Ex Parte CURTIS et al

Patent Trial and Appeal Board

May 31, 2018

13777261 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/777,261 02/26/2013
51444 7590 06/04/2018
COOPER LEGAL GROUP/ ORACLE
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131
FIRST NAMED INVENTOR
Wesley CURTIS
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.
ORA130048 (0-285) 9542
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
MUthoff@CooperLegalGroup.com
DDay@CooperLegalGroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WESLEY CURTIS and KAREL P. CRIGAN
Appeal2017-001246 1
Application 13/777 ,261
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-16 and 18-20.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to "managing data maintenance using
a business object lifecycle." Spec. ,r 15.
Claim 15 is illustrative:
15. A computer-implemented method that is performed by
a computer system, the method comprising:
1 The Appellants identify Oracle Int'l Corp. as the real party in interest.
Appeal Br. 2.
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Application 13/777 ,261
defining, by at least the processor, a lifecycle for a
customer tax role record having a plurality of lifecycle states and
assigning an initial active state from the plurality of lifecycle
states to the customer tax role record;
associating, by at least the processor, processing
algorithms with the customer tax role record that are triggered by
predefined events including an expiration date for a tax
obligation and a tax obligation period;
monitoring a plurality of electronic data structures that
comprise a plurality of customer tax role records with an active
state, and;
in response to detecting one or more of the predefined
events, executing, by at least the processor, a respective one of
the processing algorithms to modify respective records of the
plurality of customer tax role records by (i) generating a new tax
obligation for a respective record by executing at least one of the
processing algorithms associated the respective record;
(ii) changing the state of the respective record to an
expired state such that the new tax obligation is not generated
when the expiration date has expired.
The Examiner rejected claims 1-16 and 18-20 under 35 U.S.C. § 101
as directed to ineligible subject matter in the form of abstract ideas.
We AFFIRM.
ANALYSIS
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. CLS Bank Int '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-
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step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77-78 (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. Kappas, 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
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.").
The following method is then used to determine whether what the
claim is "directed to" is an abstract idea:
[T]he 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. See, e.g., Elec. Power Grp. [v. Alstom S.A.], 830 F.3d
[1350,] 1353-54 [(Fed. Cir. 2016)]. That is the classic common
law methodology for creating law when a single governing
definitional context is not available. See generally Karl N.
Llewellyn, The Common Law Tradition: Deciding Appeals
(1960). This more flexible approach is also the approach
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employed by the Supreme Court. See Alice, 134 S. Ct. at 2355-
57. We shall follow that approach here.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016) (footnote omitted).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 182 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 67.
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 Appellants argue independent claims 1, 6, 8, and 15 together as a
group. Appeal Br. 18. We select independent claim 15 as representative.
See 37 C.F.R. § 4I.37(c)(l)(iv).
We are not persuaded by the Appellants' argument of error on the part
of the Examiner, because, according to the Appellants, "the Office Action
has simply provided a conclusion without any reasoning." Appeal Br. 11;
see also Reply Br. 4 ("The only statements made by the Examiner were
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subjective opinions that the present invention is an abstract idea using a
generic computer.").
Instead, the Examiner found claim 15 is "directed to the abstract idea
of comparing new and stored information and using rules to identify options
which is an idea of itself identified by the court (SmartGene ). The abstract
idea is recited in claim 1 in the storing, defining, associating, monitoring,
generating and changing steps." Final Act. 5. The Examiner has, thus,
followed the direction from Amdocs and found claim 15 is similar to a claim
found to be directed to an abstract idea by our reviewing court.
Furthermore, substantively, we agree with the Examiner. Claim 15
recites defining data, associating the data with algorithms, monitoring data
states, then conditionally, upon an event which may occur, adding data and
changing a data state. The method steps of claim 15, other than the use of a
"processor" and "electronic data," fall inside the scope of "comparing new
and stored information and using rules to identify options," because defining
data creates new data, associating data with algorithms involves comparing
information and identifying options to use against the data, monitoring data
states involves comparing information, and adding data and changing data
states involves comparing data and using rules to identify an option to alter
data and states. We further find the Examiner's identification of
SmartGene2 as an analogous case to be reasonable, and, in any case, the
Appellants have not advanced arguments specifically directed to the
Examiner's finding in that regard.
2 SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App'x
950 (Fed. Cir. 2014).
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We also find claim 15 similar to the claims found ineligible in
Accenture Global Services, GmbH v. Guidewire Software, Inc., 728 F.3d
1336 (Fed. Cir. 2013). In the Accenture patent, the system of claim 1 recites
a database for storing transaction information, a database for storing rules, a
"client component" that enables access by a user, and a "server component
including an event processor, a task engine[,] and a task assistant,"
wherein the event processor is triggered by application events
associated with a change in the information, and sends an event
trigger to the task engine; wherein in response to the event
trigger, the task engine identifies rules in the task library database
associated with the event and applies the information to the
identified rules to determine the tasks to be completed, and
populates on a task assistant the determined tasks to be
completed, wherein the task assistant transmits the determined
tasks to the client component.
See US 7,013,284 B2, iss. Mar. 14, 2006.
We find that Accenture 's generating of rule-based tasks is similar to
the execution of algorithms upon an event of the Appellants' claim 15. In
Accenture the information has to do with insurance transactions, and in the
present claims the information has to do with "customer tax role records"
and other tax-related information (see Spec. ,r 16), but we do not discern that
the nature of the information's content appreciably alters the otherwise
abstract process of using it to determine steps to take next. In addition, the
Appellants describe the broad reach of their invention generally, in that "it is
to be understood that the embodiments are applicable and provide benefits in
any logic or system wherein data of any type is maintained and wherein
management of the data maintenance is performed." Id. ,r 15.
We, thus, agree with the Examiner that claim 15 is directed to an
abstract idea, and proceed to the second step of the Mayo/Alice analysis and
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look to the claims, as a whole and as an ordered combination of steps, to see
if there is an "inventive concept" that transforms the abstract idea into
patent-eligible subject matter. To that end, the Examiner does not find an
inventive concept, and we are unpersuaded of Examiner error in that regard.
Other than the recited "defining, by at least the processor,"
"executing, by at least the processor," and "electronic data structures," the
claim presents no other language that falls outside the abstract idea identified
above. Without these elements, the process of creating, storing, monitoring,
and altering data can be done by a human mind with the use of pen and
paper, which further describes an abstract idea. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (noting, in the
context of the c 1ai ms in that case, that "a method that can be performed by
human thought alone is merelv an abstract idea and is not patent-eligible <.., .,
under§ 101") .. Additionally, mental processes remain unpatentable even
,vhen automated to reduce the burden on the user of what once could have
been done with pen and paper. Id. at 1375 ("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)].").
The Specification describes that the processor is part of a general-
purpose computer, in that the "computer system 500 comprises at least a
processor 502 and a non-transitory memory 504 coupled with the processor
502 via a bus 508. The memory 502 is configured to store one or more
customer registration records 512 for one or more customers." Spec. ,r 39.
The Specification does not define or otherwise describe the claimed
"processor," except to say the "methods described herein are computer-
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implemented methods that are performed by at least a processor of a
computing device." Id. ,r 52.
Appellants argue:
Generic computers do not define lifecycle states for data
records as recited in the claim. Generic computers do not
associate processing algorithms with data records as recited in
the claim. Generic computers do not continuously monitor a
plurality of electronic data structures to identify when one or
more of the predefined events occur.
Reply Br. 5.
The Appellants' argument is unpersuasive, because the steps of the
method, to create and store data, monitor data, associate algorithms with
data, and edit data upon an event, are all general purpose computing steps
any general purpose computer is capable of performing, by reading, writing,
and comparing data, and executing loops to wait for, and react to, events. In
addition, although an algorithm programmed into a general-purpose
computer may transform it into a patent-eligible special-purpose computer,
and claim 15 does expressly recite the term "algorithm," no actual, specific
algorithm is described or claimed, except generically. See Spec. ,r,r 31, 37
( cited at Appeal Br. 8-9). Therefore, we do not discern that the claim recites
more than the use of a general-purpose computer to perform an abstract-idea
method.
This also applies to the remainder of the Appellants' arguments that,
for example, the claimed method is "necessarily rooted in computer
technology to overcome a problem specifically arising in electronic data
maintenance of records." Appeal Br. 12; see also id. at 13-16.
We are not persuaded by the Appellants' argument that "the claimed
functions transform the computer into a particular machine." Appeal Br. 17.
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Because the claimed method appears to involve only generic computing
functions performed by general-purpose computers, as set forth above, we
are unpersuaded that the claimed "processor" is a "particular machine."
We also are not persuaded by the Appellants' argument that the claim
is patent-eligible subject matter because it recites "a transformation of state
of the data structures and a transformation of the storage device that stores
the records." Reply Br. 5---6; see also Appeal Br. 18 ("generating of a new
tax obligation specifically transforms the occurrence of a predefined event
into a new tax obligation"). The transformation of a state, such as from a
"O" to a "1," does not transform a physical article, and changing what data
is, or what data a storage device stores, only alters the abstract data
representation itself, which does not significantly alter the storage device
itself. In other words, if you change data, you still have data, so no
transformation has taken place in the change. Moreover, as noted by the
Appellants, the only "state" purportedly changed are tax obligations, which
is an intangible legal concept.
The Appellants also argue in the Reply Brief, for the first time, that
the claim "does not preempt all ways of processing data records on a
computer," and is similar to claims in patents issued just before the Brief
was filed. Reply Br. 6-10.
We are unpersuaded by the new pre-emption argument, because,
"[ w ]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
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
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may be limited to price optimization in the e-commerce setting do not make
them any less abstract."). And, "[ 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, 788 F.3d at 1379.
Finally, we are unpersuaded by the Appellants' argument that because
"no prior art has been found that teaches or suggests the claim elements,
claim [15] is not 'well-understood, routine and conventional' and is not a
generic abstract idea." Reply Br. 6. A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Diamond, 450 U.S. at 188-89 ("The
'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.").
In addition, although the Examiner uses the phrase "updating records
to a current status is well-understood, routine and conventional," the
Examiner is not asserting that steps in the claimed method are well-
understood, routine, and conventional. See Answer 3. Instead, the
Examiner is asserting that the mere updating of data records by modifying
data is essentially an output step, and, thus, insignificant extra-solution
activity.
For these reasons, we agree with the Examiner that claim 15 is
directed to an abstract idea and fails to recite an inventive concept that
transforms the abstract idea into patentable subject matter. Therefore, we
sustain the rejection of claims 1-16 and 18-20 as directed to abstract ideas
under 35 U.S.C. § 101.
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DECISION
We AFFIRM the rejection of claims 1-16 and 18-20 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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