Ex Parte Dettinger et al

Patent Trial and Appeal Board

Jul 25, 2017

13758427 (P.T.A.B. Jul. 25, 2017)

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.
13/758,427 02/04/2013 Richard D. Dettinger ROC920030158US3 3985
46797 7590 07/27/2017
Patterson Rr SheriHan T T P
EXAMINER
24 Greenway Plaza, Suite 1600
Houston, TX 77046
JUNG, ALLEN J
ART UNIT PAPER NUMBER
OPQA
NOTIFICATION DATE DELIVERY MODE
07/27/2017 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):
Pair_eOfficeAction@pattersonsheridan.com
IBM@PATTERSONSHERIDAN.COM
rociplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD D. DETTINGER and RICHARD J. STEVENS
Appeal 2016-003115
Application 13/758,427
Technology Center 3600
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
SHARON FENICK, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL1
1 In parallel with this Decision, this Panel decides related Appeal 2016-
003116 (U.S. Patent Application Serial Number 13/758,492). See App. Br.
4.
Appeal 2016-003115
Application 13/758,427
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
Representative Claim
Representative claim 1 under appeal read as follows (emphasis and
brackets added):
1. A computer program product, comprising:
a non-transitory computer-readable storage medium having
computer-readable program code embodied therewith, the computer-
readable program code comprising:
[a) ] computer-readable program code configured to map,
in a data abstraction model, a plurality of logical fields to a
plurality of physical entities of physical data having a
particular physical representation in a database, wherein each
logical field specifies a respective access method selected from
at least two different types of access methods;
[b) ] computer-readable program code configured to
receive a selection of an abstract modification operation;
[c) j computer-readable program code configured to
receive a selection of a model entity definition on which to
perform the abstract modification operation, the model entity
definition specified in the data abstraction model, the model
entity definition comprising two or more of the plurality of
logical fields, each corresponding to a separate physical entity;
[d) ] computer-readable program code configured to,
based on at least the received selections, generate at least two
physical modification statements, each modifying one of the
two separate physical entities of the physical data;
[e) j computer-readable program code configured to order
the at least two physical modification statements;
[f) ] computer-readable program code configured to
execute modification operations according to the physical
modification statements, whereby the data is modified; and
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Application 13/758,427
[g)] computer-readable program code configured to
calculate a fee to charge for executing the modification
operations based on a defined fee schedule for the model entity
definition.
References
Kubica et al. US 2002/0035432 A1 March 21, 2002
Rubio et al. US 2002/0062241 Al May 23, 2002
Rejections
1. The Examiner rejected claims 1—10 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 significantly
more” (Final Act. 7), i.e., the claimed invention is directed to non-statutory
subject matter.2
2. The Examiner rejected claims 1—10 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kubica and Rubio.3
Issues on Appeal
Did the Examiner err in rejecting claim 1
non-statutory subject matter?
Did the Examiner err in rejecting claim 1
as being directed to
as being obvious?
2 We select claim 1 as representative. Separate patentability is not argued
for claims 2—10. Except for our ultimate decision, the § 101 rejection of
claims 2—10 is not discussed further herein.
3 We select claim 1 as representative. Separate patentability is not argued
for claims 2—10. Thus, the rejection of these claims turns on our decision as
to claim 1. Except for our ultimate decision, the § 103 rejection of claims 2—
10 is not discussed further herein.
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Application 13/758,427
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
1. Non-Statutory Subject Matter
A
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 101 because:
Applicants respectfully submit that the present claims
satisfy the streamlined patent-eligibility analysis under section
1(B)(3) of the 2014 Interim Guidance on Patent Subject Matter
Eligibility guidelines, which explains that “a streamlined
eligibility analysis can be used for a claim that may or may not
recite a judicial exception but, when viewed as a whole, clearly
does not seek to tie up any judicial exception such that others
cannot practice it.”
App. Br. 16.
For the purpose of the streamlined analysis of Section 1(B)(3),
applicants submit that the present claims are not an attempt to
“tie up” any abstract idea. Again, section 1(B)(3) requires that
the claim, “when viewed as a whole .... does not seek to tie up
any judicial exception such that others cannot practice it.”
App. Br. 17 (emphasis added).
In addition, the streamlined analysis of section 1(B)(3)
should apply because the claims recite meaningful limitations,
such as “mapping, in a data abstraction model, a plurality of
logical fields to a plurality of physical entities of physical data
having a particular physical representation in a database, wherein
each logical field specifies a respective access method selected
from at least two different types of access methods.” The
Examiner has ignored a litany of meaningful claim limitations
which not only fail to “tie up” an abstract idea, but do not recite
an abstract idea when viewed as a whole. Accordingly,
Applicants respectfully submit that the present claims satisfy the
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streamlined patent-eligibility analysis under section 1(B)(3) of
the 2014 Interim Guidance on Patent Subject Matter Eligibility
guidelines.
App. Br. 18 (emphasis added).
Appellants mischaracterize the purpose of section 1(B)(3) of the 2014
Interim Guidance on Patent Subject Matter Eligibility guidelines as placing
a requirement on the Examiner (“section 1(B)(3) requires” (App. Br. 17)).
Rather, section 1(B)(3) is available to the Examiner as a discretionary
streamlined § 101 Alice/Mayo analysis favoring Applicant. Section 1(B)(3)
is explicit that “if there is doubt as to whether the applicant is effectively
seeking coverage for a judicial exception itself, the full analysis should be
conducted.” Emphasis added. Contrary to Appellants’ argument, the
streamlined patent-eligibility analysis under section 1(B)(3) is not required
to be available to Appellants; rather, it is at the Examiner’s discretion. The
Examiner choosing to perform a full § 101 Alice!Mayo analysis is not an
error.
Further, any Examiner’s failure to follow the Director’s guidance is
appealable only to the extent that the Examiner has failed to follow the
statutes or case law. That is, to the extent the Director’s guidance goes
beyond the case law and is more restrictive on the Examiner than the case
law, failure of the Examiner to follow those added restrictions is a matter for
petition to the Director. We review Appellants’ particular arguments against
the case law and find no requirement in the law that the Examiner perform a
section 1(B)(3) streamlined § 101 Alice!Mayo analysis.
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B
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 101 because:
The Examiner has not identified a specific “abstract idea.”
Instead, the Examiner makes a blanket assertion that the claims
are directed to “fundamental economic practices and/or certain
methods of organizing human activities.” Applicants are left to
speculate as to what the “fundamental economic practices”
and/or “methods of organizing human activities are.” A
“fundamental economic practice” is far broader than what is
recited by the specific independent claim limitations. Instead, a
“fundamental economic practice” is one that rises to the level of
the intermediated settlement in Alice Corp. v. CLS Bank Int 7, or
the risk hedging in Bilski v. Kappos, 130 S.Ct. 3218, 3227
(2010). A reading of the instant claims, as a whole, reveals
neither a “fundamental economic practice” nor a “method of
organizing human activities.”
App. Br. 18 (emphasis added).
At page 7 of the Final Action, the Examiner finds:
Claims 1-10 are directed to selection of a modification operation,
generating modification statements, executing modification
operation by modifying data, and calculating a fee to charge for
executing the modification operations, which constitute abstract
idea(s) of fundamental economic practices and/or certain
methods of organizing human activities.
Our reviewing court, regarding the notice requirement as set forth by
35 U.S.C. § 132, explains:
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35
U.S.C. § 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
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seeking to counter the grounds for rejection.” Chester v. Miller,
906 F.2d 1574, 1578 (Fed.Cir.1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Appellants are arguing the Examiner’s notice is so uninformative that
it prevents the applicant from recognizing and seeking to counter the
grounds for rejection. We disagree. Contrary to Appellants’ argument, no
inappropriate speculation is required as to what the fundamental economic
practices and/or methods of organizing human activities are in claim 1.
C
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 101 because:
[T]he Examiner failed to show that the claims, as a whole, are
directed to an abstract idea. Instead, the Examiner summarily
concludes, without analysis, that the claims are directed an
abstract idea and/or certain methods of organizing human
activities. Final Office Action, pp. 7-8. As such, Applicants are
left to speculate as to which abstract ideas the Examiner believes
the claims are directed to as a whole.
App. Br. 19.
We disagree. Appellants are mistaken in arguing the Examiner must
show in step 1 of Alice “the claims, as a whole, are directed to an abstract
idea.” App. Br. 19. Appellants overlook that in the two-step Alice analysis,
determining whether a method or process recites an abstract idea is in step 1
of Alice, and analyzing the claim as a whole is in step 2. See Alice Corp. v.
CLS Bank Inti, 134 S. Ct. 2347, 2355, n.3 (2014). Appellants have
conflated the two steps. There is no requirement in Alice step 1 that as to the
abstract idea the claim be considered as a whole.
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D
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 101 because:
Applicants respectfully submit that the claims are not
directed to “certain methods of organizing human activities.”
The claims do not make any reference to a user, a human, or any
human activities. Therefore, a reading of the claims forecloses
any possibility that the claims are directed towards “certain
methods of organizing human activities.” Applicants respectfully
submit that the Examiner erred in concluding that the claims are
directed towards “certain methods of organizing human
activities.”
The Examiner argues the claim limitations “can be
construed as an organization of human activities, because these
are operations that can be carried out manually.” Final Office
Action, pp. 5-6. The Examiner asserts that the instant claims are
“analogous to Planet Bingo v. VKGS, in which the court found
that, aside from generic computer implementations of the
activities, the activities are the ones that are possible to be carried
out manually.” Id. The Planet Bingo court held that managing
the game of bingo consists solely of mental steps which can be
carried out by a human using pen and paper. 2014 Interim
Guidance on Patent Subject Matter Eligibility, p. 74631.
However, the game of bingo is not analogous to databases, let
alone the abstract databases recited in the claims. To carry out
the steps of the claims manually would require, for example,
“mapping, in a data abstraction model, a plurality of logical fields
to a plurality of physical entities of physical data having a
particular physical representation in a database, wherein each
logical field specifies a respective access method selected from
at least two different types of access methods.” Such a manual
or mental process is impossible, as one cannot “access” mental
or handwritten information in more than one way. Therefore,
the claims are not directed to methods of organizing human
activity.
App. Br. 19—20 (emphasis added).
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Applicants respectfully submit that abstract databases are not a
‘“question of ancient lineage,’” considering computers
themselves were invented in the last century.
App. Br. 20.
We disagree. Appellants are simply mistaken in arguing it is not long
known to access handwritten information (i.e., paper based data) in more
than one way. Many long established alternative access methods are well-
known, e.g., the “Dewey Decimal Classification” and “Library of Congress
Classification” systems. The Examiner did not err in concluding the claims
encompass certain methods of organizing human activities.
E
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 101 because:
While the independent claims recite “calculating ... a fee to
charge for executing the modification operations” this limitation
does not rise to the level of a fundamental economic practice,
such as the intermediated settlement in Alice Corp. v. CLS Bank
Int’l, or the risk hedging in Bilski v. Kappos, 130 S.Ct. 3218,
3227 (2010). Indeed, calculation of the fee is “based on a defined
fee schedule for the model entity definition,” as recited by the
claims.
App. Br. 20.
We disagree. Contrary to Appellants’ position, we conclude that
calculating a fee is a fundamental economic principle. We agree with the
Examiner that fee calculation “is an activity that pertains to ‘agreements
between people in the form of contracts, legal obligations, and business
relations.’” Ans. 14; see also Final Act. 5—6.
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F
Appellants contend that the Examiner erred in rejecting claim 1 under
35U.S.C. § 101 because “the claims satisfy the second part of the Mayo test
by claiming inventive steps that clearly amount to significantly more than a
patent upon an abstract idea.” App. Br. 21.
[Claim 1 supplies] at least the inventive steps of:
• receiving a selection of a model entity definition on which
to perform the abstract modification operation, the model
entity definition specified in a data abstraction model, the
model entity definition comprising two or more logical
fields each corresponding to a separate physical entity
• based on at least the received selections, generating at least
two physical modification statements, each modifying one
of the two separate physical entities of the physical data,
and
• calculating a fee to charge for executing the modification
operations based on a defined fee schedule for the model
entity definition
If the claims were directed to a mere computer implementation
of what the Examiner argues is a “fundamental economic
principle,” the claims would only include a single limitation
directed to calculating a fee for executing a modification
statement. However, as evidenced by the detailed, specific
limitations of the claims, the claims supply the necessary
inventive concepts, including the computation of a fee in a
meaningful way (“based on a defined fee schedule for the model
entity definition”). When viewed in combination, the limitations
of claim[ 1] provide significantly more than the judicial
exception.
App. Br. 21—22.
Much like the claims at issue in DDR Holdings, [the]
presently claimed solution is “rooted in computer technology”
and solves a technical problem of composing and executing
abstract queries. The present claims do not recite the
performance of a known business practice outside of computer
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technology and require that it simply be performed by computers.
Rather, the solution provided by the claimed invention addresses
a challenge particular to abstract databases.
App. Br. 22.
First, Appellants’ argument overlooks the Examiner’s reasoning that
claim 1 is directed to both “abstract idea(s) of fundamental economic
practices and/or certain methods of organizing human activities.”
Second, Appellants list elements of claim 1 without any persuasive
explanation of how the elements either individually, or as an ordered
combination, amount to an inventive concept that converts an abstract idea
into patent-eligible subject matter. Appellants assert that like DDR, the
claim solution is rooted in computer technology and solves a technical
problem of composing and executing abstract queries, but do not explain
why. App Br. 22. Without more we are not persuaded the Examiner’s
reasoning is mistaken.
2. Obviousness
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
The Examiner argues that Kubica teaches a “data
abstraction model” and “mapping, in a data abstraction model, a
plurality of logical fields to a plurality of physical entities of
physical data having a particular physical representation in a
database, wherein each logical field specifies a respective access
method selected from at least two different types of access
methods” at paragraphs [0026] and [0108]-[0109]. Final Office
Action, p. 9.
App. Br. 9.
[T]he Examiner suggests that a relational database is a data
abstraction model that contains a plurality of logical fields
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mapping to a plurality of physical entities of physical data in a
database. Respectfully, the Examiner’s position is simply
untenable', first, Applicant’s own specification preclude the
Examiner’s interpretation of a relational database and a data
abstraction model and, second, Kubica is simply devoid of the
specific limitations recited in the Applicant’s claims.
App. Br. 9 (emphasis added).
Nothing in the relational database of Kubica discloses this [data
abstraction model] kind of structure. To the contrary, the
relational database of Kubica is precisely the kind of physical
data on which the claimed data abstraction model could be built.
App. Br. 11.
We conclude, consistent with Appellants’ argument, there is
insufficient articulated reasoning to support the Examiner’s findings that
Kubica discloses “data abstraction model” and “code configured to map, in a
data abstraction model, a plurality of logical fields to a plurality of physical
entities of physical data having a particular physical representation in a
database.” Therefore, we conclude that there is insufficient articulated
reasoning to support the Examiner’s final conclusion that claim 1 would
have been obvious to one of ordinary skill in the art at the time of
Appellants’ invention.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—10 under
35 U.S.C. § 101, as being directed to non-statutory subject matter.
(2) Appellants have established that the Examiner erred in rejecting
claims 1—10 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1—10 are not patentable.
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DECISION
The Examiner’s rejection of claims 1—10 under 35 U.S.C. § 101, as
being directed to non-statutory subject matter, is affirmed.
The Examiner’s rejections of claims 1—10 as being unpatentable under
35 U.S.C. § 103(a) are reversed.
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
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