Robert Harris

Patent Trials and Appeals Board

Dec 23, 2019

13975298 - (D) (P.T.A.B. Dec. 23, 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.
13/975,298 08/24/2013 Robert Harris GB920020050US2
(454DIV)
8323
46320 7590 12/23/2019
Shutts & Bowen LLP
STEVEN M. GREENBERG
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/23/2019 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):
docketing@crgolaw.com
patents@shutts.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT HARRIS
____________

Appeal 2018-002899
Application 13/975,298
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BIBHU R. MOHANTY Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 13–19. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a method and system for ranking services in a web
services architecture having a hierarchy of services. (Spec. 3, Title).
Claim 13 is representative of the subject matter on appeal.
13. A data processing system implementing a web
services architecture comprising:
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a computer including non-transitory memory for loading computer
useable code for execution by at least one processor;
a hierarchy of invocable services represented by data accessible over a
network in which a selected one of the services of a first level of the
hierarchy calls a service of a lower level of the hierarchy; and,
a ranking machine that includes program code that is executable by
the processor of the computer and that is coupled over the network to a
directory of the services in the hierarchy, the directory providing at each
level of the hierarchy a set of possible services,
the program code during execution:
selecting, based upon pre-stored service requestor preferences for
selecting a service, one of the services of the first level of the hierarchy in
order to find a set of possible lower-level services in the directory for calling
by the selected one of the services, and
in response to a request by the selected one of the services to find a set
of possible lower-level services,
applying the pre-stored service requestor preferences for selecting a
service to the set of possible lower-level services in order to provide a
sequence of preferred services for return by the directory to the selected one
of the services, listening on a port on the directory,
receiving a bag of results from the directory,
applying the pre-stored service requestor preferences for selecting a
service to the bag of the results to produce a sequence of results in preferred
order of the originating service requestor, and
returning the sequence of results in the preferred order of the
originating service requestor to the directory, so that the directory answers a
look up with the sequence of results provided by the ranking machine.

THE REJECTION
Claims 13–19 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 13-19 are rejected under 35 U.S.C. §112, first paragraph.
Claims 13-19 are rejected under 35 U.S.C. §102(e) as being
anticipated by Murto et.al (hereinafter “Murto”) (US PGPub 2004/0213409
A1; Oct. 28, 2004).

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ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 13–19 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . . determine
whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then
ask, “[w]hat else is there in the claims before us?” .
. . To answer that question, . . . consider the
elements of each claim both individually and “as
an ordered combination” to determine whether the
additional elements “transform the nature of the
claim” into a patent-eligible application. . . . [The
Court] described step two of this analysis as a
search for an “‘inventive concept’”—i.e., an
element or combination of elements that is
“sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon
the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-218 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
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focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50, pp 50–57 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claims are directed to a
mathematical relationship or formula and collecting and recognizing stored
information and using rules in order to determine options. (Final Act. 9).
The Examiner determines that the claimed invention is simply directed to the
searching of information based on parameters associated with a search
report. The Examiner finds the claimed invention has done nothing more
than disclose the user of generic devices in order to collect information in
order to perform the comparison and determination steps. According to the
Examiner, the invention has done nothing more than generically link the
generic devices to the abstract idea of data collection and recognition so as
to use the collected information in order to determine an assessment. (Final
Act. 10.
The Specification discloses that the invention is a method for ranking
services in a web service architecture having a hierarchy of services with a
root originating service requestor, a service of a first level in the hierarchy
calling a service of a lower level. The method comprises the originating
service requestor indicating a preference regarding one or more services
(transmitting and storing information regarding a preference) and a ranking
machine having a choice algorithm based on the preference (processing the
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information or data using an algorithm). (Spec. 3). The originating service
requestor invokes services of one or more levels of hierarchy (transmitting,
processing and storing information or data). The service uses a directory to
find the set of possible lower-level services (processing information or data).
And the ranking machine applies the choice algorithm to the set of possible
lower level service (processing information or data). As such, the
Specification supports the Examiner’s determination that the claims recite a
method that collects and recognizes stored information and uses a
mathematical relationship or formula to determine options.
Consistent with this disclosure, claim 13 recites “ the program code
during execution (mathematical algorithm):,” “selecting based upon pre-
stored service requestor preferences . . . one of the services of the first level
of the hierarchy (receiving information or data),” “applying the . . . requestor
preferences . . . to the set of possible lower-level services (processing
information or data),” “receiving a bag of results (transmitting information
or data),” “applying the pre-stored service requestor preferences (processing
information or data),” “returning the . . . results (transmitting information or
data.”
We thus agree with the Examiner’s findings that the claims are
directed to a method that collects and recognizes stored information and uses
a mathematical relationship or formula to determine options. As such, the
claims recite a mathematical concept.
Also, we find the steps of claim 13 constitute “analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
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1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving
contractual relations are directed to abstract ideas). Thus, we find that the
claims recite an abstract idea of a mathematical concept and in the
alternative, to a mental process.
Turning to the second prong of the “directed to test”, claim 13
requires a “computer including non-transitory memory. . . at least one
processor.” This recitation does not impose “a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Guidance 84 FR at 52. We find no
indication in the Specification, nor do Appellant directs us to any indication,
that the operations recited in independent claim 13 invoke any inventive
programming, require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
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In this regard, the recitations of claim 13 do not affect an
improvement in the functioning of a computer or other technology, do not
recite a particular machine or manufacture that is integral to the claims, and
does not transform or reduce a particular article to a different state or thing.
Id. Thus, claim 13 is directed to a judicial exception that is not integrated
into a practical application and thus is directed to an “abstract idea.”
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements that is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
See Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The introduction of a computer into the claims does not alter the
analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
“while adding the words ‘apply it’” is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while
adding the words “apply it with a computer”
simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to
“implemen[t]” an abstract idea “on . . . a
computer,” that addition cannot impart patent
eligibility. This conclusion accords with the
preemption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers,
wholly generic computer implementation is not
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generally the sort of “additional featur[e]” that
provides any “practical assurance that the process
is more than a drafting effort designed to
monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. In this regard, the ordered combination is just a
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computer with a memory and a processor which is a well understood,
conventional and routine device. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the computer itself. As we stated above, the claims do not affect an
improvement in any other technology or technical field. Thus, the claims at
issue amount to nothing significantly more than instructions to apply the
abstract idea of information access using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 6–10; Reply Br. 4–
9) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claim language is limited by particular content
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that does in fact change the character of the collected information. (Appeal.
Br. 10). Appellant does not explain what claim language is referred to or
how it changes the character of the collected information. In any case, as we
stated above, even if a process of collecting and analyzing information is
‘limited to particular content’ or a particular ‘source,’ that limitation does
not make the collection and analysis other than abstract.” SAP Am. Inc. v.
InvestPic, LLC, at 1022. We note that Appellant cites various cases to
support this argument but does not explain how the holdings and facts in the
various cases are applicable to the instant claims.
Appellant argues that the Examiner erred because the specification
refers to a particular solution to a problem or a particular way to achieve a
desired outcome as opposed to merely claiming the idea of a solution or
outcome in line with the holding in McRO, Inc. dba Planet Blue v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). (Reply Br. 9).
This argument is not persuasive because Appellant has not applied the law
and facts in McRO to the recitations in the instant claims.
In any case, we are not persuaded that the claimed invention is
analogous to the claimed invention in McRO. The claims in McRO were
directed to a specific asserted improvement in computer animation, i.e., the
automatic use of rules of a particular type. McRO, 837 F.3d at 1313. By
contrast, the independent claims under appeal recite only a data processing
system that receives, transmits and processes information using a program
code or algorithm. Unlike McRO, the claims here are not directed to an
improvement to a computer process.
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In view of the foregoing, we will sustain this rejection as it is directed
to claim 13. We will also sustain this rejection as it is directed to the
remaining claims because Appellant has not argued the separate eligibility of
the remaining claims.

REJECTION UNDRE 35 U.S.C. § 112, FIRST PARAGRAPH
The Examiner is of the view that the Specification fails to adequately
disclose how the ranking is performed. Specifically, the Examiner finds that
there is no written description of how the selecting one of the services, based
upon pre-stored service requester preferences is performed. (Final Act. 3).
The Specification discloses that a ranking machine is provided which
stores details of the service requester’s preferences for service selection and
that this is provided in the form of a choice algorithm between options
presented at any relevant time. (Spec. 10).
The Examiner finds that the Specification fails to provide the
particular algorithm that the ranking machine is applying. Therefore, one
skilled in the art would be unable to determine what the applicant was in
possession of, i.e. what is the particular algorithm that the applicant was in
possession of in order to have the ranking machine perform its function of
applying the choice algorithm and pre-stored service requestor preferences.
(Final Act. 3).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that “choice algorithm” is not recited in the claims and
therefore the rejection fails to address the limitations in the claims.
Although the Examiner states that the algorithm is not disclosed, the
Examiner also states that there is no written description of how the selecting
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step which is “based upon pre-stored service requestor preferences” is
performed and thus does base the rejection on the language in claim 13.
In view of the foregoing, we will sustain this rejection of claim 13.
We will also sustain this rejection as it is directed to the remaining claims
because Appellant has not argued the separate eligibility of these claims.

REJECTION UNDER 35 U.S.C. § 102
We will sustain this rejection because we are unpersuaded by the
Appellant’s argument that the Examiner failed to make a direct comparison
of the claim language to the Murto reference. (Appeal Br. 14).
First we adopt the Examiner’s findings of fact regarding the Murto
reference found on pages 13 to 21 of the Final Action. On these pages, the
Examiner provides a detailed analysis of the teachings in the Murto
reference with specific reference to the claim limitations in claim 13.
Appellant argues that the Examiner did not map every claim term in
claim 13 to the Murto reference. Specifically, Appellant argues that the
Examiner did not map the “applying the pre-stored service requestor
preferences,” “receiving a bag of results,” “applying the pre-stored service
requestor preferences,” and “returning the sequence of results.” However,
we find that the Examiner mapped this claim language to the disclosure in
Murto on pages 15–20 of the Final Action. The Appellant has not
specifically addressed these findings and therefore this argument is not
persuasive of error on the part of the Examiner.
We find untimely Appellant’s argument in the Reply Brief that the
Examiner’s findings regarding the “bag of results” and the “listening on a
port on the directory” are in error. Appellant argues that the Examiner
addressed these limitations for the first time in the Answer. This is
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incorrect, the Examiner addressed these limitations on pages 17–19 of the
Final Action. We note that these new arguments were raised by Appellant
for the first time in the Reply Brief, and they are not in response to a new
issue brought up by the Examiner in the Answer. Appellant is reminded that:
[T]he purpose of a reply brief is to ensure the Appellant the
opportunity to have the last word on an issue raised by the
Examiner. The reply brief enables the Appellant to address any
new grounds of rejection the Examiner may have raised in the
answer, or to address changes or developments in the law that
may have occurred after the principal brief was filed. The reply
brief is not an opportunity to make arguments that could have
been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner's
rejections, but were not. Giving cognizance to belated
arguments in a reply would vitiate the force of the requirement
in Board Rule 37(c)(1)(vii) that “[a]ny arguments or authorities
not included in the brief ... will be refused consideration by the
Board, unless good cause is shown.” The reference in that
section to the “reply brief filed pursuant to § 41.41” does not
create a right for the Appellant to raise an argument in the reply
brief that could have been raised in the principal brief but was
not. Rather, that reference merely puts Appellants on notice that
arguments that could be made in the reply brief, but are not, are
waived.

Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010).
We therefore consider Appellant’s argument raised in the Reply Brief
to be waived.
Accordingly, we sustain the rejection of independent claim 13 under
35 U.S.C. § 102(e). We will also sustain this rejection as to the remaining
claims because Appellant has not argued the separate eligibility of these
claims.
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CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 13–19 under
35 U.S.C. §§ 101, 112, first paragraph and 102(e).
DECISION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13–19, 22 101 13–19
13–19 112 13–19
13 102(e) Murto 13
Overall
Outcome
13–19

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