Ex Parte an et al

Patent Trial and Appeal Board

Sep 15, 2016

12690982 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/690,982 0112112010 Ren Jing An
73109 7590 09/19/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CN920080233US 1
8152-0092
CONFIRMATION NO.
8874
EXAMINER
DINH, LYNDA
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
09/19/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REN JING AN, LIU CHAO JUN, MA XI JUN,
HOU XIAO QIANG, YIN RUI, and PING YUAN
Appeal2015-004499
Application 12/690,982
Technology Center 2800
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 5-9, 11-20. We have jurisdiction. 35 U.S.C.
§ 6(b). We AFFIRM and enter a new ground of rejection under 37
C.F.R. § 41.50(b).
1 According to the Appellants, the real party in interest is IBM Corporation.
Appeal Br. 1.
Appeal2015-004499
Application 12/690,982
STATEMENT OF THE CASE
Appellants describe the present invention as relating to service-
orientated architecture (SOA) and, more particularly, a system for
supporting collaborative working of process-oriented and event-based
business process management (BPM) methods in a service-orientated
architecture. Spec. i-f 1. Appellants' description of the present invention is
further explained in conjunction with the analysis below.
Claims 1, 8, and 15, reproduced below, are illustrative of the claimed
subject matter:
1. A system for supporting collaborative working of process-
oriented and event-based business process management methods
in a service-oriented architecture, wherein execution models of a
business process comprise process-oriented execution models
and event-based execution models, the system comprising:
a computer hardware system including:
a process-oriented runtime module configured for
executing the process-oriented execution models at runtime;
an event-based runtime module configured for executing
the event-based execution models at runtime; and
a bridge for implementing an interaction between the
process-oriented runtime module and the event-based runtime
module at runtime.
8. A method for supporting collaborative working of process-
oriented and event-based business process management methods in a
service-oriented architecture, wherein execution models of a business
process comprise process-oriented execution models and event-based
execution models, the method comprising:
executing the process-oriented execution models at runtime;
executing the event-based execution models at runtime; and
implementing an interaction between the process-oriented
execution models and the event-based execution models at runtime.
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15. A computer pro gram product, comprising:
a computer readable storage medium having stored therein
computer usable program code for supporting collaborative working
of process-oriented and event-based business process management
methods in a service-oriented architecture, wherein execution models
of a business process comprise process-oriented execution models and
event-based execution models, the computer readable storage medium
compnsmg:
computer usable program code for executing the process-
oriented execution models at runtime;
computer usable program code for executing the event-
based execution models at runtime; and
computer usable program code for implementing an
interaction between the process-oriented execution models and
the event-based execution models at runtime,
wherein
the computer readable storage medium is not a transitory,
propagating signal per se.
Supp. Appeal Br.2 3, 6-7 (Claims Appendix).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 15-20 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Ans. 2.
Rejection 2. Claims 1, 2, 5-9, 11-16, and 18-20 under 35 U.S.C.
§ 103 as unpatentable over Applicant Admitted Prior Art (hereinafter
2 In this decision, we refer to the Final Office Action mailed April 23, 2014
("Final Act."), the Appeal Brief filed September 23, 2014 ("Appeal Br."),
Supplemental Appeal Brief with revised claims appendix filed November 3,
2014 ("Supp. Appeal Br."), the Examiner's Answer mailed January 5, 2015
("Ans."), and the Reply Brief filed March 5, 2015 ("Reply Br.").
3
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Application 12/690,982
"AAPA") in view of Dumas (U.S. 2007/0135936 Al published June 14,
2007). Id. at 3.
ANALYSIS
Are Appellants' claims patent-ineligible under 35 U.S.C. § 101?
The Examiner concludes that claims 15-20 are not patent eligible
under 35 U.S.C. § 101 because "'computer readable storage medium' can
still [be considered] to include the non-transitory medium and transitory
medium such as signal carrier wave ... which is not statutory because it is
not limited to statutory subject matter." Final Act. 2. Rather than
exclusively relying on the Examiner's reasoning, we assess all of the claims
pursuant to the analysis below. For the reasons explained below, we reject
claims 1, 2, 5-9, 11-203 because they are not directed to statutory subject
matter under 35 U.S.C. § 101 and the Supreme Court's holding in Alice
Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). Because we expand
the § 101 rejection to additional claims and include additional reasoning, we
designate this rejection as a new ground.
For claimed subject matter to be patent eligible, it must fall into one of
four statutory classes set forth in 35 U.S.C. § 101: a process, a machine, a
manufacture, or a composition of matter. Claims 1 and 15 and their
dependent claims are directed to machines (including, for example, "a
computer hardware system" in claim 1 and "a computer readable storage
3 We do not reject claims 3--4 and 10 because Appellants have not sought
review of an adverse decision of the Examiner respect to those claims. 35
U.S.C. § 6. If the claims are further prosecuted, the Examiner may wish to
consider the patent eligibility of claims 3--4 and 10 pursuant to 35 U.S.C. §
101.
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Application 12/690,982
medium" in claim 15). Claim 8 and its dependent claims do not appear to
require a machine under a broadest reasonable construction but could
perhaps be directed to a process.
The subject matter eligibility analysis does not end here, however,
because the Supreme Court has set forth three exceptions of subject matter
ineligible for patent protection: "laws of nature, physical phenomena, and
abstract ideas." Bilski v. Kappas, 561 U.S. 593, 601 (2010) (internal
quotations and citation omitted). The Supreme Court has held that a claim
falls "outside § 101 where ( 1) it is directed to a patent-ineligible concept,
i.e., a law of nature, natural phenomenon, or abstract idea, and (2), if so, the
particular elements of the claim, considered both individually and as an
ordered combination, do not add enough to transform the nature of the claim
into a patent-eligible application." Elec. Power Group, LLC v. Alstrom S.A.,
No. 2015-1778, 2016 WL 4073318, *2 (Fed. Cir. Aug. 1, 2016) (quoting
Alice, 134 S. Ct. at 2355) (internal quotes omitted).
The patents at issue in Alice claimed "a method of exchanging
financial obligations between two parties using a third-party intermediary to
mitigate settlement risk." Alice, 134 S. Ct. at 2356. Like the method of
hedging risk in Bilski, 561 U.S. at 609-which the Court deemed "a method
of organizing human activity"-Alice' s "concept of intermediated
settlement" was held to be "'a fundamental economic practice long prevalent
in our system of commerce."' Alice, 134 S. Ct. at 2356. Similarly, the
Court found that "[t]he use of a third-party intermediary ... is also a
building block of the modem economy." Id. "Thus," the Court held,
"intermediated settlement ... is an 'abstract idea' beyond the scope of
§ 101." Id.
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As the first step of our analysis, we must determine if the claims at
issue are directed to a patent-ineligible concept, such as an abstract idea. See
Alice, 134 S. Ct. at 2355. "[I]t is important at the outset to identify and
define whatever fundamental concept appears wrapped up in the claim so
that the subsequent analytical steps can proceed on a consistent footing."
CLS Bank Int'! v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1282 (Fed. Cir.
2013) (plurality opinion). Here, claims 1 and 15 are directed to a method of
supporting the collaborative working of process-oriented and event-based
business process management methods. Spec. ,-r 10. In both claims,
modules execute/implement event-based execution models and process-
orientated execution models at runtime. Id. at ,-r 10.
The Specification provides little guidance as to what it means to
execute/implement event-based execution models and process-orientated
models. One example is provided, however. The first part of the example is
illustrated with Figure 5, reproduced below:
l<'ig5
Figure 5 "illustrates a process-driven BPM [business process management]
model starting from a purchaser deciding to purchase a certain product to a
warehouse employee delivering the product." Spec. ,-r 44. The Specification
states that blocks 520, 525, and 530 are process models. Id. at ,-r 45 ("the
process models of Blocks 520, 525, 530"). Thus, the actions of "Validate
order" 520, "Confirm order" 525, and "Approve?" 530 are "process
models."
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The Specification further explains that the process models can be
marked and then transformed into event-based models. Id. at i-f 46. Figure 6,
reproduced below, illustrates the same process as Figure 5 (i.e., the process
of a purchaser buying a product) after blocks 520, 525, and 530 are
transformed into event-based models:
Fig.6
According to the Specification, Figure 6 illustrates "a transformed BPM
[business process management] model according to an embodiment of the
present invention, wherein the various parts of the BPM model are deployed
into the process-oriented or event-based runtime environments respectively."
Id. at i-f 4 7. The bridge 3 50 receives Event 1 (manager approval of the order)
to the event-based execution model (i.e., to the person or system in charge of
validating the order) and sends Event 2 (approval of the order after
validation and confirmation) back to the process-based execution model
(i.e., to the person or system in charge of generating a request for delivering
product). Id.
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The Specification provides little guidance as to why, for example, one
would transform "Validate order" 520 into an event-based model but leave
"Approve?" 515 as a process model, but it does state that it is practical to
mark a process model for transformation "in conjunction with both
automatic and manual manners." Id. at ,-r 33. In other words, a computer
could decide to transform a model or a person could manually decide to
change a model.
Given this disclosure and the recitations of each of Appellants'
claims, we determine that independent claims 1, 8, and 15 are directed to an
abstract idea: executing processes that have been divided into process-
oriented and event-based models and implementing interaction between the
models. The models are disembodied concepts (they could be, it appears,
models representing nearly any imaginable action) that are not tied to any
specific algorithm or specialized computer. See Spec. ,-r 55-57 (broadly
explaining suitable computers and suggesting the suitability of "a general
purpose computer"). The claims, much like those deemed patent ineligible
in Bilski and in Alice, are directed to an abstract "method of organizing
human activity." Bilski, 130 S. Ct. at 3240.
The dependent claims add only additional abstract concepts. In
particular:
Claims 2 and 16 add the abstract concept of performing requirement
analysis and modeling on process requirements and
transforming process-oriented models into event-based models;
Claims 5, 11, and 18 add the abstract concept of designing models
based on business processes;
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Claims 6, 12, and 19 add the abstract concept of monitoring modules
executing the models and obtaining feedback;
Claims 7, 13, and 2 0 add the abstract concept of improving models
based on feedback;
Claim 9 adds the abstract concepts of performing requirement analysis
and modeling, generating models based in part on the analysis,
and transforming models;
Claim 14 adds the abstract concepts of correlating interaction data
between models and transforming interaction data; and
Claim 17 adds the abstract concept of marking and transforming
process models.
Thus, we determine that the claims at issue are directed to abstract ideas
under Alice.
Next, proceeding to the second step in the Alice analysis, we look for
additional elements in claims 1, 2, 5-9, and 11-20 that "transform the nature
of the claim" into a patent-eligible application of an abstract idea. That is,
we determine whether the claims include an "inventive concept," i.e., an
element or combination of elements sufficient to ensure that the patent in
practice amounts to significantly more than a patent on the abstract idea
itself. Alice, 134 S. Ct. at 2357. The relevant inquiry here is whether
"additional substantive limitations ... narrow, confine, or otherwise tie
down the claim so that, in practical terms, it does not cover the full abstract
idea itself." Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (internal quotations and citation
omitted). The Court in Alice cautioned that merely limiting the use of
abstract idea "to a particular technological environment" or implementing
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Application 12/690,982
the abstract idea on a "wholly generic computer" is not sutlicient as an
additional feature to provide "practical assurance that the process is more
than a drafting effort designed to monopolize the [abstract idea] itself."
Alice, 134 S. Ct. at 2358 (citations omitted).
Here, none of the claims (1, 2, 5-9, and 11-20) add an inventive
concept to the abstract idea identified above. Rather, the claims additionally
recite generic computer equipment such as a "computer hardware system"
(claim 1 ), "a computer readable storage medium" (claim 15), and "computer
usable program code" (claim 15). Claim 8 and claims depending from it
recite no computer at all. The generic computer system recitations of claims
1 and 15 do not limit the claims sufficiently to make the claims subject
matter eligible and do not add concrete ties to make the claims less abstract.
The claims here-much like the claims deemed patent ineligible by our
reviewing court in Electric Power Group, LLC-focus "not on such an
improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools." Elec. Power Group, 2016 WL 4073318
at *5; compare with Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339
(Fed. Cir. 2016) (holding that claims at issue were patent eligible where
"directed to a specific implementation of a solution to a problem in the
software arts"). The claims are not narrowly directed to application of
particular rules for achieving an improved technological result. Compare
with McRO, Inc. v. Bandai Namco Games Am. Inc., No. 2015-1080, slip op.
at 24--27 (Fed. Cir. Sept. 13, 2016) (holding that claims directed to a
"specific asserted improvement in computer animation" were patent eligible
where claim used "limited rules in a process specifically designed to achieve
an improved technological result in conventional industry practice").
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Accordingly, we affirm the Examiner's rejection of claims 15-20 as
patent ineligible under 35 U.S.C. § 101 for the reasons explained above. We
add a new rejection of claims 1, 2, 5-9, and 11-14 as patent ineligible under
35 U.S.C. § 101. So Appellants may have a full opportunity to respond, we
designate both our affirmance and new rejection as new grounds of rejection
under 37 C.F.R. § 41.50(b).
Did the Examiner err by rejecting claims 1, 2, 5-9, 11-16, and 18-20
under 35 U.S.C. § 103?
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After having
considered the evidence presented in this Appeal and each of Appellants'
contentions, we are not persuaded that Appellants identify reversible error,
and we affirm the Examiner's§ 103 rejections for the reasons expressed in
the Final Office Action and the Answer. We add the following primarily for
emphasis.
The Examiner rejects claims 1, 2, 5-9, 11-16, and 18-20 as obvious
over the AAPA in view of Dumas. Final Act. 3. Appellants do not
separately argue claims 2, 5-9, 11-16, or 18-20. Appeal Br. 11. We
therefore limit our discussion to claim 1. Claims 2, 5-9, 11-16, or 18-20
stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Appellants argue that the Examiner does not identify distinct process-
orientated runtime modules and event-based runtime modules in Dumas.
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Appeal Br. 11-12. The Examiner's rejection, however, is based on the
combination of AAP A and Dumas, and the Examiner relies upon AAP A as
teaching the process-orientated runtime module. Final Act. 3. Appellants'
argument does not identify Examiner error because it attacks the references
individually where the rejection is based on a combination of references. Cf
In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Appellants also argue that the event-based model of Dumas is not
executed "at runtime" as required by claim 1. Appeal Br. 14. The
Examiner, however, correctly finds that Dumas teaches an event-based
model executing at runtime. Final Act. 4. Appellants specification does not
define runtime in a manner so limited that it would exclude Dumas' use of
the event-based model "in a runtime environment." Dumas i-f 50 ("the
system 100 allows for translation of the process model 104 of the composite
application 112 into an event-based model(s) for use in a runtime
environment").
Appellants argue that, based on the teachings of Dumas, both the
process model and the event-based model cannot exist at runtime because
Dumas teaches that "the process model is transformed into an event-based
model." Appeal Br. 16 (quoting Dumas i-f 62); see also Reply Br. 4--6. The
Examiner's rejection, however, is based upon combining AAP A and Dumas,
and Appellants do not persuasively dispute that the combination is proper.
Moreover, Appellants' argument appears to be based on the
assumption that claim 1 requires simultaneous execution of a process-
orientated execution model and an event-based execution model at runtime.
This, however, is not correct. For example, in Figure 6 of the Specification,
Generate order 505 will not happen at the same time as Confirm order 525.
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Yet both events happen during "runtime" (the time between the start of
Generate order 505 and the end of Generate response 540). Also, during
runtime, there is interaction between process-orientated execution models
and event-based execution models. Thus, execution of both process-
orientated execution models as taught by the AAPA and event-based
execution models as taught by Dumas would both occur during runtime (the
from the start of the first action in the overall process to the end of the last
action in the overall process).
Moreover, Appellants do not persuasively dispute the Examiner's
finding that Dumas teaches, for example "data transfer/sharing associated
with reactions to event occurrences .... " Final Act. 4; see also Dumas
i-fi-135-89 (referring to, for example at i136, "coordination middleware that is
operable to implement such event-based coordination models"). The
Examiner also persuasively explains the finding that "data sharing" as
explaining in Dumas is an interaction. Ans. 19-20. The data
transfer/sharing/coordination of Dumas is no different than what is described
in Appellants' Specification (Spec. i1 4 7), and it would have been obvious to
apply this coordination in the context of the AAP A/Dumas combination.
Doing so would have been no more than predictable use of a prior art
element according to its established function. KSR Int 'l. Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007).
The Examiner has thus established a prima facie case of obviousness,
and Appellants provide no persuasive argument, for example, as to why it
would have been beyond the skill of an ordinary artisan or non-obvious to
have information concerning approval of an order be transferred to an entity
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validating an order and confirmation approval to go back to the entity
generating a request for delivering product. See Spec. Fig. 6.
We therefore sustain the Examiner's rejection of claims 1, 2, 5-9, 11-
16, and 18-20 under 35 U.S.C. § 103.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 2, 5-9,
11-20 is AFFIRMED. We designate our affirmance of the Examiner's
rejection of claims 15-20 as patent ineligible under 35 U.S.C. § 101 as a
new ground under 37 C.F.R. § 41.50(b). We also add a new rejection of
claims 1, 2, 5-9, 11-14 as patent ineligible under 35 U.S.C. § 101 pursuant
to 37 C.F.R. § 41.50(b).
Regarding the affirmed rejections that are not designated as a new
ground (rejection of claims 1, 2, 5-9, 11-16, and 18-20 under 35 U.S.C.
§ 103), 37 C.F.R. § 41.52(a)(l) provides "Appellant may file a single request
for rehearing within two months of the date of the original decision of the
Board."
With regard to rejection of claims 1, 2, 5-9, and 11-20 under 35
U.S.C. § 101, 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
3 7 C.F.R. § 41. 50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
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Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
Should Appellant elect to prosecute further before the Examiner
pursuant to 3 7 C.F.R. § 41. 50(b )( 1 ), in order to preserve the right to seek
review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejections
(claims 1, 2, 5-9, 11-16, and 18-20 under 35 U.S.C. § 103), the effective
date of the affirmance is deferred until conclusion of the prosecution before
the Examiner unless, as a mere incident to the limited prosecution, the
affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
AFFIRMED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
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