Ex Parte Demant et al

Patent Trials and Appeals Board

May 31, 2019

15344977 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/344,977 11/07/2016
64280 7590 06/04/2019
Mintz Levin/SAP
Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.
One Financial Center
Boston, MA 02111
Hilmar Demant
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.
54874-401D01US/2010P00124 4508
EXAMINER
NANO, SARGON N
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
06/04/2019 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HILMAR DEMANT, SEBASTIAN DROLL, JOACHIM FITZER,
IOANNIS GRAMMATIKAKIS, JAN HEILER, JUERGEN SATTLER,
FRANK SCHERTEL, MARKUS VIOL, and THORSTEN WEBER
Appeal2018-006960
Application No. 15/344,977 1
Technology Center 2400
Before MARC S. HOFF, JAMES R. HUGHES, and JOYCE CRAIG,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 21--40. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants state that the real party in interest is SAP SE. App. Br. 2.
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Application No. 15/344,977
Appellants' invention is a method for, a computer-readable medium
storing instructions for, and a client device that performs functions for
client-side processing based on component relationships. In the method, a
client device stores a first component and a second component, and a
relationship value representing a dependent relationship between the first
component and second component. A client database manager may be
configured to send to the server side of a network, in response to a request to
process the first component, a request for an update of at least one of the
components. A client processing module may be configured to cause the
processor to process, at the client device, at least a portion of the first
component and at least a portion of the second component, based on the
relationship value. Spec. ,r 4.
Claim 21 is reproduced below:
21. A non-transitory computer-readable storage medium
storing code representing instructions that when executed are
configured to cause a processor to perform a process, the code
comprising code to:
receive a request to process a component at a client
device on a client side of a network;
send, to a server device on a server side of the network, a
request to retrieve the component;
receive, in response to the request to retrieve the
component, a plurality of relationship values and a plurality of
components including the component, each relationship value
from the plurality of relationship values representing at least a
portion of a dependent relationship between one component
from the plurality of components and another component from
the plurality of components;
store the plurality of relationship values in a relationship
metadata database in a memory of the client device, the
relationship metadata database at the client device mirroring at
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least a portion of a relationship metadata database maintained at
the server device; and
trigger, starting at a time, processing of the plurality of
components at the client device in an order based on the
plurality of relationship values after the storing of the plurality
of relationship values in the relationship metadata database of
the client device.
The Examiner rejects the claims on appeal as follows:
Claims 21--40 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter.
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed Mar. 22, 2018), the Reply Brief ("Reply Br.," filed June
25, 2018), and the Examiner's Answer ("Ans.," mailed Apr. 30, 2018) for
their respective details.
ISSUES
Is the claimed invention directed to a judicial exception?
PRINCIPLES OF LAW
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 ideas" are not patentable. See, e.g., Alice Corp. v. CLS Bank Int 'l,
573 U.S. 208,216 (2014).
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
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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 (Gottschalkv. 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. 17 5, 192 (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
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("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
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circumvented by attempting to limit the use of the formula to a particular
technological environment." Id. at 191 ( 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 (quotation marks 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. ( 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.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). 84 Fed. Reg. 50.
Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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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:
(3) adds a specific limitation beyond the judicial exception that
is 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.
ANALYSIS
SECTION 101 REJECTION
Claim 21 recites the following process steps, embodied as computer-
readable stored code:
(a) receiving a request to process a component at a client device on a
client side of a network;
(b) sending, to a server device, a request to retrieve the component;
( c) in response to the request to retrieve the component, receiving a
plurality of relationship values and a plurality of components;
( d) storing the plurality of relationship values in a relationship
metadata database in a memory of the client device, which mirrors a
database maintained at the server device; and
( e) triggering processing of the plurality of components at the client
device in an order based on the plurality of relationship values after the
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storage of the plurality of relationship values in the relationship metadata
database of the client device.
Method claim 28 and "client device" claim 35 recite functionally
identical limitations.
These limitations, under their broadest reasonable interpretation,
recite having a client device process a component upon request, the
processing based on a plurality of client-stored relationship values. Further,
a server device is responsible for providing the component and the plurality
of relationship values to the client.
Under the 2019 Guidelines, we first determine whether the claims
recite one of several groupings of abstract ideas: mathematical concepts,
certain methods of organizing human activity, and mental processes. See
Memorandum, 84 Fed. Reg. at 52.
We first determine that the claims under appeal do not recite
mathematical concepts. In reviewing the claims, we do not discern
mathematical relationships, mathematical formulas or equations, or
mathematical calculations. See id.
Second, we determine that the appealed claims do not recite a mental
process. Limitations such as receiving a request to process a component at a
client device, storing relationship values in a database in a memory of a
client device, and triggering processing of a plurality of components at the
client device, recite specific physical elements and are not concepts that
could fairly be characterized as being "performed in the human mind." See
id.
The remaining category of abstract ideas for consideration is "certain
methods of organizing human activity," subcategorized as fundamental
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economic principles or practices; commercial or legal interactions; or
managing personal behavior or relationships or interactions between people.
See id. The Examiner characterizes the claimed invention as being "directed
to the abstract idea of rapid processing of client-side component." Final Act.
3. Without elaboration, the Examiner concludes that such a concept of "rapid
processing" "is similar to the kind of 'organizing human activity' at issue in
Alice Corp. . .. [it] is similar to the abstract idea of Creating an index, and
using that index to search for and retrieve data ... and Data recognition and
storage." Id. at 3--4 (emphasis added).
We do not agree with the Examiner's characterization of the claims
directed to a method of organizing human activity. First, we do not consider
the claimed invention to recite economic principles or practices, or
commercial or legal interactions, or managing personal behavior or
relationships or interactions between people. Second, we agree with
Appellants' argument that the claimed invention can be distinguished from
the inventions in other "organizing human activity" cases. App. Br. 6. For
example, Bilski concerned a method of hedging risk, "something that
humans do." Id. We agree with Appellants that in contrast, the claimed
invention, with limitations such as "to process a component at a client
device," or "send, to a server device on a server side of the network, a
request to retrieve the component," does not concern "something that
humans do" and cannot fairly be characterized as a method of organizing
human activity. App. Br. 6-7.
We conclude that the claims are not directed to a judicial exception
because the claimed invention is not directed to any of the categories of
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abstract ideas enumerated in the 2019 Guidelines. See Memorandum, 84
Fed. Reg. at 52.
Having determined that the claimed invention does not recite an
abstract idea, we need not reach the question of whether any claimed idea is
integrated into a practical application. We conclude that the claims are
directed to patent-eligible subject matter, and we do not sustain the
Examiner's 35 U.S.C. § 101 rejection of claims 21--40.
CONCLUSION
The claimed invention is not directed to a judicial exception.
ORDER
The Examiner's decision to reject claims 21--40 under 35 U.S.C.
§ 101 is reversed.
REVERSED
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