Ex Parte Aprin et al

Patent Trial and Appeal Board

Jan 12, 2018

13740005 (P.T.A.B. Jan. 12, 2018)

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.
13/740,005 01/11/2013 Morvarid Aprin GB920120150US1 1080
89553 7590
Law Office of Anthony England
IBM SVL
3112 Windsor Road
Suite A
Austin, TX 78703
EXAMINER
KONERU, SUJAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
a@aengland.com
s @ aengland. com
anthony@maze-england.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MORVARID APRIN, RICKARD U. ENANDER,
MARTIN OLSSON WARN, PEER M. TORNGREN,
LISA F. WALTERFELDT, and JOACHIM C. WILSSON
Appeal 2016-003139
Application 13/740,005
Technology Center 3600
Before ANTON W. FETTING, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’
final decision rejecting claims 8—21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Aug. 17, 2015), Reply Brief (“Reply Br.,” filed Jan. 31,
2016), and Specification (“Spec.,” filed Jan. 11, 2013), and to the
Examiner’s Answer (“Ans.,” mailed Dec. 1, 2015) and Final Office Action
(“Final Act.,” mailed Mar. 17, 2015).
2 According to the Appellants, the real party in interest is International
Business Machines Corporation. Appeal Br. 2.
Appeal 2016-003139
Application 13/740,005
STATEMENT OF THE CASE
The Appellants’ invention relates generally to “a method for a
financial consolidation process.” Spec. 13.
Claims 8 and 15 are the independent claims on appeal. Claim 8
(Appeal Br. App. AA 1) is illustrative of the subject matter on appeal, and is
reproduced below:
8. A system comprising:
at least one computing processor; and
a computer-readable storage media connected to the at
least one computing processor, wherein the computer-readable
storage media has stored thereon a program for a financial
consolidation process controlling the at least one computing
processor, and wherein the at least one computing processor is
operative with the program to execute the program to:
receive user input defining financial consolidation tasks
for business entities, associating the tasks with respective roles
and assigning the roles to persons who are responsible for
completion of tasks associated with their respective roles;
present a graphical user interface providing control
elements and task icons representing the financial consolidation
tasks for the business entities, including presenting a visual
feature of each icon indicating status of each icon's respective
task; and
responsive to receiving a user input from a user control
element show, for a selected task icon, an identification for a
person assigned to the task of the selected task icon.
REJECTIONS
Claims 8—21 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 5.
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Claims 8—21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stephens (US 2008/0235249 Al, pub. Sept. 25, 2008) and
Yankovich (US 2007/0055596 Al, pub. Mar. 8, 2007). Id. at 6.
ANALYSIS
Patent-Ineligible Subject Matter - § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (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. This framework applies to method and apparatus claims. Id.
at 2352, 2360. The first step in that analysis is to “determine whether the
claims at issue are directed to one of those patent-ineligible concepts.” Id. at
2355 (emphasis added) (citing Mayo, 132 S. Ct. at 1296—97). If so, the
second step is to consider the elements of the claims “individually and ‘as an
ordered combination”’ to determine whether the additional elements
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
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(quoting Mayo, 132 S. Ct. at 1297, 1298). 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.
(alteration in original) (quoting Mayo, 132 S. Ct. at 1294). The Court
acknowledged in Mayo, that “all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether the claims
focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea, and
merely invoke generic processes and machinery. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Claims 8—10 and 15—17
Initially, we find unpersuasive the Appellants’ argument that the
Examiner “has not established a prima facie case that the claims are directed
to an abstract idea.” Appeal Br. 14; see also Reply Br. 1—2. In rejecting the
pending claims under § 101, the Examiner analyzes the claims using the
Mayo/Alice two-step framework and clearly articulates the reasons why the
claims are not statutory under § 101. See Final Act. 5; Ans. 3—7.
Specifically, the Examiner looks to the language of the claims and notifies
the Appellants that claims 8—21 are directed to the abstract idea of
“associating tasks with roles and identifying the person assigned to the task.”
Final Act. 5 (citing Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)); see also Ans. 3. The
Examiner further finds that the additional elements of the claims do not
transform the abstract idea into a patent eligible invention, because they
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do not include additional elements that are sufficient to amount
to significantly more than the judicial exception because the
elements such as the user inputs and graphic user interface
limitations require nothing more than a generic computer to
perform routine and conventional computer functions and other
potential use of hardware or computers is for mere data gathering
or data transforming or extra solution activity.
Final Act. 5. The Examiner further determines that the “technology (the
computers) in the claim are not doing anything substantial or significant
beyond applying the abstract idea and linking the abstract idea to the context
of a computer and it is conventional for that to happen via user interface
features.” Ans. 4—5.
Further, we are aware of no controlling authority that requires the
Office to provide “evidence,” and particularly “substantial evidence,”
(Appeal Br. 12—14) to support a determination that a claim is directed to an
abstract idea. See Alice, 134 S. Ct. at 2355—57. Nor, contrary to the
Appellants’ assertion (Appeal Br. 13—14), did this Board hold, in Ex parte
Renald Poisson, Appeal 2012-011084 (PTAB Feb. 27, 2015), that there is
any such requirement when, as here, the claims are directed to a fundamental
economic practice.3
Instead, the Federal Circuit has held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
3 In any event, we would not be bound by this non-precedential decision.
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Here we find that the Examiner has set forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of § 132 as to why the claims are patent-ineligible. Id.',
see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section
132 “is violated when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection”). The Appellants do not contend that the Examiner’s § 101
rejection was not understood. Instead, the Appellants’ understanding of the
rejection is clearly manifested by the Appellants’ responses as set forth in
the Briefs.
Independent claim 8 is directed to a system comprising a computing
processor and a storage media to cause the processor to execute a program
for receiving user input defining and associating tasks and assigning roles,
presenting an interface with control elements and task icons, and responsive
to input, showing data of an identification of a person. Appeal Br., App.
AA 1. Independent claim 15 is similarly directed to a program product
comprising a storage medium and code causing a processor to perform the
functions recited in claim 8. Id. at 4. Dependent claims 9, 10, 16, and 17
recite limitations adding the functions of showing a selected set of icons and
performing a responsive task. Id. at 2, 5. The Specification provides that
the invention relates generally to “a financial consolidation process”
(Spec. 1,13) and more specifically to “providing a consolidation process
overview, where status of the process is in focus” {id. at 5,16). In that
context, we determine that the claims are directed to receiving, organizing,
and displaying financial consolidation data, without any inventive
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technology,4 an idea of itself. In this manner, the claims are similar to those
our reviewing court found to be directed to an abstract idea in Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)
(collecting and analyzing information and displaying results of the analysis),
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017) (collecting, displaying, and manipulating data), West View
Research, LLV c. Audi AG, 685 Fed. Appx. 923, 926 (Fed. Cir. 2017)
(“collecting data queries, analyzing the data query, retrieving and processing
the information constituting a response to the initial data query, and
generating a visual or audio response to the initial data query”), Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir.
2015) (customizing web page content), and Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (generating menus with certain
features).
We are unpersuaded by the Appellants argument that
the claims are directed to patent eligible subject matter since they
recite additional and inventive limitations that act to narrow,
confine and otherwise tie down the claims such that the claims
do not preempt performing a financial consolidation process,
associating tasks with roles and identifying the person assigned
to the task, or organizing human activity, in general.
Appeal Br. 15; see also id. at 16—17 and Reply Br. 2—3. As we set forth
above, preemption is not a separate test, but is inherently addressed within
thq Alice framework. SeeAriosa Diagnostics, Inc. v. Sequenom, Inc., 788
4 We note that “[a]n abstract idea can generally be described at different
levels of abstraction. . . . The Board’s slight revision of its abstract idea
analysis does not impact the patentability analysis.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016).
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F.3d 1371, 1379 (Fed. Cir. 2015). “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Id. Moreover, the question is whether the
claims as a whole “focus on a specific means or method that improves the
relevant technology” or are “directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.” McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016). Here, the claims are directed to receiving, organizing, and displaying
financial consolidation data without focus on a specific means or method
that improves the relevant technology.
We further find unpersuasive the Appellants’ arguments that the
claims amount to significantly more than the abstract idea. See Appeal
Br. 18-27; see also Reply Br. 3—6. We agree with Examiner that the steps
and functions of the claims, considered individually and as an ordered
combination, do not improve another technology or technical field, do not
improve the functioning of the computer itself, and require no more than a
generic computer to perform generic computer functions. See Ans. 4—5.
The “concrete” steps (Appeal Br. 18; see also id. at 19—21) of receiving
input and presenting icons and data are all directed to and further elaborate
the abstract idea of receiving, organizing, and displaying financial
consolidation data and do not address a technological problem and are not
technological improvements. Similarly, the Appellants’ argument that the
claim limitations “are not merely routine and conventional computer
functions or data gathering, data transforming or extra solution activity, at
least partly because they specifically tie the computer functions to aspects of
the practical application” {id. at 22—23). Any general purpose computer
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available at the time the application was filed would have been able to
perform the functions of the claims. The Specification supports this view in
describing generic computer and data processing systems comprising
conventional personal or network computers, communication lines and
networks, and other hardware. Spec. 5—9, Tflf 7—20, Figs. 1—3. There is no
further specification of particular technology for performing the steps. See
Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed.
Cir. 2016); see also Enfish, 822 F.3d. at 1336 (focusing on whether the claim
is “an improvement to [the] computer functionality itself, not on economic
or other tasks for which a computer is used in its ordinary capacity”).
Further, simply reciting “computer interface aspects” (Appeal Br. 23)
is not enough to transform the abstract idea into a patent eligible invention.
The Appellants do not adequately show how the claimed steps of receiving
data and displaying corresponding data via an interface are technically done
such that they are not routine, conventional functions of a generic computer,
nor do the Appellants provide evidence why the steps are not routine and
conventional functions of a generic computer. See Intellectual Ventures,
792 F.3d at 1370 (“Rather, the ‘interactive interface’ simply describes a
generic web server with attendant software, tasked with providing web pages
to and communicating with the user’s computer.”). The introduction of a
computer to implement an abstract idea is not a patentable application of the
abstract idea. Alice, 134 S. Ct. at 2357—58.
The Appellants’ reliance on Ultramercial, LLC v. Hulu, LLC, 657
F.3d 1323 (Fed.Cir. 2011) (Appeal Br. 17—23, Reply Br. 6—8) is misplaced.
The Supreme Court vacated judgement of the case and remanded to the
Federal Circuit in light of Mayo. WildTangent, Inc. v. Ultramercial, LLC,
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132 S.Ct. 2431 (2012). On remand, the Federal Circuit applied the Alice
framework and held that the claims were directed to the abstract idea of
“using advertising as an exchange or currency,” with no inventive concept to
transform the abstract idea into patent-eligible subject matter. Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715-717 (Fed. Cir. 2014). Thus, to the
extent the Appellants argue that the claims are similar to those of
Ultramercial, the Appellants are essentially admitting that the claims are
directed to a patent-ineligible abstract idea.
We disagree with the Appellants’ assertion that because “the claims
recite aspects of a machine interface and its use that improve performance of
a computer system for user access to relevant information and for user
action,” they are akin to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014). Appeal Br. 24; see also Reply Br. 6—7. In DDR
Holdings, 773 F.3d 1245, 1257, the Federal Circuit determined that the
claims addressed the problem of retaining website visitors who, if adhering
to the routine, conventional functioning of Internet hyperlink protocol,
would be transported instantly away from a host’s website after clicking on
an advertisement and activating a hyperlink. The Federal Circuit, thus, held
that the claims were directed to statutory subject matter because they claim a
solution “necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.” Id. The
court cautioned that “not all claims purporting to address Internet-centric
challenges are eligible for patent,” and noted that in the claims at issue in
DDR Holdings, the computer network was not “operating in its normal,
expected manner.” Id. at 1258.
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In contrast, there is no indication here that the claimed invention
claims a solution “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
The Appellants cite portions of the Specification that provide that the
invention provides “a quick and easy way to take necessary actions to
complete a financial consolidation,” “enables production of consolidated
financial statements at the end of each reporting period . . . including] a
consolidation process overview,” “improves the user’s ability to easily filter
using a substantial number of criteria,” “minimize data presented,” “expose
submission progress,” “provides users ways to monitor status and to take
necessary actions,” and “offer[s] shortcuts to open relevant dialogs.” Appeal
Br. 24—25 (quoting Spec. 5, 10, 22, 23, H 5, 6, 21, 54—57, 59). But the
Appellants do not identify what specific problems “necessarily rooted in
computer technology” are being addressed. The Specification provides that
“current consolidation products and methods do not provide a
comprehensive overview combined with a quick and easy way to take
necessary actions to complete a financial consolidation” and that the process
is “tedious and time consuming.” Spec. 5,1 5. However, these prior art
problems of comprehensiveness, ease, and time are not technical problems,
but business problems that existed prior to the Internet. Although the field
of the invention involves computers and networks, the problems are not one
unique to networks or computer. Further, the networks and computers are
operating in their normal capacities.
Thus, we are not persuaded that the Examiner erred in rejecting
claims 8—10 and 15—17 under 35U.S.C. § 101, and we sustain the
Examiner’s rejection.
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Claims 11—14 and 18—21
We are not persuaded of Examiner error in the rejection of dependent
claims 11—14 and 18—21 under 35U.S.C. § 101. The claims provide further
limitations of showing data of a plurality of filter control elements, each of a
specific type, show only a selected set of data of responsive task icons,
receiving user input and showing data responsive to that input, and show
data of number of business entities and number of tasks. Appeal Br.,
App. AA 2—7. The Appellants present similar arguments for these claims as
for claims 8—10 and 15—17. See Appeal Br. 28—33. For the reasons we are
not persuaded the Examiner erred in the rejection of independent claims 8
and 15, we are similarly not persuaded the Examiner erred in the rejection of
these dependent claims.
Thus, we sustain the Examiner’s rejection of claims 11—14 and 18—21
under 35 U.S.C. § 101.
Obviousness - § 103
We agree with the Appellants’ contention that the Examiner’s
rejection of independent claims 8 and 15 is in error because the combination
of Stephens and Yankovich does not teach or suggest the limitation of
“responsive to receiving a user input from a user control element show, for a
selected task icon, an identification for a person assigned to the task of the
selected task icon,” as recited in both claims. See Appeal Br. 34—36; Reply
Br. 8-9.
The Examiner cites to Stephens’s paragraphs 44 through 51 and
Figure 11 to teach this limitation. Final Act. 7; Ans. 7—8. Specifically, the
Examiner finds that Stephens’s teaching of finding an organization meets the
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limitation because the term “person” is broadly and reasonably construed to
include corporations. See Ans. 7. Conversely, the Appellants argue that the
claims clearly indicate that a “person” as recited is not a corporation because
the claims differentiate a person from a business entity. See Reply Br. 8.
We note that during examination, claims are to be given their broadest
reasonable interpretation consistent with the specification and read in light
of the specification as it would be interpreted by one of ordinary skill in the
art, without reading limitations from the specification into the claims. See In
re Am. Acad. ofSci. Tech Ctr., 367 F'.3d 1359, 1364 (Fed. Cir. 2004) and
CollegeNet, Inc. v. ApplyYourself Inc., 418 F.3d 1225, 1231 (Fed.
Cir. 2005). Here, the Specification does not specifically define a “person.”
However, the Specification does provide for presenting a comprehensive
overview of companies and business entities with corresponding tasks
performed by the companies or an authorized user. Spec. 10,122. A task is
assigned to a particular role for a particular company and can be directed to
the user assigned to that role for the company. Id. at 12,127. A user is
presented details for a task including the name and code of the task, name
and code of the company, local currency for the company, name and
deadline of the submission, role for preforming the task, and physical user
assigned to perform the role at the company and responsible for performing
the task. Id. at 13,128. When a user name button is selected, the program
presents user identifiers besides those task icons to which a person
responsibility has been assigned. Id. at 17,143; see also id. at 19,149.
Dependent claims 11, 12, 18, and 19 differentiate filters for business entities
and persons. See Appeal Br., App. AA 3, 5, 6; see also Reply Br. 8.
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As such, in light of the Specification, we construe the term “person”
as used in the claims as a physical person to whom responsibility, such as for
completing a task, is assigned. Although a corporation can be a “person” for
legal purposes, in light of the Specification, it is clear that a corporation is
not a physical “person” who is responsible, for example, for completing an
assigned task. Thus, we find unsupported the Examiner’s finding that
Stephens teaches the limitation because a corporation is a person.
The Examiner further finds that Stephens teaches the limitation
because “if an organization can be found by name, one of ordinary skill in
the art could also manage to find a person by name too,” and because
Stephens teaches showing a user name for the last user to update the status
such that the system “is capable [of showing] the person could be the person
assigned to the task because it is reasonable that the last person to update
something was the last person assigned to it.” Id. However, the Examiner
does not support the findings with articulated reasoning with rational
underpinning to support a legal conclusion of obviousness. See KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Based on the foregoing, we do not sustain the Examiner’s rejection of
independent claims 8 and 15 under 35 U.S.C. § 103. We also do not sustain
the rejections of dependent claims 9—14 and 16—21, which rely on the same
inadequately supported findings.
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DECISION
The Examiner’s rejection of claims 8—21 under 35 U.S.C. § 101 is
AFFIRMED.
The Examiner’s rejections of claims 8—21 under 35 U.S.C. § 103(a)
are REVERSED.
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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