Ex parte Tibberts, Appeal 2020-000138

• Decision Date: 10 June 2020
• Docket Number: Application 14/930,643,Appeal 2020-000138
• Parties: Ex parte JANET LYNN TIBBERTS Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte JANET LYNN TIBBERTS Technology Center 3600

Appeal 2020-000138

Application 14/930, 643

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

June 10, 2020

FILING DATE: 11/02/2015

Before JOHNNY A. KUMAR, LARRY J. HUME, and MATTHEW J. MCNEILL Administrative Patent Judges.

DECISION ON APPEAL

HUME ADMINISTRATE PATENT JUDGE.

Pursuant to 35 U.S.C. § 134(a), Appellant¹ appeals from the Examiner's decision rejecting claims 1-6, and 8-17, which are all rejections pending in the application. Appellant has canceled claim 7. See Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

STATEMENT OF THE CASE ^[2]

The claims are directed to a system and method of scheduling classes for a timely matriculation. See Spec (Title). In particular, Appellant's disclosed embodiments and claimed invention "relate[] to software applications that are used to schedule classes in an institution of learning, such as a college or university. More particularly the present invention relates to systems that track a student's progress in matriculating toward a selected degree in order to achieve the degree in the shortest, most cost efficient manner." Spec. 1. 6-13.

Exemplary Claim

Claim 1, reproduced below, is representative of the subject matter on Appeal (emphases added to contested prior-art limitations):

1. A system for scheduling courses at an institution, wherein said institution offers a variety of courses in different semesters and has various course requirements for graduation, said system comprising:

an administrative computer that maintains a computer database, wherein said computer database contains said variety of courses and said course requirements for graduation;

a computer network for providing access to said administrative computer to students of said institution;

a student computer accessible by a student that has a major, a graduation date, and has previously completed some of

a variety of courses offered by said institution, wherein said student computer accesses said computer database through said computer network, and wherein said student computer has a display;

said student computer being programmed to schedule courses for an upcoming semester, wherein said student computer initially filters said variety of courses available for selection by eliminating courses that have been completed by the student, eliminates courses that do not serve as one of said course requirements for said major of the student, and eliminates courses that have prerequisites yet unattained by the student, therein creating filtered course offerings;

wherein the student uses the student computer to select courses from said filtered course offerings, therein creating scheduled courses, wherein said student computer automatically updates said filtered course offerings after each selection of a course to eliminate any of said variety of courses that conflict in date and time with scheduled courses; and

wherein said student computer generates a graphical indication on said display that indicates whether or not said scheduled courses are sufficient to complete said course requirements for graduation by said graduation date and how many credits should be taken in the semester being scheduled to complete said course requirements for graduation by said graduation date.

REFERENCES

The prior art relied upon by the Examiner as evidence is:

Name

Reference

Date

                              Shaver
                            
                              US 2006/0105315 A1
                            
                              05/18/06
                            
                

Adams

US 2010/0223194 A1

Sept. 2, 2010

Liu et al. ("Liu")

US 2016/0089572 A1

03/31/16

REJECTIONS^[3]

R1. Claims 1-6, and 8-17 stand rejected under 35 U.S.C. § 101 because 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. 2.

R2. Claims 1-6, and 8-9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Adams, Shaver, and Liu. Final Act. 5.

R3. Claims 10, and 13-15 stand rejected under 35 U.S.C. § 103 as being unpatentable over Adams. Final Act. 7.

R4. Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Adams and Shaver in view of the Examiner's taking of Official Notice. Final Act. 8.

R5. Claim 16 stands rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Adams and Shaver. Final Act. 9.

R6. Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Adams and Shaver in view of the Examiner's taking of Official Notice. Id.

CLAIM GROUPING

Based on Appellant's arguments (Br. 6-18) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible subject matter Rejection R1 of claims 1-6, and 8-17 on the basis of representative claim 1; we decide the appeal of obviousness Rejection R2 of claims 1-6 and 8-9 on the basis of representative claim 1; we decide the appeal of obviousness Rejection R3 of claims 10 and 13-15 on the basis of representative claim 10; and we decide the appeal of obviousness Rejection R4 of claims 11 and 12 on the basis of representative claim 11.

We address Rejections R5 and R6 of remaining claims 16, and 17, infra.^[4]

ISSUES AND ANALYSIS

In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).

We disagree with Appellant's arguments with respect to claims 1-6 and 8-17 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellant's arguments. We highlight and address specific findings and arguments regarding claims 1 and 10 for emphasis as follows.

1. § 101 Rejection R1 of Claims 1-6, 8-17

Issue 1

Appellant argues (Br. 7-9) the Examiner's rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in error. These contentions present us with the following issue:

Under the USPTO's Revised Guidance, informed by our governing case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under § 101?

Principles of Law

A. 35 U.S.C. § 101

An invention is patent-eligible if it is a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101.^[5]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. Mayo Collaborative Servs. v. Prometheus Labs., Inc. 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)).

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. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 217-18 (2014) (citing Mayo, 566 U.S. at 75-77). 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, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diehr, 450 U.S. at 191); "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 "[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. (citation omitted) (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.").

Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities and mathematical formulas or relationships. Alice, 573 U.S. at 217-21. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id....