Katrina Simon

Patent Trials and Appeals Board

Sep 26, 2019

13720457 - (D) (P.T.A.B. Sep. 26, 2019)

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.
13/720,457 12/19/2012 Katrina Simon AC-5135-92 5932
23117 7590 09/26/2019
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte KATRINA SIMON1
________________

Appeal 2017-009569
Application 13/720,457
Technology Center 3600
________________

Before CARL W. WHITEHEAD JR., JASON V. MORGAN, and
AARON W. MOORE, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1–10, 16, and 18–27. Claims 11–15 and 17 are canceled.
Appeal Br. 32–33. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies SOFTWARE AG as the real party in interest. Appeal
Br. 3.
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Summary of the disclosure
The Specification discloses the analysis of “functions of a business
process model for possible exposure as service capabilities in a service-
oriented business process system.” Abstract.
Representative claims (key limitations emphasized)
1. A method of analyzing functions of a business process
model for possible exposure as service capabilities in a service-
oriented business process system, the method comprising:
receiving a business process model defined by a plurality of
objects, each said object having metadata attributes associated
therewith;
programmatically obtaining, by using at least one hardware
processor, design time business process analysis intelligence
for each one of the plurality of objects that are part of the
business process model;
programmatically obtaining, by using at least one hardware
processor, run time process performance intelligence for each
one of the plurality of objects that are part of the business
process model;
storing, for at least those objects in the model that correspond to
process functions, indicators corresponding to the gathered
design time intelligence, the gathered run time intelligence, and
the metadata attributes;
calculating, via at least one processor of the service-oriented
business process system, a total service eligibility value for
each process function in the model based on the corresponding
stored indicators of the gathered design time intelligence, the
gathered run time intelligence, and the metadata attributes; and
exposing a given process function as a service capability if the
total service eligibility value for that process function exceeds a
predetermined threshold value,
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wherein the indicators include process indicators, data
indicators, organizational indicators, and goal and event
indicators, and
wherein each total service eligibility value is a weighted
combination of the associated indicators.
6. The method of claim 1, further comprising:
gathering the design time business process analysis intelligence
via scripted macros or reports; and
gathering the run time process performance intelligence via an
interface to a process monitoring tool.
21. The method of claim 1, further comprising:
gathering the design time business process analysis intelligence
via scripted macros or reports;
gathering the run time process performance intelligence via an
interface to a process monitoring tool;
generating a first graphical display of a representation of at
least a portion of the business process model, the portion
including a plurality of the objects in the business process
model;
in response to a user request, generating a second graphical
display including metadata attributes of a user-selected object
in the business process model, wherein indicators
corresponding to gathered business process analysis
intelligence and/or gathered process performance intelligence
for the user-selected object are included in the second
graphical display, together with the metadata attributes, in a
matrix format;
receiving a request for a service from a user; and
generating, as a result of the request for the service, a third
display including at least one service candidate.
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The Examiner’s rejections and cited references
The Examiner rejects claims 1–10, 16, and 18–27 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 7–10.
The Examiner rejects claims 1–10, 16, and 18–20 under 35 U.S.C.
§ 103(a) as being unpatentable over Allam et al. (US 2011/0191745 A1;
published Aug. 4, 2011) (“Allam”) and McGuire et al. (US 2010/0251264
A1; published Sept. 30, 2010) (“McGuire”). Final Act. 10–23.
The Examiner rejects claims 21–26 under 35 U.S.C. § 103(a) as being
unpatentable over Allam, McGuire, and Lakhotia et al. (US 2007/0061283
A1; published Mar. 15, 2007) (“Lakhotia”). Final Act. 24–30.
35 U.S.C. § 101
Principles of law
To be statutorily patentable, the subject matter of an invention must be
a “new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in § 101, including: (1) laws of nature; (2) natural phenomena; and
(3) abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
The Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions “from those that claim patent-
eligible applications of those concepts.” Id. at 217 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The
evaluation follows a two-part analysis: (1) determine whether the claim is
directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if so,
then determine whether any element, or combination of elements, in the
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claim is sufficient to ensure that the claim amounts to significantly more
than the patent-ineligible concept itself. See id. at 217–18.
“[A]ll inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S.
at 71. We “‘must be careful to avoid oversimplifying the claims’ by looking
at them generally and failing to account for the specific requirements of the
claims.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313
(Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607,
611 (Fed. Cir. 2016)).
The U.S. Patent and Trademark Office (USPTO) recently published
revised guidance on the application of the two-part analysis. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (“Memorandum”). Under that guidance, 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) (see id. at 54 (step 2A, prong
one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
See Memorandum, 84 Fed. Reg. at 52–55.
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:
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(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 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.
See Memorandum, 84 Fed. Reg. at 56.
Memorandum step 2A, prong one
In rejecting claim 1, the Examiner finds the claims recite
“mathematical relationships/formulas” (i.e., mathematical concepts). Final
Act. 8. Appellant acknowledges this characterization of the claim recitations.
Appeal Br. 12. Appellant does not, however, dispute the Examiner’s
determination with particularity or persuasiveness.
Appellant “respectfully disagrees” with the Examiner’s
characterization of the claim 1 recitations (id.), but does not address with
particularity whether claim 1 recites mathematical concepts (id. at 13–15).
The closest Appellant comes to contesting the Examiner’s characterization
of claim 1 as reciting mathematical concepts is to argue that claim 1 is
distinguishable from the patent-ineligible subject matter in Digitech2—“a
process of organizing information through mathematical correlations”
(Digitech, 758 F.3d at 1350)—because “[n]one of the claims in Digitech,
unlike the instant case, related to how that data was analyzed or processed”
(Reply Br. 5). Appellant’s argument, however, falls short of actually
disputing that claim 1 recites mathematical concepts.

2 Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344,
1349 (Fed. Cir. 2014).
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Furthermore, a broad but reasonable interpretation of calculating, via
at least one processor of the service-oriented business process system, a
total service eligibility value for each process function in the model based on
the corresponding stored indicators of the gathered design time intelligence,
the gathered run time intelligence, and the metadata attributes, when read in
light of the Specification, encompasses mathematical concepts. Specifically,
the calculating recitation encompasses use of the following formula for
determining “the eligibility of a function to be exposed as a service
capability” (Spec. ¶ 73):
ServiceEligibility(Fi)=
BusinessRelevance(Fi)[Reuse(Fi,t)−DataCoupling(Fi)+DataCohesion(Fi)+
Outttasking(Fi)+Visibility(Fi)−maxOrgOcc(Fi)−maxAppOcc(Fi)]
Spec. ¶ 72 (cited in Appeal Br. 4).
Because the calculating recitation encompasses a mathematical
formula, we agree with the Examiner’s determination that claim 1 recites
mathematical concepts, and, thus, that claim 1 recites an abstract idea. See
Memorandum, 84 Fed. Reg. at 52.
Memorandum step 2A, prong two
The Examiner determines that additional recitations of claim 1
represent “details directed to gathering and evaluating data.” Final Act. 8;
see also Ans. 26–28, 31. Appellant contends the Examiner over-generalizes
the recitations. See Appeal Br. 15. In particular, Appellant argues that, like
the claimed invention of McRO, claim 1 sets “forth specific technical
features that improve upon an existing technical process of determining what
functions are to be exposed as a service candidate (e.g., similar for
determining how McRO determined how facial expresses were to be
animated using rules).” Appeal Br. 16–17; see also Reply Br. 2–4.
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Appellant’s arguments are unpersuasive because the purported
improvement of “determining what functions are to be exposed as a service
candidate” (Final Act. 8) is only found in the recitation of (1) exposing a
given process function as a service capability (2) if the total service
eligibility value for that process function exceeds a predetermined threshold
value. Part one of the recitation represents a conditional step that is not
performed in the scenario of the total service eligibility value for the process
function being less than or equal to (i.e., not exceeding) the predetermined
threshold value. See Ex parte Schulhauser, Appeal No. 2013-007847, 2016
WL 6277792, at *5 (PTAB 2016) (precedential) (the broadest reasonable
interpretation of a claim to a method excludes conditional steps that need not
be performed). Moreover, although part two of the recitation describes the
condition in which the first part is performed, no steps for testing for the
condition are recited. Because the purported improvement of “determining
what functions are to be exposed as a service candidate” (Final Act. 8) is
based on a conditional recitation, it need not be considered in ascertaining
whether claim 1 is directed to patent-eligible subject matter (cf. Mentor
Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1295 (Fed. Cir. 2017)
(citing MPEP § 2106 (9th ed. Mar. 2014)) (“a claim [that] covers ‘both
statutory and non-statutory embodiments,’ . . . is not eligible for
patenting”)).
Without the conditional step, the remaining recitations—aside from
the calculating recitation—generally recite steps for receiving a business
process model, programmatically obtaining design business process,
programmatically obtaining run time process performance intelligence, and
storing indicators. In accordance with the Examiner’s determinations, these
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recitations represent data gathering (e.g., receiving, obtaining, or storing)
steps that fail to make claim 1 patent-eligible. See Final Act. 8.
For these reasons, the additional recitations of claim 1 do not integrate
the recited mathematical concepts into a practical application. Therefore,
claim 1 is directed to mathematical concepts, and thus to an abstract idea.
See Memorandum, 84 Fed. Reg. at 54–55.
Memorandum step 2B
The Examiner determines that the additional elements of claim 1 do
not make claim 1 significantly more than the underlying abstract idea
because claim 1 does not:
(1) include improvements to another technology or technical
field; (2) include improvements to the functioning of a claimed
computer itself; (3) apply the judicial exception with, or by use
of, a particular machine; (4) effect a transformation or reduction
of a particular article to a different state or thing; (5) add a
specific limitation other than what is well-understood, routine
and conventional in the field, or add unconventional steps that
confine the claims to a particular useful application; or (6)
present other meaningful limitations beyond generally linking
the use of the judicial exception to a particular technological
environment.
Final Act. 10.
Appellant contends the Examiner erred by failing to consider:
1) the programmatic acquisition of design time data; 2) the
programmatic acquisition of run time data; 3) the fact that the run
and design time area are with respect to the same object(s) of the
business process model; and 4) the determination of whether or
not to expose a given process function based on these different
pieces of data.
Appeal Br. 19.
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With respect to contentions 1) and 2), the Specification does not
disclose or define “programmatically obtaining” (i.e., programmatic
acquisition) of data (whether design time or run time) in any detail beyond
simple labeled boxes (see Spec. Figs. 6, 9) and simple descriptions such as
“business process analysis” and business or process “performance
intelligence” (id. ¶¶ 88, 95). See also Appeal Br. 4. Such high-level
descriptions in support of the “programmatically obtaining” recitations serve
as evidence that these recitations relate to processes that an artisan of
ordinary skill would have considered to be well understood, routine, and
conventional. If the inventor had believed these processes were not well
understood, routine, and conventional, then the inventor would have likely
provided more details to ensure that the Specification’s description both
enabled and provided proper written description support for these
recitations.
With respect to contention 3) (“the fact that the run and design time
area are with respect to the same object(s) of the business process model”),
we agree with the Examiner’s determinations that “the fact that the gathered
data is ‘design time’ data and ‘run time’ data refers only to the content of the
gathered data” and that the business process model being “defined by a
plurality of objects (each object having associated metadata attributes) . . .
amounts to generic data structures.” Ans. 28.
Finally, with respect to contention 4) (“the determination of whether
or not to expose a given process function based on these different pieces of
data”), we note that, as discussed above, claim 1 does not recite testing for
the conditional step’s condition.
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Furthermore, the additional recitations such as a “hardware processor”
are, at best, disclosed in broad, generic terms. See, e.g., Spec. ¶ 96.
For these reasons, we agree with the Examiner that the additional
recitations of claim 1 do not make claim 1 significantly more than the
underlying abstract idea. See Final Act. 10. Accordingly, we sustain the
Examiner’s 35 U.S.C. § 101 rejection of claim 1, and claims 2–10, 16, and
18–26, which Appellant does not argue separately.
Claim 27
Appellant argues that “[d]ependent claim 27 sets forth additional
specific features related to the process for determining which process
functions are to be exposed as a service capability.” Appeal Br. 21.
Specifically, Appellant reproduces the claim language of claim 27 and
contends the recitations represent “additional features [that] further ensure
that the claimed subject matter is not a mere ‘drafting effort’ designed to
monopolize the alleged abstract idea.” Id. The Examiner, however, correctly
determines that the limitations of claim 27 merely “further define the details
of the abstract ideas.” Ans. 32.
Specifically, claim 27 describes elements of the formula found in
paragraph 72 of the Specification (discussed above), as detailed in the
annotated recitations below:
obtaining a first value [Reuse(Fi,t)+DataCohesion(Fi)+
Outttasking(Fi)+Visibility(Fi)] that is based on the expected
reusability of the function over a predefined time period
[Reuse(Fi,t)], the data cohesion of the function
[DataCohesion(Fi)], or out-tasking [Outttasking(Fi)] and
visibility [Visibility(Fi)] variables respectively indicating the
extent to which execution of the function can be out-tasked to
stakeholders and can be made visible to stakeholders, and
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obtaining a second value [Reuse(Fi,t)−DataCoupling(Fi)+
DataCohesion(Fi)+Outttasking(Fi)+Visibility(Fi)−
maxOrgOcc(Fi)−maxAppOcc(Fi)] by using: 1) the first value,
and 2) a degree of data coupling for the function
[DataCoupling(Fi)], a maximum number of organizational units
involved in the function [maxOrgOcc(Fi)], or a maximum
number of application systems involved in the function
[maxAppOcc(Fi)],
wherein calculation of the total service eligibility value for the
function [ServiceEligibility(Fi)] is based on a combination [(i.e.,
multiplying)] of the obtained second value and a predefined
relevance value for the function [BusinessRelevance(Fi)].
Claim 27; Spec. ¶ 72 (cited in Appeal Br. 8–9).
Merely describing parts of a formula is insufficient to transform the
mathematical concepts embodied therein into a patent-eligible non-abstract
invention.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 27.
35 U.S.C. § 103(a)
Claims 1–5, 7–10, 16, and 18–21
In rejecting claim 1 as obvious, the Examiner finds that McGuire’s
management and monitoring of a business process—which includes design
time introspection and runtime listening to business object state changes—
teaches or suggests: (1) programmatically obtaining design time business
process analysis intelligence for each one of the plurality of objects that are
part of the business process model and (2) programmatically obtaining run
time process performance intelligence for each one of the plurality of objects
that are part of the business process model. Final Act. 15 (citing McGuire,
Abstract, ¶¶ 11, 27–29, 49, 53–58).
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Appellant acknowledges that McGuire mentions design-time and run-
time processes. Appeal Br. 23. Appellant contends, however, that McGuire
merely discusses “performing certain processes during design-time and
others during run-time.” Id.
With respect to the design-time recitation, Appellant argues that
McGuire “simply determines possible state changes for a specific object
type, but does not programmatically obtain design time data for ‘each one of
the plurality of objects’ that are part of the process model.” Id. at 24. The
Examiner, however, finds that McGuire teaches collection of all aspects of
the business process, and thus implies that “design-time data and run-time
data for each of the objects are ultimately gathered.” Ans. 33; see also, e.g.,
McGuire ¶ 55 (available object types may be listed). Appellant does not
dispute this finding, which we find reasonable.
With respect to the run-time recitation, Appellant argues that in
listening for events, McGuire merely suggests monitoring “that the program
is operating as it normally would – not that any ‘run time process
performance’ data is being obtained (e.g., such as the execution time for the
process).” Appeal Br. 24; see also Reply Br. 6. We agree with the Examiner,
however, that McGuire’s monitoring that objects are operating represents the
tracking of their performance. Ans. 34. We can find nothing in claim 1 or in
the Specification limiting or defining the claimed “performance intelligence”
to be as narrow as “execution time for the process.”
Appellant further argues that “McGuire also fails to provide any
teaching or suggestion that links the use of the programmatically obtained
design time and run time process performance data regarding the objects of
the process model to the determination of what functions are to be exposed
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as service candidates.” Appeal Br. 24. As discussed above as part of the
analysis of the Examiner’s 35 U.S.C. § 101 rejection of claim 1, however,
claim 1 does not recite testing for the conditional step’s condition.
Appellant also argues that McGuire does not use run time process
performance intelligence “in the calculation of a total service eligibility
value in the manner claimed,” and that “McGuire’s discussion of listening
for state changes would [not] have been of any use to Allam’s service litmus
test.” Reply Br. 7. Appellant’s arguments are untimely, however, and will
not be considered. 37 C.F.R. § 41.41(b)(2).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1, and claims 2–5, 7–10, 16, and 18–21, which Appellant does not
argue separately with respect to this rejection.
Claims 6
In rejecting claim 6 as obvious, the Examiner finds that McGuire’s
management and monitoring of a business process also teaches or suggests
the particular gathering of design time business process analysis intelligence
and run time process performance intelligence recited. Final Act. 19 (citing
McGuire, Abstract, ¶¶ 11, 13, 27–29, 34, 49, 53–58).
Appellant contends the Examiner erred in relying on the same
disclosures of McGuire “for the two separate features set forth in dependent
claim 6.” Appeal Br. 26. We do not agree. The cited eleven paragraphs (plus
the Abstract) relate to both design-time introspection and runtime listening
to business object state changes. See, e.g., McGuire ¶ 11. The Examiner did
not err in relying on these portions of McGuire for all that they teach and
suggest.
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Appellant further contends the Examiner erred because the document
data in McGuire “is data that is used by the executing process – not data that
is about that process” and that “McGuire does not contain any disclosure of
using reports or scripted macros to gather design time data.” Appeal Br. 27.
Appellant does not, however, persuasively rebut the Examiner’s finding that
“[a]ny monitoring, notification, or presentation of the data is a report of the
data.” Ans. 35. Therefore, we agree with the Examiner that McGuire’s
communications of data gathered regarding business objects teaches or
suggests the disputed recitations of claim 6.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 6.
Claims 21
Appellant contends claim 21 is patentable for similar reasons to those
given with respect to claim 6. See Appeal Br. 28. For similar reasons to
those discussed above, we do not find Appellant’s arguments persuasive.
Appellant further contends the Examiner erred in rejecting claim 21
by not giving patentable weight to the features of generating a first
graphical display and, in response to a user request, generating a second
graphical display. Id. The Examiner, however, does not rely solely on the
claim features being non-functional descriptive material, but instead presents
findings based on the combined teachings of Allam and Lakhotia to teach or
suggest modifying McGuire to include the disputed recitations. See Final
Act. 27–28 (citing Allam, Abstract, Figs. 6, 7; Lakhotia Fig. 4, ¶¶ 36–54).
That is, the Examiner’s interpretation of the disputed recitations as being
non-functional descriptive material forms an alternative, non-dispositive
basis for rejection rather than the sole basis for rejection. Because, as
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detailed below, we agree with the Examiner’s findings and conclusions
based on the prior art teachings and suggestions, we do not address further
whether and to what extent claim 21 recites non-functional descriptive
material.
Appellant argues that Allam merely displays service litmus tests for
services with “no discussion of displaying the design-time and run-time
performance data for a given object of a process model that has been
selected.” Id. at 29. The Examiner, however, relies on McGuire, not Allam,
to teach or suggest the design-time and run-time content. See Final Act. 25–
26; Ans. 36. Appellant’s argument attacking Allam individually rather than
in combination with McGuire and Lakhotia, is not responsive to the
Examiner’s rejection and is, therefore, unpersuasive.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 21, and claims 22–26, which Appellant does not argue separately
with respect to this rejection.
DECISION
We affirm the Examiner’s decision rejecting claims 1–10, 16, and 18–
27 under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1–10, 16, and 18–
26 under 35 U.S.C. § 103(a).
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.
§ 41.50(f).
AFFIRMED