Ex Parte Bruchlos et al

Patent Trial and Appeal Board

Dec 14, 2017

10572990 (P.T.A.B. Dec. 14, 2017)

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.
10/572,990 02/07/2007 Joachim Bruchlos DE920030057US1 6932
46320 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOACHIM BRUCHLOS, JOACHIM HAGMEIER,
and TIMO KUSSMAUL
Appeal 2016-0045301
Application 10/572,990
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 14, 21, 28, 35—37,
39-43, 45^49, and 51—53. We have jurisdiction to review the case under 35
U.S.C. §§ 134 and 6.
1 The Appellants identify International Business Machines Corp. as the real
party in interest. Appeal Br. 3.
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Application 10/572,990
The invention relates generally to improvements in processing
contract data associated with services to be provided via a network, by
“including contract data specifying a selection of a given service
specification into the request, with which the service is requested.” Spec.
§§ 1.3, 2 (citing original claim 1).
Claim 14 is illustrative:
14. A computer-implemented method for processing contract
data associated with services to be provided via a computer
network in an infrastructure, in which a plurality of binding
contracts representing agreements about conditions for using and
provisioning at least one of web services and web applications
exists between a service provider comprising a server computing
device and a service requestor for services comprising a client
computing device having a respective number of service
specifications, the method comprising the service requestor:
creating said contract data comprising contract selection
parameters for subsequently selecting at least one service
contract out of said plurality of contracts, the at least one service
contract representing an agreement about conditions for using
and provisioning at least one of a web service and a web
application existing between the service provider and the service
requestor;
including said contract data into a request for a service by
encoding said contract data into an endpoint specification of the
request for said service, said service being one of the web service
and the web application;
issuing, via the computer network, said request for said
service containing the endpoint specification, so that at least one
service contract which satisfies the conditions corresponding to
the contract selection parameters can be selected; and
receiving, via the computer network, the service in a
Simple Object Access Protocol (SOAP) response message
according to a selection of the at least one service contract based
upon the contract selection parameters.
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Application 10/572,990
Claims 14, 21, 28, 35—37, 39-43, 45^49, and 51—53 are rejected under
35 U.S.C. § 101 as reciting ineligible subject matter in the form of an
abstract idea.
We AFFIRM.
ANALYSIS
Analysis of the Rejection under 35 U.S.C. §101
As an initial matter, the Appellants argue all pending claims together
as a group, so we select claim 14 as representative. Appeal Br. 8. See 37
C.F.R. §41.37(c)(l)(iv).
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: “[ljaws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLSBankInt’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 2355, 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
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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.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The following method is then used to determine whether what the
claim is “directed to” is an abstract idea:
[T]he decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can
be seen—what prior cases were about, and which way they were
decided. See, e.g., Elec. Power Grp., 830 F.3d at 1353—54. That
is the classic common law methodology for creating law when a
single governing definitional context is not available. See
generally Karl N. Llewellyn, The Common Law Tradition:
Deciding Appeals (1960). This more flexible approach is also
the approach employed by the Supreme Court. See Alice, 134 S.
Ct. at 2355—57. We shall follow that approach here.
Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir.
2016) (footnote omitted).
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, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
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curing rubber, Diamond, 450 U.S. at 182 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 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.
We are not persuaded by the Appellants’ arguments that the claims
are not directed to an abstract idea because, according to the Appellants, the
claims accomplish “the innovative concept of selecting a contract,” and are
“achieved by a significantly narrower and specific technical process” than
making a request for service, “by a substantially complex process, technical
in nature.” Reply Br. 8, 9 (emphasis omitted). According to the Appellants,
the “claim language indicates how the innovative concept is achieved
without foreclosing other ways of solving the problem solved by Appellants'
claims, in reciting a specific series of steps that results in a departure from
the routine and conventional sequence of events.” Reply Br. 9—10 (emphasis
omitted).
Instead, we agree with the Examiner that the claims are directed to
“making a request for service,” which is a method of organizing human
behavior. Answer 3^4.
Independent method claim 14 recites making a “request for a service”
that includes “contract data” parameters, “issuing” the request, and receiving
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the service according to a selection based on the parameters. The claim
recites that the embedded contract data parameters are present “so that at
least one service contract which satisfies the conditions corresponding to the
contract selection parameters can be selected.”
The Specification describes that “contract selection parameters may
refer basically to the content of a contract or to meta data just identifying a
particular contract.” Spec. 11,11. 1—3. The Specification further describes
that contract selection data, as claimed, may be “an Integer serving as
contract identifier.” Spec. 25,11. 6—8 cited in Appeal Br. 3^4. The request,
therefore, may include a number of a contract.
This is analogous to a customer making a request for service under
which a pre-arranged discount is available via a contract, and including
contract identification along with the request for service, which is then
provided by the service provider. This situation is easily understood to
predate the use of computers, because commerce has long utilized discount
contracts for service, requests for service referencing an established
discount, and providing of services under contract. The particular sequence
of making a request, using information in the request to select a contract, and
providing services related to the contract is merely a sequence that acts to
organize human behavior. The claim merely implements an old practice in a
new environment, in a manner essentially no different from the method used
by humans alone before the advent of computers.
Therefore, we agree with the Examiner that the claims recite an
abstract idea.
Moving to step two of the Alice analysis, we examine the claim
elements to determine if an “inventive concept” is set forth. The claims
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recite the use of “encoding said contract data into an endpoint specification
of the request for said service, said service being one of the web service and
the web application .. . and receiving, via the computer network, the service
in a Simple Object Access Protocol (SOAP) response message.” The
Specification, however, describes these are well-known aspects of
techniques, specifically SOAP and WSDL. See Spec. 1—4. The
Specification describes that as compared to the prior art, the claims provide
improvement “by the step of including contract data specifying a selection of
a given service specification into the request, with which the service is
requested.” Spec. 9,11. 15—19.
Because the example of the longstanding practice of providing a
contract number for a discount, set forth above, already includes the extra
data described by the Appellants as the improvement in the claimed
invention, we do not discern an actual inventive concept beyond merely
defining computer operations to more closely correspond to longstanding
human behavior. This is merely automating what was already a common
practice, and does not quality as an “inventive concept.”
Claim 14 is also similar to claim 1 in buySafe, cited by the Examiner
as a claim found abstract by our reviewing court. Answer 3—4. Claim 1 of
buySafe “recites a method in which (1) a computer operated by the provider
of a safe transaction service receives a request for a performance guarantee
for an ‘online commercial transaction’; (2) the computer processes the
request by underwriting the requesting party in order to provide the
transaction guarantee service; and (3) the computer offers, via a ‘computer
network, ’ a transaction guaranty that binds to the transaction upon the
closing of the transaction.” buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
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1351 (Fed. Cir. 2014). The transaction information in the request is
analogous to the claimed contract parameters, and the return of a guaranty is
analogous to the claimed provided service.
For these reasons, the Appellants have not shown error in the
Examiner’s rejection. Therefore, we sustain the rejection of claims 14, 21,
28, 35-37, 39-43, 45^19, and 51-53 under 35 U.S.C. § 101.
DECISION
We affirm the rejection of claims 14, 21, 28, 35—37, 39-43, 45^49,
and 51—53 under 35 U.S.C. § 101.
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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