Ex Parte Zhu

Patent Trial and Appeal Board

Oct 26, 2018

12755412 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/755,412 04/06/2010 Xinjie (Jay) Zhu
80812 7590 10/30/2018
Trellis IP Law Group/Oracle
1900 Embarcadero Road
Suite 109
Palo Alto, CA 94303
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.
ORACP0032 8548
EXAMINER
BROCKINGTON III, WILLIAMS
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/30/2018 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):
docket@trellislaw.com
megan@trellislaw.com
ann@trellislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XINJIE (JAY) ZHU
Appeal2017-008628 1
Application 12/755,412
Technology Center 3600
Before HUNG H. BUI, JON M. JURGOV AN, and ADAM J. PYONIN,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject all pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 "The real party in interest is Oracle International Corporation, the assignee
of record." App. Br. 1.
Appeal2017-008628
Application 12/755,412
STATEMENT OF THE CASE
Introduction
The Application is directed "to tools that support product lifecycle
management" using a "bill of materials (BOM) [which] is a list of resources
used to generate a product." Spec. ,r,r 1, 3.
Claims 1-3, 5-19, 21, and 22 are pending; of these, claims 1, 10, and
17 are independent. See App. Br. 34--42. Claim 1 is reproduced below for
reference ( emphases added):
1. A product lifecycle management method, the method
comprising the following acts performed by a bill of material
(BOM) management system in conjunction with a data
processing system:
storing on a data processing system data corresponding to
multiple sections of a project in an item table that includes item
objects, each of the item objects providing an initial description
of one or more of the sections;
recording changes to the initial description amongst data
entries of a change table, a revision table and a BOM table,
wherein the change table, the revision table and the BOM table
are separate tables, wherein the BOM table includes a pointer to
the change table, the change table includes a pointer to the
revision table, and the item table is locatable at least via the
revision table;
in response to the changes to the initial description,
defining change objects indicating variations made to the initial
description of the one or more sections of one or more of the item
objects including at least one unreleased change to the one or
more sections;
receiving a development sequence of the project;
in response to receiving the development sequence of the
project, defining relationships between the change objects and
the item objects associated with the project and storing change
information for the item objects associated with the development
sequence, wherein the pointer from the BOM table to the change
table is used as part of the storing of the change information;
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Application 12/755,412
generating a hierarchical data structure from the
relationships configured to define a hierarchy relative to an item
object of the project;
in response to parameters of a BOM query of the BOM
management system, locating a set of the change objects in the
change table via the pointer in the BOM table to the change
table, wherein the set of the change objects corresponds to query
parameters of the BOM query;
in response to the locating of the set of the change objects,
producing a resolved BOM by processing a set of the change
objects that correspond to the query parameters of the BOM
query;
determining, from the set of the change objects, properties
of the one or more sections from information related to contents
of the item table and the change table corresponding to the set of
the change objects; and
generating, in accordance with the hierarchical data
structure, a visual perceivable representation of the resolved
BOM from the information including the properties and
information related to the set of the change objects and the at
least one unreleased change to the one or more sections,
wherein the storing on the data processing system data, the
recording, the defining of the change objects, the receiving of the
development sequence, the defining of the relationships, the
generating of the hierarchical data structure, the locating of the
set of the change objects in the change table, the producing of the
resolved BOM, the determining of the properties, the generating
of the visual perceivable representation are executed by one or
more processors of a computer.
The Examiner's Rejections2
Claims 1-3, 5-19, 21, and 22 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Final Act. 4.
2 In the Answer, the Examiner withdraws the obviousness rejection of the
claims. See Ans. 2-3.
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Application 12/755,412
Claims 1-3, 5-19, 21, and 22 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 6.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv); Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas, 551 F.3d
1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments Appellant
failed to make for a given ground of rejection as waived).
A. 35 US.C. § 112
In determining the claims "fail[] to comply with the written
description requirement," the Examiner finds the following limitations are
not sufficiently described in the Specification:
1. "Claims 1, 10, and 17, as amended, include limitations
indicating that the BOM table includes a pointer to the change
table and the change table includes a pointer to the revision
table," and
2. "the independent claims have been amended to indicate that the
pointers are used as part of the storing and that pointers are
used to locate a set of change objects in response to submitted
parameters."
Final Act. 4--5.
Appellant argues the application includes "[ s ]upport for 'the BOM
table includes a pointer to the change table and the change table includes a
pointer to the revision table,' [which] can be found at least at Figure 5 and
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Application 12/755,412
accompanying description." App. Br. 13. Appellant further argues that "the
pointers as illustrated in the data set 26 of Figure 5 are used as part of the
locating and/or storing as discussed in the instant Application as filed."
Reply Br. 3; see also App. Br. 13-14.
We are persuaded by Appellant's arguments. The Examiner defines
"a 'pointer' [as] a term of art in the field of computer science," specifically
"an object that references another value stored elsewhere in memory." Ans.
5. Appellant's figures 3 and 5 graphically depict (using arrows) the BOM
table references the change table, and the change table references the
revision table. See App. Br. 14. Appellant's Specification further explains
the various tables reference values in each other's memory, and "[ c ]hange
table 3 8 includes objects that indicate changes made to descriptions of
sections 28-34" and "BOM table 37 points to both item table 36 and change
table 38." Spec. ,r,r 27, 28; see also Spec. ,r,r 32, 35. The Examiner does not
explain how this disclosure is distinguishable from the claimed use of a
pointer as understood by one of ordinary skill. See MPEP § 2163.04.
Thus, we do not sustain the Examiner's written description rejection
of independent claim 1, of independent claims 10 and 17 which recite
similar limitations, or of the claims dependent thereof. See Final Act. 4--5.
B. 35 US.C. § 101
Appellant argues "[c]laims 1-3, 5-19, 21 and 22 recite statutory
subject matter under 35 U.S.C. 101." App. Br. 16. We are not persuaded
the Examiner errs in determining the claims are patent-ineligible, pursuant to
the two-step patent-eligibility framework provided in Alice Corp. Pty. Ltd. v.
CLS Banklnt'l, 134 S. Ct. 2347 (2014)). See Ans. 2. We adopt the
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Examiner's reasoning with respect to this rejection, and we add the
following for emphasis.
Alice Step One
Appellant argues "[ c ]laim 1 recites an 'item table,' 'change table,'
'revision table' and a 'BOM table' and specific types of processing that
occurs with the tables," (App. Br. 15) such that "the recited embodiments are
not abstract within the meaning of Alice but rather 'the claims are specific
implementation of a solution to a problem in the software arts"' (Reply Br.
4, citing Enfzsh LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
Particularly, Appellant contends the "instant specification describes
improvements in processing, such as improving computing time and
resource utilization, attributable" to the recited claim limitations. App. Br.
15 (citing Spec. ,r,r 3, 35).
We are not persuaded the Examiner errs in determining claim 1 is
directed to "organiz[ing] BOM data with respect to, at least, sections of a
project," which is "directed to using categories to organize, store, and
transmit information, which is an abstract idea." Final Act. 7. The claimed
tables and processing are used to manage a bill of material for a product,
which is a fundamental economic practice and which may be done using pen
and paper. See Spec. ,r 3; CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011) ("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."); Gottschalk v.
Benson, 409 U.S. 63 (1972). Appellant does not show that the claimed
method of managing a "vast quantity of information" and allowing for
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"efficient querying" is anything other than the use of a computer in its
ordinary capacity. App. Br. 15. "[R]elying on a computer to perform
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359 ("use of a computer to
create electronic records, track multiple transactions, and issue simultaneous
instructions" is not an inventive concept)); see also Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
("[M]erely adding computer functionality to increase the speed or efficiency
of the process does not confer patent eligibility on an otherwise abstract
idea.").
The only similarity with the claims in Enfish is the use of tables;
however, Appellant does not show the Examiner errs in determining the
claims do not provide a technical improvement over commercially available
tools. Ans. 10; Spec. ,r,r 3-5; see Enfzsh, 822 F.3d at 1336. Rather, we agree
with the Examiner that, unlike the claims in Enfzsh, the focus of claim 1 is
on a business improvement of organizing a bill of materials for a project.
See Ans. 9-10; Spec. ,r,r 3-5, 35, 44; cf Enfzsh, 822 F.3d at 1336 ("the plain
focus of the claims is on an improvement to computer functionality itself,
not on economic or other tasks for which a computer is used in its ordinary
capacity.").
Accordingly, we determine independent claim 1 fits into the familiar
class of claims that do not "focus ... on [] an improvement in computers as
tools, but on certain independently abstract ideas that use computers as
tools." Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016). That is, the claim is directed to an abstract concept, and is
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similar to claims our reviewing courts have found to be abstract. See Final
Act. 7; see also Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d
1315, 1328, 1330 (Fed. Cir. 2017) ("the heart of the claimed invention lies in
creating and using an index to search for and retrieve data ... an abstract
concept," and "remotely accessing user-specific information is abstract");
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) ("The concept of data collection,
recognition, and storage is undisputedly well-known"); Elec. Power Grp.,
830 F.3d at 1353 (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent-ineligible concept").
Alice Step Two
We also agree with the Examiner that claim 1 "do[ es] not include
limitations amounting to significantly more than the abstract idea" under
step two of the Alice framework. Final Act. 8. As discussed above, we
agree with the Examiner that the claim does not improve the underlying, or
other, technology. See Ans. 9--12; see also Spec. ,r,r 23, 25, 46-49. In
response to the Examiner's determination, Appellant provides a conclusory
argument that the claims are not generic and well known, which is
insufficient to show the Examiner errs. Reply Br. 4--5; cf SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006)
("[M]ere statements of disagreement ... do not amount to a developed
argument.").
Appellant, further, explains that the claimed pointer structures are
well understood by those of ordinary skill in the art and that commercial
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tools are currently available to manage BOMs. Reply Br. 2 ("Appellant
notes that one of ordinary skill in the art would reasonably understand the
arrows depicted in Figures 3 and 5 could be implemented as pointers."),
Reply Br. 3 ("To facilitate managing the vast quantity of information that
may be associated with BOMs, several commercially available tools are
available"); see also page 3 of the US PTO Memorandum on Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), April 19, 2018
("A specification demonstrates the well-understood, routine, conventional
nature of additional element( s) ... in a manner that indicates that the
additional elements are sufficiently well-known that the specification does
not need to describe the particulars of such additional elements to satisfy
35 U.S.C. § 112(a)."). Such well-known and routine elements are not
enough to transform the claim into a patent-eligible application. Alice, 134
S. Ct. at 2360.
Accordingly, we are not persuaded the Examiner errs in determining
claim 1 is "directed to an abstract idea without including additional elements
amounting to significantly more than the abstract idea." Ans. 12. We
sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 101.
Appellant does not separately argue the remaining claims (see App. Br. 14--
16); thus, we sustain the Examiner's rejection of claims 2, 3, 5-19, 21, and
22 under 35 U.S.C. § 101 for the same reasoning.
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DECISION
The Examiner's decision rejecting claims 1-3, 5-19, 21, and 22 under
35 U.S.C. § 112, first paragraph is reversed.
The Examiner's decision rejecting claims 1-3, 5-19, 21, and 22 under
35 U.S.C. § 101 is affirmed.
The Examiner's decision is affirmed because we have affirmed at
least one ground of rejection with respect to each claim on appeal. See
37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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