Ex Parte Karabulut et al

Patent Trial and Appeal Board

Aug 7, 2017

11872330 (P.T.A.B. Aug. 7, 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.
11/872,330 10/15/2007 Yuecel Karabulut 13913-0611001/2007P00360 8637
32864 7590 08/09/2017
FISH & RICHARDSON, P.C. (SAP)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/09/2017 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 YUECEL KARABULUT, MURRAY SPORK, and
MING-CHIEN SHAN
Appeal 2016-007487
Application 11/872,3301
Technology Center 3600
Before JUSTIN BUSCH, CATHERINE SHIANG, and
CARL L. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20, which are the only claims pending. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as SAP SE. App. Br. 4.
Appeal 2016-007487
Application 11/872,330
STATEMENT OF THE CASE
The invention relates to secured computing employing composite
applications. Abstract; Spec. Tflf 1—3. Claim 1, reproduced below, is
exemplary of the subject matter on appeal:
1. A computer-implemented method executed using one or
more processors, the method comprising:
accessing, by the one or more processors, a specification
for a composite application corresponding to a business
process, the composite application comprising local application
logic to control interaction of a plurality of external services,
the specification being stored in a computer-readable storage
medium and comprising:
a security annotation that defines a security
intention comprising security policies and security
capabilities of the composite application, and
a plurality of tasks that define at least a portion of
the business process, each task of the plurality of tasks
requiring invocation of a respective external service of
the plurality of external services;
invoking, by the one or more processors, a security
pattern that is stored in a pattern repository and that is selected
from a plurality of customizable security patterns based on the
security annotation, the security pattern defining entry points
that automatically trigger enforcement of the security intention;
and
for each task of the plurality of tasks:
matching, using a service broker of the enterprise,
security policies and security capabilities of each of a
plurality of service providers to the security policies and
security capabilities of the composite application to
provide a set of identified qualified service providers, and
identifying, from the set of identified qualified
service providers, a service provider associated with the
external service associated with a respective task and that
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satisfies the security intention based on the invoked
security pattern, the service provider providing a web-
based service and communicating with the enterprise
over a network; and
invoking, by the one or more processors, the business
process using identified service providers.
App. Br. 19—20 (Claims Appendix).
THE REJECTIONS
Claims 1—20 stand rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1—13 of U.S. Patent Application
No. 11/872,358. Final Act. 3.
Claims 1—20 stand rejected under 35 U.S.C. § 101 as ineligible subject
matter. Ans. 2.
Claims 1—20 stand rejected under 35 U.S.C. § 102(b) as being
unpatentable over Anderson et al. (US 2006/0206440 Al; pub. Sept. 14,
2006) (“Anderson”). Final Act. 3—7.
ANALYSIS
The double patenting rejection
The Examiner finds, although claims 1—20 of the instant application
are not identical to claims 1—13 or U.S. Application 11/872,358, the claims
are not patentably distinct from each other because both inventions disclose
equivalent elements creating a composite application. Final Act. 3.
Appellants present no arguments regarding Examiner error and, therefore,
we pro forma sustain the rejection.
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The §101 rejection
The Examiner finds claims 1—20 are directed to an abstract idea and,
therefore, directed to ineligible subject matter. Ans. 2-4 (New Ground). In
particular, the Examiner finds the claims are “Equivalent to Judicial
Example of Abstract idea: Certain methods of. . . Comparing new and
stored information and using rules to identify options (SmartGene).” Id. at
3. The Examiner finds:
Claims 1-20 is/are directed to Accessing saved data
(Specification for a composite application, Security annotation,
and Tasks that define a portion of the business process),
Receiving data (service provider security policies and security
capabilities), and Correlating/Matching the received data with
the saved data (Image Verification), Identifying/ Transmitting/
Displaying the matched data, and Processing further data based
on the identified results. . . . The claims do not recite additional
elements that are sufficient to amount to significantly more than
the judicial exception because (A) the additional elements or
combination of elements in the independent claims are
recitation of generic computer structure (i.e. a processor to
execute instructions to perform the method), which serves to
perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry, and do not add a meaningful limitation to the
abstract idea because they would be routine in any computer
implementation. The processor system in the instant
application merely receives, processes and stores data. The
functions of the computer are well-understood and conventional
activities known in the employment and social network art. (B)
because the claims do not recite an improvement to another
technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations
beyond generally linking the use of an abstract idea to a
particular technological environment. The limitations are
merely instructions to implement the abstract idea on a
computer and require no more than a generic computer to
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perform generic computer functions that are well understood,
routine and conventional activities previously known to the
industry. Therefore, the claim(s) are rejected under 35 U.S.C.
[§] 101 as being directed to nonstatutory subject matter. See
Federal Register notice title 2014 Interim Guidance on Patent
Subject Eligibility (79 FR 74618) issued Tuesday December 16,
2014.
Furthermore, the claims have been fully analyzed to determine
whether there are any additional limitations recited that amount
to significantly more than the abstract idea. However, all of the
claimed limitations are simply generic computer (i.e. processor,
application server, network) functionality, claimed to perform
the basic computer functions of: obtaining data, processing
data, and transmitting data - through the program that enables
the steps of the claimed invention. Taking the additional
claimed elements individually and in combination, the
computer components at each step of the process perform
purely generic computer functions. As such, there is no
inventive concept sufficient to transform the claimed subject
matter into a patent-eligible application. The claim does not
amount to significantly more than the abstract idea itself.
Accordingly, the claim is not patent eligible.
Moreover, claims to an apparatus are held ineligible for the
same reason, e.g., the generically-recited computers add
nothing of substance to the underlying abstract idea.
Id. at 3^4.
Appellants argue the subject matter of claims 1—20 is not directed to
an abstract idea and, instead, is directed to “add[ing] high-level security
intentions or objectives to the business process specification, where the
security framework facilitates the automatic generation of the security
configuration and enforcement processes.” Reply Br. 1—2 (citing Spec.
37). According to Appellants, the Examiner over generalizes the subject
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matter as “organizing human activities, . . . and/or Using categories to
organize, store, and transmit information” because the subject matter is
directed toward integration of security objectives in composite applications
and addresses that security is one of the major concerns when developing
mission critical service oriented composite applications. Id. at 3^4.
Appellants further argue independent claims 1,19, and 20 recite
sufficiently concrete features to set them outside the broad definition of
abstract idea as set forth in Alice:
“accessing[, by the one or more processors,] a
specification for a composite application corresponding to a
business process, the composite application comprising local
application logic to control interaction of a plurality of external
services, the specification being stored in a computer-readable
storage medium and comprising: a security annotation that
defines a security intention comprising security policies and
security capabilities of the composite application” and
“invoking[, by the one or more processors,] a security pattern
that is stored in a pattern repository and that is selected from a
plurality of customizable security patterns based on the security
annotation, the security pattern defining entry points that
automatically trigger enforcement of the security intention”
necessitates an underlying computing device.
Id. at 4.
Appellants further argue, assuming arguendo, the claims are directed
to an abstract idea, the subject matter of the claims is rooted in computer
technology in order to overcome problems specifically arising in the realm
of composite application development, including integration of security
objectives, which qualifies claims 1,19, and 20 as patent-eligible subject
matter. Id. (citing DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245
(Fed. Cir. 2014)). According to Appellants, the claims are directed to a
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problem that is unique to composite application development, and the
solution provided by claims 1,19, and 20 “is tethered to the technology that
created the problem.” Id. at 4—5 (citing DDR Holdings, 773 F.3d 1245;
Messaging Gateway Sols., LLC v. Amdocs, Inc., No. CV 14-732-RGA, 2015
WL 1744343 (D. Del. Apr. 15, 2015)).
Appellants further refer to PTAB decisions and contend these
decisions “illustrate that claimed subject matter fundamentally rooted in
computer technology, and claims covering more than mere nominal
recitation of a computer and requiring input from physical devices are
patent-eligible.” Id. at 5 (citing Ex Parte Steve Bush, Appeal 2013-001110
(Feb. 27, 2015); T. Rowe Price v. Secure Axcess, CBM2015-00027 (June 22,
2015). According to Appellants, the claims amount to significantly more
than an abstract idea itself. Id.
We are not persuaded by Appellants’ arguments. The Supreme Court
in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) reiterated
the framework set out in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289 (2012) for “distinguishing patents that
claim . . . abstract ideas from those that claim patent-eligible applications of
those concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to
determine if the claim is directed toward a patent-ineligible concept and, if
so, the second step is to determine whether there are additional elements that
transform the nature of the claim into a patent eligible application. Id.
(citing Mayo, 132 S. Ct. at 1297, 1298). The second step searches for an
inventive concept that is sufficient to ensure that the patent amounts to
significantly more than a patent on the patent-ineligible concept. Id. (citing
Mayo, 132 S. Ct. at 1294).
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Applying the first step, we are not persuaded by Appellants’
arguments that claims 1—20 are not directed to abstract ideas and agree,
instead, with the Examiner’s conclusions. In addition, we agree the
Examiner has considered the abstract ideas in the aggregate. Accordingly,
we find that the claims are directed to a patent-ineligible concept.
Step 2 of the analysis considers whether the claims contain an
inventive concept such as additional limitations that narrow, confine or
otherwise tie down the claims so that it does not fully cover the abstract idea
itself. See Alice, 134 S. Ct. at 2357. Here, we agree with the Examiner that
no inventive concept is present. In particular, the hardware features are the
type of generic element that has been determined to be insufficient by the
Supreme Court to transform a patent-ineligible claim into one that is patent-
eligible. See id. The claims include no limitations that prevent it from
covering the abstract idea itself.
Appellants challenge the Examiner’s articulation of what the claims
are directed to, but the challenge is unfounded. See Reply Br. 2—5. For
example, the fact that the claims are drafted to include a computing
environment is not dispositive. The question is not whether claims mention
a computing environment but what they are “directed to.” [T]he “directed
to” inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether “their character as a whole is directed to
excluded subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1375, 2016 WL 1393573, at *5 (Fed. Cir. 2016)
(inquiring into “the focus of the claimed advance over the prior art”);
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Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The
‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas v.
DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power
Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). “In
determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
For example, claim 1 includes: accessing a specification for a
composite application for a business process; invoking a security pattern that
automatically triggers enforcement of a security intention; matching security
capabilities to provide a set of identified service providers; identifying a
service provider from the set; and invoking the business process using
identified service providers. While the claim may additionally recite
computer related elements (e.g., “composite application, computer-readable
storage medium, automatically trigger, processors, network”), we agree with
the Examiner that the claim is directed to “Comparing new and stored
information and using rules to identify options.”
The Specification supports this view. Spec. Abstract, H 2—6. Also,
the Specification presents insufficient support that the computer related
elements are anything other than conventional and generic. See, e.g., Spec.
11 152, 154—173.
Appellants also assert the claims are directed to “adding a security
annotation to a composite application,” but fail to address how that idea is
more than the abstract idea of storing information and comparing that
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information when identifying and selecting web service providers. Reply
Br. 2—3. Thus, Appellants have not demonstrated error in the Examiner’s
conclusion that the claims are directed to an abstract idea. See Ans. 3
(stating the claims are directed to “Comparing new and stored information
and using rules to identify options”).
Moreover, we conclude each of Appellants’ claims on appeal is
distinguishable from the type of claim recently considered by the court in
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327. We conclude none of
Appellants’ claims is “directed to an improvement in the functioning of a
computer,” as was found by the court regarding the subject claim in Enfish,
822 F.3datl338, because the claims recite conventional computer elements
without addressing improvements to the functioning of a computer. To the
extent that the recited steps or acts may be performed faster or more
efficiently using a computer, our reviewing court provides applicable
guidance:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself See Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter.”).
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphasis added).
Applying this reasoning to Appellants’ claims on appeal, we similarly
find any purported faster or more efficient performance of the claimed steps
or acts merely comes from the capabilities of conventional computer
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processing and/or computer related elements, rather than from Appellants’
claimed steps or functions.
With respect to Appellants’ arguments that the claims are patent
eligible under step two of the Alice/Mayo test, Reply Br. 4—5, we are
similarly unpersuaded. As discussed above, Appellants have characterized
their claim as directed to “add[ing] high-level security intentions or
objectives to the business process specification, where the security
framework facilitates the automatic generation of the security configuration
and enforcement processes.” Analyzing the claim limitations, both
individually and as an ordered combination, Appellants have not sufficiently
demonstrated how the claims are significantly more than the abstract idea of
comparing new and stored information and using rules to identify options.
Appellants claims store information, including a security annotation,
in a business process (a specification for a composite application) and
execute the business process (i.e., set of steps or tasks) after identifying
service providers who match the requirements (rules) in the specification.
We find the claims here are similar to those in Accenture Glob. Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1338—39 (Fed. Cir.
2013), which involved insurance tasks, including rules for determining
which tasks to be completed and triggered by specific occurrence of events.
Appellants’ reliance on DDR and other cited cases is misplaced. For
example, in DDR, the claims at issue involved, inter alia, “web pages
displays [with] at least one active link associated with a commerce object
associated with a buying opportunity of a selected one of a plurality of
merchants” (claim 1 of US 7,818,399). The Federal Circuit found the claims
in DDR to be patent eligible under step two of the Mayo/Alice test because
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“the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks.” DDR Holdings, 773F.3datl257. Specifically, the Federal
Circuit found the claims addressed the “challenge of retaining control over
the attention of the customer in the context of the Internet.” Id. at 1258. The
claims before us are analogous to the claims in Accenture, and are dissimilar
to DDR's web page with an active link. Furthermore, as discussed supra,
the Specification does not support the view that the computer related claim
elements are unconventional.
Accordingly, in view of the forgoing, we sustain the 35 U.S.C. § 101
rejection of claim 1 and independent claims 19 and 20 which are of
commensurate scope. We also sustain the rejection of dependent claims 2—
18 as these claims are not argued separately.
The § 102(b) rejections
Appellants argue Anderson is silent as to “composite application” and
“security annotation” as recited in claims 1,19, and. 20. App. Br. 14—15
(citing Anderson || 57, 58, 66—78). According to Appellants, “the
application of Anderson may be written to understand standard policy
statements exported by services and to communicate with other processes or
applications, which is different than the composite application including
local application logic to control interaction of a plurality of external
services.” Id. at 15. Regarding “security intentions,” Appellants argue:
Anderson provides that preferences among vocabulary items,
vocabulary item values, policy constraints, and other elements
of a policy may be specified and automatically taken into
account by a policy-processing engine (Anderson, | [0023]).
That is the policy constraints and preferences of Anderson
policy may be specified and automatically taken into account
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by a policy-processing engine, which is different than a security
annotation that defines a security intention including security
policies and security capabilities of the composite application,
as recited in claims 1,19, and 20.
Id.
Appellants further argue Anderson does not disclose the limitation
“invoking, by the one or more processors, a security pattern that is stored in
a pattern repository and that is selected from a plurality of customizable
security patterns based on the security annotation, the security pattern
defining entry points that automatically trigger enforcement of the security
intention” because “Anderson [is] silent as to a security pattern as defined in
claims 1,19 and 20.” Id. According to Appellants, Anderson provides
automated matching of policy constraints and this is different than a security
pattern defining entry points that automatically trigger enforcement of the
security intention. Id. (citing Anderson || 66—78, 167—175, 23, 70).
Appellants argue Anderson does not disclose the claim limitation:
for each task of the plurality of tasks:
matching, using a service broker of the enterprise, security
policies and security capabilities of each of a plurality of
service providers to the security policies and security
capabilities of the composite application to provide a set of
identified qualified service providers, and
identifying, from the set of identified qualified service
providers, a service provider associated with the external
service associated with a respective task and that satisfies the
security intention based on the invoked security pattern, the
service provider providing a web-based service and
communicating with the enterprise over a network.
Id. at. 16.
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Appellants argue the policy intersection of Anderson is used to
identify vocabulary item values that satisfy the intersection of both policies
and also to identify a specific preferred policy set, and this is different than
matching, using a service broker of the enterprise, security policies and
security capabilities of each of a plurality of service providers to the security
policies and security capabilities of the composite application to provide a
set of identified qualified service providers, as recited in each of claims. Id.
According to Appellants, Anderson does not disclose identifying, from the
set of identified qualified service providers, a service provider associated
with the external service associated with a respective task and that satisfies
the security intention based on the invoked security pattern, the service
provider providing a web-based service and communicating with the
enterprise over a network, as recited in each of claims. Id. (citing Anderson
1181-92, 100-103,81).
We are persuaded by Appellants’ arguments as, on the record before
us, the Examiner presents insufficient factual findings regarding these
limitations as required for anticipation. In particular, the Examiner does not
sufficiently address the specific identified differences, supra, argued by
Appellants. For example, Anderson provides automated matching of policy
constraints and, on the record before us, this is different than a security
pattern defining entry points that automatically trigger enforcement of the
security intention. App. Br. 15. A claim is anticipated only if each and
every element as set forth in the claims is found, either expressly or
inherently described in a single prior art reference, and arranged as required
by the claim. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
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In view of the above, we do not sustain the rejection of claim 1, and
independent claims 19 and 20, which are commensurate in scope and are
argued together with claim 1. We also do not sustain the rejection of
dependent claims 2—18.
DECISION
We affirm the Examiner’s double patenting rejection of claims 1—20.
We affirm the Examiner’s decision rejecting claims 1—20 under
35U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 1—20 under
35 U.S.C. § 102(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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