Ex Parte Morinville

Patent Trial and Appeal Board

Aug 31, 2017

13244561 (P.T.A.B. Aug. 31, 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.
13/244,561 09/25/2011 Paul V. Morinville IBIGl 100-16 7379
42671 7590 08/31/2017
LAW OFFICES OF MARK L. BERRIER
1715 S. Capital of Texas Hwy. Suite 200-E
Suite 200-E
AUSTIN, TX 78746
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
08/31/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL V. MORINVILLE
Appeal 2016-003311
Application 13/244,5611
Technology Center 3600
Before DEBRA K. STEPHENS, ADAM J. PYONIN, and
DAVID J. CUTITTAII, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Introduction
The Application is directed to “systems and methods for automating
and increasing the efficiency of business processes using a role structure
1 The real party in interest is identified as Paul V. Morinville. See App.
Br. 4.
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Application 13/244,561
which is preferably hierarchical.” Spec. 119. Claims 1, 8, and 15 are
independent. Claim 1 is reproduced below for reference (emphasis added):
1. A method comprising computer-implemented
automatic steps including:
a business processor engine in a computer receiving a user
request for access to a business process and initiating a first event
in response to the user request;
the first event initiating one or more secondary events,
wherein each of the secondary events has a plurality of states that
are maintained by the computer and wherein each of the plurality
of states has an associated status that is maintained by the
computer, and wherein one or more of the first event and
secondary events access data stored in a data source coupled to
the business processor engine;
the first event monitoring the state and associated status
of each of the secondary events while the first event and
secondary events are pending; and
the first event controlling access by the user to the business
process based on the state and associated status of each of the
secondary events.
References and Rejections
Claims 1—20 stand rejected under 35 U.S.C. § 101 for being directed
to patent-ineligible subject matter. Final Act. 2.
Claims 1—5, 7—12, and 14—19 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Elkin (US 2001/0044738 Al; Nov. 22, 2001). Final
Act. 3.
Claims 6, 13, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Elkin and Kim (US 2002/0065701 Al; May 30, 2002).
Final Act. 8.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
A. 35U.S.C.§ 101
Appellant does not separately argue the claims with respect to the
35 U.S.C. § 101 rejection. See App. Br. 12. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(l)(iv).
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: “[ljaws of nature, natural phenomena, and abstract ideas” are not
patentable. See Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347,
2354 (2014) (internal citation and quotation marks omitted). The Supreme
Court, in Alice, reiterated the two-step framework previously set forth in
Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 79
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those 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,” e.g., to an abstract idea. Id. If the
claims are directed to a patent-ineligible concept, the inquiry proceeds to the
second step, where the elements of the claims are considered “individually
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and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. at 79, 78).
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, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology, or instead are 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).
Appellant argues “the Examiner has given a conclusory opinion, but
has provided no evidence or showing to support the conclusion that the
claims recite only an abstract idea, which is insufficient to establish a prima
facie case of patent ineligibility.” App. Br. 16. Further, Appellant “submits
that the recited interaction with the user, particularly the controlling of the
user’s access to the requested business process, goes beyond the abstract
idea,” as “controlling the user’s access to the business process in this manner
is significantly more than the abstract idea of executing a business process.”
Id. at 14—15.
We are not persuaded the Examiner errs. In rejecting the claims under
35 U.S.C. § 101, the Examiner finds the claimed invention is unpatentable
pursuant to the two-step framework of Alice. See Ans. 5—6. The Examiner
finds the claimed invention is directed to the abstract idea of “controlling
access by a user to a business process,” which is “similar to concepts
involving organizing information . . . that have been found by the courts to
be abstract ideas.” Ans. 5. The Examiner further finds the “claim(s)
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does/do not include additional elements that are sufficient to amount to
significantly more that the judicial exception” (Final Act. 2), as the claims
do not recite “any improvement to another technology or technical field, or
the functioning of the computer itself. Moreover, there are not any
meaningful limitations beyond generally linking the abstract idea to a
particular technological environment, i.e., implementation via a computer
system” (Ans. 6). We agree with, and adopt as our own, the Examiner's
findings and analysis with respect to 35 U.S.C. § 101. See Final Act. 2—3;
Ans. 4—7.
In particular, Appellant does not persuade us the Examiner’s analysis
is in error. Our reviewing court has held certain fundamental economic and
conventional business practices to be abstract ideas. See, e.g., Accenture
Global Services, GmbHv. Guidewire Software, 728 F.3d 1336, 1344 (Fed.
Cir. 2013) (generating task based rules based on an event); Intellectual
Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir.
2015) (tailoring information presented to a user based on specific
conditions); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362
(Fed. Cir. 2015) (Methods of offer-based price optimization in an e-
commerce environment); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1333 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 2510, 195 L. Ed. 2d 841
(2016) (using organizational and product group hierarchies to determine a
price); Prism Techs. LLC v. T-Mobile USA, Inc., No. 2016-2031, 2017 WL
2705338, at *1-2 (Fed. Cir. June 23, 2017) (non-precedential) (providing
restricted access to resources.). We agree with the Examiner that the claims
of the present application are directed to a business practice, which is
similarly abstract: claim 1, for example, recites a computer implemented
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method which “controls] access by the user to the business process based
on the state and associated status of each of the secondary events.” See Final
Act. 9—10.2 Thus, we do not find the Examiner errs in determining claim 1
is abstract. See id.
We are also not persuaded claim 1 recites elements that transform the
nature of the claim into a patent-eligible application. As correctly noted by
the Examiner, “the data [of the claims] is merely being monitored,” and “no
more than a software platform, performing generic computer functions that
are well-understood, routine, and conventional activities previously, known
to the pertinent industry, is required by the claims.” Ans. 6. That an abstract
idea may be described in greater detail does make the idea any less abstract.
The limitations comprise, at most, insignificant post-solution activities that
do not support the invention having an inventive concept. See, e.g., Mayo,
566 U.S. at 72—73 (“[T]he prohibition against patenting abstract ideas cannot
be circumvented by . . . adding insignificant post-solution activity”) (internal
citations and quotation marks omitted); see also Intellectual Ventures ILLC
v. Erie Indent. Co., 850 F.3d 1315, 1328—29 (Fed. Cir. 2017) (“[w]hile
limiting the index to XML tags certainly narrows the scope of the claims, in
this instance, it is simply akin to limiting an abstract idea to one field of use
or adding token post solution components that do not convert the otherwise
ineligible concept into an inventive concept”).
2 This finding is fully consistent with the Specification. See, e.g., Spec. 14
(“organizations must efficiently control the way people, resources and
information technology interact. This can be referred to as Business Process
Management (BPM)”), 135 (“Various rights (e.g., access rights or
authorization rights) are associated with the different roles or levels to
enable positions which are associated with the roles to have particular access
to certain business processes (e.g., purchasing or hiring)”).
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Additionally, although Appellant contends “the claims do not risk
disproportionately tying up all applications of the underlying idea of
controlling access by a user to a business process,” Appellant has not
provided persuasive evidence or reasoning to support these arguments.
Reply Br. 5. That is, Appellant describes the claim recitations, but has not
adequately explained why claim 1 does not preempt the identified abstract
idea. See id.', App. Br. 15. In any event, even if we were to agree that claim
1 does not attempt to preempt every application of the idea, such fact would
not necessarily make the claim patent eligible. See Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.”); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (“[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). For the above reasons, we agree with the Examiner that the
claims do not include limitations that quality as significantly more than the
abstract idea. See Ans. 7.
Accordingly, we agree with the Examiner that the claims are directed
to an abstract idea, and fail to recite inventive concepts sufficient to
transform the abstract idea into a patent eligible invention. See Ans. 4—7.
B. 35U.S.C.§ 102
Appellant argues the Examiner erred in finding Elkin discloses the
limitations of claim 1, because “Elkin does not disclose [] that the first
event/process monitors the second event/process while both events/processes
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are still pending.” App. Br. 20. Appellant argues that, rather, Elkin
discloses “that the first event/process (process 120) is M?71_still pending at
the same time as the second event/process (event 102, a.k.a. result 106).
Because the first event/process has completed, it cannot monitor the state of
the second event/process as recited in the claim.” Id.
We are persuaded by Appellant’s arguments. Claim 1 requires
controlling access to a business process based on first and secondary events,
with the first event monitoring the secondary event. The Examiner finds
Elkin discloses the recited first and secondary events, because Elkin states
“[e]ach process 120 is triggered by an event 102,” and “[i]n addition to
being triggered by an event 102, each process 120 also creates a new event
102 when the process 120 is completed.” Final Act. 4 (citing Elkin 144).
The Examiner further finds Elkin discloses the first event monitoring the
secondary event, because Elkin discloses “the process server 500 must
maintain the status of each process 120 and task 130.” Ans. 8 (citing Elkin
11 174, 201). However, the Examiner does not identify, nor do we find, that
Elkin discloses a secondary event monitored by a first event. Thus, we are
persuaded that Elkin does not disclose every element of the claimed
invention. See Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed.
Cir. 1989) (“Every element of the claimed invention must be literally
present, arranged as in the claim.”); see also App. Br. 19-20.
Therefore, based on the record before us, we are persuaded the
Examiner has not established that Elkin discloses “the first event monitoring
the state and associated status of each of the secondary events,” as recited by
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independent claim 1. Independent claims 8 and 153 recite similar limitations
which we find similarly not disclosed by the reference. We do not sustain
the Examiner’s rejection of these claims, or the claims that depend
therefrom.
DECISION4
The Examiner’s decision rejecting claims 1—20 under 35 U.S.C. § 101
is affirmed.
The Examiner’s decision rejecting claims 1—20 under 35 U.S.C.
§§ 102(e) and 103 is reversed.
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
3 We note claim 15 recites the monitoring step without including “while the
first event and secondary events are pending,” unlike independent claims 1
and 8.
4 Should there be further prosecution, the Examiner may wish to consider
whether the independent claims are indefinite (e.g., how the event (such as a
business process request) monitors a state or status) under 35 U.S.C. § 112.
The Examiner may further consider whether sufficient written description as
required under 35 U.S.C. § 112, is present in the Specification for “the first
event monitoring the state and associated status of each of the secondary
events,” as recited in claims 1 and 15 and similarly recited in claim 8, which
Appellant identifies as being described in paragraphs 31, 40 49, and 57 of
the Specification. See App. Br. 8.
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