Ex Parte Angel et al

Patent Trial and Appeal Board

Dec 20, 2018

13080632 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/080,632 04/05/2011
75158 7590 12/25/2018
Verint Systems, Inc.
Meunier Carlin & Curfman, LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
FIRST NAMED INVENTOR
Mark Angel
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.
10171-257US2 2205
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
laaronson@mcciplaw.com
KCarroll@mcciplaw.com
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK ANGEL, ROB ARSENAULT, KANNAN CHELLAPP A,
MAX COPPERMAN, KENDALL HERRICK, RANDALL MCREE, and
HECTOR TORRES
Appeal2017-010306
Application 13/080,632
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A.FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant(s) seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1-13. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
Appeal2017-010306
Application 13/080,632
BACKGROUND
Appellants' invention is directed to business process modeling and
more particularly to workflow composition for business process modeling.
Spec. 1
Claim 1 is illustrative:
1. A user interface workflow composition method
compnsmg:
defining a form of different fields, at least one of the fields in
the form referencing a business object providing access to data
in an external data source that is different than at least one other
data source for a correspondingly different one of the fields;
loading into a composition module executing in memory
by a processor of a computer from a data store coupled to the
computer, a set of references to both human steps of a
workflow, each of the human steps of the workflow referencing
a corresponding user interface, and also automated steps of a
workflow, each of the human steps and automated steps of the
workflow individually comprising contextual data;
generating a human step for the defined form and loading
the generated human step for the defined form into the
composition module;
visually placing individual graphical elements each
representative of a selected one of the human steps and
automated steps into a canvas rendered by the composition
module and also visually placing into the canvas an individual
graphical element representative of the generated human step
for the defined form;
defining transitions between different ones of the human
steps and automated steps represented by corresponding ones of
the graphical elements in the canvas by creating visual
connections between the different ones of the graphical
elements in the canvas, the human steps and automated steps
represented by the graphical elements in the canvas, and the
transitions defined therebetween setting forth a user interface
workflow; and,
generating computer readable instructions for the user
interface workflow.
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Application 13/080,632
Appellant(s) appeal the following rejection:
Claims 1-13 are rejected under 35 U.S.C. 101 because the claims fails
to satisfy § 1 01 requirements
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 217 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-79 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. 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."); 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."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--595 (1978)
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("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 573 U.S. at 221-22; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 573
U.S. at 217. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. at 217-18.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. Cy her Source
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
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Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Comma 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016).
Claims that recite an improvement to a particular computer
technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( determining claims not abstract because they "focused on a specific
asserted improvement in computer anhnation").
ANALYSIS
The Examiner determines that the claims are directed to a series of
steps for setting up parameters of a graphical user interface. Specifically,
the Examiner determines that the claims are directed to receiving data,
saving data, and generating the graphical displayed workflow, which is a
method of organizing human activities and/or using categories to organize,
store and transmit data and/or using a computer to run and display data.
Final Act. 2.
The Examiner finds that the claims do not recite additional elements
that are sufficient to amount to significantly more than the judicial
exception, because the additional elements or combination of elements are
recitations of generic computer structure. The Examiner also finds that the
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claims do not recite an improvement to another technology or technical
field, improvement to the functioning of the computer itself. Final Act. 3.
We agree with the Examiner's determination that the claims are
directed to an abstract idea. The claims are directed to the collection,
analysis, and display of data. We also agree with the Examiner's finding
that the claims do not include significantly more than the abstract idea.
We are not persuaded of error on the part of the Examiner by
Appellants argument that the claims are directed to improved workflow
design tools, in particular, a method, system and computer program for the
visual composition of flow and end user interactions with different steps of a
workflow and are not mere notation of setting up generic parameters on a
computer and therefore are not directed to an abstract idea. Br. 9-10, 12.
We agree with the Examiner that the Appellants have not claimed
specific elements for actually creating an improved workflow design tool,
but rather the claims recite steps for predefining tasks/transition data and
manipulating visual data using well-known computer based tools. Ans. 3.
Claim 1, for example, recites loading data from a data store. The data
is a set of references to both representative human steps of a workflow and
automated steps of the workflow in which each step references a
corresponding user interface. The human steps and automated steps
comprise data. The data is analyzed by generating a human step and loading
the human step into the composition module and visually placing the human
steps and automated steps into the canvas of an individual graphical clement
representative of the generated human step. The data is further analyzed by
defining transitions between different ones of the human steps and
automated steps and the transitions setting forth a user interface workflow.
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Finally, the data is analyzed by generating computer readable instructions
for the user interface workflow. These steps are clearly directed to the
abstract idea of collecting, analyzing, and displaying data, and are well-
known computer functions.
Appellants argue that the claimed subject matter is directed to a
specific improvement to the way computers operate. Specifically,
Appellants argue that the claims' graphical user interface method imparts
specific functionality to a system directed to a specific implementation of a
solution to a problem in the software arts. Appellant's argument does not
apprise us of error, because Appellant appears to conflate the
conventionality of the steps being performed by a processor and the
conventionality of the computer functions required to implement the steps.
In addition, Appellants do not explain what improvements to the operation
of the computer are referred to.
We are also not persuaded of error on the part of the Examiner by
Appellants' argument that the claims provide a novel and non-obvious
method, system and computer program product for user interface workflow
composition. Br. 10-11.
To the extent Appellants maintain that the limitations of claim l
necessarily amount to "significantly more" than an abstract idea because the
claimed apparatus is allegedly patentable over the prior art, Appellants
misapprehend the controlling precedent. Although the second step in the
Alice/itiayo framework is termed a search for an "inventive concept," the
analvsis is not an evaluation of noveltv or non-obviousness. but rather, a
d d / '
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
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upon the [ineligible concept] itself."' Alice, 573 U.S. at 217-18. A novel
and nonobvious claim directed to a purely abstract idea is, nonetheless,
patent-ineligible. See Mayo, 566 U.S. at 90.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that substantial evidence does not support a finding
that the claims are directed to a series of steps for setting up parameters of a
graphical user interface. Appellants argue that the claims are not an attempt
to patent the concept of setting up parameters on a computer for a GUI. In
making this argument, Appellants rely on an opinion of another panel of the
Patent Trial and Appeal Board in another case. However, since this opinion
was non-precedential, it is not binding on this panel.
In addition, consideration of evidence in making a determination
under the first step of the Alice framework has merit. See Apple, Inc. v.
Ameranth, Inc., 842 F.2d 1229 (Fed. Cir. 2016). However, there is no
requirement that examiners must provide evidentiary support in every case
before a conclusion can be made that a claim is directed to an abstract idea.
Evidence may be helpful in ce1iain situations where, for instance, facts are in
dispute. But it is not always necessmy. It is not necessary in this case
because there is no factual dispute that the claims are directed to the
collection, analysis, and dispfay of data.
\Ve are not persuaded of enor on the part of the Examiner by
Appellants' argument that the steps recited in the claims are not steps that
were being performed in conventional industry practice, and that there is no
evidence that the functions of the computer are well-understood and
conventional activities known in the employment and social network art.
Specifically, Appellants argue that the steps of loading into a composition
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module executing in memory by a processor of a computer from a data store
coupled to the computer, a set of references to both representative human
steps of a work.flow, each of the human steps of the workflow referencing a
corresponding user interface were not conventional activities known in the
employment and social network art. Br. 13-14.
The difficulty with Appellants' argument is that the features of claim 1
that AppeHants maintain are not well-understood, routine, and conventional
are part of the abstract idea of collecting, analyzing and displaying data; they
are not additional elements to be considered when determining whether the
additional elements or a combination of elements amounts to significantly
more than the judicial exception. See BSG Tech. LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) ("It has been clear since Alice that a
claimed invention's use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention 'significantly
more' than that ineligible concept.").
In view of the forgoing, we will sustain the Examiner's rejection of
claim 1. We will also sustain the rejection as it is directed to claims 2-5
because the Appellants have not argued the separate eligibility of these
claims.
Appellants argue that claims 6-13 recite a non-conventional and non-
generic arrangement of known conventional pieces similar to the claims in
BASCOM Global Internet Services, Inv. v. AT& T Mobility LLC, 827 F.3d
1341, 1348 (Fed. Cir. 2016). This argument is not persuasive because
Appellants do not explain what non-generic arrangement of conventional
pieces are recited in claims 6-13. Therefore, we sustain the Examiner's
rejection of these claims as well.
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DECISION
We affirm the Examiner's 35 U.S.C. § 101 rejection of claims 1-13.
TIME PERIOD
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.
§ 1.136(a)(l) (2009).
ORDER
AFFIRMED
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