Ex parte Hartman
Decision Date | 23 March 2020 |
Docket Number | Appeal 2018-004638,Application 14/673,939 |
Parties | Ex parte RICHARD LEE HARTMAN Technology Center 3600 |
Court | Patent Trial and Appeal Board |
FILING DATE: 03/31/2015
Before ALLEN R. MACDONALD, MICHAEL J. ENGLE, and IFTIKHAR AHMED Administrative Patent Judges.
DECISION ON APPEAL
ENGLE ADMINISTRATIVE PATENT JUDGE
STATEMENT OF THE CASE
Appellant[1] appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1 and 4-21 which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
TECHNOLOGY
The claims relate to "valuing used electronic, computing and/or telecommunications equipment." Spec. Abstract.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with certain limitations at issue emphasized:
The Examiner relies upon the following prior art references:
Abhyanker
US 2002/0133416 A1
Sept. 19, 2002
Burr
US 2013/0055264 A1
Feb. 28, 2013
Clay
US 7, 672, 921 B1
Mar. 2, 2010
Hazard [2]
US 2013/0030780 A1
Jan. 31, 2013
Heard
US 2006/0287903 A1
Dec. 21, 2006
Hua
US 2016/0005242 A1
Jan. 7, 2016
Nagle
US 2007/0033112 A1
Feb. 8, 2007
Ryan
US 2006/0179043 A1
Aug. 10, 2006
Claims 1 and 4-21 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter without significantly more. Final Act. 14.
Claims 1, 4, 5, 8, 10-12, 15, 18, and 21 stand rejected under 35 U.S.C. § 103 as being obvious over Heard, Clay, and Hua. Final Act. 19.
Claims 6 and 9 stand rejected under 35 U.S.C. § 103 as being obvious over Heard, Clay, Hua, and Hazard. Final Act. 49.
Claim 7 stands rejected under 35 U.S.C. § 103 as being obvious over Heard, Clay, Hua, and Burr. Final Act. 54.
Claims 13, 14, and 20 stand rejected under 35 U.S.C. § 103 as being obvious over Heard, Clay, Hua, [3] and Nagle. See Final Act. 56-64.
Claims 16 and 17 stand rejected under 35 U.S.C. § 103 as being obvious over Heard, Clay, Hua, and Abhyanker. Final Act. 64.
Claim 19 stands rejected under 35 U.S.C. § 103 as being obvious over Heard, Clay, Hua, and Ryan. Final Act. 69.
Claim 11 stands rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 14.
Claims 1 and 4-21 were rejected under 35 U.S.C. § 112(a) for lack of written description. Final Act. 13. However, the Examiner subsequently agreed with Appellant's arguments against that rejection. Ans. 56. Thus, we treat the § 112(a) rejection as withdrawn.
1. Did the Examiner err in concluding that claim 1 is directed to patent-ineligible subject matter without significantly more?
2. Did the Examiner err in finding Heard teaches or suggests the "selecting" and "equating" steps italicized in claim 1 above?
§101
(Claims 1 and 4-21)
Section 101 defines patentable subject matter: "Whoever 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. The Supreme Court, however, has "long held that this provision contains an important implicit exception" that "[l]aws of nature, natural phenomena, and abstract ideas are not patentable." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quotation omitted). "Eligibility under 35 U.S.C. § 101 is a question oflaw, based on underlying facts." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). To determine patentable subject matter, the Supreme Court has set forth a two part test.
"First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts" of "laws of nature, natural phenomena, and abstract ideas." Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 217 (2014). A court must be cognizant that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas" (Mayo, 566 U.S. at 71), and "describing the claims at... a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, "we evaluate the focus of the claimed advance over the prior art to determine if the character of the claim as a whole, considered in light of the specification, is directed to excluded subject matter." Trading Techs. Int'l, Inc. v. IBGLLC, 921 F.3d 1084, 1092 (Fed. Cir. 2019) (quotation omitted). "The inquiry often is whether the claims are directed to 'a specific means or method' for improving technology or whether they are simply directed to an abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017).
If the claims are directed to an abstract idea or other ineligible concept, then we continue to the second step and "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." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). The Supreme Court has "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." Id. at 217-18 (quotation omitted). However, "[t]he abstract idea itself cannot supply the inventive concept, no matter how groundbreaking the advance." Trading Techs., 921 F.3d at 1093 (quotation omitted).
In 2019, the U.S. Patent & Trademark Office published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"); USPTO, October 2019 Update: Subject Matter Eligibility, available at https://www.uspto.gOv/sites/default/files/documents/peg_oct_2019_update.p dfC'Oct. Update"). Under that guidance, we look to the following steps to determine whether the claim recites the following items:
USPTO Step
Does the claim recite ___?
MPEP §
1
Aprocess, machine, manufacture, or composition of matter
2106.03
A judicial exception, such as a law of nature or any of the following groupings of abstract ideas:
1) Mathematical concepts, such as mathematical formulas;
2) Certain methods of organizing human activity, such as a fundamental economic practice; or
3) Mental processes, such as an observation or evaluation performed in the human mind.
Any additional limitations that integrate the judicial exception into a practical application
2106.05(a)- (c), (e)-(h)
Any additional limitations beyond the judicial exception that, alone or in combination, were not “well-understood, routine, conventional”
See Guidance 52, 55, 56.
There is no dispute that claim 1 recites "[a] product valuation method comprising [certain] steps" and therefore recites a process.
With the possible exception of a generic "database" and "memory, "[4]the entirety of claim 1 can be performed in the human mind or with pen and paper. For example, the human mind, either alone or with written records, is fully capable of providing historical sales data, reading parts ("fields") from that data, selecting some of those parts, giving those selected parts an identifier, querying the data against the identifier applying valuation methods based on that data, and recording the results. , Specifying the particular kind of data (e.g. "buyer identity"; "quantity bought"; "sale price"; and "model number") in this context does not impact that the process can be done mentally or with pen and paper. See, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) ("But merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas.").
Appellant argues that claim 1 does not recite an abstract idea because it instead recites "an ordered combination of operations." Appeal Br. 11. However, that is not the proper...
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