Ex Parte Garg et al

Patent Trial and Appeal Board

Apr 28, 2017

10750046 (P.T.A.B. Apr. 28, 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.
10/750,046 12/30/2003 Shailendra Garg OIC0194US 9148
137610 7590 05/02/2017
Sheppard Mullin Richter & Hampton LLP ■
Oracle International Corporation
379 Lytton Ave.
Palo Alto, CA 94301
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAILENDRA GARG, GURKAN SALK, RAMASWAMY
SUNDARARAJAN, and MARIA THERESA BARNES LEON
Appeal 2015-000379
Application 10/750,0461
Technology Center 3600
Before, JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
MATTHEW S. MEYERS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1—28. We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify Oracle Corporation as the real party in interest. Br. 2.
Appeal 2015-000379
Application 11/750,046
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants’ claims relate to modeling of opportunity data (from
Spec.).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method comprising:
receiving data in a source format, wherein
the data in the source format is received from a source
application, and
the source application is configured to use the source
format; and
transforming the data in the source format into data in a
common format, wherein
the transforming is performed by the integration
server,
the common format is a format used by the
integration server,
an opportunity data model is configured to define a
set of relationships between an opportunity
and a plurality of entities related to the
opportunity as attributes of the opportunity,
the opportunity data model defines the common
format,
the common format is configured to facilitate
transforming data in the source format into
data in the common format,
the common format is configured to facilitate
transforming data in the common format
into data in a target format,
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the data in the common format and the data in the source
format are stored at the integrating server; and
transforming the data in the common format into data in the
target format,
wherein
the transforming is performed by the integration server.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Chin WO 01/43031 A1 June 14, 2001
The following rejections are before us for review2.
Claim 26 is rejected under 35U.S.C.§ 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter.
Claims 1—6, 8—13, and 15—28 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Chin.
Claims 7 and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Chin.
Claims 1—28 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
2 The Examiner has withdrawn the rejection of claims 1, 6, 8, 11, 15 18, 20,
22, and 23 under 35 U.S.C. § 112 first paragraph. (Answer 18).
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ANALYSIS
35 U.S.C. § 103 REJECTION
Each of independent claims 1, 8, 11, 15, 18, 20, 22, and 23, in one
form or another, recites, in pertinent part, the steps of,
the opportunity data model defines the common format,
the common format is configured to facilitate transforming data in the
source format into data in the common format,
the common format is configured to facilitate transforming data in the
common format into data in a target format,
the data in the common format and the data in the source format are
stored at the integration server;... .
Appellants argue that,
Chin’s project manager module 8 (hereinafter module 8) does
not perform anything even remotely comparable to a
transformation, much less transforming data in a source format
into data in a common format. Chin’s module 8 simply obtains
and stores detailed information such as a project category,
sponsor type, price, location, condition, etc. See Chin, Pg. 9,
Line 11 et. seq. Indeed, module 8 receives information inputted
by a sponsor and stores that information such that the
information is available through the referral system to a
plurality of recipients in the format in which that information is
received. At most, module 8 performs two functions - (1) it
receives information from a sponsor and (2) it stores and
arranges the information in a manner that is pre-determined by
the referral system (e.g., to be available to a plurality of
sponsors). Simply making such information available (e.g.,
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through the referral system) that is stored and arranged by
Chin’s system is in no way comparable or equivalent to the
claimed multiple format transformations. Module 8 does not
receive data from a source application in a particular source
format (that is to be transformed) nor does module 8 perform
any transformation of this information, much less to a common
format (that is different than the source format). Unlike Chin,
the present invention does not simply rearrange the claimed
data, but instead changes the actual format of the data into a
common format.
(Appeal Br. 16).
The Examiner however found that in Chin,
the common format is configured to facilitate transforming data
in the common format into data in a target format (i.e. may be
interpreted as the conversion of the inputted information system
by the sponsor by the information escrow manager module 20
“transforms” the opportunity data/model in a common format
where the common format into “target format” which is the
format containing the information that is presented after the
business rules, user preference, and event-specific user
permissions have been implemented),... .
(Final Act. 5).
We agree with Appellants. Our review of Chin shows that the
information escrow manager module 20 is only “configured to use business
rules, user preferences, and event-specific user permissions to disclose
collected information to various parties.” Chin, 12:20—21. Chin further only
discloses that “the identity manager module also tracks the relationships
between the e-mail identities and sponsoring organizations. Sponsoring
organizations can add employees as new users to the system, with various
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privileges in the context of the organization, e.g., ability to create projects.”
Id. 14:11—17. We do not find that adding privileges to a system user
constitutes transforming source data into data in the common format, and
then transforming data in the common format into data in a target format.
Even considering the user identity as a format, nothing in adding access
rights to data gives the format of the user any change. Format involves the
arrangement of material3, which does not occur here by simply adding
privileges.
We therefore will not sustain the rejection of independent claims 1, 8,
11, 15, 18, 20, 22, and 23, nor those claims which depend therefrom.4
35 U.S.C. § 101 REJECTION
Independent Claims 1 and 8 are drawn to a method; independent
claims 11, 15, 18, 20, 22, and 23 are drawn to one of an apparatus and a
system. All independent claims contain the core feature of “multiple data
transformations.” (Appeal Br. 15)
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
3 See, https://www.merriam-webster.com/dictionary/format (last visited
4/24/2017).
4 The obvious rejection of claims 7 and 14 does not remedy the shortfalls
discussed above concerning Chin.
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those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . 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. [The Court] described step two of
this analysis 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 Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
While the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves, and the
Specification, provide enough information to inform one as to what they are
directed to.
Representative claim 1 recites, in pertinent part, “opportunity data
model defines the common format, the common format is configured to
facilitate transforming data in the source format into data in the common
format, the common format is configured to facilitate transforming data in
the common format into data in a target format, the data in the common
format and the data in the source format are stored at the integration
server;... . ” These steps result in a format being changed from one form to
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another. “The transformation store 212 also contains transformations for
transforming information received from the business systems 204 to the
format used by the data model 210, and vice versa.” Specification 11:131.
The Specification states that an algorithm is used to drive the process. “An
algorithm is here, and generally, conceived to be a self-consistent sequence
of steps leading to a desired result.” Specification 6:114. Thus, all this
evidences that the claims are drawn to an algorithm which changes the
formatting of data in different forms.
It follows from prior Supreme Court cases, and Gottschalk v. Benson,
409 U.S. 63 (1972) in particular, that the claims at issue here are directed to
an abstract idea. Like the algorithm in Gottschalk, the claimed algorithm
which changes the formatting of data in different forms is a mathematical
algorithm that preempts all implementations and uses. Thus, rearranging
data is an “abstract idea” beyond the scope of § 101. See Alice Corp. Pty.
Ltd. 134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of performing a mathematical algorithm in Gottschalk
and the concept of an algorithm which changes the formatting of data in
different forms, at issue here. Both are squarely within the realm of
“abstract ideas” as the Court has used that term. See Alice Corp. Pty. Ltd.
134 S. Ct. at 2357. That the claims do not preempt all forms of the
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abstraction or may be limited to the abstract algorithm which changes the
formatting of data in different forms, does not make them any less abstract.
See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360—1361 (Fed.
Cir. 2015).
The introduction of a computer and devices into claims 11, 15, 18, 20,
22, and 23 does not alter the analysis at Mayo step two.
the 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 “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (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.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
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Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data and compute a format from a common format to a
target format amounts to electronic data query, retrieval and computation—
one of the most basic functions of a computer. All of these computer
functions are well-understood, routine, conventional activities previously
known to the industry. 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/system add nothing that is not already present when the
steps are considered separately. Viewed as a whole, Appellants’ method
claims simply recite the concept of advising one of how to evaluate some
impact measure as performed by a generic computer. The method claims do
not, for example, purport to improve the functioning of the computer 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 rearranging data. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd. 134 S. Ct. at 2360.
Thus, the structural claims
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
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This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd. 134 S. Ct. at 2360 (alterations in original).
We therefore affirm the rejection of claims 1—28 under 35 U.S.C.
§101.
35 U.S.C. § 112 SECOND PARAGRAPH REJECTION
Appellants do not address the rejection of claim 26 under this section,
and hence we summarily affirm this rejection.
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1—6, 8—13, and
15-28 under 35 U.S.C. § 102.
We conclude the Examiner did err in rejecting claims 7 and 14 under
35 U.S.C. § 103.
We conclude the Examiner did not err in the rejection of claims 1—28
under 35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claim 26 under 35
U.S.C. § 112, second paragraph.
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DECISION
The decision of the Examiner to reject claims 1—28 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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