Lin YangDownload PDFPatent Trials and Appeals BoardAug 28, 201913167686 - (D) (P.T.A.B. Aug. 28, 2019) Copy Citation 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.”). Appeal 2018-008523 Application 13/167,686 2 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 Appeal 2018-008523 Application 13/167,686 3 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. Appeal 2018-008523 Application 13/167,686 4 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 Appeal 2018-008523 Application 13/167,686 5 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- Appeal 2018-008523 Application 13/167,686 6 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 Appeal 2018-008523 Application 13/167,686 7 (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 Appeal 2018-008523 Application 13/167,686 8 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 Appeal 2018-008523 Application 13/167,686 9 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 Appeal 2018-008523 Application 13/167,686 10 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 Appeal 2018-008523 Application 13/167,686 11 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, Appeal 2018-008523 Application 13/167,686 12 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 Appeal 2018-008523 Application 13/167,686 13 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, Appeal 2018-008523 Application 13/167,686 14 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 Appeal 2018-008523 Application 13/167,686 15 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. Appeal 2018-008523 Application 13/167,686 16 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 Copy with citationCopy as parenthetical citation