Ex Parte AL-FILALI

Patent Trials and Appeals BoardJun 24, 2019

14272435 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/272,435 05/07/2014 78198 7590 Studebaker & Brackett PC 8255 Greensboro Drive Suite 300 Tysons, VA 22102 06/26/2019 FIRST NAMED INVENTOR Isam Y ahia AL-FILALI 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. 740742-000045 5589 EXAMINER W AESCO, JOSEPH M ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 06/26/2019 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): info@sbpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ISAM Y AHIA AL-FILALI Appeal2018-004062 Application 14/272,435 Technology Center 3600 Before CARL W. WHITEHEAD JR., HUNG H. BUI and DAVID J. CUTITTA II, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge CARL W. WHITEHEAD JR. Opinion Concurring filed by Administrative Patent Judge HUNG H. BUI WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant is appealing the final rejection of claims 1-19 under 35 U.S.C. Â§ 134(a). Appeal Brief 2. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. Appeal2018-004062 Application 14/272,435 Introduction The invention is directed to "systems and methods of performance management, communication, strategic planning, and strategy execution." Specification ,r 2. Illustrative Claim 1. A system for developing a performance management framework, compnsmg: a management system, an initiative interface system, a communication system; and a controller connected to the management system, the initiative interface system, and the communication system; wherein the management system is provided with a vision, at least one goal, and a strategy; using the vision, the at least one goal and the strategy, the initiative interface system is developed to include at least one objective, at least one measure, and at least one target for at least one of a plurality of perspectives, wherein the perspectives include at least one of an organization financial perspective, an organization customer perspective, an organization internal business processes perspective, and an organization learning and growth perspective, the at least one objective includes a causal relationship to the at least one measure, and the at least one measure includes a causal relationship to the at least one target; a causal link is established for at least one of the organization financial perspective, the organization customer perspective, the 2 Appeal2018-004062 Application 14/272,435 organization internal business processes perspective, and the organization learning and growth perspective so as to affect at least one strategic initiative outcome and at least one strategic initiative impact; and the at least one of the organization financial perspective, the organization customer perspective, the organization internal business processes perspective, the organization learning and growth perspective, at least one strategic initiative outcome, at least one strategic initiative impact and the causal link are provided to at least one of a workforce, a management team, and a leadership through the communication system. Rejections on Appeal Claims 1-19 stand rejected under 35 U.S.C. Â§ 101 because the claimed invention is directed to patent ineligible subject matter. Final Action 3---6. Claims 1-19 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Brennan (US Patent Application Publication 2008/0281651 Al; published November 13, 2008) and Hastings (US Patent Application Publication 2006/0085255 Al; published April 20, 2006). Final Action 6-12. ANALYSIS Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed December 12, 2017), the Reply Brief (filed March 5, 2018), the Final Action (mailed June 15, 2017) and the Answer (mailed January 29, 2018), for the respective details. 3 Appeal2018-004062 Application 14/272,435 35 US.C. Â§ 101 rejection The Examiner determines the claims are patent ineligible under 35 U.S.C. Â§ 101 because the claims "merely employ a combination of abstract ideas, i.e. collecting information, analyzing the information, and providing/displaying the analyzed information." Final Action 4; see Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (describing the two-step framework "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts."). After the mailing of the Answer and the filing of the Briefs in this case, the US PTO published revised guidance on the application ofÂ§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the Office first looks 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 Â§ 2106.05(a}-(c), (e}-(h) (9th ed. 2018). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office 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 Â§ 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. 4 Appeal2018-004062 Application 14/272,435 See Memorandum. We are not persuaded the Examiner's rejection is in error. Unless otherwise indicated, we adopt the Examiner's findings and conclusions as our own, and we add the following primarily for emphasis and clarification with respect to the Memorandum. Alice/Mayo-Step 1 (Abstract Idea) Step 2A-Prongs 1 and 2 identified in the Revised Guidance Step 2A, Prong One Appellant argues the pending claims are not directed to an abstract idea because "the Examiner oversimplified the claims by ignoring key limitations" and "failed to address the claim limitations as an ordered combination." Appeal Brief 7. Appellant's argument is not persuasive. Instead, we agree with the Examiner's determination that the claims are directed to an abstract idea. Final Action 3--4. The Specification discloses: The system also comprises developing at least one objective, at least one measure, and at least one target in the initiative interface system, for at least one of a plurality of perspectives, including an organization financial perspective, an organization customer perspective, an organization internal business processes perspective, and an organization learning and growth perspective, using the vision, the at least one goal, and the strategy. The system also comprises linking at least one of the organization financial perspective, the organization customer perspective, the organization internal business processes perspective, and the organization learning and growth perspective to at least one strategic initiative outcome and to at least one strategic initiative impact, and providing at least one of the organization financial perspective, the organization customer perspective, the organization internal business processes perspective, the organization learning and growth perspective, at 5 Appeal2018-004062 Application 14/272,435 least one strategic initiative outcome, at least one strategic initiative impact, and the link to at least one of a workforce, a management team, and a leadership through the communication system. Specification ,r 4. Claim 1 recites, "A system for developing a performance management framework," "the management system is provided with a vision, at least one goal, and a strategy," "perspectives include at least one of an organization financial perspective, an organization customer perspective, an organization internal business processes perspective, and an organization learning and growth perspective," "a causal link is established for at least one of the organization financial perspective, the organization customer perspective, the organization internal business processes perspective, and the organization learning and growth perspective so as to affect at least one strategic initiative outcome and at least one strategic initiative impact" and at least one of the organization financial perspective, the organization customer perspective, the organization internal business processes perspective, the organization learning and growth perspective, at least one strategic initiative outcome, at least one strategic initiative impact and the causal link are provided to at least one of a workforce, a management team, and a leadership through the communication system. These steps comprise fundamental economic principles or practices and/or commercial or legal interactions; thus, the claim recites the abstract idea of "certain methods of organizing human activity." Memorandum, Section I (Groupings of Abstract Ideas); see Specification ,r,r 29--33 ("Internal business processes perspective 24 enables organizations to identify the processes that are the most critical processes for achieving one or more customer and financial objectives."). Our reviewing court has found 6 Appeal2018-004062 Application 14/272,435 claims to be directed to abstract ideas when they recited similar subject matter. See 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 .... "); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract). Therefore, we conclude the claims recite an abstract idea pursuant to Step 2A, Prong One of the guidance. See Memorandum, Section III(A)(l) (Prong One: Evaluate Whether the Claim Recites a Judicial Exception). Step 2A, Prong Two (Integration into a Practical Application) Under Prong Two of the Revised Guidance, we must determine whether there are "additional elements that integrate the judicial exception into a practical application." See MPEP Â§ 2106.05(a)--(c), (e)--(h). Appellant argues, "the word 'preempt' ( or its derivatives or equivalents) cannot be found anywhere in the Examiner's relatively short analysis when the only reason to declare any claim patent ineligible is preemption." Appeal Brief 5. We agree the Supreme Court has described "the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption." Alice, 134 S. Ct. at 2354. However, characterizing pre-emption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. As our reviewing court has explained, "[t]he Supreme 7 Appeal2018-004062 Application 14/272,435 Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability" and "[ f]or this reason, questions on preemption are inherent in and resolved by theÂ§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ( citing Alice, 134 S. Ct. at 2354). And although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Moreover, "[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the [Alice/Mayo] framework ... , preemption concerns are fully addressed and made moot." Id.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (2015)("[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."). Appellant argues the Examiner "fails to acknowledge that the present claims do more than process data" wherein "independent claim 1 expressly requires the establishment of a causal link 'for at least one of the organization financial perspective the organization customer perspective, the organization internal business processes perspective, and the organization learning and growth perspective so as to affect at least one strategic initiative outcome and at least one strategic initiative impact."' Appeal Brief 5. Appellant also argues claim 10 recites a similar limitation that requires the development of "an initiative interface system to include at least a plurality of objectives, at least one measure, and at least one target for at least one of the plurality of key perspectives" and therefore "the present claims require the development of a realized physical/structural management system, 8 Appeal2018-004062 Application 14/272,435 which distinguishes the present claims from Electric Power Group." Appeal Brief 5; see Final Action 4 ("[T]he abstract limitations which merely employ a combination of abstract ideas, i.e. collecting information, analyzing the information, and providing/ displaying the analyzed information, which the courts have identified as non-statutory as in Electric Power Group."). Appellant's arguments are not persuasive because the claims merely recite a system for communicating within a management framework. See claims 1, 10. Claims 1 and 10 do not recite a computer system, do not recite supporting technology for improving a computer system; the claims merely require communicating within a management framework employing talking points such as vision, goals and strategies. See Specification ,r,r 29--33,for example; see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016) ("[W]e find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea ... the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool."). The claims do not recite an additional element or elements that reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field. See Alice, 573 U.S. at 222 ("In holding that the process was patent ineligible, we rejected the argument that 'implement[ing] a principle in some specific fashion' will 'automatically fal[l] within the patentable subject matter ofÂ§ 101. "' ( alterations in original) ( quoting Parker v. Flook, 437 U.S. 584, 593 (1978))). 9 Appeal2018-004062 Application 14/272,435 Accordingly, we determine the claim does not integrate the judicial exception into a practical application. See Memorandum, Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application). Step 2B Alice/Mayo-Step 2 (Inventive Concept) Step 2B identified in the Revised Guidance Next, we determine whether the claim includes additional elements that provide significantly more than the recited judicial exception, thereby providing an inventive concept. Alice, 573 U.S. at 217-18 ( quoting Mayo, 566 U.S. at 72-73). Appellant contends: In the present case, the "something more" is reflected by the integrated model approach to business organization. Paragraph [0048] of the present specification asserts that the integrated model "enables holistic and pervasive operational performance management across an entire business," and has a further advantage in that it leverages 'the capabilities, benefits, and advantages of both the balanced scorecard and the logic model approaches." Appeal Brief 7-8. We are not persuaded, as we find the claim does not include a specific limitation or a combination of elements that amounts to significantly more than the judicial exception itself. See Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept); see also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (Moore, J., concurring) ("the 'inventive concept' cannot be the abstract idea itself'); see Final Rejection 4-5; see also Specification ,r 48. 10 Appeal2018-004062 Application 14/272,435 Accordingly, we conclude claims 1-19 are directed to a fundamental economic practice, which is one of certain methods of organizing human activity identified in the Memorandum and thus an abstract idea, and the claims do not recite limitations that amount to significantly more than the abstract idea itself. We sustain the Examiner'sÂ§ 101 rejection of claims 1- 19. 35 US. C. Â§ 103 rejection Appellant contends the Examiner's rejection is dependent upon equating Brennan's Key Result Areas (KRAs) to the perspectives limitations recited in the claims. See Reply Brief 5, see also Final Rejection 8 (citing Brennan ,r 49). Appellant argues, "Key Result Areas (KRAs) are not any form of 'perspective.' To the contrary, KRAs are described as 'performance measurement categories.' See paragraphs [0005] and [0049] of [Brennan]." Reply Brief 5. Appellant contends that support for the perspective claim limitations are found in ,r,r 31---6, 7 0, 81, 81, and 85 of the Specification. Appeal Brief 2. In discussing perspectives, we note the Specification discloses, "[ fJinancial perspective 22 includes one or more financial objectives that represent the long term goal of the organization to provide superior returns based on an invested capital. Financial objectives typically relate to a measured profitability, an organization's liquidity, and a financial stability of the organization." Specification ,r 32; see Answer 4. The Examiner finds that "there is no special definition as to what a perspective is in the [Appellant's] Specification." Answer 4 (citing Specification i-f32). In discussing KRAs, Brennan discloses, "[a] report that 11 Appeal2018-004062 Application 14/272,435 provides a standardized measurement of performance across multiple strategic and operational perspectives of an organization" including "financial measures" and "actual (i.e., past) outcomes and future plans." Brennan ,r 49; see Final Action 8. We agree with the Examiner's finding that Brennan's discussion of forecasting future financial measures or plans teaches or suggests the claimed "perspective," which "includes one or more financial objectives." Specification' ,r 32. Accordingly, we sustain the Examiner's obviousness rejection of claims 1-19, not argued separately. See Appeal Brief 8-9. DECISION The Examiner's non-statutory subject matter rejection of claims 1-19 is affirmed. The Examiner's obviousness rejection of claims 1-19 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l ). See 37 C.F.R. Â§ 1.136(a)(l )(v). AFFIRMED 12 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ISAM Y AHIA AL-FILALI Appeal2018-004062 Application 14/272,435 Technology Center 3600 Before CARL W. WHITEHEAD JR., HUNG H. BUI and DAVID J. CUTITTA II, Administrative Patent Judges. BUI, Administrative Patent Judge, concurring. I concur in the affinnance of the Â§ 101 rejection of claims 1-19 in the result only. Preemption is not and should not be part of the Office's "Prong Two," Step 2A (Alice/Mayo Step 1) of the Revised Guidance as analyzed by the majority; instead, preemption acts as a backstop against the entire Alice/Mayo two-step framework. According to the Supreme Court, preemption serves as the primary policy reason for driving the three implicit exceptions under 35 U.S.C. Â§ 101: "laws of nature, natural phenomena, and abstract ideas." "Laws of nature, natural phenomena, and abstract ideas" are not patent-eligible subject matter because these implicit exceptions (1) are "the basic tools of scientific and technological work" and (2) "are part of the storehouse of knowledge of all men ... free to all men and reserved exclusively to none." Gottshalk v. Benson, 409 U.S. 63, 67 (1972). For Appeal2018-004062 Application 14/272,435 example, in Gottschalk v. Benson, the Supreme Court initially noted that Benson's method of converting binary-coded decimal (BCD) numerals into pure binary numerals (i.e., an "algorithm") would "wholly pre-empt the [BCD to binary] mathematical formula and in practical effect would be a patent on the algorithm itself' - a "basic tool[] of scientific and technological work." Gottschalk, 409 U.S. at 72. Some 40 years later in Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208,217 (2014), the Supreme Court reiterated the same concern, i.e., "the concern that drives this exclusionary principle as one of pre-emption." Alice, 134 S. Ct. at 2354. As was in Benson and now in Alice, the preemption concern requires a careful balance: while "[ m ]onopolization" of "[l]aws of nature, natural phenomena, and abstract ideas" - the "basic tools of scientific and technological work" [i.e., basic "building blocks of human ingenuity"] - would "tend to impede innovation more than it would tend to promote it," it is also true, as recognized by the Court, that "too broad an interpretation of this exclusionary principle could eviscerate patent law," as "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Alice, 134 S. Ct. at 2355 and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012). Because the Office has narrowly ( 1) interpreted, for purposes of clarity, predictability, and consistency, the exclusionary principle, i.e., the "abstract idea" exception to include three categories of abstract ideas: (i) mathematical concepts; (ii) mental processes; and (iii) certain methods of organizing human activity-fundamental economic principles (see Revised Guidance, 84 Fed. Reg. at 54--55); and (2) created Prong Two ("integration 2 Appeal2018-004062 Application 14/272,435 into a practical application"), Step 2A (Alice/Mayo Step 1) of the Revised Guidance to ensure that patent claims "integrate" those concepts into a practical application that would "pose no comparable risk of pre-emption," (Alice, 134 S. Ct. at 2354--55), arguments based on preemption are rarely persuasive at the Office. Nevertheless, if preemption arguments are presented, as Appellant has done in this case, these arguments need to be addressed separately, typically, at the end of the entire Alice two-step analysis, and not as part of the Office's "Prong Two," Step 2A (Alice/Mayo Step 1) of the Revised Guidance. Under the Office's "Prong Two," Step 2A (Alice/Mayo Step 1) of the Revised Guidance, "integration into a practical application" requires an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. See Revised Guidance, 84 Fed. Reg. at 54. For example, additional elements that are indicative of "integration into a practical application" include: 1) Improvements to the functioning of a computer, or to any other technology or technical field-see MPEP Â§ 2106.05(a); 2) Applying the judicial exception with, or by use of, a particular machine-see MPEP Â§ 2106.05(b ); 3) Effecting a transformation or reduction of a particular article to a different state or thing-see MPEP Â§ 2106.05(c); and 4) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception-see MPEP Â§ 2106.05(e). 3 Appeal2018-004062 Application 14/272,435 In contrast, additional elements that are not indicative of "integration into a practical application" include: 1) Adding the words "apply it" ( or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea-see MPEP Â§ 2106.05(Â±); 2) Adding insignificant extra-solution activity to the judicial exception-see MPEP Â§ 2106.05(g); and 3) Generally linking the use of the judicial exception to a particular technological environment or field of use-see MPEP Â§ 2106.05(h). See Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two"). However, I discern no additional elements ( or combination of elements) recited in Appellant's independent claims 1 and 10 (e.g., management system, initiative interface system, communication system, and controller) that integrate the judicial exceptions into a practical application. For example, Appellant's claimed "additional elements" (e.g., management system, initiative interface system, communication system, and controller) recited in claim 1 do not: (1) improve the functioning of a computer or other technology; (2) are not applied with any particular machine ( except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and ( 4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP Â§Â§ 2106.05(a}-(c), (e}-(h). 1 1 Separately, I note that the majority (1) has not addressed the Examiner's determination under Alice step 2; and (2) has incorrectly characterized that 4 Appeal2018-004062 Application 14/272,435 For these reasons, I determine Appellant's claims, as a whole, are directed to a patent-ineligible abstract idea that does not integrate into a practical application under Alice/Mayo step 1, or contains an "inventive concept" under Alice/Mayo step 2. "[ c ]laims 1 and 10 do not recite a computer system," when such a computer system is recited in the context of a management system, communication system, and controller. Nevertheless, these additional elements, i.e., generic components are insufficient to integrate the judicial exception into a practical application. 5