Ex Parte Charfi et al

Patent Trial and Appeal Board

Aug 23, 2017

13324369 (P.T.A.B. Aug. 23, 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.
13/324,369 12/13/2011 Anis Charfi 13913-0592001/2011P00245 5491
32864 7590 08/25/2017
FISH & RICHARDSON, P.C. (SAP)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANIS CHARFI, ALISTAIR BARROS,
UWE KYLAU, and HEIKO WITTEBORG
Appeal 2016-004195
Application 13/324,369
Technology Center 3600
Before HUNG H. BUI, JOSEPH P. LENTIVECH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’
Final Rejection of claims 1—19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify SAP SE as the real party in interest (App. Br. 4).
Appeal 2016-004195
Application 13/324,369
STATEMENT OF THE CASE
Appellants’ invention is directed to a model and system for service
provisioning lifecycle management for provisioning services in business
networks. Spec. 13. Claim 1, reproduced below with the disputed
limitations in italics, is representative of the claimed subject matter:
1. A computer-implemented method for lifecycle
management of services provisioned in a business network, the
method being executed using one or more processors and
comprising:
defining a service package associated with a service, the
service being accessible in the business network, and the
service package being a logical representation of the service
and comprising a plurality of artifacts, the service being
provided by a service provider;
storing the service package in computer-readable
memory;
defining a service lifecycle model associated with the
service, the service lifecycle model comprising a plurality of
states and a plurality of provisioning activities related to
provisioning the service into the business network, the service
lifecycle model enabling the service to be exposed from an
internal environment associated with the service provider into
the business network, the plurality of provisioning activities
including delivery and consumption of the service in the
business network subsequent to creation and testing of the
service and involving one or more provisioning partners of the
business network for interacting with the service after the
creation and testing of the service',
storing the service lifecycle model in the computer-
readable memory;
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determining that the service is in a first state, the first
state being associated with one or more user roles, each use role
being associated with one or more artifacts of the plurality of
artifacts;
determining that a first set of provisioning activities of
the plurality of provisioning activities has occurred, the first set
of provisioning activities comprising activities performed on
the one or more artifacts subsequent to the creation and testing
of the service;
in response to determining that the first set of
provisioning activities has occurred, transitioning the service
lifecycle model from the first state to a second state; and
updating the service lifecycle model in the computer
readable memory.
REJECTIONS & REFERENCES
(1) Claims 1—19 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
(2) Claims 1—5, 6—12, 15, and 16 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the combination of Westerinen et al. (US
7,065,740 B2; issued June 20, 2006) (“Westerinen”) and Du et al. (US
2011/0107302 Al; published May 5, 2011) (“Du”).
(3) Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Westerinen, Du, and Eidt et al.
(US 2010/0036751 Al; published Feb. 11, 2010) (“Eidt”).
(4) Claims 17—19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Westerinen, Du, and Mukherjee et al.
(US 5,317,729; issued May 31, 1994) (“Mukherjee”).
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ANALYSIS
35 U.S.C. § 101 Rejection
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under 35 U.S.C. § 101.
In the first step, “[w]e must first determine whether the claims at issue are
directed to a patent-ineligible concept.” Alice, 134 S. Ct. at 2355.
The Examiner concludes the claims are directed to the abstract idea of
“organizing human activity in a product servicing scheme.” Final Act. 2;
Ans. 15.
Appellants argue “[t]he Specification of the instant application is
devoid of any discussion of ‘organizing human activity’ as a product
servicing scheme.” App. Br. 12. Appellants argue the claims “necessitate[]
an underlying computing device” and, therefore, “cannot be correctly
characterized as‘organizing human activities.’” Reply Br. 1—2. Appellants
further argue “the final Office action does not substantiate this
characterization with any evidence,” App. Br. 12, and “the Examiner’s
Answer has ignored particular claim language and over-generalized the
subject matter of the claims.” Reply Br. 2.
We are not persuaded by Appellants’ arguments. Claim 1 recites a
method comprising (1) defining a service package, (2) storing the service
package, (3) defining a service lifecycle model associated with the service,
(4) storing the service lifecycle model, (5) determining that the service is in
a first state, (6) determining that a first set of provisioning activities of the
plurality of provisioning activities has occurred, (7) in response to
determining that the first set of provisioning activities has occurred,
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transitioning the service lifecycle model from the first state to a second state,
and (8) updating the service lifecycle model. Independent claims 15 and 16
recite similar limitations.
We agree with the Examiner that the claims are directed to organizing
human activity, namely, a product servicing scheme, which is an abstract
idea. See, e.g., Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350,
1353-54 (Fed. Cir. 2016) (characterizing collecting information, analyzing
information by steps people go through in their minds, or by mathematical
algorithms, and presenting the results of collecting and analyzing
information, without more, as matters within the realm of abstract ideas);
Content Extraction & Transmission v. Wells Fargo Bank, 776 F.3d 1343,
1347 (Fed. Cir. 2014) (finding claims for extracting data from documents,
recognizing specific information, and storing that information in memory in
automated teller machines (ATM) were directed to patent-ineligible abstract
ideas); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354-55 (Fed. Cir.
2014) (finding claims for guaranteeing a party’s performance of its online
transaction were directed to the abstract idea of “creating a contractual
relationship”); Accenture Global Services, Bmhll v. Guidewire Software,
Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (finding claims for generating
tasks to be performed in an insurance organization were directed to the
abstract idea of “generating tasks [based on] rules ... to be completed upon
the occurrence of an event” (alteration in original)).
Further, we are not persuaded by the Appellants’ argument that the
claims are not directed to an idea itself, but rather necessitate an underlying
computer device. Our reviewing court has found that if a method can be
performed by human thought, these processes remain unpatentable even
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when automated to reduce burden to the user. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson, [409
U.S. 63 (1972)].”).
In the second step of the Alice analysis, 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.” Alice, 134 S. Ct. at 2355 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78—79 (2012)).
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. (alteration in original) (quoting Mayo,
566 U.S. at 72-73).
Appellants argue “each of claims 1,15 and 16 include one or more
elements, or combination of elements, that are sufficient to ensure that
claims 1,15 and 16 amount to significantly more than an abstract idea
itself.” App. Br. 12. Appellants further argue “none of claims 1,15 and 16
attempts to preempt all uses of the any alleged abstract idea.” Id. Finally,
Appellants argue “the subject matter of claims 1,15 and 16 is rooted in
computer technology in order to overcome problems specifically arising in
the realm of lifecycle management for provisioning services in global
business networks.” App. Br. 12—13 (citing DDR Holdings, LLC v.
Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014)); see also Reply Br. 3^4.
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We are not persuaded by the Appellants’ arguments that the claims
represent “significantly more” than the abstract idea exception. We agree
with the Examiner’s findings that “[t]he additional elements or combination
of elements in the claims other than the abstract idea per se amounts to no
more than a mere instruction to implement the idea on a computer.” Final
Act. 7. Appellants do not direct us to, nor do we discern, any indication in
the record that any specialized computer hardware or other “inventive”
computer components are required. See, e.g., Spec. ]Hf 22—24, 89—92, Fig. 1,
2, 10. Rather than reciting additional elements that amount to “significantly
more” than the abstract idea, the pending claims, at best, add only a
“computer readable memory,” “processing devices,” and/or “computing
devices,” i.e., generic components, which do not satisfy the inventive
concept. See, e.g., DDR, 773 F.3d at 1256 (“[A]fter Alice, there can remain
no doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible. The bare fact that a computer
exists in the physical rather than purely conceptual realm ‘is beside the
point.’” (citation omitted)).
The claims are also distinguishable from those in DDR. In DDR, the
Federal Circuit found that the challenged claims were valid because they
“specif[ied] how interactions with the Internet are manipulated to yield a
desired result—a result that overrides the routine and conventional” aspects of
the technology. DDR, 773 F.3d at 1258—59. Here, we do not discern that
these claims “stand apart,” like those in DDR because they merely recite the
performance of some business practice known from the pre-Internet world,
along with the requirement to perform it on the Internet. See DDR, 773 F.3d
at 1257. In other words, Appellants have not demonstrated their claimed
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generic computer components are able in combination to perform functions
that are not merely generic, as the claims in DDR.
Appellants’ preemption argument is also unpersuasive of Examiner
error. SeeAriosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) (“Where 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.”); see
also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed.
Cir. 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.”).
The claims when viewed as whole are nothing more than performing
conventional processing functions that courts have routinely found
insignificant to transform an abstract idea into a patent-eligible invention.
As such, the claims amount 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 2360.
Accordingly, we are not persuaded the Examiner erred in finding
claims 1—19 directed to nonstatutory subject matter. Therefore, we sustain
the Examiner’s 35 U.S.C. § 101 rejection of claims 1—19.
35 U.S.C. § 103(a) Rejections
Issue: Did the Examiner err in finding the combination of Westerinen
and Du teaches or suggests “the service lifecycle model enabling the service
to be exposed from an internal environment associated with the service
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provider into the business network, the plurality of provisioning activities
including delivery and consumption of the service in the business network
subsequent to creation and testing of the service and involving one or more
provisioning partners of the business network for interacting with the service
after the creation and testing of the service,” as recited in independent claim
1 and commensurately recited in independent claims 15 and 16?
Appellants argue “the activities of Westerinen, including creating a
new image, upgrading an image or monitoring, management, and
maintenance tasks are different than, the plurality of provisioning activities
including delivery and consumption of the service in the business network
subsequent to creation and testing of the service.” App. Br. 15. According
to Appellants, “the cited portions of Westerinen are silent as to testing of the
service and involving one or more provisioning partners of the business
network for interacting with the service after the creation and testing of the
service.” App. Br. 15—16.
We are not persuaded by Appellants’ arguments and agree with the
Examiner’s findings. See Ans. 19—21. The Examiner relies on Westerinen
to teach or suggest the disputed limitation. Final Act. 9; Ans. 19-21.
Westerinen describes “an apparatus and method to automate the deployment,
provisioning, and management of a programmable device for the life cycle
states of the programmable device.” Westerinen, Abstract. Westerinen
further describes that “there can be any number of states in the lifecycle of a
function,” such as, for example, untested, tested, undeployed, deployed, and
provisioned states. Id. at col. 8,11. 1—12; see Figs. 3a and 3b. A controller
initiates a transition from one state to another in response to receiving a
triggering event, which may be, inter alia, manually entered by a user or
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automated. Id. at col. 8,11. 21—34. Although Westerinen describes many
examples of transitions from state to state (see, e.g., Figs. 4—8 and associated
description), as particularly pertinent to Appellants’ claims, Westerinen
describes transition “from the untested state 202 to tested state 204 occurs
when a new function 22 is being developed and tested[.]” Id. at col. 8,11.
38-40; see also col. 8,1. 54—col. 9,1. 25. Certain tasks are also performed,
such as “building any programmable devices required to carry out the
service and performance testing the programmable devices . . . upgrading an
image or creating a new image and testing the upgraded or new image.” Id.
at col. 8,11. 44—53. After the various tasks are performed (see col. 8,1. 25-
col. 9,1. 58), the controller may also initiate the transition to the deployed,
prepped, or provisioned states. Id. at col. 9,1. 59-11,1. 50. In addition,
Westerinen’s system “has an automation interface 26 that enables OEMs,
service providers, and other developers to develop modules that are used to
trigger the controller 24 to transition the function 22 from one lifecycle state
to another.” Id. at col. 4,11. 23—27.
Appellants have not sufficiently explained why Westerinen does not
teach or suggest the disputed limitations. For example, Appellants argue
“the activities of Westerinen, including creating a new image, upgrading an
image or monitoring, management, and maintenance tasks are different than,
the plurality of provisioning activities including delivery and consumption of
the service in the business network subsequent to creation and testing of the
service,” without any explanation as to why they are different. As described
supra, Westerinen teaches development and testing of a service, as well as
deployment and provisioning of that service subsequent to the development
and testing. See, e.g., id. at Fig. 3a, col. 8,1. 35—9,1. 61. Moreover,
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Appellants’ argument that “the cited portions of Westerinen are silent as to
testing of the service” is unpersuasive because Westerinen explicitly
discusses testing. E.g., id., Fig. 4, col. 8,11. 38-40 (“The triggering event to
transition from the untested state 202 to tested state 204 occurs when a new
function 22 is being developed and tested.”).
Appellants’ argument that “the cited portions of Westerinen are silent
as to . . . involving one or more provisioning partners of the business
network for interacting with the service after the creation and testing of the
service” is also not persuasive. Westerinen describes “an automation
interface 26 that enables OEMs, service providers, and other developers to
develop modules that are used to trigger the controller 24 to transition the
function 22 from one lifecycle state to another.” Id. at col. 4,11. 22—27.
“The modules may include, by way of example, policy and management
applications 28, controller scripts 30, and web and wireless user interfaces
32.” Id. at col. 4,11. 28—29; see also col. 4,11. 30-38. Such applications,
scripts and functionality are described throughout Westerinen. E.g., id. at
col. 10,1. 39-12,1. 53.
Appellants further argue “modifying Westerinen in view of Du would
render Westerinen unsatisfactory for its intended purpose.” App. Br. 17.
According to Appellants, “there is no suggestion nor motivation to make the
proposed modification” because “starting from Westerinen as the primary
reference, one would not have looked to Du for improvement because Du
provides that authorized users execute transitions between states (e.g.,
administrators define and create the service and transfer it to designers),
which is contrary to Westerinen’s intended purposes.” Id. at 16.
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We are not persuaded. Although Westerinen describes an automated
process, a user may manually enter the triggering event received by the
controller to initiate a transition from one state to another. Westerinen,
col. 8,11. 21—34. In other words, the user will still determine when a
transition from one state to another state should occur, even though the
transition itself is automated by the controller. Moreover, the Examiner
relies on Du to teach “the first state being associated with one or more user
roles, each use[r] role being associated with one or more artifacts of the
plurality of artifacts.” Ans. 21 (citing Du ^fl[ 52—59). We agree with the
Examiner that modifying Westerinen with Du would “yield a predictable
result of associating users with various stages of a service lifecycle.” Ans.
21.
Accordingly, we are not persuaded the Examiner erred in rejecting
independent claims 1,15, and 16 over the combination of Westerinen and
Du, and we, therefore, sustain those rejections. For the same reasons, we
sustain the Examiner’s rejections of dependent claims 2—14 and 17—19,
which were not separately argued. See App. Br. 17—18.
DECISION
The Examiner’s 35 U.S.C. § 101 rejection of claims 1—19 is affirmed.
The Examiner’s 35 U.S.C. § 103(a) 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. § 1.136(a)(l)(iv).
AFFIRMED
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