William Snell et al.

Patent Trials and Appeals BoardAug 29, 2019

13891136 - (D) (P.T.A.B. Aug. 29, 2019)

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. 13/891,136 05/09/2013 William Snell 56581.125.1 8708 88676 7590 08/29/2019 Fredrikson & Byron, P.A. Intellectual Property Group, Fluke Patents 200 South 6th Street, Suite 4000 Minneapolis, MN 55402 EXAMINER HENRY, MATTHEW D ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 08/29/2019 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): ip@fredlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WILLIAM SNELL and STUART HOLLIDAY ____________ Appeal 2018-006265 Application 13/891,1361 Technology Center 3600 ____________ Before MARC S. HOFF, JOHNNY A. KUMAR, 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 1, 3–19, and 22–24, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify InfraRed Integrated Systems, Limited as the real party in interest. App. Br. 3. Appeal 2018-006265 Application 13/891,136 2 STATEMENT OF THE CASE Introduction The present invention relates to “a method and system for determining information relating to the occupancy of a space by one or more objects. The method and system have been devised for determination of queue lengths and other kinds of waiting times.” Spec. ¶ 2. Claim 1 is exemplary: 1. A computer-implemented method of determining information relating to the occupancy of a space, the method comprising: receiving first data from a sensor relating to an estimation of the occupancy of the space over a time period; receiving second data from a point of sale apparatus, the second data comprising either i) a set of decrementing event times occurring during the time period, or ii) a set of incrementing event times occurring during the time period, wherein decrementing events and incrementing events are events affecting the occupancy of the space during the time period; either: using the first data and the set of decrementing event times to determine estimated incrementing event times occurring during the period of time, each estimated incrementing event time determined to correspond to a respective decrementing event time in the set of decrementing event times, or using the first data and the set of incrementing event times to determine estimated decrementing event times occurring during the period of time, each estimated decrementing event time determined to correspond to a respective incrementing event time in the set of incrementing event times; Appeal 2018-006265 Application 13/891,136 3 revising the estimation of the occupancy of the space over the period of time using either: a) the determined corresponding decrementing event times and estimated incrementing event times or b) the determined corresponding incrementing event times and estimated decrementing event times; and compiling at a computing apparatus a report using the revised estimation of the occupancy. References and Rejections2 Claims 1, 3–19, and 22–24 are rejected under 35 U.S.C. § 101 because they are directed to patent-ineligible subject matter. Final Act. 13– 16. Claims 1, 3, 4, 17, and 22–24 are rejected under pre-AIA 35 U.S.C. § 103 as being obvious over Florucci (US 2011/0320256, published Dec. 29, 2011) and Sorensen (US 2007/0253595 A1, published Nov. 1, 2007). Final Act. 16–25. Claim 5 is rejected under pre-AIA 35 U.S.C. § 103 as being obvious over Florucci, Sorensen, and Katsof (US 4,700,295, published Oct. 13, 1987). Final Act. 25–26. Claims 6–15 are rejected under pre-AIA 35 U.S.C. § 103 as being obvious over Florucci, Sorensen, Katsof, and Little’s Law (Service Engineering - Last Revision Apr. 2007). Final Act. 27–32. 2 Throughout this opinion, we refer to the (1) Final Office Action dated Sep. 27, 2017 (“Final Act.”); (2) Appeal Brief dated Feb. 27, 2018 (“App. Br.”); (3) Examiner’s Answer dated Mar. 29, 2018 (“Ans.”); and (4) Reply Brief dated May 29, 2018 (“Reply Br.”). Appeal 2018-006265 Application 13/891,136 4 Claims 18 and 19 are rejected under pre-AIA 35 U.S.C. § 103 as being obvious over Florucci, Sorensen, and Little’s Law. Final Act. 32–33. ANALYSIS 35 U.S.C. § 101 We have reviewed the Examiner’s rejection in light of Appellants’ contentions and the evidence of record. We concur with Appellants’ contentions 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. Ltd. v. CLS Bank Int’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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 Appeal 2018-006265 Application 13/891,136 5 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 (Gottschalk v. 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 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 Appeal 2018-006265 Application 13/891,136 6 to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn 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: (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: Appeal 2018-006265 Application 13/891,136 7 (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’l 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. Here, we agree with Appellants that the Examiner has not provided the requisite evidence to support the factual findings concerning well- understood, routine, and conventional activities. See Reply Br. 5; Berkheimer, 881 F.3d at 1369.3 In particular, the Memorandum of Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (“Berkheimer Memorandum”) requires the information listed below: 3 Because Appellants filed the Appeal Brief before the date of the Berkheimer Memorandum, Appellants had good cause to raise arguments based on the Berkheimer Memorandum in the Reply Brief. See 37 C.F.R. § 41.41(b)(2). Appeal 2018-006265 Application 13/891,136 8 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. But the Examiner has not provided any of the four categories of information required by the Berkheimer Memorandum. Therefore, the Examiner erred with respect to Step 2B of the Guidance, and we are constrained by the record to reverse the Examiner’s rejection of claims 1, 3–19, and 22–24 on procedural grounds. 35 U.S.C. § 103 We have reviewed the Examiner’s rejection in light of Appellants’ contentions and the evidence of record. We concur with Appellants’ contentions that the Examiner erred in finding the cited portions of Florucci teach receiving first data from a sensor relating to an estimation of the occupancy of the space over a time period, and receiving second data from a point of sale apparatus, the second data comprising either i) a set of decrementing event times occurring during the time period, or ii) a set of incrementing event times occurring during the time period, wherein decrementing events Appeal 2018-006265 Application 13/891,136 9 and incrementing events are events affecting the occupancy of the space during the time period, as recited in independent claim 1. See App. Br. 16–18; Reply Br. 7–8. The Examiner cites Florucci’s Figures 1 and 3, Abstract, and paragraphs 7, 10, 13, 24, 28, 34, 35, 54, 70, 79, 80, and 103 for teaching the disputed claim limitation. See Final Act. 17–18; Ans. 11–12. We have reviewed the cited Florucci portions, and they do not describe receiving first data from a sensor relating to an estimation of the occupancy of the space over a time period, and receiving second data from a point of sale apparatus, the second data comprising either i) a set of decrementing event times occurring during the time period, or ii) a set of incrementing event times occurring during the time period, wherein decrementing events and incrementing events are events affecting the occupancy of the space during the time period, as required by claim 1. In particular, the cited Florucci portions describe different spaces—not “an estimation of the occupancy of the space over a time period . . . decrementing events and incrementing events are events affecting the occupancy of the space during the time period,” as required by claim 1 (emphases added). Absent further explanation from the Examiner, we do not see how the cited Florucci portions teach the disputed claim limitation. Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner’s rejection of claim 1. Each of independent claims 22–24 recites a claim limitation that is substantively similar to the disputed limitation of claim 1. See claims 22– 24. The Examiner applies the same findings and conclusions discussed Appeal 2018-006265 Application 13/891,136 10 above to claims 22–24. See Final Act. 24. Therefore, for similar reasons, we reverse the Examiner’s rejection of independent claims 22–24. We also reverse the Examiner’s rejection of corresponding dependent claims 3–15 and 17–19.4 Although the Examiner cites additional references for rejecting some dependent claims, the Examiner has not shown the additional references overcome the deficiency discussed above in the rejection of claim 1. DECISION We reverse the Examiner’s decision rejecting claims 1, 3–19, and 22– 24 under 35 U.S.C. § 101. We reverse the Examiner’s decision rejecting claims 1, 3–15, 17–19, and 22–24 under pre-AIA 35 U.S.C. § 103. REVERSED 4 The Examiner has not rejected claim 16 under 35 U.S.C. § 103. The Examiner notes claim 16 is allowable if it is rewritten into an independent form and overcomes the 35 U.S.C. § 101 rejection. Final Act. 33.