Ex Parte Addala et al

Patent Trial and Appeal Board

Nov 30, 2017

12718383 (P.T.A.B. Nov. 30, 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.
12/718,383 03/05/2010 Raju ADDALA T9049-19579US01 4742
74739 7590 12/04/2017
MILES & STOCKBRIDGE P.C.
Oracle International Corporation
1751 Pinnacle Drive
Suite 1500
Tysons Corner, VA 22102-3833
EXAMINER
DESAI, RESHA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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, SIDDHARDHA MUDUMBA,
BALAJI IYENGAR, SUMEET RIJHSINGHANIM, and
RAJEEV BELLAMKONDA
Appeal 2016-001529
Application 12/718,38s1
Technology Center 3600
Before CARL W. WHITEHEAD JR., HUNG H. BUI, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Office Action rejecting claims 1, 3—6, 8—11, and 13—15, all
of which are pending on appeal. Claims 2, 7, and 12 have been canceled.
Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the real party in interest is Oracle International
Corp. App. Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief filed June 1, 2015 (“App.
Br.”); Reply Brief filed November 10, 2015 (“Reply Br.”); Examiner’s
Answer mailed September 10, 2015 (“Ans.”); Final Office Action mailed
January 5, 2015 (“Final Act.”); and original Specification filed March 5,
2010 (“Spec.”).
Appeal 2016-001529
Application 12/718,383
STATEMENT OF THE CASE
Appellants’ invention relates to “a computer system for the
orchestration of business processes,” including “to notify a fulfillment
system of a change request [to modify an order for fulfillment]” and to
inquire “as to whether the fulfillment system will accept the change
request.” Spec. ^fl[ 1, 5—7.
Claims 1, 6, and 11 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below with disputed limitations in
italics:
1. A computer-readable medium having instructions stored
thereon that, when executed by a processor, cause the processor
to implement a method for notifying an external fulfillment
system of a change request in a distributed order orchestration
system, the notifying comprising:
executing an executable orchestration process that
orchestrates an order, wherein the executable orchestration
process comprises one or more steps, and wherein the executable
orchestration process uses metadata assembled in a table to
invoke one or more services in the executable orchestration
process;
receiving a change request while the executable
orchestration process is being executed, wherein the change
request comprises a new order that references the order and
further comprises one or more modifications to the order;
determining that a hold flag has been set for a step of the
executable orchestration process;
putting the step of the executable orchestration process on
hold when it is determined that the hold flag has been set; and
sending an inquiry to an external fulfillment system using
the executable orchestration process, wherein the inquiry
inquires as to whether the external fulfillment system will allow
a change to the step of the executable orchestration process that
is fulfilled by the external fulfillment system.
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App. Br. 27 (Claims App.).
Examiner’s Rejections and References
(1) Claims 1 and 3—5 stand rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112(pre-AIA), second paragraph, as being indefinite. Final
Act. 3.
(2) Claims 1—5 [sic, claims 1 and 3—5] stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to non-statutory
subject matter, i.e., signals under In reNuijten, 500 F.3d 1346, 1356—57
(Fed. Cir. 2007). Final Act. 4.
(3) Claims 1, 3—6, 8—11, and 13—15 stand rejected under 35 U.S.C.
§101 because the claimed invention is directed to non-statutory subject
matter, i.e., an abstract idea under Alice Corp. Pty. Ltd. v. CLS Bank Int 7,
134 S. Ct. 2347 (2014). Final Act. A-5.
(4) Claims 1—15 [sic, claims 1, 3—6, 8—11, and 13—15] stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Srinivasan (US
7,096,189 Bl; issued August 22, 2006) and Marks (US 6,876,977 Bl; issued
Apr. 5, 2005). Final Act. 6—11.
ANALYSIS
At the outset, we note Appellants do not address the Examiner’s final
rejections of (1) claims 1 and 3—5 under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112(pre-AIA), second paragraph, as being indefinite; and (2) claims 1—5
under 35 U.S.C. § 101 because the claimed invention encompasses signals
under In reNuijten, 500 F.3d 1346, 1356—57 (Fed. Cir. 2007). Final Act. 3—
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4. As such, the Examiner’s final rejections of these claims are sustained pro
forma.
§101 Rejection of Claims 1, 3—6, 8—11, and 13—15
In Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 132 S.
Ct. 1289, 1297 (2012), “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts,” such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims
are directed to a patent-ineligible concept, the second step in the analysis is
to consider the elements of the claims “individually and ‘as an ordered
combination’” to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(citing Mayo, 132 S. Ct. at 1297—98). In other words, the second step is to
“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.’” Id.
(citing Mayo, 132 S. Ct. at 1294—95).
In rejecting claims 1, 3—6, 8—11, and 13—15 under 35 U.S.C. § 101,
the Examiner finds (1) these claims are directed to “a process of [processing
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and] fulling customer orders,” and (2) “[processing and] fulling customer
orders” is a “fundamental economic practice” recognized by the Supreme
Court as a patent-ineligible “abstract idea” in Bilski v. Kappos, 561 U.S. 593
(2010), and Alice, 134 S. Ct. at 2356. Final Act. 4—5; Ans. 3. The Examiner
also finds that:
the claim[s] as a whole, do not amount to significantly more than
the abstract idea itself. This is because the claim does not amount
to an improvement to another technology or technical field; the
claim does not amount to an improvement to the functioning of
a computer itself; the claim does not move beyond a general link
of the use of an abstract idea to a particular technological
environment; the claim merely amounts to the application or
instructions to apply the abstract idea on a computer; and the
claim amounts to nothing more than requiring a generic
computer to perform generic computer functions that are well-
understood, routine and conventional activities previously
known to the industry . . . Accordingly, claims 1, 3—5 are
directed to an article of manufacture; claims 6, 8—10 are directed
to a process; and claims 11, 13—15 are rejected as [patent]
ineligible for patenting under 35 U.S.C. § 101 based upon the
same analysis.
Final Act. 5.
As to the first step of the Alice inquiry, Appellants contend claims 1,
3—6, 8—11, and 13—15 “are not directed to an abstract idea” but instead are
“directed to a specific application of orchestrating an order within a
distributed order orchestration system (which is a specialized computer
system) and sending an inquiry with external fulfillments systems, via a
running step of an executable orchestration process, to determine whether
the external fulfillment systems will accept change requests.” App. Br. 20—
21. In particular, Appellants argue “processing and fulfilling customer
orders” is not a “fundamental economic practice” because the Examiner “has
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failed to provide any evidence, such as a citation to a finance textbook or
standard, to establish that ‘processing and fulfilling customer orders’ is a
fundamental economic practice.” App. Br. 21.
As to the second step of the Alice inquiry, Appellants contend “claims
1, 3—6, 8—11, and 13—15 amount to something ‘significantly more’ than the
alleged abstract idea of processing and fulfilling customer orders.” App. Br.
22. In particular, Appellants argue claims 1, 3—6, 8—11, and 13—15 are
similar to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014) and, like the claims in DDR Holdings, these
claims “recite improvements to the functioning of a specific-purpose
computer, that is part of a distributed order orchestration system,
programmed to send an inquiry to external fulfillments systems, via a
running step of an executable orchestration process, in order to determine
whether a change is allowed for a step of the executable orchestration
process, when the distributed order orchestration system receives a change
request.” App. Br. 23—24; Reply Br. 6—7 (citing Spec. 1197).
We do not find Appellants’ arguments persuasive. Instead, we find
the Examiner has provided a comprehensive and exceptionally well-crafted
response to Appellants’ arguments supported by evidence. Ans. 3—6. As
such, we adopt the Examiner’s findings and explanations provided therein.
Id. At the outset, we note that patent eligibility under 35 U.S.C. § 101 is a
question of law, and not a question of fact. Nevertheless, the USPTO is still
required to meet its procedural burden under 35 U.S.C. § 132 to notify the
applicant of the reasons for its rejection, “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.
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2011) (alteration in original, quoting 35 U.S.C. § 132). Here, the Examiner
notified Appellants that the claims are directed to an ineligible abstract idea,
specifically, to the abstract idea of “processing and fulfilling customer
orders,” where the claims “do not amount to something significantly more
than the abstract idea itself.” (Final Act. 4—5.) Thus, Appellants have been
notified of the reasons for the rejection with such information “as may be
useful in judging of the propriety of continuing the prosecution of [the]
application,” which is all that is required.
Turning now to Alice, we agree with the Examiner that Appellants’
(1) claims 1—4 and 6—21 are directed to a fundamental economic practice of
“processing and fulfilling customer orders” recognized by the Supreme
Court as a patent-ineligible “abstract idea” under Alice step 1; and (2) these
claims do not contain an “inventive concept” under Alice step 2. Final Act.
4—5; Ans. 3—6. We also note that Appellants’ reliance on DDR Holdings is
also misplaced.
For example, in DDR Holdings, the claims were also directed to a
“fundamental economic practice” on the Internet, via a specific set of (1) a
“computer store” hosting a website, (2) a “computer” hosting a user (visitor),
and (3) a “computer server” serving a visitor a hybrid web page that merges
content associated with the products of a third party merchant with the
stored “visually perceptible elements” from the identified host website.
DDR’s claims also required an interaction between these components
engineered to address a technical problem unique to e-commerce and the
Internet, i.e., retaining a website visitor when the visitor clicked on the third
party merchant’s advertisement on the host website — instead of taking the
visitor to the third party merchant’s website (i.e., losing the visitor to the
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third party merchant’s website), DDR’s system generated a hybrid web page
that [A] displayed product information from the third party merchant, but
also [B] retained the host website’s “look and feel.” See DDR’s claim 19 of
U.S. Patent No. 7,818,399.
The Federal Circuit found DDR’s claims contain an “inventive
concept” under Alice step 2 because DDR’s claims (1) do not merely recite
“the performance of some business practice known from the pre-Internet
world” previously disclosed in Bilski and Alice, and instead (2) provide a
technical solution to a technical problem unique to the Internet, i.e., a
“solution [] 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.
Contrary to DDR Holdings, we find Appellants’ claims 1, 3—6, 8—11,
and 13—15 are not rooted in computer technology and do not provide any
technical solution to a technical problem unique to e-commerce and the
Internet. Instead, as correctly recognized by the Examiner, “[t]he claimed
invention is rooted in solving a business problem of processing change order
requests” and “is being implemented by a general purpose computer” to
perform the abstract idea of “processing and fulfilling customer orders.”
Ans. 5
Because Appellants’ claims 1, 3—6, 8—11, and 13—15 are directed to an
abstract idea under Alice step 1, and do not contain an “inventive concept”
under Alice step 2, we sustain the Examiner’s rejection of these claims under
35 U.S.C. § 101 as being directed to non-statutory subject matter in light of
Alice and its progeny.
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§ 103(a) Rejection of Claims 1, 3—6, 8—11, and 13—15
based on Srinivasan and Marks
In support of the obviousness rejection, the Examiner finds the
combination of Srinivasan and Marks teaches or suggests all limitations of
independent claim 1 and, similarly, claims 6 and 11. Final Act. 6—8. For
example, the Examiner finds Srinivasan teaches a method and system for
processing changes to existing purchase orders in an order processing
system, including: (1) “executing an executable orchestration process that
orchestrates an order”; (2) “receiving a change request while the executable
orchestration process is being executed, wherein the change request
comprises a new order that references the order and further comprises one or
more modifications to the order”; and (3) “sending an inquiry to an external
fulfillment system . . . [which] allows a change to the step of executable
orchestration process that is fulfilled by the external fulfillment system.”
Final Act. 7 (citing Srinivasan 3:30-41, 9:36—58, 10:48—11:49, Fig. 1).
The Examiner then relies on Marks for teaching the use of a flag to
place on-hold in the context of making a change to a customer order, as
recited the last three steps of claim 1 to support the conclusion of
obviousness, including, for example:
(4) “determining that a hold flag has been set [in the context
of Srinivasan’s executable orchestration process”;
(5) “putting the step of the executable orchestration process
on hold when it is determined that the hold flag has been set”;
and
(6) “sending an inquiry to [Srinivan’s] fulfillment system,
wherein the inquiry inquires as to whether the fulfillment system
will allow a change.”
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Final Act. 8 (citing Marks. 5:58—6:32, Fig. 1).
Appellants contend the combination of Srinivasan and Marks does not
teach or suggest the last three steps of claim 1. App. Br. 9—13. In particular,
Appellants argue “Srinivasan fails to disclose that order processing computer
120 sends an inquiry to a fulfillment system” and, as such:
“[i]t logically follows that Srinivasan also fails to disclose that
order processing computer 120 determines that a hold flag has
been set for a step of an executable orchestration process, puts
the step of the executable orchestration process on hold when it
is determined that the hold flag has been set, and sends an inquiry
to an external fulfillment system using the executable
orchestration process, where the inquiry inquires as to whether
the external fulfillment system will allow a change to the step of
the executable orchestration process that is fulfilled by the
external fulfillment system.”
App. Br. 11. Appellants further argue “Marks fails to cure the deficiencies
of Srinivasan” and “Marks does not disclose or suggest after receiving the
change request while executing orchestration of the order, checking a hold
flag maintained in storage to indicate whether any steps in orchestrating the
order are on hold, and, if an individual step is on hold, using metadata also
maintained in storage to identity an external fulfillment system that would
be invoked to fulfill the step.” App. Br. 13—14.
We do not find Appellants’ arguments persuasive. Instead, we find
the Examiner provides a complete response to Appellants’ arguments
supported by evidence. Ans. 7—8. As such, we adopt the Examiner’s
findings and explanations. Id. For additional emphasis, we note Srinivasan
expressly teaches “the order processing computer 120 [shown in Figure 1,
sends an inquiry to a fulfillment system,” via manufacturing computer(s)
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130 or sales computers 135, including an order request or changes made to
an order, so that persons at the merchant facility “in receipt of the purchase
order [or changes made to an order] can then proceed to fill the order.”
Srinivasan 1:41—67, 2:49-3:41. According to Srinivasan, a customer can
also “make one or more changes to an existing order within an order
processing system” (Srinivasan 3:30-32) and “a change order result” can be
customized “in specific formats depending upon the identity of the recipient
of the change order result” (Srinivasan 9:25—35). As correctly recognized
by the Examiner, Marks is only relied upon for teaching the use of a flag (or
any indicator) to place on-hold in the context of Srinivasan’s making a
change to a customer order. Ans. 7 (citing Marks 5:58—6:32, Fig. 1).
Obviousness need not seek out precise teachings directed to the
specific subject matter claimed because inferences and creative steps that a
person of ordinary skill in the art would employ can be taken into account.
See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The knowledge
to be taken into account includes knowledge generally available to a person
having ordinary skill in the art. See In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994) (“[A] prior art reference must be ‘considered together with the
knowledge of one of ordinary skill in the pertinent art.”’ (citation omitted)).
A skilled artisan would recognize that any type of a hold flag or indicator as
taught by Marks could be incorporated into Srinivasan’s order processing
system to determine whether an external fulfillment system would allow
changes to be made to a customer order. Final Act. 8. As such, we agree
with the Examiner that the combination of Srinivasan and Marks teaches or
suggests the disputed limitations of Appellants’ claim 1 and similarly, claims
6 and 11.
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For the reasons set forth above, Appellants have not persuaded us of
Examiner error. Accordingly, we sustain the Examiner’s obviousness
rejection of independent claims 1, 6, and 11, and dependent claims 3, 8, and
13, which Appellants do not argue separately. App. Br. 13—19.
With respect to claims 4, 5, 9, 10, 14, and 15, Appellants argue the
combination of Srinivasan and Marks does not teach “a uniform resource
locator for a hold service associated with the hold flag can be automatically
generated.” App. Br. 14—19. We disagree and adopt the Examiner’s
response on pages 8—9 of the Examiner’s Answer.
CONCLUSION
On the record before us, we conclude that the Appellants have not
demonstrated that the Examiner erred in rejecting claims 1, 3—6, 8—11, and
13—15 under 35 U.S.C. § 101, § 103(a) and § 112, second paragraph.
DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1, 3—6,
8—11, and 13—15.
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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