Ex Parte Hernandez et al

Patent Trial and Appeal Board

May 16, 2018

12015020 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/015,020 01/16/2008
48062 7590 05/18/2018
RYAN, MASON & LEWIS, LLP
2425 Post Road
Suite 204
Southport, CT 06890
FIRST NAMED INVENTOR
Milton H. Hernandez
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.
YOR920070690US 1 1621
EXAMINER
KONERU, SUJAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
05/18/2018 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):
ctoffice@rml-law.com
kmm@rml-law.com
mjc@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIL TON H. HERNANDEZ, RANI T. JAMJOOM,
ARJUNNATARAJAN, THIRUMAL R. NELLUTLA,
SREERAM RAMAKRISHNAN, DEBANJAN SAHA,
RAMENDRA K. SAHOO, ANEES A. SHAIKH,
and MITHKAL M. SMADI
Appeal2017-003505 1
Application 12/015,0202
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRADLEY B. BA YAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
BAY AT, 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, 4, 7, 8, 12-17, 19-21, and 23, which are all the
pending claims in the application. We have jurisdiction under
35 U.S.C. § 6(b).
1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed Sept.
2, 2016), Reply Brief ("Reply Br.," filed Dec. 30, 2016), the Examiner's
Answer ("Ans.," mailed Nov. 1, 2016), and the Final Office Action ("Final
Act.," mailed Apr. 14, 2016).
2 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 1.
Appeal2017-003505
Application 12/015,020
CLAIMED INVENTION
The claimed invention relates to "information technology (IT)
related processes." Spec. 1:4--5. Claims 1, 8, 15, 19, and 23 are the
independent claims on appeal. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A method for creating an interactive mechanism,
comprising the steps of:
preparing one or more lean principles as a process model;
annotating the process model with multiple items of process
information comprising at least (i) one or more tasks associated with
the process, (ii) one or more accounts associated with the process, (iii)
one or more clusters associated with the process, (iv) one or more
links associated with the process, (v) information pertaining to one or
more role players associated with the process comprising contact
information with one or more links to each of the one or more role
players, (vi) an input requirement associated with the process, (vii)
an output requirement associated with the process, and (viii) one or
more desired functions associated with the process; and
creating an interactive mechanism based on the annotated
process model, wherein the interactive mechanism comprises an
interactive journal that generates and displays a user interface to
enable user feedback pertaining to the annotated process model,
wherein said user feedback comprises (i) comments pertaining to the
process and (ii) suggestions for future implementation of the process
based on the user's role in the process, wherein the interactive journal
further records the identity of the user providing the user feedback via
one or more visible logs, and wherein creating the interactive
mechanism further comprises using a set of multiple necessary and
sufficient requirements for the process as one or more pre-requisites
and one or more co-requisites for creating the interactive mechanism;
and
wherein the steps are performed by at least one hardware
device.
App. Br. 14 (Claims App'x).
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ANALYSIS
The Examiner rejected claims 1, 3, 4, 7, 8, 12-17, 19-21, and 23
under 35 U.S.C. § 101 as being directed to a judicial exception without
significantly more. Final Act. 3--4. In contesting the rejection, Appellants
argue claims 1, 3, 4, 7, 8, 12-17, 19-21, and 23 as a group. App. Br. 9-13;
Reply Br. 2---6. We select independent claim 1 as representative for this
group. Thus, claims 3, 4, 7, 8, 12-17, 19-21, and 23 stand or fall with claim
I. See 37 C.F.R. § 4I.37(c)(l)(iv).
In determining whether the claims on appeal are directed to patent-
ineligible subject matter, the Examiner applied the now common two-step
framework introduced in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012) and further explained by the Supreme
Court in Alice Corp. Pty. v. CLS Bank International, 134 S. Ct. 2347 (2014).
The first step in that analysis is to determine whether the claim at issue is
directed to a patent-ineligible concept such as an abstract idea. Alice, 134 S.
Ct. at 2355. If so, the inquiry proceeds to step two to look at the claim for
"something more" by "examin[ing] 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." Id. at 2354, 2357
( quoting Mayo, 566 U.S. at 72, 80). This inventive concept must do more
than simply recite "well-understood, routine, conventional activity." Mayo,
566 U.S. at 79.
Applying this framework, and as the first step of that analysis, the
Examiner determined that the claims are
directed to the abstract idea of creating an interactive
mechanism comprising the steps of preparing one or more lean
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principles as a process model, annotating the process model
with multiple items of process information comprising tasks
associated with the process, accounts, clusters, links,
information pertaining to one more role players comprising
contact information with one more links to role players, input
requirements, output requirements, desired functions and
creating the annotated process model and identifying multiple
annotation attributes comprising at least a goal, indication of
who performs the process, an indication where the process is
performed and how to validate. The claims can be considered
analogous to organizing human activities because enterprise
processes can be considered human activities and modeling is a
type of organization of such data.
Final Act. 4.
Appellants argue: (1) "the Examiner's characterization that 'the
claims involve management of human activities' is in error"; and (2) "the
specific limitations of the pending claims affirmatively include 'an
improvement in computer capabilities,' per the appropriate inquiry put forth
in Enfzsh, 3 and thereby satisfy the first part of the Alice/Mayo framework as
being directed to patent-eligible subject matter." App. Br. 10-11 (quoting
Spec. 8:27-9:8, 9:23-26).
Responding to Appellants' arguments, the Examiner asserts: ( 1)
[t]he claims can be considered analogous to organizing human
activities because enterprise processes can be considered human
activities and modeling is a type of management and
organization of such data. The modeling of data and the
presentation of such in the form of an interactive journal is also
3 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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similar to how obtaining and comparing intangible data was an
abstract idea in Cybersource4;
and (2) "that this language [in the Specification] merely shows an
improvement to the abstract idea. If there is any support for use of
computers related to this section of the [S]pecification, it would be for
merely using a computer to automate a process." Ans. 3--4.
We are not persuaded of Examiner error because Appellants do not
advance any arguments that explain why the Examiner's actual
determination of the abstract idea is flawed. In fact, Appellants merely
disagree with an abstract idea ("the claims involve management of human
activities" (App. Br. 9, 10)) that was not proffered by the Examiner. Cf
Final Act. 4. In the Reply Brief, Appellants assert that "the Examiner fails
to significantly discuss the active and physical step of' the creating step of
claim 1. Reply Br. 3. But, it is clear from the Examiner's description of the
abstract idea that the creating step was considered by the Examiner.
Moreover, the "directed to" inquiry applies a stage-one filter to the claim,
which is based on whether the character of the claim as a "whole is directed
to excluded subject matter,"5 instead of a piecemeal itemization of each of
the claim limitations.
We also find unpersuasive Appellants' argument (2) that the
Specification describes an improvement in computer capabilities, because
4 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011)
5 See Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015); see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d
1369, 1376 (Fed. Cir. 2016); and Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016).
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Appellants simply reproduce portions from the Specification without any
explanation as to how those disclosures reflect an improvement to computer
capabilities in relation to the claimed subject matter. Furthermore,
Appellants did not contest the Examiner's interpretation of those cited
sections of the Specification or rebut the Examiner's response in their Reply
Brief. See Ans. 4 (interpreting the Specification as using a computer to
automate a process).
Indeed, the Specification describes improvements in speed, time, and
effort, which are a direct result of automation. See, e.g., Spec. 4: 11-12
("Existing approaches to implement lean in an IT organization have several
limitations and inefficiencies."), 4: 17-19 ("[E]xisting approaches require
manual processing"), 9: 1-2 ("[T]he techniques described herein
significantly cut down the time needed to implement lean"), 5 :7-8
("consolidated view of measureable improvements resulting in a decrease in
deployment time"), 9: 15-16 ("Structured data, tightly coupled processes,
roles, accounts, and competencies enhance automatic tracking and on-
demand report generation."), 9:23-26 ("Applying lean principles as
transformed enterprise processes accelerates the operations with continuous
improvement, and significantly cuts down the time taken to implement lean
through standardized step by step evaluation, annotation and review
techniques."). "[R ]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible."
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
( citing Alice, 134 S. Ct. at 2359). In short, Appellants have not persuasively
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shown how the cited passages in the Specification demonstrate an
improvement to computer capabilities or functionality.
Turning to the second step of Alice, we agree with the Examiner and
conclude that claim 1 does not contain an inventive concept sufficient to
"'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355 (citation omitted). For example, claim I merely
requires that "the steps are performed by at least one hardware device" and
the Specification discloses generic devices for performing the claimed
invention. See Spec. 16:4--19 (Examples of a suitable device include
"general purpose processors" or "general-purpose computer or
workstation"). The introduction of a generic computer into a claim does not
alter the analysis.
Appellants argue
that if a set of "specific limitations" has been deemed not to be
anticipated, taught, or even suggested by a field of available art,
( as is the case with the instant claims) then the same set of
"specific limitations" cannot plausibly be simultaneously
argued as being "well-understood, routine and conventional in
the field."
App. Br. 12. We disagree.
Although the second step in the Alice framework is termed a search
for an "inventive concept," the analysis is not an evaluation of novelty or
nonobviousness, but rather, a search for "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 (quoting Mayo, 566 U.S. at 73). A novel and nonobvious
claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
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Mayo, 566 U.S. at 90. An abstract idea is not transformed into an inventive
concept just because the Examiner has not found prior art that discloses or
suggests it. Indeed, "[t]he '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." Diamond v. Diehr, 450 U.S. 175, 188-89
( 1981 ). "Groundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
The wording of the steps in claim 1 is such that they describe certain
objectives sought to be accomplished without providing any of the technical
details that may be necessary to accomplish them. The claim simply
provides the instruction toward achieving a result. The desired result is
unconnected to how the "preparing, annotating, and creating" as recited in
claim 1 should be performed to achieve it. "Generally, a claim that merely
describes an 'effect or result dissociated from any method by which [it] is
accomplished' is not directed to patent-eligible subject matter." Apple, Inc.
v. Ameranth, Inc., 842 F.3d 1229, 1244 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir.
2015)). "[S]imply appending conventional steps, specified at a high level of
generality, to ... abstract ideas cannot make those ... ideas patentable."
Mayo, 566 U.S. at 72. None of these individual steps, viewed "both
individually and 'as an ordered combination,"' transform the nature of the
claim into patent-eligible subject matter. Alice, 134 S. Ct. at 2355 (quoting
Mayo, 566 U.S. at 78-79). It is well-settled by now that stating an abstract
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idea "while adding the words 'apply it"' is not enough for patent eligibility."
Alice, 134 S. Ct. at 2358 (quoting Mayo, 566 U.S. at 72).
In view of the foregoing, we are not persuaded of Examiner error,
and, therefore, we sustain the rejection of independent claim 1 under 35
U.S.C. § 101, including claims 3, 4, 7, 8, 12-17, 19-21, and 23, which fall
with claim 1.
DECISION
The decision of the Examiner to reject claims 1, 3, 4, 7, 8, 12-17, 19-
21, and 23 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).
AFFIRMED
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