Ex Parte REDDINGTON et al

Patent Trials and Appeals BoardApr 4, 2019

14047856 - (D) (P.T.A.B. Apr. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/047,856 10/07/2013 76933 7590 04/08/2019 IBM (END-KLS) c/o Kennedy Lenart Spraggins LLP 301 Congress Avenue Suite 1350 AUSTIN, TX 78701 FIRST NAMED INVENTOR FRANCIS X. REDDINGTON 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. END920120176US 1 2906 EXAMINER ULLAH,ARIF ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 04/08/2019 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): office@klspatents.com kate@klspatents.com hanna@klspatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANCIS X. REDDINGTON and NEIL SAHOTA Appeal2017-003483 1 Application 14/047,8562 Technology Center 3600 Before HUBERT C. LORIN, BIBHU R. MOHANTY, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-21. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed May 12, 2017) and Reply Brief ("Reply Br.," filed Feb. 2, 2017), and the Examiner's Answer ("Ans.," mailed Dec. 2, 2016) and Final Office Action ("Final Act.," mailed Jan. 7, 2016). 2 Appellants identify International Business Machines Corporation as the real party in interest. App. Br. 1. Appeal2017-003483 Application 14/047,856 CLAIMED INVENTION The Appellants' claimed invention relates to "providing guidance to a business organization by one or more of a plurality of business advisor modules." Spec. 1:9-11. Claims 1, 8, and 15 are the independent claims on appeal. Claim 1, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 1. A method comprising: [ (a)] executing computer instructions on a computer system to perform: [ (b)] receiving a data object comprising a p 1 urali ty of objectives; [(c)] receiving another data object, wherein the other data object comprises one or more metrics; [ ( d)] determining a respective measure of closeness of each respective objective of the plurality of objectives given an application of the one or more metrics to the respective objective; [ ( e)] generating, dependent upon each respective measure of closeness of each respective objective, a ranking of the plurality of objectives; and [(f)] providing, for evaluation by a user, the ranking of the plurality of objectives. REJECTIONS Claims 1-21 are rejected under 35 U.S.C. Â§ 101 as directed to a judicial exception without significantly more. Claims 1-6, 8-13, and 15-20 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Galaviz (US 2011/0054968 Al, pub. Mar. 3, 2011) and Lindauer (US 2013/0179259 Al, pub. July 11, 2013). 2 Appeal2017-003483 Application 14/047,856 Claims 7, 14, and 21 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Galaviz, Lindauer, and Bulitta (US 2004/0176980 Al, pub. Sept. 9, 2004). ANALYSIS Patent-Ineligible Subject Matter Appellants argue the pending claims as a group. App. Br. 5-20. We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Under 35 U.S.C. Â§ 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpretedÂ§ 101 to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,216 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (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 Corp., 573 U.S. at 217. The first step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered "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 79, 78). 3 Appeal2017-003483 Application 14/047,856 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. Therefore, the Federal Circuit has instructed that claims are to be considered in their entirety to determine "whether their character as a whole is directed to excluded subject matter." McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Appellants argue that the Examiner erred in rejecting claim 1 under 3 5 U.S.C. Â§ 101 because the Examiner fails to establish a prima facie case of ineligibility (App. Br. 5-7), fails to identify an abstract idea supportive of a prima facie case, (id. at 7-10), fails to explain why the claims are said to recite an abstract idea (id. at 10-12), that the claims do not preempt the abstract idea (id. at 12-13), that the claims do not recite an abstract idea (id. at 13- 19), and that the claims recite significantly more than an abstract idea (id. at. 19-20). However, in rejecting the pending claims under 35 U.S.C. Â§ 101, the Examiner determined that limitations (b) through (f), as recited in claim 1, reflect the abstract idea. Final Act. 7. In particular, the Examiner determined that these limitations, under their broadest reasonable interpretation, recite "receiving, analyzing, and generating information," which the Examiner determined is similar to other concepts that have been held to be abstract by the courts, such as the concept of comparing new and stored information and using rules to identify options (see SmartGene, Inc. v. Advanced Biological Labs., S.A., 555 F. App'x 950, 955 (Fed. Cir. 2014)), and the concept of organizing information through mathematical correlations (see Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 4 Appeal2017-003483 Application 14/047,856 1351 (Fed. Cir. 2014)). Final Act. 7 (citing 2014 INTERIM GUIDANCE ON PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 79 Fed. Reg. 74618, 74622 (Dec. 16, 2014)) ("Interim Guidance"). The Examiner further determined that claim 1 does not recite additional element( s) that amount to significantly more than the judicial exception. For example, the Examiner concluded that claim 1 do not recite improvements to another technology or technical field; improvements to the functioning of the computer itself; applying the judicial exception with, or by use of, a particular machine; effecting a transformation or reduction of a particular article to a different state or thing; adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine claim to a particular useful application; or other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment .... Final Act. 8. In so doing, the Examiner notified Appellants of the reasons for the rejection under 35 U.S.C. Â§ 101 in a sufficiently articulate and informative manner as to meet the notice requirement of 35 U.S.C. Â§ 132, thereby establishing a prima facie case of patent ineligibility. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (holding that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the notice requirements of 35 U.S.C. Â§ 132 by notifying the applicant of the reasons for the rejection, "together with such information and references as may be useful in judging the propriety of continuing [] prosecution"). Judicial Exception The Federal Circuit has explained that "the 'directed to' inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether 'their character as a whole is directed to excluded subject 5 Appeal2017-003483 Application 14/047,856 matter."' Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d at 1346). Here, the Specification is titled "PROVIDING GUIDANCE TO A BUSINESS ORGANIZATION BY ONE OR MORE OF A PLURALITY OF BUSINESS ADVISOR MODULES," and discloses that the present invention relates to "methods, apparatuses, and products for providing guidance to a business organization by one or more of a plurality of business advisor modules." Spec. 1:9-11; see also id. at 1:27-28. The Background section of the Specification describes that managers and other evaluators of a business entity have metrics that they want to see met and, as a result, will design processes around those metrics. Id. at 1: 15-16. However, misguided directives can create adverse, unintentional side effects that many managers fail to understand. See id. at 1: 16-19. For example, a singular focus of increasing profits without a known balanced approach can lead management to concentrate on cutting cost to the point of affecting employee morale and customer satisfaction, causing profits to decrease in the long run. See id. at 1: 19 :23. The claimed invention is intended to address this problem by implementing business advisor modules for providing guidance to a business organization. Id. at 5:24--27. The business advisor modules are configured to evaluate and manage business initiatives, such as cost cutting initiatives and acquisition initiatives. Id. at 3 :29:4: 1. The business advisor modules provide guidance to the business organization by receiving business objectives, receiving metrics, and creating, in dependence upon the business objectives and metrics, a business recommendation. Id. at 4: 1-7. The business recommendation can include information ranking the value of a plurality of business initiatives to a business organization. Id. at 7:7-13. Business metrics include information 6 Appeal2017-003483 Application 14/047,856 that is useful in determining whether a business organization should pursue one or more business initiatives. Id. at 6: 15-19. Exemplary metrics include forecasted cost of pursuing a business initiative, forecasted benefit, and forecasted direct and indirect impacts on operation of a business initiative. Id. at 6: 19-24. The metrics are used to determine whether pursuing a particular business initative would take the business organization closer to or further away from its goals and objectives. Id. at 6:30-7:3. Claim 1 recites the following limitations: receiving a data object comprising a plurality of objectives (limitation (b )); receiving another data object, wherein the other data object comprises one or more metrics (limitation ( c) ); determining a respective measure of closeness of each respective objective of the plurality of objectives given an application of the one or more metrics to the respective objective (limitation (d)); generating, dependent upon each respective measure of closeness of each respective objective, a ranking of the plurality of objectives (limitation ( e) ); and providing, for evaluation by a user, the ranking of the plurality of objectives (limitation (f)). These limitations, under their broadest reasonable interpretation in light of the Specification, recite providing guidance to a business regarding its business objectives, because the limitations recite operations for receiving and analyzing a business's objectives and metric(s), ranking the business's objectives based on the analysis, and providing the ranking, which serves as guidance, to the business. For example, "receiving ... a plurality of objectives" and "receiving ... one or more metrics," as recited in limitations (b) and ( c ), are characteristic of gathering relevant information from the business regarding its objectives and metrics; "determining" and "generating," as recited in limitations ( d) and ( e ), indicate an analysis that results in guidance (in the 7 Appeal2017-003483 Application 14/047,856 form of a ranking) on the business objectives that would take a business closest to its business objectives. The concept of providing guidance by collecting data, analyzing data, and providing the results of the collection and analysis can be performed mentally by a human. Like the method for guiding selection of a therapeutic regimen in SmartGene, 555 F. App'x at 954, claim 1 recites a mental process and, thus, an abstract idea. See 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("Revised Guidance"). Practical Application Under the Revised Guidance, if a claim recites a judicial exception (i.e., mental processes), it must then be analyzed to determine whether the recited judicial exception is integrated into a practical application of that exception. Revised Guidance 54. Specifically, we identify whether there are any additional elements recited in the claim beyond the judicial exception, and evaluate the additional elements individually and in combination to determine whether they integrate the exception into a practical application. Id. at 54--55. Here, claim 1 additionally recites "executing computer instructions on a computer system to perform [limitations (b }-(f)]," i.e., limitation (a). We find no indication in the record that attributes the additional elements (limitation (a)), recited in claim 1, to an improvement in computer technology and/or functionality to the claimed invention, to implementing the abstract idea with a particular machine that is integral to the claim, that effects a transformation or reduction of a particular article to a different state or thing, that applies the abstract idea in some other meaningful way beyond linking the use of the abstract idea to a particular technological environment, or that otherwise indicates that the claimed invention integrates the abstract 8 Appeal2017-003483 Application 14/047,856 idea into a "practical application," as that phrase is used in the Revised Guidance. 3 Appellants maintain that the Examiner erred in determining the claims are directed to an abstract idea. The primary thrust of Appellants' argument is that claim 1 is patent-eligible because the abstract idea is not a fundamental building block of human ingenuity whose use is not to be preempted by patenting and does not pose a risk of preemption. See, e.g., App. Br. 12-19. Appellants' argument is not persuasive, at least because preemption is not the sole test for patent-eligibility. "The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability" and "[ fJor this reason, questions on preemption are inherent in and resolved by theÂ§ 101 analysis." Ariosa Diagnostics, Inc. 3 We note that Appellants' briefs were filed, and the Examiner's Answer mailed, before the USPTO issued the Revised Guidance, which, by its terms, applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. In accordance with the Revised Guidance, a claim is generally considered "directed to" an abstract idea if (1) the claim recites subject matter falling within one of the following groupings of abstract ideas: (a) mathematical concepts; (b) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and ( c) mental processes, and (2) the claim does not integrate the abstract idea into a practical application, i.e., apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the clam is more than a drafting effort designed to monopolize the judicial exception. See Revised Guidance 54--55. The Revised Guidance references the MANUAL OF PATENT EXAMINING PROCEDURE ("MPEP") Â§Â§ 2106.05(a}-(c) and (e}-(h) in describing the considerations that are indicative that an additional element or combination of elements integrates the judicial exception, e.g., the abstract idea, into a practical application. Id. at 55. Thus, as explained in the Revised Guidance, if the recited judicial exception is integrated into a practical application, as determined under one or more of these MPEP sections, the claim is not "directed to" the judicial exception. 9 Appeal2017-003483 Application 14/047,856 v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). Although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Attempting to draw an analogy to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), Appellants assert that claim 1 recites a solution that is "necessarily based in computer technology in order to overcome problems specifically arising in the realm of automated business guidance." App. Br. 20. Yet, Appellants' invention seeks to address problems springing from a manager's failure to understand the unintended consequences that result from misguided directives. Spec. 1: 18- 19. This concern regarding a manager's limited understanding does not embody a problem "rooted in computer technology." Nor does claim 1 reflect a technological improvement analogous to DDR Holdings' change to the routine, conventional functioning of Internet hyperlink protocol. DDR Holdings, 773 F.3d at 1257. Instead, claim 1 requires nothing more than implementing the abstract idea on a "computer system." Compare with id. (the claims at issue did not simply use computers to serve a conventional business purpose). Well- Understood, Routine, Conventional Activity Appellants argue that claim 1 's "particular organization of objectives, metrics, measures of closeness, rankings, and so on, all step well beyond what is well-understood, routine, and conventional in the field and add meaningful limitations that amount to more than generally linking the use of any accused abstract idea to a particular technological environment." App. Br. 20. Appellants, however, do not explain, and we do not see, what 10 Appeal2017-003483 Application 14/047,856 particular order of claim elements recited in claim 1 supply an inventive concept. Here, the only limitation that is not part of the abstract idea is limitation (a) executing computer instructions on a computer system. However, implementing the abstract idea embodied in limitations (b) through (f) on a generic "computer system" does not render the claim patent eligible. See Spec. 23 :3---6 ("any computer system having suitable programming means will be capable of executing the steps of the method of the invention"); see also DDR Holdings, 773 F.3d at 1256 ("[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible."). We have considered each of Appellants' arguments presented in the Appeal Brief and the Reply Brief. However, none persuades us of error in the Examiner's determination that claim 1 is directed to an abstract idea without significantly more. Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. Â§ 101, and claims 2-21, which fall with claim 1. Obviousness Independent Claims 1, 8, and 15, and Dependent Claims 2-6, 9-13, and 16-- 20 Appellants argue that the Examiner erred in rejecting independent claims 1, 8, and 15 under 35 U.S.C. Â§ 103(a) because Lindauer does not teach claim 1 's limitation ( e ), which is similarly recited by claims 8 and 15. The Examiner finds that paragraphs 4, 43, and 79 teaches the argued limitation. Final Act. 13-14. 11 Appeal2017-003483 Application 14/047,856 We have reviewed the portions of Lindauer, on which the Examiner relies, and we agree with Appellants that there is no disclosure or suggestion of generating, dependent upon each respective measure of closeness of each objective, a ranking of a plurality of objectives. App. Br. 23-24. Lindauer describes that traditional methods involving calling large number of possible investors is unmanageable given the huge number of companies and potential investors. Lindauer ,r 3. In light of this problem, Lindauer describes a need for segmenting top-ranked investor targets for a particular company based on multiple criteria. Id. ,r 4. Potential investors may be given priority rankings for potential investor meetings. Id. ,r 43. Users can perform a variety of investor target searches with different criteria. Id. ,r 79. Lindauer, thus, describes ranking investor targets based on various criteria. However, Lindauer does not teach or suggest generating a ranking of a plurality of objectives, much less that the ranking is dependent of each objective. The Examiner determines that it would have been obvious to modify Galaviz with Lindauer "by adding steps that allow the software to rank with the motivation to more efficiently and accurately organize and gather data." Final Act. 14. Yet, Galaviz discloses a software management tool adapted to help meet contract requirements. Galaviz ,r 60. Galaviz describes measuring tasks against quantitative performance objectives for cost/performance reporting. Id. ,r 70. That is, Galaviz discloses tracking completion of contract requirements by measuring tasks for a particular quantative performance objective. However, neither Galaviz nor Lindauer teaches or suggest prioritizing objectives, much less that the prioritization or ranking would be based upon a measure of closeness of each objective given an application of the metrics to the respective objectives. It is unclear, and 12 Appeal2017-003483 Application 14/047,856 the Examiner does not adequately explain, why one of ordinary skill in the art would be motivated to modify Galaviz to meet limitation ( d), as recited in claim 1, and similarly recited in claims 8 and 15, based on Lindauer's description of potential investor target ranking. In view of the foregoing, we do not sustain the Examiner's rejection of independent claims 1, 8, and 15, and dependent claims 2-6, 9-13, and 16-20 under 35 U.S.C. Â§ 103. Dependent Claims 7, 4, and 21 The Examiner's rejection of dependent claims 7, 4, and 21 does not cure the deficiencies in the Examiner's rejection of independent claims 1, 8, and 15. Therefore, we do not sustain the Examiner rejection of claims 7, 4, and 21 under 35 U.S.C. Â§ 103. DECISION The Examiner's rejection of claims 1-21 under 35 U.S.C. Â§ 101 is affirmed. The Examiner's rejections of claims 1-21 under 35 U.S.C. Â§ 103 are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 13