Lin Yang

Patent Trials and Appeals Board

Aug 28, 2019

13167686 - (D) (P.T.A.B. Aug. 28, 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.
13/167,686 06/23/2011 Lin Yang 20628-P38118US00 8596
1059 7590 08/28/2019
BERESKIN & PARR LLP/S.E.N.C.R.L., s.r.l.
40 KING STREET WEST
40th Floor
TORONTO, ONTARIO M5H 3Y2
CANADA
EXAMINER
CHANG, TOM Y
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
08/28/2019 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):
ipprocessingcentre@bereskinparr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte LIN YANG1
________________

Appeal 2018-008523
Application 13/167,686
Technology Center 2400
________________

Before BARBARA A. BENOIT, SHARON FENICK, and
RUSSELL E. CASS, Administrative Patent Judges.

CASS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–33, which constitute all the claims pending in this
application. Appeal Br. 6.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the Examiner’s rejection under 35 U.S.C. § 101 and affirm the
rejection under 35 U.S.C. § 102.

1 Appellant lists D2L Corporation as the real party in interest. Appeal Brief
filed April 16, 2018 (“Appeal Br.”) 2.
2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
March 15, 2017 (“Final Act.”); the Examiner’s Answer mailed June 29,
2018 (“Ans.”); and the Reply Brief filed August 29, 2018 (“Reply Br.”).
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BACKGROUND
The present invention relates to systems and methods for processing
network requests, such as Hypertext Markup Language) (HTML) requests,
over the Internet or another communications network. Spec. ¶ 1.
Appellant’s Specification explains that a common networking protocol used
to route information through the Internet is the Hypertext Transfer Protocol
(HTTP), and that generally each request from the client to the server, and
each response from the server to the client, needs routing information such
as HTTP wrappers in order to be properly transmitted and received. Id. ¶ 3.
Thus, each web request has an overhead cost associated with it, and reducing
the number of requests may also reduce the overall time to accomplish a
functional task, particularly if the network transmission is relatively slow.
Id. ¶ 20.
The present invention provides a web service system and method that
seeks to reduce the number of requests sent by generating and transmitting a
piped request comprising multiple discrete requests. Id., Abstract. The
server receives the piped requests, de-pipes each discrete request from the
piped requests, and executes each discrete request to generate a result
associated with the discrete request. Id. Piped requests may be indicated by
using a vertical slash “ǀ” between the discrete requests. Id. ¶ 32. A discrete
request in a piped request may also include dependency information that
refers to the result of a previous discrete request and may be used in the
execution of the present discrete request. Spec. ¶ 34. When the server
receives the piped request, it unwraps the routing information and extracts
the discrete requests provided in the web request, determines any
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dependency between the requests, and determines the order of execution. Id.
¶ 35.
Claim 13 is illustrative of the claims at issue:
1. A web service system, comprising:
at least one client processor adapted to:
identify a first request, the first request being individually
transmittable to at least one server processor,
identify a second request, the second request being
dependent upon an execution of the first request, and the second
request being individually transmittable to the at least one
server processor,
generate a piped request comprising a wrapping including
routing information, the first request, the second request, and
information indicating whether or not the second request is
dependent on the first request, wherein the first request and the
second request are collectively included within the wrapping of
the piped request, and
transmit the piped request to the at least one server processor
over the Internet; and
the at least one server processor in data communication with the
at least one client processor, the at least one server processor
adapted to:
receive the piped request,
de-pipe the first request and the second request from the
piped request,

3 The Claims Appendix for Appellant’s Brief includes a typographical error
in claim 1 reciting “exception of the first request” instead of “execution of
the first request.” Appeal Br. 17 (Claims Appendix). The correct language
is set forth in the Amendment filed in the present application on November
17, 2013.
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execute the first request, and
execute the second request, without providing information
about the execution of the first request to the at least one client
processor.
Appeal Br. 17–18 (Claims Appendix).

PRINCIPLES OF LAW
A. SECTION 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’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
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and
Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). 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. Kappos, 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
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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, 67 (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))).
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 turn 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-
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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. (alterations in original) (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.
B. USPTO SECTION 101 GUIDANCE
The United States Patent and Trademark Office (“USPTO”) recently
published revised guidance on the application of § 101. USPTO,
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”). Under the 2019 Guidance, we first look
to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
See 2019 Guidance, 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:
(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
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(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 2019 Guidance, 84 Fed. Reg. at 56.

ANALYSIS
I. THE SECTION 101 REJECTION
A. The Examiner’s Rejection and Appellant’s Contentions
In the Final Office Action, the Examiner rejected claims 1, 13, and 25
as being directed to non-statutory subject matter. Final Act. 2. The
Examiner determines that the claimed invention is directed to the abstract
idea of “organizing human activities” because the “underlying invention is
merely the act [of] performing two operations in sequence which is a
practice performed by humans in a computing system.” Id.at 3. The
Examiner determines that piping of requests are “well[-]known” and
“well[-]establish[ed] in computer programming.” Id. The Examiner further
determines that the “limitations of the independent claims merely comprise
very broad and general instructions to implement the abstract idea on a
computer and require no more than a generic computer to perform generic
computer functions that are well-understood, routine and conventional
activities previously known to the industry.” Id. at 2–3; see also Ans. 14–
17.
Appellant responds that the claims are not directed to the abstract idea
of organizing human activities, and that the idea of piping requests “is not
similar to any concept that the courts have identified as an abstract idea.”
Appeal Br. 7. Appellant asserts that the Examiner improperly characterized
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the abstract idea too broadly, and that “the presently claimed combination of
features is not merely directed to organizing human activities, but rather
includes features of generating piped requests in connection with improving
the efficiency of processing of web requests and the communication of
results associated therewith.” Id. at 8. Appellant further argues that the
claims provide a solution that is “necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks.” Id. at 9.
B. Analysis under Step 2A, Prong 1, of the 2019 Guidance
Under Step 2A, Prong 1, of the 2019 Guidance, we first must
determine whether any judicial exception to patent eligibility is recited in the
claim. The 2019 Guidance identifies three judicially excepted groupings:
(1) mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. 2019
Guidance, 84 Fed. Reg. at 52–53. The Examiner does not assert that the
claims fall into the category of mathematical concepts or mental processes,
and we determine that neither of these categories applies to the claims at
issue.
The Examiner has determined that claim 1 recites the abstract idea of
“organizing human activity.” Based on existing Supreme Court and Federal
Circuit precedent, the 2019 Guidance has identified methods of organizing
human activity that may constitute an abstract idea, including “fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
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or interactions between people (including social activities, teaching, and
following rules or instructions).” See 84 F3d. Reg. at 52 n.13.
We agree with Appellant that the claims do not recite an abstract idea
in the form of a method for “organizing human activity.” Claim 1 does not
recite activities performed by humans, but rather recites a system for
allowing two computers (a “client processor” and a “server processor”) to
communicate and interact with each other. The client processor is adapted
to “identify a first request,” “identify a second request,” “generate a piped
request” based on the first and second requests, and “transmit the piped
request” to the server processor. All of these limitations involve computer
operations and functionality, and none involve organizing human activity or
automating activities performed by humans. Similarly, the server processor
is adapted to “receive the piped request,” “de-pipe the first request and the
second request from the piped request,” and “execute” the first and second
requests, none of which are human activities or the automation of human
activities. Rather, these are activities performed by computers in order to
carry out communications and operations between a client and a server.
Moreover, none of the limitations of claim 1 are similar or analogous
to the methods of organizing human activity that are set forth in the 2019
Guidance. Claim 1 does not recite fundamental economic principles or
practices, commercial or legal interactions, or managing personal behavior
or relationships or interactions between people. See 84 F3d. Reg. at 52. The
Examiner has also failed to demonstrate that claim 1 is similar or analogous
to claims that the Supreme Court or Federal Circuit have found to recite an
abstract idea. Consequently, claim 1 cannot be reasonably characterized as
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reciting a judicial exception to patent eligibility, and we reverse the rejection
of claim 1 as directed to non-statutory subject matter under section 101.
Independent claims 13 and 25 also recite similar limitations to those
of claim 1 involving communication and interaction between multiple
computers using piped requests. Claims 13, 25 (Claims Appendix). For the
reasons discussed with respect to claim 1, we reverse the rejection of claims
13 and 25.
II. THE SECTION 102 REJECTION
In the Final Office Action, the Examiner rejected claims 1–8, 11–19,
and 22–33 as anticipated by Trevor (US 2011/0099194 A1; published April
28, 2011), finding that Trevor discloses each of the limitations of the claims
at issue.
A. Claim 1
1. The Examiner’s Rejection and Appellant’s Arguments
The Examiner finds that Trevor discloses all of the limitations of
claim 1. For example, the Examiner finds that Trevor discloses the use of an
HTTP GET request, which contains a wrappers including headers to provide
routing information. Final Act. 6–7. The Examiner also finds that Trevor
discloses, within the HTTP request, piping using multiple requests separated
by the pipe symbol “ǀ”. Id. at 6. The Examiner further determines that
Trevor discloses a dependency between a second request and a first request,
such as having the second request be a sort function which sorts data from
the first request. Id.; see also Ans. 17–21.
Appellant argues that Trevor does not disclose “generat[ing] a piped
request comprising a wrapping including routing information, the first
request, the second request, and information indicating whether or not the
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second request is depending on the first request, wherein the first request and
the second request are collectively included within the wrapping of the piped
request,” as claim 1 requires. Appeal Br. 12. Appellant argues that Trevor
merely discloses piping output results, and that “[p]iping output results that
are derived in response to a request is different from generating a piped
request including a first request and a second request.” Id. at 13. Appellant
also asserts that Trevor does not disclose “multiple requests, the piping of
the multiple requests or any indication of a dependency among the multiple
requests,” and that instead Trevor’s output results “appear to correspond to
results of a single request.” Id. Appellant further argues that “Trevor fails
to disclose or render obvious a wrapper,” arguing only that “a word search
performed on Trevor indicates that there are no instances of the word
[‘]wrapper[’].” Id.
2. Analysis
We find that the Examiner has made out a prima facie case of
anticipation of claim 1 by Trevor, and that Appellant has not overcome it.
Appellant only disputes whether Trevor discloses the claim element of
“generat[ing] a piped request comprising a wrapping including routing
information, the first request, the second request, and information indicating
whether or not the second request is depending on the first request, wherein
the first request and the second request are collectively included within the
wrapping of the piped request.” The Examiner has made out a prima facie
case that the limitations contained in this claim language are disclosed by
Trevor.
Specifically, Trevor discloses generating a piped request in the form
of a SELECT statement that can be used to retrieve data from a web server,
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transform the data, and output the data in a specified format. Trevor ¶ 71.
Trevor further discloses that this SELECT statement can include a piped
request in the form of “multiple functions” that “can be chained together
with the pipe symbol (‘ǀ’).” Id. ¶ 117. Trevor provides an example of a
SELECT statement with a piped request having multiple functions,
including: (1) querying a local search table for restaurants serving pizza; (2)
piping the results to a sort function which sorts the restaurants by average
rating; and then (3) piping the results to a reverse function, which produces a
final result sorted by rating from high to low. Id. The example SELECT
statement is reproduced below:
select Title, Rating.AverageRating from local.search (20)
where query="pizza" and city="New York" and state="NY'' ǀ
sort(field="Rating.AverageRating") ǀ reverse( )
Id. Thus, we agree with the Examiner that Trevor discloses generating a
piped request comprising a first request, a second request, and information
indicating whether or not the second request is depending on the first
request.
As to the use of a wrapper for the piped requests, Trevor discloses that
SELECT statements can be routed over the Internet using an HTTP request.
Id. ¶ 70 (“a web application can use an HTTP request, such as an HTTP
GET request for example, when running SELECT statements”). As
Appellant acknowledges in the Introduction of the Specification, when
HTTP is used to route information over the Internet, “[g]enerally, each
request from the client to the server, and each response from the server to the
client, needs routing information such as HTTP wrappers in order to be
properly transmitted and received.” Spec. ¶ 3. Thus, we agree with the
Examiner that Trevor’s disclosure of the use of HTTP for routing the piped
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functions in a SELECT requests over the Internet “implies that routing
information is added” including “destination and source addresses” and thus
“implies the act of wrapping a request and thus [by] logical extension, a
wrapper.” Ans. 18, 20. Thus, we find that one of ordinary skill in the art
would have understood from the disclosure of Trevor that the piped requests
in the SELECT statement can be sent over the Internet using an HTTP
request, which would have included a wrapper with routing information.
Appellant argues that Trevor merely discloses piping output results,
and that “[p]iping output results that are derived in response to a request is
different from generating a piped request including a first request and a
second request.” Appeal Br. 13. We do not find this argument persuasive.
As discussed above, Trevor discloses piping multiple functions within a
SELECT statement, including a search function, a sort function, and a
reverse function. Each of these functions can be considered a “request,”
because each requests that some action be performed by the server.
Specifically, the “search” function requests that the server perform a search
for restaurants serving pizza, the “sort” function requests that the server sort
the results, and the “reverse” function requests that the order of the results be
reversed. There is also a dependency between these requests because the
“sort” request depends on the results of the “search” request, and the
“reverse” request depends on the results of the “sort” request.
We also do not find persuasive Appellant’s argument that “Trevor
fails to disclose or render obvious a wrapper” because “a word search
performed on Trevor indicates that there are no instances of the word
[‘]wrapper[’].” Id. A prior art reference need not disclose a claim limitation
using the exact words used in the claim. See In re Gleave, 560 F.3d 1331,
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1334 (Fed. Cir. 2009) (in order to anticipate a claim, “the reference need not
satisfy an ipsissimis verbis test”). As discussed above, Trevor discloses that
the piped requests can be included in an HTTP request sent over the Internet,
which one of ordinary skill would have understood to include a wrapper
with routing information. The fact that Trevor does not use the specific
word “wrapper” is not dispositive. Consequently, we sustain the Examiner’s
rejection of claim 1.
B. Dependent Claims 29, 31 and 33
Appellant also argues that Trevor does not disclose the limitations of
dependent claims 29, 31, and 33.
Claims 29 and 31 recite that “the second request included in the piped
request comprises dependency information that indicates how the
information about the execution of the first request is usable with the second
request.” Appeal Br. 24 (Claims Appendix). The Examiner finds that in
Trevor the “use of a pipe symbol provides dependency information” because
it “signifies that the execution of an operation on the right of the pipe is
dependent on the results of the execution of the operation on the left.” Ans.
20. Appellant argues that even if Trevor discloses that “two functions are
piped using a pipe symbol ‘ǀ’, such a symbol fails to anticipate ‘dependency
information that indicates how the information about the execution of the
first request is usable with the second request.” Appeal Br. 14.
We sustain the Examiner’s rejection. As discussed above, Trevor
discloses that the piped request include information indicating how the
information from the first request is usable with the second request. Trevor
¶ 117; see also Trevor ¶ 115. In the above example, the piped request
includes information indicating that information from the first request (the
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search request) is usable with the second request (the sort request) by telling
the second request what data is to be sorted (the data retrieved by the first
request) and what field the data is to be sorted by (the
“Rating.AverageRating” field). Id. ¶ 117. Appellant does not explain why
this disclosure does not satisfy the language of the claims, but rather merely
states in conclusory fashion that the pipe symbol of Trevor “fails to
anticipate” the claim limitation. To rebut a prima facie case of
unpatentability, it is not enough for the Appellant to simply generally deny
that claim limitations are present in the prior art. Our role is review of the
arguments of record, not independent examination of the claimed
invention. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for [patentable] distinctions over
the prior art.”).
Claim 33 recites that “the at least one server processor is adapted to
generate a command based at least in part on the second request and a result
obtained in connection with execution of the first request.” Appeal Br. 24
(Claims Appendix). We also find that the Examiner has made out a prima
facie case that this limitation is disclosed by Trevor, because Trevor teaches
generating a sort command based on the second request (the “sort” request)
and the results obtained in connection with the execution of the first request
(the list obtained by the search function). Trevor ¶¶ 115–117. As with
claims 29 and 31, Appellant does not explain why this disclosure does not
satisfy the language of the claims, but instead merely states that Trevor “fails
to anticipate” the claim limitation, which is insufficient to rebut the prima
facie case of unpatentability.
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C. Conclusion
Appellant does not persuade us that the Examiner erred in determining
that claims 1, 29, 31, and 33 are anticipated by Trevor. Accordingly, we
sustain the rejection of those claims and also the rejection of claims 2–8, 11–
20, and 23–28, 30, and 32, which Appellant does not argue separately.

DECISION
We reverse the Examiner’s rejection of claims 1, 13, and 25 under 35
U.S.C. § 101 as directed to non-statutory subject matter. We affirm the
Examiner’s rejection of claims 1–8, 11–19, and 22–33 as anticipated by
Trevor. No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED