Ex Parte Chandrasekaran et al

Patent Trial and Appeal Board

Jun 20, 2017

13423343 (P.T.A.B. Jun. 20, 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.
13/423,343 03/19/2012 Swaminathan Chandrasekaran RSW920120009US1 3786
46583 7590 06/22/2017
Roberts Mlntknwski Safran Pole Rr PalHernn P P
EXAMINER
Intellectual Property Department
P.O. Box 10064
GART, MATTHEW S
MCLEAN, VA 22102-8064 ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/22/2017 ELECTRONIC
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SWAMINATHAN CHANDRASEKARAN,
LAKSHMINARAYANAN KRISHNAMURTHY, and
CHRISTOPHER L. WALK
Appeal 2016-001362
Application 13/423,3431
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and SHARON FENICK,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—5, 8—13, 15—21, and 24—29, which
are all the claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the Real Party in Interest is International
Business Machines Corporation. App. Br. 1.
2 Our Decision refers to Appellants’ Appeal Brief filed July 1, 2015 (“App.
Br.”); Reply Brief filed November 5, 2015 (“Reply Br.”); Examiner’s
Answer mailed September 18, 2015 (“Ans.”); Final Office Action mailed
Appeal 2016-001362
Application 13/423,343
STATEMENT OF THE CASE
Appellants’ invention relates to “a mechanism by which software
may be provided to assist in setting up processes for measuring and/or
monitoring progress relative to organizational objectives and goals.”
Spec. 11. Appellants’ Specification states “example embodiments
provide a platform configured to be employed by an organization in order
to enable the organization to step through the development of a
personalizable performance indicators for use in a BPM [Business
Process Management] tool that can track progress relative to goals, KPIs
[key performance indicators] and/or the like that are relevant to the
organization by using a plurality of glossaries.” Spec. 113.
Claims 1, 9, and 17 are independent. Claim 1 is illustrative of
Appellants’ invention and is reproduced below:
1. A method comprising:
providing at least one interface configured to receive an
input specifying a business entity from an operator associated
with an organization;
correlating, via processing circuitry, the business entity
with one or more value chain characteristics from a value chain
glossary based at least in part on type information associated with
the business entity;
providing, via the at least one interface, a list of possible
entity states selected from an entity state glossary based at least
in part on the business entity or a selected value chain
characteristic of the one or more value chain characteristics;
determining, via processing circuitry, a selected set of
glossary terms correlated to at least one of the business entity,
January 8, 2015 (“Final Act.”); and original Specification filed March 19,
2012 (“Spec.”).
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Application 13/423,343
the selected value chain characteristic, or a selected entity state
of the list of possible entity states from a plurality of glossaries,
the glossaries relating to different performance indicator
components associated with at least one of the business entity,
the value chain characteristic, or business-specific entity state
that are combinable to define a measurable performance
indicator;
generating at least one performance indicator of the
organization based on the selected set of glossary terms; and
exporting the at least one performance indicator of the
organization to a business performance management tool,
wherein determining the selected set of glossary terms is
performed based on operator selections associated with an at
least partially pre-filled template provided to the operator for
selection of the selected set of glossary terms, the at least
partially pre-filled template being prefilled based on the type
information associated with the business entity to define a set of
context sensitive measurement concepts for one or more
activities in which the business entity engages.
App. Br. 11—12 (Claims App’x).
Examiner’s Rejection
Claims 1—5, 8—13, 15—21, and 24—29 stand rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject. Final Act. 9-10.
ANALYSIS
In rejecting claims 1—5, 8—13, 15—21, and 24—29 under 35 U.S.C.
§ 101, the Examiner finds these claims are directed to an abstract idea of
“generating at least one performance indicator for an organization/business
entity (via human user selections)” and specifically, to “the process of
correlating the business entity with one or more value chain characteristics,
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determining a set of glossary terms correlated to at least one of the business
entity based on operator selections, and generating at least one performance
indicator of the organization based on the selected glossary terms all
describe the abstract idea.” Ans. 3.
The Examiner also finds Appellants’ claims “do not amount to
significantly more than the abstract idea itself’ because these claims (1) “fail
to recite any improvements to another technology or technical field,
improvements to the functioning of the computer itself, and/or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular environment” and (2) recite a generic computer to perform
“generic, well-understood and[sic] routing computer functions.” Final Act.
9-10. The Examiner therefore finds “providing, via at least one interface, a
list of possible entity states” represents “data gathering activity” and
“exporting the at least one performance indicator represents an insignificant
post-solution output activity.” Ans. 4.
Appellants present several arguments against the § 101 rejection.
App. Br. 4—10; Reply Br. 2-4. Appellants acknowledge claims 1, 9, and 17
provide “for method, apparatus, and computer program product for
discovery and generation of organizational key performance indicators
utilizing glossary repositories.” App. Br. 4. However, Appellants argue
“the claims are not directed to non-statutory subject matter, e.g. an abstract
idea” and “even if the claims were generally directed toward an abstract
idea, the combination of elements of the claims are sufficient to ensure the
claims amount to significantly more than the abstract idea itself.” App. Br.
4-5.
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Second, Appellants argue “the claimed invention is necessarily rooted
in computing technology in order to overcome a problem specifically arising
in the realm of computing networks.” Id. at 5. Appellants assert the claim
limitation “pre-filling of templates that provide glossary terms for KPI-
related software” is “necessarily rooted in computer technology.” Id. at 8.
Third, Appellants argue “the invention does not merely relate to the
functioning of a computer ‘employed only for its most basic function, the
performance of repetitive calculations’” and does not “pre-empt every
application related to any particular abstract idea.” Id. at 8.
Lastly, Appellants argue “the mere lack of a novelty or obviousness
rejection under 35 USC § 102 or 103 is a strong indication that the claims,
even if directed generally toward an abstract idea, amount to significantly
more than the abstract idea itself.” Id. at 9.
We do not find Appellants’ arguments persuasive. Instead, we find
Appellants’ arguments conclusory and the Examiner has provided a
comprehensive response to Appellants’ arguments supported by a
preponderance of evidence. Ans. 2—9. As such, we adopt the Examiner’s
findings and explanations provided therein. Id. At the outset, we note the
Supreme Court has long held that “laws of nature, natural phenomena, and
abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS BankInt 7,
134 S. Ct. 2347, 2354 (2014) (quoting Assoc, for Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The “abstract ideas”
category embodies the longstanding rule that an idea, by itself, is not
patentable. Alice, 134 S. Ct. at 2355 (quoting Gottschalk v. Benson, 409
U.S. 63, 67 (1972)).
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In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289 (2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice Corp., 134 S. Ct at 2355. The first
step in the analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts,” such as an abstract idea. Id. If
the claims are directed to a patent-ineligible concept, the second step in the
analysis is to consider the elements of the claims “individually and ‘as an
ordered combination’” to determine whether there are additional elements
that “‘transform the nature of the claim’ into a patent-eligible application.”
Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second
step is to “search for an ‘inventive concept’—i.e., 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.’” Id.
(brackets in original) (quoting Mayo, 132 S. Ct. at 1294).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants’ method claim 1 and “computer-readable
medium” claim 17 are directed to an abstract idea of “generating at least one
performance indicator for an organization/business entity (via human user
selections).” Ans. 3. All the steps recited in Appellants’ claims 1 and 17
including, for example: (i) “providing ... a list of possible entity states
selected from an entity state glossary based at least in part on the business
entity [input from an operator] or a selected value chain characteristic
[correlated with the business entity]; (ii) “determining ... a selected set of
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glossary terms” [based on operator selections associated with an at least
partially pre-filled template]; (iii) “generating at least one performance
indicator of the organization based on the selected set of glossary terms”;
and (iv) “exporting the at least one performance indicator” are abstract
processes of storing, collecting, and analyzing information of a specific
content prior to output. Apparatus claim 9 recites similar limitations of
claims 1 and 17 in the context of generic “processing circuitry” to process
the recited functions. Nevertheless, information as such is intangible. See
Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007).
Information collection and analysis, including when limited to particular
content, is within the realm of abstract ideas. See, e.g., Elec. Power Grp.
LLC 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”); FairWarningIP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093—94 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v.
Flees, for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011).
Turning to the second step of the Alice inquiry, we find nothing in
Appellants’ claims 1 and 17, and its corresponding apparatus claim 9, that
adds anything “significantly more” to transform the abstract concept of
collecting and analyzing information into a patent-eligible application.
Alice, 134 S. Ct. at 2357. Appellants do not argue any of the steps recited in
claims 1, 9, and 17 as individually inventive. None of Appellants’
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arguments show that some inventive concept arises from the ordered
combination of these steps, which, even if true, would be unpersuasive given
that they are ordinary steps in data analysis and are recited in an ordinary
order. Instead, Appellants’ method claims 1, 9, and 17 simply recite
“correlating the business entity with one or more value chain characteristics,
determining a set of glossary terms correlated to at least one of the business
entity based on operator selections, and generating at least one performance
indicator of the organization based on the selected glossary terms,” as
recognized by the Examiner. Ans. 3.
Likewise, apparatus claim 9 simply incorporates generic components
such as an “interface” and “processing circuitry” configured to perform the
abstract concept of “correlating the business entity with one or more value
chain characteristics, determining a set of glossary terms correlated to at
least one of the business entity based on operator selections, and generating
at least one performance indicator of the organization based on the selected
glossary terms” i.e., collecting and analyzing information. Id.
As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski’s “machine-or-
transformation” (MoT) test can also provide a “‘useful clue’” in the second
step of the Alice framework. See In re Bilski,3 545 F.3d 943, 954 (Fed. Cir.
3 In In re Bilski, the Federal Circuit adopted a “machine-or-transformation”
(MoT) test to determine whether a process claim is eligible under 35 U.S.C.
§101. However, the Supreme Court held, in Bilski v. Kappos, 130 S. Ct.
3218, 3227 (2010), that the “MoT” test, while a “useful and important clue,”
is no longer the sole test for determining the patent-eligibility of process
claims under § 101. Since Bilski v. Kappos, the Supreme Court has created a
two-step framework in Alice, 134 S. Ct. at 2354 to address whether a claim
falls outside of § 101, which we discuss infra.
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Application 13/423,343
2008) (en banc). Under Bilski’s MoT test, a claimed process can be
considered patent-eligible under § 101 if: (1) “it is tied to a particular
machine or apparatus”; or (2) “it transforms a particular article into a
different state or thing.” Bilski, 545 F.3d at 954 (citing Gottschalk, 409 U.S.
at 70, 93 S. Ct. 253). However, Appellants’ method claims 1 and 20 and its
corresponding system claim 13 are neither sufficiently “tied to a particular
machine or apparatus” nor involved in any type of transformation of any
particular article.4
Limiting such an abstract concept of “generating at least one
performance indicator for an organization/business entity (via human user
selections)” to generic components such as an “interface” and “processing
circuitry” recited in Appellants’ apparatus claim 9 does not make the
abstract concept patent-eligible under 35 U.S.C. § 101. Ans. 3. As
recognized by the Supreme Court, “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” See Alice, 134 S. Ct. at 2359 (concluding claims
“simply instructing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer” not patent eligible); see
also Ultramercial, 772 F.3d at 715—16 (claims merely reciting the abstract
idea of using advertising as currency as applied to particular technological
environment of the Internet is not patent eligible); Accenture Global Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir.
2013) (claims reciting “generalized software components arranged to
4 Alice also confirmed that if a patent’s systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same is true of the Alice patent’s media claims. Id.
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implement an abstract concept [of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer” is not patent eligible); and Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333—34 (Fed. Cir. 2012) (“[sjimply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible” (internal citation omitted)).
With respect to Appellants’ argument regarding the absence of
“novelty and non-obviousness” analysis, we recognize that claim limitations
found to be novel and/or nonobvious can affect a patent-eligibility
determination. Cf.Ariosa Diagnostics, Inc., v. Sequenom, Inc., 788 F.3d 1371
(Fed. Cir. 2015) (“For process claims that encompass natural phenomenon,
the process steps are the additional features that must be new and useful.”)
However, a finding of novelty or nonobviousness does not necessarily lead
to the conclusion that subject matter is patentable eligible. “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass ’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct.
2107,2117 (2013)
“Indeed, “[t]he ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v.
Diehr, 450 U.S. 175, 188—89 (1981) (emphasis added); see also
Mayo, 132 S. Ct. at 1303-04 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the
better established inquiry under § 101”). Here, the jury’s general
finding that Symantec did not prove by clear and convincing
evidence that three particular prior art references do not disclose
all the limitations of or render obvious the asserted claims does
not resolve the question of whether the claims embody an
inventive concept at the second step of Mayo/Alice.”
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Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016).
Nor does a finding of obviousness necessarily lead to the conclusion
that subject matter is patentable ineligible. See also RapidLitig. Mgmt. Ltd.
v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016) (“That each of the
claims' individual steps (freezing, thawing, and separating) were known
independently in the art does not make the claim unpatentable.”) “[PJatent-
eligibility does not turn on ease of execution or obviousness of application.
Those are questions that are examined under separate provisions of the
Patent Act.” Id. at 1052 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc, 566 U.S. 66, 90 (2012).
The question in step two of the Alice framework is not whether an
additional feature is novel, but whether the implementation of the abstract
idea involved “more than the performance of ‘well-understood, routine,
[and] conventional activities previously known to the industry.’” Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 116 F.3d
1343, 1347-48 (quoting Alice, 134 S. Ct. at 2359). Appellants have not
shown the novel features transform the abstract idea into patent-eligible
subject matter.
Lastly, we note Appellants’ claims 1—5, 8—13, 15—21, and 24—29 are
neither rooted in computer technology as outlined in DDR Holdings, LLC v.
Hotels.com, L.P., 111 F.3d 1245 (Fed. Cir. 2014), nor do they seek to
improve any type of computer capabilities, such as a “self-referential table
for a computer database” outlined in Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1336—37 (Fed. Cir. 2016). Instead, Appellants’ claims 1—5, 8—
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13, 15—21, and 24—29 simply recite an abstract concept of “generating at
least one performance indicator for an organization/business entity (via
human user selections).”
Because Appellants’ claims 1, 9, and 17 are directed to a patent-
ineligible abstract concept and do not recite something “significantly more”
under the second prong of the Alice analysis, we sustain the Examiner’s
rejection of these claims as well as respective dependent claims 2—5, 8, 10—
13, 15—16, 18—21, and 24—29 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter in light of Alice and its progeny.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1—5, 8—13, 15—21, and
24—29 under 35 U.S.C. § 101.
DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1—5, 8—
13, 15—21, and 24—29.
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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