product orders according to a delivery
schedule that maximizes one or more business values,
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Application 13/644,819
wherein the job dispatcher includes a complexity
estimation unit configured to estimate a complexity of each job
for solving the constrained linear optimization problem
corresponding to a respective job, the job dispatcher configured
to sort a list of the plurality of jobs based on the estimated
complexity in either increasing or decreasing complexity, and
sequentially assign the constrained linear optimization problem
of each job of the sorted list to a plurality of computer
processing units (CPUs).
Appellants appeal the following rejection: 2
Claims 1-15 and 17-20 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to patent-ineligible subject matter (Final
Act. 11; see also 2-8).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Re} ection under § 101
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. v. CLS Bank Int'!, 573 U.S.
208,216 (2014).
2 The Examiner withdrew the rejections of claims 1-15 and 17-20 under
35 U.S.C. § 103(a) (see Ans. 2).
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with the framework,
we first determine what concept the claim is "directed to." Alice, 573 U.S.
at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk."). For example, concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity,
such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221(quotations marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
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§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are
not "well-understood, routine, conventional" in the field (see
MPEP § 2106.0S(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
With respect to independent method claim 20, and similarly, system
claim 1 and computer-readable medium claim 13, the Examiner determines
that the claims are at least directed to the abstract idea of "matching orders
with incoming shipments" (Final Act. 3), which we conclude are certain
methods of organizing human activity, e.g., commercial transactions such as
sales activities or behaviors (see claim 1 ).
In Cyberfone, the court held that "using categories to organize, store,
and transmit information is well-established," and "the well-known concept
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of categorical data storage, i.e., the idea of collecting information in
classified form, then separating and transmitting that information according
to its classification, is an abstract idea that is not patent-eligible." Cyberfone
Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 992 (Fed. Cir.
2014). Similarly, claim 1 recites (1) receiving product shipment
information; (2) receiving product order information; (3) creating a plurality
of jobs; (4) arranging and grouping the incoming products to a single type;
(5) model each job; and (6) generate a delivery plan.
We conclude that even if we agree with the Examiner that the claims
recites a judicial exception, i.e., certain methods of organizing human
activity (and do not integrate that exception into a practical application),
Appellants raise a persuasive issue regarding whether claim 1 adds specific
limitations beyond the judicial exception that are not "well-understood,
routine, and conventional" in the field (see MPEP § 2106.05(d)).
Specifically, Appellants contend:
For example, it is not well understood, routine, and
conventional in the field of linear programming to model each
job (having the same type of products) as a separate constrained
linear optimization problem, estimate a complexity of each job
for solving the constrained linear optimization problem, sort the
list of jobs based on the estimated complexity in either
increasing or decreasing complexity, and sequentially assign
the constrained linear optimization problem of each job of the
sorted list to a plurality of computer processing units (CPUs).
(App. Br. 22-23). Appellants further contend that "[b ]y not considering the
claims as an 'ordered combination,' the Office has stripped away the
inventive concept from the claims" (id. at 23). We agree with Appellants.
The Examiner concludes that "the claims do not override the routine
and conventional sequence or operation of the computer; rather, the
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computer merely functions as a mechanism for permitting the operations to
be performed" (Final Act. 6), and "[t]he claims represent the application of
the idea itself on a generic computer" (id.; see also Ans. 10-11 ).
Although we understand the claimed invention may use "generic
computer, network, and Internet components, none of which is inventive by
itself," the "inventive concept can be found in the non-conventional and
non-generic arrangement of known, conventional pieces." Bascom Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016).
Here, the Examiner has not set forth with sufficient specificity or
provided any finding that the specifically claimed additionally steps of
modeling each job and generating a delivery plan is well-understood,
routine, or conventional. Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed.
Cir. 2018) ("Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination."). The Dissent inappropriately states that "Appellants ...
present insufficient evidence that claim 1 recites any specific computer
elements beyond those that were well understood, routine, and conventional
in the field" (Dissent 9), because it is the Examiner's (not Appellants')
burden to provide sufficient evidence to support whether the arrangement of
additional pieces are well-understood, routine, and conventional. Here, the
Majority highlight that the Examiner merely points out known generic
components, i.e., processor, memory, etc., and generic functions, i.e.,
receiving or transmitting data (see Ans. 10-11 ), rather than specifically
addressing the above-noted additional claim limitations focused on by
Appellants. Although the Dissent further states that Appellants are
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conflating the well-understood, routine, and conventional inquiry with a
novelty inquiry, the Majority cannot readily find such a conflation, nor has
the dissent cited precisely where this occurs.
Thus, on the record before us, the Examiner has not provided any
factual finding that the specifically claimed manner of modeling each job
and generating a delivery plan is well-understood, routine, or conventional.
Thus, under Alice Step Two and Memorandum (3), the Examiner has not
properly considered the elements of the claims, both individually and "as an
ordered combination," to determine whether the additional elements
transform the Examiner's asserted abstract idea into a patent-eligible
application.
For at least the above reasons, the Examiner's rejection of claims
1-15 and 17-20 under 35 U.S.C. § 101 is reversed.
DECISION
We reverse the Examiner's§ 101 rejection.
REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XINGTIAN SHI, GUFEI SUN, HENG WANG, and
WEN-SYANLI
Appeal2017-006824
Application 13/644,819
Technology Center 3600
Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
JON M. WRGOV AN, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge, dissenting.
Had we reviewed this appeal back in 2017 at the time Appellants filed
the Reply Brief, I would have affirmed the rejection generally for the
reasons the Examiner set forth in the Final Rejection and Examiner's
Answer. Three intervening changes-one change to the § 101 jurisprudence
and two changes to the PTO' s procedural requirements for an Examiner
analyzing patent eligibility under § 10 I-require that the Examiner's
positions be reworded slightly and reorganized. But I still would affirm the
Examiner's ultimate determination that the claims are directed to patent-
ineligible subject matter.
Starting with step 2Al of the 2019 Subject-Matter-Eligibility
Memorandum in which the Examiner determines whether a claim is directed
Appeal2017-006824
Application 13/644,819
to an abstract idea, 3 I agree with the Examiner's analysis of which portions
of claim 1 are directed to an abstract idea and which portions are directed to
additional elements beyond the abstract idea. See Ans. 4 (reproducing
claim 1 with added underlining to indicate which portions of the claim are
directed to the abstract idea). Specifically, the Examiner determines that the
acts of receiving product shipment information, receiving product order
information, creating orders in a specified manner based on the received
information, modeling the jobs as separate optimization problems,
generating a delivery plan, estimating the complexity of each job, sorting a
list of jobs, and sequentially assigning each job for completion constitute a
series of abstract ideas.
As our reviewing court has held, combining several abstract ideas
does not render the combination any less abstract. RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract
idea ... to another abstract idea ... does not render the claim non-
abstract. "); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1093-94 (Fed. Cir. 2016) (patent-ineligible claims were directed to a
combination of abstract ideas).
The Examiner characterized these noted concepts as "an idea having
no particular concrete or tangible form" (Final Act. 4)-concepts that fall
under the category of "an idea 'of itself."' See MPEP § 2106.04(a)(2) Part
III; see also July 2018: Eligibility Quick Reference Sheet Identifying
Abstract Ideas (Part 2) (available at
3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) ("2019 Memorandum") (available at
https://www.federalregister.gov/documents/2019/01/07/2018-28282/2019-
revised-patent-subj ect-matter-eligibility-guidance).
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https ://www. uspto. gov/ sites/ default/files/ docmnents/ieg-qrs. pdf). The
Office's subsequently issued 2019 Memorandum generally limits the
categories that examiners may rely upon in determining that a claim is
directed to an abstract idea. 2019 Memorandum at 52-53. The previously
recognized category of "an idea of itself' is not one of the currently
recognized categories (id.), so I do not consider whether that
characterization of the claimed invention is accurate under section- IO 1
jurisprudence. It is sufficient for the purposes of the present appeal that the
claimed concepts reasonably can be characterized as falling within the still-
recognized category of mental processes. Id. at 52. That is, the claimed
concepts of job-scheduling optimization and assignment still can be
reasonably characterized as "concepts performed in the human mind
(including an observation, evaluation, judgment, [or] opinion)." Id. 4
Appellants argue in response to the Examiner's characterization,
it is incorrect to identify that all the functional limitations of
claim 1 are directed to an abstract idea. By characterizing claim
1 in such a manner, the Examiner has stripped away the
significant and meaningful technical limitations that go beyond
the alleged abstract idea. Under the Examiner's rationale,
despite any technical advancement in programming, all
software-based improvements to linear optimization
programming within the context of delivery schedule
4 Characterizing the abstract idea as a mental process instead of an idea unto
itself does not constitute a change to the thrust in the Examiner's rejection.
Appellants demonstrate that they understood the characterizations to be
interrelated and had a reasonable opportunity to respond to this position.
See, e.g., Reply Br. 2 ("The Examiner [determines] that ... this idea 'is
similar to an idea itself representing a scheme and plan that can be
performed by [a] human using his mind and pen[,] which is recognized as
abstract by the courts"'); Id. at 6 ("The limitations of claim 1 cannot entirely
be performed mentally with pen or paper.")
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optimization would be ineligible for patent protection under
Section 101.
Reply Br. 4 ( emphasis omitted).
This argument is unpersuasive. The Examiner may have "'stripped
away' ... the extra limitations that go beyond the alleged abstract idea"
(Reply Br. 4), but only for the initial inquiry of whether the claims are
directed to an abstract idea. This is proper under step 2Al 's limited
threshold inquiry. The separate questions of whether a claim's additional
limitations beyond the abstract idea (1) integrate the abstract idea into a
practical application or (2) add significantly more beyond the abstract idea,
are addressed properly in the 101 analysis's subsequent steps-steps 2A2
and 2B.
Appellants further argue that "[ c ]laim 1 ( as a whole or ordered
combination) is not directed to a scheme and plan that can be performed by a
human using his mind and pen." Reply Br. 6 (emphasis omitted). In
support, Appellants argue "computing delivery plans that maximize one or
more business values that involve a large number of incoming shipments and
product orders is a problem not even attempted without the use of
computers." Id.
This argument is unpersuasive. To be sure, the claimed invention
may be able to model and solve complex delivery scheduling problems that
cannot be attempted without the use of computers. However, Appellants
point to no claim language that reasonably limits the scope of claim 1
exclusively to problems of such complexity. Claim 1 is, in fact, broad
enough to read additionally on a scheme or plan that can be performed by a
human using his or her mind aided by only a pen and paper.
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Because claim 1 reasonably may be characterized as being directed to
a mental process, it is unnecessary to determine further whether claim 1 also
can be characterized reasonably as being directed to a commercial practice
or a mathematical algorithm. See, e.g., Reply Br. 2 (wherein Appellants
summarize their arguments).
The next inquiry mandated by the 2019 Memorandum is to determine
whether claim 1 integrates the recited abstract idea into a practical
application. 2019 Memorandum 54 ("In [step 2A2], examiners evaluate
whether the claim recites additional elements that integrate the exception
into a practical application of that exception. This prong adds a more
detailed eligibility analysis to step one of the Alice/Mayo test (US PTO
Step 2A[ 1]) than was required under prior guidance").
Because the appeal documents were filed and mailed prior to the
issuance of the 2019 Memorandum, Appellants and the Examiner address
the inquiries associated with the new step 2A2 either under step 2Al or
step 2B. See Final Act. 5-8; App. Br. 20-26; Ans. 9-14; Reply Br. 2-10.
For the purposes of this opinion, though, the analysis of the Examiner's
determinations and Appellants' arguments is separated into the three steps
mandated by the 2019 Memorandum.
Appellants argue that "[i]n contrast to the claims of Alice, Bilski, and
Ultramercial, the [present claims], on their face, do not only recite features
directed to generic financial activity[,]" but rather "recite[] specific,
technical features that solve a technical problem with a technical solution."
App. Br. 26. This argument is unpersuasive. The fact that the claims are not
directed to financial activities does not necessarily mean that the claims are
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directed to an improvement in technology that integrates the abstract idea
into a practical application.
Appellants further argue that "claim 1 includes very specific technical
limitations on how [the abstract idea of matching orders with incoming
shipments] is accomplished." App. Br. 14. Specifically, Appellants argue
that claim 1 recites "a job dispatcher" that arranges and groups incoming
products and product orders by type and splits multiple product orders into
single types of products. Id. at 14-15.
This argument is unpersuasive because the function associated with
the job dispatcher merely is a detailed description of one of the claimed
abstract ideas-a mental process that entails observation, evaluation, and
judgment. Furthermore, Appellants do not explain what structure or
improvement to technology is denoted by the label "job dispatcher." The
term appears to be broad enough to encompass any hardware or software for
performing the recited observations, evaluations, and judgments.
Our reviewing court has explained "the 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."
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (US.), 687 F.3d
1266, 1278 (Fed. Cir. 2012). Relying on a "processor" 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. 2015).
Appellants argue that "claim 1 recites limitations that are directed to
an improvement to computer-related technology-improvement of linear
programming with parallel processing." App. Br. 16-17. Appellants then
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describe some of the goals and claimed steps that are used for solving the
modeling problem. Id. ( discussing the goal of optimizing a linear
optimization function by modeling each job as a separate constrained linear
optimization problem, employing complexity estimations, and assigning
sorted jobs to a plurality of central processing units). Appellants argue that
"claim 1 can not be 'understood as simply adding conventional computer
components to well-known business practices"' because "[t]he 'software
arts' are recognized within the field of computer science as including
software that executes linear programming." Id. at 17-18. Appellants also
make similar arguments under the theory that the claims are "entirely rooted
in computer technology." Id. at 18.
These arguments are unpersuasive. The fact that the invention recites
computer technology does not mean that the claim necessarily is directed to
an improvement to the functioning of a computer or to any other technology
of technical field. See MPEP § 2106.0S(a). In the present case, the recited
computer elements merely are employed to carry out the noted abstract idea
of modeling scheduling problems. Appellants do not sufficiently explain
how the present invention improves the computer technology that performs
this abstract idea, as opposed to merely improving the underlying abstract
idea, itself.
Appellants argue that claim 1 is similar to the claims of McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) wherein
"[t]he incorporation of claimed rules (that define morph weights sets as a
function of the timing of phoneme sub-sequences) allows the process to be
automated-as opposed to manually setting the morph weights by an artist."
App. Br. 19. Appellants argue that in McRO, our reviewing court held that
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"[i]t is the incorporation of the claimed rules, not the use of the computer,
that 'improved [the] existing technology process' by allowing the
automation of further tasks." McRO 837 F3.d at 1314, cited in App. Br. 19.
Appellants assert that "[l]ike McRO, claim 1 of the present case does not
simply use a computer as a tool to automate conventional activity, but rather
incorporates specific technical features that improve the existing technology
process." App. Br. 19.
These arguments are unpersuasive. The McRO court went on to
explain
the automation goes beyond merely "organizing [ existing]
information into a new form" or carrying out a fundamental
economic practice. The claimed process uses a combined order
of specific rules that renders information into a specific format
that is then used and applied to create desired results: a
sequence of synchronized, animated characters.
McRO 837 F3.d at 1315 (citation omitted).
Appellants' claim 1 is distinguishable because it does not recite an
improvement to an animation process or any other visual output, such as was
the case in In re Abele, 684 F.2d 902 (CCPA 1982) (which the court found
to be claiming an application of an improved algorithm to a statutory process
for creating an x-ray image) or Research Corp. Techs., Inc. v. Microsoft
Corp., 627 F.3d 859 (Fed. Cir. 2010) (which claimed a method of generating
a digital halftoned image that uses a two-dimensional array of numbers
called a halftone mask). Appellant' claim 1, instead, merely outputs data-a
delivery plan that is generated by the linear solver. Appellants present no
persuasive evidence or arguments that the generated delivery plan is
anything beyond processed data that has been generated in routine data
format.
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In fact, Appellants' arguments indicate that the generated delivery
plans are merely data generated in routine format, albeit generated more
efficiently through the use of higher processing-power computers:
For large systems, the processing time for generating
delivery plans can be complex and involve long processing
times. The performance of conventional delivery plan systems
are inadequate because they involve long processing delays that
sometimes make the generated delivery plan obsolete because it
would take a day or more to compute.
App. Br. 21 (emphasis added).
In summary, Appellants do not provide persuasive evidence or
arguments that claim 1 recites significantly more than an abstract idea by
virtue of reciting an improvement to the function of a computer or to any
other technology or technological field (see MPEP § 2106.0S(a)), by reciting
a particular machine or transformation (see MPEP §§ 2106.0S(b), (c)), or by
reciting any other meaningful limitations (see MPEP § 2106.0S(e)). That is,
Appellants do not provide persuasive evidence that the abstract idea is
claimed in a manner that integrates Appellants' job-scheduling optimization
and assignment protocol into a practical application.
Turning to step 2B of the Office's patent-eligibility inquiry,
Appellants, likewise, present insufficient evidence that claim 1 recites any
specific computer elements beyond those that were well understood, routine,
and conventional in the field. Appellants argue, for example,
it is not well understood, routine, and conventional in the field
of linear programming to model each job (having the same type
of products) as a separate constrained linear optimization
problem, estimate a complexity of each job for solving the
constrained linear optimization problem, sort the list of jobs
based on the estimated complexity in either increasing or
decreasing complexity, and sequentially assign the constrained
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linear optimization problem of each job of the sorted list to a
plurality of computer processing units (CPUs). Furthermore,
these unconventional steps confine claim 1 to a particular useful
application, the generation of delivery plans.
App. Br. 22-23.
This argument is unpersuasive because Appellants' argument
conflates the step-2B inquiry (whether the additional elements beyond the
abstract idea, viewed individually and as an ordered combination, are well
understood, routine, and conventional) with an improper inquiry into
whether the underlying abstract idea, itself, is novel. "The 'novelty' of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diamond v. Diehr,
450 U.S. 175, 188-89 (1981). A novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S.
at 90.
[The factual inquiry of whether a claim element or combination
is well-understood, routine, and convention] falls under step
two in the § 101 framework, in which 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 claim' into a patent eligible
application." It is clear from Mayo that the "inventive concept"
cannot be the abstract idea itself, and Berkheimer and Aatrix
leave untouched the numerous cases from this court which have
held claims ineligible because the only alleged "inventive
concept" is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Judge Moore,
Concurring) ( citations omitted).
Not only have Appellants failed to persuade that the Examiner erred
in determining the additional elements of claim 1 do not add significantly
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more to the abstract idea, Appellants' arguments, instead, support the
Examiner's determination that the recited additional elements are merely
well understood, routine, and conventional. For example, Appellants
describe their inventive efforts, as follows:
The inventors have built the system on an HP Z800
server with 12 cores (Intel Xeon CPU X5690@3.47 GHZ) and
128G memory, and performed extensive experiments to
discover how the two most important variables ( e.g., the # of
incoming shipments, the # of product orders) will affect the
algorithm's performance. For relatively large delivery plan
problems (e.g., the case of # shipments = 5,000 and the
# product orders = 10,000), the optimization problem can be
solved within 290 seconds, which is an acceptable timeframe
considering the problem size.
Reply Br. 5.
This explanation does not describe a technical solution to a technical
problem. It describes the testing of Appellants' abstract idea on an off-the-
shelf computer system to ascertain the time required for this powerful, but
conventional, processing system to solve large job-scheduling-optimization
problems with the inventive abstract models.
Appellants additionally argue that pre-emption is a consideration in
determining patent eligibility, and that "claim 1 do[es] not pre-empt all uses
of 'matching orders with incoming shipments."' App. Br. 24. This
argument is unpersuasive. We recognize that the Supreme Court has
described "the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre-
emption." See Alice, 573 U.S. 216. However, characterizing preemption as
a driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. As our reviewing court has
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Appeal2017-006824
Application 13/644,819
explained: "The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability" and "[ fJor
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). Although
"preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Id.
For these reasons, I would affirm the Examiner's rejection of
claims 1-15 and 17-20 under 35 U.S.C. § 101 on the basis that Appellants
have not established that the Examiner erred in determining that the claims
are directed to patent-ineligible subject matter.
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