Debanjan Saha et al.

Patent Trials and Appeals BoardJul 18, 2019

12174130 - (D) (P.T.A.B. Jul. 18, 2019)

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. 12/174,130 07/16/2008 Debanjan Saha YOR920070693US1 8101 48062 7590 07/18/2019 RYAN, MASON & LEWIS, LLP 2425 Post Road Suite 204 Southport, CT 06890 EXAMINER BEHNCKE, CHRISTINE M ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 07/18/2019 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): ctoffice@rml-law.com kmm@rml-law.com mjc@rml-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DEBANJAN SAHA, RAMENDRA K. SAHOO, and ANEES A. SHAIKH1 ____________________ Appeal 2018-003633 Application 12/174,130 Technology Center 3600 ____________________ Before JENNIFER S. BISK, LARRY J. HUME, and JULIET MITCHELL DIRBA, Administrative Patent Judges. BISK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1–4, 8–13, 16, 17, 19–24, 27, 28, and 30–33, which are all claims pending in the application. Appellants have canceled claims 5–7, 14, 15, 18, 25, 26, and 29. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as International Business Machines Corporation. Appeal Br. 1. Appeal 2018-003633 Application 12/174,130 2 BACKGROUND2 Appellants’ disclosed embodiments and claimed invention relate to techniques for organizing processes. Spec. 2:12. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A method for generating a target process, comprising steps of: [(1)] generating a process generation database by (i) storing each of one or more values in a record in a process generation database on a memory, wherein each of the one or more values comprise a representation of a step from one of multiple existing processes, (ii) storing each of one or more artifacts from the multiple existing processes in a record in the process generation database on the memory, wherein the one or more artifacts comprise (a) a time measure, (b) one or more splits, (c) one or more merges, and (d) one or more financial transactions at each of multiple self-contained task entities, wherein the financial transactions comprise approvals from a financial point of view and an enterprise point of view, (iii) indexing each of the one or more steps from the multiple existing processes into the process generation database and (iv) indexing each of the one or more artifacts from the multiple existing processes into the process generation database; [(2)] identifying at least one of one or more steps and one or more artifacts within a target process and one or more other processes from the process generation database having tasks related to those in the target process, wherein identifying at least one of one or more steps and one or more artifacts is carried out 2 Throughout this Decision we have considered the Specification filed July 16, 2008 (“Spec.”), the Final Rejection mailed January 13, 2017 (“Final Act.”), the Appeal Brief filed July 13, 2017 (“Appeal Br.”), the Examiner’s Answer mailed December 1, 2017 (“Ans.”). Appellants did not file a Reply Brief. Appeal 2018-003633 Application 12/174,130 3 by at least one hardware processor in connection with the process generation database on the memory; [(3)] indexing the identified one or more steps and one or more artifacts within the target process in the process generation database; [(4)] selecting one or more steps and one or more artifacts in one or more other processes from the process generation database that have an association with the one or more steps and one or more artifacts within the target process; [(5)] pre-fetching the selected one or more steps and one or more artifacts from the process generation database, wherein pre-fetching the at least one of one or more steps and one or more artifacts is carried out by the at least one hardware processor in connection with the process generation database on the memory; [(6)] determining one or more decision points in the target process, wherein each of the one or more decision points comprises a point in the target process that requires input imported from one or more tasks present within a separate process; [(7)] associating the pre-fetched one or more steps and one or more of the financial transactions from the stored artifacts to be used in the target process with the determined one or more decision points to generate the target process, wherein associating the at least one of one or more steps and one or more artifacts to be used in the target process at one or more decision points to generate the target process is carried out by the at least one hardware processor; and [(8)] outputting a final target process diagram by (i) incorporating each relationship determined via said associating and (ii) removing each of one or more redundant relationships from the target process subsequent to said incorporating. Appeal Br. 17 (Claims App’x) (limitation numbering added). Appeal 2018-003633 Application 12/174,130 4 REJECTION Claims 1–4, 8–13, 16, 17, 19–24, 27, 28, and 30–33 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 5–11. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). To the extent Appellants have 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 have considered all of Appellants’ arguments and any evidence presented. We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection of Claims 1–20 under 35 U.S.C. § 101 Section 101 of the Patent Act provides that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the Supreme Court has long recognized an implicit exception to this section: “‘Laws of nature, natural phenomena, and abstract ideas are not patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us first to consider whether the claim is “directed to one Appeal 2018-003633 Application 12/174,130 5 of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive concept,” “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73). The Patent Office recently issued guidance regarding this framework. See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide whether a claim is “directed to” an abstract idea, we evaluate whether the claim (1) recites subject matter falling within an abstract idea grouping listed in the Revised Guidance and (2) fails to integrate the recited abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea, as noted above, we then determine whether the claim recites an inventive concept. The Revised Guidance explains that when making this determination, we should consider whether the additional claim elements add “a specific limitation or combination of limitations that are not well- understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry.” Revised Guidance, 84 Fed. Reg. at 56. Appeal 2018-003633 Application 12/174,130 6 For purposes of the § 101 rejection, Appellants argue claims 1–20 together as a group. See App. Br. 5–6; Reply Br. 2–3. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv), we limit our discussion to independent claim 1. Independent claims 8 and 15 and dependent claims 2– 7, 9–14, and 16–20 stand or fall with independent claim 1. With these principles in mind, we turn to the Examiner’s § 101 rejection. The Judicial Exception—Abstract Idea The Examiner determined the claims are directed to the abstract idea of indexing the identified steps and artifacts within the target process, selecting steps and artifacts [of] other processes that have an association with the steps and artifacts within the target process, pre-fetching the selected steps and artifacts, determining decision points in the target process, . . . which is comparing new and stored information and using rules to identify options. Final Act. 6–7. For the reasons explained below, Appellants have not persuaded us that the Examiner erred. Claim 1 recites limitations [1]–[8] reproduced in full above. Each of these limitations recites an act that people can perform in their minds or using pen and paper. Starting with limitations [1] and [3], limitation [1] recites “generating a process generation database” by storing and indexing step and artifact values. Appeal Br. 17 (Claims App’x). Similarly, limitation [3] recites “indexing the identified one or more steps and one or more artifacts within the target process in the process generation database.” Id. Storing and organizing information can be done in the human mind or with pen and paper. See BSG Tech. LLC v. Buyseasons, Inc., 899 F.3d 1281, 1286 Appeal 2018-003633 Application 12/174,130 7 (comparing claims reciting a method of inputting data and indexing a database to those determined unpatentable mental processes in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011)). Turning to limitations [2] and [4], limitation [2] recites “identifying at least one of one or more steps and one or more artifacts within a target process and one or more other processes from the process generation database having tasks related to those in the target process” and limitation [4] recites “selecting one or more steps and one or more artifacts in one or more other processes from the process generation database that have an association with the one or more steps and one or more artifacts within the target process.” Appeal Br. 17 (Claims App’x). People can identify and select the recited steps and artifacts by simply reading them from a computer screen or database. Cf. CyberSource, 654 F.3d at 1372 (explaining that a claim step that “requires ‘obtaining information about other transactions that have utilized an Internet address that is identified with the [ ] credit card transaction’—can be performed by a human who simply reads records of Internet credit card transactions from a preexisting database” ). Even if these limitations required physical steps such as typing on a keyboard, these limitations would not make claim 1 patent eligible as they merely gather data. See CyberSource, 654 F.3d at 1372 (“Moreover, as discussed above, even if some physical steps are required to obtain information from the database (e.g., entering a query via a keyboard, clicking a mouse), such data- gathering steps cannot alone confer patentability.”). As for limitations [5]–[7], limitation [5] recites “pre-fetching the selected one or more steps and one or more artifacts from the process generation database.” Appeal Br. 17 (Claims App’x). Limitation [6] recites Appeal 2018-003633 Application 12/174,130 8 “determining one or more decision points in the target process, wherein each of the one or more decision points comprises a point in the target process that requires input imported from one or more tasks present within a separate process.” Id. And limitation [7] recites “associating the pre-fetched one or more steps and one or more of the financial transactions from the stored artifacts to be used in the target process with the determined one or more decision points to generate the target process.” Id. The claim language indicates that these limitations encompass matching keywords or phrases in process data with steps and artifacts in a database. For example, limitation [5] recites “wherein [pre- fetching/associating] the at least one of one or more steps and one or more artifacts is carried out by the at least one hardware processor in connection with the process generation database on the memory.” Appeal Br. 17 (Claims App’x); see also Spec. 6:6–9 (“stating “pre-fetching would seek the information from a database prepared out of these entities with a defined size and at particular time so that it would minimize the transport of information from a database into target process”). People can mentally perform this matching process. Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (“[W]e continue to ‘treat[ ] analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.’” (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016))). Finally, limitation [8] recites “outputting a final target process diagram by (i) incorporating each relationship determined via said associating and (ii) removing each of one or more redundant relationships Appeal 2018-003633 Application 12/174,130 9 from the target process subsequent to said incorporating.” Appeal Br. 17 (Claims App’x). The “outputting” portion of this claim limitation is so broad that it encompasses people writing the determined diagram on paper. See CyberSource, 654 F.3d at 1373 (determining that a claim step is “so broadly worded that it encompasses literally any method” of performing the step). In any case, even if this limitation did not recite a mental process, the limitation would not make claim 1 patent eligible because it recites insignificant post-solution activity. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir. 2016) (agreeing with the Board that downloading and printing menus “are insignificant post-solution activities that do not support the invention having . . . ‘an inventive concept’”). As for the “incorporating” and “removing” portions of this limitation, the written description provides virtually no description as to how this is done. See, e.g., Spec. 6:12–13 (“Also, step 307 includes preparing a final process diagram with associated new relationships along with removal of any redundant relationships from the target process.”). This language, however, indicates that these limitations encompass basic relational calculations that people can perform in their minds or using pen and paper. See Synopsys, 839 F.3d at 1146 (“[W]e continue to ‘treat[ ] analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.’” (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016))). In sum, limitations [1]–[8] recite a process that people can perform in their heads or using pen and paper. The recited process is not meaningfully different from other processes that courts have determined are mental Appeal 2018-003633 Application 12/174,130 10 processes. See, e.g., CyberSource, 654 F.3d at 1373 (determining that a claim whose “steps can be performed in the human mind, or by a human using a pen and paper” is directed to an unpatentable mental process). This is true even though claim 1 recites that computer components perform the claimed process. “Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015); see also Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.”). We therefore conclude that claim 1 recites mental processes, one of the abstract idea groupings in the Revised Guidance. See Revised Guidance, 84 Fed. Reg. at 52. Claim 1 thus recites an abstract idea. Integration of the Judicial Exception into a Practical Application If a claim recites a judicial exception, we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. If the recited judicial exception is integrated into a practical application, the claim is not directed to the judicial exception. Here, claim 1 recites the additional elements of “a process generation database,” “memory,” and “at least one hardware processor.” Appeal Br. Appeal 2018-003633 Application 12/174,130 11 16–17 (Claims App’x). Considering claim 1 as a whole, the additional elements do not apply or use the abstract idea in a meaningful way such that the claim as a whole is more than a drafting effort designed to monopolize the exception. The Supreme Court guides that the “prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or [by] adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11 (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). The Specification describes each of these elements as generic components. For example, the Specification states that “[t]he term ‘memory’ is intended to include memory associated with a process or CPU, such as, for example RAM (random access memory), ROM (read only memory), a fixed memory device (for example, hard drive), a removable memory device (for example, diskette), a flash memory and the like.” Spec 9:28–10:3. Similarly, the Specification defines the term “processor” as “any processing device.” Id. at 9:25–27. As for the claimed process generation database, the Specification does not explicitly refer to this term outside the claims. In fact, the only reference to the term database in the Specification is the following: A cataloging would index and represent each of these steps by way of unique indexing keys or composite keys so that these steps could be a part of a database. Moreover, pre-fetching would seek the information from a database prepared out of these entities with a defined size and at [a] particular time so that it would minimize the transport of information from a database into target process. Id. at 6:4–9. Thus, because the Specification describes the database in general terms, without describing the particulars, we conclude the claim Appeal 2018-003633 Application 12/174,130 12 limitations may be broadly but reasonably construed as reciting a generic database environment using conventional database structures. Finally, the Specification explains that “the preferred implementation will make substantial use of software running on a general-purpose computer or workstation.” Id. at 9:21–22. Appellants’ arguments have not persuaded us claim 1 is “directed to” a patent-eligible concept. For example, Appellants argue that because the Examiner has not made any prior art rejections, the claims recite an improvement to technology. Appeal Br. 10–11. This argument is not persuasive. The Supreme Court emphasizes, “[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.” Diehr, 450 U.S. at 188–89 (emphasis added). Our reviewing court further guides that “[e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (holding that “[e]ven assuming” that a particular claimed feature was novel does not “avoid the problem of abstractness”). Accordingly, even in combination with all the other recited elements, the addition of “a process generation database,” “memory,” and “at least one hardware processor” does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. For these reasons, we determine that claim 1 does not integrate the recited abstract idea into a practical application. Appeal 2018-003633 Application 12/174,130 13 Inventive Concept Because we agree with the Examiner that claim 1 is “directed to” an abstract idea, we consider whether an additional element (or combination of elements) adds a limitation that is not well-understood, routine, conventional (“WURC”) activity in the field or whether the additional elements simply append WURC activities previously known to the industry, specified at a high level of generality, to the judicial exception. Revised Guidance, 84 Fed. Reg. at 23. The Examiner’s finding that an additional element (or combination of elements) is WURC activity must be supported with a factual determination. Id. (citing MPEP § 2106.05(d), as modified by the Berkheimer Memorandum3). Whether the additional elements (“a process generation database,” “memory,” and “at least one hardware processor”) are WURC activity is a question of fact. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether something is well-understood, routine, and conventional to a skilled artisan . . . is a factual determination.”). On the record before us, Appellants have not shown that the claims on appeal add a specific limitation beyond the judicial exception that is not “well-understood, routine, and conventional” in the field (see MPEP § 2106.05(d)). Other than asserting that the entirety of the claimed subject matter is unconventional, Appellants do not point to any particular claimed element that does not qualify as WURC. Appeal Br. 14–16. 3 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”). Appeal 2018-003633 Application 12/174,130 14 In fact, Appellants’ Specification demonstrates the WURC nature of “a process generation database,” “memory,” and “at least one hardware processor” because it indicates they may be implemented with generic devices. Spec. 9:13–11:27. In addition, courts have recognized that inputting and organizing information in a generic database is WURC. BSG Tech, 788 F.3d 1359 at 1363. For these reasons, we conclude that claim 1, considered as a whole, does not include an inventive concept. Conclusion Therefore, we sustain the Examiner’s § 101 rejection of independent claim 1. We also sustain the Examiner’s § 101 rejection of claims 2–4, 8– 13, 16, 17, 19–24, 27, 28, and 30–33, for which Appellants rely on the same arguments made with respect to claim 1. Appeal Br. 9–16. DECISION We affirm the Examiner’s rejection of claims 1–4, 8–13, 16, 17, 19– 24, 27, 28, and 30–33. 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). See 37 C.F.R. § 41.50(f). AFFIRMED