Ex Parte Mirlas et al

Patent Trial and Appeal Board

Apr 21, 2016

11340057 (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111340,057 01/26/2006
46320 7590 04/25/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Lev Midas
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.
CA920050 l l 9US 1 8937
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
04/25/2016 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@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEV MIRLAS,
JACOB VANDERGOOT, and XIA ZHANG
Appeal2013-010320
Application 11/340,057 1
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE WIEDER, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 1, 2, 6-8, 12-14, 18, and 19. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART the Examiner's prior rejections.
We also enter a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 According to the Appellants, the real party in interest is International
Business Machines Corporation. Appeal Brief filed February 28, 2013,
hereinafter "App. Br.," 2.
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Application 11/340,057
BACKGROUND
The invention relates to execution of business events in a business
system directed to conversion of asynchronous business events to
synchronous business events. Specification, hereinafter "Spec.," i-f 1. It is
an object of the invention to avoid conflicts in processing business events.
Id. i-f 4.
Representative claim 1 is reproduced from page 15 of the Claims
Appendix of the Appeal Brief (Claims App'x) as follows, with emphasis
added to relevant claim limitations:
1. A computer-implemented method for processing business
events in a business system, the computer-implemented method
compnsmg:
receiving a first business event in the business system;
establishing the first business event as a first asynchronous
business event;
receiving in the business system a second business event after
receiving the first business event but before the first business
event being processed, wherein processing of the second
business event depends on processing of the first business
event; and
converting the first asynchronous business event to a first
synchronous business event upon receiving the second business
event.
In a Final Rejection, the Examiner rejects claims 1, 2, 6, and 19 under
35 U.S.C. § 101 as directed to nonstatutory subject matter and claims 1, 2,
6-8, 12-14, 18, and 19 under 35 U.S.C. § 102(b) as anticipated by
2
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Application 11/340,057
Richardson2. Final Action mailed October 1, 2012, hereinafter "Final Act.,"
2-6; see, also, Answer mailed June 24, 2013, hereinafter "Ans.," 4--8.
DISCUSSION
Rejection of Claims 1, 2, 6, and 19 under 35 US.C. § 101, nonstatutory
subject matter
To provide context, 35 U.S.C. § 101 provides that a new and useful
"process, machine, manufacture, or composition of matter" is eligible for
patent protection. The Supreme Court has made clear that the test for patent
eligibility under Section 101 is not amenable to bright-line categorical rules.
See Bilski v. Kappas, 130 S. Ct. 3218, 3229-30 (2010). There are, however,
three limited, judicially-created exceptions to the broad categories of patent-
eligible subject matter in § 101: laws of nature; natural phenomena; and
abstract ideas. See Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1293 (2012).
In Alice Corporation Pty, Ltd. v. CLS Bank International; 134 S. Ct.
2347 (2014), the Supreme Court reiterated the framework set forth
previously in Mayo, "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Id. at 2355 (citation omitted). Under Alice,
the first step of such analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. (citation omitted). If
determined that the claims are directed to a patent-ineligible concept, the
second step in the analysis is to consider the elements of the claims
"individually and 'as an ordered combination'" to determine whether the
2 US Publication 2004/0083263 Al, published April 29, 2004.
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Application 11/340,057
additional elements "'transform the nature of the claim' into a patent-eligible
application." Id. (citing Mayo, 132 S. Ct. at 1291, 1297). In other words,
the second step is to "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."' Id. (citing Mayo, 132 S. Ct. at 1294).
With this context in mind, we evaluate the Examiner's rejection of the
claims at issue.
Claims 1, 2, 6, and 19 are directed to a method of receiving and
managing business events. The Examiner finds that the claims recite an
abstract idea and the claims are a mere statement of a general concept.
Ans. 4. The Examiner finds that the steps lack recitation of a machine or
transformation and/or may be done manually or mentally. 3 Id. at 9. We
agree. The claims are directed to receiving and managing business events,
with the Specification disclosing that
[a] business event is a step in a business flow or a
business event that initiates a step in a business
flow. For example, a business system can be
adapted to implement a business flow that includes
receiving an order for a product, charging a
customer account a fee for the product, and
shipping the product to the customer. Receiving
an order, charging a customer, and shipping the
product each can be a business event.
3 The Answer includes an additional discussion (Ans. 10) that refers to the
conversion of synchronous events. Although we do not find the Examiner's
interpretation of "synchronous" to be accurate in light of the Appellants'
special definition of the term (see 35 U.S.C. § 102(b) discussion, infra), that
issue is irrelevant to the Examiner's finding of an abstract idea.
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Spec. ,-r 2.
The Specification describes business events as being "synchronous"
or "asynchronous." As discussed, infra, in the section on anticipation, the
Appellants have provided their own definition for the term "synchronous
business event" as being a business event "for which execution is performed
immediately." Spec. i-fi-13, 48. We note also that the Specification provides
a definition for the term "asynchronous business event" as a business event
"for which execution may be deferred." Spec. i-fi-13, 45.
The Appellants contend that the claimed method is drawn to a specific
way of doing something with a computer, cannot be performed manually or
mentally, and is, therefore, more than merely an abstract idea. App. Br. 8;
Reply Brief mailed August 24, 2013, hereinafter "Reply Br.," 3--4.
Although the Appellants assert that the steps cannot be performed manually
or mentally, we find that the Appellants fail to provide any evidence to
support that assertion. 4 Looking at the claimed steps of "receiving,"
"establishing," and "converting," a person could, for instance, receive a first
business event (like a verbal instruction for a customer order), decide
[establish] that the execution of the order could be deferred, receive a second
dependent business event (such as a verbal request to install the item
previously ordered), and then revise [convert] the status of the first business
event (the order) to execute it immediately (such as shipping the ordered
items or materials), and these steps could be reasonably accomplished by
4 It is well settled that arguments of counsel cannot take the place of
factually supported objective evidence, and Appellants have provided no
such evidence. See, e.g., In re Huang, 100 F.3d 135, 139--40 (Fed. Cir.
1996).
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mental or manual steps only. Our reviewing court has found that if a method
can be performed by human thought alone, or by a human using pen and
paper, it is merely an abstract idea and is not patent-eligible under § 101.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) (" ... a method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under§ 101.").
Additionally, mental processes remain unpatentable even when automated to
reduce the burden on the user of what once could have been done with pen
and paper. Id. at 1375 ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalkv. Benson, [409 U.S. 63 (1972)].").
Regarding the second step of the Alice analysis, we do not find that
the claims are directed to significantly more than an abstract idea. The
Appellants argue that an application of an abstract idea may well be
deserving of patent protection, but fail to provide any evidence that this is
the case here. See App. Br. 6-7.
The Appellants additionally argue that the Examiner was required to
provide evidentiary support that the claims were directed to an abstract idea.
App. Br. 7-8. Contrary to the Appellants' assertion, we find that the
Examiner was not required to proffer additional extrinsic evidence in
support of the findings. See, e.g., Mortgage Grader, Inc. v. First Choice
Loan Servs. Inc., 811F.3d1314, 1325 (Fed. Cir. 2016).
New Grounds of Rejection of Claims 7, 8, 12-14, and 18 under 35 US. C.
§ 101, nonstatutory subject matter
Independent claims 7 and 13 are directed to, respectively, a "computer
program product" and "data processing system," that perform similar steps
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to those of claim 1. Regardless of what statutory category ("process,
machine, manufacture, or composition of matter," (35 U.S.C. § 101) a
claim's language is crafted to literally invoke, we look to the underlying
invention for patent-eligibility purposes. In CyberSource, the Federal
Circuit determined that the invention underlying both a method claim and a
manufacture claim was a method for detecting credit card fraud and, despite
the different formatting of the two claims, treated both claims as process
claims "for patent-eligibility purposes." CyberSource Corp, 645 F.3d at
13 7 4--7 5. In reaching that determination, the Federal Circuit referred to
In re Abele, 684 F.2d 902 (CCPA 1982), where a court refused to treat a
claim that recited "an '[a]pparatus for displaying data"' as an apparatus
claim because to do so would "'exalt form over substance since the claim
[was] really to the method or series of functions itself." Id. at 13 7 4 (quoting
Abele, 684 F .2d at 909).
Here, we find no meaningful differentiation between method claim 1
and independent apparatus claims 7 and 13 because they are directed to the
same underlying invention, and, therefore, we enter a rejection of these
claims under § 101. The Federal Circuit has held that it is "clear that the
basic character of a process claim drawn to an abstract idea is not changed
by claiming only its performance by computers, or by claiming the process
embodied in program instructions on a computer readable medium."
CyberSource, 645 F.3d at 1375-76 (citing In re Abele, 684 F.2d 902 (CCPA
1982)). Moreover, we do not find that dependent claims 8, 12, 14, and 18
include any additional elements that are patent-eligible, and enter a new
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ground of rejection for them under § 101 on the same basis as the
independent claims they depend from.
Rejection of Claims 1, 2, 6-8, 12-14, 18, and 19 under 35 US.C. § 102(b)
The Appellants argue that although Richardson teaches preserving
causality and ensuring convergence, it does not disclose converting an
asynchronous event to one whose execution is performed immediately.
App. Br. 10, 12, 13; Reply Br. 6-7. The Examiner finds that Richardson's
teaching of preserving causality and ensuring convergence teaches the
claimed conversion step, because the claims provide "no requirement that
the 'execution is performed immediately,"' but merely occurs "upon
receiving the second business event." Ans. 12-13.
When the specification, "reveal[ s] a special definition given to a claim
term by the patentee that differs from the meaning it would otherwise
possess[,] ... the inventor's lexicography governs." Phillips v. AWH Corp.,
415 F.3d 1303, 1316 (Fed. Cir. 2005) (en bane). Here, the Specification
explicitly defines "synchronous business event" as one "for which execution
is performed immediately." Spec. i-f 3, 48. Considering this definition, we
find that the evidence relied upon by the Examiner is insufficient to
demonstrate a teaching of the conversion to a "first synchronous business
event." We cannot, therefore, sustain the rejection of claims 1, 2, 6-8, 12-
14, 18, and 19 under 35 U.S.C. § 102(b).
SUMMARY
The rejection of claims 1, 2, 6, and 19 under 35 U.S.C. § 101 is
affirmed.
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The rejection of claims 1, 2, 6-8, 12-14, 18, and 19 under 35 U.S.C.
§ 102(b) is reversed.
We have entered a new ground of rejection for claims 7, 8, 12-14, and
18 under 35 U.S.C. § 101. Section 41.50(b) provides that "[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review." Thus, WITHIN TWO MONTHS FROM THE DATE OF
THE DECISION, Appellants must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of the
appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the Examiner; or
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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-IN-PART; 37 C.F.R. § 41.50(b)
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