ORACLE INTERNATIONAL CORPORATION

Patent Trials and Appeals Board

Sep 30, 2021

2021001609 (P.T.A.B. Sep. 30, 2021)

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.
15/421,553 02/01/2017 Jurgen R. SCHROEDER ORA170370 (O-437) 1146
51444 7590 09/30/2021
Kraguljac Law Group/Oracle
P.O. Box 507
Cleveland, OH 44017
EXAMINER
FADOK, MARK A
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
09/30/2021 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):
DDay@KragLaw.com
MPusti@KragLaw.com
PTOMail@KragLaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN R. SCHROEDER, GERALD J. HANSON,
DMITRIY UCHENIK, and ANANDAMOHAN SEKAR
Appeal 2021-001609
Application 15/421,553
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL L. WOODS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Oracle
International Corporation. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed invention concerns “invoice record matching at a parent
item level,” such as by a retailer, concerning goods purchased for inventory.
Spec. ¶ 11. The claimed invention addresses quantity and cost discrepancies
that can arise between items the retailer ordered, received, and is invoiced,
and involves logically grouping multiple sellable items under a category
referred to as a parent item or style. Id. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A non-transitory computer-readable medium storing
computer-executable instructions that when executed by a
processor of a computer causes the processor to:
define a plurality of parent item identifiers where each parent
item identifier defines a specific category type of an item
which is not a sellable item itself with an individual stock
keeping unit;
wherein the parent item identifier groups a plurality of child
items that each have an individual stock keeping unit that
is different from other child items, and the plurality of
child items are categorized together under the parent item
identifier that matches the specific category type defined
by the respective parent item identifier but wherein each
child item has a different attribute of the specific category
type;
for each parent identifier, assign a quantity threshold
tolerance that indicates an acceptable amount of various
assortments of child items that match the specific
category type that are received in a different amount than
an amount ordered;
query a database containing invoice records where the query
uses the parent item identifier to retrieve an invoice
record that identifies a set of invoiced child items that are
categorized as having the specific category type as the
parent item identifier;
query a receipt record database using the parent item
identifier to retrieve a receipt record that identifies a set
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of received child items that are categorized as having the
specific category type as the parent item identifier;
parse the invoice record to identify the set of invoiced child
items that are categorized under the parent item identifier
and disregard other items in the invoice record that do not
match the specific category type of the parent item
identifier;
parse the receipt record to identify the set of received child
items that are categorized under the parent item identifier
and disregard other items in the receipt record that do not
match the specific category type of the parent item
identifier;
execute a comparing operation to compare a first quantity
metric of the set of invoiced child items with a second
quantity metric of the set of received child items to
determine whether the first quantity metric is within the
quantity threshold tolerance of the acceptable amount of
various assortments of the set of received child items;
in response to the comparing operation determining a
quantity match of the first quantity metric and the second
quantity metric being within the quantity threshold
tolerance, modify a data structure to indicate that the
quantity match was determined for the parent item
indicating that an acceptable amount of the set of child
items was received that have the specific category type;
and
in response to the comparing operation not determining the
quantity match, generate a match fail result as a
notification on a user interface.
REJECTION
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as directed
to ineligible subject matter.
OPINION
Step 2A, Prong One (Final Act. 10–13)
The Examiner finds that the claims recite:
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the abstract idea of making product receipt decisions based on a
comparison of parent SKU’s and child SKUs contained in the
shipment with prior receipts and making a decision based on an
established tolerance, i.e. concepts related to Mathematical
concepts (math relationships), Mental Process (evaluation) and
Method of Organizing Human Behavior (Sales receipt activity).
Final Act. 9. Specifically, however, the Examiner parses and addresses each
limitation of independent claim 17, finding every limitation, except the
“modifying . . . a data structure” limitation, “can be performed mentally or is
analogous to human mental work.” Id. at 10–14. For the “modifying . . . a
data structure” limitation, the Examiner finds the limitation involves
“tracking and organizing information . . . i.e. collecting, comparing[,] storing
data related to matching thresholds.” Id. at 13 (citing Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1636 (Fed. Cir. 2015)).
In arguing that the claims do not recite abstract ideas, the Appellant
contends that the Examiner “alleges that every element of the independent
claims allegedly recite certain methods of organizing human activity or
organizing and analyzing information (FOA pages 10-13) except for a few
components.” Appeal Br. 10.
The Appellant thus begins by misconstruing the rejection, which finds
the claims primarily recite abstract mental processes, but the Appellant
instead broadly contends that “[n]one of the limitations recite a judicial
exception and none reasonably correlate to judicial exceptions.” Id. at 14.
But we find no argument or evidence in the Briefs to dispute the Examiner’s
findings that the majority of claim elements recite abstract mental processes.
Id. at 10–15. The Appellant’s arguments are thus largely unresponsive to
the determination that the claims recite abstract mental processes.
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We agree with the Examiner that each of independent claims 1, 8, and
17 recites abstract mental processes.
First, claims 1 and 8 each recites limitations that are substantially
identical to the method steps of claim 17. Claim 1 is presented as a medium
claim in the preamble, and claim 8 is presented as a system claim that
additionally recites “a processor connected to memory.” Appeal Br., Claims
App’x. Claims 1 and 8 also recite two steps not recited in claim 17:
parse the invoice record to identify the set of invoiced
child items that are categorized under the parent item identifier
and disregard other items in the invoice record that do not match
the specific category type of the parent item identifier;
parse the receipt record to identify the set of received child
items that are categorized under the parent item identifier and
disregard other items in the receipt record that do not match the
specific category type of the parent item identifier.
Id.
In claims 1, 8, and 17, 2 the limitations of “defining . . . parent item
identifiers . . .,” with the associated “wherein” clause, can be performed
mentally by a human using thought and “judgment, opinion,” by thinking
about identifiers and making a decision. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (2019) (“Guidance”). The
same is true for the limitations “for each parent identifier, assigning a
quantity threshold tolerance . . . .”
Similarly, “querying . . . an invoice record database using the parent
item identifier to retrieve a set of invoices . . . listing one or more invoiced
child items . . .,” and “querying, by the processor, a receipt record database

2 We refer to limitations in all three independent claims using the form of
method claim 17. Claims 1 and 8 recite substantially identical forms of the
same limitations.
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using the parent item identifier to retrieve a set of receipts . . . listing one or
more received child items . . .,” and “compar[ing] quantities of invoiced
child items . . . with quantities of received child items . . . to determine
whether there is a total quantity match within the quantity threshold
tolerance of the acceptable amount of various assortments of the set of
received child items” can be performed mentally using “observation,
evaluation, judgment, [and] opinion.” Guidance at 52.
In addition, each of the “querying” steps gathers data, and thus is
directed to insignificant extra-solution activity. Id. at 55, n.31; see also In re
Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v.
Kappos, 561 U.S. 593 (2010) (characterizing data gathering steps as
insignificant extra-solution activity). This is essentially what the Examiner
finds, when finding the “querying” limitations are similar to a case to
“retrieve data.” Final Act. 11–12 (citing Intellectual Ventures I LLC v. Erie
Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017)).
The claims also recite, “in response to the comparing operation,” two
“determining” steps. One step “provid[es] . . . a match fail result as a
notification” when “there is not a total quantity match.” Final Act. 12. The
Examiner finds, and we agree, that this step can be performed mentally. Id.
This is because the step involves a “determination,” which is a form of
“evaluation, judgment, [and] opinion.” Guidance at 52.
The other “determining” step “modif[ies] a data structure to indicate
that the total quantity match was determined . . . .” The Examiner finds this
involves “tracking and organizing information,” and finds this abstract based
on similarity to Intellectual Ventures, 792 F.3d at 1367. Final Act. 13. In
that case, the patent at issue was held to be “directed to an abstract idea:
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tracking financial transactions to determine whether they exceed a pre-set
spending limit (i.e., budgeting),” in part because “Intellectual Ventures
admits budgeting ‘undoubtedly . . . is an abstract idea.’” Intellectual
Ventures, 792 F.3d at 1367. The Court also held the “abstract idea here is
not meaningfully different from the ideas found to be abstract in other
cases.” Id. Those cited cases included “CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370, 1373 (Fed.Cir.2011) (holding that ‘a
method for verifying the validity of a credit card transaction over the
Internet’ was directed to an abstract idea or unpatentable mental process).”
Intellectual Ventures, 792 F.3d at 1368, n.2. The Examiner thus labels this
“determining” as similar to a case that was rejected in part for reciting
mental processes.
Indeed, this “determining” step also can be performed mentally using
“observation, evaluation, judgment, [and] opinion,” and also is an abstract
mental process. Guidance at 52.
In addition, the two “in response to” limitations represent output steps,
which are insignificant extra-solution activity in the § 101 analysis. That is
because both “providing . . . a notification” and “modifying . . . a data
structure” merely provide output of the result of the determining step. See
Bilski, 561 U.S. at 610–11 (“Flook stands for the proposition that the
prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or adding ‘insignificant post[-]solution activity.”’)
As to the “querying” limitations, the Appellant argues that the
querying “is not an analyzing function itself as the examiner alleges,” and
“is also different from and not equivalent to ‘creating an index or using an
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index’ as alleged,” and therefore “Intellectual Ventures does not apply to the
present facts.” Appeal Br. 13.
We are unpersuaded by these arguments. The issue is not indexing,
but that the “querying” limitations merely involve actions to “retrieve data”
(Final Act. 11–12), which is data gathering, and thus insignificant extra
solution activity, which is part of the abstract idea of making determinations
from retrieved data.
In claims 1 and 8, but not in claim 17, there are recited steps that
“parse the invoice record to identify the set of invoiced child items . . .,” and
“parse the receipt record to identify the set of received child items . . . .”
These steps also can be performed mentally using “observation, evaluation,
judgment, [and] opinion.” Guidance at 52. The Appellant contends that the
Examiner “does not refer to the ‘parse’ elements and does not allege that
they are judicial exceptions.” Appeal Br. 13. We disagree.
Although the Examiner analyzes claim 17 and addresses each
limitation individually, and does not separately articulate the two “parse”
elements of claims 1 and 8, the Examiner finds “independent claims 1, 8
recite similar language of commensurate scope that the examiner concludes
also falls into the same abstract idea categories mapped above in Table One
for independent system claim 17.” Final Act. 13–14. We agree, because we
also find the “parse . . . to identify” limitations recite abstract mental
processes. In addition, we see no meaningful difference between the “parse”
limitations of claims 1 and 8, and the “query” limitations each of the
independent claims, because the query retrieves “items that are categorized
as having the specific category type as the parent item identifier.” In claim
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17, the “parse” limitations are effectively subsumed into the “querying”
limitations.
We agree with the Examiner’s finding that each of claims 1, 8, and 17
recites steps that can be performed using only “mental processes.” These
claims therefore recite abstract ideas under Step 2A, Prong One, of the
Guidance. Guidance at 52–54. “[A]nalyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, [are]
essentially mental processes within the abstract-idea category.” Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). As
the Federal Circuit has explained, “[a] process that start[s] with data, add[s]
an algorithm, and end[s] with a new form of data [is] directed to an abstract
idea.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir.
2017).
Step 2A, Prong Two (Final Act. 14–24)
The Examiner identifies four “additional elements” that are not within
the recited abstract mental processes: “a user interface, processor, data
structure, database, memory.” Final Act. 13, 14 (emphasis omitted). The
Examiner considers the “additional elements” according to the Guidance at
54–55, and the Manual of Patent Examining Procedure (“MPEP”)
§ 2106.05(a)–(c) and (e)–(h), and “concludes the additional elements in
claims 1–20 do not integrate the judicial exception into a practical
application.” Id. at 24.
The Appellant argues that in the Prong Two analysis, the Examiner
has “disregarded” every element of the claim except for the “additional
elements,” rather than evaluating “whether the claim as a whole integrates a
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recited judicial exception into a practical application of the exception.”
Appeal Br. 15.
The Appellant misconstrues the analysis specified for Prong Two.
For example, the Appellant argues that “[w]hen all limitation are evaluated
together, the claim recites an invention that changes query results by
implementing a threshold, which changes acceptable amounts of assortments
in records,” based on the claim limitation “for each parent identifier, assign a
quantity threshold tolerance that indicates an acceptable amount of various
assortments of child items that match the specific category type that are
received in a different amount than an amount ordered.” Appeal Br. 18.
What the Appellant proposes here, in effect, is that the “additional
elements” that were separately identified should be combined back into the
claim language as a whole, and considered along with, and equal to, the
abstract idea in this step. But this is not the proper approach, as explained in
the Guidance:
Examiners evaluate integration into a practical application
by: (a) Identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s); and (b)
evaluating those additional elements individually and in
combination to determine whether they integrate the exception
into a practical application, using one or more of the
considerations laid out by the Supreme Court and the Federal
Circuit.
Guidance at 54–55 (cited at Final Act. 14). The Examiner has followed this,
by considering whether the user interface, processor, data structure,
database, and memory integrate the making of product receipt decisions
based on a comparison of parent SKU’s and child SKUs contained in the
shipment with prior receipts and making a decision based on an established
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tolerance into a “practical application,” according to the appropriate MPEP
sections and the Guidance. Final Act. 9, 14.
Therefore the Appellant’s arguments that “the present claims are
directed to and recite an improvement to previous technical processes,” and
are a “particular solution” and “specific solution,” which “integrate[] any
alleged judicial exception into a practical application,” are unpersuasive.
Appeal Br. 18–19. This is because the arguments are focused on the abstract
mental processes, not whether the “additional elements” have the effect of
integrating the abstract ideas into a “practical application.”
Similarly, we are not persuaded by the Appellant’s argument that,
similar to Example 40 of the “PTO Examples in 2019 PEG,” the claims
integrate the abstract idea into a “practical application” because “the process
is controlled by a threshold,” and has “more meaningful limitations than
does the claim from Example 40.” Appeal Br. 21–22. These are not the
criteria used on this step. See Guidance at 54–55.
We therefore agree with the Examiner that the identified “additional
elements” do not integrate the abstract ideas into a “practical application.”
Step 2B
The Appellant also misconstrues the law as to the “inventive concept”
aspect of Step 2B in the Guidance, arguing that the claim “as a whole” must
be considered, and that the abstract idea, thus considered along with the
“additional elements,” recites elements that are not well-understood, routine,
and conventional. Appeal Br. 24 (citing Berkheimer v. HP Inc., 881 F.3d
1360 (Fed. Cir. 2018)); see also Reply Br. 5–6.
Berkheimer held that:
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These conventional limitations of claim 1, combined with
limitations of analyzing and comparing data and reconciling
differences between the data, “fail to transform th[e] abstract idea
into a patent-eligible invention.” The limitations amount to no
more than performing the abstract idea of parsing and comparing
data with conventional computer components.
Berkheimer, 881 F.3d at 1370 (citation omitted). The “inventive concept”
“must be significantly more than the abstract idea itself, and cannot simply
be an instruction to implement or apply the abstract idea on a computer.”
BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1349 (Fed. Cir. 2016) (citation omitted).
Thus, the proper consideration of the claims as a whole is whether the
“additional elements” are not well-understood, routine, and conventional,
such that “they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself),” to
transform the abstract ideas into eligible subject matter. Guidance at 56.
Following this, the Examiner finds the “additional elements” (via a
user interface, processor, data structure, database, and memory) are merely
well-understood, routine conventional activities, because they are “generic
computer elements.” Final Act. 25–27. The Appellant does not dispute this,
but instead contends, as noted above, that the elements of the identified
abstract ideas are not well-understood, routine, and conventional. Appeal
Br. 24–26. This is an incorrect application of the law.
Therefore, the Appellant has not shown error in the Examiner’s
analysis of “inventive concept” under Step 2B of the Guidance.
Conclusion
We have considered the Appellant’s remaining arguments, but are
unpersuaded in light of our analysis here.
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Because the independent claims recite abstract mental processes,
which the Examiner has shown do not integrate the abstract idea into a
“practical application,” and which the Examiner has shown do not recite an
“inventive concept,” we sustain the Examiner’s rejection of claims 1, 8, and
17 as reciting ineligible subject matter. Because no argument was advanced
as to the dependent claims, we also sustain the rejection of those claims.
CONCLUSION
The Examiner’s rejection is AFFIRMED.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Ineligibility 1–20

TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED