Ex parte McLaughlin

• Decision Date: 23 April 2020
• Docket Number: Application 12/728,Appeal 2019-002441,121
• Parties: Ex parte MICHAEL McLAUGHLIN Technology Center 3600 Name Reference Date
• Court: Patent Trial and Appeal Board

Ex parte MICHAEL McLAUGHLIN Technology Center 3600

Appeal 2019-002441

Application 12/728, 121^[1]

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

April 23, 2020

FILING DATE: 03/19/2020

Before JOHN A. EVANS, JOHN P. PINKERTON, and MICHAEL M. BARRY Administrative Patent Judges.

DECISION ON APPEAL

PINKERTON, Administrative Patent Judge.

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-24, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).

We affirm.

STATEMENT OF THE CASE

Introduction

Appellant generally describes the disclosed and claimed invention as relating to "notification management and more specifically to notification management for service providers." Spec. ¶ 2.^[2] Claims 1, 8, 14, and 20 are independent. Independent claim 1 is illustrative of the subject matter on appeal and reads as follows:

1. A system of notification management having a notification manager, the system assisting a plurality of service providers that receive at least one product to be serviced by one of the plurality of service providers for a customer, each of the plurality of service providers having associated provider information, comprising:

a notification manager, comprising:

a memory configured to store instructions;

at least one database to store associated provider information concerning each of the plurality of service providers; and

a processor configured to execute the instructions stored in the memory, wherein execution of the instructions generates a notification based on status information provided by at least one of the plurality of service providers, the processor configured to:

receive contact information for the customer and a designation concerning a service provider having the at least one product, the designated service provider being selected from the plurality of service providers stored in the at least one database;

receive a receipt notice from one of the plurality of service providers in response to the received contact information for the customer, the receipt notice including at least an indication whether the at least one product was received at the designated service provider;

receive an alert transmission request initiated by the customer, the alert transmission request concerning progress of the servicing of the at least one product associated with the customer by the designated service provider;

send an alert to the designated service provider, the alert concerning the customer associated with the received contact information, the alert displaying a plurality of alert options, the plurality of alert options including a plurality of status options concerning the status of the product;

receive a selection of one of the plurality of status options and a selected alert option from the service provider in response to the alert; and

send the generated notification to the customer, for display on a display of an electronic device associated with the customer, based on the selected alert option and the received contact information.

Appeal Br. A-1-A-2 (Claims App.).

References

                Name
                Reference
                Date
                                    Janas et al. (Janas)
                                  
                                    US 2009/0286559 A1
                                  
                                    11/19/09
                                  
                                    Rice et al. (Rice)
                                  
                                    US 2006/0184381 A1
                                  
                                    08/17/06
                                  
                                    Pandey
                                  
                                    US 2010/0146558 A1
                                  
                                    06/10/10
                                  
                                    Lundy et al. (Lundy)
                                  
                                    US 8, 331, 912 B1
                                  
                                    12/11/12
                                  
                                    Bristow et al. (Bristow)
                                  
                                    US 8, 166, 126 B2
                                  
                                    04/24/12
                                  
                

Rejections on Appeal

The Examiner rejected claims 1-24 under 35 U.S.C. § 101 as being directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Final Act. 2-5.

The Examiner rejected claims 1-7 and 14-20 under 35 U.S.C. § 103(a) as being unpatentable over Janas, Rice, Pandey, and Lundy. Id. at 6-16.

The Examiner rejected claims 8-13 under 35 U.S.C. § 103(a) as being unpatentable over Janas, Rice, and Pandey. Id. at 16-22.

The Examiner rejected claims 21, 23, and 24 under 35 U.S.C. § 103(a) as being unpatentable over Janas, Rice, Pandey, Lundy, and Bristow. Id. at 22-23.

The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as being unpatentable over Janas, Rice, Pandey, and Bristow. Id. at 23-24.

ANALYSIS

We have reviewed the Examiner's rejections in light of Appellant's arguments in the Appeal Brief (see Appeal Br. 7-48) and the Reply Brief (see Reply Br 1-6), and are not persuaded the Examiner has erred. Unless otherwise noted, we adopt as our own the findings and reasons set forth by the Examiner in the Office Action from which this appeal is taken (Final Act. 2-31), and in the Examiner's Answer (Ans. 3-14), and we concur with the conclusions reached by the Examiner. For emphasis, we consider and highlight specific arguments as presented in the Briefs.

I. Rejection under 35 U.S.C. § 101

A. Applicable Law

Section 101 of the Patent Act provides that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" is patent eligible. 35 U.S.C. § 101. But the Supreme Court has long recognized an implicit exception to this section: "[l]aws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014) (quoting Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us first to consider whether the claim is "directed to one of those patent-ineligible concepts." Alice, 573 U.S. at 217. If so, we then examine "the elements of [the] 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 Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the claim for an "inventive concept," "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.'" Alice, 573 U.S. at 217-18 (alteration in original) (quoting Mayo, 566 U.S. at 72-73).

In January 2019, the Patent Office issued guidance about this framework. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance").^[3] Under the Revised Guidance, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the Revised Guidance ("Prong One") and (2) fails to integrate the recited abstract idea into a practical application ("Prong Two"). See Revised Guidance, 84 Fed. Reg. at 51, 54. If the claim is directed to an abstract idea, as noted above, we then determine whether the claim has an inventive concept. The Revised Guidance explains that when making this determination, we should consider whether the additional claim elements add "a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field" or "simply append[] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality." Revised Guidance, 84 Fed. Reg. at 56.

With these principles in mind, we first analyze whether claim 1 is directed to an abstract idea.

B. Abstract Idea

The Examiner determines that the recited steps of claim 1, excluding the recited computing elements, are directed to the abstract idea of "notification management including a plurality of service providers to receive at least one product to be serviced by service provider[, ] each provider having associated provider information[, ]" and to "receive contact information for customer and service provider to generating [sic] a notification based on the selected alert option." Final Act. 2; see also Ans. 5. The Examiner also determines that claim 1 is similar to court-identified abstract ideas of

[c]ollecting and analyzing information to detect misuse and notifying a user when misuse is detected^[4] . . . [, ] [c]ollecting and comparing known information^[5] . . ., [c]ollecting, displaying, and manipulating data^[6] . . ., [c]ollecting information, analyzing it, and displaying certain results of the collection and analysis^[7] . . . [, ] comparing new and stored information and using rules to identify options^[8] . . . [, ] information . . . obtained and . . . organized and rules . . . applied to the information to make decisions^[9] . . . [, and] information . . . received and rules . . . used to determine delivery.^[10]

Final Act. 2-3. The Examiner explains that

the courts have held that concepts relating to the collection of data (such as customer contact information; service provider information) and the use of the collected data in combination with rules (such as using information based on selected alert option) in decision making (such as generating a notification) are abstract ideas and/or organizing human activities (such as generating rule based tasks/alerts for processing an insurance claim).

Id. at 3.

Appellant contends...