Ex Parte BISHOP et al

Patent Trials and Appeals Board

May 9, 2019

13936588 - (D) (P.T.A.B. May. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/936,588 07/08/2013 Paul Hugh Wilkie BISHOP
74739 7590 05/13/2019
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
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.
2011-001 OUS02 3598
EXAMINER
DUNHAM, JASON B
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
05/13/2019 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PAUL HUGH WILKIE BISHOP,
AHMAD NASER ABDELRAHMAN, GLENN DEXTER SW ANSON,
DEEP ANKAR DEY, and TODD SPRAGGINS
Appeal2017-010414
Application 13/936,588
Technology Center 3600
Before ERIC S. FRAHM, JOHN A. EV ANS, and JASON M. REPKO,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final rejection of Claims 1-20. Appeal Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE. 2
1 Appellants identify the real party in interest as Oracle International
Corporation. Appeal Br. 3.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed May 12, 2017, "Appeal Br."), the Reply Brief
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Application 13/936,588
STATEMENT OF THE CASE
The claims relate to a system that uses metadata to provide a technical
catalogue. See Abstract.
INVENTION
Claims 1, 11, and 16 are independent. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced
below with some formatting added:
1. A non-transitory computer-readable medium having
instructions stored thereon that, when executed by a
processor, cause the processor to optimize a technical
catalog, the optimizing comprising:
defining one or more items comprising metadata
associated with a fulfillment solution, wherein each item
is used by the fulfillment solution;
selecting a process logic at runtime from a set of
selectable process logic;
generating a transformation sequence using the
selected process logic;
generating dynamically a runtime process flow
comprising a customized output based on the
transformation sequence and the metadata, wherein the
transformation sequence is customized based on the
metadata; and
storing the one or more items within the technical
catalog, wherein the technical catalog comprises a data
store that stores metadata, and wherein the technical
catalog defines a structure of the one or more items;
(filed August 1, 2017, "Reply Br."), the Examiner's Answer (mailed July 12,
20176, "Ans."), the Final Action (mailed December 14, 2016, "Final Act."),
and the Specification (filed July 8, 2013, "Spec.") for their respective details.
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wherein the runtime process flow further
comprises selecting the fulfillment solution to use at least
one item of the one or more items and generate the
fulfillment solution using the at least one item.
Christofort et al.
"Christofort"
Maes
Abdelrahman et al.
"Abdelrahman"
References and Rejections
US 2002/0129016 Al Sept. 12, 2002
US 2009/0193433 Al July 30, 2009
US 2014-0012708 Al Jan. 9, 2014
1. Claims 1-20 stand provisionally rejected under the judicial
ground of non-statutory double patenting. Final Act. 11.
2. Claims 1-20 stand rejected under 35 USC§ 101 as directed to
non-statutory subject matter. Final Act. 2-9, and 12.
3. Claims 1-20 stand rejected under pre-AIA 35 USC§ 103(a) as
unpatentable over Maes and Christofort. Final Act. 13-23.
ANALYSIS
We have reviewed the rejections of Claims 1-20 in light of
Appellants' arguments that the Examiner erred. We consider Appellants'
arguments as they are presented in the Appeal Brief, pages 5-28.
CLAIMS 1-20: PROVISIONAL OBVIOUSNESS-TYPE DOUBLE PATENTING.
Claims 1-20 stand provisionally rejected on the ground of
nonstatutory double patenting over claims 1-20 of co-pending Application
No. 13/936,584 to Abdelrahman. Final Act. 11. We decline to reach the
merits. As of this writing, the co-pending application has not issued as a
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patent and therefore, the issue is not ripe for adjudication. See Ex parte
Moncla, Appeal 2009-006448 slip op. at 3 (BP AI June 22, 2010)
(precedential) (Where the co-pending, reference application has not issued, it
is "premature for the original Board panel to address the Examiner's
provisional rejection of the claims.").
CLAIMS 1-20: INELIGIBLE SUBJECT MATTER
Appellants argue all claims as a group in view of the limitations of
Claim 11. Appeal Br. 7. Therefore, we decide the appeal of the 35 U.S.C.
§ 101 rejections with reference to claim 11, and refer to the rejected claims
collectively herein as "the claims." See 37 C.F.R. § 41.37(c)(l)(iv); see also
In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Preemption
Appellants contend the claims do not preempt an abstract idea. App.
Br. 18 ("The ultimate inquiry is whether the claim preempts an abstract
idea.").
While preemption may denote patent ineligibility, its absence does not
demonstrate patent eligibility. See Fair Warning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-
ineligible concept, preemption concerns "are fully addressed and made
moot" by an analysis under the Mayo/Alice framework. Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We conduct
such an analysis below.
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A. 35 U.S.C. § 101
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. § 101.3
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. Mayo Collaborative Services v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012) (citing Diamond v. Diehr, 450 U.S. 175,
185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
( citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." 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."); see also 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.").
Concepts determined to be abstract ideas, and thus patent ineligible,
3 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the patent-eligibility
inquiry under 35 U.S.C. § 101.
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include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; see also Bilski, 561 U.S. at
611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95
(1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as "molding rubber products" (Diehr, 450 U.S. at
191 ); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber,
smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15
How.) 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at
69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held "a claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula." Diehr, 450 U.S. at 187, 191 ("We view respondents' claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula."). Having said that, the Supreme
Court also indicated that a claim "seeking patent protection for that formula
in the abstract ... is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment." Id. at 191 ( citing
Benson and Flook), 187 ("It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.").
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
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mathematical formulas or relationships. Alice, 573 U.S. at 217-21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 ("[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an '"inventive
concept"' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
B. USPTO Revised Guidance4
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101.
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain
4 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (hereinafter "Revised Guidance," or "Rev. Guid.")
(https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf).
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groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activity such as a
fundamental economic practice, or mental processes); 5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for
Patent Examining Procedure ("MPEP") §§ 2106.0S(a)-(c),
(e)-(h)). 6
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that are not "well-understood, routine,
conventional" in the field (see MPEP § 2106.0S(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial
exception. 7
See Revised Guidance.
Step 2A(i)-Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
5 Referred to as "Revised Step 2A, Prong l" in the Revised Guidance
(hereinafter "Step 2A(i)").
6 Referred to as "Revised Step 2A, Prong 2" in the Revised Guidance
(hereinafter "Step 2A(ii)").
7 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical
relationships, mathematical formulas or equations,
mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales
activities or behaviors; business relations); managing
personal behavior or relationships or interactions between
people (including social activities, teaching, and following
rules or instructions); and
( c) Mental processes-concepts performed in the
human mind (including an observation, evaluation,
judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in rare situations identified in the Revised Guidance. 8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
8 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Guidance,
Section III.C.
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requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) -Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP,9
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(±) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
9 See MPEP § 2106.05(a)-(c), (e)-(h). Citations to the MPEP herein refer
to revision [R-08.2017].
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Environment
If the recited judicial exception is integrated into a practical application as
determined under one or more of the MPEP sections cited above, then the
claim is not directed to the judicial exception, and the patent-eligibility
inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B - "Inventive Concept" or "Significantly More"
Under our precedent, it is possible that a claim that does not
"integrate" a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. 10 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (US PTO Step 2B) because the
additional elements recited in the claims provided "significantly more" than
the recited judicial exception (e.g., because the additional elements were
unconventional in combination). 11 Therefore, if a claim has been determined
to be directed to a judicial exception under Revised Step 2A, we must
evaluate the additional elements individually and in combination under Step
2B to determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself). 12
10 See, e.g., Diehr, 450 U.S. at 187.
11 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325.
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Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Revised Guidance,
III.B. 13
In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
13 In accordance with existing Step 2B guidance, an Examiner's finding that
an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.0S(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, "Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter
"Berkheimer Memo").
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specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s) ....
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.0S(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element( s ).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element( s)
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s)
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
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analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
ANALYSIS
Step 1
Claim 1 is a method (process) claim by reciting one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. 14 Therefore, the
issue before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined the claimed method is "directed to an
abstract idea, namely-designing a fulfillment solution utilizing a technical
catalog." Final Act. 3. The Examiner finds"[ d]esigning a fulfillment
solution utilizing a technical catalog is an abstract idea of itself having no
concrete or tangible form." Id. Moreover, the Examiner finds the claims
amount to a customer and a provider entering into a specified agreement to
perform certain services, which is a contractual relationship, a concept that
was held to be an abstract idea. Id. (citing buySAFE, Inc. v. Google, Inc.,
14 Claim 1 may appear to be an article of manufacture claim by virtue of
reciting a "non-transitory computer-readable medium having instructions
stored thereon" in the preamble. However, we find Claim 1 to be a method
claim because the stored instruction cause a computer to execute the steps of
the method set forth in the body of the claim.
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(Fed. Cir. 2014). The Examiner additionally finds the recited claim
elements represent functions performable by a human and that performance
of a series of steps that people, aware of each step, can and regularly do
perform is not patent-eligible under 35 U.S.C. § 101. Id. (citing Smartgene
Inc., v. Advanced Biological Labs., SA, 555 F. App'x. 950 (Fed. Circ. 2014)
and Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Circ.
2011)).
In contrast to the Examiner's finding that the claims are directed to the
abstract idea of "designing a fulfillment solution utilizing a technical
catalog," Appellants contend the claims are directed to a specific fulfillment
solution that uses metadata and a transformation sequence to dynamically
generate a runtime process. App. Br. 5. Moreover, appellants argue the
transformation sequence is customized based on the metadata. Id.
We review the claims, de nova, to determine whether they comply
with 101. "Whether a claim is drawn to patent-eligible subject matter is an
issue of law that we review de nova." SiRF Tech., Inc. v. Int'! Trade
Common, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
Claim 1 recites a "non-transitory computer-readable medium having
instructions stored thereon that, when executed by a processor, cause the
processor to optimize a technical catalog, the optimizing comprising:
Claim 1 Revised Guidance p. 52
[a] 15 defining one or more items ( c) Mental processes-concepts
comprising metadata associated performed in the human mind
with a fulfillment solution, wherein (including an observation,
15 Step designators, e.g., "[a]" were added to facilitate discussion.
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each item is used by the fulfillment
solution;
[b] selecting a process logic at
runtime from a set of selectable
process logic;
[ c] generating a transformation
sequence using the selected process
logic;
[ d] generating dynamically a
runtime process flow comprising a
customized output based on the
transformation sequence and the
metadata, wherein the
transformation sequence is
customized based on the metadata;
and
[ e] storing the one or more items
within the technical catalog,
wherein the technical catalog
comprises a data store that stores
metadata, and wherein the technical
catalog defines a structure of the one
or more items;
[ fJ wherein the runtime process flow
further comprises selecting the
fulfillment solution to use at least
one item of the one or more items
and generate the fulfillment solution
using the at least one item.
16
evaluation, judgment, opinion).
"Runtime" recitation ties method to
a machine.
( c) Mental processes-concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion).
"Runtime" recitation ties method to
a machine.
Flook, 437 U.S. at 590 (step of
adjusting an alarm limit based on
the output of a mathematical
formula was ''postsolution
activity'' and did not render method
patent eligible).
"Runtime" recitation ties method to
a machine.
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Thus, under Step 2A(i), we find limitations [a] and [ c] recite steps which the
Revised Guidance categorizes within the "mental processes" grouping of
abstract ideas.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "practical application" Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application. The Revised Guidance is "designed to more accurately and
consistently identify claims that recite a practical application of a judicial
exception [] and thus are not 'directed to' a judicial exception." Revised
Guidance, 5 3.
For the reasons which follow, we conclude that Appellants' claims in
fact do integrate the judicial exception into a practical application.
MPEP § 2106.0S(a) "Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field."
"In determining patent eligibility, examiners should consider whether
the claim 'purport(s) to improve the functioning of the computer itself'" or
"any other technology or technical field." MPEP § 2106.0S(a).
With respect to technological improvements, Appellants contend:
Similarly [to Enfzsh], the claimed embodiments improve the
functioning of a computer. For example, as previously
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explained, the claims recite using metadata and a
transformation sequence to modify and customize an output
solution, which results in avoiding the need to "add entirely
new solution stacks to address new domains."
App. Br 14 (citing Spec., ,i 4).
The Examiner finds the disclosure upon which Applicant relies:
"'add[ing] entirely new solution stacks to address new domains' is only
recited once in the background section of the [S]pecification[], there is no
further disclosure as to how the invention accomplishes this or what the
process of adding 'new solution stacks' actually entails." Ans. 9.
The Answer mischaracterizes the Specification. Appellants disclose:
Thus, in one embodiment, a service design and order fulfillment
system can utilize one or more adaptable provider functions,
where the one or more provider functions can serve as
components of an overall fulfillment solution. Thus, rather than
continually refactoring code to support more product offerings,
services, technologies, and devices, core functionality can be
provided out-of-the-box and adapted to variant requirements
through a simple and reliable process of defining fulfillment
patterns. Additional variants can be accommodated by reusing
existing patterns or by adding new patterns. This can eliminate
service design complexity, can eliminate a need to build
different "stacks" for different services/technologies, and can
localize the impact of any change to an implementation of one
or more provider function fulfillment patterns.
Spec., ,i 277. Thus, we find the Specification discloses a method whereby
the claims provide an improvement to an order fulfillment technology.
Appellants characterize their claims as improving the functioning of
the computer: "the claims recite using metadata and a transformation
sequence to modify and customize an output solution, which results in
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avoiding the need to 'add entirely new solution stacks to address new
domains."' Reply Br. 7 ( citing Spec. ,i 4). Alternatively, Appellants
characterize the claims as improving order fulfillment technology. Id.
( citing Spec. ,i,i 5-6) ("The present application solves these technical issues
whereby instead of generating an entire new software application it 'defines
a technical catalog that includes items including metadata used by a
fulfillment solution' where 'service design is about populating a technical
catalog with entities and metadata used to enable service order
fulfillment."'). The claims recite a practical application where an additional
element reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field. 16
Although limitations [a], [ c], and [ fJ recite mental process abstract
ideas, the "runtime" limitations [b] and [ d] tie the process to a machine and,
we find, the method as a whole improves a technological process.
Therefore, we find the claims are not "directed to" an abstract idea and recite
eligible subject matter under § 101.
CLAIMS 1-20: OBVIOUSNESS OVER MAES AND CHRISTFORT.
Appellants contend the Examiner's Answer presents a new rationale
of rejection using Christfort. Reply Br. 10. Appellants argue that in the
previous Office Actions the Examiner equated Christfort' s "middleware
16 The Revised Guidance also finds integration into a practical application
where the judicial exception is used in medical treatment or to transform an
article to a different state. Revised Guidance, 55. Such considerations are
not before us.
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Application 13/936,588
transformer 112" with the claimed "generating a transformation sequence,"
but the Answer equates Christfort's "middleware transformer 112" with the
claimed "dynamically generated runtime process flow." Id., 10-11 ( citing
Ans. 13. ). We agree with Appellants. However, Appellants have chosen to
maintain the Appeal. We, therefore, determine the merits of Appellant's
response to the Answer. 17
Generating dynamically a runtime process flow.
The Examiner finds Maes generally teaches the claimed invention,
except Maes fails to teach, inter alia, "generating dynamically a runtime
process flow comprising a customized output based on the transformation
sequence and the metadata, wherein the transformation sequence is
customized based on the metadata" Final Act. 14.
The Examiner equates the claimed "transformation sequence" to the
"generated generic output" of Christfort, and equates the claimed
"dynamically generated runtime process flow" to the "middleware
transformer" of Christfort. Ans. 13. The Examiner finds the claimed
"selecting a process logic at runtime from a set of selectable process logic,"
is taught by Christfort. The Examiner finds: "The user selects an
17 An Examiner may make a new ground of rejection on appeal which
designation triggers procedural options for the appellant. One such option is
simply maintaining the appeal. The Director of the United States Patent and
Trademark Office, not the Board, supervises examination and examiners. If
an examiner has procedurally erred, the remedy lies exclusively in
petitioning the Director for supervisory review. The Director has not
delegated this supervisory authority to the board. Because Appellants have
maintained the appeal, we are obliged to decide the appeal on the record
before us.
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Application 13/936,588
application, such as a map service provider. For example, the client, or end
user, may be a mobile phone that is requesting driving directions from a map
service provider disclosure." Ans. 13. ( citing Christfort, ,i 70). 18
Appellants contend Christfort' s "middleware transformer" does not
select an application, as found by the Examiner. Reply Br. 11. Rather,
Appellants argue Christfort discloses the middleware transformer selects a
particular output variation. Id. ( quoting Christfort, ,i 70) ("[T]he application
developer designed the application to produce generic output that includes
several output variations .... [M]iddleware transformer 112 then selects a
particular output variation or option based on the parameters or conditions of
the service request."). We agree with Appellants.
Christfort discloses: "the application developer designs the
application to produce generic output that includes several output variations
... for presenting or displaying the output on the client device." Christfort,
,i 70. Christfort further discloses: the"[ m ]iddleware transformer 112 then
selects a particular output variation or option based on the parameters or
conditions of the service request." Id. Thus, the middleware transformer
does not select an application, as found by the Examiner. Rather, the
middleware transformer selects from among the output of an application.
The Examiner finds: "[t]he user selects an application, such as a map
service provider. Ans. 13. ( citing Christfort, ,i 71) ("For example, the client,
or end user, may be a mobile phone that is requesting driving directions
18 This disclosure should be Christfort, ,i 71.
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from a map service provider disclosure."). Appellants contend the
Examiner's findings mischaracterize the disclosure of Christfort. We agree.
Christfort discloses a user does not select an application, but rather
may request driving directions from a map service provider. Christfort, ,-J 71
("For example, the client, or end user, may be a mobile phone that is
requesting driving directions from a map service provider."). Christfort
discloses the generic output of the "application used by the map service
provider" may include several variations of the requested directions. See
Christfort, ,-J 72. Christfort discloses that where the phone used to send the
request lacks graphic capabilities, "[ m ]iddleware transformer 112 then
selects the output segment19 with text only from the generic output and
generates customized output that contains the text only segment." Id.
Contrary to the Examiner's finding, neither the user, nor the user's mobile
phone, selects an application.
DECISION
The rejection of Claims 1-20 under 35 U.S.C. § 101 is reversed.
The rejection of Claims 1-20 under 35 U.S.C. § 103 is reversed.
REVERSED
19 An "output variation" is referred to as an "output segment." See
Christfort, ,-J 70.
22