Ex Parte EnrightDownload PDFPatent Trial and Appeal BoardNov 6, 201713541556 (P.T.A.B. Nov. 6, 2017) 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. ENRHT.001D1 2350 EXAMINER SCHEUNEMANN, RICHARD N ART UNIT PAPER NUMBER 3624 MAIL DATE DELIVERY MODE 13/541,556 07/03/2012 87508 7590 John Kerry Enright 2100 Highley Dr. Wake Forest, CA 27587 11/06/2017 Kerry John Enright 11/06/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KERRY JOHN ENRIGHT Appeal 2015-005815 Application 13/541,5561 Technology Center 3600 Before NINA L. MEDLOCK, MATTHEW S. MEYERS, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’ decision rejecting claims 1, 7—11, and 17—22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “The real party in interest is Kerry John Enright.” Appeal Br. 3. Appeal 2015-005815 Application 13/541,556 ILLUSTRATIVE CLAIM 1. A method of systematically performing a process in a multilevel hierarchy, the method comprising: performing an initiate operation, wherein the initiate operation comprises an initiate input operation, an initiate function operation, an initiate output operation, and an initiate performance indication operation; performing an execute operation, wherein the execute operation comprises an execute input operation, an execute function operation, an execute output operation, and an execute performance indication operation; and performing a complete operation, wherein the complete operation comprises a complete input operation, a complete function operation, a complete output operation, and a complete performance indication operation; wherein each of the initiate, execute, and complete performance indication operations comprise at least one of: measuring a time, measuring a quality, and measuring a cost; wherein each of the time, quality, and cost measurements comprise comparing an actual measurement with a goal to determine a difference between the actual measurement and the goal; wherein each performing includes software executed by a computer; wherein the initiate input operation comprises managing initiate input rules, initiate input information, initiate input data, and initiate input specifications, the initiate function operation comprises managing initiate function ordering, at least one initiate function action, at least one initiate function purpose, at least one initiate function actor, at least one initiate function material, and at least one initiate function service, 2 Appeal 2015-005815 Application 13/541,556 the initiate output operation comprises managing initiate output rules, initiate output information, initiate output data, and initiate output specifications, the execute input operation comprises managing execute input rules, execute input information, execute input data, and execute input specifications, the execute function operation comprises managing execute function ordering, at least one execute function purpose, at least one execute function actor, at least one execute function material, and at least one execute function service, the execute output operation comprises managing execute output rules, execute output information, execute output data, and execute output specifications, the complete input operation comprises managing complete input rules, complete input information, complete input data, and complete input specifications, the complete function operation comprises managing complete function ordering, at least one complete function purpose, at least one complete function actor, at least one complete function material, and at least one complete function service, and the complete output operation comprises managing complete output rules, complete output information, complete output data, and complete output specifications; and wherein each of the initiate input, function, and output operations respectively comprise: a prepare operation, a select operation, an acquire operation, and a set up operation, each of the execute input, function, and output operations respectively comprise: a process operation, and a measurement operation, and 3 Appeal 2015-005815 Application 13/541,556 each of the complete input, function, and output operations respectively comprise: a set down operation, a validate operation, a dispatch operation, and a close operation. CITED REFERENCES The Examiner relies upon the following references: Cok US 5,285,524 Feb. 8, 1994 Knittel et al. US 2003/0217129 A1 Nov. 20, 2003 (hereinafter “Knittel”) Nehab et al. US 2006/0026467 Al Feb. 2, 2006 (hereinafter “Nehab”) Stimpson et al. US 2008/0066067 Al Mar. 13, 2008 (hereinafter “Stimpson”) REJECTIONS I. Claims 1, 7—11, and 17—22 are rejected under 35 U.S.C. § 101 as ineligible subject matter.2 II. Claims 1, 7, 8, 11, 17, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Knittel and Stimpson. III. Claims 9, 10, 19, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Knittel, Stimpson, and Cok. IV. Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Knittel, Stimpson, and Nehab. 2 The rejection under 35 U.S.C. § 101 was presented as a new ground of rejection in the Answer (pages 2-A). 4 Appeal 2015-005815 Application 13/541,556 FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS Subject-Matter Eligibility According to the rejection, applying the first of the two analytical steps described in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014), the claims in the Appeal “are directed to the abstract idea of performing a process in a multi-level hierarchy,” which is said to be a method of organizing human activity. Answer 4. Under the second Alice step, the rejection determines that the claims do not recite significantly more than the identified abstract idea, because the claims do not recite an improvement to another technology or to the functioning of a computer and that no more than a generic computer, performing generic functions, would be needed to implement the claimed subject matter. Id. With respect to the first Alice step, the Appellant argues that the Examiner’s analysis ignores meaningful limitations of independent claims 1, 11,21, and 22, and that claim 1 “fall[s] outside the definition of an ‘idea of itself or an abstract idea,” on account of the following recitations: wherein each of the initiate, execute, and complete performance indication operations comprise at least one of: measuring a time, measuring a quality, and measuring a cost; wherein each of the time, quality, and cost measurements comprise comparing an actual measurement with a goal to determine a difference between the actual measurement and the goal. 5 Appeal 2015-005815 Application 13/541,556 Reply Br. 31. The Appellant goes on to argue that claim 1 further recites the details of “software executed by a computer,” as well as particular operation inputs and outputs. Id. at 32. Yet, “[a]n abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Although the Appellant asserts that “the Examiner’s conclusion that claim 1 recites an abstract idea is based on an over-simplification of the claimed features of independent claim 1” (Reply Br. 33), the Appellant does not contend that claim 1 is not directed to “performing a process in a multi level hierarchy,” per the rejection (Answer 4), nor does the Appellant contend that the Examiner’s characterization of claim 1 is not an abstract idea. Thus, the Appellant does not persuade us of error, as to the first step of the Alice analysis. The second Alice step inquires as to whether the claim contains “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 (alteration in original) (quoting Mayo, 132 S. Ct. at 1294). This second step is not satisfied by “[sjimply appending conventional steps, specified at a high level of generality.” Id. at 2357 (quoting Mayo Collaborative Servs. v Prometheus Labs., Inc., 132 S. Ct. 1289, 1300 (2012)). In regard to this inquiry, the Appellant submits that the invention “provide[s] a major improvement to a technological field — service oriented architecture,” by providing a common and predictable method and system for process logic and an explicit separate management of rules, information, data, and specifications. Reply Br. 34. In support of this position, the 6 Appeal 2015-005815 Application 13/541,556 Appellant refers to the Specification’s account of various advantages provided by the disclosed subject matter. Id. at 34—36. Turning to the claims on Appeal themselves, the Appellant contends that independent claim 1 and dependent claims 7, 8, and 9 recite elements that allegedly satisfy the second Alice step. See Reply Br. 36. However, the Appellant does not identify particular limitations (or combinations thereof) that result in any of these claims reciting significantly more than the identified abstract idea. With respect to independent claim 1, the Appellant does not identify any elements that might constitute something more than the proposed abstract idea. See id. at 36. Instead, the Appellant contends that the limitations of claim 1 are not generic and conventional, because the Examiner presented no evidence to the contrary and because the claim is not anticipated or obvious in view of the prior art. Id. Yet, as to the Appellant’s evidentiary point, because subject-matter eligibility is treated as a question of law (see OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015)), the issue may be resolved without supplemental factual findings. Further, contrary to the Appellant’s assertion, a determination of novelty or nonobviousness would not demonstrate subject-matter eligibility. See Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013) (“Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.”); Diamond v. Diehr, 450 U.S. 175, 188—89 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”); Intellectual Ventures ILLC v. Symantec Corp., 7 Appeal 2015-005815 Application 13/541,556 838 F.3d 1307, 1315 (Fed. Cir. 2016) (“While the claims may not have been anticipated or obvious because the prior art did not disclose ‘determining . . . whether each received content identifier matches a characteristic’ or ‘outputting ... an indication of the characteristic of the data file,’ that does not suggest that the idea of ‘determining’ and ‘outputting’ is not abstract, much less that its implementation is not routine and conventional.”) Accordingly, we are not persuaded by the Appellant’s argument that claim 1 recites elements that amount to more than the identified abstract idea, under the second Alice step. The Appellant also argues that dependent claims 7, 8, and 9 satisfy the second Alice step. See Reply Br. 36. According to the Appellant, claim 7 “enables enterprises to link innovations with performance expectations.” Id. Yet, claim 7 does not accomplish this proposed outcome. Claim 7 simply recites that an “innovation operation” — set forth with no specificity — occurs as part of base claim l’s “initiate,” “execute,” and “complete” operations. The Appellant argues that claim 8 “provides additional specificity by listing the elements of innovation that can influence performance attainment — strategy change, process change, organization change and technology change,” such that “[cjlaim 8 guides enterprises to link process performance expectations with specific performance enablers.” Id. However, rather than providing such “guidance],” claim 8 simply adds the terms “strategy change,” “process change,” “organization change” and “technology change” (to the respective “initiate innovation operation,” “execute innovation operation,” and “complete innovation operation”), without further detailing 8 Appeal 2015-005815 Application 13/541,556 what these generic categories involve, let alone how the proposed improved performance might be accomplished. In addition, the Appellant argues that claim 9 “establishes the Multi- Level Hierarchy as a common and predictable process methodology at any level of hierarchy in an enterprise.” Id. Claim 9 recites: “The method of Claim 1, further comprising performing initiate, execute, and complete operations for each level in the multi-level hierarchy.” Yet, contrary to the Appellant’s assertion, claim 9 does not indicate — and the Appellant does not otherwise explain — why the recitations of the claim would purportedly “establish[ ] the Multi-Level Hierarchy as a common and predictable process methodology.” Id. Thus, we are not persuaded that any of dependent claims 7, 8, and 9 — or any of the other claims on appeal — contains elements amounting to significantly more than the identified abstract idea. Accordingly, we sustain the rejection of claims 1, 7—11, and 17—22 under 35 U.S.C. § 101. Obviousness The Appellant contends that independent claim 1 was rejected erroneously, because Knittel does not teach or suggest the recited “each of the time, quality, and cost measurements compris[ing] comparing an actual measurement with a goal to determine a difference between the actual measurement and the goal.” See Appeal Br. 36—39.3 See also Reply Br. 9— 12. 3 The Appeal Brief referenced herein is entitled “Supplemental Appeal Brief’ (filed July 1, 2014) — so identified, by the Appellant, in order to 9 Appeal 2015-005815 Application 13/541,556 The Final Office Action cites paragraphs 72 and 92 of Knittel, in regard to this feature. Final Action 4. In addition, the Answer indicates that the claimed feature is “taught by Knittel,” but without identifying any particular portion thereof. Answer 5. However, although Knittel’s paragraph 72 mentions “decomposi[ng] . . . goals . . . into levels of differing granularity,” it says nothing about the claimed “comparing an actual measurement with a goal to determine a difference between the actual measurement and the goal” — for any quantity. Additionally, although Knittel’s paragraph 92 does mention, for example, “differences between plans and results,” the passage lacks any disclosure relating such differences with any of the claimed “time, quality, and cost measurements.” Therefore, the Appellant persuades us of error in the rejection of independent claim 1. The same argument applies to independent claims 11, 21, and 22. See Appeal Br. 43, 51—52. Accordingly, the rejections of independent claims 1, 11,21, and 22 — and of dependent claims 7—10 and 17—20 — under 35 U.S.C. § 103(a) are not sustained. DECISION We AFFIRM the Examiner’s decision rejecting claims 1, 7—11, and 17-22 under 35 U.S.C. § 101. We REVERSE the Examiner’s decision rejecting claims 1, 7—11, and 17-22 under 35 U.S.C. § 103(a). distinguish it from the paper filed on May 5, 2014, prior to re-opening of prosecution through the Final Office Action of May 29, 2014. See Appeal Br. 4. 10 Appeal 2015-005815 Application 13/541,556 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 11 Copy with citationCopy as parenthetical citation