Ex Parte Chang et alDownload PDFPatent Trial and Appeal BoardDec 12, 201411692990 (P.T.A.B. Dec. 12, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BELINDA YING-CHIEH CHANG, VIJAY DHEAP, CHRISTOPHER JAMES HARDEE, and HEATHER CASTELLI MILLER ____________________ Appeal 2012-009982 Application 11/692,990 Technology Center 2100 ____________________ Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and LINZY T. McCARTNEY, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-009982 Application 11/692,990 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claims Exemplary claim 1 reads as follows (emphasis and formatting added): 1. A system for implementing business processes comprising: [(a)] a processing device; [(b)] one or more composition applications corresponding to one or more services, wherein said services are in communication with said processing device via a network; [(c)] a data collection component, configured to be executed on said processing device, for storing system knowledge about a business process comprising usage history and user input relative to activities within a community of users of said services, said system knowledge comprising at least a folksonomy; [(d)] at least one of: [(i)] a user client component that interacts with said data collection component to enable a corresponding user to contribute a user input to said system knowledge; and [(ii)] a monitoring component that monitors activities associated with said one or more composition applications and/or services of said business process and interacts with said data collection component to contribute a usage history of said composition applications and/or services to said system knowledge; and Appeal 2012-009982 Application 11/692,990 3 [(e)] a composition design application that interacts with a user to build and/or modify one or more of said composition applications of said business process, wherein said composition design application recommends candidate services that can implement aspects of said business process for selection by said user based upon information derived from said system knowledge. Rejections on Appeal The Examiner rejected claims 1–7 under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter.1 The Examiner rejected claims 1, 2, 5–9, 12–16, and 19–21 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Niheu (US 2008/0091448 A1) and Fiammante (US 2005/0132381 Al).2 1 Separate patentability is not argued for claims 2–7. Except for our ultimate decision, the § 101 rejection of these claims is not discussed further herein. 2 Separate patentability is not argued for claims 2, 5–9, 12–16, and 19–21. Appellants’ following statement is not an argument for separate patentability: Claim 8 recites a method having features substantially analogous to the features of the system of claim 1. For the reasons provided above with respect to claim 1, Appellants urge that the combination of Niheu and Fiammante does not teach or suggest all the features recited in claim 8. App. Br. 16. (Appellants present similar statements for claims 15, 3, 10, and 17). Similarly, Appellants’ following statement is also not an argument for separate patentability: The Examiner asserts that Niheu also discloses the feature of claim 2 which recites “wherein said composition design application provides a ranking of candidate services based upon at least one condition.” The Examiner refers to paragraph [0038] of Niheu which discusses how the analytics resource 220 can provide product ranking information. Appeal 2012-009982 Application 11/692,990 4 The Examiner rejected claims 3, 4, 10, 11, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Niheu, Fiammante, and Pallister (US 7,324,969 B2).3 Appellants’ Contentions § 101 1. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101 because: Appellants respectfully disagree with the Examiner's assertion. Claim 1 recites a) a processing device, b) composition applications in communication with the processing device, and c) a data collection component configured to be executed on the processing device. Thus, the claim recites an implemented system that is tangible and concrete, having Appellants urge that product rankings in the context of up-sell/cross-sell recommendations to a salesperson (see paragraph [0033]) does not teach or suggest ranking candidate services, wherein according to claim 1, those candidate services implement composition application of a business process. Appellants also urge that Fiammante does not remedy this omission by Niheu. Thus, Appellants urge that the combination of references does not teach or suggest every element of claim 2 and reversal of the rejection under 35 USC 103 of claim 2 is respectfully requested. App. Br. 16. (Appellants present similar statements for claims 9 and 16). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]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 corresponding elements were not found in the prior art.”). Except for our ultimate decision, these claims 2, 5–9, 12–16, and 19–21 are not discussed further herein. 3 As to the rejection of claims 3, 4, 10, 11, 17, and 18, separate patentability is not argued. Rather, the rejection of these claims turns on our decision as to the underlying § 103 rejection. Except for our ultimate decision, these claims are not further addressed herein. Appeal 2012-009982 Application 11/692,990 5 sufficient structure to allow communication between components to take place and to allow program code to be executed. Therefore, Appellants urge that the system of claim 1, when considered as a whole, is included in the broad category of statutory subject matter encompassed under 35 USC 101. App. Br. 12 (emphasis added). 2. Appellants also contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101 because: Using the above [Prometheus Labs., Inc. v. Mayo Collaborative Servs., 628 F.3d 1347,1353 (Fed. Cir. 2010)] tests and guidance for determining patentable subject matter, Appellants urge that claim 1, when considered as a whole, does not recite “laws of nature”, “physical phenomena” or “abstract ideas.” Thus, claim 1 recites a specific implementation of a system (a machine) that is considered statutory subject matter under the broad expanse of 35 USC 101. App. Br. 13 (emphasis added). § 103 3. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103 because: In particular, the Examiner asserts that the “real time predictive analytics tool” 150 of Niheu is analogous to this feature of claim 1. Appellants respectfully disagree. Appellants urge that Niheu does not teach or suggest a composition design application for building or modifying a composition application. And more specifically, Appellants urge that Niheu does not teach or suggest a composition design application that interacts with a user to building and/or modifying the composition applications of a business process in a way that involves recommending candidate services that implement the business process. FIG. 1 of the present application is helpful in understanding claim 1. One or more composition applications 108 are used to implement a business process and these composition applications 108 include one or more services 110. During the design of a composition application 108 (and also Appeal 2012-009982 Application 11/692,990 6 any time after its design) the system knowledge 114 can be used to make recommendations to a user about which of the services 110 could be beneficial. The composition design application is depicted in FIG. 3 as element 150. Unlike the present claim 1, Niheu relates to the processing and presentation of information using a network of applications. The cited “real time predictive analytics tool” 150 of Niheu, for example, evaluates customer purchasing data and recommends products or services accordingly, which may be provided to sales agents to provide them with insights about customer purchasing history or preferences. The cited “analytics resource” 220 merely analyzes data and provides a product ranking and sales recommendations. Thus, even though Niheu uses the language “recommends services”, this language refers to services that a salesperson can suggest to a person for purchase. Niheu is unrelated to modifying or building composition applications in a way that involves recommending the different services that implement aspects of the composition applications of a business process, as meant in claim 1. App. Br. 14 (emphases added). Issues on Appeal Did the Examiner err in rejecting claim 1 because the claimed invention is directed to non-statutory subject matter, i.e., as failing to be within one of the four statutory categories? Did the Examiner err in rejecting claim 1 as being obvious because the cited references fail to suggest the argued limitations? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. Appeal 2012-009982 Application 11/692,990 7 As to Appellants’ above § 103 contention, we agree as to the argued “said composition design application recommends candidate services that can implement aspects of said business process” limitation of claim 1. The Examiner attempts to remedy the failings of Niheu as to the argued limitation by relying on the teachings of Fiammante (Ans. 16–17): Consequently, the products disclosed are services based on customer purchasing data or service usage, the recommendations or reports generated are services that can implement the business process ([0064], Fiammante). Ans. 17. We disagree with this reasoning. As to Appellants’ above § 101 contentions, we disagree. As to contention 1, we disagree with Appellants that the term “data collection component” precludes reading claim 1 as software only. In the Specification, Appellants state: In this regard, one or more blocks in the flowchart or block diagrams may represent a module, component, segment, or portion of code, which comprises one or more executable instructions for implementing the specified logical function(s). Spec. ¶ 92. Appellants themselves equate a component to software code. During prosecution before the Patent Office, claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Further, as to contention 1, we disagree with Appellants that the term “a processing device” precludes reading claim 1 as software only. As the Examiner explained in the rejection, Appellants’ Specification at paragraph 20 states that a processing device may be implemented in hardware, software, or a combination of hardware and software. Therefore, as found by the Examiner, “the processing device can be software only.” Final Rej 7. Appeal 2012-009982 Application 11/692,990 8 Finally, as to contention 1, we disagree with Appellants that the term “system” precludes reading claim 1 as software only. Unlike other claim terms, Appellants have not explicitly defined “system” in the Specification. Therefore, the first step is to determine the ordinary and customary meaning, if any, that would be attributed to the term by those skilled in the art. Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). A term’s ordinary meaning is that which it assumes in the field of the invention, Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299 (Fed.Cir.1999). We turn to the definition of “system” found in the Microsoft Computer Dictionary: Any collection of component elements that work together to perform a task. In computing, system is used in a variety of contexts. A computer is a hardware system consisting of a microprocessor and allied chips and circuitry, plus an input device (keyboard, mouse, disk drive), an output device (monitor, disk drive), and any peripheral devices (printer, modem). Within this hardware system is an operating system, often called system software, which is an essential set of programs that manage hardware and data files and works with application programs. External to the computer, system also refers to any collection or combination of programs, procedures, data, and equipment utilized in processing information: an accounting system, a billing system, a database management system. Microsoft Computer Dictionary, Microsoft Press, 1991 (emphasis added). The terms of claim 1 do not precluded the Examiner from reading claim 1 as software only.4 4 If claim 1 were directed to a “hardware system” and “hardware processing device” we would reach the opposite result. Appeal 2012-009982 Application 11/692,990 9 As to contention 2, we disagree. Claim 1 is reasonably construed as being directed to software only (i.e., abstract information), without any hardware. As such, these claims “are not directed to any tangible embodiment of this information (i.e., in physical memory or other medium) or claim any tangible part of the digital processing system. The claims are instead directed to information in its non-tangible form.” Digitech Image Tech., LLC v. Elec. for Imaging, Inc., 758 F.3d 1344, 1349 (Fed. Cir. 2014). As with the claims in Digitech, we conclude the scope of claim 1 includes subject matter that does not fall within any of the categories of eligible subject matter. CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 1–21 as being unpatentable under 35 U.S.C. § 103(a). (2) The Examiner did not err in rejecting claims 1–7 under 35 U.S.C. § 101, as failing to be within one of the four statutory categories. (3) On this record, claims 8–21 have not been shown to be unpatentable. (4) Claims 1–7 are not patentable. DECISION The Examiner’s rejection of claims 1–21 as being unpatentable under 35 U.S.C. § 103(a) is reversed. The Examiner’s rejection of claims 1–7 under 35 U.S.C. § 101, as failing to be within one of the four statutory categories, is affirmed. Appeal 2012-009982 Application 11/692,990 10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART msc Copy with citationCopy as parenthetical citation