Ex Parte Adams et al

Patent Trial and Appeal Board

Aug 1, 2017

11621852 (P.T.A.B. Aug. 1, 2017)

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.
11/621,852 01/10/2007 Jonathan William Adams AUS920010647US2 1906
87354 7590
IBM Corp. (END/RCR)
c/o Rolnik Law Firm, P.C.
24 N. Main St.
Kingwood, TX 77339
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
08/03/2017 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):
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN WILLIAM ADAMS,
GEORGE M. GALAMBOS, SRINIVAS KOUSHIK, and
GURUPRASAD CHITRAPUR VASUDEVA
Appeal 2015-0072941
Application 11/621,852
Technology Center 3600
Before: MEREDITH C. PETRAVICK, MICHAEL W. KIM, and
NINA L. MEDLOCK Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 3—7. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates to methods and systems for the architectural
designing of e-business solutions. Spec. 12.
1 The Appellants identifies “International Business Machines Corporation.”
as the real party in interest. Appeal Br. 2.
Appeal 2015-007294
Application 11/621,852
Independent claim 3 is illustrative:
3. A computer readable storage medium including computer
readable code executable on a computer for designing an
architecture for an e-business solution, the computer readable
medium comprising:
computer readable code for developing a business
description of the e-business solution;
computer readable code for developing a pictorial
representation of the business description;
computer readable code for establishing one or more
business patterns that are identifiable within the pictorial
representation, each business pattern being indicative of each
grouping of one or more actors and one or more business
functions based on a nature of the interaction among the one or
more actors and the one or more business functions;
computer readable code for establishing one or more
integration patterns that are identifiable within the pictorial
representation, each integration pattern being indicative of an
integration of two or more business patterns;
computer readable code for establishing one or more
composite patterns that are identifiable within the pictorial
representation, each composite pattern being indicative of a
grouping of a recurring combination of one or more business
patterns and one or more integration patterns;
computer readable code for establishing one or more
application patterns that are identifiable within the pictorial
representation, each application pattern being indicative of a
partitioning of an application logic and a data together with styles
of interaction among a plurality of logical tiers; and
computer readable code for depicting each business pattern
within the pictorial representation.
Claims 3—7 are rejected under 35U.S.C. § 101 as failing to recite
statutory subject matter.
We AFFIRM.
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ANALYSIS
We are unpersuaded the Examiner erred in asserting that claims 3—7
do not recite patent-eligible subject matter under 35 U.S.C. § 101. App. Br.
13—20; Reply Br. 1—6.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“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.”); 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.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
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method for calculating alarm limit values.”); Gottschalk v. Benson,
409 U.S. 63, 64 (1972) (“They claimed a method for converting binary-
coded decimal (BCD) numerals into pure binary numerals.”).
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an “inventive concept”—an element
or combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
The Examiner asserts that the claims are directed to “the abstract idea
of developing an architecture (model) for an e-business solution” (“the
results of the invention appear to be establish a plurality of business patterns
identified from the description of the business solution, which is
fundamental economic practice”). Final Rej. 7—8; emphasis omitted. In the
alternative, the Examiner asserts that the claims are directed to a method of
organizing human activities. Final Rej. 9. The Examiner asserts further that
the recitations of computer structure are generic. Final Rej. 10—14.
The Appellants assert that independent claim 3 is directed to a
computer readable storage medium with computer readable code for
implementing steps on a computer, which is statutory. App. Br. 15—16. We
agree with and adopt the Examiner’s findings and rationales concerning this
assertion. Ans. 3—5.
The Appellants assert further that “claim 3, is better characterized as
computer aided design part or computer. As such, the reliance on many
concrete terms, dealing in computer readable medium and computer, in sum,
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make claim 3 concrete and not abstract.” App. Br. 16, 18; Reply Br. 1—4. In
doing so, the Appellants analogize the inputs concerning business
descriptions of claim 3 to the input measured in microvolts of a patient’s
heart function in Arrhythmia Research Technology, Inc., v. Corazonix
Corporation, 958 F.2d 1053, 1059 (Fed. Cir. 1992), where the claims were
determined to be patent-eligible. As an initial matter, we note claim 3 does
not recite “inputs concerning business descriptions,” instead reciting
“developing a business description.” Additionally, we note that Arrhythmia
is a case from 1992 that applies the Freeman—Walter—Abele protocol for
determining statutory subject matter. In any case, however, we are
unpersuaded the analogy is apt, in that we are unpersuaded that the
functioning of a patient’s heart, a physical object whose function can be
readily observed, is analogous to inputs concerning business descriptions,
where discerning whether something inputted is a “business description” can
only be performed by the human mind. Instead, we are persuaded that the
portions of the Specification cited by the Appellants (Tflf 24, 25, 36, 39,
Fig. 5B) concerning “business descriptions” are properly accounted for by
the Examiner’s formulations of what the claims are directed to, and that such
formulations do indeed concern patent-ineligible abstract ideas, fundamental
economic practices, and methods of organizing human activity. Our
analysis is the same for the Appellants’ similar assertions concerning
“business patterns,” “integration patterns,” “composite patterns,” and “e-
business solutions.” App. Br. 16—18.
Relatedly, the Appellants assert that the Examiner has not provided
evidence to support the proposition that any of the above formulations are an
abstract idea. Reply Br. 3. In this regard, there is no requirement that
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examiners must provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. See, e.g.,
para. IV “July 2015 Update: Subject Matter Eligibility” to 2014 Interim
Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618
(Dec. 16, 2014)
The courts consider the determination of whether a claim is
eligible (which involves identifying whether an exception such
as an abstract idea is being claimed) to be a question of law.
Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any
factual findings.
{Id. (emphasis added)). We agree that evidence may be helpful in certain
situations where, for instance, facts are in dispute. We are unpersuaded,
however, that such is the case here.
Instead, we need only look to other decisions where similar concepts
were previously found abstract by the courts. See Amdocs (Israel) Limited v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (“Instead of a
definition [for what an ‘abstract idea’ encompasses], then, the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided.”)
To that end, we discern that “developing an architecture (model) for
an e-business solution” and “establish a plurality of business patterns
identified from the description of the business solution” is in the same
analogous substantive area as the concept of “[u] sing organizational and
product group hierarchies to determine a price,” held to be patent-ineligible
in Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306
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(Fed. Cir. 2015), and “collecting information, analyzing it, and displaying
certain results of the collection and analysis,” held to be patent-ineligible in
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
The Appellants assert additionally that independent claim 3 does not
preempt an entire field. App. Br. 18; Reply Br. 4—5. The assertion is
misplaced, for, as noted in the Federal Circuit decision cited by both the
Appellants and the Examiner, “[w]here a patent’s claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, as they
are in this case, preemption concerns are fully addressed and made moot.”
Ariosa Diagnostics v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
The Appellants assert also the following:
Similarly, claim 3, above, by relying on computer readable
code for establishing one or more application patterns that are
identifiable within the pictorial representation, each application
pattern being indicative of a partitioning of an application logic
and a data together with styles of interaction among a plurality
of logical tiers - necessarily depends on a computer to
accomplish its purpose, which is to depict each business pattern
within the pictorial representation. Like DDR Holdings, the
problem is rooted in a computer environment, namely, computer
aided design.
App. Br. 19—20. We disagree, as we are unpersuaded that either
“developing an architecture (model) for an e-business solution” or
“establishing] a plurality of business patterns identified from the description
of the business solution” is related to computer-aided design. Indeed, we
discern that these concepts, by their own words, only concern business,
which we have no trouble classifying as abstract. And insofar as the
Appellants may be asserting that the manner in which these concepts are
implemented on a computer concerns improvements in computer-aided
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design, although that may be the case, we are unpersuaded that the claim
language is commensurate with such an assertion. For example,
independent claim 3 recites “computer readable code for establishing one or
more integration patterns that are identifiable within the pictorial
representation, each integration pattern being indicative of an integration of
two or more business patterns.” The language does not deviate much from
an articulation of the “establishing” step, and then the instruction to “apply
it” via computer-readable code. The Specification does not provide much
more illumination, as Figure 4A is a generic flowchart of the “establishing”
step, and corresponding paragraphs 34—37, although providing some
conceptual guidance, do not provide any indication that the claims concern
computer-aided design.
The Appellants assert further that the Board’s previous reversal of the
prior art rejections constitutes a definitive rebuttal of the Examiner’s
assertion that “such a step, embodied in the computer readable medium
is . . . well-understood, routine, and conventional.” App. Br. 19—20. The
Appellants’ assertions are misplaced, as the proper question is whether “the
representative method claim does no more than simply instruct the
practitioner to implement the abstract idea ... on a generic computer.”
Alice, 134 S. Ct. at 2351. We are unpersuaded that the Examiner erred in
asserting that it does not, for the same reasons as set forth in the previous
paragraph.
The Appellants assert finally that the Examiner erred in failing to
examine claim 4 on its own merits. App. Br. 20; Reply Br. 5—6. We agree
with and adopt the Examiner’s findings and rationales concerning this
assertion. Ans. 9.
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We sustain the rejection of claims 3—7.
DECISION
We AFFIRM the rejection of claims 3—7 under 35 U.S.C. § 101.
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).
AFFIRMED
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