DeRoller, Matthew

Patent Trials and Appeals Board

Jan 24, 2020

13706544 - (D) (P.T.A.B. Jan. 24, 2020)

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.
13/706,544 12/06/2012 Matthew DeRoller 20120437USNP/106681.38701 6180
75313 7590 01/24/2020
XEROX CORPORATION C/O FOX ROTHSCHILD LLP
Princeton Pike Corporate Center
997 Lenox Drive, Building 3
Princeton, NJ 08648-2311
EXAMINER
LINDSEY III, JOHNATHAN J
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
01/24/2020 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):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW DeROLLER
____________

Appeal 2018-008042
Application 13/706,544
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.

MOHANTY, 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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
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 Xerox
Corporation. Appeal Br. 3.
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Application 13/706,544

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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a document workflow
management system that may generate an alert for a possible delay (Spec.
¶¶ 4, 5). Claim 1, reproduced below with the italics added, is representative
of the subject matter on appeal.

1. A method of coordinating and monitoring progress of an
electronic document workflow across a plurality of workflow action
personnel electronic devices, the method comprising:
by one or more processors of a hub electronic device, accessing
a document workflow file, the document workflow file representing a
document management workflow for an electronic document, the
document workflow file comprising information identifying a plurality
of workflow action personnel, an action that is to be taken by each of
the workflow action personnel, and a time period for each action,
wherein each of the workflow action personnel is associated with an
electronic device;
by the one or more processors of the hub electronic device,
monitoring progress of the document management workflow by:
identifying at least a portion of the workflow action
personnel to whom the electronic document will be transmitted
for action based on a network address or an identification code
of the electronic device associated with each of the workflow
action personnel,
aggregating, from a plurality of sources associated with a
plurality of workflow action personnel electronic devices that are
in electronic communication with the hub electronic device via a
network, user status information for the identified portion of the
workflow action personnel, wherein at least one of the sources
for each of the identified workflow action personnel comprises
an application that the identified workflow action personnel
accesses via an electronic device,
before the document management workflow is complete,
determining that the document management workflow is subject
to a delay based on the user status information for at least one
of the workflow action personnel,
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identifying a person whose status is a cause of the delay
and a first action that the person is to perform in the document
management workflow, and
analyzing the user status information for the identified
person to identify a reason for the delay;
by the one or more processors of the hub electronic device,
generating an alert comprising an identification of the electronic
document, the identified person, and the reason; and
by the one or more processors of the hub electronic device,
causing the alert to be transmitted to at least one of the workflow action
personnel to whom an action has been assigned.

THE REJECTIONS
The following rejections are before us for review:
1. Claim 7, 11, and 18 are rejected on the grounds of nonstatutory
double patenting over claim 4 of US Patent 9,027,537.
2. Claims 1–202 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.3

2 The Answer at page 3 states in heading “2” that claims 1–20 are rejected,
but in contrast heading “3” states that the rejection of claims 12–20 is
withdrawn. The Answer at pages 3 and 10 states that claims 12–20 are
under this grounds of rejection. Thus, the Answer in two locations says
claims 12–20 are under this rejection and we consider the withdrawal at
heading “3” to be a typographical error. We also note the Appellant states in
the Reply Brief at page 2 that all claims 1–20 are rejected.
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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ANALYSIS
Rejection under Nonstatutory Double Patenting
The Appellant has not provided any arguments in regards to this
rejection and the rejection is therefore summarily affirmed.

Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 9–18). The
Appellant argues further that the claim is “significantly more” than the
alleged abstract idea (Appeal Br. 18–21; Reply Br. 2–9).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 6–12; Ans. 4–10).
We agree with the Examiner. 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
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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)
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(“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
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, 69 (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 waterproof 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 187; 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. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187
(“It is now commonplace that an application of a law of nature or
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mathematical formula to a known structure or process may well be deserving
of patent protection.”).
The PTO recently published revised guidance on the application of
§ 101. 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); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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
(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.
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-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
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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.
The Specification, at paragraphs 4 and 5, states that the invention
generally relates to a document workflow management system that may
generate an alert for a possible delay. Here, the Examiner has determined
that claim 1 sets forth a method for “collecting information, analyzing it, and
displaying certain results of the collection and analysis” and is directed to an
abstract concept (Ans. 4). We substantially agree with the Examiner. We
determine that the claim sets forth the subject matter in italics above which
describes the concept of monitoring document workflow and generating a
delay alert which is a certain method of organizing human activity, i.e. a
judicial exception. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016) where collecting information, analyzing it, and
displaying certain results of the collection and analysis was held to be an
abstract idea. In Two-Way Media LTD v. Comcast Cable Communications,
874 F.3d 1329, 1377 (Fed. Cir 2017), it was held that claims directed to the
concept of (1) sending information, (2) directing the sent information, (3)
monitoring the receipt of the sent information, and (4) accumulating records
about receipt of the sent information were directed to an abstract idea. In
Fairwarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1094, (Fed. Cir.
2016), it was held that claims directed to collecting and analyzing
information to detect misuse and notifying a user when misuse is detected
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was directed to an abstract idea. Thus, we consider the claim to set forth a
judicial exception as identified above.
We next determine whether the claim recites additional elements to
integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Here, the claim does not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claim imposes a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort to monopolize the judicial exception.
For example, in claim 1 the steps of [1] “by one or more processors of
a hub electronic device, accessing a document workflow file”, [2] “by the
one or more processors of the hub electronic device, monitoring progress of
the document management workflow by: identifying at least a portion of the
workflow action personnel to whom the electronic document will be
transmitted”, [3] “aggregating . . . user status information for the identified
portion of the workflow action personnel”, [4] “before the document
management workflow is complete, determining that the document
management workflow is subject to a delay based on the user status
information for at least one of the workflow action personnel”, [5]
“identifying a person whose status is a cause of the delay and a first action
that the person is to perform in the document management workflow”, [6]
“analyzing the user status information for the identified person to identify a
reason for the delay”, [7] “generating an alert comprising an identification of
the electronic document” and [8] “by the one or more processors of the hub
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electronic device, causing the alert to be transmitted to at least one of the
workflow action personnel” are merely steps performed by a generic
computer that do not improve computer functionality. That is, these recited
steps [1]–[8] “do not purport to improve the functioning of the computer
itself” but are merely generic functions performed by a conventional
processor. Likewise, these same steps [1]–[8] listed above do not improve
the technology of the technical field and merely use generic computer
components and functions to perform the steps. Also, the recited method
steps [1]–[8] above do not require a “particular machine” and can be utilized
with a general purpose computer, and the steps performed are purely
conventional. In this case the general purpose computer is merely an object
on which the method operates in a conventional manner. Further, the claim
as a whole fails to effect any particular transformation of an article to a
different state. The recited steps [1]–[8] fail to provide meaningful
limitations to limit the judicial exception and rather are mere instructions to
apply the method to a generic computer.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
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Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
The claim fails to add a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field. Rather the
claim uses well-understood, routine, and conventional activities previously
known in the art and they are recited at a high level of generality. The
Specification at paragraphs 20 and 36–41, for example, describes using
conventional computer components such as network server, central
processing unit, and computer memory in a conventional manner. The claim
specifically includes recitations for computers to implement the method but
these computer components are all used in a manner that is well-understood,
routine, and conventional in the field. Here, the claim has not been shown to
be “significantly more” than the abstract idea.
The Appellant at page 4 of the Reply Brief has also cited to Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the
claim is not abstract, but the claims in that case were not similar in scope to
those here and were in contrast directed to a self-referential data table.
The Appellant cites to DDR Holdings, LLC v. Hotels, L.P., 773 F. 3d
1245 (Fed. Cir. 2014) and argues that the claim is “rooted in computer
technology” (Reply. Br. 4–7). We disagree as the Appellant has not shown
how the claimed subject matter is rooted in technology given that the
Specification describes only the use of generic computer equipment used in
routine, conventional, and generic manner.
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same arguments for the remaining claims which
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are drawn to similar subject matter and the rejection of these claims is
sustained for the same reasons given above.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting the claims as listed in the Rejections section above.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
7, 11, 18 Non Statutory
Double Patenting
7, 11, 18
1–20 101 Eligibility 1–20
Overall
Outcome
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