Ex Parte Bou-Ghannam et al

Patent Trial and Appeal Board

May 25, 2018

12392328 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/392,328 02/25/2009 Akram Bou-Ghannam
59144 7590 05/25/2018
CAHN & SAMUELS, LLP
1100 17th STREET, NW
SUITE401
WASHINGTON, DC 20036
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.
YOR920080542US 1 8678
EXAMINER
FISHER, PAUL R
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
05/25/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKRAM BOU-GHANNAM, STEVEN GARFINKLE, JOHN
WILLIAMS MILLER, and JAMSHID ABDOLLAHI VA YGHAN
Appeal 2016-004138
Application 12/392,328
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1, 3-10, 12, 14--18, and 20-29.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
BACKGROUND
Appellants' invention is directed to systems, methods, and computer
program products for creating and using service dependency graphs to
automate the development and deployment of service oriented applications.
Spec. para. 1
Appeal2016-004138
Application 12/392,328
Claim 1 is illustrative:
1. A method, including:
identifying services in a domain;
identifying domain concepts within said domain, wherein
said domain concepts are input and output of said services;
creating a network of said services including metadata of
said services and relationship data of said services, said
relationship data of said services including relationships of said
services to one another and relationships of said services to said
domain concepts;
creating a domain ontology including said domain
concepts and relationship data of said domain concepts, said
relationship data of said domain concepts including
relationships of said domain concepts to one another and
relationships of said domain concepts to said services, said
domain ontology including computer-based resources that
represent agreed domain semantics;
receiving a request from a user for a service that satisfies
constraints based on said domain concepts;
selecting at least two services within said network that
satisfy said constraints to create selected services based on said
relationship data of said domain concepts in said domain
ontology;
combining said selected services with a processor to
create a combined service; and
notifying said user of said combined service.
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Application 12/392,328
The Examiner relies on the following prior art references as evidence
of unpatentability:
Reeder
Bodin
Hofmann
us 5,852,812
US 2007 /0043758 Al
US 7,665,063 Bl
Dec. 22, 1998
Feb.22,2007
Feb. 16,2010
(filed May 26, 2004)
The following rejections are before us on appeal:
Claims 1, 3-10, 12, 14--18, and 20-29 are rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
Claims 12, 14--17, and 28 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicants regard as the
invention.
Claims 1, 3-10, 12, 14--18, and 20-29 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to non-statutory subject
matter.
Claims 1, 3---6, 9, 10, 12, 14, 15, 17, 18, and 20-23 are rejected under
35 U.S.C. § I02(e) as being anticipated by Hofmann.
Claims 7, 8, 24, and 25 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hofmann in view of Bodin.
Claims 16 and 26-29 are rejected under pre-AlA 35 U.S.C. § I03(a)
as being unpatentable over Hofmann in view of Reeder.
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Application 12/392,328
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. 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, 134 S. Ct.
2347, 2354 (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 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("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--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
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Application 12/392,328
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, 134 S. Ct. at 2357; 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
water-proof 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, 134
S. Ct. at 2355. 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.
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."). Accordingly, the mental
processes recited in claims, e.g., assimilating information, creating a
hypothetical resource, mapping hypothetical and actual resources,
determining a minimum parameter increase and reconciling a parameter
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Application 12/392,328
increase with a scheduling policy, remain unpatentable, even when
automated to reduce the burden on the user of what once could have been
done with pen and paper. Id. at 1375 ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
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!
Commc '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).
However, claims have been held not abstract when the invention
recited in the claim does not use generic computer technology to perform
data collection, analysis, and display and if the claims recite an improvernent
to a particular cornputer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims
not abstract because they "focused on a specific asserted improvement in
computer animation").
35 U.S.C. § 112, sixth paragraph
35 U.S.C. § 112, sixth paragraph is invoked to interpret a claim when
there is a "means-plus-function" limitation recited therein. Under 35 U.S.C.
§ 112, sixth paragraph, the "means-plus-function" limitation must be
"construed to cover the corresponding structure, material, or acts described
in the specification and equivalents thereof." Personalized Media
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Application 12/392,328
Commc 'ns, LLC v. Int'! Trade Comm 'n, 161 F.3d 696, 703 (Fed. Cir. 1998).
If the "means-plus-function" limitation recited in the claim does not have an
adequate supporting disclosure, then the claim fails to particularly point out
and distinctly claim the invention as required under 35 U.S.C. § 112, second
paragraph. See In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994)
("[l]f one employs means-plus-function language in a claim, one must set
forth in the specification an adequate disclosure showing what is meant ....
If an applicant fails to set forth an adequate disclosure, the applicant has in
effect failed to particularly point out and distinctly claim the invention as
required by the second paragraph of section 112.").
In the context of software, the disclosed structure is a general purpose
computer programmed to perform a disclosed algorithm. WMS Gaming, Inc.
v. Int'! Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) ("In a means-
plus-function claim in which the disclosed structure is a computer, or
microprocessor, programmed to carry out an algorithm, the disclosed
structure is not the general purpose computer, but rather the special purpose
computer programmed to perform the disclosed algorithm."). A general
purpose computer alone is insufficient if the specification fails to disclose an
algorithm for performing the claimed function. Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).
Generic terms such as "mechanism," "element," "device," and other
nonce words used in a claim can also be considered as a substitute for the
"means-plus-function" limitation and, as such, may invoke the application of
35 U.S.C. § 112, sixth paragraph because these generic terms or nonce
words "typically do not connote sufficiently definite structure." Williamson
v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (en bane). In
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Ex parte Lakkala, No. 2011-001526 (PTAB rviar. 13, 2013) (expanded
panel) (informative), we concluded that the term "processor" is used as
merely a substitute for the "means-plus-function" limitation and, thus,
invokes the application of§ 112, sixth paragraph. In addition, we a1so
concluded that because the Specification fails to disclose an a1gorHhm for
performing the functions recited in the ''processor" limitation, the claim fails
to describe sufficient corresponding structure as required for a limitation
interpreted under 35 U.S.C. § 112, sixth paragraph, and, as such, is indefinite
under 35 U.S.C. § 112, second paragraph.
The scope of limitations in claims determined to have invoked 35
U.S.C. § 112, sixth paragraph is thusly defined by the respective structures
disclosed in the specification and equivalents of those structures. Aristocrat
Techs. Aust!. Pty Ltd. v. Int'! Game Tech., 521 F.3d 1328, 1331 (Fed. Cir.
2008). Therefore, a determination must be made whether Appellants'
written description contains corresponding structure for the respective
limitations. (Y: id. at ,r 331. In computer-implemented inventions, the
con-esponding structure must include an "algorithm that transforms [a]
general purpose microprocessor to a special purpose computer programmed
to perform the disclosed algorithm." ld at 1338 (citation and internal
quotation marks omitted).
ANALYSIS
Reiections under 35 U.S.C. § 112. first paragraph
The Examiner rejects claims 12, 14--17 and 28 because these claims
recite a processor for combining at least two services but the Specification
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Application 12/392,328
does not include a description of how the computer is programmed to
perform these functions. Fin. Act. 6----7. The Examiner determines the
phrase "processor" is a generic place holder as it is a broad recitation rather
than a specific structural component and, thus, invokes 35 U.S.C. § 112,
sixth paragraph. The Examiner further finds that the written description fails
to clearly link or associate the disclosed structure in the form of an algorithm
to the claimed processor. The Examiner finds that the Specification must
include a disclosure of a specific algorithm which is used to make a general
purpose computer or server able to perforrn the function.
We agree with Appellants that the disclosure in paragraph 32 of the
Specification that a new service is created by combining existing services
whereby an old output of one service is used as the input to another service
to fmm a new service is a disclosure of an algorithm and discloses how the
processor performs the function of combining services. Therefore, we will
not sustain this rejection.
The Examiner also rejects claims 1, 3-10, 12, 14-18 and 2~29 under
35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement. Fin. Act 7. The Appellants do not address this
rejection in their Brief, and, therefore, we summarily affirm this rejection.
Re;ection under 35 U.S.C. § 112, second paragraph
According to the Examiner, because Appellants' Specification does
not disclose sufficient corresponding structure, i.e., an algorithm for
performing the functions recited in the "processor" limitation, claims 12,
14-17, and 28 are indefinite under 35 U.S.C. § 112, second paragraph. We
will not sustain this rejection for the same reasons given above in our
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Application 12/392,328
discussion of the rejection under 35 U.S.C. § 112, first paragraph of claims
12, 14--17 and 28.
Reiection under 35 U.S.C. § 1 OJ
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claimed features are neither routine nor
conventional because the art fails to teach many features of the claimed
invention.
To the extent Appellants argue that the pending claims recite
"significantly more" because the claimed invention is "novel" and "non-
obvious," Appellants misapprehend the controlling precedent. Although the
second step in the Alice/ Mayo framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a 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 upon the [ineligible concept] itself."'
Alice, 134 S. Ct. at 2355. A novel and non-obvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct.
at 1304. See, e.g., S)'nopsys. Inc. v. Afentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016) ('"[A] cfaim for a new abstract idea is still an abstract
idea.'~).
In view of the foregoing1 we wm sustain this rejection as it is directed
to claim L We ,vill also sustain the reiection as it is directed to the
remaining claims subject to this rejection because Appellants do not argue
the separate patent eligibility of these claims.
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Application 12/392,328
Reiection under 35 U.S. C. § 102(e)
We are not persuaded of error on the part of the Examiner by
Appellants' argument that Hofmann does not disclose "combining said
selected services with a processor to create a combined service" as recited in
claim 1.
Analysis of whether a claim is patentable over the prior art under
35 U.S.C. § 102 begins with a determination of the scope of the claim. \Ve
determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skin in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The properly interpreted claim must then be
compared with the prior art.
Appellants' Specification discloses that a new service is created by
combining existing services (200, 300 etc.). The Specification explains that
a service 301 is added whereby the old output of the service 300 is now
input into the service 301. Spec. para. 32. As such, we agree with the
Examiner that, in light of Appellants' Specification, the broadest reasonable
interpretation of "combining said selected services with a processor to create
a combined service" includes the creation of a combined service by taking
the output of a previous service and using it as input for the next service.
We also agree with the Examiner's findings in regard to Hofmann.
More specifically, we agree with the Examiner's response to Appellants'
argument found on page 15 of the Answer, that Figure 4 of Hofmann depicts
combining services, i.e., Rule 1 and Rule 2, to create a combined service.
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Application 12/392,328
In view of the forgoing, we will sustain the rejection as it is directed
to claim 1. We will also sustain the rejection as it is directed to claims 9, 12,
and 18 because the Appellants advance the same arguments regarding the
patentability of these claims as is advanced in regard to the patentability of
claim 1.
We will also sustain the rejection as it is directed to the remaining
claims subject to this rejection because the Appellants do not advance
arguments directed to the separate patentability of these claims other than to
say that the claims are similarly patentable not only because of their
dependency on the independent claims but also because of the additional
features of the invention they recite. The Appellants do not discuss these
additional features. We note that Appellants make no attempt to point out
where the Examiner's findings relative to the presence of those additional
features in the prior art are deficient Such arguments are insufficient to
apprise us of error in the rejection. In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) ("[\V]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the con-esponding elements
were not found in the prior art."). Therefore, we sustain the rejection of the
remaining claims subject to the rejection as well.
Reiections under 35 U.S.C. § 103
We will sustain the 35 U.S.C. § 103 rejections because the Appellants
make the same arguments in response to these rejections as is made in regard
to the 35 U.S.C. § 102(e) rejection.
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DECISION
We do not affirm the Examiner's § 112, first paragraph of claims 12,
14--17 and 28.
We affirm the Examiner's§ 112, first paragraph rejection of claims 1,
3-10, 12, 14--18 and 20-29.
We do not affirm the Examiner's§ 112, second paragraph rejection of
claims 12, 14--17, and 28.
We affirm the Examiner's§ 101 rejection of claims 1, 3-10, 12, 14--
18, and 20-29.
We affirm the Examiner's§ 102(e) rejection of claims 1, 3-6, 9, 10,
12, 14, 15, 17, 18, and 20-23.
We affirm the Examiner's § 103 rejections of claims 7, 8, 16, and 24--
29.
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)(iv) (2009).
ORDER
AFFIRMED
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