Ex Parte ABDELRAHMAN et al

Patent Trials and Appeals Board

Feb 26, 2019

13936584 - (D) (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/936,584 07/08/2013 Ahmad Naser ABDELRAHMAN
74739 7590 02/28/2019
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2011-001 ouso 1 9263
EXAMINER
DUNHAM, JASON B
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AHMAD NASER ABDELRAHMAN,
PAUL HUGH WILKIE BISHOP,
GLENN DEXTER SW ANSON, DEEP ANKAR DEY,
TODD SPRAGGINS, and BEN ENG
Appeal2017-010375
Application 13/936,584
Technology Center 3600
Before ST. JOHN COURTENAY III, CATHERINE SHIANG, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Oracle International
Corporation. App. Br. 3.
Appeal2017-010375
Application 13/936,584
INVENTION
Appellants' invention relates to a service design and order fulfillment
system. Title. Claim 1 is illustrative and reads as follows:
1. A non-transitory computer-readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to optimize a fulfillment solution and fulfill
an order using the fulfillment solution, the optimizing and
fulfilling comprising:
receiving an input;
defining a technical catalog that comprises one or more
items comprising metadata associated with a fulfillment
solution;
selecting a process logic at runtime from a set of
selectable process logic;
generating a transformation sequence using the selected
process logic;
dynamically generating a runtime process flow
comprising a customized output from the input based on the
transformation sequence and the metadata,
wherein the transformation sequence is customized based
on the metadata, and wherein the runtime process further
comprises defining a fulfillment solution blueprint that
comprises a plurality of order layers that define a plurality of
layers of the fulfillment solution, a plurality of provider
functions comprising a plurality of components of the
fulfillment solution, and a plurality of interface contracts
defining a plurality of interactions between a plurality of
provider functions;
designing the fulfillment solution to use at least one item
of the one or more items of the technical catalog;
designing the fulfillment solution based on the fulfillment
solution blueprint; and
2
Appeal2017-010375
Application 13/936,584
generating the fulfillment solution based on the
fulfillment solution blueprint using the at least one item of the
one or more items of the technical catalog.
App. Br. 28-29 (Claims App.).
REJECTIONS
Claims 1-20 stand provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1-20 of
copending US Application No. 13/936,588 in view of claims 1-20 of
copending US Application No. 13/936,567. Final Act. 11-12.
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception to patentability, without
significantly more. Final Act. 12.
Claims 1-5, 7, 9-13, 15-18, and20 stand rejected underpre-AIA
35 U.S.C. § I03(a) as unpatentable over the combination of Maes (US
2009/0193433 Al; published July 30, 2009) and Christfort et al. (US
2002/0129016 Al; published Sept. 12, 2002) ("Christfort"). Final Act.
13-22.
Claims 6, 14, and 19 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as unpatentable over the combination of Maes, Christfort, and Goldberg (US
2005/0289013 Al; published Dec. 29, 2005). Final Act. 23-25.
Claim 8 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of Maes, Christfort, and Rijhsinghani et
al. (US 2011/0112885 Al; published May 12, 2011) ("Rijhsinghani"). Final
Act. 26-27.
3
Appeal2017-010375
Application 13/936,584
ANALYSIS
Rejection of Claims 1-20 under 35 USC§ 101
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. Kappas, 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,
193 (1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
4
Appeal2017-010375
Application 13/936,584
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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 tum 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 (internal 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
5
Appeal2017-010375
Application 13/936,584
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 REVISED PATENT
SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 ("2019
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 activities 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 EXAMINING PROCEDURE
(MPEP) § 2106.05(a}-(c), (e}-(h)) (9th Ed., Rev. 08.2017, Jan.
2018)).
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 2019 Guidance.
Here, Appellants contend the Examiner erred because the claims do
not recite the abstract idea of "designing a fulfillment solution and fulfilling
an order using the fulfillment solution," and "the claimed embodiments
improve the functioning of a computer." App. Br. 14--15.
6
Appeal2017-010375
Application 13/936,584
Step 2A, Prong One - Recited Judicial Exception
Step 2A of the 2019 Guidance is a two-prong inquiry. In Prong One,
we evaluate whether the claim recites a judicial exception. For abstract
ideas, in Prong One we determine whether the claim recites mathematical
concepts, certain methods of organizing human activity, or mental processes.
Applying the 2019 Guidance, we conclude independent claim 1
recites a fundamental economic practice of order fulfillment, which is a
certain method of organizing human activity. We note the preamble of
claim 1 is expressly directed to "optimiz[ing] a fulfillment solution and
fulfill[ing] an order using the fulfillment solution," which we conclude is
directed to a certain method of organizing human behavior, i.e., a
fundamental economic practice.
Claim 1 recites various limitations consistent with this
characterization, including:
defining a technical catalog that comprises one or more
items comprising metadata associated with a fulfillment
solution;
selecting a process logic at runtime from a set of
selectable process logic;
generating a transformation sequence using the selected
process logic;
dynamically generating a runtime process flow
comprising a customized output from the input based on the
transformation sequence and the metadata,
wherein the transformation sequence is customized based
on the metadata, and wherein the runtime process further
comprises defining a fulfillment solution blueprint that
comprises a plurality of order layers that define a plurality of
layers of the fulfillment solution, a plurality of provider
functions comprising a plurality of components of the
7
Appeal2017-010375
Application 13/936,584
fulfillment solution, and a plurality of interface contracts
defining a plurality of interactions between a plurality of
provider functions;
designing the fulfillment solution to use at least one item
of the one or more items of the technical catalog;
designing the fulfillment solution based on the fulfillment
solution blueprint; and
generating the fulfillment solution based on the
fulfillment solution blueprint using the at least one item of the
one or more items of the technical catalog.
Independent claim 11 similarly recites "designing a fulfillment
solution and fulfilling an order using the fulfillment solution," and
independent claim 16 recites "design[ing a] fulfillment solution," with
similar limitations.
Because we conclude the independent claims recite an abstract idea,
we proceed to Prong Two to determine whether the claims are "directed to"
the judicial exception.
Step 2A, Prong Two - Practical Application
If a claim recites a judicial exception, in Prong Two 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, although claim 1 includes additional elements, such as "[a]
non-transitory computer-readable medium having instructions stored
8
Appeal2017-010375
Application 13/936,584
thereon," "a processor," and "receiving an input," these are insufficient to
constitute integration into a practical application because these elements are
recited at a high level of generality and the claim simply applies the judicial
exception using computer components. In particular, the additional elements
do not constitute a particular machine, but instead use a generically-recited
computer (i.e., generic computer components) to perform the abstract idea.
See 2019 Guidance, 84 Fed. Reg. 50 at III A(2); MPEP § 2106.05(b); Eibel
Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 64---65 (1923);
MPEP § 2106.05(±); Alice, 573 U.S. at 222-26; Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
We note the introduction of a "processor" into the claims to
implement an abstract idea is not a patentable application of the abstract
idea. Alice, 573 U.S. at 222. The computer implementation here is purely
conventional and performs basic functions. See id. at 225-26. Appellants
do not adequately show how the claimed steps are performed technically
such that they cannot be done manually or that they are not routine and
conventional functions of a generic computer. See, e.g., Spec.
,r,r 66. As our reviewing court has observed, "after Alice, there can remain
no doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (citing Alice, 573
U.S. at 223-24).
We disagree with Appellants that Enfzsh, LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016) controls here. See App. Br. 14--16. Appellants
argue that "the claimed embodiments improve the functioning of a
computer" by using metadata and a transformation sequence to modify and
9
Appeal2017-010375
Application 13/936,584
customize an output solution, which results in avoiding the need to "add
entirely new solution stacks to address new domains." App. Br. 15 (citing
Spec. ,r 4).
The Enfish court concluded a self-referential logical table was a
specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Id. at 1339. Here, Appellants have not
shown persuasively that any features of the claimed invention improve the
way the recited generic computer components store and retrieve data in a
manner analogous to that found by the court in Enfzsh. Moreover,
Appellants' claims 1-20 are silent regarding any mention of a database,
much less a self-referential database table similar to the specific type of
logical table arrangement the Enfzsh court found was designed to improve
the way a computer stores and retrieves data in memory. See Enfish, 822
F.3d at 1336.
Therefore, we are not persuaded that Appellants' claimed invention
improves the functionality or efficiency of the recited generic computer
components, or otherwise changes the way the computer components
function, at least in the sense contemplated by the Federal Circuit in Enfzsh.
We also do not find persuasive Appellants' attempt to analogize the
claims to the subject claims considered by the court in McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). App. Br. 16.
We note the subject claim considered by the McRO court concerned a
method for automatically animating lip synchronization and facial
expressions. McRO, 837 F.3d at 1303. The McRO court concluded the
subject claims did not recite an abstract idea because the computer animation
improved the prior art through the use of rules, rather than artists, to set
10
Appeal2017-010375
Application 13/936,584
morph weights and transitions between phonemes. Id. at 1308. Thus, the
claimed invention in McRO allowed for computer performance of animation
steps that previously had to be performed by human animators. Id. at 1309.
The subject claims in McRO used "limited rules in a process specifically
designed to achieve an improved technological result" over "existing,
manual 3-D animation techniques." Id. at 1316.
Here, Appellants' claimed invention does not apply positively recited
rules, per se. The invention under appeal merely adapts to a technological
setting (e.g., comprising generic processors) the broad concept of designing
a fulfillment solution and fulfilling an order using the fulfillment solution.
See independent claim 1, and independent claims 11 and 16, which recite
similar language of commensurate scope.
Thus, Appellants' claims merely implement generic computer
components to perform the recited functions. We emphasize that McRO
guides that "[ t ]he abstract idea exception prevents patenting a result where
'it matters not by what process or machinery the result is accomplished."'
837 F.3d at 1312 (quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1853)).
Appellants' analogy to BASCOM Global Internet Services v. AT&T
Mobility, LLC, 827 F.3d 1341 (Fed. Cir. 2016), is similarly unavailing. See
App. Br. 18. In support, Appellants urge that "the claims are allowable over
the prior art, meaning all of the pending claims now recite an inventive
concept per Step 2B, as discussed in Bascom." Id. at 19.
However, the Supreme Court guides: "[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
11
Appeal2017-010375
Application 13/936,584
188-89. Our reviewing court further emphasizes 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").
The Federal Circuit held in BASCOM that the claimed Internet content
filtering, which featured an implementation "versatile enough that it could
be adapted to many different users' preferences while also installed
remotely in a single location," expressed an inventive concept in "the
non-conventional and non-generic arrangement of known, conventional
pieces." BASCOM, 827 F.3d at 1346, 1350.
Here, Appellants have not shown a non-conventional, non-generic
arrangement regarding the generic (known, conventional) non-transitory
computer-readable medium having instructions stored thereon, processor,
and "receiving an input" recited in claim 1. Therefore, we agree with the
Examiner that Appellants' claims do not involve any improvements to
another technology, technical field, or improvements to the functioning of
the computer itself as was seen in Bascom. See Final Act. 4--5.
For these reasons, we are not persuaded by Appellants' arguments that
claim 1 improves the functioning of the computer itself or any other
technology or technical field.
Accordingly, we determine the abstract idea is not integrated into a
practical application and the claims are directed to the abstract idea.
Therefore, we proceed to Step 2B.
12
Appeal2017-010375
Application 13/936,584
Step 2B - Inventive Concept
Having determined claim 1 is directed to an abstract idea that is not
integrated into a practical application, we now evaluate whether the
additional elements add a specific limitation that is not well-understood,
routine, or conventional activity in the field, or simply append
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the abstract idea. See
2019 Guidance.
Here, the Examiner determined, and we agree, that the only elements
beyond the abstract idea are generic computer components used to perform
generic computer functions (Final Act. 5}-a determination that is supported
by Appellants' Specification (see, e.g., Spec. ,r,r 67---68). Appellants'
Specification, for example, describes "[a] computer-readable medium [as]
... 'any available medium that can be accessed by processor 22, "' without
describing the particulars. Spec. ,r 68. The Specification also describes that
processor 22 "may be any type of general or specific purpose processor." Id.
,r 67. Moreover, courts have recognized "receiving an input" as a well-
understood, routine, or conventional function when claimed in a generic
manner. See, e.g., OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (computer receives and
sends information over a network); see also MPEP § 2106.05(d).
We also note the Examiner provided in the record a list of computer
functions and found that the listed generic computer functions are well-
understood, routine, and conventional (WURC) functions. Final Act. 5. The
Examiner's Final Office Action ( dated Dec. 14, 2016) was mailed before
13
Appeal2017-010375
Application 13/936,584
Berkheimerv. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), was decided on
February 8, 2018 and before the USPTO April 19, 2018 Berkheimer
Memorandum, entitled CHANGES IN EXAMINATION PROCEDURE PERTAINING
TO SUBJECT MATTER ELIGIBILITY, RECENT SUBJECT MATTER ELIGIBILITY
DECISION (BERKHEIMER V. HP, INC.) ("US PTO Berkheimer Memorandum").
Appellants have not substantively and persuasively traversed the
Examiner's findings in the Appeal Brief or in the Reply Brief. In reviewing
the record, we recognize that Appellants did not have the opportunity to
argue Berkheimer in support of their appeal, until after Berkheimer was
decided by the Federal Circuit on February 8, 2018, which occurred after the
Reply Brief was filed on August 1, 2017. Because Berkheimer (881 F.3d at
1369) and the USPTO Berkheimer Memorandum are intervening authorities,
Appellants are permitted to argue any new issues related to Berkheimer in a
Request for Rehearing, under our procedural rule. See 37 C.F.R.
§ 41.52(a)(2) ("Appellant may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court.").
However, 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, conventional" in the field (see MPEP
§ 2106.0S(d)).
Accordingly, the additional elements, when viewed alone and in
combination, merely amount to generic computer components performing
generic computer functions that are well understood, routine, and
conventional in the industry, and do not amount to significantly more than
the abstract idea. Independent claims 11 and 16 are similar to claim 1 and
are ineligible for similar reasons. The dependent claims serve to embellish
14
Appeal2017-010375
Application 13/936,584
the abstract idea and do not confer eligibility on the claimed invention.
Appellants' argument that the claims do not preempt an abstract idea
(App. Br. 20) is also not persuasive. Preemption is not the sole test for
patent eligibility, and any questions on preemption in the instant case have
been resolved by the Examiner's Alice analysis. As our reviewing court has
explained: "questions on preemption are inherent in and resolved by the
§ 101 analysis," and, although "preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015); cf OIP Techs., 788 F.3d at 1362-63 ("[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.").
In view of the above, we sustain the§ 101 rejection of independent
claim 1, independent claims 11 and 16 as these claims recite similar
limitations to claim 1 and are not argued separately, and dependent claims
2-10, 12-15, and 17-20, as these claims are not argued separately.
Rejection of Claims 1-20 under 35 USC§ 103(a)
Appellants contend the Examiner erred because the cited portions of
Maes and Christfort fail to teach or suggest the limitations "generating a
transformation sequence using the selected process logic" and "dynamically
generating a runtime process flow comprising a customized output from the
input based on the transformation sequence and the metadata," as recited in
independent claim 1 and similarly recited in independent claims 11 and 16.
App. Br. 22.
15
Appeal2017-010375
Application 13/936,584
We are not persuaded that the Examiner erred. The Examiner mapped
the claim limitations to paragraphs 70-72 of Christfort. Ans. 14. Appellants
have not persuasively rebutted the Examiner's findings.
The Examiner found Christfort teaches "selecting a process logic at
runtime from a set of selectable process logic" where, in Christfort, the user
selects an application, such as a map service provider. Id. ( citing Christfort
,r 70). Appellants' argument that "[t]here is no application selection" in
Christfort is conclusory, merely reciting the claim limitation, the teachings
of Christfort, and stating that the two are not the same. Reply Br. 11
(internal quotation marks omitted). Rule 41.3 7 "require[ s] more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art." In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Appellants' arguments regarding the limitation "generating a
transformation sequence" are similarly conclusory. Appellants argue the
Examiner erred in mapping "generating a transformation sequence" to
Christfort's generation of generic output, but Appellants do not provide a
persuasive basis for that argument. Rather, Appellants argue in a conclusory
manner that "Christfort discloses the generation of 'generic output.'
However, the cited portion of Christfort fails to disclose a generation of a
'transformation sequence' as claimed." See Reply Br. 12 ( emphasis
omitted).
For these reasons, we are not persuaded that the Examiner erred in
determining the combination of Maes and Christfort teaches or suggests the
disputed limitations of claim 1.
16
Appeal2017-010375
Application 13/936,584
Accordingly, we affirm the Examiner's§ 103(a) rejection of
independent claim 1, the§ 103(a) rejection of independent claims 11 and 16,
and the§ 103(a) rejection of dependent claims 2-5, 7, 9, 10, 12, 13, 15, 17,
18, and 20. We also affirm the Examiner's§ 103(a) rejection of dependent
claims 6, 8, 14, and 19, not argued separately with particularity. See App.
Br. 25-26.
Provisional Rejection of Claims 1-20
Claims 1-20 stand provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1-20 of
copending US Application No. 13/936,588 in view of claims 1-20 of
copending US Application No. 13/936,567. Final Act. 11-12.
Appellants present no arguments addressed to the merits of the
rejection, but request the rejection be held in abeyance. See Reply Br. 2.
Accordingly, we affirm, proforma, the Examiner's provisional rejection of
claims 1-20 on the ground of nonstatutory double patenting.
DECISION
We affirm the decision of the Examiner rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
17