Ex Parte Dan et al

Patent Trial and Appeal Board

Jun 22, 2017

13444471 (P.T.A.B. Jun. 22, 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.
13/444,471 04/11/2012 AS IT DAN CAM920120016US1_8150-0163 1000
52021 7590 06/26/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
ZIMMERMAN, JEFFREY P
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/26/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASIT DAN and MIKE A. MARIN
Appeal 2016-002961
Application 13/444,471
Technology Center 3600
Before BRUCE R. WINSOR, AARON W. MOORE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002961
Application 13/444,471
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 9 and 25 40, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to “business process applications and,
more particularly, to using decision management for business process
application development.” (Spec. 13.) Claim 9, reproduced below,
exemplifies the subject matter on appeal:
9. A system, comprising:
a processor configured to initiate executable operations
comprising:
generating a decision reference at an insertion point within
a business process;
associating, using a processor, the decision reference with
one of a plurality of different decision modes;
wherein each decision mode indicates a different process
for selecting one or more activities of the business process to be
performed according to a result of a decision service to be imple­
mented for the decision reference; and
generating a decision description file for the decision ref­
erence specifying, at least in part, the associated decision mode.
1 Appellants identify IBM Corporation as the real party in interest. (See
App. Br. 1.)
2
Appeal 2016-002961
Application 13/444,471
THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nores et al. US 2008/0288304 A1 Nov. 20, 2008
Addala et al. US 2010/0070553 Al Mar. 18, 2010
Falkenhainer US 2005/0187809 Al Aug. 25, 2005
THE REJECTIONS
1. Claim 40 stands rejected under 35 U.S.C. § 112, second
paragraph, as indefinite because it “recites the limitation ‘the computer
program product of claim 44’” but “there is insufficient antecedent basis for
this limitation in the claim.” (Final Act. 3.)
2. Claims 9 and 25^40 stand rejected under 35 U.S.C. § 101
“because the claimed invention is directed to a judicial exception (i.e., an
abstract idea) without significantly more.” (See Final Act. 3—4.)
3. Claims 9, 25—30, and 33—38 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nares and Addala. (See Final Act. 4—13.)
4. Claims 31, 32, 39, and 40 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nares, Addala, and Falkenhainer. (See Final
Act. 13-15.)
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Appeal 2016-002961
Application 13/444,471
ANALYSIS
Section 112
Appellants advise that they “are not appealing the rejection of claim
40 under the second paragraph of 35 U.S.C. § 112 since this rejection is
based upon a correctable informality as to claim numbering and not based
upon the actual claim language being indefinite.” (App. Br. 4 n.l.) Because
Appellants present no arguments directed to this rejection, it is summarily
affirmed. See 37 C.F.R. § 41.31(c) (“An appeal, when taken, is presumed to
be taken from the rejection of all claims under rejection unless cancelled by
an amendment filed by the applicant and entered by the Office.”); MPEP
§ 1205.02 (9th ed., March 2014) (“[T]he Board may summarily sustain any
grounds of rejections not argued.”).
Section 101
Regarding the Section 101 rejection, the Examiner made the following
findings in the Final Action:
Claims 9 and 25-40 are directed to common methods of organiz­
ing human activity, i.e., business process design. The claims do
not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the
method claims merely recite the abstract idea implemented on a
generic computer; and the system and computer readable media
claims recite a handful of generic computer components config­
ured to implement the same idea.
(Final Act. 3—4.) In the Answer, the Examiner clarified that the “claims are
directed to business process design, which is an abstract idea similar to using
categories to organize, store, and transmit information” (Ans. 2—3) and
further described how each of the claimed steps are directed to manipulation
of information (see id. at 3).
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Appeal 2016-002961
Application 13/444,471
Appellants first argue that the claims “meet the requirements of 35
U.S.C. § 101” because “[c]laims 9 and 25-32 are directed to a computer
hardware system (i.e., a machine)” and “claims 33-40 are directed to a
computer program product (i.e., a manufacture or an improvement to a
machine)” and, therefore, all “fall within the explicit scope of 35 U.S.C.
§ 101.” (App. Br. 10.) This argument is unpersuasive because even a claim
specifically reciting a “system,” a “computer hardware system,” or a
“computer program product” may be ineligible if directed to an abstract idea
without an inventive concept implemented on a generic computer. See Alice
Corp. Pty. Ltd. v. CLSBanklnt’l, 134 S. Ct. 2347, 2360 (2014) (“Because
petitioner’s system and media claims add nothing of substance to the
underlying abstract idea, we hold that they too are patent ineligible under §
101.”). To conclude otherwise would be to eviscerate the abstract idea
exception.
Appellants also argue that “the concept of ‘organizing a human
activity’ is described in the case law as being related to a fundamental
economic practice (e.g., risk hedging)” and “[t]he claims of the present
invention are not directed to a fundamental economic practice.” (App. Br.
12.) This argument is not persuasive because, as noted above, the Examiner
found the claims directed to organizing and manipulating information, not
human activity, and many cases have found such claims to be directed to
ineligible abstract ideas. See, e.g., Intellectual Ventures ILLC v. Erie
Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017) (“creating an index and
using that index to search for and retrieve data”); Elec. Power Grp. v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (collection, manipulation, and
display of data); Intellectual Ventures I LLC v. Capital One Bank (USA),
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Application 13/444,471
792 F.3d 1363, 1370 (Fed. Cir. 2015) (customizing information and
presenting it to users based on particular characteristics); Content Extraction
and Transmission LLC v. Wells Fargo Bank, National Ass ’n, 776 F.3d 1343,
1347 (Fed. Cir. 2014) (“collecting data,. . . recognizing certain data within
the collected data set, and . . . storing that recognized data in a memory”).
Finally, Appellants argue that “the claims are directed to creating a
particular type of computer data structure (i.e., a decision description file),
which can be used to decouple decision service development from
application development within a business process development tool.”
(App. Br. 12.) This argument is not persuasive because, while the
Specification does describe how “the business process can be executed in a
computing environment that is separate from the computing environment in
which the decision service(s) are implemented” and “those users responsible
for development of the business processes need not have an understanding of
the various technologies available for implementing the decision service,”
such features are not claimed and are not required merely by use of a
“decision description file.” The instant claims do not require that the
decision service development and application development be decoupled.
The claimed “decision description file” does nothing more than specify, i.e.,
store, the decision mode.
Because we agree with the Examiner’s analysis and find Appellants’
arguments unpersuasive, we sustain the rejection of claim 9 under 35 U.S.C.
§ 101, as well as the Section 101 rejection of claims 25^40, for which no
other arguments are offered.
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Appeal 2016-002961
Application 13/444,471
Section 103
Regarding the obviousness rejection, Appellants first argue Nores
does not teach “generating a decision reference at an insertion point within a
business process.” (See App. Br. 15—16.) We do not agree. The reference
describes how “[a]n activity can be added to the process model in step 602”
and “[i]n step 604 the system can determine whether the newly added
activity is of a decision activity type.” (Nores 76.) Nores’ “process
model” corresponds to the claimed “business process,” and Nores’ addition
of a decision activity to that model teaches “generating a decision reference
at an insertion point.”
Appellants next argue that Nores does not teach or suggest
“associating, using a processor, the decision reference with one of a plurality
of different decision modes.” (App. Br. 17.) The Examiner responds that
“Nores describe[s] a user specifying relevant variables and data that will be
associated with the applicable decision activity” and that “a business process
progressing to a step in which a user is presented with options, i.e., a
decision reference associated with a plurality of decision modes, the user
choosing one of those options, the selected option indicating the transition to
the next activity of the process reads on these features.” (Ans. 5—6, citing
Nores Fig. 6 & H 16, 75—81.) Appellants reply that “Nores’s options are
not a decision mode since they do not ‘indicate[] a different process for
selecting one or more activity of the business process to be performed
according to a result of a decision service to be implemented for the decision
reference,”’ as recited in the claim. (Reply Br. 7.) We find Appellants’
argument unpersuasive because the claim does not require a plurality of
different decision modes; instead, it requires only that the decision reference
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Application 13/444,471
be associated with a single mode that indicates the process for selecting,
which is the case with every decision.
Appellants further argue Nores does not describe “generating a
decision description file for the decision reference specifying, at least in part,
the associated decision mode.” (App. Br. 19—21.) We disagree because
paragraph 77 states that “[o]nce all of the activities for the particular process
have been specified, the business process can be published, deployed and
executed 610,” which one of skill in the art would understand to involve
storing the components of the (computerized) process in one or more files.
Because we agree with the Examiner’s analysis and find Appellants’
arguments unpersuasive, we sustain the rejection of claim 9 under 35 U.S.C.
§ 103(a), as well as the Section 103(a) rejections of claims 25^40, for which
no other arguments are offered.
DECISION
The rejection of claim 40 under 35 U.S.C. § 112 is summarily
affirmed. The rejection of claims 9 and 25^40 under 35 U.S.C. § 101 is
affirmed. The rejections of claims 9 and 25 40 under 35 U.S.C. § 103(a) are
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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