Ex Parte Cirihal

Patent Trials and Appeals Board

Jan 30, 2019

14062126 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/062,126 10/24/2013 Ronalda Bittencourt Cirihal
27572 7590 02/01/2019
Harness Dickey (Troy)
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
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.
9539-000265/US 3492
EXAMINER
KNOX, TYLER W
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
troymailroom@hdp.com
sto-ptomail@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALDO BITTENCOURT CIRIHAL
Appeal2017-010856
Application 14/062, 126
Technology Center 3600
Before ALLEN R. MacDONALD, JASON V. MORGAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which are all of the pending claims. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
1 Appellant indicates the real party in interest is American Axle
& Manufacturing, Inc. App. Br. 2.
Appeal2017-010856
Application 14/062, 126
Illustrative Claim
Illustrative claim 1 under appeal read as follows ( emphasis,
formatting, and bracketed materials added):
1. A computer-implemented purchased part order data
management system, comprising:
[A.] a database management computer hosting a
purchased part order database;
[B.] an automated data collection and review computer
having a purchased part order data (PPOD)
repository and having a computer-implemented
messaging system including a message routing data
structure;
[C.] the automated data collection and review computer
being coupled to said database management
computer to support data transfer from the
automated data collection and review computer to
the database management computer through an
iterative validating interface that automatically
tests data transferred to the database management
computer for conformance and that uses the
messaging system to issue prompts requesting
correction when data transferred to the database
management computer is nonconforming based on
the automatic testing by the iterative validating
interface;
[D.] the automated data collection and review computer
having an interface supporting interaction with the
data repository and with the messaging system by a
PPOD creating user and by a plurality of different
PPOD reviewing users;
[E.] the messaging system having populated in said
message routing data structure the identity of
different PPOD reviewing users according to a
predefined reviewing sequence;
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[F.] the messaging system automatically monitoring
interaction by said PPOD creating user and by said
PPOD reviewing users and issuing prompts to
PPOD reviewing users based on the predefined
reviewing sequence, the prompts to PPOD
reviewing users including referential link to a
record in the PPOD repository;
[G.] the messaging system automatically issuing a
prompt to said database management computer to
ingest information based on the PPOD data
subject to having been found con/ orming by the
iterative validating interface when, based on the
predefined reviewing sequence, all pending reviews
have been completed with approval.
Gil et al.
Ren
References2
US 2002/0188486 Al
US 2011/0258083 Al
Re} ections3
A.
Dec. 12, 2002
Oct. 20, 2011
The Examiner rejects claims 1-20 under 35 U.S.C. § 101 because "the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without amounting to significantly
more than the abstract idea itself," that is, because the subject matter of the
claimed invention is patent-ineligible. Final Act. 6-13.
2 All citations herein to these references are by reference to the first named
inventor only.
3 All citations herein to the "Final Act." are to a Final Office Action mailed
on October 21, 2016.
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Application 14/062, 126
As to this rejection, our decision as to the § 101 rejection of claim 1 is
determinative as to the § 101 rejection of all the claims. Therefore, except
for our ultimate decision, we do not discuss further herein the § 101
rejection of claims 2-20.
B.
The Examiner rejects claims 1-20 under 35 U.S.C. § 103 as being
unpatentable over the combination of Ren and Gil. Final Act. 13-37.
As to this rejection, our decision as to the § 103 rejection of claim 1 is
determinative as to the § 103 rejection of all the claims. Therefore, except
for our ultimate decision, we do not discuss further herein the § 103
rejection of claims 2-20.
Issues on Appeal
Has the Examiner erred in rejecting claim 1 as being directed to
patent-ineligible subject matter?
Has the Examiner erred in rejecting claim 1 as being obvious?
ANALYSIS 4
A. Section 101
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
4 Any Manual of Patent Examining Procedure (MPEP) citations herein are to
MPEP Rev. 08.2017, January 2018.
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Application 14/062, 126
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014) (internal quotation marks and citation omitted).
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. Id. at 217-18 ( 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
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (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 (1854))); 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
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Application 14/062, 126
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 features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( 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.
B. USPTO Section 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of§ 101. US PTO' s January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
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Guidance, 84 Fed. Reg. 50 ("Memorandum"). Under that guidance, we first
look to whether the claim recites:
(1) (see Memorandum Step 2A - Prong One) any judicial exceptions,
including certain groupings of abstract ideas (i.e., mathematical
concepts, certain methods of organizing human interactions such as a
fundamental economic practice, or mental processes); and
(2) (see Memorandum Step 2A - Prong Two) additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.0S(a}-(c), (e}-(h)). 5
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
(see Memorandum Step 2B):
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(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.
5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See USPTO's January
7, 2019 Memorandum, "2019 Revised Patent Subject Matter Eligibility
Guidance."
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C. Requirement to Provide Sufficient Articulated Reasoning
The requirement that the Examiner must provide a proper notice of
rejection is set forth by 35 U.S.C. § 132:
Whenever, on examination, any claim for a patent is rejected, ...
the Director shall notify the applicant thereof, stating the reasons
for such rejection ... together with such information and
references as may be useful in judging of the propriety of
continuing the prosecution of his application.
The Federal Circuit has held that the Office carries its procedural
burden when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, "together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application." See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (brackets in original (quoting 35 U.S.C. § 132)).
Put simply, the Office is required to set forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of§ 132. See Jung, 637 F.3d at 1362; Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990) (noting that§ 132 "is violated when a
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection").
D. Examiner's§ 101 Rejection -Alice/Mayo - Step 1
Memorandum Step 2A - Prong One
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 1 is directed to an abstract idea.
When considered by themselves, Examiner characterizes the
independent claims as a process and machine for processing
and storing purchased part order data governed by established
rules and structured message dictation/or a plurality of users.
Reduced to its core concept, Examiner characterizes the
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invention as a process and machine for selectively forwarding
data via a centralized server.
Final Act. 8 ( emphasis added). The Examiner cites Bilski and Dealertrack6
to establish Appellant's invention is "akin" to the "methods of organizing
human activity," i.e., inventions the courts have found to be an abstract idea.
Final Act. 8-10.
Examiner finds Applicant's invention incurs the rationale
employed by the Federal Circuit Court in Dealertrack, wherein
the "basic concept of processing information through a
clearinghouse was found to be an abstract idea, similar to Bilski 's
basic concept of hedging" [Id.].
Final Act. 9.
E. Appellant's§ 101 Arguments7
Appellant contends "the Examiner has improperly applied the first
stage of the Mayo/ Alice framework by improperly assessing what the claims
are directed to." App. Br. 17. Appellant particularly contends:
Instead of giving proper consideration to the claim language as a
whole, the Examiner has simply jumped to the unsupported
conclusion that the claims are directed to "organizing human
activity"-without providing any claim-focused rationale.
App. Br. 17-18.
Appellant's claimed invention provides an improved computer
data management system, not a method of organizing human
activity using a generic computing environment.
6 Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012).
7 The contentions we discuss herein are determinative as to the § 101
rejection on appeal. Therefore, we do not discuss Appellant's other§ 101
contentions herein.
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Application 14/062, 126
When Appellant's claims are properly assessed, ... those
claims are clearly directed to improvements in which a computer
data management system that interfaces the automated data
collection and review computer with the database management
computer using an iterative validating interface and a messaging
system that causes the database management computer to ingest
data when it has been determined to be conforming by the
iterative validating interface. This is not an abstract idea.
App. Br. 20 ( emphasis modified).
F. Panel's§ 101 Analysis
We agree with Appellant's argument. We conclude that when
evaluated under the Memorandum, the claim limitations of claim 1 do not
recite a method of organizing human activity. Therefore, we conclude claim
1 is does not recite a judicial exception in the form of one of the three
abstract ideas enumerated in the Memorandum. We do not sustain the
rejection under 35 U.S.C. § 101 of claim 1.
G. Appellant's§ 103 Arguments8
Appellant contends the Examiner erred in rejecting claim 1 because
Ren and Gil do not support a prima facie case of obviousness under 3 5
U.S.C. § 103. App. Br. 24. Appellant particularly contends:
Gil lacks at least[] the following element[] of Appellant's claims
needed for a prima facie case:
• "an iterative validating interface that automatically tests
data transferred to the database management computer for
conformance and that uses the messaging system to issue
prompts requesting correction when data transferred to the
database management computer is nonconforming based on
the automatic testing by the iterative validating interface."
8 The contentions we discuss are determinative as to the § 103 rejection on
appeal, so we do not discuss Appellant's other§ 103 contentions herein.
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Application 14/062, 126
App. Br. 25 (emphasis added).
H. Panel's § 103 Analysis
In rejecting claim 1 under§ 103, the Examiner determined:
Ren teaches . . . requesting correction when data transferred to
the database management computer is nonconforming based on
the automatic testing.
Final Act. 13-15 (emphasis omitted).
We conclude, after reviewing the Examiner's rejection (including
reviewing the Examiner cited (Final Act. 15-1 7) portions of Ren related to
the disputed limitation (Abstract, paragraphs 109 and 114, and Figs. 2, 4M,
4Q, 5CL, 5L, 22, and 24)) and consistent with Appellant's above argument
as to claim 1, there is insufficient articulated reasoning to support the
Examiner's findings that Ren discloses the argued limitations. We do not
find in the Examiner cited portion of Ren the conformance testing and
correction required by Appellant's claim 1. Therefore, we conclude that
there is insufficient articulated reasoning to support the Examiner's
conclusion that claim 1 is rendered obvious by Ren and Gil based on the
Examiner's articulated reasoning.
CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1-20 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
(2) Appellant has established that the Examiner erred in rejecting
claims 1-20 as being unpatentable under 35 U.S.C. § 103.
(3) Claims 1-20 have not been shown to be unpatentable.
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Application 14/062, 126
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101, as
being directed to patent-ineligible subject matter is reversed.
The Examiner's rejection of claims 1-20 as being unpatentable under
35 U.S.C. § 103 is reversed.
REVERSED
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