Ex Parte Kamimura

Patent Trial and Appeal Board

Jan 30, 2017

12995158 (P.T.A.B. Jan. 30, 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.
12/995,158 11/29/2010 Kunio Kamimura 8262
92764 7590 02/01/2017
Kiinin Kamimnra
EXAMINER
Azusagawa Azusa 1631-1
Matsumoto-shi, Nagano, 3901702
WU, YICUN
JAPAN ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
k@atele.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUNIO KAMIMURA1
Appeal 2015-007472
Application 12/995,158
Technology Center 2100
Before JOHNNY A. KUMAR, JOHN A. EVANS, and SCOTT E. BAIN,
Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge
JOHN A. EVANS.
Opinion Dissenting-in-part filed by Administrative Patent Judge
JOHNNY A. KUMAR.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant2 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1 and 12—22. Claims 2—11 are
cancelled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
1 Pro se. App. Br. 1.
2 According to the Appeal Brief, “Kunio Kamimura is the inventor,
applicant and appellant of the application .... The patent may be assigned
to Athena Telecom Lab, Inc., which has been owned by Kunio Kamimura.”
App. Br. 1.
Appeal 2015-007472
Application 12/995,158
We REVERSE.3
STATEMENT OF THE CASE
The Invention
The claims relate to a method for editing databases. See Abstract.
Claims 1 and 17 are independent.4 An understanding of the invention can be
derived from a reading of exemplary claims 1 and 17, which are reproduced
below with some formatting added:
1. A method of updating a database, comprising a sequence
of procedures:
a first procedure including
a step of receiving a first editing work to said database,
and
a step of fetching a first ordinal number that was a
version number of said database at the time of making said first
editing work and has been assigned to said first editing work,
a second procedure including a step of comparing said
first ordinal number and a second ordinal number that was a
version number of said database at the time of making said
second editing work,
3 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed January 20, 2015, “App. Br.”), the Reply
Brief (filed August 9, 2015, “Reply Br.”), the Examiner’s Answer (mailed
July 2, 2015, “Ans.”), the Final Action (mailed November 20, 2014, “Final
Act.”), and the Specification (filed November 29, 2010, “Spec.”) for their
respective details.
4 Claims 12—16 recite, inter alia: “A method of updating a database,
according to claim 1.” Claims 18—22 recite, inter alia: “An apparatus of
updating a database, according to claim 17.” The claims are informal.
Should prosecution continue, the claims should be amended to recite “[t]he
method . . .” or “[t]he apparatus . . .,” as appropriate.
2
Appeal 2015-007472
Application 12/995,158
a third procedure including a step of updating said
database by said first editing work, if said first ordinal number
is newer than said second ordinal number.
17. An apparatus of updating a database, comprising the
following blocks:
a first block, at least receives a first editing work to said
database, and fetches a first ordinal number that was a version
number of said database at the time of making said first editing
work and has been assigned to said first editing work,
a second block, at least compares said first ordinal
number and a second ordinal number that was a version number
of said database at the time of making said second editing work,
a third block, at least updates said database by said first
editing work, if said first ordinal number is newer than said
second ordinal number.
Related Appeals
The present Panel AFFIRMED the rejection of all claims
appealed in related Application 13/714,422 (Appeal 2014-004754).
References and Rejections
1. Claims 17—22 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 2—3.
2. Claims 1 and 11—22 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Sivapragasam et al. (US 2007/0282914 Al; Dec. 6,
2007). Final Act. 3—6.
ANALYSIS
We have reviewed the rejections of claims 1 and 12—22 in light of
Appellant’s arguments that the Examiner erred. We consider Appellant’s
arguments seriatim, as they are presented in the Appeal Brief, pages 3—6.
3
Appeal 2015-007472
Application 12/995,158
Claims 17-22: Non-statutory subject matter
The Examiner finds the claims relate to “software per se” and are,
therefore, non-statutory. See Final Act. 2—3. Appellant contends that
Specification Figures 2 and 5 positively identify hardware structure of an
apparatus. App. Br. 3.
We agree with the Examiner that the claims do not incorporate, as
limitations, the hardware described in the Specification. See Ans. 3^4.
However, we find the Examiner’s “software per se” analysis is precluded by
the subsequent Federal Circuit Decision, Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016).
“We must first determine whether the claims at issue are directed to a
patent-ineligible concept.” Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S.
Ct. 2347, 2355 (2014). Claims “purporting] to improve the functioning of
the computer itself,” or “improve[ing] an existing technological process”
might not succumb to the abstract idea exception. Enfish, 822 F.3d at 1335
(quoting Alice, 134 S. Ct. at 2358—59). “Software can make non-abstract
improvements to computer technology just as hardware improvements can.”
Enfish, 822 F.3d at 1335. Therefore, it is impermissible to find claims to
software to be non-statutory “per se.”
We find the present claims are directed to improved methods for
multiple computers to effect parallel edits to a common database. See Claim
17. As was the case in Enfish, “the plain focus of the claims is on an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity.” Enfish, 822 F.3d at
1336.
4
Appeal 2015-007472
Application 12/995,158
Claims 1 and 11-22: Anticipation by Sivapragasam
Appellants contend that “[ejxcept for using the phrase of ‘version
number, ’ there is no similarity between the first procedure and paragraph
[0025] of Sivapragasam.” App. Br. 4. Appellants argue Sivapragasam
compares “update/delete times’ such that the “last writer wins.” Id.
Appellants argue that, in contrast to Sivapragasam, the claimed invention
compares the version numbers of the database as they existed at the time of
editing. Id. at 5.
The Examiner finds the “change unit” disclosed by Sivapragasam
reads on the claimed “a step of receiving a first editing work to said
database.” Ans. 5. The Examiner finds the claimed “step of fetching a first
ordinal number that was a version number of said database” is disclosed by
“Each time a change is made to a change unit, the change is assigned a new
change unit version number.” Id.
Appellant contends that Sivapragasam discloses that a “change unit”
is a paragraph of a document, or a sentence of a paragraph.” Reply Br. 7
(citing Sivapragasam, 125). Appellant argues numbers relating sections of a
document are distinct from numbers relating to the document, itself. Id. We
agree.
Appellant discloses that “[duplicated DBs [databases] (hereinafter
“local original DB”) of the original DB (hereinafter “global original DB”)
are placed in plural PCs. This local original DB has [an] initial version,
which is an ordinal number indicating order of updating. Spec. 119.
Sivapragasam discloses a “change unit is the smallest portion of an entity
that is tracked during synchronization.” Sivapragasam 125. Sivapragasam
discloses that a “document, such as a MICROSOFT WORD® document,
5
Appeal 2015-007472
Application 12/995,158
could comprise entities in the form of paragraphs. That is, an entity could be
defined as a paragraph. A change unit could be defined as a sentence. Id.
We agree with Appellant that a sentence, as disclosed by Sivapragasam, is
not equivalent to a database of the invention.
DECISION
The rejection of claims 17—22 under 35 U.S.C. § 101 is REVERSED.
The rejection of claims 1 and 11—22 under 35 U.S.C. § 102 is
REVERSED.
REVERSED
6
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUNIO KAMIMURA5
Appeal 2015-007472
Application 12/995,158
Technology Center 2100
Before JOHNNY A. KUMAR, JOHN A. EVANS, and SCOTT E. BAIN,
Administrative Patent Judges.
KUMAR, Administrative Patent Judge, dissenting-in-part.
I agree with the majority in reversal of claims 1 and 11—22 under
35 U.S.C. § 102. I write separately to voice my disagreement with the
majority’s reversal of claims 17—22 under 35 U.S.C. § 101. In particular, the
majority concludes that present claims are directed to improved methods for
multiple computers to effect parallel edits to a common database, as was the
case in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
In my view, the § 101 issue on appeal is limited to whether claims 17—
22 recite “software per se” and not whether these claims are patent-eligible
under Alice and its progeny. In particular, the Examiner finds claims 17—22
fail to recite any one of the four statutory classes under 35 USC § 101 (i.e.,
5 Pro se. App. Br. 1.
Appeal 2015-007472
Application 12/995,158
processes, machines, manufactures, or compositions of matter). Final Act.
2—3. According to the Examiner, “just mention of ‘apparatus’ without any
positively identifying hardware device with functional description material
does not fall within any of the categories of patentable subject matter” under
35 USC § 101 (i.e., processes, machines, manufactures, or compositions of
matter). Final Act. 2—3. On appeal, Appellant contends “[cjlaim 17
(apparatus claim) of the present invention is classified to the machine
category shown by MPEP [§] 2106.” App. Br. 3. In support of that
contention, Appellant refers to “Figures 2 and 5 of the present invention
[which] positively identify the hardware structure of the apparatus expressed
by connections of blocks.” Id.
I agree with Appellant that claims 17—22 do not recite “software per
se” and, instead, recite an apparatus (i.e., machine) within one of the four
statutory classes under 35 U.S.C. § 101 and that apparatus comprises several
blocks, shown in Figures 2 and 5, each performing the recited functions,
shown in Figures 3 and 4 of Appellant’s Specification. On that basis alone, I
would reverse the § 101 rejection of claims 17—22.
I am also mindful that claims 17—22 also need to be analyzed in view
of the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Banklnt’l,
134 S. Ct. 2347 (2014) and its progeny.6 However, that analysis would raise
a new issue or a new ground of rejection because the Examiner has not
6 See the Federal Circuit’s precedential decision in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); Enfish v. Microsoft, 822
F.3d 1327 (Fed. Cir. 2016); Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC., 827 F.3d 1341 (Fed. Cir. 2016); and McRO Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016).
2
Appeal 2015-007472
Application 12/995,158
relied on Alice and its progeny to support the § 101 rejection. To the extent
that Alice and its progeny are applicable, I disagree with the majority that
claims 17—22 pass muster under Alice and its progeny.
The Supreme Court has long held that “[ljaws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice, 134 S. Ct. at 2354
(quoting Assoc, for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct.
2107, 2116 (2013) (internal quotation marks omitted)). The “abstract ideas”
category embodies the longstanding rule that an idea, by itself, is not
patentable. Id. at 2355 (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972).
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1296—97 (2012)). The first step in the analysis is to
“determine whether the claims at issue are directed to one of those patent-
ineligible concepts,” such as an abstract idea. Id. If the claims are directed
to a patent-ineligible concept, the second step in the analysis is to consider
the elements of the claims “individually and ‘as an ordered combination’” to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S.
Ct. at 1298, 1297). 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. (quoting Mayo, 132
S. Ct. at 1294).
3
Appeal 2015-007472
Application 12/995,158
Turning to the first step of the Alice inquiry, I find claims 17—22
simply recite an abstract concept of updating data and information. For
example, claim 17 recites several functions, including: (i) “fetch[ing] a first
ordinal number that was a version number of said database”, (ii)
“compar[ing] said first ordinal number and a second ordinal number that was
a version number of said database” and (iii) “update[ing] said database ... if
said first ordinal number is newer than said second ordinal number.” All
these functions are abstract processes of collecting, comparing, and
analyzing information of a specific content. Information as such is
intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12
(2007). Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011).
Turning to the second step of the Alice inquiry, I find nothing in
claims 17—22 that adds anything “significantly more” to transform the
abstract concept of collecting, storing, and analyzing information into a
patent-eligible application. Alice, 134 S. Ct. at 2357. Instead, claims 17—22
simply incorporate a general-purpose computer to perform the abstract
concept of fetching, comparing, and updating information.
However, limiting such an abstract concept of updating data to a
generic purpose computer or apparatus recited in Appellants’ claim 17 does
not make the abstract concept patent-eligible under 35 U.S.C. § 101. Ans.
3. As recognized by the Supreme Court, “the mere recitation of a generic
4
Appeal 2015-007472
Application 12/995,158
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” See Alice, 134 S. Ct. at 2358—59 (concluding claims
“simply instructing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer” not patent eligible); see
also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715—16 (Fed. Cir. 2014)
(claims merely reciting abstract idea of using advertising as currency as
applied to particular technological environment of the Internet not patent
eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1344^45 (Fed. Cir. 2013) (claims reciting “generalized software
components arranged to implement an abstract concept [of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer” not patent eligible); and
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir. 2012)
(“Simply adding a ‘computer aided’ limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible” (internal citation omitted)).
The majority’s decision to reverse the Examiner’s § 101 rejection is
based on the Federal Circuit’s decision in Enfish v. Microsoft. In Enfish, the
Federal Circuit held that claims directed to specific improvements in
computer capabilities (i.e., self-referential table for a computer database) are
patent-eligible subject matter. For example, Enfish’s claim 17 recites:
A data storage and retrieval system for a computer
memory, comprising:
means for configuring said memory according to a
logical table, said logical table including:
a plurality of logical rows, each said logical row
including an object identification number (OID) to identify each
5
Appeal 2015-007472
Application 12/995,158
said logical row, each said logical row corresponding to a
record of information;
a plurality of logical columns intersecting said plurality
of logical rows to define a plurality of logical cells, each said
logical column including an OID to identify each said logical
column; and
means for indexing data stored in said table.
As explained by the Federal Circuit, Enfish ’s “claims are not simply
directed to any form of storing tabular data, but instead are specifically
directed to a self-referential table for a computer database” that “functions
differently than conventional data structures” and that is “designed to
improve the way a computer stores and retrieves data in memory.” Enfish,
822 F.3d at 1337-39.
As recognized by the majority, claims “purporting] to improve the
functioning of the computer itself,” or “improving] an existing
technological process” might not succumb to the abstract idea exception. Id.
at 1335 (quoting Alice, 134 S. Ct. at 2358—59).
In contrast to Enfish, claims 17—22 on appeal are not rooted in
computer technology or seek to improve any type of computer capabilities,
such as Enfish’s “self-referential table for a computer database.” Instead,
Appellants’ claims 17—22 simply recite an abstract concept of fetching,
comparing, and updating information.
Because Appellants’ claims 17—22 are directed to a patent-ineligible
abstract concept, I would affirm the Examiner’s rejection of claims 17—22
under 35 U.S.C. § 101 in light of Alice and its progeny.
6