Ex Parte Thue et al

Patent Trials and Appeals Board

Apr 15, 2019

13621097 - (D) (P.T.A.B. Apr. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/621,097 09/15/2012
20995 7590 04/17/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Louisa Yvonne Thue
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.
NAV A.003DV1 5955
EXAMINER
FRENEL, V ANEL
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
04/17/2019 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUISA YVONNE TRUE, LIEZEL LORICO,
SUMANT GANDHI, KAI WANG, and
NATHAN JOSEPH ALEXANDER DOBIE
Appeal2018-005565
Application 13/621,097 1
Technology Center 3600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 6-9 and 18, which are all the claims pending in the
application. Claims 1-5, 10-17, 19, and 20 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify Navarik Corp. as the real party in interest. App. Br. 3.
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Application 13/621,097
STATEMENT OF THE CASE
Introduction
The present invention relates to "managing cargo inspection processes
and associated data for providing accurate cargo loss calculations.
Specifically, aspects of the disclosure will be described with regard to
receiving cargo and voyage information, validating the information, and
calculating losses associated with the cargo and voyage." Spec. ,r 19. Claim
6 is exemplary:
6. A computer-readable non-transitory storage medium
having computer-executable instructions for grouping parcels,
the computer-executable instructions comprising:
first computer executable instructions that, when
implemented by a processor, cause the processor to identify
parcels associated with parcel data, stored in a nontransitory
storage medium, that is similar, wherein the parcel data differs
between the respective parcels and indicates different quantities
of cargo associated with each of the parcels;
second computer executable instructions that, when
implemented by the processor, cause the processor to validate
that the identified parcels are related using parcel data for each
of the parcels to form a first-validated group of parcels; and
third computer executable instructions that, when
implemented by the processor, cause the processor to validate
the first-validated group of parcels to form a second-validated
group of parcels, wherein the third computer executable
instructions cause the processor to validate the first-validated
group of parcels to form the second-validated group of parcels
at least partly by causing the processor to:
receive chronological data stored in the non-transitory
storage medium and corresponding to the first-validated group
of parcels,
identify, from at least the chronological data, a
relationship indicator for each parcel of the first-validated group
of parcels, and
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utilize the relationship indicators to verify that the
different quantities of cargo associated with each parcel of the
second-validated group of parcels relate to at least a portion of
the same cargo at different times during a voyage.
Rejection2
Claims 6-9 and 18 stand rejected under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. Final Act. 2-8. 3
ANALYSIS
35 us.c. § 101
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in this case.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 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.
2 Throughout this opinion, we refer to the ( 1) Final Office Action dated May
2, 2017 ("Final Act."); (2) Appeal Brief dated November 30, 2017 ("App.
Br."); (3) Examiner's Answer dated March 8, 2018 ("Ans."); and (4) Reply
Brief dated May 7, 2018 ("Reply Br.").
3 The Examiner's objection to the Specification (Final Act. 3) is not before
us.
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Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (internal quotation marks
and citation omitted).
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 that framework,
we first determine what concept the claim is "directed to." See 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.").
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 (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
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 ( citation 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
§ 101. USPTO's 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the
guidance set forth in the Guidance, we first look to whether the claim
recites:
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1 ); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h)) (9th Ed., Rev.
08.2017, 2018) (Step 2A, Prong 2).
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
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(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. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54--56.
Turning to Step 2B of the Guidance, "[ t ]he second step of the Alice
test is satisfied when the claim limitations 'involve more than performance
of []well-understood, routine, [and] conventional activities previously
known to the industry."' Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed.
Cir. 2018) ( quoting Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) and
Alice, 573 U.S. at 225). "Whether something is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination." Berkheimer, 881 F.3d at 1369.
In this case, the Examiner determines:
Generic Computer Element - a computer-readable non-
transitory storage medium, a processor, using parcel data for
each of the parcels to form a first-validated group of parcels
where these generic computer elements peif orm the functions.
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Final Act. 8; Ans. 8 ( emphases added).
However, the Examiner has not provided the requisite evidence under
Berkheimer to support the above determination. In particular, the Examiner
has not provided any of the four categories of information required by the
Memorandum of Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) ("Berkheimer Memorandum"):
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s) ....
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05( d)(II) as noting the well-understood,
routine, conventional nature of the additional element( s ).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s) ....
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the
additional element( s ) ....
Berkheimer Memorandum at 3--4. To the contrary, the Examiner relies on a
guidance that predates Berkheimer and states: "'factual evidence' is not a
requirement for prima facie case of 3 5 USC § 101 rejection." Ans. 11.
Therefore, we agree with Appellants that the Examiner has not
provided sufficient evidence required by Berkheimer. See Reply Br. 4;
Berkheimer, 881 F.3d at 1369.4 As a result, the Examiner erred with respect
4 Because the Federal Circuit issued the Berkheimer decision after
Appellants filed the Appeal Brief, Appellants had good cause to raise
arguments based on Berkheimer in the Reply Brief. See 37 C.F.R. §
41.41(b)(2).
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Application 13/621,097
to Step 2B of the Guidance, and we are constrained by the record to reverse
the Examiner's rejection of claims 6-9 and 18 on procedural grounds.
DECISION
We reverse the Examiner's decision rejecting claims 6-9 and 18.
REVERSED
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