Ex Parte Dan et alDownload PDFPatent Trial and Appeal BoardDec 22, 201613565467 (P.T.A.B. Dec. 22, 2016) Copy Citation 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. 13/565,467 08/02/2012 AS IT DAN CAM920120016US2_8150-0274 9120 52021 7590 12/27/2016 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, EL 33498 EXAMINER FLEISCHER, MARK A ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ASIT DAN and MIKE A. MARIN Appeal 2014-0057591 Application 13/5 65,4672 Technology Center 3600 Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1 and 25—32.3 We have jurisdiction under 35 U.S.C. § 6(b). 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed Oct. 14, 2013) and Reply Brief (“Reply Br.,” filed Apr. 3, 2014), and the Examiner’s Answer (“Ans.,” mailed Feb. 4, 2014) and Final Office Action (“Final Act.,” mailed May 16, 2013). 2 Appellants identify IBM Corporation as the real party in interest. App. Br. 1. 3 Claims 2—24 have been cancelled. App. Br. 2. Appeal 2014-005759 Application 13/565,467 We AFFIRM-IN-PART and enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED INVENTION Appellants’ claimed invention relates to “integrating decision making technologies into business applications.” Spec. 12. Claims 1 and 25 are the independent claims on appeal. Claim 1, reproduced below, is illustrative: 1. A method, comprising: generating a decision reference at an insertion point within a business process; associating, using a processor, the decision reference with one of a plurality of different decision modes; wherein each decision mode indicates a different process for selecting one or more activities of the business process to be performed according to a result of a decision service to be implemented for the decision reference; and generating a decision description file for the decision reference specifying, at least in part, the associated decision mode. REJECTIONS Claims 25—32 are rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 25—32 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1 and 25—32 are rejected under 35 U.S.C. § 103(a) as unpatentable overNores (Nores et al., US 2008/0288304 Al, pub. Nov. 20, 2008) and Addala (Addala et al., US 2010/0070553 Al, pub. Mar. 18, 2010). 2 Appeal 2014-005759 Application 13/565,467 ANALYSIS Non-Statutory Subject Matter Independent Claim 25, and Dependent Claims 26—32 Appellants argue claims 25—32 as a group. App. Br. 11—12; see also Reply Br. 3—A. We select claim 25 as representative. The remaining claims stand or fall with claim 25. See 37 C.F.R. § 41.37(c)(l)(iv). Subsequent to the filing of briefs in this appeal, the Supreme Court in Alice Corp. v. CLS BankInt’l, 134 S. Ct. 2347 (2014) reiterated the framework set out previously 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, 134 S. Ct. at 2355. According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Id. at 2355. If the claims are determined to be directed to a patent-ineligible concept, then the second part of the framework is applied to determine if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing Mayo, 132 S. Ct. at 1294, 1298). We apply this framework in our analysis. Regarding step one of the Alice analysis, the Examiner determines that independent claim 25 is directed to an abstract idea, in part, because a person would be capable of performing the acts of the claimed method as mental steps. See Final Act. 7 (“the steps [of claim 25] could broadly be construed as constituting purely mental steps, hence [the] claims [are] for an abstract idea”). We agree. 3 Appeal 2014-005759 Application 13/565,467 Claim 25 recites “[a] computer-implemented method of generating a decision description file.” The recited steps comprise: (1) identifying a decision reference at an insertion point within a business process; (2) selecting one of a plurality of different decision modes to associate with the decision reference; and (3) generating the decision description file using the decision reference, insertion point, and selected decision mode. The Specification describes that a decision description file “specifies a decision service that is needed by a business process and that is to be developed.” Spec. 1 53. By providing the requirements in a decision reference file to a developer, decision services that are needed to implement a business process can be developed independently of the underlying business process, allowing business processes to be defined more readily. Id. Tflf 22—23; see also id. 12 (“[t]he need for expert involvement and the unfamiliarity with decision making technologies on the part of those responsible for business application development have made the integration of decision making technologies into business applications difficult to manage”). Developers, in turn, develop a decision service to fulfill the requirements set forth in the decision description file. Id. Tflf 22, 53. Based on the claim language and the Specification, we determine that claim 25 is directed to generating a decision description file (i.e., a set of requirements for a decision service needed by a business process), which is an abstract idea that could be performed as mental steps or with the aid of pen and paper. To put it another way, the claimed method simply generates requirements for outsourcing development of a set of generic steps for making a decision related to a business process without any indication of what those steps are. 4 Appeal 2014-005759 Application 13/565,467 Appellants argue that claim 25 does not recite purely mental steps, because claim 25 recites the step of “generating the decision description file.” App. Br. 11—12. In this regard, Appellants contend that the term “file” would be understood by those skilled in the art to be a particular type of computer data structure that is generated by a computer. Id. As an initial matter, we note that claim 25 recites “computer-implemented” in the preamble, but does not recite that the claimed file is generated by a computer. However, even if we adopt Appellants’ interpretation of “file” as a computer data structure generated by a computer, claim 25 remains no less abstract. See Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performing by computers . . . That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalkv. Benson.”). Because we find that claim 25 is directed to an abstract idea, we turn to the second step of the Alice analysis to determine whether the claim includes an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea of generating a decision reference file. Claim 25 additionally recites steps of identifying a decision reference at an insertion point within a business process, and selecting a decision mode to associate with the decision reference. But these steps also could be practiced mentally and, thus, do not patentably transform an otherwise abstract idea into an inventive concept. In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“mental processes — or 5 Appeal 2014-005759 Application 13/565,467 processes of human thinking — standing alone are not patentable even if they have practical application”). While the machine-or-transformation test is not the sole test governing a § 101 analysis, the test can provide a “useful clue” in the second step of the Alice framework. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715—16 (Fed. Cir. 2014). Appellants argue that claim 25 is tied to a machine and, thus, satisfies the machine-or-transformation test because the claimed method is “computer-implemented” (preamble) and generates a “file.” App. Br. 11-12. But we are unable to discern any use of a computer that would deviate from its generic conventional usage. Instead, the Specification suggests that conventional usage of any general-purpose computer available at the time the application was filed could have satisfied the requirement to be computer-implemented and to generate a file. See Spec. 117 (“[tjhese computer program instructions may be provided to a processor of a general purpose computer”); see id. 145 (“[djecision description file 120 can be formatted according to any of a variety of conventions”). Thus, we agree with the Examiner that Appellants’ claim is not sufficiently tied to a particular machine or apparatus nor involved in any type of transformation. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[AJfter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible patent claim patent-eligible. The bare fact that a computer exists in the physical rather than purely conceptual realm is beside the point.”) (internal citations and quotation marks omitted). 6 Appeal 2014-005759 Application 13/565,467 Nothing in claim 25 purports to improve computer functioning or otherwise “effect an improvement in any other technology or technical field.” Alice, 134 S. Ct. at 2359. Nor do the claims solve a problem unique to the Internet. See DDR Holdings, 773F.3datl257. In view of the foregoing, we sustain the Examiner's rejection under 35 U.S.C. § 101 of claim 25. We also sustain the rejection under 35 U.S.C. § 101 of claims 26—32, which fall with claim 25. Independent Claim 1 We enter a NEW GROUND of rejection of claim 1 for reciting non-statutory subject matter under 35 U.S.C. § 101. Our analysis is the same as set forth above for claims 25—32. Namely, we determine that claim 1 is directed to the concept of “generating a decision description file,” that such a concept is a patent-ineligible, and that the other claim limitations do not articulate an inventive concept that is “significantly more” in a manner sufficient to confer patent eligibility under 35 U.S.C. § 101. Indefiniteness We are persuaded by Appellants’ argument that the Examiner erred in rejecting claims 25—32 under 35 U.S.C. § 112, second paragraph. Reply Br. 2—3. The Examiner asserts that “[cjlaim 25 purports to be a ‘computer- implemented method’, yet none of the method steps as indicated in the several limitations involve a particular computer or processor to perform the step,” rendering the claim vague and indefinite. Ans. 2. However, there is no requirement that an applicant explicitly recite “who or what” performs each step of a method claim. And the lack of such a recitation does not render a claim indefinite. 7 Appeal 2014-005759 Application 13/565,467 Therefore, we do not sustain the Examiner’s rejection of claims 25—32 under 35U.S.C. § 112, second paragraph. Obviousness Independent Claims 1 and 25 and Dependent Claims 26—32 We are persuaded by Appellants’ argument that the Examiner erred in rejecting claims 1 and 25 under 35 U.S.C. § 103(a) because Nores does not disclose or suggest “associating, using a processor, the decision reference with one of a plurality of different decision modes,” as recited in claim 1, and similarly recited in claim 25. App. Br. 18—20, 25—26; see also Reply Br. 7—9. The Examiner relies on Nores as disclosing the argued limitation. Final Act. 9 (citing Nores, Abstract, 141); see also Ans. 10-11 (citing Nores, 1121, 23, 41). Nores is directed to providing decision activities in a business process design environment. Nores 16. Nores describes a process designer module that defines a business process by drawing activities linked by various transitions. Id. 121. One type of activity is a decision activity type. Id. Decision activities define a set of variables relevant to making a decision. Id. When the process is deployed, an end user is presented the set of variables and provided a set of options from which the user selects a decision. Id. This decision dictates the transition that a business process instance of the system will follow. Id. Sequence of activities are coupled by transitions. Id. 141. Transitions indicate “which activity or activities are to be initiated after the completion of the current activities.” Id. “[T]he number and invocation of the next activities depends on the data evaluated and decisions made during the current activity.” Id. 8 Appeal 2014-005759 Application 13/565,467 The Examiner, in the Final Office Action, finds a decision activity constitutes the claimed decision reference, and a set of decision activities constitutes the claimed decision modes. Final Act. 8—9 (citing Nores 141). In the Answer, the Examiner finds Nores’ decision activity type constitutes a decision mode. Ans. 10 (citing Nores H 21, 23). However, a set of decision activities, as described by Nores, is a plurality of decision activities required by the business process. And a decision activity type, as described by Nores, refers to one type of activity in the business process being a decision activity whose output (a decision) dictates transitions in the business process. In other words, the Examiner finds that Nores’ decision activity constitutes two claim limitations: the decision reference and the decision mode. On the present record, the Examiner does not identify, and we do not find, anything in the cited portions of Nores that discloses or suggests “associating, using a processor, the decision reference with one of a plurality of different decision modes,” as recited in claim 1, and similarly recited in claim 25. In view of the foregoing, we do not sustain the Examiner’s rejection of independent claims 1 and 25 and dependent claims 26—32 under 35 U.S.C. § 103(a). DECISION The Examiner’s rejection of claims 25—32 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejection of claims 25—32 under 35 U.S.C. § 112, second paragraph is reversed. The Examiner’s rejection of claims 1 and 25—32 under 35 U.S.C. § 103(a) is reversed. 9 Appeal 2014-005759 Application 13/565,467 Claim 1 is newly rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. NEW GROUND This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED IN PART: 37 C.F.R, $ 41.50(b) 10 Copy with citationCopy as parenthetical citation