Callidus Software Incorporated

Patent Trials and Appeals Board

Mar 15, 2021

2019006981 (P.T.A.B. Mar. 15, 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.
13/672,401 11/08/2012 Fok-Kuong Cheang 102-00074-000-US 7922
52025 7590 03/15/2021
SAP SE c/o BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
HEFFERN, JAMES E
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
03/15/2021 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):
colabella@bmtpatent.com
martin@BMTPATENT.COM
szpara@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FOK-KUONG CHEANG
Appeal 2019-006981
Application 13/672,401
Technology Center 2100
Before JOHN A. EVANS, JENNIFER L. MCKEOWN, and
JAMES W. DEJMEK, Administrative Patent Judges.
MCKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 9, 11–17 and 19–28. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2018). Appellant identifies the real party in interest as Callidus
Software Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed “to calculating based upon active data or data
that has been most recently changed in relation to a time threshold.” Spec.
¶ 12. More specifically:
A computing apparatus and method of recalculating upon
changes to data by saving changes to the data; receiving a request
to recalculate a result according to the data; retrieving only active
data from the data according to the saved changes to the data;
and recalculating the result based upon the active data.
Abstract.
Claim 9, reproduced below, is representative of the claimed subject
matter:
9. A method comprising:
receiving a request for a calculation using a processor,
wherein the calculation includes a first piece of calculation and
a second piece of calculation;
determining whether a first piece of data used in the first
piece of calculation has changed since a previous version of the
calculation and determining whether a second piece of data
used in the second piece of calculation has changed since the
previous version of the calculation, wherein the determining is
based on comparing the first piece of data to a previous version
of the first piece of data and by comparing the second piece of
data to a previous version of the second piece of data;
in response to determining that the first piece of data has
changed since the previous version of the data recalculating the
first piece of calculation based on the first piece of data that has
changed to form an updated first piece of calculation;
in response to determining that the second piece of data
is changed since the previous version of the second piece of
data, recalculating the second piece of calculation based on the
second piece of data that has changed to form an updated
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second piece of calculation and updating the calculation based
on the updated first piece of calculation and the updated second
piece of calculation; and
in response to determining that the second piece of data
is unchanged since the previous version of the second piece of
data, updating the calculation based on the updated first piece
of calculation without recalculating the second piece of
calculation, wherein recalculating the first piece of calculation
without recalculating the second piece of calculation in forming
the updated calculation reduces an amount of resources used by
the processor.
REFERENCE(S)
The prior art relied upon by the Examiner is:
Name Reference Date
Lancaster US 2006/0235649 A1 Oct. 19, 2006
Rutherford US 2009/0043603 A1 Feb. 12, 2009
REJECTION(S)
The Examiner rejects claims 9, 11–17 and 19–28 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. Final Act. 4–6.
The Examiner rejects claims 9, 11–17 and 19–28 under 35 U.S.C.
§ 103 as being unpatentable over Rutherford and Lancaster. Final Act. 7–
36.
OPINION
Subheading THE § 101 REJECTION
Claims 9, 11–17 and 19–28
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 9, 11–17 and 19–28 as directed to patent-ineligible
subject matter.
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An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (citation omitted).
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, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267–68 (1854))); 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 that “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. (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.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
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The PTO published revised guidance on the application of section
101. Manual of Patent Examination Procedure (“MPEP”) §§ 2103–
2106.07(c) (9th ed., Rev. 10.2019, June 2020) (“Guidance”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examination Procedure
(“MPEP”) §§ 2103–2106.07(c) (9th ed., Rev. 10.2019, June 2020). Only if
a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
Analysis — Revised Step 2A
Under the Guidance, in prong one of step 2A we look to whether the
claimed invention recites a judicial exception. The claimed invention here
recites a method including “receiving a request for a calculation using a
processor, wherein the calculation includes a first piece of calculation and a
second piece of calculation;” determining whether first and second pieces of
data used in the first and second pieces of calculations, respectively, has
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changed, where the determining is based on comparing the first and second
pieces of data to previous versions; “in response to determining that the first
piece of data has changed. . . recalculating the first piece of calculation. . .to
form an updated first piece of calculation;” “in response to determining that
the second piece of data is changed. . . recalculating the second piece of
calculation. . . to form an updated second piece of calculation” and updating
the calculation based on the updated first and second pieces of calculation;
and “in response to determining that the second piece of data is unchanged
. . . updating the calculation based on the updated first piece of calculation
without recalculating the second piece of calculation,” such that
“recalculating the first piece of calculation without recalculating the second
piece of calculation in forming the updated calculation reduces an amount of
resources used by the processor.” When considered collectively, the
claimed invention receives a request to perform a calculation, compares data
to determine if it has changed, and performs certain re-calculations based on
the change determinations.
As the Examiner explains, the claimed invention recites organizing
and manipulating information through mathematical correlations, which is a
mental process. Final Act. 4–5; Ans. 6. Specifically, the claimed comparing
and calculating are mental processes that can be performed in the human
mind. Ans. 6. See also Digitech Image Techs., LLC v. Elecs. for Imaging,
Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without additional limitations,
a process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.”).
Additionally, we note that the claimed invention recites performing
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mathematical calculations, i.e. mathematical concepts, which is also an
abstract idea.
Because we conclude claims 9, 11–17 and 19–28 recite a mental
process, which is an abstract idea, we proceed to Step 2A, Prong 2 of the
Guidance to determine whether the claimed invention is “directed to” the
judicial exception, by determining whether additional elements of the claim
integrate the abstract idea into a practical application. Such additional
elements may reflect an improvement to a technology or technical field. See
Guidance, 84 Fed. Reg. at 55.
The claimed invention here additionally recites a processor. We are
not persuaded that the additional limitations alone or in combination
integrate the claimed abstract idea into a practical application. Namely, the
additional limitation, a processor, merely links the claimed concept to the
technological environment of distributed computing. See, e.g., MPEP
§ 2106.05(h); Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253 (Fed.
Cir. 2016).
Moreover, we note that the steps of receiving and transmitting data are
insignificant extra-solution activity. See, e.g., MPEP § 2106.05(g); Flook,
437 U.S. at 590 (holding that the step of adjusting an alarm limit based on
the output of a mathematical formula was “postsolution activity” and did not
render method patent eligible); OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015) (collecting and analyzing data amounted to
mere data gathering).
Appellant argues that the claimed invention is integrated into a
practical application because the claimed invention provides a technical
improvement. Appeal Br. 10–12. For example, Appellant maintains that the
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claimed invention “improve[s] an existing technology (resource allocation
by processor) by reducing an amount of resources used by the processor,
thereby improving resource allocation.” Appeal Br. 11. Appellant
additionally asserts that the claimed invention is “inextricably tied and
necessarily rooted in the computer technology to overcome a problem
specifically arising in commission calculation that improves calculation
efficiency, reduce processing time, increase speed, and reduce computer
hardware cost, etc.” Appeal Br. 10.
We disagree. The alleged improvements are not technical
improvements. Unlike the claims at issue in cases such as DDR Holdings
LLC v. Hotels.com L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (claims at
issue are “necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks”) and Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016) (claims at
issue are “directed to a specific implementation of a solution to a problem in
the software arts”), the claimed invention merely provides an allegedly
improved mathematical process. See FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Servs., L.L.C. v.
Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact
that the required calculations could be performed more efficiently via a
computer does not materially alter the patent eligibility of the claimed
subject matter.”)); see also Intellectual Ventures I LLC v. Erie Indemnity
Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (unpublished) (“Though the
claims purport to accelerate the process of finding errant files and to reduce
error, we have held that speed and accuracy increases stemming from the
ordinary capabilities of a general-purpose computer ‘do[ ] not materially
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alter the patent eligibility of the claimed subject matter.’”) (Citation
omitted).
The claims do not recite (i) an improvement to the functionality of a
computer or other technology or technical field (see MPEP § 2106.05(a));
(ii) a “particular machine” to apply or use the judicial exception (see MPEP
§ 2106.05(b)); (iii) a particular transformation of an article to a different
thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful
limitation (see MPEP § 2106.05(e)). See Office Guidance, 84 Fed. Reg. 55.
Rather, the claimed invention recites an abstract idea as above and none of
the limitations integrates the judicial exception into a practical application.
Analysis — Revised Step 2B
Under step 2B, we determine that the claimed invention does not add
significantly more to the abstract idea. As noted above, Appellant argues
that the claimed invention “improves the functioning of the claimed
computer by reducing an amount of resources used by the processing unit.”
Appeal Br. 14. Additionally, Appellant argues “[t]he current claims’
specific method of recalculating data that was not ‘well-understood, routine
and conventional’ to a person ordinarily skilled in the art.” Reply Br. 9.
We find these arguments unpersuasive. As the Examiner identifies,
and discussed above, the claimed invention merely invokes a processor as a
tool to implement the abstract idea. Ans. 4. Moreover, the claimed
invention requires no more than a generic computer to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the industry. See Alice, 573 U.S. at 225
(finding that computer functions, such as electronic recording keep and
“obtain[ing] data, adjust[ing] account balances, and issu[ing] automated
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instructions; all of these computer functions are ‘well-understood, routine,
conventional’”); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (discussing that
data collection, recognition, and storage is well-known). As such, we are
not persuaded of error in the Examiner’s determination.
Accordingly, based on the record before us, we affirm the rejection of
claims 9, 11–17 and 19–28 as directed to patent-ineligible subject matter.

THE OBVIOUSNESS REJECTION BASED ON RUTHERFORD AND LANCASTER
Claims 9, 11–17 and 19–28
Appellant argues that Lancaster fails to teach or suggest the claimed
in response to determining that the second piece of data is
changed/unchanged limitations. Appeal Br. 15–16. According to Appellant,
even though Lancaster teaches updating without recalculating each
reliability statistics at an aggregate point, it is not clear that Lancaster would
not recalculate at some other point. Appeal Br. 16. Additionally, Appellant
asserts:
Lancaster fails to teach or suggest a subsequent calculation
based on the reliability statistics where some have been
recalculated and some have remained unchanged without being
recalculated. In other words, Lancaster discloses a set of
reliability statistics that are independent from one another and are
not used in a subsequent calculation. Thus, Lancaster disclosing
updating by recalculating a subset of the set and as such
recalculating a reliability statistic has no bearing or impact on
another reliability statistic.
Appeal Br. 16.
We find Appellant’s arguments unpersuasive. Lancaster teaches
calculating reliability statistics and updating arithmetic operations without
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recalculating each reliability statistic at an aggregate point. In other words,
Lancaster at least suggests generally updating calculations without
recalculating one component. Final Act. 13–14; Ans. 12. As the Examiner
explains, Lancaster’s teaching of updating without recalculating each
component is combined with Rutherford subsequent calculations to arrive at
the claimed invention. Ans. 12–13. One cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As
such, Appellant fails to persuasively identify error in the combination as set
forth by the Examiner.
Accordingly, we affirm the rejection of claims 9, 11–17 and 19–28 as
unpatentable over Rutherford and Lancaster.
CONCLUSION
The Examiner’s rejections of claims 9, 11–17 and 19–28 are affirmed.
More specifically, the rejection of claims 9, 11–17 and 19–28 under
35 U.S.C. § 101 as directed to ineligible subject matter is affirmed and the
rejection of claims 9, 11–17 and 19–28 under 35 U.S.C. § 103 as
unpatentable over Rutherford and Lancaster is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
9, 11–17,
19–28
101 Eligibility 9, 11–17,
19–28

9, 11–17,
19–28
103(a) Rutherford,
Lancaster
9, 11–17,
19–28

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Overall
Outcome
9, 11–17,
19–28

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED