Amulya Mishra et al.

Patent Trials and Appeals Board

Nov 26, 2019

11674152 - (D) (P.T.A.B. Nov. 26, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/674,152 02/13/2007 Amulya Mishra ORCL-042 4025
51121 7590 11/26/2019
IPHORIZONS PLLC
C/O Ms. Chetana Thappeta
13495 Briar Ct
Saratoga, CA 95070
EXAMINER
HASTY, NICHOLAS
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
11/26/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
intercomm@iphorizons.com
lfnt2000@gmail.com
oracle@iphorizons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMULYA MISHRA, ALAN FOTHERGILL, OLIVER
STEINMEIER, and KENICHI MIZUTA
Appeal 2018-005313
Application 11/674,152
Technology Center 2100
Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR., and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 10–14, 20, 21, and 23–26. Claims
8, 9, 15–19, and 22 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

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. App. Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to simplifying understanding of procedure
dependencies in a form definition. Spec., Title. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A method of facilitating understanding of procedure
dependencies in form definitions, said method being performed
in a digital processing system, said method comprising:
receiving a form definition, wherein said form definition
being already enabled to provide a user interface on display
screens as a corresponding form to users,
wherein said received form definition includes a plurality
of procedures, each of said plurality of procedures containing a
corresponding group of software instructions, which upon
execution are operative to provide said user interface as said
corresponding form,
wherein each of said plurality of procedures is identified
by a corresponding one of a plurality of identifiers, each software
instruction being in the form of a text in said form definition,
said plurality of procedures including a first procedure and
a second procedure, respectively identified by a first identifier
and a second identifier of said plurality of identifiers, said second
identifier being in the form of a second text and said first
procedure containing a software instruction to invoke said
second procedure, said software instruction containing said
second text to identify said second procedure sought to be
invoked;
examining the text forming the corresponding group of
software instructions contained in each of said plurality of
procedures to determine a plurality of pairs of procedures,
wherein one procedure in a pair is designed to invoke the other
procedure of the pair as said user interface is provided on display
screens as said corresponding form based on said form definition,
wherein said examining determines said first procedure
and said second procedure together as one of said plurality of
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pairs of procedure in view of said software instruction of said
first procedure containing said second text identifying said
second procedure;
incorporating a hyperlink associated with said second text
in said software instruction of said first procedure in response to
said determination of said pair, wherein said hyperlink is enabled
to retrieve the corresponding group of software instructions
constituting said second procedure and display the retrieved
group of software instructions to a user in response to a user
action associated with a display of said second text by said user;
displaying a listing of software instructions constituting
said first procedure, said listing of software instructions
containing software instructions including said software
instruction as received in said form definition, wherein said
second text in said listing of software instructions is displayed in
a style indicating that said hyperlink is associated with said
second text, and wherein a second set of software instructions in
said listing are displayed in another style indicating that none of
said second set of software instructions are associated with
hyperlinks;
receiving an indication that said hyperlink has been
activated by said user in view of said user performing said user
action associated with said second text contained in said
displayed listing; and
in response to receiving of said indication, retrieving a
second group of software instructions constituting said second
procedure and displaying the retrieved second group of software
instructions, wherein the displayed second group of software
instructions contain an identifier of said second procedure
matching said second text, said second group of software
instructions containing software instructions as received in said
form definition.
App. Br. 18–19 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
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Kothari
Dozier
Hitchock
Friend
US 7,174,536 B1
US 7,333,966 B2
US 7,376,891 B2
US 7,584,417 B2
Feb. 06, 2007
Feb. 19, 2008
May 20, 2008
Sept. 01, 2009
Ortscheid US 2007/0005342 A1 Jan. 04, 2007
REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Non-Final Act. 2–3.
Claims 1–7, 10–14, 20, 21, and 23–26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Friend, Dozier, Hitchock, Kothari, and
Ortscheid. Final Act. 3–13.
REJECTION UNDER 35 U.S.C. § 101
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court instructs us
to “first determine whether the claims at issue are directed to a patent-
ineligible concept,” Id. at 217–18, and, in this case, the inquiry centers on
whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which we “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.” Id. (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court describes
the second step as a search for “an ‘“inventive concept”’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
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practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. (quoting Mayo, 566 U.S. at 72–73).
The USPTO has published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (referred to Step 2A, prong 1 in
the Guidance); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(referred to Step 2A, prong 2 in the Guidance).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then move to Step 2B of the
Guidance. There, we 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
(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 Guidance, 84 Fed. Reg. at 52.
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Examiner’s Findings and Conclusion
The Examiner rejects claim 1 as being directed to a judicial exception
without significantly more under Alice. Final Act. 2–3. In the first step of
the Alice inquiry, the Examiner determines the claim 1 is “directed to the
abstract idea of creating an index and using that index to search for and
retrieve data.” Final Act. 2. Under Alice step 2, the Examiner determines
that the claim does “not include additional elements that are sufficient to
amount to significantly more than the judicial exception because additional
elements, which are recited at a high level of generality, provide
conventional functions that do not add meaningful limits to practicing the
abstract idea. Final Act. 2.
Appellant’s Contentions
Appellant argues that there are several deficiencies in the rejection.
App. Br. 8–10. Appellant argues the Examiner’s characterization of the
claims is inaccurate because “there is no creation of indices based on which
search/retrieval of data is later performed.” App. Br. 9. Appellant further
argues the claims are not directed to an abstract idea under Alice step 1
because they are analogous to those claims found eligible in Trading Techs.
Int'l, Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir. 2017). App. Br. 10.
Appellant further argues claim 1 provides a technological improvement
because it “is directed to improving usability . . . of user interfaces while a
developer tries to understand procedure dependencies in a form definition.”
App. Br. 11. Appellant asserts that the improvements are “achieved by
determining the dependencies and incorporating hyperlinks corresponding to
the determined dependencies” and that “[t]he incorporation of hyperlinks
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causes the text constituting the procedure to be modified, which in turn alters
the navigation of the user interface.” App. Br. 11.
Revised Guidance, Step 2A, Prong One 2
The Judicial Exception
Applying the guidance set forth in the Guidance, we are persuaded the
Examiner has erred in rejecting claim 1 as being directed to patent-ineligible
subject matter. The Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The 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. We focus our analysis on the
third grouping—mental processes.3
Claim 1 recites the following limitations: (1) “receiving a form
definition,” (2) “examining the text forming the corresponding group of
software instructions contained in each of the plurality of procedures to
determine a plurality of pairs of procedures, wherein one procedure in a pair
is designed to invoke the other procedure of the pair as said user interface is
provided on display screens as said corresponding form based on said form

2 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
3 Appellant’s arguments are made to the claims generally.
We treat claim 1 as representative. 37 C.F.R. § 41.37(c)(iv) (“When
multiple claims subject to the same ground of rejection are argued as a group
or subgroup by Appellant, the Board may select a single claim from the
group or subgroup and may decide the appeal as to the ground of rejection
with respect to the group or subgroup on the basis of the selected claim
alone.”).
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definition,” and (3) “wherein said examining determines said first procedure
and said second procedure together as one of said plurality of pairs of
procedure in view of said software instruction of said first procedure
containing said second text identifying said second procedure.” App. Br. 18
(Claims Appendix).
We conclude that these limitations, under their broadest reasonable
interpretation, recite mental processes as defined in the Guidance. A claim
recites a mental process when the claim encompasses acts people can
perform using their minds or pen and paper. See, e.g., CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011)
(determining that a claim whose “steps can be performed in the human mind,
or by a human using a pen and paper” is directed to an unpatentable mental
process). This is true even if the claim recites that a generic computer
component performs the acts. See, e.g., Versata Dev. Grp., Inc. v. SAP
America, Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”); see also Guidance, 84 Fed. Reg. at 52 n.14 (“If a
claim, under its broadest reasonable interpretation, covers performance in
the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind.”).
Limitation (1) recites receiving a form definition. This step
encompasses a person being handed a piece of paper with a form definition
printed thereon. This limitation also encompasses a person being verbally
told the parameters and/or details of a form definition. Limitations (2) and
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(3), which recite examining code to identify procedures pairs in which one
procedure invokes another, are also readily performed in the human mind by
observation, evaluation, and using judgement. See Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1139, (Fed. Cir. 2016). Accordingly, we
conclude claim 1 recites a judicial exception of a mental process.
Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Having determined that the claim 1 recites a judicial exception, our
analysis under the Memorandum turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See Guidance, 84 Fed. Reg. at 54–55 (citing MPEP
§ 2106.05(a)–(c), (e)–(h)). Appellant’s claim 1 recites numerous elements
additional to those identified above. These limitations include (a) the
received form definition “being already enabled to provide a user interface
on display screens as a corresponding form to users,” (b) “wherein said
received form definition includes a plurality of procedures, each of said
plurality of procedures containing a corresponding group of software
instructions, which upon execution are operative to provide said user
interface as said corresponding form,” (c) “wherein each of said plurality of
procedures is identified by a corresponding one of a plurality of identifiers,
each software instruction being in the form of a text in said form definition,”
(d) “said plurality of procedures including a first procedure and a second
procedure, respectively identified by a first identifier and a second identifier
of said plurality of identifiers, said second identifier being in the form of a
second text and said first procedure containing a software instruction to
invoke said second procedure, said software instruction containing said
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second text to identify said second procedure sought to be invoked,” (e) “,”
(f) “wherein said examining determines said first procedure and said second
procedure together as one of said plurality of pairs of procedure in view of
said software instruction of said first procedure containing said second text
identifying said second procedure,” (g) “incorporating a hyperlink associated
with said second text in said software instruction of said first procedure in
response to said determination of said pair, wherein said hyperlink is
enabled to retrieve the corresponding group of software instructions
constituting said second procedure and display the retrieved group of
software instructions to a user in response to a user action associated with a
display of said second text by said user,” (h) “wherein said second text in
said listing of software instructions is displayed in a style indicating that said
hyperlink is associated with said second text, and wherein a second set of
software instructions in said listing are displayed in another style indicating
that none of said second set of software instructions are associated with
hyperlinks,” (i) “receiving an indication that said hyperlink has been
activated by said user in view of said user performing said user action
associated with said second text contained in said displayed listing,” and
(j) “in response to receiving of said indication, retrieving a second group of
software instructions constituting said second procedure and displaying the
retrieved second group of software instructions, wherein the displayed
second group of software instructions contain an identifier of said second
procedure matching said second text, said second group of software
instructions containing software instructions as received in said form
definition.” App. Br. 18–19 (Claims Appendix).
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We conclude that these limitations integrate the recited judicial
exception into a practical application because they reflect a technological
improvement and thus impose a meaningful limit on the recited judicial
exception. MPEP § 2106.05(a). In particular, we agree with Appellant that
the use of identified procedure pairs to modify the behavior and appearance
of a form definition user interface provides a technological improvement to
how a computer operates. In particular, by inserting hyperlinks into the code
instructions of procedure pairs, “the present invention enables a user to
directly access the called procedure from the caller procedure.” Spec. ¶ 59.
Thus, the additional limitations recited in claim 1, allow a user immediate
access to the code instructions of a corresponding procedure in the pair, and
they provide improved accuracy and efficiency in navigation and
understanding of the structure and operation of form definition.
Thus, the identification of procedure pairs and the use of hyperlinks to
navigate among those identified procedure pairs provides a specific
technological improvement over prior systems. Accordingly, we conclude
claim 1 is integrated into a practical application, and under the Guidance, the
claim is patent-eligible because it is not directed to the recited judicial
exception.4 We do not sustain the rejection of representative claim 1 under
35 U.S.C. § 101.

4 Because we have determined the claim is not directed to the recited judicial
exception, we need not reach Step 2B of the Guidance and the question of
whether the claim provides an inventive concept under the second step of the
Alice inquiry.
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REJECTION UNDER 35 U.S.C. § 103
The Examiner rejects claim 1 as being obvious over Friend, Dozier,
Hitchock, Kothari, and Ortscheid. Final Act. 3–8. Relevant here, the
Examiner finds the limitation “examining the text forming the corresponding
group of software instructions contained in each of said plurality of
procedures to determine a plurality of pairs of procedures, wherein one
procedure in a pair is designed to invoke the other procedure of the pair as
said user interface is provided on display screens as said corresponding form
based on said form definition,” is taught by Friend. Final Act. 4; Ans. 3–4
(citing Friend col. 4, ll. 17–27 and col. 8, ll. 25–41). More specifically, the
Examiner finds this limitation taught by Friend’s description of dynamic
actions and cascading dependencies. Id.
Appellant argues that the cited portions of Friend are deficient
because “the first dynamic action is executed upon satisfaction of its
own/first condition, and the second dynamic action is executed upon
satisfaction of its own/second condition in addition to the first condition.”
App. Br. 15. We agree with Appellant that the Examiner has failed to
demonstrate Friend teaches or suggests this limitation.
The cited portions of Friend describe the use of a “dynamic-action
builder” which “enables a designer to view his or her progress in building
the dynamic action in a dynamic action area.” Friend, col. 4, ll. 17–19.
Friend further teaches that the dynamic actions may include cascading
conditions which carry through to other dynamic actions such that
conditions in the second dynamic action are dependent on conditions in the
first dynamic action. Friend, col. 8, ll. 25–41. However, we do not discern
any teaching in Friend that code is examined to make a determination of any
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pair of procedures in which one procedure invokes the other is made. At
best, Friend teaches that dynamic actions may be written to invoke other
dynamic actions. However, displaying a development environment in which
dynamic actions invoke other dynamic actions does not teach identifying
related procedure pairs by examining their code, which is what the claim
requires.
Accordingly, we are persuaded the Examiner erred, and we reverse
the rejection of claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also reverse the rejections of claims 10 and 20 which recite similar
limitations, as well as of the remaining claims which depend therefrom.

CONCLUSION
The Examiner’s decision to reject the claims is reversed.
More specifically,
We reverse the rejection of claim 1 under 35 U.S.C. § 101.
We reverse the rejection of claims 1–7, 10–14, 20, 21, and 23–26
under 35 U.S.C. § 103(a).

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1 101 patent eligibility 1
1–7, 10–14,
20, 21, 23–
26
103 Friend, Dozier,
Hitchock, Kothari,
Ortscheid
1–7, 10–14,
20, 21, 23–
26
Overall
Outcome
1–7, 10–14,
20, 21, 23–
26
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REVERSED