Ex Parte Dawkes et al

Patent Trial and Appeal Board

Jun 28, 2018

13969688 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/969,688 08/19/2013 Martyn J. Dawkes
30449 7590 07/02/2018
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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.
GB920050093US2 3605
EXAMINER
CHONG CRUZ, NADJA N
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
30449@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTYN J. DAWKES and CHRISTOPHER J. HOLLOWAY
Appeal2017-002244
Application 13/969,688
Technology Center 3600
Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and
SHARON PENICK, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1, 3-8, 10-14, and 16-19. Claims 2, 9,
and 15 have been canceled. See App. Br. 30-36 (Claims App'x). We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 1.
Appeal2017-002244
Application 13/969,688
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention generally relates to architectural modeling tools
and determining the progress of adoption of an on-demand capability model
by an organization. Spec. 1. Claim 1, which is illustrative, reads as follows
with some paragraphing and formatting added:
1. A method for determining the progress of adoption of an
on-demand capabilities model by an organization, said method
compnsmg:
a computer processor displaying a graph that depicts
parameters pertaining to a current state, a modelled state, and a
target state for the organization,
wherein the current state pertains to current
capabilities of the organization,
wherein the target state pertains to capabilities that
the organization wants to possess at an end of a specified
period of time, wherein the modelled state is a state of
conformity by the organization to required characteristics,
wherein the graph depicts the parameters for each
business capability of a plurality of business capabilities,
and
wherein the graph comprises a three-dimensional
perspective view of an alignment of a business capability
of the organization with respect to an information
technology (IT) capability of the organization;
said processor determining a first metric equal to a
numerical value associated with a degree of change required for
the organization to achieve the target state for the business
capability in comparison with a degree of change required across
the IT capability; and
said processor determining a second metric equal to a
numerical value associated with a degree to which a business
2
Appeal2017-002244
Application 13/969,688
implementation of the on-demand capability lags that of the IT
capability,
wherein the graph comprises the first metric and the
second metric;
wherein the graph displays the first metric, the second
metric, an ideal path in which the business capability equals the
IT capability, and a projected path between the modelled state
and the target state for the business capability.
Rejection2
Claims 1, 3-8, 10-14, and 16-19 stand rejected under 35 U.S.C. § 101
because the claimed subject matter is judicially-excepted from patent
eligibility under § 101. Final Act. 16-21.
ANALYSIS
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S.Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of nature,
2 The non-statutory double patenting rejection of claims 1, 3-8, 10-14, and
16-19 has been withdrawn. Ans. 2.
3
Appeal2017-002244
Application 13/969,688
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S.Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. The inquiry
often is whether the claims are directed to "a specific means or method" for
improving technology or whether they are simply directed to an abstract
end-result. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1311,
1314 (Fed. Circ. 2016). If the claims are not directed to a patent-ineligible
concept, the inquiry ends. Otherwise, the inquiry proceeds to the second
step, where the elements of the claims are considered "individually and 'as
an ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79--80, 1297). We, therefore,
look to whether the claims focus on a specific means or method that
improves the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016).
The Examiner finds the claims are directed to "displaying business
data as a graph and determining (business) metrics." Final Act. 16; see also
Ans. 3--4. The Examiner finds that displaying business data as a graph and
determining metrics "is a concept involving human activity relating to
commercial practices" and, therefore, that the claims are directed to an
abstract idea. Id. The Examiner further finds the claims do not include
additional elements that are sufficient to amount to significantly more than
4
Appeal2017-002244
Application 13/969,688
the abstract idea and, therefore, that the claims are directed to ineligible
subject matter under 35 U.S.C. § 101. Final Act. 16-21; Ans. 4--11.
Appellants argue "displaying data as a graph and determining metrics
do not organize any human activity, but rather perform data processing
activity." App. Br. 11. Appellants further argue the claims require
determining a first metric and determining a second metric and these
limitations "do not organize any human activity but rather determine
numerical values" and the Examiner fails to cite to any evidence
demonstrating that these limitations "is one of the CERTAIN methods of
organizing human activities that is an abstract idea." App. Br. 11-12.
We agree with the Examiner that the claims are directed to displaying
data as a graph and determining metrics. Final Act. 16; Ans. 3--4. As
acknowledged by Appellants, the claims recite limitations for performing a
data processing activity and determining numerical values. App. Br. 11-12.
When, as is the case here, "the focus of the asserted claims" is "on collecting
information, analyzing it, and displaying certain results of the collection and
analysis," the claims are directed to an abstract idea. Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1343 (Fed. Cir. 2016).
Turning to the second step of the analysis, Appellants argue the claims
recite significantly more than the abstract idea because the limitations
recited in independent claims 1, 8, and 14 "facilitate improving the
technology of Information Technology (IT) with respect to the IT
infrastructure." App. Br. 14.
"The abstract idea exception has been applied to prevent patenting of
claims that abstractly cover results where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc., 837 F.3d at 1314
5
Appeal2017-002244
Application 13/969,688
(quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1854)). "'A patent is not good
for an effect, or the result of a certain process' because such patents 'would
prohibit all other persons from making the same thing by any means
whatsoever."' Id. ( quoting Le Roy v. Tatham, 55 U.S. 156, 17 5 (1853) ).
"We therefore look to whether the claims in these patents focus on a specific
means or method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." Id. (quoting Enfzsh, 822 F.3d at 1336).
Here, although the claims require use of a processor, the recited
limitations do not cause the claims to be directed to something other than an
abstract idea because the claims do not specify a particular means or method
that improves the relevant technology. Instead the claims are directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery. See Gottschalk v. Benson, 409 U.S. 63, 66
(1972)); see also Enfzsh, 822 F.3d at 1336.
For example, claim 1 recites: (1) "displaying a graph that depicts
parameters pertaining to a current state, a modelled state, and a target state
for the organization;" (2) "determining a first metric equal to a numerical
value;" and (3) "determining a second metric equal to a numerical value."
Other than requiring the use of generic computer components (e.g., "a
computer processor"), "it matters not by what process or machinery the
result is accomplished." McRO, 837 F.3d at 1314. The remaining
limitations merely narrows the abstract idea and do not amount to
significantly more than the abstract idea because they do not restrict the
"displaying," the "determining a first metric," or the "determining a second
6
Appeal2017-002244
Application 13/969,688
metric" to any particular process or machinery. See McRO, 837 F.3d at
1314.
Appellants further argue the claims recite significantly more than the
abstract idea because the limitations
said processor determining a first metric equal to a
numerical value associated with a degree of change required for
the organization to achieve the target state for the business
capability in comparison with a degree of change required across
the IT capability; and
said processor determining a second metric equal to a
numerical value associated with a degree to which a business
implementation of the on-demand capability lags that of the IT
capability,
wherein the graph comprises the first metric and the
second metric,
as recited in claim 1, and similarly recited in claims 8 and 14, are not well-
understood, routine, and conventional in the field of the claimed invention.
App. Br. 17-18. Appellants argue that these limitations are not well-
understood, routine, and conventional because similar limitations were
found to be novel and non-obvious in U.S. Patent Application No.
11/257 ,824, to which the present application claims priority. App. Br. 18-
19; see also Reply Br. 7-9.
To the extent Appellants argue because the claims recite novel and
non-obvious subject matter the claims recite significantly more than the
abstract idea, we find this argument unpersuasive. Although the second step
in the Alice/Mayo framework is termed a search for an "inventive concept,"
the analysis is not an evaluation of novelty or non-obviousness, but rather a
search for "an element or combination of elements that is sufficient to ensure
that the patent in practice amounts to significantly more than a patent upon
7
Appeal2017-002244
Application 13/969,688
the [ineligible concept] itself." Alice, 134 S.Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. 66 (2012). Further, Appellants do not point
to, and we are unable to find, where the Specification provides any
description or explanation as to how the claimed computer processor
performs the claimed limitations. At best, the Specification describes the
functions performed by the computer processor in carrying out the recited
steps as those that were well-understood, routine, and conventional at the
time of Appellants' invention. See Spec. 8-12; Fig. 1.
We have also carefully considered Appellants' arguments regarding
preemption. App. Br. 22-28; Reply Br. 9. However, although "preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility." Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Where claims
are deemed to recite only patent ineligible subject matter under the two-step
Alice analysis, as they are here, "preemption concerns are fully addressed
and made moot." Id.
Because Appellants' claims 1, 3-8, 10-14, and 16-19 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 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter in light of Alice and its progeny.
DECISION
We affirm the Examiner's rejection of claims 1, 3-8, 10-14, and 16-
19 under 35 U.S.C. § 101.
8
Appeal2017-002244
Application 13/969,688
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
9