Ex Parte ABDELRAHMAN et al

Patent Trials and Appeals Board

Mar 13, 2019

13936674 - (D) (P.T.A.B. Mar. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/936,674 07/08/2013 Ahmad Naser ABDELRAHMAN
74739 7590 03/15/2019
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2011-00lOUSlO 1560
EXAMINER
DUNHAM, JASON B
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
03/15/2019 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AHMAD NASER ABDELRAHMAN
and BRIAN JAMES DUECK
Appeal2017-006099
Application 13/936,674
Technology Center 3600
Before DEBRA K. STEPHENS, NABEEL U. KHAN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
Appeal2017-006099
Application 13/936,674
STATEMENT OF THE CASE
Appellants' invention is directed to a service design and order
fulfillment system. Spec. ,r,r 66-67. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A non-transitory computer-readable medium having
instructions stored thereon that, when executed by a processor, cause
the processor to decouple a product offering from a fulfillment flow,
the decoupling comprising:
defining the product offering comprising one or more product
specifications, wherein each product specification comprises metadata
that defines a product that is provided, and wherein the product
offering further comprises metadata that defines one or more
commercial attributes;
selecting a process logic at runtime from a set of selectable
process logic;
generating a transformation sequence using the selected process
logic;
dynamically generating a runtime process flow comprising a
customized output based on the transformation sequence and the
metadata;
mapping the one or more product specifications to one or more
fulfillment patterns, wherein each fulfillment pattern comprises
metadata that defines a set of one or more fulfillment functions and
one or more dependencies;
generating a customer order comprising one or more customer
order lines, wherein each customer order line comprises a product
action and a product offering that is based on a product specification;
and
fulfilling the customer order using a fulfillment flow based on
the one or more fulfillment patterns mapped to the one or more
product specifications, wherein the product offering is decoupled from
the fulfillment pattern such that the product offering can be modified
without modifying the fulfillment pattern.
App. Br. 17 (Claims Appendix).
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Application 13/936,674
REJECTIONS
Claims 1-20 stand rejected under 35 USC§ 101 as being directed to
patent-ineligible subject matter.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
ANALYSIS
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. Kappas, 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
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Application 13/936,674
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 (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)).
If the claim is "directed to" an abstract idea, we tum 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 ( quotation marks 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. ( 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 PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
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 (see 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:
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(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 Memorandum.
The Examiner determines the claims are directed to generating and
fulfilling a customer order, which is an idea of itself, and, therefore, abstract,
similar to the claims in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014). Final Act. 3; Ans. 7. The Examiner further determines the
claims are directed to parties entering into a specified agreement to perform
certain services ( e.g. fulfilling an order), which is a form of creating a
contractual relationship and also an abstract idea, similar to the claims in
BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Final
Act. 3--4; Ans. 7. Additionally, the Examiner determines the claims
represent "functions performable by a human user, and effectively amount to
little more than defining a product, selecting a software application,
generating a customized output, mapping the product to a fulfillment pattern,
generating a customer order and fulfilling the customer order," similar to the
claims in SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. Appx.
950, 955 (Fed. Cir. 2014) and CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1373 (Fed. Cir. 2011). Final Act. 4; Ans. 7.
Appellants argue the claims
are directed to a specific application of a distributed order
orchestration system that, inter alia, defines the product
offering comprising one or more product specifications,
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wherein each product specification comprises metadata that
defines a product that is provided, dynamically generates a
runtime process flow comprising a customized output
based on the transformation sequence and the metadata, maps
the one or more product specifications to one or more
fulfillment patterns, wherein each fulfillment pattern comprises
metadata that defines a set of one or more fulfillment functions
and one or more dependencies, and wherein the product
offering is decoupled from the fulfillment pattern such that the
product offering can be modified without modifying the
fulfillment pattern.
App. Br. 5. According to Appellants,
[c]ontrary to the Examiner's unsupported opinion, the claims
recite numerous features that are not abstract. Although some
court cases are cited by the Examiner, a comparison of the
alleged abstract idea to the abstract ideas identified by the
courts shows that there are no similarities. Therefore, the
present claims recite patent eligible subject matter.
Id. at 6. Appellants also argue the claims are not similar to those in
Ultramercial, BuySAFE, and SmartGene. Id. at 6-8. Additionally,
Appellants argue "the claimed invention is clearly not directed to a
process that a doctor or any other professional can and do perform in
their heads" and "the recited claims cannot be performed manually,
as elements such as 'dynamically generating a runtime process flow
comprising a customized output based on the transformation sequence
and the metadata' require a computer."' Id. at 9.
Appellants, however, do not persuasively argue why the claims are
not directed to an abstract idea. For example, although Appellants argue
"the claims recite numerous features that are not abstract," Appellants do not
direct our attention to what those features are or explain why they are not
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abstract. Rather, Appellants have done little more than merely recite the
claim language. We acknowledge Appellants' arguments that their
invention is not directed to "using advertising as an exchange or currency,"
or "creating a transaction performance guaranty," like the claims in
Ultramercial and buySAFE (App. Br. 6-8), respectively; however, the
Examiner did not base the rejection on the theory that Appellants' claims
were identical to the claims in those cases. Rather, the Examiner cited
Ultramercial to support the broader proposition that courts have found
certain methods of organizing human activity or claims directed to an idea of
itself can constitute an abstract idea.
Nor have Appellants persuasively argued why generating and
fulfilling a customer order, as identified by the Examiner, is not directed to
an abstract idea. Independent claim 1 recites "defining the product offering .
. . ," "selecting a process logic ... ," "generating a transformation sequence ..
. ," "dynamically generating a runtime process flow ... ," "mapping the one
or more product specifications to one or more fulfillment patterns ... ,"
"generating a customer order ... ," and "fulfilling the customer order using a
fulfillment flow ... " App. Br. 17. As Appellants state, "[o]rders are a
primary mechanism to do business." Spec. ,r 83. We fail to see why this
sequence of steps for generating and fulfilling a customer order cannot
properly be described as certain methods of organizing human activity, for
example commercial or legal interactions, such as sales activities or
behaviors or business relations, as identified in the Office Guidance. See
Memorandum at 52.
We further agree with the Examiner that the claims are directed to a
mental process, and, in that way, are similar to the claims recited in
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SmartGene and Cybersource. See Final Act. 4; Ans. 7, 10. Appellants have
not presented persuasive argument that the steps/limitations of the claims
cannot be manually performed. Rather, the series of steps/limitations
covered by the claims can be performed by humans without a computer. Cf
CyberSource, 654 F.3d at 1373; see also Mortgage Grader, Inv. v. First
Choice Loan Servs., 811 F.3d 1314, 1324 (Fed. Cir. 2015); see also Elec.
Power Grp. LLC v. Alstom, 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)
(collecting information and "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, [are]
essentially mental processes within the abstract-idea category."). The mere
mention of certain claimed computer components ( e.g. "processor," "process
logic," "runtime process flow," "metadata," "memory") does not impose
sufficiently meaningful limitations on claim scope beyond these mental
steps. CyberSource, 654 F.3d at 1372-73, 1375; Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
In determining whether the claims are "directed to" the identified
abstract ideas, we next consider whether the claims recite additional
elements that integrate the judicial exception into a practical application.
We discern no additional element ( or combination of elements) recited in the
claims that integrates the judicial exception into a practical application. See
Memorandum at 54--55.
Appellants argue "[a]s in Enfzsh, the claimed invention is directed to
an improvement in the functioning of a computer." App. Br. 10.
Specifically, Appellants argue improvements are provided by the decoupling
of a product offering from a fulfillment flow. ld. at 15. Appellants further
argue independent claims 1, 11, and 16 recite "dynamically generating a
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nmtime process flow comprising a customized output based on the
transformation sequence and the metadata," which "renders claims 1----20 as
having significantly more than the abstract idea." Id. at 13. Appellants also
argue
The claims further recite inter alia, defining the product
offering comprising one or more product specifications,
wherein each product specification comprises metadata that
defines a product that is provided, dynamically generating a
runtime process flow comprising a customized output based on
the transformation sequence and the metadata, mapping the one
or more product specifications to one or more fulfillment
patterns, wherein each fulfillment pattern comprises metadata
that defines a set of one or more fulfillment functions and one
or more dependencies, and wherein the product offering is
decoupled from the fulfillment pattern such that the product
offering can be modified without modifying the fulfillment
pattern[,]
which "are meaningful limitations that add more than generally linking the
use of the abstract idea ... to the Internet, because they solve an Internet-
centric problem with a claimed solution that is necessarily rooted in
computer technology," like the claims in DDR Holdings, LLC v. Hotels.com,
L.P., et al., 773 F.3d 245 (Fed. Cir. 2014). Id. at 14. According to
Appellants, "the claimed invention addresses the Internet-centric processing
of product offerings in a fulfillment flow." Id. Appellants argue
"[a]ssociating fulfillment logic with product specifications can allow a
desirable proliferation of commercial offerings while minimizing changes to
a fulfillment process." Id. (citing Spec. ,r 176); see also Reply Br. 3-4.
We are not persuaded by Appellants' arguments and agree with the
Examiner's findings and conclusions. See Ans. 7-16. The claims do not
constitute an improvement to the functioning of the computer; rather, they
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merely adapt the abstract idea of generating and fulfilling an order to an
execution of steps performed by a computer. See id. at 11. In other words,
the claims are directed to the use of the computer merely as a tool to perform
the order generation and fulfillment process. Appellants' arguments that the
"improvements [are] provided by the decoupling of a product offering from
a fulfillment flow" (App. Br. 15) and "[a]ssociating fulfillment logic with
product specifications can allow a desirable proliferation of commercial
offerings while minimizing changes to a fulfillment process" (App. Br. 15)
support that the improvements are to the underlying abstract idea, using the
computer merely as a tool, rather than improvements to the computer
functionality itself, like the claims in Enfzsh. See 822 F.3d at 1336.
Nor are we persuaded by Appellants' arguments that the claims are
rooted in computer technology, like the claims in DDR Holdings. See App.
Br. 13-14. In DDR Holdings, the disputed claims solved an Internet-
specific problem (i.e., third-party merchants luring a host website's visitor
traffic away from the host website in response to clicking on a merchant's
advertisement link displayed on the host site) with an Internet-based solution
(i.e., generating a composite web page displaying product information from
the third-party merchant, but retaining the host website's "look and feel")
that was "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks." DDR
Holdings, 773 F.3d at 1257-1258.
That is not the case here. Appellants have not persuasively explained
why the "processing of product offerings in a fulfillment flow" is an
Internet-centric problem. See App. Br. 14. Rather, we agree with the
Examiner that the claims address a business challenge ( relating to generating
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and fulfilling an order) that is not particular to the Internet or rooted in
computer technology. See Ans. 15-16.
Therefore, we are not persuaded of error in the Examiner's
determination that the claims are directed to an abstract idea.
Turning to step 2 of the Alice/lviayo framework, we look to whether
the claims (a) add a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
append well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. l\1emorandum at 56.
In addition to argurnents discussed above, Appellants further argue
[t]he present claims, as in Bascom, are indicative of "an
inventive concept [that] can be found in the ordered
combination of claim limitations that transform the abstract
idea of filtering content into a particular, practical application of
that abstract idea," as indicated by the combination of elements
being novel and non-obvious over the prior art.
App. Br. 13.
\Ve are not persuaded by Appellants' arguments and agree with the
Examiner's findings and conclusions. See Final Act. 5-8; Ans. 12-16.
Although Appellants cite to Bascom, Appellants have not adequately
explained how the claims are performed such that they are not routine,
conventional functions of a generic computer. vVe agree with the Examiner
that the additional technological elements in the claims, when considered
both individually and as an ordered combination, are directed to generic
computer components that perfonn well-understood, routine, and
conventional functions. See Ans. 12-15.
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Appellants' Specification supports this determination. See, e.g., Spec.
,r 67 ("Processor 22 may be any type of general or specific purpose
processor"); see also Spec. ,r,r 68-71, Fig. 1; see also Electric Power, 830
F.3d at 1355 ("Nothing in the claims, understood in light of the
specification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information.").
In order for the addition of a machine to impose a meaningful
limit on the scope of a claim, it must play a significant part in
permitting the claimed method to be performed, rather than
function solely as an obvious mechanism for permitting a
solution to be achieved more quickly, i.e., through the
utilization of a computer for performing calculations.
SiRF Tech., Inc. v. Int'! Trade Comm 'n, 601 F.3d 1319, 1333 (Fed. Cir.
201 O); see also Bancorp Services, L.L. C. v. Sun Life Assur. Co. of Canada,
687 F.3d 1266, 1277-78 (Fed. Cir. 2012). Specifically, we agree with the
Examiner that "the claimed limitations merely amount to generic computer
components, operating in a routine and conventional manner to automate
human mental activities." Ans. 15. Appellants have not persuasively
rebutted the Examiner's findings.
Appellants also argue that similar to the claims in McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), "the
present claims are allowable over the prior art, so there is no evidence that
the claimed process was previously used either manually, or using a
computer." App. Br. 10. Appellants further argue "as is clear from the lack
of a prior art rejection, the present claims do not preempt all systems and
methods for performing the abstract idea." App. Br. 15.
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To the extent Appellants maintain that the limitations of the claims
necessarily amount to "significantly more" than an abstract idea because the
clairned invention is allegedly patentable over the prior art, this argument is
not persuasive. See Ans. 12. Although the second step in the AHce/l\1ayo
framework is termed a search for an "inventive concept," the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for '"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, 573 U.S. 217-218. A novel and
nonobvious claim directed to a purely-abstract idea is, nonetheless, patent-
ineligible. See ]vfayo, 566 U.S. at 89-91.
Appellants' preemption argument is likewise unpersuasive of
Examiner error. Although preemption "might tend to impede innovation
more than it would tend to promote it, 'thereby thwarting the primary object
ofthepatentlaws"' (Alice, 573 U.S. at216 (citingA1ayo, 132 S. Ct. at
1293)), "the absence of complete preemption does not demonstrate patent
eHgibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362----63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.").
Accordingly, for the foregoing reasons, we sustain the Examiner's 35
U.S.C. § 101 rejection of claims 1-20.
DECISION
We affirm the Examiner's 35 U.S.C. § 101 rejection of claims 1-20.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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