Ex Parte Boston et al

Patent Trial and Appeal Board

May 15, 2018

13608021 (P.T.A.B. May. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/608,021 09/10/2012
48062 7590 05/17/2018
RYAN, MASON & LEWIS, LLP
2425 Post Road
Suite 204
Southport, CT 06890
FIRST NAMED INVENTOR
Jeffrey S. Boston
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.
YOR920120400US 1 2207
EXAMINER
HATCHER, DEIRDRE D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
05/17/2018 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):
ctoffice@rml-law.com
kmm@rml-law.com
mjc@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREYS. BOSTON, TINA GROVES, JENNIFER LAI,
JIE LU, SHIMEI PAN, MERCAN TOPKARA, ZHEN WEN, and
STEPEHN P. WOOD
Appeal2017-001310
Application 13/608,021
Technology Center 3600
Before JEAN R. HOMERE, DAVID J. CUTITT A II, and
MICHAEL J. ENGLE, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3 and 7-10, which constitute all claims pending in this
application. 1 App. Br. 1. Claims 4--6 and 11 have been canceled. Claims
App'x. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as International Business
Machines Corp. App. Br. 1.
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Application 13/608,021
Introduction
According to Appellants, the claimed subject matter relates to a
method and system for estimating and ranking the value of digital activities
in digital footprints of business activities generated through the use of
collaboration tools and social software ( e.g. Lotus Connections) to create
content, organize meetings, and share documents so as to understand how
business decisions are made, whether they violate any regulations, and
whether they produce a risky business outcome. Spec. 1 :5-26, fig. 2. In
particular, information objects generated during the creation of outcome
based business processes are recorded as nodes in a composite graph
depicting the proximity between nodes or the strength between linked nodes
based on the similarity in content of corresponding objects. Id. at 1:26-2:7.
In response to receiving a user's query, a processor retrieves, ranks, and
presents information objects to the user so as to showcase social network
distances between the user and other similarly situated users involved in the
given business process. Id. at 2:8-23.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A method for ranking information objects in one or more
outcome-based business processes, comprising:
recording information objects generated during a creation of said
outcome-based business processes in a record in a memory, wherein one or
more of said business processes comprise an outcome attribute, and wherein
said information objects comprise one or more in-process information
objects and one or more non-process information objects, wherein each in-
process information object comprises an information object that is stored as
part of a business process and each non-process information object
comprises an information object that is generated during an activity of social
network software that is not explicitly associated to the business process;
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generating a composite graph of said information objects and business
processes that identifies one or more links between the one or more non-
process information objects and the one or more in-process information
objects, wherein each node in said graph corresponds to one of said
information objects or one of said business processes, and wherein said
generating the composite graph is carried out by a hardware processor
communicatively linked to the memory and comprises:
determining a strength value associated with each of the one or more
links between the one or more non-process information objects and the one
or more in-process information objects via executing a function
incorporating a content similarity value and a social network distance value,
wherein:
said content similarity value is based on (i) a similarity of
content of said information objects and (ii) a similarity of timing of
said information objects occurring within one or more activity
patterns associated with said business processes, and
said social network distance value comprises a distance
between a given user who issues a query and multiple users associated
with said information objects, wherein said social network distance
value is weighted based on usage patterns of the multiple users in
connection with said information objects, and wherein:
said in-process information object node connects to a
corresponding business process node, and
two of said business process nodes have a link if they are
indicated as related in the business process information system; and
ranking said information objects in response to the query (q) issued by
the given user based on a ranking function, wherein said query comprises
one or more keywords, and wherein said ranking function comprises
rank(q,n) = relevance(q,n) + value(n), wherein relevance(q,n) =
sim(q.keyword, n.info) + Social_Network_Distance(u, n.user), wherein n
represents a given one of said business processes, wherein relevance(q,n)
comprises the relevance of activities of the given business process ( n) to the
query ( q ), wherein value(n) comprises an outcome value of the given
business process ( n) that represents an amount of risk associated with the
given business process (n), wherein sim(q.keyword, n.info) comprises a level
of similarity (sim) between one or more keywords of the query (q.keyword)
and information pertaining to the given business process (n.info ), and
wherein Social_Network_Distance(u, n.user) comprises a value representing
a social network distance between the user ( u) who issues the query and one
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or more users involved in the given business process (n.user), wherein said
ranking is carried out by the hardware processor communicatively linked to
memory.
Rejection on Appeal
Claims 1-3 and 7-10 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2-8.
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 4--11, and the Reply Brief, pages 2-9. 2
Appellants argue the Examiner erred in concluding that claims 1-3
and 7-10 are directed to the abstract idea of "recording information
generated during a business process, generating a composite graph of the
business process, and ranking content based on a query request." App.
Br. 4--5. Instead, Appellants argue that the Examiner has not considered the
specific claim limitations as a whole, and thereby fails to recognize that the
claims include a "specific improvement to the way computers operate." Id.
at 5-7. Further, Appellants argue that what the Examiner calls "elements"
of the claims are not the specific claim limitations, which amount to
significantly more than the abstract idea. Id. at 8-10. According to
Appellants, because the Examiner has not been able to identify prior art to
2 Rather than reiterate the arguments of Appellants and the Examiner's
findings/conclusions, we refer to the Appeal Brief (filed May 25, 2016)
("App. Br."), the Reply Brief (filed October 28, 2016) ("Reply Br."), the
Final Action from which the appeal was taken (mailed Jan. 5, 2016) ("Final
Act."), and the Answer (mailed September 8, 2016) ("Ans.") for the
respective details. We have considered in this Decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
Appellants could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
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reject the claims, the Examiner's determination that the claims are directed
to what is well-understood, routine, and conventional is not supported by the
relevant case law. Id. at 9--10.
These arguments are not persuasive. The U.S. Supreme Court
provides a two-step test for determining whether a claim is directed to
patent-eligible subject matter under 35 U.S.C. § 101. Alice Corp. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2355 (2014). In the first step, we determine
whether the claims are directed to one or more judicial exceptions (i.e., laws
of nature, natural phenomenon, and abstract ideas) to the four statutory
categories of invention (i.e., process, machine, manufacture, and
composition of matter). Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). In the second step, we
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
132 S. Ct. at 1297-98). In other words, the second step is to "search for an
'inventive concept'-i.e., an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Id. (quoting Mayo, 132
S. Ct. at 1294).
At the outset, we note that claim 1 is directed to a computer
implemented method for ranking information objects in outcome-based
business processes, which we agree is an abstract idea. See Ans. 13.
Although Appellants argue the rejection is premised upon the Examiner's
"vaguely worded 'elements' of the claims" (App. Br. 8), as opposed to the
specific limitations thereof, Appellants have not explained how the so called
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specific claim limitations as a whole "include 'substantially more"' (App.
Br. 8) than the abstract idea, thereby amounting to patent eligible subject
matter. More specifically, we agree with the Examiner that the claim is
directed to "[b ]usiness process modelling and mapping [that] can be
considered a method of organizing human activity." Final Act. 3. We also
agree with the Examiner that the claimed business process is performed on a
generic computer and thus recites "nothing more than requiring a generic
computer system (e.g. a generic processor) to merely carry out the abstract
idea itself." Final Act. 4. Although a computer is employed to record the
information objects, to generate a composite graph of the objects and
business processes including the links therebetween, and to subsequently
rank the information objects in response to a user query, the recited
functions are tantamount to the abstract concepts of collecting, analyzing,
and generating/displaying information. See Elec. Power Grp. LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016); see also Content Extraction &
Transmission LLC v. Wells Fargo Bank Nat'! Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (characterizing collecting information, analyzing
information by steps people go through in their minds, or by mathematical
algorithms, and presenting the results of the collecting and analyzing
inforrnation, without more, as matters within the realm of abstract ideas). In
other words, the analysis of an information object inventory to determine
similarities and patterns in a given business process involves typical and
conventional functions that take place during the inventory management of
resources in a computing system. Accordingly, we agree with the Examiner
that the claims are directed to the abstract idea of "recording information
generated during a business process, generating a composite graph of the
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business process, and ranking content based on a query request," and not to
any improvements to the operation of the computer itself. Ans. 11-12; cf
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1338 (Fed. Cir. 2016)
( concluding that claims directed to a self-referential table for a computer
database were patent eligible because the claims were directed to an
improvement in the functioning of a computer).
We likewise agree with the Examiner that because the recited
functions are conventional and well-understood and do not go beyond those
of a general purpose computer for merely generating a graph and ranking
objects, they do not add any meaningful limitations beyond generally linking
the abstract idea to the particular technological environment. Ans. 13-14.
As correctly noted by the Examiner, the specific steps recited in the claims
( e.g., recording in-process information objects stored as part of a business
process; generating a graph including links between non-process and in-
process information objects; displaying a business process; executing a
function incorporating a similarity value; determining the strength values)
do not impart improvements to another technology or technical field or
improvements to the functioning of a computer itself, nor do the limitations
effect a transformation or reduction of a particular article to a different state
or thing. Final Act. 6-8. Further, we agree with the Examiner that the so-
called specific claim limitations are nothing other than what is well-
understood, routine and conventional in the field, and do not add
unconventional steps that confine the claim to a particular useful application.
Id. Additionally, we note that although the second step in the Alice/Mayo
analysis includes a search for an inventive concept, the analysis is not an
evaluation of novelty or nonobviousness, but rather, a search for "an element
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or combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at
1294). A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304. Furthermore,
"under the Mayol Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility." Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376
(Fed. Cir. 2016). The Supreme Court emphasizes: "[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." Diamond v. Diehr, 450
U.S. 175, 188-89 (1981) (emphasis added). Our reviewing court further
guides 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").
FinaUy, Appellants are reminded that "relying on a computer to
perforrn routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359 ("use of a
computer to create electronic records, track multiple transactions, and issue
simultaneous instructions" is not an inventive concept)). \Vhen viewed as a
whole, clairn 1 recites nothing more than a generic computer performing
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conventional processing functions that courts have routinely found
insufficient to transform an abstract idea into a patent-eligible invention. As
such, claim 1 amounts to nothing significantly more than an instruction to
implement the abstract idea on a generic computer - which is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134 S.
Ct. at 2358-2360. Id. Accordingly, we are not persuaded of error in the
Examiner's conclusion that claims 1-3 and 7-10 are directed to patent
ineligible subject matter.
DECISION
For the above reasons, we affirm the Examiner's patent ineligibility
rejection of claims 1-3 and 7-10.
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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