Ex Parte ADDALA et al

Patent Trial and Appeal Board

Jul 10, 2017

12718585 (P.T.A.B. Jul. 10, 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.
12/718,585 03/05/2010 Raju ADDALA T9049-19581US01 5169
74739 7590 07/12/2017
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
07/12/2017 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, LEAH REED,
ZEESHAN BUTT, SRINIVAS PAGADALA,
CLEMENS UTSCHIG, KHANDERAO KAND,
and SAGAR BOYAPATI
Appeal 2016-001829
Application 12/718,5851
Technology Center 3600
Before BRUCE R. WINSOR, MICHAEL J. ENGLE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 6—12, 14, 15, 17, 18, and 20-30, which are all of the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to “order management systems to receive,
process and fulfill customer orders.” Spec. 12. The application specifically
relates to receiving “a change request” to an existing order. Spec. Abstract.
1 According to Appellants, the real party in interest is Oracle International
Corp. App. Br. 3.
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Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A non-transitory computer-readable medium having
instructions stored thereon, when executed by a processor, cause
the processor to orchestrate an order, the orchestrating
comprising:
executing an original executable orchestration process in
a regular mode, wherein the original executable orchestration
process comprises one or more steps that orchestrate an order;
wherein executing the original executable orchestration
process in the regular mode further comprises executing one or
more steps of the original executable orchestration process;
receiving a change request while the original 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;
stopping the original executable orchestration process;
creating a new executable orchestration process that
references the original executable orchestration process; and
executing the new executable orchestration process in a
change mode, wherein the new executable orchestration process
comprises one or more steps that orchestrate the new order;
wherein executing the new executable orchestration
process in the change mode further comprises automatically
adjusting one or more steps of the original executable
orchestration process that have been executed; and
wherein the automatically adjusting the one or more steps
of the original executable orchestration process that have been
executed further comprises invoking one or more compensating
services that are defined and associated with the one or more
steps of the original executable orchestration process as part of
a process definition of the new executable orchestration process.
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Rejections
Claims 1, 3, 6—12, 14, 15, 17, 18, and 20-30 stand rejected under
35 U.S.C. § 101 as being directed to ineligible subject matter. Final Act. 3.
Claims 1, 3, 6—9, 11, 12, 14, 15, 17, and 26—28 stand rejected under
35 U.S.C. § 102(b) as anticipated by Athavale et al. (US 6,539,386 Bl; Mar.
25, 2003). Final Act. 5.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as obvious over
Athavale and Alexander (US 2002/0178014 Al; Nov. 28, 2002). Ans. 2.2
Claims 18—25, 29, and 30 stand rejected under 35 U.S.C. § 103(a) as
obvious over Athavale and Gerrits et al. (US 2005/0102192 Al; May 12,
2005). Ans. 2.
ISSUES
1. Did the Examiner err in concluding claim 1 is directed to
ineligible subject matter under 35 U.S.C. § 101?
2. Did the Examiner err in finding Athavale discloses
the automatically adjusting the one or more steps of the original
executable orchestration process that have been executed further
comprises invoking one or more compensating services that are
defined and associated with the one or more steps of the original
executable orchestration process as part of a process definition
of the new executable orchestration process,
as recited in claim 1 ?
2 The non-final office action (dated August 1, 2014) included rejections
under §§ 101 (pp. 3—4), 102 (pp. 5—11), and 103 (pp. 12—21). Although the
final office action (dated Jan. 7, 2015) did not expressly repeat the full
rejections under § 103, both Appellants and the Examiner acknowledged that
the § 103 rejections were maintained. See App. Br. 2; Ans. 2; Final Act. 13.
Thus, Appellants also appeal the § 103 rejections. App. Br. 15—29.
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3. Did the Examiner err in finding Athavale discloses “checking to
see if a change is allowed for the original executable orchestration process,”
as recited in claim 8?
4. Did the Examiner err in finding Athavale and Gerrits teach or
suggest “when the change request only applies to the original line executable
orchestration process of the one or more original line executable
orchestration processes, only the new line executable orchestration process
is executed in the change mode,” as recited in claim 21?
ANALYSIS
Patentable Subject Matter (§ 101)
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The Supreme Court, however, has “long held that
this provision contains an important implicit exception” that “[ljaws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
A) Step One — Whether the Claims Are Directed to an Abstract Idea
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014).
A court must be cognizant that “all inventions at some level embody, use,
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reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas” {Mayo, 566 U.S. at 71), and “describing the claims at... a high level
of abstraction and untethered from the language of the claims all but ensures
that the exceptions to § 101 swallow the rule.” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “the claims are
considered in their entirety to ascertain whether their character as a whole is
directed to excluded subject matter.” Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
The Examiner concludes “these claims are directed to processing and
fulfilling customer orders,” which is “considered to be an abstract idea
inasmuch as such activity is ... a fundamental economic practice.” Ans. 3.
Appellants argue the Examiner “has 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. 32. Appellants further contend the claims are “not
directed to an abstract idea” because they are instead “directed to a specific
application of orchestrating an order within a distributed order orchestration
system (which is a specialized computer system) and automatically adjusting
steps of an executable orchestration process that is orchestrating the order
when a change request (i.e., a request to change the order) is received.” Id.
at 31 (emphasis added).
We are not persuaded by Appellants’ arguments. “Issues of patent-
eligible subject matter are questions of law and are reviewed without
deference.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1369 (Fed. Cir. 2011). “[T]he decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
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seen.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016).
Here, we agree with the Examiner that processing and fulfilling
customer orders, including processing and fulfilling changes to an order, are
“a fundamental economic practice long prevalent in our system of
commerce.” Alice, 134 S. Ct. at 2356 (quoting Bilski v. Kappos, 561 U.S.
593, 611 (2010)). If anything, processing and fulfilling customer orders is
even more basic than the “risk hedging” and “intermediated settlement” at
issue in Bilski and Alice. 134 S. Ct. at 2356; 561 U.S. at 611.
In Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (Fed.
Cir. 2017), the Federal Circuit looked to the “background portion of the
specification” as demonstrating that “processing an application for financing
a purchase” was a fundamental economic practice. Here, the “Background”
section of the Specification provides similar guidance in conceding that
“order management systems” were known and “implemented by a number
of industries.” Spec. 12. The Background section also explains “a request
to modify the order” was known and could be dealt with by “manual work to
make the proper adjustments to the ongoing fulfillment process in order to
reflect the modifications in the order.” Spec. 1 5. Thus, Appellants seek to
automate a known manual process. Yet in Credit Acceptance, the Federal
Circuit held “mere automation of manual processes using generic computers
does not constitute a patentable improvement in computer technology.” 859
F.3d 1044. The same is true here. Appellants’ arguments to the contrary,
without more, are not persuasive of Examiner error.
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B) Step Two — Whether the Claims Amount to Significantly More
In the second step, 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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78). The
Supreme Court has “described step two of this analysis as a 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. (quotation omitted).
Although Appellants argue “the claims recite improvements to the
functioning of a specific-purpose computer” (App. Br. 33), we agree with
the Examiner (Ans. 4—5) that the Specification expressly states “[processor
914 may be any type of general or specific purpose processor.” Spec. 1139.
Appellants again argue “[t]he ability to automatically adjust steps of
executable orchestration processes that are currently executing in response to
a change order request improves the functionality of the specific-purpose
computer in handling change order requests.” App. Br. 34. The Federal
Circuit, however, has held that “merely configuring generic computers in
order to supplant and enhance an otherwise abstract manual process is
precisely the sort of invention that the Alice Court deemed ineligible for
patenting.” Credit Acceptance, 859 F.3d 1044 (quotations omitted).
Appellants also argue “the claimed solution is necessarily rooted in
computer technology” (App. Br. 35) and the claims “solve an Internet-
centric problem.” Reply Br. 8. Yet other than automating a manual process,
Appellants have not explained how the claimed invention could not be
performed as a mental process or with a pen and a pad, such as a warehouse
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worker manually following a standard operating procedure to deal with a
change request. We agree with the Examiner that any improvement in the
invention is to “a business solution, not a technical solution.” Ans. 5.
We further agree with the Examiner that many of the specific
components discussed by Appellants such as “layers” are “not recited in the
claimed invention.” Ans. 5.
We also are not persuaded by Appellants’ argument that the claims
“do not preempt all ways of processing and fulfilling customer orders.”
App. Br. 35. “While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Id.
Accordingly, we sustain the Examiner’s rejection of claim 1 under
§ 101, and claims 3, 6—12, 14, 15, 17, 18, and 20-30, which Appellants
argue are patentable for similar reasons. See App. Br. 36; 37 C.F.R.
§ 41.37(c)(l)(iv).
Anticipation (§102)
A) Claims 1, 3, 6, 7, 9, 11, 12, 14, 15, 17, and 26—28
Claim 1 recites “automatically adjusting the one or more steps of the
original executable orchestration process that have been executed.” Claim 1
further recites that this automatically adjusting “comprises invoking one or
more compensating services that are defined and associated with the one or
more steps of the original executable orchestration process as part of a
process definition of the new executable orchestration process.”
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The Examiner finds Athavale discloses “invoking compensation
services in the form of a credit check and resubmitting failed or incomplete
transactions.” Ans. 7 (citing Athavale 16:8—20).
Appellants contend that such actions in Athavale “do[] not adjust a
step of a failed or incomplete transaction.” App. Br. 21.
We are not persuaded by Appellants’ argument. The Specification of
the present application defines the claimed “compensating service”: “A
compensation pattern comprises one or more services that are invoked in the
event of a change request for adjusting the step of the executable process.
These services are defined in this application as ‘compensating services.’”
Spec. 1211. The Specification also provides “many examples” of
compensating patterns, including compensating services. For example, “a
cancel/re-perform compensation pattern (also identified as a redo
compensation pattern) may be provided. The cancel/re-perform
compensation pattern can include ... a re-perform service capable of re­
performing the step of the executable process.” Id. 1212. In particular, “a
re-perform service ... is capable of re-performing the original step of the
executable process with a current set of data,” i.e., after updates from the
change request. Id. 1213.
Athavale discloses such compensating services. For example:
the change order engine 44 invokes any additional procedures
that need to be invoked as appropriate depending on what fields
have been changed in the current order (step 314). For example,
changes to the quantity of ordered items in the change order
request may require that the change order engine 44 call credit
check and configuration packages. The change order janitor
module functions to release expired holds and resubmits failed
or incomplete transactions.
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Athavale 16:8—16. Thus, even though a credit check may have been run
based on the original order, Athavale discloses running an adjusted credit
check if required by the changes. Such an adjusted credit check is adjusting
a step of the original process and comprises a compensating service, just like
the “re-perform” compensating service discussed above. Because the credit
check was run as part of the original process, the credit check also was
“defined and associated with” a step in the original process. The same is
true for resubmitting failed or incomplete transactions. Thus, Appellants
have not identified any error in the Examiner finding this limitation met.
Accordingly, we sustain the Examiner’s rejection of claim 1 under
§ 102, and claims 3, 6, 7, 9, 11, 12, 14, 15, 17, and 26—28, which Appellants
argue are patentable for similar reasons. See App. Br. 21—29; 37 C.F.R.
§ 41.37(c)(l)(iv).
B) Claim 8
Dependent claim 8 further recites “checking to see if a change is
allowed for the original executable orchestration process.”
Appellants argue “Athavale describes that the evaluator 60 checks to
see whether a change is allowed for the original order, rather than whether a
change is allowed for ordering application 42.” App. Br. 23. We agree with
the Examiner, however, that “the features upon which applicant relies (i.e.,
an executable orchestration process being an application) are not recited in
the rejected claim.” Ans. 8.
Accordingly, we sustain the rejection of claim 8 under § 102.
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Obviousness (§103)
A) Claim 10
Appellants contend that dependent claim 10 “is patentable for the
same reasons that claim 1 is patentable” (App. Br. 23) and that Alexander
“fail[s] to cure the deficiencies of Athavale.” App. Br. 19—20. We are not
persuaded Athavale is deficient for the reasons discussed above.
Accordingly, we sustain the rejection of claim 10 under § 103.
B) Claim 18—20, 22, 24, 29, and 30
Appellants contend that claims 18—20, 22, 24, 29, and 30 are
patentable for the same reasons as claim 1 (App. Br. 25—29) and that Gerrits
“fail[s] to cure the deficiencies of Athavale.” App. Br. 19-20. We are not
persuaded Athavale is deficient for the reasons discussed above.
Accordingly, we sustain the Examiner’s rejection of claims 18—20, 22,
24, 29, and 30 under § 103.
C) Claims 21, 23, and 25
Dependent claim 21 recites “when the change request only applies to
the original line executable orchestration process of the one or more original
line executable orchestration processes, only the new line executable
orchestration process is executed in the change mode.” Claims 23 and 25
recite commensurate limitations.
Appellants contend “Athavale fails to disclose or suggest that the
change order engine 44 determines whether a change request applies to an
order or an order line.” App. Br. 26.
We agree with the Examiner, however, that “[n]on-obviousness
cannot be established by attacking references individually where the
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rejection is based upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner finds
“Gerrits teaches an original line executable process[]” and states the
Examiner “is relying on the combination of Athavale in view of Gerrits to
teach an original line executable orchestration process and a new executable
line orchestration process.” Ans. 9 (citing Gerrits 1 83); see also Non-Final
Act. 17 (citing Gerrits 1 83 as teaching the “original line executable process”
in claim 18, from which claim 21 depends). Thus, Appellants have not
addressed the Examiner’s proposed combination that includes the teachings
of Gerrits.
Accordingly, we sustain the Examiner’s rejection of claims 21, 23,
and 25 under § 103.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
(A) claims 1, 3, 6—12, 14, 15, 17, 18, and 20-30 under § 101; (B) claims 1,
3, 6—9, 11, 12, 14, 15, 17, and 26—28 under § 102; and (C) claims 10, 18—25,
29, and 30 under § 103.
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.
§ 41.50(f).
AFFIRMED
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