Ex Parte Ramamurthy et alDownload PDFPatent Trial and Appeal BoardMar 15, 201813767223 (P.T.A.B. Mar. 15, 2018) Copy Citation 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. 13/767,223 02/14/2013 Ravi Ramamurthy 338014.01 5826 69316 7590 03/19/2018 MICROSOFT CORPORATION ONE MICROSOFT WAY REDMOND, WA 98052 EXAMINER JACOBS, EDWARD ART UNIT PAPER NUMBER 2159 NOTIFICATION DATE DELIVERY MODE 03/19/2018 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): u sdocket @ micro soft .com chriochs @microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAVI RAMAURTHY, SHRIRAGHAV KAUSHIK and DANIEL FABBRI1 Appeal 2017-009049 Application 13/767,223 Technology Center 2100 Before: ERIC S. FRAHM, JOHNNY A. KUMAR, and SCOTT E. BAIN, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—4 and 6—20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, Microsoft Technology Licensing, LLC is the real party of interest in this application. See App. Br. 3. Appeal 2017-009049 Application 13/767,223 Illustrative Claim Claims 1, 10, and 14 are independent. Claim 1 illustrates Appellants’ invention, as reproduced below: 1. A computer-implemented process for auditing data in a relational database accessed during execution of a SQL search query via a query execution plan to detect and report access to sensitive data, comprising: using a computer to perform the following process actions: inputting a SELECT trigger which specifies the sensitive data resident in said relational database that is to be monitored for access during execution of a SQL search query, and an action to be taken once execution of a SQL search query is completed if sensitive data has been accessed; during execution of each SQL search query presented to the relational database via its query execution plan, determining if a data record resident in a table that is designated as having sensitive data records therein has been accessed and that the accessed data record contributes to the result of the query, and reporting access to a data record in a table that is designated as having sensitive data records therein only if the accessed data record contributes to the result of the query; and upon completion of the execution of the SQL search query, performing the action specified in the SELECT trigger whenever access to sensitive data was reported. 2 Appeal 2017-009049 Application 13/767,223 Rejections2 1. Claims 1—3, 6—7, 10-11, and 13 are rejected under pre-AIA 35 U.S.C. §103(a) as being unpatentable over Dettinger, et al, (US 2004/0088561 A 1; published May 6, 2004) (hereinafter “Dettinger”), and further in view of Martin Rennhackkamp, “Trigger Happy: A look at the many implementations of database triggersDBMS (1996), ("DBMS Online" version retrieved 16 March 2015) via Wayback Machine, https ://web. archive, org/ web/1999012807183 6/http ://www. dbmsm ag.com/9605dl7.html (last visited March 2018), pp. 1—5 (hereinafter “Rennhackkamp”)3. Final Act. 2—12. 2. Claims 4, 12 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dettinger, Rennhackkamp, and further in view of Karch, (US 2006/0041547 Al; published February 23, 2006). Final Act. 12-13. 3. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as being 2 Separate patentability is not argued for claims 2—\ and 6—9, 11—13, and 15— 20. As to claims 10 and 14, Appellants merely repeat for these claims similar arguments directed to claim 1. Except for our ultimate decision, these claims are not discussed further herein, and we select claim 1 as representative. 3 Copy on file at USPTO in application file for 13/767,223, Non Patent Literature dated 03/23/2015, cited in “Prior Art Made of Record” paragraph of an Office action dated Mar. 23, 2015. 3 Appeal 2017-009049 Application 13/767,223 unpatentable over Dettinger, Rennhackkamp and further in view of Bhaghavan, et al, (US 2008/0222708 Al; published September 11, 2008) (hereinafter “Bhaghavan”). Final Act. 13—15. 4. Claim 9 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dettinger, Rennhackkamp, Bhaghavanin and further in view of Dwyer, (US 4,769,772; issued September 6, 1988). Final Act. 15-17. 5. Claims 14, 18, 20 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dettinger, and Bhaghavan. Final Act. 17-20. 6. Claims 15—17 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dettinger, Bhaghavan, and Dwyer. Final Act. 20—23. 7. Claim 19 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dettinger, Bhaghavan, and Karch. Final Act. 23—24. 8. Claims 1-4, 6-20 are rejected under 35 U.S.C. §101 “because the claimed inventions are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more” (Ans. 3), i.e., for being patent- ineligible subject matter. 4 Appeal 2017-009049 Application 13/767,223 Grouping of Claims Based on Appellants’ arguments (App. Br. 11—27), we decide the appeal on the basis of representative claim 1. ANALYSIS We have considered all of Appellants’ arguments and any evidence presented. We disagree with Appellants’ arguments and we adopt as our own the findings, legal conclusions, and explanations, as set forth in the Answer (See Ans. 3—12) in response to Appellants’ arguments. App. Br. 11—27; Reply Br. 2—20. We highlight and address specific findings and arguments for emphasis in our analysis below. 1. Rejection under 35 U.S.C. § 101 A. 35 U.S.C. Section 101 Case Law Under 35 U.S.C. § 101, a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has long held that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S.Ct. 2347, 2354 (2014) (quoting Assoc, for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 590 (2013) (quotations omitted)). The “abstract ideas” category embodies the longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134 S.Ct. at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). In Alice, the Supreme Court sets forth an analytical “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those 5 Appeal 2017-009049 Application 13/767,223 concepts.” Alice, 134 S.Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 76—77 (2012)). The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” such as an abstract idea. Id. If 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 there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 78). 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. (quoting Mayo, 566 U.S. at 72). Turning to the first step of the Alice inquiry, we agree with the Examiner that independent claims 1,11, and 14 are directed to abstract ideas of “collecting and analyzing information to detect misuse and notifying a user when misuse is detected.” Ans. 3. The steps recited in Appellant’s method claim 1 include, for example: (i) data collection by querying a database (“execution of each SQL search query presented to the relational database”); (ii) analyzing the retrieved data to determine if any of it is sensitive (“determining if a data record resident in a table that is designated as having sensitive data records therein has been accessed”); if so, (iii) notifying a user of potential misuse by report, (“reporting access to a data record in a table that is designated as having sensitive data records”); and in addition to notification (iv) performing a task based on specified rules (“performing the action specified in the SELECT trigger whenever access to 6 Appeal 2017-009049 Application 13/767,223 sensitive data was reported).” All of the foregoing steps encompassthe abstract processes of collecting and analyzing information for recreating information. See Ans. 3^4. Claims 10 and 14 recite similar limitations. Information as such is intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007). Information collection and analysis, including when limited to particular content, is within the realm of abstract ideas. See, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). Turning to the second step of the Alice inquiry, we find nothing in method claim 1 and similarly, in claims 10 and 14, that adds anything “significantly more” to transform the abstract concept of collecting, analyzing, and recreating information into a patent-eligible application. Alice, 134 S.Ct. at 2357. Appellant contends “the SELECT trigger limitation of Claims 1 and 10 amounts to significantly more than an abstract idea.” Reply Br. 7. In particular, Appellant contends the Appellants’ [Specification describes how the accessed sensitive data contribution feature of Claims 1 and 10 is used to automatically determine if sensitive data residing in a relational database has been accessed, and report this sensitive data access only if the accessed sensitive data contributes to the result of the query. Accordingly, the Appellants’ [Specification includes a teaching "about how the claimed invention improves a computer or other technology" in accordance with the precepts of the McRO decision. Id. at 11—12. 7 Appeal 2017-009049 Application 13/767,223 Appellant further contends “[t]he audit operator limitation of Claim 14 similarly ‘improves a computer or other technology. ’” Reply Br. 15. The Examiner finds, and we agree “SELECT triggers are generic functions processed by database management systems ("DBMS").” Ans. 4. In particular, the Examiner finds Claim 1 ’s SELECT trigger is a computer process that is well- understood, routine, conventional, and generic mechanism by which certain kinds of data access rules are executed in a DBMS; claim 1 recites what the trigger does without inventive details of how it does it. Nothing is claimed about trigger technology that would improve the functioning of a computer or a DBMS. Id. at 5. The Examiner also finds, and we agree The audit operators [in claim 14] are like SELECT triggers, i.e., computer processes that are well-understood, routine, conventional, and generic mechanisms by which certain kinds of data access rules are implemented in a DBMS. Claim 14 recites where the audit operators are inserted into the query execution plan and what they do, which are details about the technological environment without an inventive concept of how they do it. Nothing is claimed that would improve the functioning of a computer or a DBMS apart from implementing the abstract idea. Id. at 5—6. We are thus unpersuaded by Appellant’s arguments. Our reviewing court guides that “[t]he abstract idea exception prevents patenting a result where ‘it matters not by what process or machinery the result is accomplished.’” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (2016) (quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). 8 Appeal 2017-009049 Application 13/767,223 Appellant’s arguments (Reply Br. 6—19) that the claims are similar to the claims in McRO, because the claims solve specific problems with SELECT trigger (see claims 1 and 10) or audit operator feature (claim 14) are not persuasive. Claims 1,10, and 14 do not recite a specific improvement to the way computers operate and Appellants do not present evidence to establish these claims recite a specific improvement to the computers. Unlike the claims in McRO, the claims in the present application fail to recite the technical details that describe the alleged improvement of the technical process of a SELECT trigger or audit operators. In particular, we agree with the Examiner that The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because none of the claims recite any unconventional steps or limitations but rather generally link the use of the exception to a particular technological environment, namely, a generic computer database management system ("DBMS"). The claims use a generic computer and DBMS as a tool to implement the abstract idea but do not include an improvement to another technology or technical field or to the functioning of the computer itself. Ans. 3. We further find none of Appellant’s arguments show that some inventive concept arises from the ordered combination of the claim elements in claims 1,10, and 14, which, even if true, would be unpersuasive given that they are ordinary steps in data analysis and are recited in the ordinary order. Instead, claims 1,10, and 14 simply incorporate a general-purpose computer for generic computer functions to perform the abstract concept of collecting and analyzing information. 9 Appeal 2017-009049 Application 13/767,223 As recognized by the Supreme Court, “the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent- eligible invention.” See Alice, 134 S.Ct. at 2351, 2359 (Concluding claims “simply instructing] the practitioner to implement the abstract idea of intermediated settlement on a generic computer” not patent eligible.); see also Ultramercial, 772 F.3d at 715—16 (Claims merely reciting abstract idea of using advertising as currency as applied to particular technological environment of the Internet not patent eligible.); Accenture Global Services, GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (Claims reciting “generalized software components arranged to implement an abstract concept [of generating insurance-policy-related tasks based on rules to be completed upon the occurrence of an event] on a computer” not patent eligible.); and Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible” (citation omitted)). Separately, we note that none of the claims 1,10, and 14 provides (1) a “solution [] necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” (DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)); (2) “a specific improvement to the way computers operate” (Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)); or alternatively (3) an “unconventional technological solution ... to a technological problem” that “improve[s] the performance of the system itself’ (Amdocs (Israel) Ltimited v. Openet Telecom, Inc., 841 F.3d 1288, 1302 (Fed. Cir. 2016). 10 Appeal 2017-009049 Application 13/767,223 Because Appellants’ claims 1,10, and 14 are directed to a patent- ineligible abstract concept and do not recite something “significantly more” under the second prong of the Alice analysis, we sustain the Examiner’s rejection of these claims as well as respective dependent claims 2—4, 6—9, 11—13, and 15—20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter in light of Alice and its progeny. 2. Obviousness Rejections We have reviewed the Examiner’s obviousness rejections of claims 1— 4 and 6—20 in light of Appellants’ contentions that the Examiner has erred. Appellants have presented several arguments (App. Br. 11—27; Reply Br. 2—5) as to why the combination of Dettinger and various references does not teach or suggest the features recited in independent claims 1,10, and 14. We have reviewed the Examiner’s response to Appellants’ arguments. The Examiner has provided on pages 8—12 of the Answer a comprehensive response to each argument presented by the Appellants. We have reviewed this response and concur with the Examiner’s findings and conclusions. We adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 3—25); and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. Ans. 8—12.4 In particular, we agree with the 4 Regarding the conditional “only if’ step of method claims 1 and 14, we note that conditional steps employed in a method claim need not be found in the prior art if, under the broadest reasonable interpretation, the method need not invoke those steps. See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792, at *4 (PTAB Apr. 28, 2016) (precedential) (Holding “[t]he Examiner did not need to present evidence of the obviousness of the 11 Appeal 2017-009049 Application 13/767,223 Examiner as our interpretation of the disclosure of Dettinger coincides with that of the Examiner. See Ans. 8—12. Further, we note that Appellants’ arguments about independent claims 1,10, and 14 in the Reply Brief (Reply Br. 2-4) are not commensurate with the scope of the claims because the claims do not recite “security violation.” Consequently, Appellants have not shown error in the Examiner’s rejections of claims 1—4 and 6—20. DECISION We affirm the Examiner’s rejection of claims 1—4 and 6—20 under 35U.S.C. § 101. We affirm the Examiner’s rejection of claims 1—4 and 6—20 as being unpatentable under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED remaining method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim.”) (hereinafter, “Schulhauser”); see also Ex parte Katz, No. 2010-006083, 2011 WL 514314, at *4—5 (BPAI Jan. 27, 2011). We note that Schulhauser applies only to method claims. 12 Copy with citationCopy as parenthetical citation