Ex Parte Bluhm et al

Patent Trial and Appeal Board

Jun 15, 2018

11735874 (P.T.A.B. Jun. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/735,874 04/16/2007
63759 7590 06/19/2018
DUKEW. YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Thomas H. Bluhm
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
06-0864-US-NP 2784
EXAMINER
AUSTIN, JAMIE H
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
06/19/2018 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS H. BLUHM, GREGORY A.LYNCH,
and YUNG S. KIM
Appeal2017-003718
Application 11/735,874 1
Technology Center 3600
Before ALLEN R. MACDONALD, JON M. JURGOV AN, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-5, 8-12, 15, 16, and 19, constituting all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Boeing Company is identified as the real party in interest. App. Br. 2.
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Application 11/735,874
STATEMENT OF THE CASE
Introduction
The Application is directed to "a computer implemented method,
apparatus, and computer usable program code for protecting and exchanging
business process models between environments using differing process
model authoring systems." Spec. ,r 1. Claims 1, 9, and 16 are independent.
Claim 1 is reproduced below for reference (emphasis added):
1. A computer implemented method for creating an
aerospace apparatus, the computer implemented method
compnsmg:
parsing a file into component parts, the file including
exchange process model data;
identifying, by a processor, a set of information
requirements for exchanging process model data between
process authoring tools using different process model exchange
formats within a process management system, wherein the
process authoring tools are tools for creating the process for
defining the aerospace apparatus, the process model data
including data derived from an aircraft airframe definition
process model having design processes for an aircraft airframe;
extending, by the processor, a definition of a common
process model exchange format to include a set of common
objects using the set of information requirements and adding the
set of common objects to the definition of the common process
model exchange format using the set of information
requirements to form the common process model exchange
format, wherein the set of common objects are supported
between a source process authoring tool and a target process
authoring tool in the process authoring tools, the target process
authoring tool for testing or manufacturing the aerospace
apparatus, and wherein the file comprises an imported file that
was originated by an entity using a different target process
authoring tool than the source process authoring tool associated
with a requester;
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excluding classes, relationships, and objects from
exchange process model data that are not compliant with a
defined common format;
populating a relational database with the set of common
objects, wherein the set of common objects are found in process
definition files associated with the source process authoring tool
and the target process authoring tool;
generating, by the processor, an output file using the
common process model exchange format, wherein the common
process model exchange format is compatible with a process
model exchange format used by the target process authoring tool,
wherein the output file comprises a master process model
exchange format that is independent of formats of the process
authoring tools and the target process authoring tool; and
testing or manufacturing the aerospace apparatus by
using the process authoring tool, wherein the process authoring
tool uses the output file in testing or manufacturing the
aerospace apparatus, wherein the target process authoring tool
uses the process model exchange format that is different than the
source process authoring tool, and wherein the aerospace
apparatus comprises one of a part, a piece, a component, an
assembly, a machine, or equipment associated with the aircraft
airframe.
The Examiner's Rejection
Claims 1-5, 8-12, 15, 16, and 19 stand rejected under 35 U.S.C. § 101
for being directed to non-statutory subject matter. See Final Act. 6.
ANALYSIS
Appellants do not separately argue the claims. See App. Br. 22. We
select claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
We have reviewed the Examiner's rejections in light of Appellants'
arguments. We are not persuaded of Examiner error; we adopt the
Examiner's findings and conclusions as our own, and we add the following
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primarily for emphasis. Any arguments Appellants could have raised but
chose not to raise in the Briefs are deemed waived. See In re Jung, 637 F.3d
1356, 1366 (Fed. Cir. 2011) ("it has long been the Board's practice to
require an applicant to identify the alleged error in the examiner's
rejections").
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include an implicit
exception: "[l]aws of nature, natural phenomena, and abstract ideas" are not
patentable. See Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347,
2354 (2014) (internal citation and quotation marks omitted). The Supreme
Court, in Alice, reiterated the two-step framework previously set forth in
Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 79
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," e.g., to an abstract idea. Id. If the
claims are directed to a patent-ineligible concept, the inquiry proceeds to the
second step, where the elements of the claims are considered individually
and "as an ordered combination" to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. at 79, 78-79).
Analyzing the claims under step one of the two-step framework laid
out in Alice, the Examiner determines claim 1 is directed to "the concept of
generating a common process model ( an idea of itself, etc.) which is an
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example identified by the courts as an abstract idea" (Final Act. 7), as the
claim recites "collecting and comparing known information, comparing new
and stored information and using rules to identify options" (Final Act. 8).
Proceeding with step two of the Alice framework, the Examiner "concludes
that there are no meaningful limitations in the claims that transform the
judicial exception into a patent eligible application such that the claim
amounts to significantly more than the judicial exception itself." Final Act.
10.
Appellants argue the Examiner's rejection is in error, because "the
claim is directed to manufacturing or performing maintenance on an
aerospace apparatus," and "the claim itself provides for improvements to an
aerospace apparatus based on the [] computer implemented steps." App. Br.
12. Appellants further argue that, due the recited "actual physical process,"
claim 1 is analogous to the claims found patentable by the Supreme Court in
Diamond v. Diehr and as discussed in Alice. App. Br. 14; see also App. Br.
13-18; Diamond v. Diehr, 450 U.S. 175 (1981).
We are unpersuaded by Appellants' arguments; we discuss each step
of the rejection with respect to the Alice framework, below.
A. Alice Step One
We find the Examiner did not err in concluding the claims are directed
to a judicially-recognized abstract idea. Claim 1 recites parsing a file,
identifying requirements for exchanging data between "process authoring
tools," analyzing and calculating data, creating database information and a
file, and then "testing or manufacturing the aerospace apparatus using the
process authoring tool" and the created file. That is, the steps of claim 1
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collect information, analyze and manipulate the information, and output the
information. See Ans. 13-14; see also Spec. ,r 38 ("the illustrative
embodiments provide a common method for protecting data during data
exchange that is independent of the process model toolset used."). We agree
with the Examiner that the claim is directed to an idea of itself. See Final
Act. 7-8.
Appellants' arguments with respect to step one of the Alice
framework rely on the "recit[ ation of] an invention that requires the
manufacture or maintenance of [an] aerospace apparatus." App. Br. 18; see
also, e.g., App. Br. 14, 17. Appellants' arguments, however, do not
persuade us the Examiner erred in determining claim 1 is drawn to the
abstract idea of generating a common process model. See Ans. 6; see also
Alice, 134 at 2358 (explaining that Diehr's computer-implemented process
for curing rubber is analyzed under step two of the Alice framework);
Example 25 of the Guidelines in the July 2015 Update to Subject Matter
Eligibility, https ://www. uspto. gov/ sites/ default/files/ documents/ieg-july-
2015-app 1. pdf (stating the claims of Example 25 are directed to abstract
ideas); see also in In re Brown, 645 F. App'x 1014, 1016-17 (Fed. Cir.
2016).
We agree with the Examiner, moreover, that Appellants' arguments
are not commensurate in scope with the claim. See Ans. 10 ("there are no
claimed limitations that require manufacturing or maintenance on an aircraft .
. . . the claims merely require the testing or manufacturing of the aerospace
apparatus."). Claim 1 recites the testing or manufacturing is "by using the
process authoring tool," which is one of the "tools for creating the process
for defining the aerospace apparatus." Appellants' Specification provides
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that "[a] process may be performed by a human ... or a combination of a
human, a computer system, and/or an application" (Spec. ,r 29) and process
authoring tools "include[] one or more applications or software tools for
generating, manipulating, modifying, and utilizing design processes 310
and/or process models 312" (Spec. ,r 45). See Figs. 1-2, Spec. ,r 118. The
Specification further explains that "[ s Jome data associated with the various
processes for designing, testing, and manufacturing may be ... data in a
system that supports simulation so that cost and duration are modeled."
Spec. ,r 57 ( emphasis added). In light of the Specification, we agree with the
Examiner that claim 1 is directed to manipulating data rather than any
physical processes. See Ans. 12, 15.
Based on the record before us, we are not persuaded the Examiner
erred in concluding claim 1 is drawn to an idea of itself, and is comparable
to concepts our reviewing courts have found to be abstract. See Final Act.
7-8; see also Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("The concept of
data collection, recognition, and storage is undisputedly well-known"); Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(holding that "collecting information, analyzing it, and displaying certain
results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept"); Brown, 645 F. App'x 1014
(holding abstract the claimed assigning hair designs to balance head shape);
see also Application of Sarkar, 588 F.2d 1330 (CCPA 1978) (holding a
claimed technique for modeling an open channel, e. g., a natural stream or
artificial waterway, is patent ineligible); Application of Gelnovatch, 595
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F.2d 32, 33 (C.C.P.A. 1979) (holding a process for determining a set of
values for use in a model of a microwave circuit was not patentable).
Accordingly, we agree with the Examiner that claim 1 is directed to
an abstract idea. See Final Act. 3-5.
B. Alice Step Two
Regarding step two of the Alice framework, Appellants do not
persuasively show the Examiner errs in determining claim 1 "do[es] not
amount to significantly more than an abstract idea." Final Act. 5. As
discussed above, Appellants' reliance on "actually manufacturing or
performing maintenance on an aircraft" is inapposite, as the claims do not
recite such steps. App. Br. 15; see also Ans. 12.
Further, to the extent the claims require manufacturing or testing the
aerospace apparatus, we find such limitations to be insignificant post-
solution activity. Claim 1 solves the problem of exchanging data among
various entities that use "a variety of process authoring tools." Spec. ,r 8; see
also Spec. ,r 38. Adding limitations that the data exchange is used for a
specific purpose does not convert the otherwise ineligible concept into an
inventive concept. See, e.g., Intellectual Ventures I LLC v. Erie Indent. Co.,
850 F.3d 1315, 1328-29 (Fed. Cir. 2017) ("[ w ]hile limiting the index to
XML tags certainly narrows the scope of the claims, in this instance, it is
simply akin to limiting an abstract idea to one field of use or adding token
post solution components that do not convert the otherwise ineligible
concept into an inventive concept"); see also Mayo, 566 U.S. at 72-73
("[T]he prohibition against patenting abstract ideas cannot be circumvented
by ... adding insignificant post-solution activity") (internal citations and
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quotation marks omitted); Brown, 645 at 1016 ("[T]he central purpose of the
claimed method is the process before cutting, and ... the hair-cutting step
constitutes 'insignificant post-solution activity."'); see also Spec. ,r 2 ("An
enterprise is frequently composed of multiple business sites, departments,
computer systems, networks, and other resources that are used for the
purpose of creating, analyzing, producing, testing, and/or delivering
products to customers.").
Accordingly, we are not persuaded the Examiner errs in finding the
claims are patent ineligible pursuant to step two of the Alice framework.
C. Preemption
Appellants also argue "Applicant is not attempting to preempt the
field of associative memories, but is limiting the claim to the much smaller
field of aircraft manufacturing and maintenance." App. Br. 14.
We are unpersuaded of Examiner error. As discussed above, limiting
the claims to a specific field of use does not transform the claim into
patentable subject matter. Further, preemption is not the sole test for patent
eligibility, and any questions on preemption in the instant case have been
resolved by the above analysis. As our reviewing court has explained:
"questions on preemption are inherent in and resolved by the § 101
analysis," and, although "preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); cf OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
13 59, 13 62---63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price
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optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.").
DECISION
The Examiner's decision rejecting claims 1-5, 8-12, 15, 16, and 19 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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