Ex Parte DOHERTY et al

Patent Trial and Appeal Board

Jan 12, 2018

12764559 (P.T.A.B. Jan. 12, 2018)

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.
12/764,559 04/21/2010 Kristen DOHERTY T9049-19648US01 7584
74739 7590 01/17/2018
MILES & STOCKBRIDGE P.C.
Oracle International Corporation
1751 Pinnacle Drive
EXAMINER
ZARE, SCOTT A
Suite 1500
Tysons Corner, VA 22102-3833
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
Ipdocketing @ Miles S tockbridge. com
bgoldsmith @ miles stockbridge .com
smcvean @ milesstockbridge. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISTEN DOHERTY, NIGEL KING, and
DANIELA KANTOROVA
Appeal 2016-001831
Application 12/764,5591
Technology Center 3600
Before BRUCE T. WIEDER, BRADLEY B. BAYAT, and
MATTHEW S. MEYERS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1—3, 6—11, 13—15, and 17—23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Oracle International
Corporation. (Appeal Br. 3.)
Appeal 2016-001831
Application 12/764,559
CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to “recording] business
transactions.” (Spec. 11.)
Claims 1, 9, and 13 are the independent claims on appeal. We select
claim 9 as representative. It recites:
9. A computer implemented method comprising:
storing a plurality of business objects in a database;
receiving, by a processor, a business object to be changed,
a change type, and an effective date of the change;
identifying a number of impacted transactions associated
with each transaction category of the business object, including:
identifying transactions directly associated with
each transaction category of the business object; and
identifying transactions not directly associated with
each transaction category of the business object but that
may be posted to the business object in the future;
displaying, in a first user interface, the transaction
categories of the business object, the number of impacted
transactions in each transaction category, and the percentage of
impacted transactions that have been reviewed in each
transaction category; and
displaying, in a second user interface in response to
receiving a selection of a transaction category, a plurality of
transaction types for the selected transaction category, the
number of impacted transactions for each transaction type, an
indication of whether action is required for each transaction type,
and the percentage of impacted transactions that have been
reviewed for each transaction type.
REJECTION
Claims 1—3, 6—11, 13—15, and 17—23 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
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Appeal 2016-001831
Application 12/764,559
ANALYSIS
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(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.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. 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, 566 U.S. at 72-73, 79).
Under part one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Thus, although we consider the claim as a whole, the “directed to” inquiry
focuses on the claim’s “character as a whole.”
The Specification provides evidence as to what the invention is
directed. In this case, the Specification discloses that the invention is
directed “to a financial computer system that records business transactions.”
(Spec. 11.) The Specification also discloses that “cost centers” and “profit
centers” are “business objects.” {Id. 12.)
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Application 12/764,559
Further with regard to part one of the Alice framework, the Examiner
determines that the claims are “directed to the abstract idea of determining
and reporting transactions impacted by organization changes.” (Final
Action 4.)
Although Appellants disagree with the Examiner’s characterization of
the abstract idea (Appeal Br. 8), Appellants acknowledge that
independent Claims 1, 9 and 13 are directed to a nontransitory
computer readable medium, a method and a system, respectively,
“that, in response to receiving a business object to be changed, a
change type, and an effective date of the change, identifies all
first transactions directly associated with the business object and
identifies all second transactions not directly associated with the
business object but that may be posted to the business object in
the future. The system then displays the first transactions and the
second transactions in a user interface.” See, e.g., Specification
at Paragraph 0004, etc.
{Id. at 5.) In other words, with regard to, e.g., a cost center to be changed,
the claims are directed to a method for identifying transactions associated
(both directly and not directly) with the cost center and displaying the
transactions in a user interface. In short, “[t]he focus of the asserted claims
... is on collecting information, analyzing it, and displaying certain results
of the collection and analysis.” Electric Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016). “Accordingly, we have treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas.” Id.
Although the Examiner and Appellants describe, at different levels of
abstraction, to what the claims are directed, we note that “[a]n abstract idea
can generally be described at different levels of abstraction.” Apple, Inc. v.
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Appeal 2016-001831
Application 12/764,559
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). However, that need
not and, in this case does not, “impact the patentability analysis.” See id.
at 1241. We are not persuaded that the Examiner erred in determining that
the claims are “directed to the abstract idea of determining and reporting
transactions impacted by organization changes.” (Final Action 4.)
Appellants further argue that the Examiner “failed to establish a prima
facie case that the claims are directed to an abstract idea.” (Appeal Br. 9.)
We disagree.
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notifying] 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
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). Here, the Examiner
analyzed the claims using the Alice framework and clearly articulated why
the claims are directed to an abstract idea. (See Final Action 2—\\ see also
Answer 2—5.)
Part two of the Alice framework has been described “as a search for
an ‘ “inventive concept” ’ —i.e., an element or combination of elements that
is ‘sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’” Alice, 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 12—IS).
The introduction of a computer or processor into the claim does not
alter the analysis in part two.
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Appeal 2016-001831
Application 12/764,559
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’ ” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “ ‘to a particular technological environment.’ ”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Id. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Id. at 2359. They do not. Although Appellants argue
that “the claimed invention clearly ‘improve[] an existing technological
process’” (Appeal Br. 12, alteration in original; see also id. at 13—14), we
disagree. “These claims in substance [are] directed to nothing more than the
performance of an abstract business practice . . . using a conventional
computer. Such claims are not patent-eligible.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
Appellants further argue that “the recited claims do not attempt to
preempt every application of ‘determining and reporting transactions
impacted by organizational changes.’” (Appeal Br. 11.) However, we are
not persuaded of error. Preemption is not a separate test.
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Application 12/764,559
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
“significantly more” to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73],
CLS Bank Inti v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring), affd, 134 S. Ct. 2347 (2014). Moreover,
“[w]here a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
Moreover, taking the claim elements separately, the function
performed by the computer at each step is purely conventional. Collecting,
analyzing, and displaying data are basic computer functions. Additionally,
the Specification discloses that the invention can be implemented using
generic computer components. (See, e.g., Spec. 113.) In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
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Appeal 2016-001831
Application 12/764,559
are considered separately. The claims do not, for example, purport to
improve the functioning of the processor itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than an instruction to apply the
abstract idea of determining and reporting transactions impacted by
organizational changes using some unspecified, generic computer. That is
not enough to transform an abstract idea into a patent-eligible
invention. Alice, 134 S. Ct. at 2360.
For the reasons discussed above, we are not persuaded that the
Examiner erred in rejecting claim 9 under § 101. Appellants do not
separately argue claims 1—3, 6—8, 10, 11, 13—15, and 17—23. These claims
fall with claim 9. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
The Examiner’s rejection of claims 1—3, 6—11, 13—15, and 17—23
under 35U.S.C. § 101 is affirmed.
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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