Ex Parte Kymal et al

Patent Trial and Appeal Board

Dec 21, 2017

13616002 (P.T.A.B. Dec. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/616,002 09/14/2012 Chandran Kymal OEM 0108 R1 8269
22045 7590 12/26/2017
RROOKS KTTSHMAN P C
EXAMINER
1000 TOWN CENTER BORISSOV, IGORN
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
12/26/2017 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):
docketing @brookskushman. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANDRAN KYMAL and GREGORY FRANCIS GRUSKA
Appeal 2018-0005921
Application 13/616,0022
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal 35 U.S.C. § 134(a) from the decision rejecting
claims 10-243 under 35 U.S.C. § 101 as directed to non-statutory subject
matter.4 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants’ Appeal Brief (“App. Br.,” filed Apr.
4, 2017), Reply Brief (“Reply Br.,” filed Oct. 24, 2017), the Examiner’s
Answer (“Ans.,” mailed Aug. 24, 2017) and Final Office Action (“Final
Act.,” mailed Oct. 4, 2016).
2 Appellants identify the real party in interest as “Omnex Systems, LLC.”
App. Br. 1.
3 Claims 1—9 have been canceled. Id., Claims App.
4 The Examiner withdrew the rejections of claims 10—24 under 35 U.S.C.
§ 103. Ans. 3.
Appeal 2018-000592
Application 13/616,002
INVENTION
Appellants’ invention “relate[s] generally to enterprise and supply
chain quality management.” US Patent 7,818,192, col. 1,11. 13—14. Claims
10 (method), 15 (system), and 20 (crm) are independent and recite
substantially similar subject matter. Claim 10, reproduced below with added
formatting, notations, and emphasis, is illustrative of the subject matter.
10. A computer-implemented method comprising:
[(a)] storing a plurality of documents in a network-accessible
manner, at least two of the documents having access controls
associated therewith;
[(b)] granting control rights, via a computer, comprising an
ability to modify and delete a document, over at least a first
document having an access control associated therewith, to at
least a first site;
[(c)] granting control rights, comprising an ability to modify
and delete a document, over at least a second document having
an access control associated therewith, to a second site; and
[(d)] granting non-editorial access to at least the first and
second documents to at least a third user, wherein the control
rights of an accessed document are transparent to an accessing
user, wherein, upon document access, an accessing user may
view the document, download the document, submit a request
to a control-right holding user to modify the document, and
solicit a draft request to one or more other users to modify the
document;
[(e)] determining, via an accessing user’s computer,
documents having a predefined association with the
document accessed by the accessing user, the documents
being associated based on administrator defined categories;
and
[(f)] responsive to a request to access the document,
presenting a user-selectable list of the documents having a
predefined association with the document accessed by the
accessing user, sorted by the administrator defined category
that applies to each document in the list.
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Appeal 2018-000592
Application 13/616,002
ANALYSIS
Non-Statutory Subject Matter
On December 22, 2015, in a prior Decision on Appeal, the Board
affirmed the Examiner’s decision to reject claims 10—24 under § 101. See
Dec. 8 (Appeal 2015—008130). Subsequently, Appellants filed a Request for
Continued Examination (RCE) on February 22, 2016 and amended the
claims (i.e., adding limitations (e) and (f) to claim 10), but the Examiner
found the additional limitations alone and in combination did not amount to
significantly more than the abstract idea of “giving authorization to edit a
document” (Ans. 4) and “associating documents based upon certain criteria,”
maintaining the non-statutory subject matter final rejection of claims 10—24.
Id. at 5.
Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, we
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[wjjhat
else is there in the claims before us?” To answer that question,
we consider the elements of each 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. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v. CLSBank Inti, 134 S. Ct. 2347, 2355 (2014)
(citing and quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012)).
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Appeal 2018-000592
Application 13/616,002
Appellants argue claims 10-24 as a group. App. Br. 5—7; Reply Br.
2—3. We select claim 10 as the representative claim for this group, and, thus,
claims 11—24 stand or fall with claim 10. See 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded by Appellants’ arguments that the Examiner
erred in concluding that independent claim 10—24 are directed to non-
statutory subject matter. Appellants do not contest the Examiner’s
determination of the abstract idea under Alice step one, instead drawing a
comparison between claim 10 and the claim in Bascom Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016),5 held
patent eligible for passing muster under Alice step two. See App. Br. 5—6
(citing Example 34 of the December 2014 Guidance on Subject Matter
Eligibility). Appellants contend that the ordered combination of the claimed
invention amounts to significantly more than the abstract idea, because “the
claims represent an improvement to multi-site handling of documents,
document relationships and document access by providing functionality that
is not typically seen in such a system (and thus is both an improvement and
not representative of a long-standing practice).” App. Br. 7.
In Bascom, the Federal Circuit found “the limitations of the
claims, taken individually, recite generic computer, network and
Internet components, none of which is inventive by itself,” but “an
inventive concept can be found in the non-conventional and non-
generic arrangement of known, conventional pieces.” Bascom, 827
F.3d at 1349—50. In contrast to Bascom, we conclude claim 10
contains no technical solution. Unlike the claims at issue in Bascom,
5 See Example 34 https://www.uspto.gov/sites/default/files/documents/ieg-
bus~meth~exs~dec2016.pdf (last visited Dec. 15, 2017).
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Appeal 2018-000592
Application 13/616,002
claim 10 does not introduce a technical advance or improvement. It
contains nothing that amounts to significantly more than a patent upon
the abstract idea itself. See id., see also Synopsys, Inc. v. Mentor
Graphics Corporation, 839 F.3d 1138, 1152 (Fed. Cir. 2016). Claim
10 only recites two generic components, “a computer” in step (b) and
“an accessing user’s computer” in step (e), and Appellants do not
provide any persuasive explanation of how the recited ordered
combination of these elements amounts to an inventive concept that
converts the abstract idea into patent-eligible subject matter. We do
not find the additional amended steps of (e) determining documents
having a predefined association with the document accessed based on
administrator defined categories and (f) presenting a sorted list of the
determined documents, constitute significantly more than the abstract
idea.6 “[MJerely selecting information, by content or source, for
collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
exclusion from § 101 undergirds the information-based category of
abstract ideas.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1355 (Fed. Cir. 2016). Moreover, claim 1 does “not include any
requirement for performing the claimed functions ... by use of
anything but entirely conventional, generic technology. The claims
therefore do not state an arguably inventive concept.” Id. at 1356. In
short, each step does no more than require a generic computer to
6 We note that in support of this claimed subject matter (steps (e) and (f) of
claim 10), Appellants direct us to “col. 4,11. 40-60” of Patent 7,818,192,
which merely provides a brief description of the drawings for Figures 1—4.
See Amended Appeal Br. 3 (filed June 1, 2017).
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Appeal 2018-000592
Application 13/616,002
perform generic computer functions. Considered as an ordered
combination, the computer components of Appellants’ system add
nothing that is not already present when the limitations are considered
separately.
For the foregoing reasons, we sustain the Examiner’s rejection
of claim 10 under 35U.S.C. § 101, including claims 11—24, which fall
with claim 10.
DECISION
The Examiner’s decision to reject claims 10—24 under 35 U.S.C.
§ 101 is 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).
AFFIRMED
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