Ex Parte Lu et al

Patent Trial and Appeal Board

Oct 16, 2018

12185178 (P.T.A.B. Oct. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/185,178 08/04/2008 AnhQ. Lu
30449 7590 10/18/2018
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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.
END920080034US 1 8901
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
10/18/2018 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):
30449@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANH Q. LU, GAUTHAM P AMU, and
DAVIDY. YU
Appeal2017-007127
Application 12/185, 17 81
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BRUCE T. WIEDER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Anh Q. Lu, et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner's Final Rejection of claims 1, 3, 5-9, 11, 13-17,
19, 21, and 25-29. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE.
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 1.
Appeal2017-007127
Application 12/185, 178
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. In a data processing system, a method comprising:
integrating software endpoint applications with a single
transaction facility to enable transactions between a first
endpoint and a second endpoint, wherein the first endpoint and
the second endpoint are respectively represented by a service
provider computer and a service payer computer, and wherein
said integrating supports integrating operations of the service
provider computer and the service payer computer in the data
processing system;
providing a testing facility to enable a test of a variety of
transactions;
automating a clearinghouse test procedure via the testing
facility;
providing an application plug-in facility to enable a
simultaneous testing of multiple Electronic Data Interchange
(EDI) exchanges;
receiving an EDI request message from the first endpoint;
generating an EDI response message in response to the
EDI request message; and
in response to the EDI response message being generated,
transmitting the EDI response message to the first endpoint.
THE REJECTIONS
The following rejections are before us for review:
Claims 1, 3, 5-9, 11, 13-17, 19, 21, and 25-29 are rejected under 35
U.S.C. § 101 as being directed to judicially-excepted subject matter.
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Application 12/185, 178
Claims 17, 19, 21, and 27 are rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention. 2
ISSUES
Did the Examiner err in rejecting claims 1, 3, 5-9, 11-17, 19-21, and
25-29 under 35 U.S.C. § 101 as being directed to judicially-excepted subject
matter?
Did the Examiner err in rejecting claim 1 7, 19, 21, and 2 7 under 3 5
U.S.C. § 112, second paragraph for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention?
2 The Final Rejection included a rejection under 35 USC§ 112(b) directed to
the claim phrases "automating a clearinghouse" and "means for
automating." Final Rej. 6-7. Independent claims 1 and 9 recite "automating
a clearinghouse" and independent claim 17 recites "means for automating."
According to the Answer, "[t]he 35 U.S.C. 112(b) [sic, second paragraph]
rejection[] regarding the "use of automating" is "not presented for review on
appeal because [it has] been withdrawn by the examiner." Ans. 2. The
Answer further states that "[t]he Appellant does not argue the 35 U.S.C.
§§112(b) [sic] and 112(±) [sic] rejections regarding "means for automating."
Therefore, these rejections are maintained without comment." Ans. 10.
Accordingly, we understand the Examiner to be withdrawing the rejection as
to claims 1 and 9 and claims 3, 5-9, 11-1 7 depending therefrom and
maintaining the rejection as to claim 17 and claims 19, 21, and 27 depending
therefrom.
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Application 12/185, 178
ANALYSIS
The rejection of claims 1, 3, 5-9, 11-17, 19-21, and 25-29 under 35 US.C.
§101 as being directed to judicially-excepted subject matter.
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under 35
U.S.C. § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined
the claims are directed to the abstract idea of
comparing ( e.g. generating ... )
new ( e.g. receiving an ... ) and
stored ( e.g. providing a ... )
information ( e.g. EDI messages) and
using rules ( e.g .... in response to the EDI request message) to
identify options ( e.g. in response to the EDI response message
being granted ... )
Final Rej. 3. In other words, the Examiner determined that the claims are
directed to the concept of comparing new and stored information and using
rules to identify options and since, according to the Examiner, that concept
is an abstract idea, then the claims are directed to an abstract idea.
Step two is "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
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Application 12/185, 178
concept] itself."' Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 US 66, 73 (2012)).
In that regard, the Examiner determined, inter alia, that "the claims are
simply appending well-understood, routine and conventional activities
previously knowing to the industry, specified at a high level of generality
to the judicial exception." Final Rej. 4.
The Appellants respond by following the methodology for
determining patent-eligible subject matter described in the "2014 Interim
Eligibility Guidance on Patent Subject Matter Eligibility", 79 Fed. Reg.
74618, 74621 (December 16, 2014)." App. Br. 8. Step 1 of the methodology
is applied to the claimed subject matter and the result is discussed at App.
Br. 9; step 2A at App. Br. 9-13; and step 2B at App. Br. 13-32. The
discussion relative to step 2B is further broken down into five "Alternative
Argument [ s]."
"Whether an invention recites patent-eligible subject matter under
section 101 is a pure question of law .... " In re Wang, 737 Fed.Appx. 534,
535 (Fed. Cir. 2018) (citing Genetic Techs. Ltd. v. Merial LLC., 818 F.3d
1369, 1373 (Fed. Cir. 2016)). In order to reach a proper legal determination
via the Alice two-step analytical framework, it is critical that the framework
in reaching that determination is on a solid foundation.
As noted, the Examiner determined the claims to be directed to the
abstract idea of comparing new and stored information and using rules to
identify options. See Final Rej. 3. We agree with the Appellants that is not a
reasonable characterization of what the claims are directed to. See the step
2A discussion at App. Br. 9-13.
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Before determining whether the concept to which the claims at issue
are directed to is an abstract idea, one must first determine what that concept
IS.
The "directed to" inquiry [ ] cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon-after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 ("For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.") Rather, the "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").
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
"[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998). "The§ 101 inquiry must focus on the language
of the Asserted Claims themselves." Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016). See Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013)
( admonishing that "the important inquiry for a § 101 analysis is to look to
the claim"); see also Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1346 (Fed. Cir. 2014) ("We focus
here on whether the claims of the asserted patents fall within the excluded
category of abstract ideas.").
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With respect to computer-enabled claimed subject matter, it can be
helpful to determine whether "the claims at issue [ ] can readily be
understood as simply adding conventional computer components to well-
known business practices" or not. Id. at 1338. See also Affinity Labs of
Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). In
Enfish, the court found that the "plain focus of the claims" was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id. at 1336.
"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). The question is whether the
claims as a whole "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
Claim 1 ( as representative of the rejected claims) calls for "integrating
software endpoint applications with a single transaction facility to enable
transactions between a first endpoint and a second endpoint [to] support[ ]
integrating operations of the service provider computer and the service payer
computer in the data processing system," and
providing a testing facility to enable a test of a variety of
transactions;
automating a clearinghouse test procedure via the testing facility;
[and]
providing an application plug-in facility to enable a simultaneous
testing of multiple Electronic Data Interchange (EDI) exchanges.
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Application 12/185, 178
Certain types of messages ("EDI request message" and "EDI response
message") are received and generated with respect to the first endpoint.
The characterization of the claims as directed to comparing new and
stored information and using rules to identify options is the result of
focusing only on those claim limitations describing receiving and generating
messages. Notwithstanding that comparing new and stored information and
using rules to identify options is not an accurate characterization of what the
claims would be directed to were the claims solely directed to receiving and
generating messages, there is more going on here. The receiving and
generating messages are limited to Electronic Data Interchange messages
and revolve around a first endpoint of a software endpoint application
integrated "with a single transaction facility to enable transactions between a
first endpoint and a second endpoint [to] support[ ] integrating operations of
the service provider computer and the service payer computer in the data
processing system." Claim 1.
Thus, taken as a whole, claim 1 is focused on "software endpoint
applications [integrated] with a single transaction facility to enable
transactions between a first endpoint and a second endpoint" and EDI
messages which are received and generated relative that first endpoint.
Further, "[t]he '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, 838 F.3d at 1257 (quoting Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see also Enfzsh, 822 F.3d at
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1335, quoted in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed.
Cir. 2016).
According to the Specification, the "invention generally relates to data
processing systems and in particular to transaction facilities in data
processing systems." Para. 1. The Specification explains that "[t]he
healthcare industry's payment and reimbursement system is notoriously
complex and inefficient." Para. 2. "Currently when developing a health care
transaction solution that is involved with the storage, relay and exchange of
eligibility, benefits, and claim filing related information the process of
integrating the payers and providers poses a challenging problem." Para. 3.
The inventors' solution is explained as follows:
Disclosed are a method, system, and computer program product
for integrating Health Care Payers and Providers with a health
care transaction system. The health care transaction (HCT) utility
solves the problem of integration between these two parties by
providing the developer with an application that is capable of
automatically generating an Electronic Data Interchange (EDI)
response message to a request. The HCT utility mainly consists
of a servlet (associated with the Hypertext Transfer Protocol
(HTTP) or other data communication protocol) that forwards an
EDI request from a sending party to applications that may act as
either a payer or provider. These applications may automatically
process and respond to request EDI messages sent from other
applications using an EDI processor application. The HCT utility
provides the advantage of providing an infrastructure for testing
healthcare transactions. Furthermore, the infrastructure enables
testing of a variety of transactions from multiple sources.
Additionally, clearinghouse testing may now be automated.
Para. 4.
In light of what the Specification describes, the advance over the prior
art is a mechanism ("utility") for "forward[ing] an EDI request from a
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sending party to applications that may act as either a payer or provider."
Para. 4. This is the heart of the invention. This "solves the problem of
integration between these two parties by providing the developer with an
application that is capable of automatically generating an Electronic Data
Interchange (EDI) response message to a request." Para. 4.
The focus of the claims as a whole is on "software endpoint
applications [integrated] with a single transaction facility to enable
transactions between a first endpoint and a second endpoint" and EDI
messages which are received and generated relative to that first endpoint.
( claim 1 ). In light of the Specification, the invention relates to a mechanism
("utility") for "forward[ing] an EDI request from a sending party to
applications that may act as either a payer or provider" (para. 4 ). The claims
are reasonably characterized as being "directed to" an improvement in
"software endpoint applications [integrated] with a single transaction
facility" via the receiving and generating of EDI messages relative that first
endpoint.
and For the foregoing reasons, the Examiner's determination under
Alice step one is not sustainable. The foundation is faulty, coloring the
remaining analysis. Consequently, we do not reach the merits of Examiner's
determination under Alice step two.
The rejection is not sustained.
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The rejection of claim 17, 19, 21, and 27 under 35 USC§ 112, second
paragraph, for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention.
According to the Examiner,
Applicant asserts that the claim element "means for
automating" is a limitation that does not invoke 35 U.S.C. 1 12(±) or
pre-AIA 35 U.S.C. 112, 6th paragraph. However, it is unclear whether
the claim element invokes 35 U.S.C. 112(±) or pre-AIA 35 U.S.C.
112, 6th paragraph because the claim includes the language, "means
for" and is not modified by any structure. If applicant does not wish to
have the claim limitation treated under 35 U.S.C. 112(±) or pre-AIA
35 U.S.C. 112, 6th Paragraph applicant may:
Final Rej. 7.
(a) Amend the claim to add structure, material or acts that are
sufficient to perform the claimed function; or
(b) Present a sufficient showing that the claim limitation recites
sufficient structure, material, or acts for performing the claimed
function to preclude application of 35 U.S.C. 112(±) or pre-AIA
35 U.S.C. 112, sixth paragraph. For more information, see
MPEP § 2181.
One difficulty with the rejection is that the Examiner appears to doubt
the characterization of "means for automating" by the Appellants as not
invoking 35 U.S.C. § 112(±), there is no explanation as to why it should be
invoked. Nor is there an explanation as to why the claims are indefinite if 35
U.S.C. § 112(±) is invoked.
Furthermore, notwithstanding that the Answer states that "[t]he
Appellant does not argue the 35 U.S.C. §§ 112(b) [sic] and 112(±) [sic]
rejections regarding 'means for automating."' (Ans. 10), the Appellants in
fact did so. See App. Br. 44.
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But contrary to the Examiner's understanding of the Appellants'
position, the Appellants "assert that independent claim 17 recites the mean-
plus-function limitation of "means for automating a clearinghouse test
procedure via the testing facility"." App. Br. 44 (emphasis added). And, the
Appellants cite "embodiments of FIGS. 5 and 6, and their equivalents, as
described in the originally filed specification in Pars. [0038] - [0043] (for
FIG. 5) and Pars. [0044] - [0046] (for FIG. 6)" as such means. App. Br. 44.
Accordingly, the Appellants appear to have fully addressed the
Examiner's concern as to the clarity of whether the claim element "means
for automating" invokes 35 U.S.C. § 112, sixth paragraph.
The rejection is not sustained.
CONCLUSIONS
The rejection of claims 1, 3, 5-9, 11, 13-17, 19, 21, and 25-29 under
35 U.S.C. §101 as being directed to judicially-excepted subject matter is
reversed.
Therejectionofclaim 17, 19,21,and27under35U.S.C. § 112,
second paragraph, for failing to particularly point out and distinctly claim
the subject matter which Appellants regard as the invention is reversed.
DECISION
The decision of the Examiner to reject claims 1, 3, 5-9, 11-17, 19-21,
and 25-29 is reversed.
REVERSED
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