Ex Parte Millmore et al

Patent Trial and Appeal Board

Jun 16, 2017

12167661 (P.T.A.B. Jun. 16, 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.
12/167,661 07/03/2008 Martin Millmore T9049-19638US01 5913
74739 7590 06/20/2017
MILES & STOCKBRIDGE P.C.
Oracle International Corporation
1751 Pinnacle Drive
Suite 1500
Tysons Corner, VA 22102-3833
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/20/2017 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):
Ipdocketing @ Miles S tockbridge. com
bgoldsmith @ miles stockbridge .com
smcvean @ milesstockbridge. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN MILLMORE, DINESH ARORA,
MICHAEL ROSSI, AARON GREEN, and PAUL BRIMBLE
Appeal 2016-004812
Application 12/167,6611
Technology Center 3600
Before JUSTIN BUSCH, JOHN D. HAMANN, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—25, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Oracle International
Corporation. App. Br. 2.
Appeal 2016-004812
Application 12/167,661
INVENTION
Appellants’ application relates to creating relationship maps from
enterprise application system data. Abstract. Claim 1 is illustrative of the
appealed subject matter and reads as follows:
1. A computer-implemented method for creating a relationship
map using enterprise application system (EAS) data for an
enterprise, comprising:
at a processor, automatically collecting relationship data
from at least one EAS module; and
at the processor, generating a relationship map from the
collected relationship data, the relationship map comprising a
visualization of relationships for a selected employee to at least
one other person using a relationship link, wherein the presence
of the relationship link on the map is based on one or more
instances of a relationship from the relationship data;
the at least one EAS module comprising a human
resources (HR) module and a customer relations management
(CRM) module;
the relationship data comprising HR data that comprises a
hierarchical relationship of employees of the enterprise that work
together from the HR module, and CRM data that comprises
employees that share a common customer from the CRM
module, wherein a first instance of a relationship is generated
between the selected employee and the person when the selected
employee works in the same department with the person based
on the HR data, wherein a second instance of a relationship is
generated between the selected employee and the person when
the selected employee works as a supervisor of the person based
on the HR data, and wherein a third instance of a relationship is
generated between the selected employee and the person when
the selected employee shares a common customer with the
person based on the CRM data; and
at the processor, weighting the relationship link between
the selected employee and the person, wherein the weighting is
based on a frequency of instances of relationships between the
selected employee and the person.
2
Appeal 2016-004812
Application 12/167,661
REJECTIONS
Claims 1—25 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1—25 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
Claims 1—25 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Robins (US 2005/0267887 Al; published Dec. 1,
2005) and Isaacs et al. (US 6,832,245 Bl; Dec. 14, 2004).
ANALYSIS
Rejection of Claims 1—25 under 35 U.S.C. § 112, First Paragraph
The Examiner rejected claims 1—25 for lack of written description
because the Specification fails to support the recited “weighting” limitations.
Final Act. 2. In particular, the Examiner found that the Specification “fails
to support how the weight being based on the number of generated instances
of relationships,” and “[o] ne is not able to identify or understand how a
‘frequency’ of the relationships is weighted.” Id. at 3.
Appellants contend the Examiner erred because the disputed
“weighting” limitation is supported by paragraphs 18 and 19 of the
Specification. App. Br. 3. We agree. In paragraph 18, there are two
examples of how weights may be based on the frequency of the relationship
data: (1) “employees who email each other frequently will have a stronger
weight in their relationship link than employees who email each other
infrequently,” and (2) “employees who work on the same projects frequently
will have a stronger weight in their relationship link than employees who
work on the same projects infrequently.” Spec. 118. The Specification
3
Appeal 2016-004812
Application 12/167,661
describes that a Relationship Management module collects relationship data
from Email Server 150, and that this relationship data may include instances
of emails between two employees or the frequency with which they
exchange emails. Spec. 114. Thus, even in the absence of numerical
examples of the weighting, we agree with Appellants that such disclosure is
sufficient to show possession at the time of invention as to how the
relationships are weighted. See Reply Br. 2.
Accordingly, we do not sustain the Examiner’s rejection of claims 1—
25 under 35 U.S.C. § 112, first paragraph, for lack of written description.
Rejection of Claims 1—25 under 35 U.S.C. § 101
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: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
BankInt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts,” id., e.g., to an abstract
idea. If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered “individually and ‘as an ordered combination’” to
4
Appeal 2016-004812
Application 12/167,661
determine whether there are additional elements that ‘“transform the nature
of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355
(quoting Mayo, 132 S. Ct. at 1297).
The Court acknowledged in Mayo that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
The Examiner found that claims 1—25 are directed to the abstract idea
of relationships between individuals within an organization (Ans. 9) and do
not recite limitations that are “significantly more” than this abstract idea
because the additional elements or combination of elements in the claims
amount to no more than a processor and software modules (id. at 10).
Each of independent claims 1, 13, 18, and 22 requires in one form or
another these limitations, viz. 1) automatically collecting relationship data
from at least one EAS module; 2) generating a relationship map from the
collected relationship data; and 3) weighting the relationship link between
the selected employee and the person. App. Br. 13 (Claim 1).
Applying the framework set forth in Alice, and as the first step of that
analysis, we agree with the Examiner that claim 1 is directed to an abstract
idea (Ans. 9). The steps recited in claim 1 involve nothing more than
collecting data, i.e., information about the relationships between employees
in an organization; analyzing the data, i.e., to identify instances of a
relationship; generating a map; and categorizing/displaying the relationship
5
Appeal 2016-004812
Application 12/167,661
by weighting the relationship link on the map. In this regard, we agree with
the Examiner that the steps of claim 1 are similar to the steps that the Federal
Circuit determined were patent ineligible in Content Extraction &
Transmission v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014) and
Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App’x 988
(Fed. Cir. 2014) (non-precedential) (Ans. 9—10), and more recently, in
Electric Power Grp. LLC v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016).
In Content Extraction, the Federal Circuit considered the patent
eligibility of a method claim for “processing information from a diversity of
types of hard copy documents.” Content Extraction, 116 F.3d at 1345.
Applying step one of the Alice framework, the Federal Circuit determined
that the claim was “drawn to the abstract idea of 1) collecting data, 2)
recognizing certain data within the collected data set, and 3) storing that
recognized data in a memory”—concepts that the court noted were
“undisputedly well-known.” Id. at 1347.
In Cyberfone, the court evaluated a method claim reciting steps that
required “obtaining data, ‘exploding’ the data, i.e., separating it into
component parts, and sending those parts to different destinations.”
Cyberfone, 558 F. App’x at 990. The Federal Circuit held that this claim
involved an abstract idea, explaining that “using categories to organize,
store, and transmit information is well-established” and that “the well-
known concept of categorical data storage, i.e., the idea of collecting
information in classified form, then separating and transmitting that
information according to its classification, is an abstract idea that is not
patent-eligible.” Id. at 992.
6
Appeal 2016-004812
Application 12/167,661
In Electric Power, the method claims at issue were directed to
performing real-time performance monitoring of an electric power grid by
collecting data from multiple data sources, analyzing the data, and
displaying the results. Elec. Power Grp., 830 F.3d at 1351—52. There, the
Federal Circuit held that the claims were directed to an abstract idea because
“[t]he advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions.”
Id. at 1354.
Similarly here, we find that claim 1 involves nothing more than
collecting data, analyzing the data, and categorizing users as belonging to a
particular category based on the analyzed data—fundamental activities
squarely within the realm of abstract ideas. See id. at 1353—54
(characterizing collecting information, analyzing information by steps
people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas).
Turning to the second step of the Alice analysis, similar to the
situation in Electric Power, we find nothing sufficient to remove the claims
from the class of subject matter ineligible for patenting. As the court
explained in Electric Power, “merely 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.” Id. at 1355.
7
Appeal 2016-004812
Application 12/167,661
There is no indication in the record that any specialized computer
hardware or other “inventive” computer components are required in claim 1.
Claim 1 merely employs generic computer components to perform generic
computer functions, i.e., collecting, storing, and processing information,
which is not enough to transform an abstract idea into a patent-eligible
invention.
Appellants argue that claim 1 necessarily contains an “inventive
concept” because “[t]he technology transforms the seemingly unrelated data
to generate a user interface that easily illustrates relationships that were
unknown using manual methods.” Reply Br. 6—7 (citing DDR Holdings,
LLCv. Hotels.com, 773 F. 3d. 1245 (Fed. Cir. 2014)). We disagree. In
DDR Holdings, the Federal Circuit found that the claims were directed to
patentable subject matter because they “specify how interactions with the
Internet are manipulated to yield a desired result—a result that overrides the
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink.” DDR Holdings, 773 F.3d at 1258. Significantly, the
Federal Circuit identified this limitation as differentiating from claims that
“recite a commonplace business method aimed at processing business
information, applying a known business process to the particular
technological environment of the Internet, or creating or altering contractual
relations using generic computer functions and conventional network
operations” and were, thus, found directed to patent-ineligible subject
matter. Id. at 1258—59.
Here, claim 1 does not purport to improve the functioning of the
computer system itself. Nor does it effect an improvement in any other
technology or technical field. Instead, claim 1 amounts to nothing
8
Appeal 2016-004812
Application 12/167,661
significantly more than an instruction to implement the abstract idea of
“relationships between individuals within an organization” using generic
computer components. This is insufficient to transform an abstract idea into
a patent-eligible invention.
Moreover, that the claims do not preempt all forms of the abstraction
does not make them any less abstract. See Reply Br. 7; see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360—1361 (Fed. Cir. 2015).
For these reasons, we affirm the Examiner’s 35 U.S.C. § 101 rejection
of claim 1, as well as claims 2—25, not argued separately.
Rejection of Claims 1—25 under 35 U.S.C. § 103(a)
In rejecting claim 1 for obviousness, the Examiner found that Robins
teaches or suggests all of the limitations of claim 1, except collecting
information from email servers and the limitation “wherein the weighting is
based on a frequency of instances of relationships between the selected
employee and the person.” See Final Act. 5—8. The Examiner relied on
Isaacs as teaching or suggesting those limitations. Id.
Appellants contend the Examiner erred because the cited portions of
Robins do not teach the novel instances of relationships recited in the claims.
App. Br. 8—9. In particular, Appellants argue that Robins does not teach the
limitation “wherein a third instance of a relationship is generated between
the selected employee and the person when the selected employee shares a
common customer with the person based on the CRM data,” recited in claim
1. Id.
Appellants’ arguments do not persuade us of Examiner error. The
Examiner found that Figure 3 of Robins teaches relationships between sales
managers and sales agents who are in a boss/employee relationship, and
9
Appeal 2016-004812
Application 12/167,661
between sales agents who work in the same departments, and between sales
managers/agents and purchasing managers/agent who work with the same
customers. Ans. 12. Furthermore, the Examiner concluded that, under a
broad, but reasonable, interpretation, claim 1 requires only one relationship
link and one instance of the types of relationships recited in the claim. Id. at
13.
Appellants have not persuasively shown that the Examiner’s
interpretation of claim 1 is overly broad, unreasonable, or inconsistent with
the Specification. Instead, Appellants argue in a conclusory manner that
“[a]ll instances must be determined as claimed, regardless that the
relationship link is based on only ‘one or more instances of a relationship.’”
Reply Br. 4. Moreover, Appellants have not addressed what the portions of
Robins cited by the Examiner would have suggested to an artisan of ordinary
skill. See App. Br. 9—11. The test for obviousness is not whether the
claimed invention is expressly suggested in any one or all of the references,
but whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Robins and Isaacs teaches or suggests the
limitations of claim 1.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claim 1, as well as the 35 U.S.C. § 103(a) rejection of
independent claims 13, 18, and 22, which Appellants argue are patentable
for similar reasons. App. Br. 11. We also sustain the Examiner’s rejection
10
Appeal 2016-004812
Application 12/167,661
of dependent claims 2—12, 14—17, 19-21, and 23—25, for which Appellants
make no separate arguments for patentability. Id. at 11—12.
DECISION
We reverse the decision of the Examiner rejecting claims 1—25 for
lack of written description.
We affirm the decision of the Examiner rejecting claims 1—25 as
directed to non-statutory subject matter.
We affirm the decision of the Examiner rejecting claims 1—25 for
obviousness.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1—25 is
affirmed. See 37 C.F.R. § 41.50(a)(1).
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).
AFFIRMED
11