Ex Parte Barros

Patent Trial and Appeal Board

Oct 11, 2018

12788084 (P.T.A.B. Oct. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/788,084 05/26/2010
64280 7590 10/15/2018
Mintz Levin/SAP
Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.
One Financial Center
Boston, MA 02111
Alistair P. Barros
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.
54874-400F01US/2010P00018 5882
EXAMINER
GARCIA-GUERRA, DARLENE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
10/15/2018 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ALISTAIRP. BARROS
Appeal2017-004816
Application 12/788,084
Technology Center 3600
Before JEAN R. HOMERE, AMBER L. HAGY, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellant identifies the real party in interest as SAP SE. (App. Br. 1.)
Appeal2017-004816
Application 12/788,084
STATEMENT OF THE CASE
Introduction
Appellant's disclosure relates to "brokered service delivery." (Spec.
,r 1.) By way of background, the Specification states that "[t]he brokering of
goods and services is a time-honored technique of facilitating commerce."
(Id. ,r 2.) In particular, the Specification describes brokering as a broker
taking on the responsibility from a manufacturer or provider of services to
locate purchasers and to conduct and consummate sales, in exchange for
receiving "a share of the purchase price or some other fee or payment." (Id.)
The Specification further states that "these general concepts" have been
adopted "[i]n the computer, network, and software realm(s) ... for the
delivery of goods and services, e.g., over the Internet." (Id. ,r 3.) The
Specification notes that "[i]n theory, the intersection of brokering and
software services ... is conceptually straight-forward." (Id. ,r 5.) The
Specification states, however, that "many services are conventionally
difficult or impossible to deliver as part of a brokered service delivery
scenario." (Id. ,r 6.) Purportedly to address that difficulty, the Specification
describes a system "for providing service delivery management for brokered
service delivery" that includes "an explicit, dedicated platform for service
delivery management which enables complex service delivery models to
support the run-time brokerage of groups of long-running, multi-session
services, some or all of which may be hosted by different, otherwise-
incompatible service providers." (Id. ,r 39.)
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Application 12/788,084
Exemplary Claim
Claims 1, 4, 10, and 16 are independent. Claim 1, reproduced below,
is exemplary of the claimed subject matter:
1. A computer system including instructions stored
on a nontransitory computer-readable storage medium, the
computer system comprising:
a service regulator configured to cause at least one
processor to transform a service interface of at least one service
of at least one service provider into service states and
transitions between the service states to create a coordination
model, the service states corresponding to distinct forms to be
exchange with a user as part of an execution of the at least one
service, the transitions representing action requests and
responses on the at least one service;
a broker consumer gateway configured to cause the at
least one processor to interface with a service consumer of a
computing device consuming the at least one service of the at
least one service provider based on the coordination model,
each of the service states represented as at least one distinct
form that is requested, filled-in, and submitted in association
with the user via the service consumer of the computing device;
and
a service delivery manager configured to cause the at
least one processor to mediate delivery of each of the service
states modeled with the coordination model of the at least one
service to the service consumer of the computing device via the
broker consumer gateway including invoking the at least one
distinct form for each of the service states during execution of
the at least one service, the service delivery manager including:
a consumer session manager configured to cause
the at least one processor to create at least one consumer
session in association with the user during which to
execute at least a portion of the at least one service,
including transitioning through one or more of the
service states of the at least one service according to the
coordination model, a consumer instance manager
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configured to cause the at least one processor to create at
least one instance of the at least one service within the at
least one consumer session, the at least one instance
being associated with the at least one service including
representing each of the service states with the at least
one distinct form that is requested, filled-in, and
submitted in association with the user via the service
consumer of the computing device, and
a service coordinator configured to cause the at
least one processor to coordinate and track each of the
service states during delivery of the at least one service
from the at least one service provider within the at least
one consumer session and the at least one instance of the
at least one service, the service coordinator configured to
cause the at least one processor to track and advance a
current state of each executing service to a next service
state using the coordination model characterizing the at
least one service in which each of the distinct forms are
associated with corresponding ones of the service states
of the at least one service and in which the transitions
between each of the service states are executed based on
the at least one distinct form exchanged with the service
consumer during each service state.
REJECTI0NS 2
1. Claims 1, 4, 10, 14, 16, and 20 stand provisionally rejected on
the ground of nonstatutory obviousness-type double patenting over claims 1,
5, 6, 10, and 18 of copending Application No. 12/788,087 ("the '087
Application") and further in view ofD' Angelo, U.S. Patent No. 7,917,124
B2, issued Mar. 29, 2011 ("D' Angelo") and Kumaran, Pub. No. US
2009/0024514 Al, published Jan. 22, 2009 ("Kumaran"). (Final Act.
10-21.)
2 Claims 1-20 were rejected also under 35 U.S.C. § 103 in the Final Action
(Final Act. 23---62), but the Examiner withdraws these rejections in the
Answer. (Ans. 16.)
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Application 12/788,084
2. Claims 1-20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter (abstract idea). (Final Act. 3-7,
21-23.)
ANALYSIS
A. Provisional Rejection for Obviousness-Type Double Patenting
The Examiner provisionally rejects claims 1, 4, 10, 14, 16, and 20 on
the ground of nonstatutory obviousness-type double patenting over claims 1,
5, 6, 10, and 18 of the '087 Application and further in view ofD'Angelo and
Kumaran. (Final Act. 10-21.)
As Appellant points out (Reply Br. 12), the '087 Application has since
been abandoned (as of March 11, 2016). Accordingly, the Examiner's
provisional obviousness-type double patenting rejection over the '087
application in combination with D 'Angelo and Kumaran is now moot.
B. § 101 Rejection
The Examiner rejects the claims as being directed to patent-ineligible
subject matter under 35 U.S.C. § 101. 3 The Examiner determines the claims
are directed to the abstract idea of "facilitating service delivery." (Ans. 15.)
The Examiner further finds the claims do not amount to significantly more
than the abstract idea because "Appellant has not shown that the computer
technology utilized in the claims performs anything more than court-
recognized examples of well-understood, routine, and conventional
3 The Examiner rejects claims 2-20 on the "same rationale" as claim 1.
(Final Act. 23.) Appellant generally argues the rejection of all claims
collectively with regard to claim 1 (see App. Br. 9-17), while presenting
additional arguments with regard to claims 4, 14, and 20 (id. at 17-19). We
select claim 1 as representative pursuant to our authority under 37 C.F.R.
§ 4I.37(c)(l)(iv).
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functions, including 'receiving, processing, storing and transmitting data."'
(Id. at 23 ( emphasis added).)
Appellant argues the Examiner erred because, inter alia, the claimed
solution "employs novel and inventive computer functions for delivering
software services via a broker, which serves as a central point between
specific software services running on remote, backend systems of the service
provider( s) and consumer computing devices executing an instance of the
software service(s) within a browser application." (App. Br. 10.) In
particular, Appellant argues claim 1
specif-1ies] in very specific technical terms how the performance
of the system itself is improved to yield a desired result -
allowing multi-step, long-running software services to be
deployed, configured, and executed via a broker through the use
of the coordination model, e.g., sending forms to the consuming
applications, receiving submitted forms containing actions for
execution, and adapting and invoking the back-end service
applications. The above-identified limitations of claim 1 are
meaningful limitations that add more than generally linking the
use of the abstract idea to a generic computer, because they
solve a network-centric problem with a claimed solution that is
necessarily rooted in computer technology, similar to the
additional elements in DDR Holdings.
(App. Br. 16 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014).)
It is the Examiner's burden to show-with supporting facts-that the
recited limitations are well-understood, routine, and conventional where, as
here, the Examiner relies on such a basis for the ineligibility rejection. See
Berkheimerv. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination"). The prima facie case is
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a procedural tool of patent examination, allocating the respective burdens
between the Examiner and an applicant. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). First, the Examiner bears the initial burden of presenting a
prima facie case ofunpatentability. Id. (citing In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984)). If the Examiner meets that burden, the burden
then shifts to the applicant to rebut the prima facie case with evidence or
argument. Oetiker, 977 F.2d at 1445. Then, patentability is determined on
the totality of the record by a preponderance of evidence with due
consideration of persuasiveness of argument. Id.; accord MANUAL OF
PA TENT EXAMINING PROCEDURE (MPEP) § 2106.07 (9th ed. Rev.
08.2017, Jan. 2018) (noting that the initial burden of establishing a prima
facie case of ineligibility under § 101 is on the Examiner to explain clearly
and specifically why claims are ineligible, so that the applicant has sufficient
notice and can respond effectively).
Under the new examination procedure published online by the
USPTO on April 19, 2018, entitled "Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer
Memorandum"), there is a new fact finding requirement for Examiners, as
applicable to rejections under § 101. Specifically, Examiners must now
provide specific types of evidence to support a finding that claim elements
( or combinations of elements) are well-understood, routine, and
conventional.
Here, the Examiner's determinations that the claims are directed to an
abstract idea and do not amount to significantly more than the abstract idea
are predicated, at least in part, on unsupported findings that
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Appellant's claims are devoid of any discernible change,
transformation, or improvement to any process, technology, or
computer, but instead are directed to creating a coordination
model at least in part by using service states and transitions to
identify brokered service delivery scenarios, accompanied by
general-purpose or at least conventional computing elements
that merely tie the idea to a particular operating environment,
along with high-level descriptive claim language that describes
well-known, routine, and conventional activities in the art.
(Ans. 24 ( emphasis added).) The Examiner also finds, without citing
evidentiary support, that "creating a coordination model, mediat[ing]
delivery of service states, creat[ing] a consumer session, coordinat[ing] and
track[ing] each service state merely involve well-understood, routine, and
conventional activities in the art, and even when implemented by a
computer, [and] involve nothing more than automating mental/manual and
conventional activities in the art." (Id. at 27.)
We determine that the Examiner did not satisfy the initial burden of
establishing a prima facie case of ineligibility under § 101 by providing the
requisite factual support for limitations that are said to be well-understood,
routine, and conventional; consequently, the burden never shifted to
Appellant to rebut that case. We are, therefore, constrained on this record to
reverse the Examiner's 35 U.S.C. § 101 rejection of claim 1 as well as
claims 2-20 rejected on the same basis and argued collectively by Appellant.
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DECISION
The Examiner's obviousness-type double patenting rejection of claims
1, 4, 10, 14, 16, and 20 is determined to be moot.
The Examiner's 35 U.S.C. § 101 rejection of claims 1-20 is reversed.
REVERSED
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