Ex Parte SWANSON et al

Patent Trial and Appeal BoardFeb 25, 2019

13936660 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/936,660 07/08/2013 Glenn Dexter SW ANSON 74739 7590 02/27/2019 Potomac Law Group, PLLC (Oracle International) 8229 Boone Boulevard Suite 430 Vienna, VA 22182 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. 2011-001 OUS08 3381 EXAMINER HENRY, MATTHEW D ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 02/27/2019 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): patents@potomaclaw.com bgoldsmith@potomaclaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GLENN DEXTER SWANSON, AHMAD NASER ABDELRAHMAN, and TODD SPRAGGINS Appeal2017-005563 Application 13/936,660 1 Technology Center 3600 Before JOHN A. EVANS, LARRY J. HUME, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1, 2, and 4--21, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 Appellants identify Oracle International Corporation as the real party in interest. App. Br. 2. Appeal2017-005563 Application 13/936,660 STATEMENT OF THE CASE Introduction According to the Specification, the present invention relates to "a computer system, and more particularly, to computer systems that provision services, such as communication services." Spec. ,r 2. Claim 1 is exemplary: 1. A non-transitory computer-readable medium having instructions stored thereon that, when executed by a processor, cause the processor to generate a technical order, the generating compnsmg: calculating a configuration delta comprising a change in a configuration of one or more resource-facing services or one or more resources; generating one or more technical actions that effectuate the configuration delta, wherein each technical action comprises metadata that defines a pattern of a structured request to perform work on a resource-facing service based on a resource- facing service specification based on a resource specification, wherein the pattern comprises an action identifier and a parameter set comprising one or more parameters for the technical action, the parameters being determined based on the configuration delta, and wherein each parameter comprises one or more mappings that populates the parameter from the configuration delta; generating one or more technical order lines, wherein each technical order line comprises a technical action and a resource-facing service that is based on a resource-facing service specification or a resource that is based on a resource specification; and defining a structured set of metadata comprising one or more resource-facing service specifications, one or more resource specifications, one or more relationships, one or more mappings, one or more technical actions, one or more parameter sets, one or more parameter mappings, one or more technical action recognition patterns, one or more technical order definitions, and one or more parameter set structures; 2 Appeal2017-005563 Application 13/936,660 wherein the generating the one or more technical actions and the generating the one or more technical order lines are both based on the metadata that identifies and decouples technical actions for execution on a network during reconfiguration. References and Rejections2 Claims 1-2 and 4--21 are rejected under 35 U.S.C. Â§ 101 because the claims are directed to patent-ineligible subject matter. Final Act. 8-10. Claims 1-2 and 4--21 are rejected underpre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Reilly (John P. Reilly, Implementing the TM Forum Information Framework (SID): A Practitioner's Guide (2011), Frew (US 2012/0311111 Al; Dec. 6, 2012), Goldberg (US 2005/0289013 Al; Dec. 29, 2005), and Schwartz (US 2013/0061249 Al; Mar. 7, 2013). Final Act. 11-28. ANALYSIS 3 35 us.c. Â§ 101 We have reviewed the Examiner's rejection in light of Appellants' contentions and the evidence of record. We concur with Appellants' contention that the Examiner erred in this case. Section 101 of the Patent Act provides "[ w ]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this 2 Throughout this opinion, we refer to the (1) Final Rejection dated June 28, 2016 ("Final Act."); (2) Appeal Brief dated November 1, 2016 ("App. Br."); (3) Examiner's Answer dated December 15, 2016 ("Ans."); and (4) Reply Brief dated February 15, 2017 ("Reply Br."). 3 Appellants raise additional arguments. Because the identified issues are dispositive of the appeal, we do not need to reach the additional arguments. 3 Appeal2017-005563 Application 13/936,660 title." 35 U.S.C. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 ( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). 4 Appeal2017-005563 Application 13/936,660 In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. The PTO recently published revised guidance on the application of Â§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance, 5 Appeal2017-005563 Application 13/936,660 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under the guidance set forth in the Memorandum, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (Step 2A, Prong 1 ); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.05(a}-(c), (e}-(h)) (9th ed. 2018) (Step 2A, Prong 2). Only if a claim ( 1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. (Step 2B). See Memorandum at 54--56. Turning to Alice step one, we first determine whether the claims recite a judicial exception including (a) mathematical concepts; (b) certain methods of organizing human activity; and ( c) mental processes. See Memorandum, Step 2A, Prong 1. Among other things, claim 1 recites "calculating a configuration delta comprising a change in a configuration of one or more resource-facing services or one or more resources," which can be performed by a human using a pen and paper. Therefore, claim 1 recites the abstract idea of mental processes. See Memorandum, Step 2A, Prong 1. Although claim 1 recites an abstract idea, the Federal Circuit explains the "directed to" inquiry is not simply asking whether the claims involve a patent-ineligible concept: 6 Appeal2017-005563 Application 13/936,660 The "directed to" inquiry [ ] cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon-after all, they take place in the physical world. See Mayo, 132 S.Ct. at 1293 ("For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas."). Rather, the "directed to" inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether "their character as a whole is directed to excluded subject matter." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see also Diehr, 450 U.S. at 188 ("In determining the eligibility of respondents' claimed process for patent protection under Â§ 101, their claims must be considered as a whole."); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a whole "focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery"). Therefore, we proceed to Step 2A, Prong 2 of the Memorandum to determine whether additional elements of the claim integrate the mental processes into a practical application. Such additional elements may reflect an improvement to a technology or technical field. See Memorandum 55. We determine additional elements of claim 1 integrate the mental processes into a practical application, as the additional elements reflect technology improvement of a service design and order fulfillment system. See claim 1. Our determination is supported by the Specification, which describes the technology improvements, such as reducing the scope of reconfiguration and testing following a change, and eliminating certain coding to simplify the service design and order fulfillment system: 7 Appeal2017-005563 Application 13/936,660 [A] service design and order fulfillment system can provide an organizational schema that can be used to design and generate a fulfillment solution, where the organization schema can include a configuration of order layers, provider functions, and interfaces. Such a configuration can support business agility by enabling: (a) end-to-end fulfillment of orders for a wide variety of products and services; (b) comprehensive order lifecycle management, including revision cancellations and fallout management, as well as transparent order and status visibility; and ( c) decoupling of various layers of a service design and order fulfillment system, which can localize an impact of business changes and can reduce a scope of both reconfiguration and testing following a change, and which has a positive side effect of reducing an incidence of change-induced order fallout. Spec. ,r 175. [A] service design and order fulfillment system can provide an action, where an action is a pattern or template that can be instantiated as a specific request, where an instance of an action can be included within an order line. Thus, an interface contract can utilize a set of actions to enable the functions/layers of an orchestration process to be decoupled, allowing requests to provide varying levels of latitude in framing their requests. This can allow for a standardized interface contract between systems and network elements that encapsulate how the interface contract is implemented so that changes to the implementation can be isolated and hidden. Further, actions can be defined declaratively, which can enable mapping of action parameters to entity specifications and which can eliminate much of the coding that is normally needed to perform this transformation. This can reduce overall solution complexity, and provide systems with needed agility to adapt to typical industry developments, such as deployment of new technologies, devices, network elements, partnerships, business models, etc. This can further reduce cost and time needed to make necessary changes. Additionally, the use of actions can improve clarity of requests through use of disciplined 8 Appeal2017-005563 Application 13/936,660 semantics, and can provide a higher degree of dynamism through configuration of process logic using templates. Spec. ,r 255. Because the additional elements of claim 1 integrate the mental processes into a practical application, we determine claim 1 is not directed to an abstract idea. See Memorandum, Step 2A, Prong 2. For similar reasons, each of claims 2 and 4--21 integrates the mental processes into a practical application, and is not directed to an abstract idea. Therefore, we reverse the rejection of claims 1, 2, and 4--21 under 35 U.S.C. Â§ 101. 35 USCÂ§ 103 We have reviewed the Examiner's rejection in light of Appellants' contentions and the evidence of record. We concur with Appellants' contention that the Examiner erred in determining the cited prior art portions teach "wherein the generating the one or more technical actions and the generating the one or more technical order lines are both based on the metadata that identifies and decouples technical actions for execution on a network during reconfiguration," as recited in independent claim 1 (emphasis added). See App. Br. 15-16; Reply Br. 5---6. The Examiner finds "Reilly in view of Frew et al. and further in view of Goldberg et al. do not specifically disclose" the italicized limitation, but cites Schwartz's paragraphs 8, 34, 52, 54, and 98 instead. Final Act. 19. In response to Appellants' arguments, the Examiner further cites Schwartz's paragraph 48. See Ans. 11. We have reviewed the cited Schwartz paragraphs, and find they do not describe "identifies and decouples technical actions for execution on a network during reconfiguration," as required by claim 1. In particular, while the cited Schwartz paragraphs discuss 9 Appeal2017-005563 Application 13/936,660 decoupling foreground work and background work, that discussion is insufficient for teaching or suggesting the italicized limitation. 4 Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner's rejection of claim 1. Each of independent claims 12 and 17 recites a claim limitation that is substantively similar to the disputed limitation of claim 1. See claims 12 and 17. Therefore, for similar reasons, we reverse the Examiner's rejection of independent claims 12 and 1 7. We also reverse the Examiner's rejection of corresponding dependent claims 2, 4--11, 13-16, and 18-21. DECISION We reverse the Examiner's decision rejecting claims 1, 2, and 4--21 under 35 U.S.C. Â§ 101. We reverse the Examiner's decision rejecting claims 1, 2, and 4--21 under 35 U.S.C. Â§ 103. REVERSED 4 The Examiner also determines "the claimed technical actions steps are not even required to be carried out because the claimed limitations are intended use" (Ans. 12). We disagree because the Examiner has not established why the italicized limitation merely constitutes intended use and does not have patentable weight. Further, "[i]t is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). Claim 1 is a method-not a product----claim, and we conclude Schreiber's intended-use doctrine is inapplicable to claim 1 (and similarly, claims 2 and 4--16). 10