Ex Parte Fox et al

Patent Trial and Appeal Board

Aug 22, 2018

12636258 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/636,258 12/11/2009
51444 7590 08/24/2018
COOPER LEGAL GROUP/ ORACLE
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131
FIRST NAMED INVENTOR
Christina A. Fox
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.
15600-33 1964
EXAMINER
SHANKER, TIJLIE MEYERS
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
MUthoff@CooperLegalGroup.com
DDay@CooperLegalGroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTINA A. FOX, JEFFREY K. WAGNER,
PATRICKJ. ALLIN, andJOHNW. SMITH
Appeal2017-002448
Application 12/636,258 1
Technology Center 3600
Before LARRY J. HUME, SCOTT B. HOWARD, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 5, 6, and 9-25, which constitute all claims pending
in the application. Claims 4, 7, 8, and 26-28 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Textura Corporation as the real party in interest. App.
Br. 3.
Appeal2017-002448
Application 12/636,258
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to management of a construction
project, and specifically, to managing construction project bidding and
prequalification of bidders. Abstract; Spec. ,r,r 2--4. According to the
background of Appellants' Specification, the process of completing
prequalification applications typically is "tedious and time-consuming"
because different general contractors, while requiring "similar" data in the
applications, use different formats. Spec. ,r 3. Appellants' invention is
intended to reduce redundancies in the application process. Id.
Claim 1, the sole independent claim, is illustrative of the invention
and the subject matter of the appeal, and reads as follows:
1. A computer-based construction project prequalification
system comprising a network-based server including a
processor and a computer-readable memory that stores
computer-executable instructions that, when executed on the
processor, cause the server to:
establish electronic communication between the server
and a first device through a network;
electronically receive business information for a first
organization from the first device through the network, wherein
the business information includes a plurality of data items
relating to the first organization;
electronically receive a request from a second organization
for a subset of data items from the plurality of data items relating
to the first organization, wherein the subset of data items is
defined by the second organization;
create a first aggregated data document for the first
organization including a plurality of data items;
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Application 12/636,258
access a mapping file identifying a participant associated
with the second organization for each of the plurality of data
items included in the first aggregated data document, wherein the
participant identified for each of the plurality of data items is
responsible for approving the data item on behalf of the second
organization;
make individual data items included in the plurality of data
items included in the first aggregated data document available to
a participant associated with the second organization for
approval of the individual data item based on the mapping file;
receive, for each of the data items included in the first
aggregated data document, an approval from the participant for
the data item;
generate a final aggregated approval document including
each of the approved data items;
display the final aggregated approval document to the
second organization;
receive a final approval of the displayed final aggregated
approval document from the second organization; and
store a prequalification indication on the computer-
readable memory after receiving the final approval, the
prequalification indication indicating that the first organization
is approved to submit bids to the second organization for
construction projects.
App. Br. 23-24 (Claims App'x) (emphases added).
The Rejections on Appeal
Claims 1-3, 5, 6, and 9-25 are rejected under 35 U.S.C. § 101 as
directed to ineligible subject matter. Final Act. 4--6.
Claims 1-3, 5, 6, 9-14, 16, 17, and 25 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Cullen III et al. (US
2003/0200168 Al; Oct. 23, 2003) ("Cullen"), Aniszczyk et al. (US
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Application 12/636,258
2007/0300148 Al; Dec. 27, 2007) ("Aniszczyk"), Petrogiannis (US
6,912,660 Bl; June 28, 2005) ("Petrogiannis"), and Viswanath et al. (US
2003/0177070 Al; Sept. 18, 2003) (Viswanath"). Final Act. 6-29.
Claim 15 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Cullen, Aniszczyk, Petrogiannis, Viswanath, and El
Emam et al. (US 2007/0050701 Al; Mar. 1, 2007). Final Act. 29--31.
Claim 18 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Cullen, Aniszczyk, Petrogiannis, Viswanath, and Smith
(US 2006/0149658 Al; July 6, 2006). Final Act. 31-33.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 4I.37(c)(l)(iv). On the record before us, we are not persuaded
the Examiner erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner's
Answer, and provide the following discussion for highlighting and emphasis.
Re} ection Under 3 5 US. C. § 101
Appellants argue the Examiner erred in rejecting the claims as
directed to ineligible subject matter, namely, the abstract idea of organizing
and formatting business data. 2 App. Br. 9--10; Reply Br. 3; Ans. 2-3.
Appellants contend the claims are not abstract because they do not preempt
all types of organizing and formatting of business data for approvals. App.
2 Appellants argue all claims as a group, and we choose claim 1 as
representative of the group. 37 C.F.R. § 4I.37(c)(4).
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Br. 10. Appellants further argue that even if the claims are directed to an
abstract idea, they recite "significantly more" than the abstract idea, namely,
compiling a document and approving individual data items. We, however,
are not persuaded by Appellants' arguments.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court has long held that this
provision contains an implicit exception: "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)).
The Court has set forth a two-part inquiry to determine whether this
exception applies. First, we must "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Alice, 134 S. Ct. at
2355 (citation omitted). Second, if the claims are directed to one of those
patent-ineligible concepts, we consider "the elements of each claim both
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 Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). Put differently, we
must search the claims for an "inventive concept," that is, "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
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Application 12/636,258
concept] itself."' Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566 U.S.
at 72-73).
Regarding step one of the Alice analysis, as the Examiner observes,
claim 1 is directed to "receiv[ing]" requests for data, "creating" documents
( data), "access[ing]" data (mapping file), "display[ing]" data, "generat[ing]"
data (approval document), and "storing" data (prequalification indication).
Ans. 3--4; App. Br. 23-24. Such data manipulation encompasses an abstract
idea. See, e.g., Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent-ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). We, therefore, agree with the Examiner's conclusion that the claim is
directed to the "organization, formatting and approval of business data,
which can be performed mentally and is an abstract idea." Ans. 3.
Appellants' argument to the contrary is sparse, and unpersuasive.
Appellants argue claim 1 is not abstract because it requires "access[ing] a
mapping file that identified a participant associated with an organization."
App. Br. 10. This limitation, however, simply refers to collecting data. See
supra. Similarly, we are unpersuaded by Appellants' argument that the
claims do not preempt the field of business approvals. App. Br. 9-11; Reply
Br. 2-3. Although "preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility."
FairWarning, 839 F.3d at 1098 (quoting Ariosa Diagnostics, Inc. v.
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Application 12/636,258
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015), cert,
denied, 136 S. Ct. 701, 193 (2015) ("[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract."). Where, as here, "a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework ... preemption concerns are fully addressed and
made moot." Ariosa, 788 F.3d at 1379. 3
In the Reply Brief, Appellants argue the claims are similar to those
held patent-eligible in McRO. Reply Br. 5 ( citing McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). The claims in
McRO recited a "specific ... improvement in computer animation" using
"unconventional rules that relate[ d] sub-sequences of phonemes, timings,
and morph weight sets." McRO, 837 F.3d at 1302---03, 1307---08, 1314--15.
In McRO, "the incorporation of the claimed rules, not the use of the
computer," improved an existing technological process. Id. at 1314.
Appellants do not, however, identify how claim 1 improves an existing
technological process. See Alice, 134 S. Ct. at 2358 (explaining that "the
claims in Diehr were patent eligible because they improved an existing
technological process"). Rather, claim 1 concerns a "computer-based
construction project prequalification system." App. Br. 23. In addition,
3 Appellants argue the absence of preemption under Alice step one. App. Br.
9--11; Reply Br. 2-3. Our analysis of step two, however, also bears on our
conclusion that the absence of preemption does not demonstrate the claims
are directed to patent-eligible subject matter.
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Appellants do not direct us to any evidence that the claimed data request,
storage, and generating steps correspond to unconventional rules.
Accordingly, we are not persuaded the Examiner erred in step one of
the Alice analysis, and we proceed to step two.
In the second step of our analysis under Alice,
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. 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]."
Alice Corp., 134 S. Ct. at 2357 (internal citations omitted). Appellants'
argument under step two is largely redundant to the arguments under step
one. Specifically, Appellants argue the claims recite "compiling a document
containing data items relating to prequalification" and "approving the
individual data items." App. Br. 17. Appellants assert these "details define
an improvement over another technology- prequalification systems." Id.
at 18. Appellants, however, do not identify the alleged technological
improvement, or identify anything other than generic computing elements
that carry out the claim limitations. Spec. ,r,r 26-27 ( describing a "server,"
"memory device," "processor," and "data items," explaining the "executable
instructions can be provided in any appropriate computer language," and
describing a variety of standard computer devices that may be used).
Appellants do not attempt to explain how any of these elements would
be understood as anything other than generic computing elements, which
"do not alone transform an otherwise abstract idea into patent-eligible
subject matter." FairWarning, 839 F.3d at 1096 (Fed. Cir. 2016) (citing
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DDR Holdings, LLC, v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.
Cir. 2014)); Ans. 3.
Accordingly, Appellants do not persuade us the Examiner erred in the
second step of the Alice analysis. We sustain the rejection of claims 1-3, 5,
6, and 9-25 as directed to ineligible subject matter.
Rejections Under 35 US.C. § 103
Appellants argue the Examiner erred in finding the prior art teaches or
suggests "electronically receive a request from a second organization for a
subset of data items from the plurality of data items relating to the first
organization, wherein the subset of data items is defined by the second
organization," as recited in claim 1. App. Br. 20 ( emphasis in original).
Appellants further argue the Examiner also erred in finding the prior art
teaches or suggests "create a first aggregated data document for the first
organization including a plurality of data items," as also recited in claim 1.
Id. at 20-21. Appellants, however, provide little explanation in support of
their arguments, simply stating "Cullen fails to describe such features" and
"Aniszczyk fails to bridge the gap." Id. at 20. Appellants' conclusory
arguments do not persuade us of error.
As the Examiner finds, Cullen teaches a computer-based construction
project prequalification system, wherein a buyer organization electronically
sends vendor qualification criteria and receives a subset of data items stored
as vendor qualification data. Ans. 13-14; Final Act. 8; Cullen Fig. 6, ,r,r 5,
79-81. Cullen further teaches outputting ( displaying) qualified vendor
information, including vendor information specified by the buyer. Ans. 14;
Final Act. 9; Cullen ,r 81. Although Cullen does not expressly disclose the
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output is a "first aggregated data document," the Examiner finds this feature
in Aniszczyk. Ans. 14; Final Act. 10-11; Aniszczyk Fig. 5, ,r,r 30-31, 49.
Appellants have not explained the alleged error in these findings, nor
addressed the combined teachings of Cullen and Aniszczyk. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.").
Accordingly, Appellants have not persuaded us the Examiner erred in
the obviousness rejection of claim 1. For the same reasons, we are not
persuaded by Appellants' argument that the remaining claims are "allowable
for at least the same reasons as claim 1." App. Br. 21. We, therefore,
sustain the Examiner's obviousness rejections of claims 1-3, 5, 6, and 9-25.
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 5, 6,
and 9-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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