Ex Parte Hoff

Patent Trial and Appeal Board

Feb 28, 2017

11820701 (P.T.A.B. Feb. 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.
11/820,701 06/20/2007 Roland Hoff 2007P00200US 3646
/0035-021001
56056 7590 03/02/2017
BRAKE HUGHES BELLERMANN LLP
C/O CPA Global
900 Second Avenue South
Suite 600
MINNEAPOLIS, MN 55402
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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
following e-mail address(es):
uspto@brakehughes.com
docketing@brakehughes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLAND HOFF
Appeal 2015-0048721
Application 11/820,701
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the Examiner’s Final rejection of claims 1, 4—6,
9, 21, 23—26, and 28—36. We have jurisdiction to review the case under 35
U.S.C. §§ 134 and 6.
The invention relates generally to management of issues that may
arise with respect to business transactions. Spec. para. 1.
Claim 32 is illustrative:
1 The Appellant identifies SAP SE as the real party in interest. Appeal Br.
1.
Appeal 2015-004872
Application 11/820,701
32. A method for managing business transaction issues, the
method being performed by at least one processor, the method
comprising:
receiving a user-defined issue relating to a user;
determining whether the user-defined issue is consistent
with a role of the user, the user-defined issue representing an
event of relative importance to the user;
notifying the user if the user-defined issue is determined
as not consistent with the role;
saving the user-defined issue if the user-defined issue is
determined as consistent with the selecting the user-defined issue
that has been saved based on user selection information, the user-
defined issue including an issue-type and a plurality of user-
defined issue-definitions corresponding to sub-classes of the
issue-type, each user-defined issue-definition including one or
more values that define a respective sub-class, each user-defined
issue-definition being associated with a different priority level
among a plurality of priority levels, each priority level of the
plurality of priority levels being a value that represents the
relative importance of a respective sub-class to the user;
selecting a system-defined issue based on the role of the
user including determining the role of the user and selecting the
system-defined issue that corresponds to the determined role, the
system-defined issue having been defined by a person other than
the user, the system-defined issue including a system-defined
issue-definition, the system-defined issue-definition being
associated with a priority level;
determining an account associated with the user, the
account including business data of a plurality of business
transactions with one or more customers of the user;
determining a first transaction issue corresponding with a
first business transaction from the plurality of business
transactions based on a comparison of the business data with the
one of more values of the plurality of user-defined issue-
definitions included in the user-defined issue including selecting
the first transaction issue for which the first business transaction
meets the one of more values of at least one user-defined issue
definition;
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determining a second transaction issue corresponding with
a second business transaction from the plurality of business
transactions based on a comparison of the business data with the
system-defined issue-definition including selecting the
second transaction issue for which the second business
transaction meets the system-defined issue-definition;
assigning a first priority level to the selected first
transaction issue corresponding with the first business
transaction from the plurality of business transactions including
assigning the first priority level to the selected first transaction
issue corresponding to a priority level of the at least one user-
defined issue-definition which is met by the first business
transaction;
assigning a second priority level to the selected second
transaction issue corresponding with the second business
transaction including assigning the second priority level to the
selected second transaction issue corresponding to the priority
level of the system-defined issue-definition that is met by the
second business transaction; and
generating a report for display, the report including the
selected first transaction issue and the assigned first priority level
and the selected second transaction issue and the assigned second
priority level.
Claims 1, 4—6, 9, 21, 23—26, and 28—36 are rejected under 35 U.S.C.
§ 101 as reciting ineligible subject matter in the form of an abstract idea.
Claims 1, 4—6, 9, 21, 23—26, and 28—36 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Braverman (US 2002/0052812 Al, pub. May
2, 2002), Foster (US 2003/0206622 Al, pub. Nov. 6, 2003), Black
(US 7,117,172 Bl, iss. Oct. 3, 2006), and Sojian et al. (US 2006/0095541
Al, pub. May 4, 2006, hereinafter “Sojian”).
We AFFIRM.
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ANALYSIS
Rejection under 35 U.S.C. §101
The Appellant argues all claims together, so we select independent
method claim 32 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded by the Appellant’s arguments that the claims
are not directed to an abstract idea because they include “particular
limitations” in addition to “managing issues with respect to business
transactions.” Reply Br. 5—7. The Appellant also argues the claims are
directed to significantly more than an abstract idea because the claims are
“deeply rooted in the realm of computer networks.” Reply Br. 9; see also Id.
at 7—10.
The Examiner finds the claims are directed to “managing issues with
respect to business transactions through steps including receiving issues
according to a role, assigning priority levels to the issues, and generating
reports, including the issues and the priority levels for display which is a
fundamental economic practice.” Answer 2. We would refine the
Examiner’s finding, by indicating the claims are directed to comparing
information about an issue to determine whether the issue is consistent with
a role of a user that defined the issue, selecting other issues related to the
role, selecting business transactions from an account associated with the
user, assigning priority levels to the issues, and generating a report about the
issues and priorities.
We are not convinced by the Examiner’s finding that the claims are
directed to a fundamental economic practice, because we do not immediately
recognize these steps as being known to be long prevalent in our system of
commerce. In order to accept that the claims are directed to a fundamental
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economic practice, we would require additional evidence or reasoning. We
do, however, still find the claims to be directed to an abstract idea.
The Federal Circuit has held that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under § 101.”). Additionally, mental processes, e.g.,
making determinations, as recited in independent method claim 32, remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. CyberSource Corp., 654
F.3d at 1375 (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalkv. Benson, [409 U.S. 63 (1972)].”).
Here, all of the steps of the method can be performed entirely through
mental thought, with the use of pen and paper to generate the report to
display. The receiving of an issue, determining if that issue is consistent the
user’s role, identifying another issue based on the user’s role, finding
business transactions of a customer associated with the user, and setting
priorities for the issues, merely require thought and access to data about the
user, issues, and customer transactions. The generating of a report, and the
receiving of data, are merely input/output operations that do not alter the
analysis. The steps of the method claim are directed to an abstract idea
because they can be performed by human thought alone.
Turning to the second step of the Alice analysis, because we find that
claim 32 is directed to an abstract idea, the claim must include an “inventive
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concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself.
Claim 32, at best, adds only a processor, i.e., a generic computer
component, which does not satisfy the inventive concept. See Spec. para. 93
(“Method steps may be performed by one or more programmable processors
executing a computer program to perform functions by operating on data and
generating output.”). “[AJfter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible. The bare fact that a computer exists in the physical rather
than purely conceptual realm is beside the point.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
omitted).
Nothing in method claims 32—36 purports to improve computer
functioning or “effect an improvement in any other technology or technical
field.” Alice, 134 S. Ct. at 2359. Nor do claims solve a problem unique to
the Internet. See DDR Holdings, 773 F.3d at 1257. The claims also are not
adequately tied to “a particular machine or apparatus.” Bilski v. Kappos, 561
U.S. 593, 601 (2010).
Because claims 32—36 are directed to an abstract idea and nothing in
the claims adds an inventive concept, the claims are not patent-eligible under
§ 101. We find no meaningful distinction between independent method
claim 32 and either independent system claim 1, or independent medium
claim 28; the claims all are directed to the same underlying invention. As
the Federal Circuit has made clear “the basic character of a process claim
drawn to an abstract idea is not changed by claiming only its performance by
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computers, or by claiming the process embodied in program instructions on
a computer readable medium.” See CyberSource, 654 F.3d at 1375—76
(citing In reAbele, 684 F.2d 902 (CCPA 1982)).
Therefore, we sustain the Examiner's rejection of claims 1, 4—6, 9, 21,
23—26, and 28—36 under 35 U.S.C. § 101. However, because our rationale is
different than that of the Examiner, we denominate our affirmance as a new
ground of rejection.
Rejection of Claims 1, 4—6, 9, 21, 23—26, and 28—36 under 35 U.S.C.
$ 103(a)
We are persuaded by the Appellant’s arguments that nothing cited in
Braverman or Sojian discloses determining whether a user-defined issue is
consistent with a role of that user, which is recited in independent claims 1,
28, and 32.2 Appeal Br. 13, 15; see also Reply Br. 11—12.
The Examiner first finds that Braverman discloses the disputed
determining limitation at paragraphs 29 and 31, reasoning “the
authentication prevents a user from performing actions associated with a role
that is not possessed by the user a sales representative setting provisions for
receiving email notifications.” Final Act. 3; see also Answer 3—5. Next, the
2 Method claim 32 recites conditional method steps. Claim 32, broadly
construed, encompasses the performance only of the receiving, first-recited
determining, and notifying steps, in the case where the user-defined issue is
determined to be inconsistent with the user’s role, without any additional
steps being performed. See Ex parte Schulhauser, No. 2013-007847, 2016
WL 6277792, at *3-6 (PTAB April 28, 2016) (concluding the broadest
reasonable interpretation of a claim encompassed situations in which
conditional method steps “need not be reached”) (precedential).
Independent claims 1 and 28 are construed more narrowly because they
require the logic to perform all the method steps to be present.
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Examiner finds the same limitation disclosed in Sojian at paragraph 216,
which “discloses requiring credential authentication prior to granting a
notification subscription where a notification request comprising a user
credential is received and only when the credential is successfully
authenticated will the subscription request be granted, where the person that
is being authenticated represents the role of the user.” Final Act. 8—9; see
also Answer 5—6.
A user’s authentication may be set up consistent with a role of that
user, which enables or prevents actions that user may take. See, for example,
Braverman para. 29 (“upon log on and authentication as an agent (i.e., Sales
Representative (SR)), a Sales Representative Home Page 50 is generated”).
See also Sojian para. 216, (which uses well-known Access Control List
(ACL) security mechanisms to determine to which data and applications a
user is permitted access).
A user’s permitted access or authority, as established for and checked
by an authentication process, may relate to a role of that user, but the
authentication or access control does not perform a determination of whether
an issue reported by that user is consistent with the role of that user, as
claimed. The Examiner has not shown a disclosure in the prior art of
determining whether a user-defined issue is consistent with a role of that
user. For this reason, we do not sustain the rejection of claim 32 under 35
U.S.C. § 103(a), nor of dependent claims 33—36 that were rejected along
with claim 32.
Because independent claims 1 and 28 also disclose a substantially
identical determining step, we do not sustain the rejection of claims 1 and
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28, nor of dependent claims 4—6, 9, 21, 23—26, and 29-31 that were rejected
along with claims 1 and 28.
DECISION
We affirm the rejection of claims 1, 4—6, 9, 21, 23—26, and 28—36
under 35 U.S.C. § 101.
We reverse the rejection of claims 1, 4—6, 9, 21, 23—26, and 28—36
under 35 U.S.C. § 103(a).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the same record
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: 37 C.F.R, $ 41.50(b)
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