Deyi Yao et al.

Patent Trials and Appeals Board

Sep 18, 2019

14356981 - (D) (P.T.A.B. Sep. 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.
14/356,981 05/08/2014 Deyi Yao LUTZ 201830US01 6139
48116 7590 09/18/2019
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
TIV, BACKHEAN
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
09/18/2019 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):
Nokia.IPR@nokia.com
docketing@faysharpe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEYI YAO, YI SONG, and WEISI XIAO
____________

Appeal 2018-005315
Application 14/356,9811
Technology Center 2400
____________

Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and
NABEEL U. KHAN, Administrative Patent Judges.

KHAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 2, 5, 6, 8, 9, 11, 12, 15, 16, 18, and 19. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Alcatel Lucent as the real party in interest. Appeal Br.
1.

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BACKGROUND
THE INVENTION
According to Appellants, the invention “relates to the field of
communication technologies, and more particularly, to a method, apparatus
and system for simultaneously transmitting or receiving multiple managed
objects, and to a transmitting apparatus for simultaneously transmitting
multiple managed objects and a receiving apparatus for simultaneously
receiving multiple managed objects.” Spec. 1:5–8.
The Specification describes that certain tasks performed by computers
must be performed together as part of a single transaction. Spec. 1:16–18.
If some tasks in a transaction are successfully performed while other tasks in
the same transaction are unsuccessfully performed, then the system may
become inconsistent. Thus, the tasks must all be executed successfully for
the transaction to execute successfully. Spec. 1:24–26. If one task fails then
the entire transaction fails. Spec. 1:26. When a transaction fails, the state of
the system is rolled back to a state before the transaction started. Spec.
1:27–29.
The Specification explains that “there is still not a technology of
encapsulating multiple managed objects into one message in the prior art,
i.e., multiple managed objects cannot be simultaneously transmitted or
received.” To solve this problem, Appellants propose to encapsulate two or
more managed objects in one atomic transaction, thus ensuring that the
managed objects get executed together. See Spec. 4:2–10.
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Exemplary independent claim 1 is reproduced below.
1. A method for simultaneously transmitting multiple
managed objects, the method comprising:
encapsulating two or more managed objects in one or more
atomic transactions according to internal attributes and data
processing of the managed objects, wherein each atomic
transaction includes at least two managed objects;
according to a pre-defined association rule, determining
association relationships between managed objects in the one
atomic transaction, or determining association relationships
between multiple atomic transactions and association
relationships between managed objects in each of the multiple
atomic transactions; and
transmitting one or more atomic transactions through a
single simple object access protocol message via a
communication network.

REFERENCES AND REJECTIONS
1. Claims 1, 2, 5, 6, 8, 9, 11, 12, 15, 16, 18, and 19 stand rejected
under 35 U.S.C. § 101. Ans. 2–9.
2. Claims 1, 2, 5, 6, 8, 9, 11, 12, 15, 16, 18, and 19 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Kalavacharla
(US 2006/0282400 A1, published Dec. 14, 2006) and 3GPP TS 32.607
v7.1.0 (2008-12) (“the SOAP2 Standard”).

2 SOAP stands for Simple Object Access Protocol. Spec. 1:12.
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DISCUSSION
REJECTION UNDER 35 U.S.C. § 101
Legal Principles
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. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
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. Id. 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, 69 (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
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(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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 (quotation marks 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).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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 MPEP
§§ 2106.05(a)–(c), (e)–(h)).
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 is 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.
REJECTION UNDER 35 U.S.C. § 101
Guidance Step 1
Independent claims 1 and 6 are directed to “a method” and
independent claims 11 and 16 are directed to an “apparatus.” Appeal Br.
18–21. As such, we find the pending claims are directed to statutory
categories, such as a process and machine.
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Guidance Step 2A - Whether the Claims are
Directed to a Judicial Exception
The Examiner finds the claims are drawn to “collecting, displaying,
and manipulating data” and to “organizing and manipulating information
through mathematical correlations.” Ans. 4. In the Answer, the Examiner
analyzes several limitations of the claims, analogizes them to those in certain
Federal Circuit decisions, and finds that they recite abstract ideas. See Ans.
4–5. For example, the Examiner finds “the limitations of
receiving/encapsulating one or more atomic transactions based on internal
attributes and data processing is merely data manipulation.” Ans. 4 (citing
Intellectual Ventures v. Capital One, 850 F.3d 1332, 1340 (Fed. Cir. 2017)).
The Examiner further finds the limitation reciting “according to pre-defined
association rule, determining association relationships between managed
objects” is “merely organizing and manipulating information through
mathematical correlations.” Ans. 5 (citing Spec. 12:15–28, 13:23–14:6).
First Prong of Step 2A
Following the Guidance we first determine whether the claims recite
an abstract idea. Appellants argue the claims as a group and thus we take
claim 1 to be representative. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 1
recites “encapsulating two or more managed objects in one or more atomic
transactions.” The encapsulation process groups managed objects together,
according to their internal attributes, to ensure that they are executed
together in some specified order. Thus, this step analyzes the managed
objects and groups them together based on that analysis. Analyzing data is a
step that may be performed mentally, and grouping information, data, or
software objects together is a step which also may reasonably be performed
mentally.
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The claim also recites “according to a pre-defined association rule,
determining association relationships between managed objects in the one
atomic transaction, or determining association relationships between
multiple atomic transactions and association relationships between managed
objects in each of the multiple atomic transactions.” The claimed
“association rule” is described in the Specification as a rule used to
determine the order in which managed objects in an atomic transaction must
be executed or the order in which atomic transactions in a set of atomic
transactions must be executed. See e.g. Spec. 12:19–13:11; 13:23–14:6.
Thus, by “determining association relationships” between managed objects
and between multiple atomic transactions, the claims require determining an
execution order of these managed objects and atomic transactions according
to a pre-defined rule. As such, this step may be performed mentally by
following rules that define an order of execution.
Thus, we find the claims recite steps that are directed to mental
processes. Mental processes are identified in the Guidance as a category of
abstract ideas, and thus, we find under prong 1 of step 2A, the claims recite
an abstract idea.
Second Prong of Step 2A
Next we determine whether the claims recite a practical application of
the recited judicial exception. Here we look to see if, for example, (i) any
additional elements of the claims reflects an improvement in the functioning
of a computer or to another technological field, (ii) an application of the
judicial exception with, or by use of, a particular machine, (iii) a
transformation or reduction of a particular article to a different state or thing
(iv) or a use of the judicial exception in some other meaningful way beyond
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generally linking the use of the judicial exception to a particular
technological environment. See MPEP § 2106.05(a)–(c), (e)–(h)
Appellants call our attention to the “limitation of transmitting multiple
objects in a single SOAP message,” which according to Appellants entails
“the claimed innovation [of] encapsulate[ing] the multiple managed objects
into atomic transactions, and then determin[ing] association relationships
between encapsulated managed objects in each atomic transaction.” Reply
Br. 3. The association relationships allow the managed objects to “be
executed in a correct order by a device receiving the single SOAP message
containing the managed objects.” Reply Br. 3. Appellants argue that these
features make the invention more than “merely encapsulating data objects
and determining relationships between them . . . .” Reply Br. 3. Instead,
Appellants argue, “the claimed subject matter enables a single SOAP
message to be used to transmit multiple managed objects, which previously
was not possible, and which has the advantages of reducing network
congestion, increasing network (processing) performance and throughput,
inter alia.” Reply Br. 3–4.
Appellants also distinguish the claims in this case from Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d
1343 (Fed. Cir. 2014) and Digitech Image Tech. v. Electronics for Imaging,
Inc., 758 F.3d 1344 (Fed. Cir. 2014) arguing that those cases related to “data
collection, recognition, and storing in a memory” and “combining two sets
of data into a single data set” respectively, while the “instant claims relate to
generating groups (atomic transactions) of managed objects and identifying
association relationships only after the managed objects are grouped. The
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grouped objects can then be transmitted with their respective relationship
information in a single SOAP message.” Reply Br. 4.
We are unpersuaded by Appellants’ arguments. Appellants repeatedly
emphasize that the claims require grouping managed objects together and
then only after the objects have been grouped together, determining their
association relationships. See Reply Br. 3–4. However, as we explained
above, grouping objects together is a step that can be performed mentally,
and determining the association relationships between the managed objects
(i.e. the order in which the managed objects are executed) is also a step that
can be performed mentally. The fact that the association relationships are
determined after the managed objects are grouped together does not affect
this conclusion. Thus, even if advantages are gained (such as lower network
congestion or increased performance) from Appellants’ invention, such
advantages accrue from the recited mental processes themselves rather than
from improvement to the computer or apparatus involved in implementing
Appellants’ invention.
As to the fact that the claims require multiple managed objects to be
transmitted in a single SOAP message, we note initially that the Federal
Circuit has found that transmitting information, without more, does not
constitute something significantly more than an abstract idea. Cyberfone
Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 992
(“using categories to organize, store, and transmit information is well-
established. Here, the well-known concept of categorical data storage, i.e.,
the idea of collecting information in classified form, then separating and
transmitting that information according to its classification, is an abstract
idea that is not patent-eligible.”).
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Further, although Appellants emphasize that their invention allows for
multiple objects to be transmitted in a single SOAP message, the vast
majority of their Specification is devoted to explaining the encapsulation and
association of managed objects and very little is said about transmitting
multiple such managed objects in a single SOAP message. Indeed, other
than mentioning that “the user terminal or server transmits one . . . [atomic
transaction] through a SOAP message via the communication network to
other user terminals or servers” (Spec. 13: 14–15), and also that the
apparatus comprises “a transmitting unit for transmitting one or more atomic
transactions through a communication network” (Spec. 17:24–25) the
evidence presented does not show, beyond the encapsulation and association
aspects of the claims, how or why transmitting multiple objects in a single
SOAP message improves the functioning of a computer or otherwise
evidences a practical application of the recited abstract ideas. Instead we
find the “transmitting” limitation to be insignificant post-solution activity.
Thus, we find that the claimed invention does not recite a practical
application of the recited judicial exception under prong 2 of step 2A.
Accordingly, we find the claims are directed to an abstract idea under step
2A of the Guidance.
Guidance Step 2B - Whether the Claims
Provide an Inventive Concept
In our analysis under step 2B, we look to see if the claims add
limitations beyond the judicial exception that are not “well-understood,
routine, conventional” in the field (see MPEP § 2106.05(d)). Here we note
that the claims recite few if any limitations beyond the recited abstract idea.
Claim 1, for example, recites a communication network, and independent
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claim 11 recites a “transmitting apparatus,” but these elements are described
in the Specification as standard hardware elements that operate in their well-
understood and routine ways. For example, the Specification states the
invention “may be implemented in a computer program executed on a
programmable computer, and each programmable computer includes a
processor, processor-readable storage media (including volatile and
nonvolatile memories and/or storage elements), and appropriate input and
output apparatus.” Spec. 9:14–17.
Thus, we do not fund that the claims add limitations beyond the
judicial exception that are not “well-understood, routine, conventional” in
the field.
REJECTION UNDER 35 U.S.C. § 103
Appellants argue “[t]he Examiner relied on the SOAP standard to
teach that each atomic transaction comprises at least two managed objects,
and the one or more atomic transactions are transmitted through a single
SOAP message.” Appeal Br. 7. According to Appellants “the SOAP
standard . . . does not disclose sending an atomic transaction comprising
multiple (two or more) managed objects via a single simple object protocol
message. Rather, only a single managed object can be transmitted according
to SOAP . . . .” Appeal Br. 8. Appellants also argue that “Kalavacharla also
does not provide any such teaching and is not relied upon by the Examiner
to do so.” Appeal Br. 7. Thus, Appellants contend “combining the features
of Kalavacharla with the single simple object access protocol of SOAP
would not result in the claimed feature of transmitting two or more managed
objects in an atomic transaction via a single simple object protocol
message.” Appeal Br. 8.
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We are unpersuaded by Appellants’ argument. The Examiner finds
“Kalvacharla, Fig. 3, para. 44, teaches the transaction business object
encapsulates business objects 302a-c, which teaches encapsulating two or
more managed objects into one or more atomic transaction and Fig. 4,
para.55 teaches transmitting the transaction business object (interpreted as
the atomic transaction with two or more managed objects) over a
communication network to the integration adapter (receiver) therefore
teaches transmitting one or more atomic transaction, which is not being
disputed by the applicant.” Advisory Act. March 28, 2017 (Advisory Act.)
at 2. The Examiner further finds “Kalvacharla however is silent to what
protocol is being used to transmit the transaction business object with the
managed objects, in other words does not teach the use of a single SOAP
message for communication.” Advisory Act. at 2. “3GPP SOAP
Standard(3GPP) was relied upon to teach a single SOAP message, which is
not being disputed by the applicant.”
As can be seen, and contrary to Appellants’ contention, the Examiner
is not relying on the SOAP standard “to teach that each atomic transaction
comprises at least two managed objects” (Appeal Br. 7) but instead relies on
Kalvacharla as teaching an atomic transaction comprising at least two
managed objects (Final Act. 3; Advisory Act. 2 (citing Kalvacharla ¶ 44)).
We agree with the Examiner’s finding. Kalvacharla teaches that “A
transaction business object 300 in accordance with one embodiment may
comprise an object wrapper encapsulating multiple business objects 302a-c
needed to complete a transaction . . . .” Kalvacharla ¶ 44 (emphasis added).
Kalvacharla also teaches that “an integration broker 102 is configured to
transport a transaction business object 300 encapsulating a transaction, or a
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logical unit of work, to the integration adapter 106.” Kalvacharla ¶ 55
(emphasis added). Thus Kalvacharla discloses encapsulating multiple
business objects into a transaction business object and transmitting that
transaction business object over a communication connection, which we
agree teaches “encapsulating two or more managed objects in one or more
atomic transactions” and “transmitting one or more atomic transactions
through a single . . . message” as the Examiner finds.
However, because Kalvacharla does not teach that this message is a
SOAP message, the Examiner relies upon the SOAP standard to teach the
specific SOAP protocol and message. Final Act. 4. Thus, we agree with the
Examiner’s finding that the combination of Kalvacharla with the SOAP
standard would teach one of ordinary skill in the art “encapsulating two or
more managed objects in one or more atomic transactions” and transmitting
such objects in a single message, as taught by Kalvacharla, and that the
single message may be a SOAP message, as taught by the SOAP standard.
Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellants present the same arguments for independent claims 6 and 11 as
they did for claim 1 and thus, for the same reasons, the Examiner’s rejection
of claims 6 and 11 are sustained as well. Finally, Appellants do not present
any additional arguments for the separate patentability of dependent claims
2, 5, 8, 9, 12, 15, 18, and 19. Thus, we sustain the Examiner’s rejection of
these dependent claims.
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DECISION
The Examiner’s rejection of claims 1, 2, 5, 6, 8, 9, 11, 12, 15, 16, 18,
and 19 under 35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1, 2, 5, 6, 8, 9, 11, 12, 15, 16, 18,
and 19 under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED