Ex Parte Reddy et al

Patent Trial and Appeal Board

Apr 9, 2018

13683805 (P.T.A.B. Apr. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/683,805 1112112012
72060 7590 04/11/2018
John A. Miller
Shumaker, Loop & Kendrick, LLP
42690 Woodward Avenue
Suite 300
Bloomfield Hills, MI 48304
FIRST NAMED INVENTOR
J. Nirdosh Reddy
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.
ANA-00001 9501
EXAMINER
MARCUS, LELAND R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
04/11/2018 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):
CCARDINALE@SLK-LA W.COM
tlopez@slk-law.com
c golupski@ slk-law. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. NIRDOSH REDDY and ARVIND J. REDDY
Appeal2017-001071
Application 13/683,805 1
Technology Center 3600
Before THU A. DANG, JOYCE CRAIG, and MATTHEW J. McNEILL,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-19 and 22-31, which are all of the claims
pending in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is J. Nirdosh Reddy.
App. Br. 3.
2 Claims 20 and 21 have been canceled. Final Act. 2.
Appeal2017-001071
Application 13/683,805
INVENTION
Appellants' application relates to a process review system. Abstract.
Claim 1 is illustrative and reads as follows:
1. A computer system for managing processes in an
organization where the system comprises:
a computer with a memory having instructions that:
determine a process flow for an organization with a
global process flowchart having a set of processes, where a first
process from the set of processes has a macro flowchart that has
a sub-process, and the sub-process has a micro flowchart, and
where the set of processes includes a set of primary processes
and at least one enabling process, where the set of primary
processes process the organization's orders, and the enabling
process enables at least one primary process, and where a
second process in the set of processes has an associated process
leader who is responsible for the second process, where the first
process and the second process can be the same process;
associates individual process summaries to individual
processes from the set of processes, where each process
summary has at least one related process selected from a list of
a customer process, a supplier process and an interfacing
process;
associates the related process with a parameter to
measure, where the parameter to measure is an aspect of the
individual process, and where the parameter has expectations
for the measured values;
finds discrepancies between expectations for parameters
that measure the same feature where one parameter is
measuring the feature as output from an upstream process and
the other parameter is measuring the feature as input to a
downstream process, where the upstream process and the
downstream process are members of the set of processes;
receives actual measurement information about the
parameter from the processes in the organization, including
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Application 13/683,805
automatically receiving actual measurement information from
other systems; and
generates an exception report including a row for each
exception and a plurality of columns, where an exception is any
process from the global process flowchart set of processes
having a measurement parameter whose actual measurement
does not meet expectations or whose actual measurement
information is missing, and the columns include identification
of which process is an exception, a target value and a range for
the expectations of the measurement parameter, actual
measurement minimum and maximum values, percent of actual
measurement outside of range, and a reason why the exception
is included in the exception report.
REJECTION
Claims 1-19 and 22-31 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception without significantly
more. Final Act. 2---6.
ANALYSIS
We have reviewed the rejections of claims 1-19 and 22-31 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments Appellants could have made, but chose not to make, in the
Briefs are deemed waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 2--4) and in the Action from which this appeal was
taken (Final Act. 2---6). We provide the following explanation for emphasis.
In concluding the rejected claims are directed to patent ineligible
subject matter under 35 U.S.C. § 101, the Examiner found independent
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Application 13/683,805
claim 1 is directed to an abstract idea of data collection and data analysis,
which is similar to "comparing information regarding a sample or test
subject to a control or target data, diagnosing an abnormal condition by
performing clinical tests and thinking about the results, obtaining and
comparing intangible data, comparing new and stored information and using
rules to identify options." Ans. 3; see also Final Act. 2. The Examiner
further found the additional claim elements do not provide meaningful
limitations to transform the abstract idea into a patent eligible application of
the abstract idea such that the claim amounts to significantly more than the
abstract idea itself. Final Act. 4; Ans. 3--4.
Appellants contend the Examiner erred because the claimed invention:
( 1) includes both a particularly programmed computer and other
systems which provide input to the computer, thereby defining a
concrete invention, not an abstract idea.
(2) is not simply a computer implementation of a well-known or
longstanding process, and does not attempt to "tie up" the entire
subject matter area of business process management.
(3) includes detailed limitations, not taught by the prior art, which add
significantly more and amount to an inventive concept.
App. Br. 16-17.
Appellants' arguments are not persuasive. The Examiner has
provided a comprehensive response to Appellants' arguments that is
supported by a preponderance of evidence. Ans. 2--4.
The Supreme Court in Alice identifies a two-step framework for
determining whether claimed subject matter is judicially-excepted from
patent eligibility under § 101. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134
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Application 13/683,805
S. Ct. 2347, 2355 (2014). 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. (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). 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, 132 S. Ct. at 1298, 1297). 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.
(alteration in original) (quoting Mayo, 132 S. Ct. at 1294).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants' method claim 1 is directed generally to data
collection and data analysis, specifically a process review system that is a
mental process and can be performed in the human mind, or by a human
using a pen and paper. See Ans. 2-3; Final Act. 2. A method that can be
performed in the human mind or by a human using a pen and paper is
directed to an abstract idea. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); see also Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016) ("While
the Supreme Court has altered the § 101 analysis since CyberSource in cases
like Mayo and Alice, we continue to 'treat[] analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category."')
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Application 13/683,805
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016)).
On this record, we conclude claim 1 is directed to an abstract idea,
and Appellants have not adequately shown the claim is not directed to an
abstract idea. Appellants' argument that the claims are "concrete" and thus
not "abstract" is not persuasive. See App. Br. 14. Appellants overlook that
the first step in the Alice framework looks to whether the claim is directed to
an abstract idea, not whether the claim as a whole is simply an abstract idea.
Moreover, we are unpersuaded by Appellants' argument that claim 1 does
not preempt every application of some abstract idea and are, therefore,
patentable. See id. at 15. Lack of preemption does not make the claims any
less abstract. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (collecting cases); Accenture Glob. Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013); 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.").
Turning to Alice step two, we conclude that the elements of claim 1,
both individually and as an ordered combination, do not transform the nature
of the claims into a patent-eligible application. The recited elements simply
elaborate on the abstract idea.
Although independent claim 1 recites a "computer with a memory
having instructions" and "other systems," we conclude these claims
limitations merely link an abstract idea to a technological environment. As
set forth in Alice, the introduction of a "computer" into the claims to
implement an abstract idea is not a patentable application of the abstract
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idea. Alice, 134 S. Ct. at 2357-58. As in Alice, the computer
implementation here is purely conventional and performs basic functions.
See id. at 2359---60; see also Spec. Fig. 1 (computer 22), i-fi-126, 27. That is,
claim 1 does not effect an improvement to another technology or technical
field, and does not amount to an improvement to the functioning of a
computer itself. Alice, 134 S. Ct. at 2359---60; see also Spec. Fig. 1
(computer 22), i-fi-126, 27. Instead, we find a person would be capable of
performing the claimed steps or functions as mental steps, even though the
steps could be performed by a computer. See CyberSource, 654 F.3d at
1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson").
We are not persuaded by Appellants' conclusory argument that the
claimed invention "recites specific limitations which add significantly more
than mere computer implementation of business process management."
App. Br. 15 (emphasis omitted). Nowhere do Appellants identify what
elements in claim 1 add "significantly more." In the Reply Brief, Appellants
argue "the 'significantly more' is the fact that the method claims include
detailed steps which are novel and unobvious over (an improvement over)
the prior art." Reply Br. 3 (emphasis omitted). Appellants misapprehend
the controlling precedent. Although the second step in the Alice/Mayo
framework is termed a search for an "inventive concept," the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for "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."' Alice, 134 S. Ct. at 2355 (alteration in original)
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Application 13/683,805
(quoting Mayo, 132 S. Ct. at 1294). A novel and nonobvious claim directed
to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S.
Ct. at 1304.
Accordingly, we sustain the Examiner's§ 101 rejection of
independent claim 1, as well as the Examiner's§ 101 rejection of
independent claims 27 and 28, 3 which Appellants argue are patentable for
similar reasons. App. Br. 12. We also sustain the Examiner's rejection of
dependent claims 2-19, 22-26, and 29-31, not argued separately. Id. at 17.
DECISION
We affirm the Examiner's decision rejecting claims 1-19 and 22-31.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
3 In the event of further prosecution, we leave it to the Examiner to consider
whether claim 28, and claims 29 and 30 dependent thereon, should be
rejected under 35 U.S.C. § 101 because the scope of the recited "machine
readable medium" encompasses transitory media such as signals or carrier
waves. See Ex parte Mewherter, 107 USPQ2d 1857 (PT AB 2013)
(precedential) (holding recited machine-readable storage medium ineligible
under§ 101 since it encompasses transitory media).
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