DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
The drawings as submitted by Applicant on 11/08/2025 have been accepted.
Claim Rejections - 35 USC § 101
35 U.S.C. §101 reads as follows:
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.
9. Claims 1-5 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without “significantly more.” Claim(s) 1-5 are directed to a transport facility, which is considered an abstract idea. Further, the claim(s) as a whole, when examined on a limitation-by-limitation basis and in ordered combination do not include an inventive concept.
Step 1 – Statutory Categories
As indicated in the preamble of the claim, the examiner finds the claim is directed to a process, machine, manufacture or composition of matter.
Step 2A (prongs 1 and 2) - Abstract Idea Analysis
Exemplary claim 1 recites the following abstract concepts that are found to include “abstract idea”:
Limitation 1- determining a first transport vehicle to transport the target article from the transport source to the relay;
Limitation 2- determining a first movement path for the first transport vehicle;
Limitation 3- deriving an arrival prediction time;
Limitation 4- obtaining a checkpoint pass time; and
Limitation 5- causing the second transport vehicle to arrive at the receiving point at a prediction time.
The Federal Circuit has repeatedly emphasized that “the key question is ‘whether the focus of the claims is on the specific asserted improvement . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’” Visual Memory LLC v. Nvidia Corp., No. 2016-2254 (Fed. Cir. Aug. 15, 2017) (referring to Enfish LLC v. Microsoft Corp. et al., Appeal No. 2015-1244 (Fed. Cir. 2016)). “In this regard, [examiners] must articulate with specificity what the claims are directed to.” Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1347 (Fed. Cir. 2017). Moreover, the Federal Circuit has held that “[a]dding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo Co., Ltd., 885 F.3d 1322, 1327 (Fed. Cir. 2017). Importantly, “[w]e [] assume that the techniques claimed are ‘[g]oundbreaking, innovative, or even brilliant,’ but that is not enough for eligibility.” SAP Inc. v. InvestPic, LLC, Appeal No. 2017-2081 (Fed. Cir. 2018) citing Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 *2013).
Furthermore, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). “The fact that an identifier [or utilization of the underlying abstract idea] can be used to make a process more efficient . . . does not necessarily render an abstract idea less abstract.” Secured Mail Solutions, LLC v. Universal Wilde, Inc., Appeal No. 2016-1728 (Fed. Cir. Oct. 16, 2017). Importantly, the CAFC “ha[s] held that speed and accuracy increases stemming from the ordinary capabilities of a general purpose computer ‘do[] not materially alter the patent eligibility of the claimed subject matter.’” Intellectual Ventures I v. Erie Indemnity, Appeal No. 2017-1147 (Fed. Cir. 2017) citing Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). However, “some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as chip architecture, an LED display, and the like.” Enfish, 822 F.3d at 1355.
Here, the examiner finds the claims are not directed to “an improvement to computer technology," such as found in Enfish, but to the abstract idea itself.1 Examiners have been instructed to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract. Accordingly, the examiner refers to the following cases (and their associated judicial descriptor(s)) that relate to concepts similar to the claimed concepts:
Versata2(precedential—ineligible) – abstract idea found to be using organizational and product group hierarchies to determine a price, where this was found to be a method of organizing human activity;
Downing3 (non-precedential—ineligible) – abstract idea found to be the concept of personal management, resource planning, and forecasting including a “resource planning forecast product” that collects and analyzes “non-business or business information relative to the end user,” where this was found to be a method of organizing human activity; and
SAP Inc. v. InvestPic4 (precedential—ineligible) – abstract idea found to be selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis, where this was found to be a certain method of organizing human activity.
As indicated above, the claims are directed to similar concepts.5 Therefore, the claims are found to be directed to abstract idea. Similar to the case law cited above, the examiner finds the abstract idea to include at least the judicial descriptor(s) of: certain methods of organizing human activity.6
Regarding preemption, the examiner notes that “[w]hile preemption may signal 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). “Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this [application], preemption concerns are fully addressed and made moot.” Id.
Step 2B - Significantly More Analysis
“[A]fter determining that a claim is directed to a judicial exception, ‘we then ask, [w]hat else is there in the claims before us?’” MPEP 2106.05 (emphasis in MPEP) citing Mayo, 566 U.S. at 78. “What is needed is an inventive concept in the non-abstract application realm.” SAP Inc. v. InvestPic, LLV, Appeal No. 2017-2081 (Fed. Cir. 2018). For step two, the examiner must “determine whether the claims do significantly more than simply describe [the] abstract method” and thus transform the abstract idea into patent-eligible subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
A primary consideration when determining whether a claim recites “significantly more” than abstract idea is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. See MPEP 2106.05(d). “If the additional element (or combination of elements) is a specific limitation other than what is well-understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility. If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.” Id.
The Federal Circuit has held that “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Bahr, Robert (April 19, 2018). Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) citing Berkheimer at 1369. “As set forth in MPEP 2106.05(d)(I), an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry. This memo[] clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III [of the memo].” Berkheimer Memo at 3 (emphasis in memo).
Generally, “[i]f a patent uses generic computer components to implement an invention, it fails to recite an inventive concept under Alice step two.” West View Research v. Audi, CAFC Appeal Nos. 2016-1947-51 (Fed. Cir. 04/19/2017) citing Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (explaining that “generic computer components such as an ‘interface,’ ‘network,’ and ‘database’ . . . do not satisfy the inventive concept requirement”; but see Bascom (finding that an inventive concept may be found in the non-conventional and non-generic arrangement of the generic computer components, i.e., the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user).
In accordance with the above guidance, the examiner has searched the claim(s) to determine whether there are any “additional elements” in the claims that constitute “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 134 S. Ct. 2347 (2014). Those “additional features” must be more than “well understood, routine, conventional activity.” See Alice. To note, “under the Mayo/Alice framework, a claim directed to a newly discovered . . . abstract idea[] cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility.” Genetic Techs. Ltd v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016); Diamond v. Diehr, 450 U.S. 175, 188-89 (1981).
As an example, the Federal Circuit has indicated that “inventive concept” can be found where the claims indicate the technological steps that are undertaken to overcome the stated problem(s) identified in Applicant’s originally-filed Specification. See Trading Techs. Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017); but see IV v. Erie Indemnity, No. 2016-1128 (Fed. Cir. March 7, 2017)(“The claims are not focused on how usage of the XML tags alters the database in a way that leads to an improvement in technology of computer databases, as in Enfish.”)(emphasis in original) and IV. v. Capital One, Nos. 2016-1077 (Fed. Cir. March 7, 2017)(“Indeed, the claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more. See Elec. Power Grp., 830 F.3d 1356 (Fed. Cir. 2016) (cautioning against claims ‘so result focused, so functional, as to effectively cover any solution to an identified problem.’)”). Furthermore, “[a]bstraction is avoided or overcome when a proposed new application or computer-implemented function is not simply the generalized use of a computer as a tool to conduct a known or obvious process, but instead is an improvement to the capability of the system as a whole.” Trading Techs. Int’l, Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017) (emphasis added).
In the search for inventive concept, the Berkheimer Memo describes “an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in the MPEP as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
Accordingly, the examiner refers to the following generically-recited computer elements with their associated functions (and associated factual finding(s)), which are considered, individually and in combination, to be routine, conventional, and well-understood:
Additional Element 1 – a control system
In sum, the examiner finds that the claims "are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.” In re TLI Communications LLC, No. 2015-1372 (May 17, 2016). Similar to the claims in SAP v. InvestPic, “[t]he claims here are ineligible because their innovation is an innovation in ineligible subject matter.” Appeal No. 2017-2081 (Fed. Cir. 2018). In other words, “the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” Id. Accordingly, when considered individually and in ordered combination, the examiner finds the claims to be directed to in-eligible subject matter. Claims 2-11 suffer from similar deficiencies as the claim from which they depend, and therefore fails to remedy the deficiency of the independent claims they depend therefrom.
Unless otherwise noted below, the dependent claims are directed to the identified abstract idea above. Similar to the independent claim(s) above, the examiner refers to generically-recited computer elements with their associated functions (and associated factual finding(s)), which are considered, individually and in combination, to be routine, conventional, and well-understood, and therefore fails to remedy the deficiency of the independent claims they depend therefrom.
For the reasons stated, the examiner does not find the claims to recite eligible subject matter under 35 U.S.C. § 101. Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al (US 2013/0231823).
Regarding claim 1, the prior art discloses a transport facility, comprising: a plurality of transport vehicles configured to transport articles (see at least paragraph [0011], to Wang et al); and a control system configured to control the plurality of transport vehicles, the control system configured to perform, when a target article among the articles is transported from a transport source to a transport destination through a relay using two of the plurality of transport vehicles: a transport vehicle determination process of determining a first transport vehicle to transport the target article from the transport source to the relay and a second transport vehicle to transport the target article from the relay to the transport destination (see at least paragraph [0036], to Wang et al), a path determination process of determining a first movement path for the first transport vehicle to move from a current position of the first transport vehicle to the relay through the transport source and a second movement path for the second transport vehicle to move from a current position of the second transport vehicle to the transport destination through the relay (see at least paragraph [0036], to Wang et al), an initial prediction process of deriving, based on the first movement path, an arrival prediction time as an initial prediction time, the arrival prediction time being a prediction time at which the target article arrives at a receiving position at which the second transport vehicle receives the target article in the relay (see at least paragraph [0051], to Wang et al), an update prediction process of obtaining a checkpoint pass time at which the target article passes a checkpoint set at least at one position along the first movement path and deriving an updated prediction time being the arrival prediction time updated based on the checkpoint pass time (see at least paragraph [0011], to Wang et al), and a receiving movement process of causing, based on the initial prediction time before the updated prediction time is derived and based on the updated prediction time after the updated prediction time is derived, the second transport vehicle to arrive at the receiving position at a prediction time at which the target article arrives at the receiving position (see at least paragraphs [0054] and [0055], to Wang et al).
Regarding claim 2, the prior art discloses the transport facility according to claim 1, wherein in the receiving movement process: the control system derives a duration taken for the second transport vehicle to arrive at the receiving position based on a path from a current position of the second transport vehicle to the relay included in the second movement path (see at least paragraph [0053], to Wang et al), and the control system causes, in response to the updated prediction time being derived before a current time reaches a time preceding the initial prediction time by the duration, the second transport vehicle to move toward the receiving position based on the current time reaching a time preceding the updated prediction time by the duration (see at least paragraph [0055], to Wang et al).
Regarding claim 3, the prior art discloses the transport facility according to claim 2, wherein in the receiving movement process: the control system causes, in response to the current time reaching the time preceding the initial prediction time by the duration before the updated prediction time is derived, the second transport vehicle to move toward the receiving position based on the current time reaching the time preceding the initial prediction time by the duration (see at least paragraph [0055], to Wang et al).
Regarding claim 4, the prior art discloses the transport facility according to claim 1, wherein: the relay is a transporter configured to transport the target article from a transfer position at which the target article is transferred from the first transport vehicle to the receiving position (see at least paragraph [0050], to Wang et al), the control system derives the initial prediction time based on a movement time for the first transport vehicle to move from a current position of the first transport vehicle on the first movement path to the transfer position and a transport time for the target article to be transported from the transfer position to the receiving position with the transporter (see at least paragraph [0051], to Wang et al), and the control system derives the updated prediction time based on the checkpoint pass time, a movement time for the first transport vehicle to move from the checkpoint to the transfer position on the first movement path, and a transport time for the target article to be transported from the transfer position to the receiving position with the transporter (see at least paragraphs [0051]and [0054], to Wang et al).
Regarding claim 5, the prior art discloses the transport facility according to claim 1, wherein: the first transport vehicle transports the target article in a first area, the second transport vehicle transports the target article in a second area, the relay is an inter-area transporter configured to transport the target article between the first area and the second area (see at least paragraph [0009], to Wang et al), the control system comprises a first controller configured to control the plurality of transport vehicles in the first area (see at least paragraph [0011], to Wang et al “first controller”), a second controller configured to control the plurality of transport vehicles in the second area (see at least paragraph [0011], to Wang et al “second controller”), and a central controller configured to control the first controller and the second controller (see at least paragraph [0032], to Wang et al “master controller”), the first controller obtains pass time information indicating the checkpoint pass time and transmits the pass time information to the central controller (see at least paragraph [0051], to Wang et al), the central controller performs the update prediction process and provides the derived updated prediction time to the second controller, and the second controller performs the receiving movement process based on the provided updated prediction time (see at least paragraph [0049], to Wang et al).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The examiner has considered all references listed on the Notice of References Cited, PTO-892.
The examiner has considered all references cited on the Information Disclosure Statement submitted by Applicant, PTO-1449.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TALIA F CRAWLEY whose telephone number is (571)270-5397. The examiner can normally be reached on Monday thru Thursday; 8:30 AM-4:30 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fahd A Obeid can be reached on 571-270-3324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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1 See Electric Power Group, LLC. V. Alstom, case no. 2015-1778 (Fed. Cir. August 1, 2016) (“The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independent abstract ideas that use computers as tools.”).
2 793 F.3d 1306 (Fed. Cir. 2015)(The court also stated that “[u]sing organizational and product group hierarchies to determine a price is an abstract idea that has no particular concrete or tangible form or application. It is a building block, a basic conceptual framework for organizing information.”).
3 Appeal No 2018-1795 (Fed. Cir. 2018).
4 Appeal No. 2017-2081 (Fed. Cir. 2018).
5 “[The examiner] need not define the outer limits of ‘abstract idea,’ or at this stage exclude the possibility that any particular inventive means are to be found somewhere in the claims, to conclude that these claims focus on an abstract idea—and hence require stage two analysis under § 101.” Electric Power Group, LLC. V. Alstom, case no. 2015-1778 (Fed. Cir. August 1, 2016).
6 As stated in the July 2015 Update: Subject Matter Eligibility, “These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent, with the understanding that these associations are not mutually exclusive, i.e., some concepts may be associated with more than one judicial descriptor.”
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