Ex parte Dain

• Decision Date: 14 May 2019
• Docket Number: 898,Application 13/092,Appeal 2017-010791
• Parties: Ex parte JOSEPH WHITNEY DAIN, JEFFREY LEE FIELDS, KELLY LOUISE HICKS, and FREDERICK SCOTT HUNTER KRAUSS Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte JOSEPH WHITNEY DAIN, JEFFREY LEE FIELDS, KELLY LOUISE HICKS, and FREDERICK SCOTT HUNTER KRAUSS Technology Center 3600

Appeal 2017-010791

Application 13/092, 898^[1]

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 14, 2019

FILING DATE: 04/22/2011

Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and DAVID J CUTITTAII, Administrative Patent Judges.

DECISION ON APPEAL

DAVID J. CUTITTA II., ADMINISTRATIVE PATENT JUDGE

Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's decision rejecting claims 1, 3, 4, 7-10, 12 13, 16-19, and 21- 27, the only claims pending in the application.^[2] We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

STATEMENT OF THE CASE

Invention

Appellants' invention relates to "automated ordering of replacement parts for components in a computer system based on established service thresholds." Spec. ¶ 1.^[3]

Exemplary Claim

Claim 1 is reproduced below with bracketed material added. 1. A system comprising:

[a] a plurality of electronic components;

[b] at least one processor and logic integrated with and/or executable by the at least one processor, the logic being configured to:

[c] identify one of the electronic components in the system that requires service, wherein the identified electronic component has a service threshold associated therewith;

[d] dynamically adjust the service threshold associated with the identified electronic component based at least in part on one or more of: a maximum number of requests to service the identified electronic component, and a global enable/disable part ordering setting;

[e] determine whether the identified electronic component needs a replacement part based on the adjusted service threshold;

[f] automatically order the replacement part without manual intervention, in response to determining that the identified electronic component needs the replacement part;

[g] output a status of the order for the replacement part order in response to ordering the replacement part; and

[h] use the replacement part in the system upon installing the replacement part to the identified electronic component;

[i] wherein the service threshold is selected from a group consisting of "high", "medium" and "low", and

[j] wherein each of the "high" "medium" and "low" service thresholds prescribe a different service protocol.

Appeal Br. 28 (Claims Appendix).

REFERENCES

The Examiner relies upon the following prior art^[4] in rejecting the claims on appeal:

Obert

US 2004/0204977 A1

Oct. 14, 2004

Gilberto

US 7, 444, 298 B2

Oct. 28, 2008

Cassidy

US 2012/0030326 A1

Feb.2, 2012

Jorgensen

US 8, 918, 784 B1

Dec. 23, 2014

REJECTIONS

Claims 1, 3, 4, 7-10, 12, 13, 16-19, and 21-27 stand rejected under 35U.S.C. § 101 as being directed to a judicial exception without adding significantly more. See Final Act 3-11.

Claims 1, 3, 4, 7, 9, 10, 12, 13, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Obert, Cassidy, and Jorgensen. See Final Act. 11-25.

Claims 8, 16-19, 21, and 23-27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Obert, Cassidy, Jorgensen, and Gilberto. See Final Act. 25-30.

Our review in this appeal is limited to the above rejections and the issues raised by Appellants. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2016).

DISCUSSION

Rejection Under § 101

Standard for Patent Eligibility

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. v. CLS Bank Int'l, 573 U.S 208, 216(2014).

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 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, 69 (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 (1853))); 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 176; 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 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 (quotation 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 requiring] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention." Id.

USPTO January 7, 2019 Revised Section 101 Memorandum

The USPTO recently published revised guidance on the application of §101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 50 (Jan. 7, 2019) ("Memorandum"). Under the Memorandum 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); and

(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).

See 84 Fed. Reg. at 52-55.

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, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.

See 84 Fed. Reg. at 56.

Analysis

Appellants argue the claims as a group. See Appeal Br. 6, 7. We select independent claim 1 as exemplary of Appellants' arguments for the group. See 37 C.F.R. § 41.37(c)(1)(iv)(2016).

The Examiner determines "the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more." Final Act. 4.

Appellants present several arguments against the § 101 rejection. We do not find Appellants' arguments persuasive, as discussed below. Applying the guidance set forth in the Memorandum, we are not persuaded of Examiner error. We adopt the nomenclature for the analysis steps used in the Memorandum.

STEP1

Section 101 provides that "[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. Initially, we determine that independent claim 1 recites "[a] system." Appeal Br. 28. As such, claim 1 is directed to a statutory class of invention within 35 U.S.C § 101, i.e., a machine. See also Final Act. 7.

STEP 2A, Prong 1

Under Step 2 A, Prong 1, of the Memorandum, we must determine whether claim 1, being directed to a statutory class of invention, nonetheless falls within a judicial exception.

The Examiner determines claim 1 is "directed to the abstract idea of automating replacement part ordering based on service thresholds" and "[t]his concept[] relate[s] to a method of organizing human activity and is not...