Ex Parte Sperle et al

Patent Trial and Appeal Board

Nov 30, 2016

11257589 (P.T.A.B. Nov. 30, 2016)

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.
11/257,589 10/24/2005 Robin U. Sperle 19796-0013001/2005P00646 1567
32864 7590 12/02/2016
FISH & RICHARDSON, P.C. (SAP)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
PAGE, EVAN RANDALL
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBIN U. SPERLE, SILKE A. H. GRUBER,
HOLGER BOHLE, MARCUS PHILIPP, HAGEN ECK, and
KATTIA JORDAN
Appeal 2015-001331
Application 11/257,589
Technology Center 3700
Before HUBERT C. LORIN, BRADLEY B. BAYAT, and
MATTHEW S. MEYERS, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants* 1 appeal under 35 U.S.C. § 134 from the Examiner’s final
decision rejecting claims 1—30, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is SAP AG. Appeal Br.
1 (filed May 7, 2014).
Appeal 2015-001331
Application 11/257,589
CLAIMED INVENTION
Appellants’ invention “relates to management and, more particularly,
to monitoring progress of an external course.” Spec. 11. Independent claim
1, reproduced below, is illustrative of the claimed subject matter on appeal.
1. A method, comprising:
transmitting, by a local learning management system
configured to administer internal online courses developed by a
first enterprise, a request to a remote learning management
system to add an external online course to a course catalog
provided by the local learning management system, the course
catalog identifies the internal online courses provided online by
the local learning management system and the external online
course covers a subject different from subjects covered by the
internal online courses and provided online by the remote
learning management system, and the local learning
management system, the remote learning management system,
and learner devices include separate devices;
updating, by the local learning management system, an
internal course catalog to identify the external online course as
available for enrollment by users of the local learning
management system in response to at least receiving
information from the remote learning management system, the
local learning management system configured to present the
course catalog including the external course through remote
learner devices;
automatically transmitting, by the local learning
management system to the remote learning management
system, a request to enroll a user in the external online course in
response to at least a user selecting, through a learner device,
the external course presented in the internal course catalog;
receiving, from the remote learning management system,
tracking information identifying progress of the user in the
external online course provided by the remote learning
management system; and
updating a progress status for the user in the local
learning management system based, at least in part, on the
tracking information.
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Application 11/257,589
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Altenhofen et al. US 2003/0232318 A1 Dec. 18, 2003
THE REJECTIONS
Claims 1—30 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Altenhofen. Final Action 2—7 (“Final Act.,” mailed Dec. 19, 2013).
Claims 1—30 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Answer 2 (“Ans.,” mailed Sept. 12, 2014).
OPINION
Obviousness
Appellants argue the three independent claims (method claim 1,
computer program product claim 11, and system claim 21) as a group. See
Appeal Br. 7—8. We select claim 1 as the representative claim for this group.
Thus, independent claims 11 and 21 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants contend that “the Examiner fails to consider at least the
phrase ‘the external online course covers a subject different from subjects
covered by the internal online courses and provided online by the remote
learning management system.’” Appeal Br. 7. In particular, Appellants argue
“that Altenhofen fails for at least the following two reasons: (1) the offline
course and the online course disclosed in Altenhofen is provided by the same
learning management system not different learning management systems;
and (2) the offline course and the online course disclosed in Altenhofen are
the same course not different.” Id.', Reply Br. 2 (filed Nov. 7, 2014).
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Application 11/257,589
We disagree that the Examiner relies on learning management system
623 for teaching both internal and external online courses. The Examiner
rather finds that Altenhofen’s learning station 610 includes a storage 760 for
storing offline courses, wherein offline player 825 presents and manages the
offline training using an offline player. Altenhofen | 82; see Final Act. 2—3
(citing Altenhofen H 82—84, 92—95, Fig. 8). Furthermore, the online and
offline courses do not necessarily cover the same subject matter because a
curriculum manager determines which content and courses may be provided
offline by “indicating] if a course also is offered offline.” Id. 1 86. As
such, Appellants’ arguments do not apprise us of error by the Examiner.
For the foregoing reasons, we sustain the rejection of claim 1 under 35
U.S.C. § 103(a), as well as claims 11 and 21, which fall with claim 1.
Appellants do not contest the rejection of dependent claims 2—10, 12—20,
and 22—30 under 35 U.S.C. § 103(a). Therefore, we summarily sustain the
rejection of claims 2—10, 12—20, and 22—30.
Non-statutory Subject Matter
Regarding the new ground of rejection under 35 U.S.C. § 101 issued
in the Answer, Appellants argue claims 1—30 as a group. Reply Br. 2—3.
We select independent claim 1 as representative; the remaining claims stand
or fall with claim 1.
Alice Corp. Pty. Ltd. v. CLSBankInt'l, 134 S.Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101. According
to Alice step one, it must first be determined whether the claims at issue are
directed to a patent-ineligible concept, such as an abstract idea. Alice, 134
S.Ct. at 2355. Step two is “a search for an [‘Jinventive conceptf’]—i.e., an
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Application 11/257,589
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 at 1297.
Appellants do not dispute the Examiner’s finding under Alice’s step
one, but contend that the “claims are not so broad as to preempt all uses of
the asserted abstract idea.. .[because they] are directed to a particular real-
world implementation that does not preempt the very abstract idea itself.”
Reply Br. 2. Appellants assert that the steps of claim 1 “are not mere
instructions to implement the idea on a computer or are not a recitation of
generic computer structure.. .[and when] viewed as a whole, provide
meaningful limitations to at least transform the abstract idea into a patent
eligible application of the abstract.” Id. at 2—3. We disagree.
The functions performed by the process in claim 1, i.e.,
transmitting.. .a request, receiving.. .information, and updating.. .data are
routine, conventional, and well-known functions, and require nothing more
than a generic computer performing generic computer functions. Claim 1
does not purport to improve the functioning of the computer itself. Nor does
it effect an improvement in any other technology or technical field. Instead,
claim 1 amounts to nothing significantly more than an instruction to
implement the abstract idea on a generic computer — which is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.,
134 S. Ct. at 2360. Indeed, it is telling that the Specification explicitly
describes that the claimed method may be implemented using a general
purpose personal computer (see, e.g., Spec. 116).
Moreover, Appellants’ preemption argument does not alter our § 101
analysis. “The Supreme Court has made clear that the principle of
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Application 11/257,589
preemption is the basis for the judicial exceptions to patentability. Alice,
134 S. Ct. at 2354 (‘We have described the concern that drives this
exclusionary principle as one of pre-emption[.]’). For this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Preemption concerns are, thus, fully addressed and rendered moot where a
claim is determined to disclose patent ineligible subject matter under the
two-part framework described in Mayo and Alice. Although “preemption
may signal patent ineligible matter, the absence of complete preemption
does not demonstrate patent eligibility.” Id.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 101. We also sustain the Examiner’s
rejection of claims 2—30, which fall with claim 1.
DECISION
The Examiner’s decision to reject claims 1—30 is affirmed.
AFFIRMED
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