Ex Parte Addala et al

Patent Trial and Appeal Board

Nov 3, 2017

12718625 (P.T.A.B. Nov. 3, 2017)

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.
12/718,625 03/05/2010 Raju ADDALA T9049-19569US01 5252
74739 7590 11/07/2017
MILES & STOCKBRIDGE P.C.
Oracle International Corporation
1751 Pinnacle Drive
Suite 1500
Tysons Corner, VA 22102-3833
EXAMINER
FLEISCHER, MARK A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
11/07/2017 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):
Ipdocketing @ Miles S tockbridge. com
bgoldsmith @ miles stockbridge .com
smcvean @ milesstockbridge. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJU ADD ALA, ALOK SINGH, NAGAVEENA RAJU,
ANKUSH MAHAJAN, LALITHA KAVURI,
KHANDERAO KAND, and CLEMENS UTSCHIG
Appeal 2016-004613
Application 12/718,625
Technology Center 3600
Before JUSTIN BUSCH, ALEX S. YAP, and STEVEN M. AMUNDSON,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—3, 5, 8—13, 15—18, and 20, which are all of the pending
claims. Claims 4, 6, 7, 14, and 19 were previously canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-004613
Application 12/718,625
CLAIMED SUBJECT MATTER
The claims are “directed to a computer system generally, and more
particularly to a computer system for the orchestration of business
processes.” Spec. 11. Claims 1, 11, and 16 are independent. Claim 1 is
reproduced below:
1. A non-transitory computer-readable medium having
instructions stored thereon, when executed by a processor, cause
the processor to orchestrate an order in a distributed order
orchestration system, the orchestrating comprising:
saving a state of an executable orchestration process
comprising one or more steps that orchestrate the order when an
order object is received;
executing at least one step of the executable orchestration
process;
at a pre-defmed step in the execution of the executable
orchestration process, modifying the state of the executable
orchestration process;
at the pre-defmed step in the execution of the executable
orchestration process, saving the modified state of the executable
orchestration process, wherein the modified state of the
executable orchestration process comprises one or more
attributes of the order object associated with the order;
receiving a change request, wherein the change request
comprises a modification to the order object associated with the
order;
merging a new order object with the order object; and
automatically adjusting the at least one executed step of
the executable orchestration process using the saved modified
state of the executable orchestration process and the merged
order object.
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REJECTIONS
Claims 1—3, 5, 8—13, 15—18, and 20 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 6—7.
Claims 1, 2, 8, 9, 11, 12, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being obvious in view of Chkodrov (US 7,107,340 B2; Sept. 12,
2006) and Srinivasan (US 7,096,189 Bl; Aug. 22, 2006). Final Act. 7—11.
Claims 3, 5, 10, 13, 15, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being obvious in view of Chkodrov, Srinivasan, and Applicant
Admitted Prior Art (“AAPA”). Final Act. 12—14.
ANAFYSIS
Rejection of Claims Under 35 U.S.C. § 101
Introduction and Framework
The Examiner rejects the claims under 35 U.S.C. § 101 because the
claims as a whole are directed to an abstract idea and do not contain
significantly more than the abstract idea so as to transform the claimed
abstract idea into a patent-eligible application. Final Act. 6—7; Ans. 2—6.
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012), and Alice Corp. v. CLS Bank International, 134
S. Ct. 2347, 2354 (2014), the Supreme Court explained that § 101 “contains
an important implicit exception” for laws of nature, natural phenomena, and
abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185 (1981). In Mayo
and Alice, the Court set forth a two-step analytical framework for evaluating
patent-eligible subject matter: (1) “determine whether the claims at issue are
directed to” a patent-ineligible concept, such as an abstract idea; and, if so,
(2) “consider the elements of each claim both individually and ‘as an
ordered combination’ to determine whether the additional elements” add
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enough to transform the “nature of the claim” into “significantly more” than
a patent-ineligible concept. Alice, 134 S. Ct. at 2355 (quoting Mayo,
566 U.S. at 79); see Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Step one in the Mayo!Alice framework involves looking at the “focus”
of the claims at issue and their “character as a whole.” Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two
involves the search for an “inventive concept.” Alice, 134 S. Ct. at 2355;
Elec. Power Grp., 830 F.3d at 1353. For an inventive concept, “more is
required than ‘well-understood, routine, conventional activity already
engaged in’” by the relevant community. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo,
566 U.S. at 79-80).
Step One of Alice Framework
Turning to step one of the Alice framework, we are unpersuaded that
the Examiner erred in concluding the claims are directed to an abstract idea.
Final Act. 6—7; Ans. 2-4. In particular, the Examiner finds the claims are
directed to order orchestration (performing or executing change orders
through a series of data collection and modification steps), which is a
fundamental economic practice and simply data manipulation. Final Act. 6;
Ans. 2. The Examiner clarifies the finding, stating the claims are directed to
order orchestration and the claims, as a whole, are directed to the abstract
idea without significantly more. Ans. 2. Notably, the Examiner’s
characterization is consistent with Appellants’ description of the invention as
being “directed to a computer system ... for the orchestration of business
processes.” App. Br. 5 (stating that “independent Claims 1,11 and 16 are
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directed to a non-transitory computer readable medium, a method, and a
system, respectively, that orchestrate business processes”); Spec. 11
(emphasis added); id. 1 6 (explaining that “change requests on long running
orders typically require adjustment only on parts of the order,” but that
“there is currently no way to selectively adjust a portion of an order in an
efficient and automatic manner”).
Appellants contend “the claims fail to recite simply ‘performing and
executing change orders and steps in a fulfillment process,’” and, because
the claims recite many specific steps in orchestrating business processes, the
claims are not directed to an abstract idea. App. Br. 8. Appellants argue the
steps relating to automatically adjusting an executed step and using the
saved modified state and the merged order object are not aspects of
executing change order processes. Id. Appellants further assert the claims,
when taken as an ordered combination, are not a fundamental economic
practice and the Examiner has not supported the finding that the claims are
directed to an abstract idea. App. Br. 8—9.
Appellants appear to conflate the question of whether the claims are
directed to an abstract idea and whether the claims amount to significantly
more than the abstract idea itself. Appellants do not identify a different
focus of the claimed invention. Rather, as noted above, Appellants describe
the claimed invention as being directed to orchestrating business processes.
App. Br. 8; Spec H 1, 6. Appellants’ contention that the claims are not
directed to an abstract idea relies on the details of the particular steps recited
to carry out the purpose of the invention.
Contrary to Appellants’ contentions, in the present claims, the details
of how the claim performs the business process orchestration do not change
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the nature or focus of the claimed invention—i.e., regardless of the
particular steps, the claims as a whole are still directed to orchestrating
business processes or executing change order processes. See Elec. Power,
830 F.3d at 1353. Thus, the claims’ character, as a whole, lies in
longstanding conduct that exists apart from computers—i.e., determining
how to execute a change to a previously submitted order.
Moreover, the claims are similar to claims the Federal Circuit has
consistently found to be directed to an abstract idea. The claims recite
methods implemented by processors for carrying out a change order in an
orchestration process. The claimed steps merely relate to saving and
modifying states of the process, executing steps of the process, receiving a
change request, and modifying a step of the process and objects associated
with the process. The Federal Circuit has ruled that claims covering the
collection, manipulation, and display of data were directed to abstract ideas.
See, e.g., Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1047,
1054—56 & n.6 (Fed. Cir. 2017); Intellectual Ventures ILLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1339-40 (Fed. Cir. 2017); Elec. Power Grp.,
830 F.3d at 1351—54; see also Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat. Ass % 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(finding that “[t]he concept of data collection, recognition, and storage is
undisputedly well-known,” and “humans have always performed these
functions”). Appellants’ claims are directed to steps for executing an order
process, including receiving a change to an object associated with the order.
Accordingly, we agree with the Examiner’s findings because the claimed
concept is similar to concepts found to be abstract by the Federal Circuit.
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Finally, we do not find persuasive Appellants’ argument that the
Examiner has not established a prima face case or sufficiently supported the
finding that the claims are directed to an abstract idea. The Federal Circuit
has repeatedly explained that “the prima facie case is merely a procedural
device that enables an appropriate shift of the burden of production.” Hyatt
v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992)). The “PTO [Patent & Trademark
Office] carries its procedural burden of establishing a prima facie case when
its rejection satisfies 35 U.S.C. § 132, in ‘notifying] the applicant. . . [by]
stating the reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.’” In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original) (quoting
35 U.S.C. § 132). The PTO violates § 132 “when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990). But if the PTO “adequately explain[s] the shortcomings it
perceives ... the burden shifts to the applicant to rebut the prima facie case
with evidence and/or argument.” Hyatt, 492 F.3d at 1370.
The Final Office Action adequately explains the § 101 rejection. The
Examiner determined that the claims are directed to performing and
executing change orders or steps in a fulfillment process. Final Act. 6. The
Examiner reasoned that the claims are thus directed to “a fundamental
economic practice and . . . simply a series of data collections and
modifications.” Id. The Examiner then determined:
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The claims do not recite limitations that are “significantly
more” than the abstract idea because the claims do not recite an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. In
addition, the limitations of the current claims are performed by
the generically recited processor. The limitations are merely
instructions to implement the abstract idea on a computer and
require no more than a generic computer to perform generic
computer functions that are well-understood, routine and
conventional activities previously known to the industry.
Final Act. 6—7. The Examiner’s statements satisfy § 132 because they apply
the Mayo/Alice two-step analytical framework and apprise Appellants of the
reasons for the § 101 rejection under that analysis. As discussed in more
detail below, Appellants recognize the Examiner’s MayolAlice analysis and
present arguments regarding each step. See App. Br. 7—13. Appellants do
not respond by alleging a failure to understand the rejection. Id.
Appellants’ contention concerning the absence of evidence supporting
the § 101 rejection does not persuade us of Examiner error. “Patent
eligibility under § 101 presents an issue of law.” Accenture Glob. Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir. 2013).
There is no requirement that an examiner cite evidentiary support to
conclude that a claim is directed to a patent-ineligible concept, such as an
abstract idea. Appellants cite the “July 2015 Update: Subject Matter
Eligibility” (“2015 Update”). App. Br. 9. The 2015 Update notes that
“courts do not rely on evidence that a claimed concept is a judicial
exception, and in most cases resolve the ultimate legal conclusion on
eligibility without making any factual findings.” 2015 Update 6. Further, it
instructs that a § 101 rejection may rest on “the knowledge generally
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available to those in the art, on the case law precedent, on applicant’s own
disclosure, or on evidence.” Id.
Appellants also argue the Examiner erred in rejecting the claims under
§101 because the claims are not similar to any of the examples in the 2015
Update. App. Br. 9—10. We disagree. The 2015 Update provides
illustrative examples to “assist examiners and the public in applying the
principles.” 2015 Update 1. Accordingly, we are unpersuaded the Examiner
erred in concluding the claims are directed to an abstract idea.
Step Two of Alice Framework
Because the claims are “directed to an abstract idea,” we turn to step
two of Alice to determine whether the limitations, when considered both
“individually and ‘as an ordered combination’” contain an inventive concept
sufficient to transform the claimed abstract idea into a patent-eligible
application. Alice, 134 S. Ct. at 2355—58.
Appellants argue the claims recite significantly more than the abstract
idea itself because: (1) the claims do not pre-empt every method of
performing and executing change orders; (2) the claims improve a
technological process; (3) the recited functions were not previously known;
and (4) the ordered combination renders the claims patent eligible.
App. Br. 10-13.
First, we address Appellants’ argument regarding pre-emption. It is
true that the Supreme Court has characterized pre-emption as a driving
concern for patent eligibility. See Alice, 134 S. Ct. at 2354. However,
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
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basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the §101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (emphasis added) (citing Alice, 134 S. Ct. at 2354). However,
“[wjhile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.” Ariosa,
788 F.3d at 1379; Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362-63 (Fed. Cir. 2015) (“[Tjhat 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.”), cert, denied, 136 S. Ct. 701
(2015).
We are similarly unpersuaded by Appellants’ argument that the claims
improve an existing technological process. Appellants contend that the
claims improve a technological process because the Specification describes
improving the processing speed of an orchestration system because the
invention eliminates the need for special logic to handle change requests.
App. Br. 11—12. The Examiner finds there is no evidence in the record or
the claims that a technological process is improved and, rather, the claims
attempt to improve the orchestration process, not the functioning of a
computer itself. Ans. 5. The Examiner finds that, even to the extent
Appellants’ claims improve the change order process, the elimination of
algorithmic steps does not improve the speed of the processor or data access.
With respect to this issue, we agree with and adopt the Examiner’s findings
and conclusions.
Appellants’ final two arguments essentially contend that the
automatically adjusting step renders the claims significantly more than the
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abstract idea itself. App. Br. 12—13. Regarding consideration of the
automatically adjusting step individually, Appellants argue the pending
claims are similar to those found eligible in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Id. In support of
Appellants’ contention that the ordered combination is significant,
Appellants merely restate the claim language with emphasis on certain
terms. Id. at 13. The Examiner explains that the automatically adjusting
step is merely a programming change carried out on conventional computer
hardware and, thus, does not rise to the level of providing “significantly
more.” Ans. 6.
We agree with the Examiner’s finding that the claims require nothing
more than a generic computer implementation on a general purpose
computer or processor. Ans. 4—5 (quoting Spec. Tflf 329—330). Thus, the
limitations, considered individually, do not contain an inventive concept.
Next, we consider the limitations as an ordered combination. Unlike the
claims in DDR, the present claims merely recite generic processors for
carrying out the abstract idea. Contrary to Appellants’ assertion, the claims
essentially recite an abstract idea with the instruction to apply it on a generic
computer or processor. Appellants do not persuasively explain why the
claims are similar to those in DDR or why the particular language renders
the ordered combination significantly more than the abstract idea.
Accordingly, we agree with the Examiner.
Moreover, “relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”
OIP Techs., 788 F.3d at 1363. So, even if a computer performs the claimed
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steps more quickly, we agree with the Examiner that using a computer in
this conventional way does not supply an inventive concept. Ans. 4—7.
For the above reasons, Appellants have not persuaded us the
Examiner erred in rejecting the claims under 35U.S.C. § 101.
Rejection of Claims Under 35 U.S.C. § 103
The Examiner rejects each of the pending claims under 35 U.S.C.
§ 103(a) as being obvious over Chkodrov and Srinivasan, or Chkodrov,
Srinivasan, and AAPA. Final Act. 7—14. For each of the claims, the
Examiner relies on the combination of Chkodrov and Srinivasan for teaching
or suggesting the automatically adjusting step. Final Act. 9 (citing
Srinivasan 4:7—24; Chkodrov 7:34); Ans. 6—7. The extent of the Examiner’s
explanation is that Srinivasan “describes and/or discloses execution of
modified steps” and Chkodrov “states ‘Of course, the method may vary
depending on the query-able format, the type of event item, etc., and may be
specified internal or external to the event item.’ (emphasis added).” Final
Act. 9; Ans. 7. Appellants contend Srinivasan describes a change order
system that copies an existing order to a change order and replaces a change
order’s object’s attributes, but fails to teach or suggest adjusting an already
performed step. App. Br. 15.
We have reviewed Srinivasan and Chkodrov, and we agree with
Appellants that the Examiner has not clearly explained how the proposed
combination teaches or suggests the recited automatically adjusting step or
pointed to sufficient supporting evidence. We agree with Appellants that
Srinivasan clearly discusses modifying an existing order, including changing
the value of an object’s attribute. Srinivasan 4:7—24. However, we find
nothing in the passage cited by the Examiner to support a finding that
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Srinivasan teaches automatically adjusting a step that has already been
executed, as recited in the claims. Similarly, the cited portion of Chkodrov
does not disclose or appear to contemplate the automatically adjusting step.
Without any apparent teaching or suggestion, explicit or implicit, in
the cited portions of Srinivasan and Chkodrov of the automatically adjusting
step, we are persuaded the Examiner erred in finding the combination of
Srinivasan and Chkodrov teaches or suggests each limitation of the pending
claims. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (Examiner’s
burden of proving non-patentability is by a preponderance of the evidence);
see also In re Warner, 379 F.2d 1011,1017 (CCPA 1967) (“The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.”). Accordingly, we do not sustain the
Examiner’s rejection of claims 1—3, 5, 8—13, 15—18, and 20 under 35 U.S.C.
§ 103(a).
Because this is determinative of the outcome with respect to the
rejections under 35 U.S.C. § 103(a), we do not address Appellants’ other
arguments.
SUMMARY
We sustain the Examiner’s rejection of claims 1—3, 5, 8—13, 15—18,
and 20 under 35 U.S.C. § 101. We do not sustain the Examiner’s rejection
of claims 1—3, 5, 8—13, 15—18, and 20 under 35 U.S.C. § 103(a) as obvious
in view of either Chkodrov and Srinivasan; or Chkodrov, Srinivasan, and
AAPA.
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DECISION
We affirm the Examiner’s rejection of claims 1—3, 5, 8—13, 15—18,
and 20.
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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