Ex Parte Breiter et al

Patent Trial and Appeal Board

Sep 27, 2017

13444293 (P.T.A.B. Sep. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/444,293 04/11/2012 GERD BREITER DE920110017US1_8150-0198 2579
73109 7590 09/29/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
BROCKINGTON III, WILLIAM S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/29/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERD BREITER, MATTHIAS KLOPPMANN, and
THOMAS SPATZIER
Appeal 2016-006346
Application 13/444,293
Technology Center 3600
Before MARC S. HOFF, ELENI MANTIS MERCADER, and
JOHN P. PINKERTON, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006346
Application 13/444,293
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
16—21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The claimed invention is directed to executing a business process
providing a context data object including a payload data structure for storing
a payload data and automatically splitting an annotated context data object
into one or more utility data objects. Responsive to creating a second utility
data object, a pre-processing task can be injected into the business process,
the preprocessing task using a copy of a first mapping to read data from the
predefined data structure instance and store the read data as payload data in
the payload data structure of the first utility data object. Responsive to
creating a third utility object, a post-processing task can be injected into the
business process. The post-processing task can use a copy of the second
mapping to write the payload data of the first utility data object to elements
of a predefined data structure instance. Abstract.
Claim 16, reproduced below, is illustrative of the claimed subject
matter:
16. A system comprising:
a processor configured to initiate executable operations
of a business process using a standard business process engine,
the operations comprising:
providing a context data object annotated with mapping
information, the context data object including a payload data
structure for storing a payload data;
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Application 13/444,293
automatically splitting said annotated context data object
into one or more utility data objects, each utility data object
conforming to a standard data object definition, the one or more
utility data objects including:
a first utility data object comprising the payload data
structure;
a second utility data object when the context data object
is annotated with a first mapping, wherein said second utility
data object comprises a copy of the first mapping;
and
a third utility data object when the context data object is
annotated with a second mapping, wherein said third utility data
object comprises a copy of the second mapping;
responsive to creating the second utility data object,
injecting into a business process a pre-processing task, the pre­
processing task using the copy of the first mapping to read data
from the predefined data structure instance and to store the read
data as payload data in the payload data structure of the first
utility data object; and
responsive to creating the third utility object, injecting
into the business process a post-processing task, the post­
processing task using the copy of the second mapping to write
the payload data of the first utility data object to elements of a
predefined data structure instance.
REJECTION
The Examiner made the following rejection:
Claims 16—21 stand rejected under 35U.S.C§ 101 because the
claimed invention is directed to non-statutory subject matter.
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Application 13/444,293
ISSUE
The pivotal issue is whether the Examiner erred in finding claims 16—
21 are directed to non-statutory subject matter.
ANALYSIS
Appellants argue, inter alia, that the Examiner failed to address the
two distinct injecting operations recited in claim 16 (App. Br. 10).
Appellants explain that the first injection operation injects a pre-processing
task into a business process, and this pre-processing task uses a copy of the
first mapping to read data from the predefined data structure instance and to
store the read data as payload data in the payload data structure of the first
utility data object (Reply Br. 5). The second injection operation injects a
post-processing task into the business process, and the post-processing task
uses a copy of the second mapping to write the payload data of the first
utility data object to elements of a predefined data structure instance. Id.
Appellants further point us to the benefits of such operations as providing
the advantage of allowing
interchanging data with the predefined data structure instance
without having specified the corresponding tasks in the
business process definition in advance. For example, the
process rewriting module may analyze the instructions and/or
payload data being contained in the determined at least one first
task and create the pre-processing and/or [pjost-processing task
in dependence on a result of said analysis.
Reply Br. 6; Spec., para. 43.
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. Alice Corp. Pty. Ltd. v. CLS
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Application 13/444,293
Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). We must first
determine whether the claim 1 is “directed to” a patent-ineligible abstract
idea. See id. at 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. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”); Parker v. Flook, 437 U.S. 584, 594—
595 (1978) (“Respondent’s application simply provides a new and
presumably better method for calculating alarm limit values”).
Examples of patent-ineligible subject matter include fundamental
economic practices {Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611),
mathematical formulas {Flook, 437 U.S. at 594—95) and basic tools of
scientific and technological work {Gottschalkv. Benson, 409 U.S. 63, 69
(1972)).
Appellants’ claim 1 is directed to a computer-implemented process for
executing operations of a business process. With regard to the first step in
Alice, we agree with the Examiner’s finding that the execution of operations
in a business process amount to nothing more than computer implemented
executions to organize, store, and transmit information, which amounts to an
abstract idea. Ans. 3—4\ also see, e.g., Content Extraction & Transmission
LLCv. Wells Fargo Bank Nat. Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(collecting data, recognizing certain data within the collected data set, and
storing the recognized data in memory is “undisputedly well-known”);
Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988, 992
(Fed. Cir. 2014) (“using categories to organize, store, and transmit
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information is well-established”); Elec. Power Grp. LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (“[t]he advance they purport to make is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions”); In re TLI Comm. LLC Patent Litig., 823
F.3d 607, 613 (Fed. Cir. 2016) (“attaching classification data ... to images
for the purpose of storing those images in an organized manner is a well-
established ‘basic concept’ sufficient to fall under Alice step 1”).
Therefore, since claim 1 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 as required by step two of Alice. 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. “[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea ... on a generic computer.” Id. at 2359. We conclude that
they do.
When considering claims purportedly directed to an improvement of
computer functionality, the inquiry becomes “whether the focus of the
claims is on the specific asserted improvement in computer capabilities . . .
or, instead, on a process that qualifies as an ‘abstract idea’ for which
computers are invoked merely as a tool.” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335—36 (Fed. Cir. 2016). In the instant claim 1, the
computer implemented method is not merely used as a tool.
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In Enfish, our reviewing Court determined that the claimed self-
referential model “allows more flexibility in configuring the database . . .
[i]n particular, whereas deployment of a relational database often involves
extensive modeling and configuration of the various tables and relationships
in advance of launching the database ... the self-referential database can be
launched without such tasks and instead configured on-the-fly.” Id. at 1333.
Similar, to Enfish, the claimed injecting operations provide the
advantage of allowing interchanging data with the predefined data structure
instance without having specified the corresponding tasks in the business
process definition in advance. Spec., para. 43. For example, the process
rewriting module may analyze the instructions and/or payload data being
contained in the determined at least one first task and create the pre­
processing and/or post-processing task in dependence on a result of the
analysis. Id.
Accordingly, we do not sustain the Examiner’s rejection of claims lb-
21 as being directed to non-statutory subject matter.
CONCLUSIONS
The Examiner erred in finding claims 16—21 as being directed to non-
statutory subject matter.
DECISION
For the above reasons, the Examiner’s rejection of claims 16—21 is
reversed.
REVERSED
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