ASIT DAN et al.

Patent Trials and Appeals BoardMar 18, 2021

2019006992 (P.T.A.B. Mar. 18, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/444,471 04/11/2012 ASIT DAN CAM920120016US1_8150-0163 1000 112978 7590 03/18/2021 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER BEHNCKE, CHRISTINE M ART UNIT PAPER NUMBER 3697 NOTIFICATION DATE DELIVERY MODE 03/18/2021 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ASIT DAN and MIKE A. MARIN1 ____________ Appeal 2019-006992 Application 13/444,471 Technology Center 3600 ____________ Before GREGG I. ANDERSON, AARON W. MOORE, and PHILLIP A. BENNETT, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL 1 IBM Corporation is the real party in interest (see App. Br. 1) and “Appellant” is the “applicant” of 37 C.F.R. § 1.42(a). Appeal 2019-006992 Application 13/444,471 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 41–60, which are all of the pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The application relates to “business process applications and, more particularly, to using decision management for business process application development.” (Spec. ¶ 3.) Claim 41, reproduced below, exemplifies the subject matter now on appeal: 41. A computer hardware system, comprising: memory elements including a business process development tool; and a hardware processor configured to initiate the following executable operations: creating, by the business process development tool, a programmatic representation of a business process; identifying, within the programmatic representation of the business process, an insertion point corresponding to a decision to be performed during the business process; generating, within the programmatic representation of the business process and at the insertion point, a decision reference; presenting, using the business process development tool, a plurality of different decision modes capable of being associated with the decision; 2 In an earlier appeal, we affirmed a rejection of claim 40 under 35 U.S.C. § 112, a rejection of claims 9 and 25–40 under 35 U.S.C. § 101, and a rejection of claims 9 and 25–40 under 35 U.S.C. § 103(a). Claims 1–40 have been canceled. (See App. Br. 2.) Appeal 2019-006992 Application 13/444,471 3 receiving, from a user of the business process development tool, user input that selects one of the plurality of different decision modes; and generating, using business process development tool, a decision description file that associates the decision with the selected one of the plurality of different decision modes, wherein the decision reference is programmatic code within the programmatic representation of the business process that invokes the decision description file, the decision description file is configured to be used to select a decision service that implements the decision, and the creating of the programmatic representation of the business process is decoupled from creating of the decision service. THE REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Nores et al. US 2008/0288304 A1 Nov. 20, 2008 Dettori et al. US 2009/0299809 A1 Dec. 3, 2009 Addala et al. US 2010/0070553 A1 Mar. 18, 2010 THE REJECTIONS Claims 41–60 are “provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 36–45 of copending Application No. 13/565,467.” (Final Act. 4, emphasis omitted.) Claim 60 is “rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre- AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.” (Final Act. 4–5, emphasis omitted.) Appeal 2019-006992 Application 13/444,471 4 Claims 41–60 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.” (Final Act. 5, emphasis omitted.) Claims 41–60 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Nores, Dettori, and Addala. (See Final Act. 7–18.) ANALYSIS A. Double Patenting The double patenting rejection is provisional and US Application No. 13/565,467 has not been allowed. The Examiner should process the obviousness-type double-patenting rejection consistent with MPEP 804. See In re Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). B. Section 112 Because Appellant presents no arguments directed to the Section 112 rejection, that rejection is summarily affirmed. See 37 C.F.R. § 41.31(c) (“An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office.”); MPEP3 § 1205.02 (“[T]he Board may summarily sustain any grounds of rejections not argued.”). C. Section 101 By statute, a patentable invention must be a “new and useful process, machine, manufacture, or composition of matter, or [a] new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has identified implicit exceptions to patentability––laws of nature, natural phenomena, and 3 The Manual of Patent Examining Procedure (“MPEP”) (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2019-006992 Application 13/444,471 5 abstract ideas, and, in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014), and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), the Court provided a framework for identifying ineligible claims. The “Mayo/Alice” evaluation has two steps: (1) determining if a claim is directed to an ineligible concept, and, if so, (2) determining if one or more claim elements is sufficient make the claim “significantly more” than the ineligible concept itself. See Alice, 573 U.S. at 217–18. The Patent Office has published Guidance for applying the Mayo/Alice evaluation. See 2019 Revised Patent Subject Matter Eligibility Guidance (the “2019 Guidance”), 84 Fed. Reg. 50. The Guidance instructs us first to look at whether a claim recites a judicial exception, the broad categories of which are defined as mathematical concepts, certain methods of organizing human activity, and mental processes.4 See 84 Fed. Reg. at 54 (Step 2A, Prong One). If we find a judicial exception, we determine whether it is “integrated into a practical application” in the claim. See 84 Fed. Reg. at 54–55 (Step 2A, Prong Two); see also MPEP § 2106.05(a)–(c), (e)–(h) (non-exhaustively 4 “Mathematical concepts” includes “mathematical relationships, mathematical formulas or equations, [and] mathematical calculations”; “Certain methods of organizing human activity” includes “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)”; “Mental processes” includes “concepts performed in the human mind (including an observation, evaluation, judgment, opinion).” 84 Fed. Reg. at 52. Appeal 2019-006992 Application 13/444,471 6 listing ways in which a practical application may be found). “Integrated into a practical application” means that the claim includes “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg. at 54. For example, a practical application may exist in an improvement in the functioning of a computer or other technology, a particular machine or manufacture integral to the claim, or transformation or reduction of an article to a different state or thing. See id. at 55. However, merely using a computer to perform an abstract idea, adding insignificant extra-solution activity, or only generally linking to a particular technological environment or field are not sufficient for a practical application. See id. If a claim recites a judicial exception that is not integrated into a practical application, the claim is directed to an abstract idea. In that case, we further look at whether the claim “[a]dds a specific limitation” beyond the judicial exception that is not “well-understood, routine, conventional.” See 84 Fed. Reg. at 56 (Step 2B); see also MPEP § 2106.05(d). In the absence of such an addition, a claim that has reached this stage of the analysis is ineligible. Abstract Idea5 Claim 41 recites a computer hardware system with a hardware processor configured to “creat[e] . . . a programmatic representation of a business process”; “identify[] . . . an insertion point corresponding to a decision to be performed during the business process”; “generat[e] . . . at the 5 Following the lead of the Examiner and Appellant, we address subject matter eligibility in the context of claim 41. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-006992 Application 13/444,471 7 insertion point, a decision reference”; “present[] . . . a plurality of different decision modes capable of being associated with the decision”; “receiv[e] . . . user input that selects one of the plurality of different decision modes”; and “generat[e] . . . a decision description file that associates the decision with the selected one of the plurality of different decision modes.” The claim further recites that “the decision reference is programmatic code within the programmatic representation of the business process that invokes the decision description file,” “the decision description file is configured to be used to select a decision service that implements the decision,” and “the creating of the programmatic representation of the business process is decoupled from creating of the decision service.” The Examiner found the claims “directed to collecting user inputs and creating a business process decision description, which is an abstract idea similar to the claims at issue in Accenture Global Services, GmbH v. Guidewire Software, Inc., 728 F. 3d 1336 (Fed. Cir. 2013)” and that “[l]ike the generation of tasks based on the application of stored rules to input data in Accenture, the pending claims generate a business process decision description based on evaluating input business process data.” (Final Act. 5.) The Examiner further found that the claims do “not include limitations that are sufficient, either alone or in combination, to amount to significantly more than the abstract idea because a computer hardware system, memory elements storing software, and a hardware processor, etc., merely describe generic computer components performing their conventional functions in implementing the abstract idea.” (Id. at 5–6). Appellant argues that the claim is not directed to an abstract idea because “the claimed invention is not merely directed to generating a Appeal 2019-006992 Application 13/444,471 8 ‘business process decision description’ using inputs” but “[r]ather . . . involves the interactions between different functional data structures (i.e., the programmatic representation of the business process and a decision description file) and how the programmatic representation of the business process is modified and how the decision description file is generated to support these interactions.” (App. Br. 12.) Appellant contends that because “[t]he end result of this is the decoupling the creation of the programmatic representation of the business process . . . from the creation of the decision service . . . the Examiner’s characterization of the claimed invention does not consider the claimed invention, as a whole.” (Id.) Appellant further argues that “the Examiner makes no attempt to actually tie the facts of the present application to the facts of the Examiner’s cited case law” and that, in Accenture, “the issue as to whether the claimed was directed to an ‘abstract idea’ was not before the Federal Circuit.” (Id. at 13.) The Examiner responds that the claimed “process is conceptually similar to a flowchart describing the creation of a device in a manufacturing process consisting of various parts,” where, “[f]ollowing design of each individual part of the device, a choice must be made whether to make or buy the part,” and “[s]uch a choice describes a ‘decision mode’ with a ‘logical’ return, i.e., a binary choice between make and buy.” (Ans. 4.) The Examiner explains that “assum[ing] the choice is made to buy the part . . . another choice must be made in the selection of a seller from whom to buy the part,” where that “choice describes a ‘decision mode’ with a ‘recommendation’ return, i.e., a choice among three sellers ranging from best to worst.” (Id.) The Examiner concludes that “[s]uch a process is Appeal 2019-006992 Application 13/444,471 9 capable of being performed entirely within the human mind,” and “certainly . . . with the assistance of pen and paper.” (Id. at 4–5.) In the Reply, Appellant states that it was “not afforded an opportunity, in the Appeal Brief, to address the 2019 Guidelines as it applies to the Examiner’s rejection” and that “[a]s such, [it] will apply the 2019 Guidelines to the Examiner’s analysis presented in the Examiner’s Answer.” (Reply Br. 2.) Applying that guidance, Appellant argues that the claimed invention could not be “reasonably categorized as a mental process” because “[a]s claimed, every operation recited in claim 41 necessarily involves the use of a computer.” (Id. at 3.) According to Appellant, “[t]he ‘programmatic representation of a business process’ is a very particular type of computer data structure, the creation of which cannot be performed mentally – notwithstanding that the claim explicitly requires that this computer data structure be created by a business process development tool is contained within memory elements.” (Id.) Appellant also argues that “generating a decision reference within the programmatic representation of the business process . . . is impossible to perform mentally” because “[a] mental operation alone cannot modify a computer data structure.” (Id.) Appellant relatedly argues that “the claims recite the generation of a decision description file, which is also a computer data structure - the generation of which cannot be performed mentally.” (Id.) Regarding the Examiner’s example described above, Appellant argues that “the claimed invention isn’t directed to the process of making the decision” but “[r]ather, the claimed invention ultimately involves the creation of a decision description file (i.e., a computer data structure) that is used with a programmatic representation of a business process (i.e., another Appeal 2019-006992 Application 13/444,471 10 computer data structure) to select a decision service that implements a decision.” (Reply Br. 4.) Appellant argues that “while the making of the decision could be performed within the human mind, the making of the decision is not being claimed.” (Id., emphasis omitted). Appellant also argues that the claims cannot be categorized as “method of organizing human activity” because “the Examiner presents no explanation as to how human activity is being organized,” “[t]he claims do not even remotely involve economic principles or practices,” “[t]here are no commercial interactions, legal interactions, or legal operations being claimed,” and “[t]he claimed invention does not involve marketing or sales.” (Id. at 5.) We agree with the Examiner that creating a programmatic representation of a business process, identifying an insertion point corresponding to a decision to be performed during the process, generating a decision reference at the insertion point, presenting different decision modes and receiving user input selecting one of the decision modes, and generating a decision description file that associates the decision with the decision mode is series of steps that falls into the category of “Mental processes— concepts performed in the human mind” identified in the 2019 Guidance. See 84 Fed. Reg. at 52. This is true even though claim 41 also recites that “the decision reference is programmatic code within the programmatic representation of the business process,” “the decision description file is configured to be used to select a decision service that implements the decision, and the creating of the programmatic representation of the business process is decoupled from creating of the decision service.” This is because these limitations merely “propose the use of generic computer components to carry out the recited abstract idea,” which is “not sufficient.” Two-Way Appeal 2019-006992 Application 13/444,471 11 Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1338 (Fed. Cir. 2017); see Spec. ¶ 16 (“Computer program code for carrying out operations for aspects of the embodiments of the invention may be written in any combination of one or more programming languages, including an object oriented programming language such as Java™, Smalltalk, C++ or the like and conventional procedural programming languages, such as the ‘C’ programming language or similar programming languages.”). Because we agree with the Examiner that the claims recite an abstract idea, we proceed to Prong Two of Step 2A to determine if the idea is integrated into a practical application, in which case the claims as a whole would not be directed to merely an abstract idea. Practical Application As noted, the “integrated into a practical application” inquiry looks at whether a claim includes “a meaningful limit on the judicial exception,” to ensure that “the claim is more than a drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg. at 54. In this case, we have generic computer hardware with instructions for causing a computer to represent a business process. The claim thus recites a method that “merely uses a computer as a tool to perform an abstract idea,” id. at 55, and, therefore, lacks integration into a practical application. Appellant argues the Examiner’s determination that the claims are not directed to an improvement to computer technology is in error because the Examiner does “not explain why the claimed invention is either (i) not directed to an improvement or (ii) that the improvement improves upon computer technology.” (Reply Br. 8.) This argument is not persuasive. The Examiner explained that the claimed “decoupling” is “conceptually similar Appeal 2019-006992 Application 13/444,471 12 to one person delegating a decision to another person and falls squarely within the realm of abstract ideas.” (Ans. 5.) The Examiner further explained that “[t]he problem laid out in the Specification is not a problem that would not have existed but for the computer elements in the claim, but rather a problem that has existed and continues to exist outside of the realm of those elements.” (Id. at 5–6.) In other words, the problem being addressed is not one specific to computer technology. Instead, it is a business, or business process, problem. Appellant’s approach would make any new software a patent eligible “improvement to computer technology.” That is not the law. We do not find “an improvement in the functioning of a computer or other technology,” because the generic computer hardware and software are used for their ordinary purposes. We do not find “a particular machine or manufacture integral to the claim,” because a general purpose computer is not enough. And we do not find “transformation or reduction of an article to a different state or thing,” because only intangible data is changed or manipulated. We thus conclude that claim 41 lacks additional elements that would allow us to find a practical application, agree with the Examiner that the claim is directed to an abstract idea, and move to Step 2B. Inventive Concept “It is possible that a claim that does not ‘integrate’ a recited judicial exception is nonetheless patent eligible” as, “[f]or example the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.” 84 Fed. Reg. at 56. We need not reconsider in Step 2B the issues addressed in Step 2A, but do weigh whether the claim “[a]dds a specific limitation or combination of Appeal 2019-006992 Application 13/444,471 13 limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present.” Id. As explained above, the claims and Specification describe only generic hardware and software. Because, after setting those conventional elements aside, we are left with only the abstract idea of how to manage a business process, we conclude that the claims do not include additional elements reflecting an inventive concept. Cf. Parker v. Flook, 437 U.S. 584, 585–86 (1978) (holding claims ineligible because “[t]he only difference between the conventional methods . . . and that described in respondent’s application rests in . . . the mathematical algorithm or formula”). Contrary to Appellant’s argument (see App. Br. 19), the instant claims are not similar in character to those approved in BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Although the BASCOM claims recited conventional computer components, they were found eligible because they arranged those components in a new way, so as to provide specific advantages to users of the system. See id. at 1352 (describing the eligible claims as directed to “carv[ing] out a specific location for the filtering system (a remote ISP server) and requir[ing] the filtering system to give users the ability to customize filtering for their individual network accounts”). Appellant’s claims do not recite a new arrangement of computer hardware analogous to the invention in BASCOM. Eligibility Conclusion The claims recite an abstract idea, have not been shown to be integrated into a practical application, and do not include additional recitations that make them significantly more than the underlying abstract Appeal 2019-006992 Application 13/444,471 14 idea. The Examiner’s rejection of claims 41–60 under 35 U.S.C. § 101 is, therefore, sustained. D. Section 103 Appellant argues that the portion of Dettori cited by the Examiner as corresponding to the claim language “presenting, using the business process development tool, a plurality of different decision modes capable of being associated with the decision” does not account for the claimed “decision mode” and that, instead, it refers only “to the unremarkable and unrelated teaching that a step in a flow can be customized using one (or a combination) of a plurality of modules.” (App. Br. 22.) The Examiner responds that “[t]he Specification describes a ‘decision mode’ as ‘indicat(ing) a different process for selecting one or more activities of the business process to be performed’ exemplified by ‘logical,’ ‘recommendation,’ and ‘human centered.’” (Ans. 16, quoting Spec. ¶¶ 34– 36). According to the Examiner, “in Dettori, at least two possible ‘decision modes’ (e.g., call forwarding module and decision module) ‘capable of being associated with the decision’ (i.e., a workflow block) are ‘presented’” and that “[s]uch disclosure reads on the claimed ‘presenting . . . a plurality of different decision modes capable of being associated with the decision.’” (Id. at 17.) We agree with Appellant. The Specification explains that “the mode of a decision (e.g., decision mode or mode), indicates how a result of the decision is consumed, or utilized, by the business process.” (Spec. ¶ 34.) “Each different decision mode can indicate a different process for selecting one or more activities of the business process to be performed (e.g., at runtime) according to a result Appeal 2019-006992 Application 13/444,471 15 of the decision service to be implemented for the decision reference” and “the mode of a decision (or decision reference) further provides an indication of the type of output expected from the decision service that is to be implemented for the decision reference.” (Id. ¶ 35.) The Specification further explains that “[e]xamples of the various decision modes that can be associated with a decision reference can include, but are not limited to, ‘logical,’ ‘recommendation,’ or ‘human centered.’” (Id.) “A decision service with a decision mode of ‘logical’ returns a binary response such as ‘yes’ or ‘no’”; “[a] decision service with a mode of ‘recommendation’ returns a result in the form of a value within a range of possible values”; and “[a] decision service with a mode of ‘human centered’ returns a result that is interpreted by a human being.” (Id. ¶¶ 36, 37, 41.) We do not agree with the Examiner that Dettori’s different modules reasonably correspond to the claimed decision modes, because while the modules reflect different kinds of decisions that can be made, or areas in which decisions can be made, the Examiner has not shown that they have different modes, i.e., that they would return different types of responses, as described in the Specification. For this reason, we do not sustain the Section 103 rejection of claim 41 or of claims 42–60, all of which also include the subject language. Because this issue is dispositive, we do not reach Appellant’s other arguments regarding the prior art. Appeal 2019-006992 Application 13/444,471 16 DECISION The rejection of claim 60 under 35 U.S.C. § 112 is affirmed. The rejection of claims 41–60 under 35 U.S.C. § 101 is affirmed. The rejection of claims 41–60 under 35 U.S.C. § 103 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). DECISION SUMMARY Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 60 112 Indefiniteness 60 41–60 101 Eligibility 41–60 41–60 103 Nores, Dettori, Addala 41–60 Overall Outcome 41–60 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED6 6 Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision rejecting claims 41–60 is affirmed. See 37 C.F.R. § 41.50(a)(1).