Ex Parte KWAN et al

Patent Trials and Appeals Board

Apr 29, 2019

13937263 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/937,263 07/09/2013 HUNG TACK KWAN
73109 7590 05/01/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CHA920130012US1_8134-0160 4032
EXAMINER
HATCHER, DEIRDRE D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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 HUNG TACK KWAN and SHIW MATHAI 1
Appeal 2018-003304
Application 13/93 7,263
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 21--40, which constitute all of the claims pending
in this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the real party in interest as International Business
Machines Corporation.
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Application 13/937,263
STATEMENT OF THE CASE
Appellants' invention is directed to "the field of business process
management and, more particularly, to dynamically modifying business
processes based on real-time events." Spec. ,r 1. Claims 21 and 22,
reproduced below, is representative of the claimed subject matter:
21. A computer-implemented method, comprising:
detecting a real-time event within a computing
environment;
performing, on the detected event, real-time analytics to
identify event data;
generating, based upon the event data, a process instance
list of process instances;
comparing, to the event data, context data associated with
a selected one of the process instances; and
interrupting, based upon the context data matching the
event data; the selected one of the process instances, wherein
the interrupting occurs during an instance activity within
the selected one of the process instances, and
the instance activity does not include exception handling
capability.
22. The method of claim 21, further comprising:
dynamically reconfiguring, based upon the interrupting
and in real-time, the selected one of the process instances to react
to a subsequent occurrence of the event.
REJECTIONS
Claims 21--40 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter. Final Act. 3.
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Claims 21, 28, and 35 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Franke et al. (US 2012/0029969 Al; published Feb. 2,
2012) ("Franke") and Beringer (US 2006/0015382 Al; published Jan. 19,
2006). Final Act. 7.
Claims 22, 23, 29, 30, 36, and 37 stand rejected under 35 U.S.C. § 103
as being unpatentable over Franke, Beringer, and El-Rafei et al. (US
2009/0018983 Al; published Jan. 15, 2009) ("El-Rafei"). Final Act. 11.
Claims 24, 25, 31, 32, 38, and 39 stand rejected under 35 U.S.C. § 103
as being unpatentable over Franke, Beringer, and Fiszman et al. (US
7,580,994 Bl; issued Aug. 25, 2009) ("Fiszman"). Final Act. 14.
Claims 26, 27, 33, 34, and 40 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Franke, Beringer, and Barros (US 2008/0127205
Al; published May 29, 2008). Final Act. 16.2, 3
ANALYSIS
Section 101 Rejections
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
2 Claim 34 is dependent on claim 33, which is rejected over Franke,
Beringer, and Barros. The rejection for claim 34 relies on the Beringer
reference, and claim 34 should be rejected under Franke, Beringer, and
Barros, like its parent claim 3 3. See Final Act. 7.
3 Claim 27 is dependent on claim 26, which is rejected over Franke,
Beringer, and Barros. The rejection for claim 27 relies on the Franke
reference, and claim 27 should be rejected under Franke, Beringer, and
Barros, like its parent claim 26. See Final Act. 14.
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ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("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."); see also 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 . . . . ").
Concepts determined to be abstract ideas, and, thus, patent-ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski v. Kappas, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594--95 (1978)); and mental processes ( Gottschalk v. Benson, 409 U.S. 63,
69 (1972)). Concepts determined to be patent-eligible include physical and
chemical processes, such as "molding rubber products" (Diamond v. Diehr,
450 U.S. 175, 191 (1981)); "tanning, dyeing, making water-proof cloth,
vulcanizing India rubber, smelting ores" (id. at 182 n. 7 ( quoting Corning v.
Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
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elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 573 U.S. at 221 (internal quotation marks
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Memorandum"). Under that guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
orgamzmg human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF p ATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
See Memorandum at 52, 55-56. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
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( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See id. at 56.
Furthermore, the Memorandum "extracts and synthesizes key
concepts identified by the courts as abstract ideas to explain that the abstract
idea exception includes the following groupings of subject matter, when
recited as such in a claim limitation(s) (that is, when recited on their own or
per se )":
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Id. at 52 (footnotes omitted).
USPTO Memorandum, Step 2A, Prong 1
Under the first step of the Alice/Mayo framework, the Examiner
concludes the claimed invention is directed to "the abstract idea of managing
a business process[]" in that it "solves the problem of requiring an analyst to
know and/or identify all possible event interruption points and define them
in the business process." Final Act. 4; Ans. 19 (citing Spec. ,r 3). The
Examiner determines the claims are similar to other abstract ideas found
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ineligible by the courts as mental processes, including those in Electric
Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016), in
that the claims "are also drawn to detecting events, and then analyzing the
events." Final Act. 4--5. The Examiner also determines the claims are
"similar to those that were held ineligible by the courts in Accenture Global
Services," where the "claims were drawn to 'a task library database for
storing rules for determining tasks to be completed upon an occurrence of an
event,"' and the "instant claims are similar in that they also determine
process steps to be completed based on rules and based upon the occurrence
of an event." Final Act. 5 ( citing Accenture Global Services, GmbH v.
Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013)); see Ans. 27.
According to the Examiner, "the claim does not state how the real-time
analytics are performed" and "the broadly recited 'real-time analytics' and
comparing steps are drawn to an analysis by steps people go through in their
minds and without more are essentially mental processes within the abstract-
idea category." Ans. 28.
Appellant argue "the claims are not 'directed to' [ managing a business
process]." App. Br. 10. According to Appellants, the Examiner
overgeneralized the claimed invention and ignored "the vast majority of the
claim language." App. Br. 11; Reply Br. 2, 4. Appellants argue the claims
are not comparable to the facts in Accenture Global Services because "the
claimed invention contemplates interrupting a process instance (i.e., an
executing piece of software) based upon a certain set of conditions." App.
Br. 16. Appellants also argue "the facts of the present application are
substantively different than the facts within Electric Power Group" because
the Examiner "has not made any findings that the claimed invention is
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directed to nothing more than merely requiring the collection, analysis, and
display of available information in a particular field." App. Br. 16.
Appellants further argue "the claimed invention is not directed to a manual
process," and just because "certain information used in the disclosed
invention may be derived from manual input does not establish that the
claimed invention, as a whole, is directed to a manual process." Reply Br. 2.
Appellants contend the "claimed invention does more than detect and
analyze events," such as "interrupting a computer process" in claim 21 and
"dynamically reconfiguring the interrupted computer process" in claim 22.
Reply Br. 3.
We are not persuaded by Appellants' arguments and agree with the
Examiner's determination that the claims recite a mental process. See Ans.
19-22, 26-28. Appellants' invention is titled "Dynamically Modifying
Business Processes Based on Real-Time Events." Appellants describe that
business processes can be supported by various software categories,
including process modeling, business process re-engineering, workflows,
and project management. Spec. ,r 2. Certain "business processes can be
ideal candidates for automation as they involve moving a large numbers of
'cases' through the activities of relatively stable processes." Spec. ,r 2.
Appellants explain that the current business process design paradigm can be
static, so processes cannot be rapidly adjusted or modified in response to
new information from real-time analytics. Spec. ,r 3. For dynamic
modification, current business process handling "often requires human input
to permit business processes to be dynamically modified," so an analyst
must know "all possible event interruption points and define them in the
business process." Spec. ,r 3. Thus, business process modification can be
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too rigidly defined and can require significant re-engineering to perform
changes where interruption points are not defined. Spec. ,r 3.
Appellants seek to solve this problem by allowing for dynamic
modification of business processes based on real-time events. Spec. ,r 4.
We agree with the Examiner that the claims at issue here-such as
representative claims 21 and 22-have similarities to the claims found
abstract in Electric Power Group and Accenture, in that they recite
"detecting" an event ( e.g., collecting information that an event occurred or
the occurrence of an event) and then analyzing the event through the various
steps of performing real-time analytics, "generating" a process instance list,
"comparing" the event data to context data associated with one of the
process instances, "interrupting" the selected one of the process instances
based on the context data matching the event data, and "reconfiguring" the
process instance ( e.g., analyzing information or generating tasks based on
rules). See Electric Power Group, 830 F.3d at 1353-54; Accenture, 728
F.3d at 1344; see also Final Act. 4--5; Ans. 21-22.
Moreover, Appellants have not persuasively argued why the claimed
steps cannot be performed by a human, either mentally, manually, or with
the use of pen and paper. See, e.g., Spec. ,r 20 ("event 114 can be manually
detected"); ,r 21 ("analytics 116 can determine the time of the event 114
occurrence and entities affected by the event 114"); ,r 22 ("registry selection
can be manually and/or automatically performed"); ,r 22 ("business
processes and/or instances 132, 152 can be manually and/or automatically
subscribed to one or more categories 118"); ,r 23 ("a process instance list
132 can be [] generated"); ,r 24 ("analyze context data 134 associated with
the instance ... when context data 134 matches event 114 data, the
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disclosure can perform an interrupt 140 action ... interrupt 140 can stop
process instance 132 from executing"); ,r 27 ("reconfigure 142 can include
manual and automated procedures"). Specifically the claim limitations
identified above are directed to "detecting" an event and "generating" a
process instance list based upon the event data, "comparing" context data of
one selected process instance to the event data, and "interrupting" the
selected one of the process instances based on the context data matching the
event data. Each of these steps, both individually and as a combination, can
be performed by a human, either mentally, manually, or with the aid of
paper and pencil, which is similar to claims found patent-ineligible as mental
processes. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016); Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Canada (US.), 687 F.3d 1266, 1279 (Fed. Cir. 2012).
Essentially, Appellants seek to automate a manual process. See Spec. ,r,r 2-
3; see, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015).
Moreover, the mere mention of certain computer components in the
claims (e.g. "computing environment," hardware processor," "computer
readable hardware storage device," "computer usable program code,"
"computer hardware system") does not impose sufficiently meaningful
limitations on claim scope beyond these mental steps. Intellectual Ventures,
838 F.3d at 1318; Bancorp, 687 F.3d at 1278-79.
Accordingly, we conclude the claims recites a mental process as
identified in the Memorandum, and thus an abstract idea.
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USPTO Memorandum, Step 2A, Prong 2
In determining whether the claims are "directed to" the identified
abstract idea, we next consider whether the claims recite additional elements
that integrate the judicial exception into a practical application. For the
reasons set forth below, we discern no additional element ( or combination of
elements) recited in the claims that integrates the judicial exception into a
practical application. See Memorandum at 54--55.
Appellants argue "[t]he selected one of the process instances," as
claimed, "is a piece of executing software, and interrupting this necessarily
requires the use of a machine" so "the claimed invention meets the machine
or transformation test." App. Br. 11.
We are not persuaded by Appellants' arguments and agree with the
Examiner's findings. See Ans. 23, 27, 28. The claims do not recite a
particular machine or transformation for performing the claimed processing.
See MPEP § 2106.05(b }-( c ). The "machine" is recited at only a high level
of generality- e.g., "computing environment," "hardware processor,"
"computer readable hardware storage device," "computer usable program
code," and "computer hardware system." Neither the claims nor the
Specification provides any details regarding the particular components, other
than at a generic level. See Spec. ,r,r 16, 46. In light of the generically
recited device and Appellants' Specification, Appellants' arguments do not
persuade us the device to be a particular machine. Contra 84 Fed. Reg. 50,
55 ( explaining that, if "an additional element implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine," the additional element(s) may integrate the abstract idea into a
practical application); 84 Fed. Reg. 50, 55 n.27 (citing MPEP § 2016.05(b)).
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Instead, with respect to the device, Appellants' claims merely recite "'apply
it' (or an equivalent) with the judicial exception, or merely includes
instructions to implement an abstract idea on a [device], or merely uses a
[device] as a tool to perform an abstract idea." 84 Fed. Reg. 50, 55. Thus,
the "device" recited in the claims also fails to integrate the abstract mental
process into a practical application.
Appellants further contend the "claims of the present application are
necessarily rooted in computer technology and used to overcome problems
specifically arising in the realm of computers." App. Br. 12 ( citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
Specifically, Appellants argue the claimed invention "allows for both
interrupting of process instances (i.e., executing computer programs) that do
not include exception handling capability (i.e., the ability of the process
instance to handle anomalous or exception conditions requiring special
processing) and (in claim 22) the subsequent reconfiguring of these process
instances." App. Br. 12; see also App. Br. 16. Appellants further argue
"exception handling is a quintessential computer process," and therefore the
claimed invention is "addressing a problem specifically necessarily rooted in
computer technology." Reply Br. 3.
We are not persuaded by Appellants' arguments and agree with the
Examiner that, unlike in DDR Holdings, the claims do not "present a
solution necessarily rooted in the technology in order to overcome a problem
specifically arising in the computer network ( or other technological) realm"
because the "claims seek to address a problem that existed and continues to
exist outside of the realm of the technology associated with the additional
recited elements (i.e., exception handling in business processes)." Ans. 24.
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We further agree with the Examiner that the "proposed solution is one that
could have been implemented directly by a human performing analogous
functions by hand and/ or with the assistance of a general purpose computer
applied to facilitate the functions at a high level of generality or with the
assistance of additional elements performing well-known, conventional
functions," because the "central process could be substituted with a human
user" and the "invention can be practiced in either a manual or an automated
manner" using "a general purpose computer." Ans. 25 (citing Spec. ,r,r 20,
22, 26, 27, 36, 29). We further agree with the Examiner that, unlike in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016), "the claims are not dr[ a ]wn to allowing a computer to perform a
function that was [previously] only [achievable] by humans" and instead
"the computer uses the same rules that a human user would follow to
perform the method." Ans. 26.
We further are not persuaded Appellants' claims constitute an
improvement to computer technology. See App. Br. 12. Rather, the claims
merely adapt the mental process (managing a business process) to an
execution of steps performed by a computer. We agree with the Examiner
that "[i]nterrupting and reconfiguring manual processes are not technical
improvements or improvements to the functioning of a computer." Ans. 27.
Moreover, as discussed above, the claims only require generic computer
components. See also Ans. 27. Relying on a computer to perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible. See Alice, 573 U.S. at 224 ("[U]se of a computer to create
electronic records, track multiple transactions, and issue simultaneous
instructions" is not an inventive concept); Bancorp Servs., L.L.C. v. Sun Life
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Assurance Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a
computer "employed only for its most basic function ... does not impose
meaningful limits on the scope of those claims"); MPEP § 2106.05(±)(2)
("Use of a computer or other machinery in its ordinary capacity for
economic or other tasks (e.g., to receive, store, or transmit data) or simply
adding a general purpose computer or computer components after the fact to
an abstract idea (e.g., a fundamental economic practice or mathematical
equation) does not provide significantly more.").
Moreover, to the extent the claimed "interrupting . .. the selected one
of the process instances ... during an instance activity within the selected
one of the process instances" is distinct from the mental process, it is no
more than insignificant post-solution activity- performing an action based
on the comparison. Appellants' argument that the claimed invention is
directed to using software when business process modification is too rigidly
defined and requires significant re-engineering to perform changes where
interruption points are not defined highlights that the claimed solution is
directed to determining where an interruption should happen (i.e., based
upon the compared context data matching the identified event data). See
App. Br. 12 (citing Spec. ,r,r 2-3). Therefore, the claimed solution is
determining the context data for the process instances in order to interrupt,
and the claimed interrupting is merely a post-solution activity that selects a
particular data point, already identified in the comparing step, to be
manipulated and does not support the invention having an "inventive
concept." See Mayo, 566 U.S. at 73 ("[T]he prohibition against patenting
abstract ideas 'cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment' or adding 'insignificant
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postsolution activity."') (Quoting Diehr, 450 U.S. at 191-92) (citing Bilski,
561 U.S. at 610-11).
Accordingly, for the foregoing reasons, the claims fail to integrate the
abstract mental process into a practical application.
USPTO Memorandum, Step 2B
Turning to step 2 of the Alicellvfayo framework, we look to whether
claim 21 (a) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. ~1emorandum at 56.
The Examiner determines the claimed additional elements (i.e., "a
computer," "interrupting, based upon the context data matching the event
data, the selected one of the process instances, wherein the interrupting
occurs during an instance activity within the selected one of the process
instances") are "recited at a high level of generality and ... are simply
generic computers performing generic computer functions." Final Act. 6;
see Ans. 27. According to the Examiner, the claimed "[i]nterrupting a
process when an anomaly or exception occurs is well-known and
conventional, and not an improvement to another technology or technical
field." Final Act. 6. The Examiner further concludes the claimed invention
"has not demonstrated that anything more than a general purpose computer
is required to carry out the invention." Ans. 23 (citing Spec. ,r 16).
Appellants do not rebut the Examiner's determination. Specifically,
Appellants do not argue the claimed additional limitations (i.e., a
"computer," a "computing environment," "interrupting ... one of the
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process instances") adds limitations that are not well-understood, routine,
conventional activities in the field.
As discussed above, claim 21 is directed to determining the context
data for the process instances in order to interrupt, which can be performed
mentally or manually. Similarly, the additional elements in the claim
amount to no more than mere instnictions to apply the abstract idea using
generic computer components, which are insufficient to provide an inventive
concept. Specifically, the Specification describes the computer elements as
generic computer elements, including "a processor of a general purpose
computer ... or other programmable data processing apparatus to produce a
machine, such that the instn1ctions, which execute via the processor of the
computer or other programmable data processing apparatus, create means
for implementing the functions/acts." Spec. i116. Accordingly, we agree
with the Examiner that the additional claim limitations besides the abstract
idea are well-understood, routine, and conventional elements.
Appellants do not direct our attention to anything in the Specification
that indicates the computer components perfonn anything other than well-
understood, routine, and conventional functions. See Elec. Power, 830 F.3d
at 13 5 5 ("Nothing in the claims, understood in light of the specification,
requires anything other than off-the-shelf, conventional computer, network,
and display technology for gathering, sending, and presenting the desired
information"); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) ("That a computer receives and sends the information over a
network-------with no further specification--------is not even arguably inventive"); In
re TLI Communications LLC Patent Litigation, 823 F.3d 607, 614 (Fed. Cir.
2016) (server that receives data, extracts classification information from the
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received data, and stores the digital images insufficient to add an inventive
concept); Alice, 573 U.S. at 225-26 (receiving, storing, sending information
over networks insufficient to add an inventive concept).
Accordingly, we sustain the Examiner's rejection of claim 21 as being
directed to patent-ineligible subject matter, as well as independent claims 28
and 35 with commensurate limitations, dependent claim 22, and dependent
claims 23-27, 29-34, and 36-40, which were not separately argued.
Section 103 Rejections
Dispositive Issue: Did the Examiner err in finding that the
combination of Franke and Beringer teaches "interrupting ... during an
instance activity within the selected one of the process instances," wherein
"the instance activity does not include exception handling capability" as
recited in independent claim 21, and commensurately recited in independent
claims 28 and 35?
The Examiner finds Beringer's dealing with ad-hoc workflows (i.e.,
exception handling) and specifically the workflow that "does not fall under
the predefined exceptions" teaches "an instance activity that does not
include exception handling capability." Final Act. 10 (citing Beringer ,r,r 28,
26); see Ans. 37 (citing Beringer ,r,r 28, 26).
Appellants contend Beringer "teaches the opposite" of a "process
instance does not include exception handling capability." App. Br. 23-24.
According to Appellants, Beringer provides for "more robust process
management" by "including the exception handling." App. Br. 24.
Specifically, Appellants argue "Beringer teaches the obviousness of
including exception handling capability, which is the opposite of the claimed
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'the instance activity does not include exception handling capability."'
Reply Br. 14.
We are persuaded by Appellants' arguments. Here, the claim recites
"instance activity [ during which the interrupting occurs within the selected
process instance] does not include exception handling capability." In other
words, the claim requires that the interruption occurs during an instance
activity that does not include exception handling capability.
The sections of Beringer cited by the Examiner (see Final Act. 1 O;
Ans. 37) teach "[a]d-hoc workflow which does not fall under the predefined
exceptions may also be covered and tracked" (Beringer ,r 26) and "[ d]ealing
with ad-hoc work flow may also be referred to as exception handling"
(Beringer ,r 28).
As Beringer sets forth, the ad-hoc work flow is exception handling
(i.e., includes exception handling capabilities); it just does not fall under a
predefined exception. However, the claim requires the interrupted instance
activity does not include exception handling capability. The Examiner does
not sufficiently explain how Beringer's exception handling teaches an
instance activity that is interrupted not including exception handing
capabilities. Therefore, we find the Examiner has not provided sufficient
findings that Beringer teaches the claimed "interrupting ... during an instance
activity within the selected one of the process instances," wherein "the
instance activity does not include exception handling capability."
Because we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments.
Accordingly, we are constrained on the record to reverse the Examiner's
§ 103(a) rejection of independent claim 21, as well as independent claims
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Appeal2018-003304
Application 13/937,263
28 and 35 with commensurate limitations. Moreover, because the
Examiner has not shown that the additional references cure the foregoing
deficiency regarding the rejection of the independent claims, we will not
sustain the obviousness rejections of dependent claims 22-27, 29-34, and
36-40.
DECISION
We affirm the Examiner's rejection of claims 21--40 under 35 U.S.C.
§ 101.
We reverse the Examiner's rejections of claims 21--40 under 35
U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject all of the
pending claims.
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(±).
AFFIRMED
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