Ex Parte Hunur et al

Patent Trial and Appeal Board

Oct 26, 2017

12789476 (P.T.A.B. Oct. 26, 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.
12/789,476 05/28/2010 Nagaraj Mohan Hunur ORCL-129 8702
51121 7590
IPHORIZONS PLLC
C/O Landon IP
2318 Mill Road
12th Floor
Alexandria, VA 22314
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
lfnt2000@yahoo.com
oracle @ iphorizons. com
intercomm @ iphorizons. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAGARAJ MOHAN HUNUR, and ANOOP SHARMA
Appeal 2016-002247
Application 12/789,476
Technology Center 3600
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR, and
JON JURGOVAN, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3—8, 10-15, and 17—21, which constitute all claims pending in this
application.1 App. Br. 2. Claims 2, 9, and 16 have been canceled. Id. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Oracle International Corp.,
App. Br. 2.
Appeal 2016-002247
Application 12/789,476
Introduction
According to Appellants, the claimed subject matter relates to a
method and customer server system (120) using enterprise software to
facilitate user enrollment in benefits offered by an enterprise. Spec. Tflf 2, 29,
Fig. 1 and 2. In particular, upon receiving from a benefits administrator
(280) a plurality of attributes defining a user’s eligibility criteria, a processor
compares the received attributes with instances of available groups/types of
health plans to display on an interface a first subset of plan instances
corresponding to the first plan group/type for a first duration and a second
subset of plan instances corresponding the second group/type for a second
duration. Id. H 38-47. Each group is presented on the interface to the user
as a stop in a train to force the user to navigate only successive groups in the
train sequence. Id. at| 29. Upon the user selecting one of the displayed
eligible plan instances to enroll in, the administrator may proceed to enroll
the user in the selected plan. Id.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A method of enrolling users in benefits offered by an
enterprise, said method being implemented in a server system, said
method comprising:
providing a user interface for enabling a benefits administrator
to specify a plurality of plan instances and a plurality of groups,
said user interface containing a first screen displaying multiple
groups from which said benefits administrator selects said plurality of
groups,
said user interface also containing a second set of screens in
which said benefits administrator specifies each plan instance in one
of said plurality of groups,
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said benefits administrator further specifying eligibility criteria
for each of said plurality of plan instances;
receiving user data including attributes defining each user's
eligibility for each plan instance;
identifying an eligible set of plan instances a user is eligible for,
wherein a plan instance of said plurality of plan instances is included
in said eligible set by comparing attributes in said user data with said
eligibility criteria specified for said plan instance, wherein said
eligible set of plan instances contains a plurality of subsets of plan
instances with the plan instances of each subset of plan instances
having been specified by said benefits administrator as belonging to
corresponding one of said plurality of groups;
sending for selection based on display on a display unit, each of
said plurality of subsets of plan instances as belonging to respective
ones of said plurality of groups, wherein each subset of plan instances
is displayed for selection in a corresponding duration such that a first
subset of plan instances belonging to a first group is displayed for
selection in a first duration and a second subset of plan instances
belonging to a second group is displayed for selection in a second
duration, wherein said second duration follows said first duration; and
facilitating said user to subscribe to plan instances of interest
based on said eligible set of plan instances displayed on said display
unit,
wherein said user is allowed to select from only one of said
plurality of subsets of plan instances displayed on said display unit for
selection in the corresponding duration, wherein said user is allowed
to select only from said first subset of plan instances displayed on said
display unit during said first duration and only from said second
subset of plan instances displayed on said display unit during said
second duration,
wherein said facilitating comprises enforcing a sequence in
which said plurality of subsets of plan instances are traversed on said
display unit, wherein said first subset of plan instances immediately
follows a third subset of plan instances, but is immediately before said
second subset of plan instances in said sequence, said plurality of
subset of plan instances containing at least a fourth subset of plan
instances,
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Application 12/789,476
wherein said enforcing enforces that said user is enabled to navigate
to only a subset of plan instances adjacent to a current subset of plan
instances displayed for selection,
wherein said adjacent subset of plan instances comprises one of a
previous subset of plan instances or a next subset of plan instances, relative
to said current subset of plan instances, according to said sequence,
wherein in said first duration in which said first subset of plan
instances is said current subset, said user is enabled to navigate to only said
first subset of plan instances or said third subset of plan instances, but not
said fourth subset of plan instances, among said plurality of subset of plan
instances,
wherein the plan instances selected by said user in all of said plurality
of subsets of plan instances together represent said plan instances subscribed
to by said user,
said server system comprising a processor which retrieves instructions
from a memory and executes the retrieved instructions.
Rejections on Appeal
Claims 1 and 21 stand rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention. Final Act. 2—3.
Claims 1, 3—8, 10-15, and 17—21 stand rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter. Final Act. 3^4.
Claims 1, 4-8, 11-15 and 18-21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Esposito (US Pub. No.
2001/0051906), Babyak et al. (US Pub. No. 2008/0154648, hereinafter
referred to as "Babyak"), and Barry et al. (US Pub. No. 2005/0216421,
hereinafter referred to as "Barry"). Final Act. 4—8.
Claims 3,10 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Esposito, Babyak, Barry, and Warady
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Application 12/789,476
et al. (US Pat. No. 6,067,522, hereinafter referred to as "Warady"). Final
Act. 8—9.
ANALYSIS
Indefiniteness Rejection
Appellants argue that the Examiner erred in concluding that claims 1
and 21 are indefinite. App. Br. 10-13. First, Appellants argue that claim 1
is not indefinite because the eligible set of plan instances recited therein is
obtained by comparing the user eligibility data with the population of plan
instances. Id. at 11—12 (citing Figure 8). Therefore, the subset of eligible
plan instances includes one or more plan instances obtained from the
population of the plan instances. Id., Reply Br. 1. This argument is
persuasive.
We find no ambiguity in the cited claim language because one of
ordinary skill having would have been apprised of the scope the claim when
read in its entirety.2 In particular, as explained by Appellants, the ordinarily-
skilled artisan would appreciate that the eligible set of plan instances
includes one or more plan instances (i.e., eligible instances) selected by the
user subsequent to the comparison of the user eligibility data with population
of plan instances. That is, the ordinarily-skilled artisan would readily
2 "The legal standard for definiteness is whether a claim reasonably apprises
those of skill in the art of its scope." In re Warmerdam, 33 F.3d 1354, 1361,
(Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharmaceutical Co. Ltd.,
927 F.2d 1200, 1217 (Fed. Cir.1991)). The "inquiry therefore is merely to
determine whether the claims do, in fact, set out and circumscribe a
particular area with a reasonable degree of precision and particularity." In re
Moore, 439 F.2dl232, 1235, (CCPA 1971). In particular, a claim is
indefinite "where the language 'said lever' appears in a dependent claim
where no such 'lever' has been previously recited. ..." Ex parte Moelands, 3
USPQ2d 1474, 1476 (B.P.A.I. 1987).
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appreciate that the eligibility data set is a subset of one or more instances
obtained from the population of plan instances. Accordingly, we do not
sustain this rejection.
Second, regarding the indefiniteness rejection of claim 21, Appellants
argue the there is no confusion in the use of “plan type” and “plan group” as
they both pertain to the plan instances recited in the claim. App. Br. 12—13
(citing Figures 5A—5E). In particular, Appellants argue that the
administrator organizes the plan instances into groups subdivided by types
such that each plan instance is first associated with a plan type, which is in
turn associated with a group. App. Br. 13. Therefore, Appellants
characterize “group as the logical organization of entities the benefit
administrator specifies”, whereas “type is a property of the benefit plan”.
Reply Br. 1—2. This argument is persuasive.
Appellants’ Specification refers “plan group” as different categories
of plans (e.g. vision, dental, medical), and “plan type” as specific providers
participating in “plan group”. Spec. 9, Figure 5A, 5B, 5C. Therefore, a plan
instance associated with a plan type (e.g. Aetna Heath) is also associated
with the vision plan group. That is, Aetna (instance of plan type) refers to an
instance associated with the vision plan group. We thus agree with
Appellants that the ordinarily-skilled artisan would readily appreciate that
the recited plan instances are associated with corresponding plan types,
which are in turn associated with corresponding plan groups. Accordingly,
we do not sustain this rejection.
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Non-Statutory Subject Matter Rejection
Appellants argue the Examiner erred in concluding that claims 1, 3—8,
10-15, and 17—21 are directed to the abstract idea of “enrolling benefit plan
members through the selection of available plans, determination of
eligibility for plans and the presentation of benefit plan information.”3 App.
Br. 14. In particular, Appellants argue the following:
[T]he claim recites an improvement to a technical tool (i.e., benefits
enrolment system implemented via a digital processing system).
Unlike in Alice Corporation, the claimed subject matter is not in the
domain of financial transactions, which are conventional. Rather, the
independent claims of the subject patent application are directed to
improvements to technologically implemented benefit
enrollment system.
Furthermore, the claimed subject matter in (sic) not abstract at least in
the sense that it does not usurp a broad range of mental/business
activities, routinely implemented using generic computer functions.
Rather, the claim is directed to an improved user interface in a
specific technological context (i.e., benefits enrol[l]ment system).
In addition, the Examiner shows no evidence that the claimed
improved user interface in the specific technological context is "well
known, routine and conventional", contrary to Examiner's assertion of
above.
Also, the Examiner errs in asserting that the claimed "enrolling ,
determination ... and the presentation ... can be carried out by a human
using pen and paper,..." since the human use of pen and paper would
not entail the specific improvement in user interfaces, which is
presented only in the context of computer implemented environments.
The Examiner also asserts without any basis in law that the claims are
required to recite features"... that would make the invention
impossible to carry out manually."
3 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed July 31, 2015) (“App. Br.”), the Reply Brief
(filed December 18, 2015) (“Reply Br.”), and the Answer (mailed October
20, 2015) (“Ans.”) for the respective details.
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App. Br. 14-15.
Further, Appellants ague that even if the claims were directed to
abstract idea, they recite a combination of elements that amount to
significantly more than the abstract idea itself. App. Br. 15. According to
Appellants, the claimed subject matter is patent eligible under the rationale
of DDR Holdings, LLC v. Hotels.com, LP (Fed. Cir. 2014)). Therefore,
Appellants submit the subject matter of the claims:
do not merely recite the performance of some business
practice known from the pre-Internet world along with the
requirement to perform it on the Internet. Instead, the claimed
solution is necessarily rooted in computer technology in order
to overcome... the problem of multitude of user interfaces...
with corresponding constrained navigation, which qualifies as
an improvement over earlier provided user interfaces in benefits
enrollment systems.
Id. at 16.
These arguments are not persuasive.
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101T In the first step, we determine whether the claims are directed to one
or more judicial exceptions (i.e., law of nature, natural phenomenon, and
abstract ideas) to the four statutory categories of invention (i.e., process,
machine, manufacture, and composition of matter). Id. (citations omitted)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1296—97 (2012)) (“Mayo”). In the second step, we “consider the
elements of each claim both individually and ‘as an ordered combination’ to
4 Alice Corp. Pty. Ltd. v. CLSBankInt’l, 124 S. Ct. 2347, 2354 (2014).
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determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at
1297—98). In other words, the second step is to “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.’” Id. (citing Mayo, 132 S. Ct. at 1294).
At the outset, we note Appellants’ acknowledgement that the field of
the claimed subject matter pertains to enrolling employees in a benefits
management system. App. Br. 18—19. We thus echo the Examiner’s
conclusion that the claims are directed to the abstract idea of enrolling
individuals to benefit plans offered by an enterprise. Ans. 3. In particular,
we agree with the Examiner that acquiring user eligibility data to determine
which of the available plans the user should be enrolled in are steps
conventionally carried out by humans using pen and paper in the course of
enrolling employees in life insurance, health insurance, and other similar
benefit activities in the business environment. Id., see, e.g., Elec. Power
Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (claims directed
to collection, manipulation, and display of data); Intellectual Ventures ILLC
v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(customizing information and presenting it to users based on particular
characteristics); Content Extraction and Transmission LLC v. Wells Fargo
Bank, National Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“collecting
data,. . . recognizing certain data within the collected data set, and . . .
storing that recognized data in a memory”). That these claims are directed
to an abstract idea is confirmed by the fact that the claimed method of
calculating tariffs is of the type that could be performed manually. See
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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 § 101Prior to the
Internet, such activities became computerized in database systems with the
assistance of human administrators to facilitate the enrollment process, and
the management of such data. Although the claimed subject matter provides
an interface to facilitate benefits enrollment, its functions do not go beyond
those of a general purpose computer for merely receiving, storing,
comparing, and displaying information. Further, we agree with the
Examiner that the DDR Holdings precedent is not applicable here because
the claim subject matter merely recites the performance of a business
practice known from the pre-Internet era, and it is not necessarily rooted in
computer technology. Id. Instead, the claimed subject matter pertains to the
well-known practices of employing a database system for enrolling users in
benefits. Hence, we agree with the Examiner that the elements of claim 1
do not amount to “significantly more” than the abstract idea of using a
computer to facilitate benefits enrollment, or that they do not add any
meaningful limitations beyond generally linking the abstract idea to the
particular technological environment. Id.5 Accordingly, we affirm the
5 Considerations for determining whether a claim with additional elements
amounts to “significantly more” than the judicial exception itself include
improvements to another technology or technical field (Alice Corp., 134 S.
Ct. at 2359 (citing Diamond v. Diehr, 450 U.S. 175, 111—IS (1981)));
adding a specific limitation other than what is well-understood, routine
and conventional in the field, or adding unconventional steps that confine
the claim to a particular useful application (Mayo, 132 S. Ct. at 1299, 1302);
or other meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment (Alice Corp.,
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Examiner’s non-statutory subject matter rejection of claim 1, as well as
claims 3—8, 10-15, and 17—21, which were rejected on the same basis.
Obviousness Rejection
Appellants argue that the combination of Esposito, Baybyak, and
Barry does not teach or suggest features:
wherein said first subset of plan instances immediately follows
a third subset of plan instances, but is immediately before said second
subset of plan instances in said sequence, ... wherein in said first
duration in which said first subset of plan instances is said current
subset, said user is enabled to navigate to only said first subset of
plan instances or said third subset of plan instances, but not said
fourth subset of plan instances, among said plurality of subset of plan
instances.
App. Br. 19.
In particular, Appellants argue that although the wizards disclosed in
Babyak and Barry teach presenting a series of questions to the prospective
benefits subscriber during the enrollment process for identifying the benefits
needs thereof, the proposed combination does not particularly teach
enforcing the navigation of the plan instances as recited in the disputed
limitations. Id. at 19—22. This argument is persuasive. We agree with the
Examiner that Esposito discloses an interface for allowing a prospective
benefits subscriber to provide eligibility data, which is compared with plan
instances of various groups to display an eligible subset of plan instances for
the subscriber. Ans. 4 (citing Esposito 72, 73). We further agree with the
134 S. Ct. at 2360). See, e.g., Intellectual Ventures ILLC v. Capital One
Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“[Mjerely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea.”).
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Examiner that Babyak discloses a wizard to assist the subscriber in the
enrollment process. Id. at 4—5 (citing Babyak 142). Additionally, we agree
with the Examiner that Barry discloses a system for enforcing rules as to
where the user can navigate. Id. at 5 (citing Barry 1371). However, as
noted by Appellants, because the navigation taught by Babyak and Barry is
limited to a series of questions that are dynamically generated depending
upon the subscriber’s prior response, they do not teach or suggest the
selection of plan instances in Esposito, let alone the specific navigation of
such plan instances in the manner required by the claim (e.g., the first subset
of plan instances immediately follows a third subset of plan instances.. .but,
immediately before the second subset of plan instances.) App. Br. 20-21.
Because Appellants have shown reversible error in the Examiner’s rejection,
we need not reach the merits of Appellants’ remaining arguments.
Accordingly, we reverse the obviousness rejection of claim 1, as well as the
obviousness rejections of claims 3—8, 10-15, and 17—25, which also suffer
the deficiencies noted above.
DECISION
For the above reasons, we reverse the Examiner’s indefmiteness
rejection of claims 1 and 21. We also reverse the Examiner’s obviousness
rejection of claims 1, 3—8, 10-15, and 17—21. However, we affirm the
Examiner’s nonstatutory subject matter rejection of claims 1, 3—8, 10—15,
and 17—21.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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