Ex Parte Engelmann et al

Patent Trial and Appeal Board

Jan 16, 2018

10456260 (P.T.A.B. Jan. 16, 2018)

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.
10/456,260 06/05/2003 Dietmar Engelmann 2002P00074US02 6750
62730 7590
SAP SE
3410 HILLVIEW AVENUE
PALO ALTO, CA 94304
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
01/18/2018 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):
APRIL.MENG@SAP.COM
GIPinhouse@sap.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIETMAR ENGELMANN, PHILIPP KEHRER,
MARTIN MOLZ, DIRK SCHELLER,
VOLKER SCHNUCK, and STEPHAN WILHELM
Appeal 2016-003252
Application 10/456,260
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants1 seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 4-10, 13, 14, and 16-20 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is SAP SE. App. Br. 3.
Appeal 2016-003252
Application 10/456,260
THE INVENTION
The Appellants’ claimed invention is directed to a method and system
for managing transactions between two or more parties, in which one or
more of these obligations have not been completely or partially fulfilled
(Spec. para. 2). Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A computer-implemented method for processing a
business transaction between at least two parties, the method
performed by a computer comprising at least one memory
having program instructions to execute at least one program
component and at least one processor to execute the program
instructions, the method comprising the steps of:
receiving, in the at least one memory of the computer,
transaction information identifying a business transaction
comprising one or more obligations owed by at least one of the
at least two parties to the other parties;
receiving electronic dispute information indicating that at
least one of the one or more obligations of the business
transaction has not been fulfilled;
determining if the dispute information is valid;
automatically determining, by the at least one processor,
a first code representing information that describes how the one
or more obligations have not been fulfilled, the determination
of the first code involving the application of one or more rules
relating to the business transaction;
creating a data object, distinct from the transaction
information, comprising some or all of the transaction
information and the dispute information only if the dispute
information is determined to be valid;
associating, by the at least one processor, the first code
with the created data object and the data object with the
transaction information such that an update of the information
of one automatically results in the update of information to the
other; and
transmitting the created data object to a dispute
resolution entity for resolution.
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Appeal 2016-003252
Application 10/456,260
THE REJECTION
The following rejection is before us for review:
Claims 1, 4-10, 13, 14, and 16-20 are rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2
ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea and does not preempt an entire
field (App. Br. 12-16). The Appellants also argue that the claim is directed
to “significantly more” than any abstract idea (App. Br. 17-20).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2-4; Ans. 2-9).
We agree with the Examiner. Under 35 U.S.C. § 101, 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 an implicit exception: “laws of nature,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2016-003252
Application 10/456,260
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
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 Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id at 2358.
Here, we determine that the claim is directed to the concept of
processing a business transaction between two parties in which there is a
dispute and creating a data object that includes transaction and dispute
information. This is a fundamental economic practice long prevalent in our
system of commerce and method of organizing human activities and is an
abstract idea beyond the scope of § 101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
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Appeal 2016-003252
Application 10/456,260
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
We note the point about pre-emption (App. Br. 16). While pre­
emption ‘“might tend to impede innovation more than it would tend to
promote it,’ thereby thwarting the primary object of the patent laws” {Alice,
134 S. Ct. at 2354 (quoting Mayo, 132 S. Ct. 1289, 1293 (2012)), “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) (“[Tjhat 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.”), cert, denied, 136 S. Ct. 701
(2015).
Here, the claim is not rooted in technology but rather in the concept of
processing a business transaction between two parties in which there is a
dispute and creating a data object that includes transaction and dispute
information which is a fundamental economic practice and a method of
organizing human activities and an abstract idea. Further, the recited claim
limitations fail to transform the abstract nature of the claim into patent-
eligible subject matter. For these above reasons, the rejection of claim 1 is
sustained. Dependent claims 4-9 and independent claim 20 are directed to
similar subject matter and the rejection of these claims is sustained as well.
We reach the same conclusion as to independent system claim 10 and
its dependent claims. Here, as in Alice, “the system claims are no different
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Appeal 2016-003252
Application 10/456,260
in substance from the method claims. The method claims recite the abstract
idea implemented on a generic computer; the system claims recite a handful
of generic computer components configured to implement the same idea.”
Alice, 134 S. Ct. at 2351. “[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea ‘while adding the words “apply if” is not
enough for patent eligibility.” Id. at 2358 (quoting Mayo, 132 S. Ct. at
1294).
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1, 4-10, 13, 14, and 16-20 under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1, 4-10, 13, 14, and 16-20 is
sustained.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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