Ex Parte Shaouy

Patent Trial and Appeal Board

Aug 30, 2017

11849738 (P.T.A.B. Aug. 30, 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.
11/849,738 09/04/2007 William P. Shaouy END920060303US1 6233
46583 7590 09/01/2017
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
EXAMINER
TORRICO-LOPEZ, ALAN
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM P. SHAOUY
Appeal 2016-002093
Application 11/849,7381
Technology Center 3600
Before, JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY,
and TARA L. HUTCHINGS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’
Final Rejection of claims 1, 3, 4, 6, 8—10, 12—15, 17—23, 26, 28 and 30—34
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM IN PART.
1 Appellant identifies International Business Machines Corporation as the
real party in interest. Br. 2.
Appeal 2016-002093
Application 11/849,738
THE INVENTION
Appellant’s “invention generally relates to a system and method of
managing and prioritizing tasks amongst resources and, more particularly, to
a system and method for providing automatic task assignment and
notification amongst globally dispersed human resources.” (Spec. 11)
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A system comprising:
a processor operable to:
retrieve a list of geographically-dispersed resources,
wherein a resource table associates each of the geographically-
dispersed resources with a respective plurality of skills;
poll a message application to determine which of the
geographically dispersed resources is online and currently
working;
retrieve a list of tasks from a task table by:
determining that one or more tasks in the task table are
associated with a respective plurality of required skills, and
retrieving the one or more tasks;
determine that a first task of the list of tasks matches a
first member of the geographically dispersed resources by
comparing the respective plurality of required skills of the first
task with the respective plurality of skills of the first member;
retrieve a list of current tasks assigned to the first
member;
determine that each of the current tasks in the list of
current tasks assigned to the first member is lower in priority
than the first task; and
reassign ownership of the one of the first task to the first
member,
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wherein:
a low-priority thread of the processor uses an infinite
loop to poll a change of management application for a latest list
of newly created or modified tasks which are yet to be started;
and
the processor is further operable to add the newly created
or modified tasks to the task table and associate each of the
newly created or modified tasks with a plurality of required
skills.
Appeal Br. 41 (Claims App’x).
THE REJECTION
The following rejection is before us for review.
Claims 1, 3-4, 6, 8-10, 12-15, 17-23, 26, 28 and 30-34 are rejected
under 35U.S.C. § 101 because the claimed invention is directed to non-
statutory subject matter.
ANALYSIS
35 U.S.C. § 101 Rejection
Claim 26 is representative of the independent claims before us on
appeal, which contain similar limitations, and is a method claim of steps
which recite, in pertinent part, viz.
polling. . . a list of geographically dispersed resources to
determine which geographically dispersed resources are online
and currently working, wherein the list associates each of the
geographically dispersed resources with a respective plurality
of skills;
retrieving ... a latest list of tasks from a task table by:
determining that required skills information associated
with one or more tasks in the task table is not null; and
retrieving the one or more of the tasks;
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Application 11/849,738
prioritizing each of the retrieved tasks for selected ones
of the geographically dispersed resources;
notifying ... the selected ones of the geographically
dispersed resources of a newly assigned task and its priority;
determining . . . that a first task of the latest list of tasks
matches one of the geographically dispersed resources by
comparing a respective plurality of required skills of the first
task with the respective plurality of skills of the one of the
geographically dispersed resources;
retrieving ... a list of current tasks assigned to the
matched one of the geographically-dispersed resources;
determining . . . that each of the current tasks in the list of
current tasks assigned to the matched one of the geographically-
dispersed resources is lower in priority than the one of the
retrieved tasks; and
reassigning . . . ownership of the one of the retrieved
tasks to the matched one of the geographically-dispersed
resources,
wherein the method further comprises:
using a low-priority thread which uses an infinite loop to
poll for a latest list of newly created or modified tasks which
are yet to be started; and
adding the newly created or modified tasks to the task
table and associate each of the newly created or modified tasks
with a plurality of required skills.
Appeal Br. 45.
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The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis as a 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.”
Alice Corp., Pty. Ltd. v CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012)) (internal citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The steps in claim 26 result in adding newly created or modified tasks
to a task table and associate each of the newly created or modified tasks with
a plurality of required skills. The Specification at || 4 and 5 recites:
[0004] A project manager is tasked with the coordination
of the project by first assembling a team and then assigning the
team members specific tasks that need to be accomplished to
complete the project. This includes assessing the skill set and
level of skill of all team members, the time that each team
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member is projected to work, the sequence of tasks that are
required to complete the task, etc. As such, the project manager
is thus tasked with leading the planning and the development of
all project deliverables. The project manager is also thus
responsible for managing the budget and work plan and all
project management procedures such as, for example, scope
management, issues management, risk management, etc.
[0005] Thus, as can be imagined, a project team dispersed
amongst many different time zones has many challenges to
overcome in performing their work. This includes the
coordination and collaboration of projects, amongst themselves,
and the coordination and assignment of workflow by the project
manager. The latter of which becomes very problematic when
a project requires certain tasks to be performed in a specific
sequence. So, for example, it is the responsibility of the project
manager to ensure that a team member work and complete a
first task, in an earlier time zone, prior to another team member
undertaking a subsequently required task in a later time zone.
Thus, all this evidence shows that claim 26 is directed to assembling a team
and continuously assigning the team members specific tasks that need to be
accomplished to complete the project based on the assessed skill set, the
level of skill of all team members, the time that each team member is
projected to work, and the sequence of tasks that are required to complete
the task. It follows from prior Supreme Court cases, and Gottschalk v.
Benson, 409 U.S. 63 (1972) in particular, that the claims at issue here are
directed to an abstract idea. Like the algorithm in Gottschalk, assembling a
team and continuously assigning the team members specific tasks that need
to be accomplished to complete the project based on the assessed skill set,
level of skill of all team members, the time that each team member is
projected to work, and the sequence of tasks that are required to complete
the task, is an abstract concept that preempts all implementations and uses.
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The scheme of assembling a team based on these items is a method of
organizing through task assignment, human behavior, which is an abstract
idea. See Alice, 134 S. Ct. at 2355—1257. Also, the claimed steps, e.g.,
polling, determining, and reassigning, are all steps that we as humans go
through in our own minds. We 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.” Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
Thus, we find that the claimed task assignment method is an “abstract idea”
beyond the scope of § 101.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
performing a mathematical algorithm in Gottschalk and the concept of
assembling a team based e.g., on an assessed skill set, level of skill of
individuals, and task priorities, at issue here. Both are squarely within the
realm of “abstract ideas” as the Court has used that term. See Alice, 134 S.
Ct. at 2357. That the claims do not preempt all forms of the abstraction or
may be limited to the abstract idea in the project management setting
(Specification 2: |4), does not make them any less abstract. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360—61 (Fed. Cir. 2015). Perhaps
more to the point, claim 1 does no more than assign tasks based on the
perception of skill necessary to accomplish a prioritized task. Perception is a
disembodied concept that is the epitome of abstraction.
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The introduction of a computer/processor into the claims does not
alter the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (alterations in original) (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice, 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data and compute a result from a database amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
But here, Appellant argues,
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the presently claimed invention provides a low-priority thread
of a processor which uses an infinite loop to poll a change of
management application for a latest list of newly created or
modified tasks which are yet to be started, and the processor
adds the newly created or modified tasks to the task table and
associates each of the newly created or modified tasks with a
plurality of required skills.
(Appeal Br. 8).
We disagree with Appellant because nothing in the generic use of a
processor thread, infinite loop, and/or a task table, as recited in the claims,
shows any use of these features other than as conventionally used in a
computer system, and thus Appellant’s argument is not persuasive of an
Alice part two qualification. Nor do we find anything more than well-
understood, routine, conventional activities previously known to the industry
of using instant messaging to poll whether one is working on-line as recited
in dependent claims 3 and 18, or the use of interfacing to connect parts of a
network system as recited in dependent claim 4. (See Appeal Br. 14—15).
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s claims simply
recite the concept of assembling a team based on the assessed skill set and
level of skill of individuals, and task priorities. The claims do not, for
example, purport to improve the functioning of the computer itself. Nor do
they effect an improvement in any other technology or technical field.
Instead, the claims at issue amount to nothing significantly more than
instructions to assemble a team based on the assessed skill set and level of
skill of individuals, and task priorities, on a generic computer. Under our
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precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice, 134 S. Ct. at 2360 (alterations in original).
Appellant argues,
Appellant submits that the Examiner has failed to
articulate and explain (i) how and why the claimed invention is
not patent eligible, (ii) how and why the claimed invention falls
into a judicial exception, and (iii) how and why the claimed
invention and the additional elements do not add significantly
more that the exception.
(Appeal Brief 13).
We disagree with Appellant. We refer to the Answer on pages 2—15
in which the Examiner addresses the rejected claims with a detailed analysis
using the pertinent parts of the Alice two-part test, covering 13 pages of text.
Accordingly, we find no deficiency in the Examiner’s prima facie case.
The Appeal Brief presents similar arguments against the rejection of
each of the other independent claims 1,17, and 30 as those advanced for
claim 26. (See Appeal Br. 8—13, 19-23, 27—31 and 34—38). Therefore, we
find these arguments unpersuasive for the same reasons we found
unpersuasive for independent claim 26 supra.
However, we disagree with the Examiner that dependent claims 9, 31,
32, 33 and 34, only “further limit the abstract idea and, therefore, are
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directed to the abstract idea and do not amount to ‘significantly more.’”
Ans. 5.
Claim 9 is directed to a pointer pointing to the change of management
application, and specifically claims the priority value as an integer which
designates a priority of a respective one of the plurality of the tasks. A
pointer is a term of art in the computer industry and connotes a specific type
of data recall mechanism which we find cannot constitute an abstract idea.
Dependent claims 31, 32, 33 and 34 each require “the change of
management application that is a standalone web application separate from
the computer infrastructure.” This item does not relate to the abstract idea of
assembling a team and continuously assigning the team members specific
tasks that need to be accomplished to complete the project as discussed
above, and thus we find this feature constitutes an improvement to a
technical field or technology. Absent a showing to the contrary in the
record, we find that providing the change of management application as a
standalone web application separate from the computer infrastructure
constitutes a specific means for improving throughput and effect a faster
running system. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016).
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 9, 31, 32, 33
and 34 under 35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claims 1, 3, 4,6, 8,
10, 12-15, 17-23, 26, 28 and 30 under 35 U.S.C. § 101.
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DECISION
The decision of the Examiner to reject claims 1,3,4, 6, 8—10, 12—15,
17—23, 26, 28 and 30-34 is affirmed in part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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