Ex Parte Bruchlos et al

Patent Trials and Appeals Board

Apr 12, 2019

10876023 - (D) (P.T.A.B. Apr. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/876,023 06/24/2004
48916 7590
Greg Goshorn, P.C.
9600 Escarpment Blvd.
Suite 745-9
AUSTIN, TX 78749
04/15/2019
FIRST NAMED INVENTOR
Joachim Bruchlos
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.
DE920030035US 1 1110
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
04/15/2019 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 JOACHIM BRUCHLOS, JOACHIM HAGMEIER,
DIETMAR KUEBLER, and TIMO KUSSMAUL
Appeal2018-001203
Application 10/876,023
Technology Center 3600
Before ELENI MANTIS MERCADER, JOHN A. EV ANS, and
JASON M. REPKO, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a final rejection of
claims 1--4, 6, 12-13, and 15. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, "[ t ]he real party in interest is International
Business Machines Corp[oration] (IBM)." App. Br. 3.
Appeal2018-001203
Application 10/876,023
CLAIMED SUBJECT MATTER
The claims are directed to method for automatic creation and
configuration of license models and policies. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computer-implemented method for providing licensed
access to software application services based on a contract that
specifies conditions for usage of the software application
services by a service requester, access to the software application
services being provided over a network under different license
types, each license type defining a particular usage condition, the
method comprising:
a service handler receiving a service request for an
application service, the service handler implementing a runtime
environment handling application service requests within an
application server memory space that is operatively shared by the
service handler, a profile handler, a contract handler, and a
metering handler, wherein the profile hander, contract handler
and metering handler run in a shared memory computing
environment;
responsive to receiving the service request, the service
handler:
invoking the profile handler, the profile handler accessing
a profile service component that stores service requester profile
information, said profile service component retrieving and
returning requester profile data associated with the service
request to said profile handler; and
invoking the contract handler, the contract handler
identifying and validating a contract associated [with] the service
request, utilizing the retrieved requester profile data, said
contract handler accessing a contract services component that
stores contract information including license condition data
corresponding to the identified and validated contract;
a licensing service component receiving the license
condition data corresponding to the identified contract from the
contract services component;
the licensing service component receiving service usage
data from a metering service component that receives and
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collects application service usage data from the metering
handler;
the licensing service component comparing the received
service usage data with the received license condition data and
determining availability of two or more licensing types to satisfy
the service request based upon the comparing and
providing the service in accordance with one of the
licensing types.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stefik
Hamadani
Kerker
Van Do
us 5,715,403
us 5,742,757
US 7,353,194 Bl
US 2003/0110138 Al
REJECTIONS
Feb.3, 1998
Apr. 21, 1998
Apr. 1, 2008
June 12, 2003
Claims 1--4, 6, 12-13, and 15 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more.
Claims 1--4, 6, 12-13, and 15 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over Kerker in view of Van Do and further in view of
Stefik and Hamadani.
OPINION
Claims 1-4, 6, 12-13, and 15 rejected under 35 USC§ 101
Appellants argue that the claimed subject matter is directed to
providing software application services over a network, which necessarily
involves the interaction of three distinct physical entities, including a server,
a client, and a network. App. Br. 8. Appellants assert that their claimed
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Application 10/876,023
invention results in improving the integrity and the interaction of distinct
computing entities. Id. Appellants argue that their claims are directed to a
specific, unique, and non-obvious approach to monitoring and modifying the
terms under which a software service is delivered to a client over a network
among the claimed limitations are receiving a service request, invoking a
profile handler, invoking a contract handler, receiving usage data from a
metering service component that collects application service usage data, and
providing an application service. Id. Appellants assert that these are actions
that are rooted in the technology of both computing and networking. Id.
Appellants further assert that the limitations may be significantly
more than an abstract idea. Id. Appellants also assert that they do not "tie
up" any judicial exception. Id.
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. Pty. Ltd. v. CLS Bankint'l, 573 U.S. 208, 217-18
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 75-77 (2012)). 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,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
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Application 10/876,023
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); 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 that "[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; see also id. at 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. ( citing Benson and Flook); see, e.g., id. at 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.").
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 (internal citation
omitted). "A claim that recites an abstract idea must include 'additional
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Application 10/876,023
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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupmgs of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF p ATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(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.
See Memorandum.
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In the instant case, the claim as a whole recites a method of
organizing human activity and in particular a sales activity. In
particular, the method allows for determination of availability of two
or more licensing types to satisfy a service request. Because the
claims recite a method of organizing human activity under the
Guidance's Step 2A, prong 1, we proceed to determine whether the
method of organizing human activity is integrated into a practical
application.
Here, claim 1 recites a combination of additional elements including:
a service handler receiving a service request for an
application service, the service handler implementing a runtime
environment handling application service requests within an
application server memory space that is operatively shared by the
service handler, a profile handler, a contract handler, and a
metering handler, wherein the profile hander, contract handler
and metering handler run in a shared memory computing
environment;
. . . said contract handler accessing a contract services
component that stores contract information including license
condition data corresponding to the identified and validated
contract;
a licensing service component receiving the license
condition data corresponding to the identified contract from the
contract services component;
the licensing service component receiving service usage
data from a metering service component that receives and
collects application service usage data from the metering
handler;
the licensing service component comparing the received
service usage data with the received license condition data and
determining availability of two or more licensing types to satisfy
the service request based upon the comparing and
providing the service in accordance with one of the
licensing types.
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Application 10/876,023
Thus, the claim as a whole integrates the method of organizing human
activity into a practical application. In particular, the claim as a whole
integrates the method of organizing human activity of determining the
availability of two or more licensing types to satisfy a service request into a
practical application of the licensing service component comparing the
received service usage data from a metering handler with the received
license condition data from a contract handler accessing a contract services
component that stores contract information including license condition data
corresponding to the identified and validated contract and determining
availability of two or more licensing types to satisfy the service request
based upon the comparison. See MPEP § 2106.0S(b) (discussing the
integral use of a machine to achieve performance of a method may provide
significantly more). That is, a computer is integral to this comparison.
Furthermore, the claim requires an application server memory space that is
operatively shared by the service handler, a profile handler, a contract
handler, and a metering handler, and wherein the profile hander, contract
handler and metering handler run in a shared memory computing
environment. See id. Accordingly, the claim is patent eligible because it is
not directed to the recited judicial exception. We need not discuss whether
the present claims are significantly more than any abstract idea because the
present claims are not directed to an abstract idea.
Thus, we do not sustain the Examiner's rejection of claim 1 and for
the same reasons the Examiner's rejection of claims 2--4, 6, 12, 13, and 15.
Claims 1-4, 6, 12, 13, and 15 rejected under 35 U.S.C. § 103(a)
Appellants argue that the combination of Kerker, Van Do, Stefik and
Hamadani do not teach or suggest the limitation of "the licensing service
component comparing the received service usage data with the received
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Application 10/876,023
license condition data and determining availability of two or more licensing
types to satisfy the service request based upon the comparing and providing
the service in accordance with one of the licensing types" as recited in claim
1. In particular, Appellants argue that Hamadani relied upon by the
Examiner for the disputed limitation only determines a license type based
upon whether or not a particular type of license exists rather than based upon
"comparing the received service usage data." App. Br. 10-11.
We are persuaded by Appellants' argument. The Examiner's reliance
on the license availability table to teach "service usage data" is incorrect
because, at best, it teaches availability of license options-not availability
based on usage data. See Ans. 4 (citing Figs. IC, 2 and col. 4, 11. 39--55).
Accordingly we reverse the Examiner's rejection of claim 1 and for
the same reasons the Examiner's rejection of claims 2--4, 6, 12-13, and 15.
DECISION
The Examiner's rejections of claims 1--4, 6, 12-13, and 15 are
reversed.
REVERSED
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