Ex Parte Oberhofer et al

Patent Trial and Appeal Board

Jun 26, 2017

13431677 (P.T.A.B. Jun. 26, 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.
13/431,677 03/27/2012 Martin A. Oberhofer CAM920110029US2/00275 5551
67046 7590
HOLLAND & KNIGHT
10 ST. JAMES AVENUE
BOSTON, MA 02116-3889
06/28/2017 EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
patentdocketing @hklaw.com
toni.sousa@hklaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN A. OBERHOFER, CARL M. MARRELLI,
RAM S. NARAYANAN, and SOLMAZ RASHIDI
Appeal 2016-007079
Application 13/431,677
Technology Center 3600
Before JOHN A. EVANS, JAMES W. DEJMEK, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—7 and 25. Br. 6.2 Claims 8—24 have been canceled.
Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as International Business
Machines Corporation. Br. 4.
2 Throughout this opinion, we refer to (1) the Final Rejection (“Final Act.”)
mailed August 10, 2015, (2) the Appeal Brief (“Br.”) filed January 8, 2016,
and (3) the Examiner’s Answer (“Ans.”) mailed May 6, 2016.
Appeal 2016-007079
Application 13/431,677
THE INVENTION
Appellants’ invention relates to managing conflicting functional data
requirements across business processes. See Spec. 11. Examples of
business processes include order-to-cash, procurement-to-pay, supply-chain
processing, record to report, and manufacturing. Id. 138. The invention
generates a conflict report for these business processes. Id. 1 6. One
embodiment identifies potential conflicts by comparing an attribute or field
to an ontology associated with the two or more business processes. Id. 1 59.
Claim 1, reproduced below, is representative of claims 1 and 25
(Br. 14) and dependent claims 2—7, which are not argued separately (see
id. at 14—19):
1. A method comprising:
receiving, by a computing device, a request to generate a
conflict report for two or more business processes;
processing, by the computing device, a business object of
one of the two or more business processes to identify at least one
table;
parsing, by the computing device, the at least one table to
identify at least one attribute associated with the one of the two
or more business processes;
identifying, by the computing device, existing entries in an
ontology for the at least one attribute of the two or more business
processes by comparing the at least one attribute to the ontology
associated with the two or more business processes;
comparing, by the computing device, metadata of the
existing entries in the ontology and the at least one attribute to
identify a conflicting data requirement between the existing
entries and the at least one attribute, wherein a potential conflict
is identified when the metadata between the existing entries in
the ontology and the at least one attribute includes a same
meaning and the data requirement between the existing entries
and the at least one attribute is different, wherein a link is created
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between the existing entries and the at least one attribute based
on, at least in part, the identified potential conflict;
generating, by the computing device, the conflict report
for the two or more business processes comprising the
conflicting data requirement between the existing entries and the
at least one attribute; and
automatically resolving, by the computing device, the
conflicting data requirement between the existing entries and the
at least one attribute.
THE REJECTIONS
Claims 1—7 and 25 stand rejected under 35U.S.C. § 101 as directed to
non-statutory subject matter. Final Act. 6—7.
ANALYSIS
The Examiner has rejected representative claim 1 under 35
U.S.C. § 101 because the claims as a whole do not amount to significantly
more than an abstract idea. Final Act. 6—7. For the reasons discussed
below, Appellants have not persuaded us of error. The Supreme Court’s
two-step framework guides our analysis. Alice Corp. Pty. Ltd. v. CLS Bank
Int7, 134 S. Ct. 2347, 2355 (2014).
I
According to step one, “[w]e must first determine whether the claims
at issue are directed to a patent-ineligible concept,” such as an abstract idea.
Id.
Appellants contend that the recited method is more than the concept
of comparing new and stored information using rules. Br. 15. In
Appellants’ view, the claim is not directed to “an idea of itself’ and that
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none of the concepts listed in the Examination Guidelines correspond to the
Examiner’s characterization of the claim. Id. at 15—16. Appellants argue
that even if the claim were directed to “an idea of itself,” there is no per se
rule that all methods of this kind are a judicially recognized exception.
Id. at 17.
Instead of using a definition of an abstract idea or “an idea of itself,”
as suggested by Appellants’ arguments (see id. at 15—17), “the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided.” Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility (July 30, 2015), p. 3,
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf (instructing examiners that “a claimed concept is not identified as
an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea.”). As part of this inquiry, we must “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 of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Here, the Examiner’s identified abstract idea (Final Act. 6) is
consistent with Appellants’ own description of the claimed advance over the
prior art. In particular, the Specification explains that businesses often
implement the same process in different ways. Spec. 12. These different
ways lead to inconsistent information capture. Id. For example, during a
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project’s blueprint phase, business teams work independently and define
functional data requirements differently. Id. 14. Previously, a data analyst
would detect conflicts through a cross-process examination of these data
definitions, which would be performed manually. Id.
Appellants’ invention generates a conflict report for these business
processes by using a computer for comparing data. Id. 1 6. The process
identifies a potential conflict when the data is different. Id. 1 65. In
particular, the data involved in the comparison includes the metadata of
entries in an ontology and an attribute. Id. In addition to the comparison,
the method receives a request, processes business objects, parses a table,
identifies data, generates a conflict report, and automatically resolves the
conflicting data requirement. Id. 9, 17, Figs. 4A, 4B. Consistent with
this disclosure, the focus of the claimed advance over the prior art is
automatically determining and managing these conflicting data requirements
across business processes—i.e., without requiring an analyst to detect
conflicts manually or by chance (see, e.g., id. 14).
The claims at issue here are similar to those that the Federal Circuit
found were “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.” See Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014). In Content Extraction,
the Federal Circuit explained that “[t]he concept of data collection,
recognition, and storage is undisputedly well-known,” and “humans have
always performed these functions.” Id. Also, like the steps of parsing,
identifying, comparing, and generating a report, as recited in claim 1, the
Federal Circuit has held that claims directed to collecting information,
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analyzing it, and displaying certain results of the collection and analysis
were directed to an abstract idea. Elec. Power, 830 F.3d at 1353—54.
Regarding claim 1 ’s recitation of specific data types, the Federal Circuit has
recognized that limiting information to particular content does not change its
character as information and is within the realm of abstract ideas. Id. at
1353. In light of these precedents, we agree with the Examiner that claim 1
is also “directed to” an abstract idea. See Final Act. 6—7.
Appellants argue that claim 1 has a particular concrete form—a
computing device. Br. 15. But claim 1 covers a sequence of steps
implemented on “a computing device,” similar to the claims found to be
abstract in Alice. See 134 S. Ct. at 2358. The focus of claim 1 is not on “an
improvement in computers as tools.” See Elec. Power, 830 F.3d at 1354.
Rather, the focus is on an independently abstract idea that uses a computer
as a tool in determining and resolving the conflicting data requirements. See
id.
II
Because the claim is directed to an abstract idea, we analyze the claim
under step two to determine if there are additional limitations that
individually, or as an ordered combination, ensure the claim amounts to
“significantly more” than the abstract idea. Alice, 134 S. Ct. at 2357. The
implementation of the abstract idea involved must be “more than the
performance of ‘well-understood, routine, [and] conventional activities
previously known to the industry.’” Content Extraction, 776 F.3d at 1347—
48 (quoting Alice, 134 S. Ct. at 2359).
Regarding step two, Appellants further contend that, even if a feature
of the claims includes a generic computer function, not all such functions are
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necessarily patent ineligible. Br. 19. According to Appellants, the claims at
issue go far beyond the alleged generic computer functions that courts have
recognized as well-understood, routine, and conventional. Id.
We are unpersuaded.
First considering the limitations individually, we agree with the
Examiner that the claims lack additional limitations to ensure that the claim
amounts to significantly more. See Final Act. 6—7. Specifically, the
receiving step, understood in light of the Specification, does not appear to
require anything other than off-the-shelf, conventional computers and a
network. See Spec. 137 (discussing a server and other networking
components). Likewise, the data recognition steps—i.e., processing,
parsing, identifying, and comparing data—involve techniques well-known in
the art. For example, the Specification discloses that candidate attributes can
be compared using fuzzy matching, dictionary matching, or regular
expression matching. Id. 1 59. In fact, Appellants explain that “fuzzy
matching 435, as is well-known in the art, may involve approximate string
matching rather than exact string matching.” Id. (emphasis added).
Notably, the claim is not limited to an improved matching process or
even a particular technical solution. Rather, the claim broadly recites
“comparing” the recited data. The limitations to the type of data processed,
parsed, identified, and compared only limit the claim to a particular
technological environment, which has been held to be insufficient. Alice,
134 S. Ct. at 2358.
The steps of conflict report generation and resolution, as broadly
recited, are like those taken by a data analyst using a manual examination of
the data. See Spec. 14. Specifically, the claim broadly recites that the
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report is generated by a computer and has additional limitations drawn to the
data’s features. The generation and resolution steps merely use the
computer as a tool to accelerate what can be done manually or mentally,
which is insufficient in this context.
Taken as a whole, the claimed steps are recited at a high level of
generality, with further limitations only to the data being acted upon.
Overall, apart from reciting that the method is performed “by a computing
device,” claim 1 does not recite additional computing components.
Accordingly, the claims here are more like those that abstractly cover results
where “it matters not by what process or machinery the result is
accomplished.” McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299,
1314 (Fed. Cir. 2016) (quoting O’Reilly v. Morse, 56 U.S. 62, 113 (1853)).
On this record, the Appellants have not shown the limitations individually,
or as an ordered combination, ensure that the claim amounts to “significantly
more” than the abstract idea.
Ill
Lastly, Appellants argue that the Examiner has not provided an
adequate rationale why each of these claim features—taken singly or as a
whole—should not be considered “significantly more.” Br. 18. But
contrary to Appellants’ arguments (see, e.g., id. at 12—14, 18), the Examiner
does not merely conclude that the claim is directed to an abstract idea.
Rather, by identifying the abstract idea and explaining that the claims are
directed to concepts found by the courts to be abstract (Final Act. 6—7; see
also Ans. 4), the Examiner has provided a reasoned rationale that identifies
the abstract idea recited in the claim and why it is considered an exception.
In this way, the Examiner has carried the procedural burden of establishing a
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prima facie case because the rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for rejection, together with
such information “as may be useful in judging of the propriety of continuing
the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011).
Therefore, Appellants have not persuaded us of error in the rejection
under 35 U.S.C. § 101 of representative claim 1 (Br. 14), or claims 2—7 and
25, which are not argued separately with particularity (see id. at 14—19).
DECISION
We affirm the Examiner’s rejection of claims 1—7 and 25.
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
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