Ex Parte Ramamurthy et al

Patent Trial and Appeal Board

Mar 15, 2018

13767223 (P.T.A.B. Mar. 15, 2018)

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.
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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.
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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.
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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
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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
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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.
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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).
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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.
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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).
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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
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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.
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