Ex Parte King et al

Patent Trial and Appeal Board

Feb 7, 2017

12490511 (P.T.A.B. Feb. 7, 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.
12/490,511 06/24/2009 Nigel KING T9049-19656US01 3625
74739 7590 02/09/2017
MILES & STOCKBRIDGE P.C.
Oracle International Corporation
1751 Pinnacle Drive
Suite 1500
Tysons Corner, VA 22102-3833
EXAMINER
GOLDBERG, IVAN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
02/09/2017 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):
Ipdocketing @ Miles S tockbridge. com
bgoldsmith @ miles stockbridge .com
smcvean @ milesstockbridge. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIGEL KING, DANIELA KANTOROVA, and
NEIL RAMSAY
Appeal 2015-0046401
Application 12/490,511
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1—21. We have
jurisdiction to review the case under 35 U.S.C. §§134 and 6.
The invention relates generally to a computer system for facilitating
the restructuring of an organization. Spec. 11.
1 The Appellants identify Oracle International Corporation as the real party
in interest. Appeal Br. 3.
Appeal 2015-004640
Application 12/490,511
Claim 1 is illustrative:
1. A non-transitory computer-readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to facilitate organizational restructuring, the
facilitating the organization restructuring comprising:
receiving a new structure representing the organizational
restructuring;
deriving a task dependency model from the new structure,
wherein the task dependency model comprises task dependencies
for a plurality of tasks that implement the organization
restructuring among a plurality of organizational entities
comprising one or more departments of an organization
represented by the new structure, and wherein the task
dependency model further comprises organizational
dependencies of the plurality of organizational entities;
applying a plurality of business processes defining the
plurality of tasks that implement the organizational restructuring,
wherein the plurality of tasks are defined based upon the task
dependencies and the organizational dependencies of the task
dependency model;
managing communication among the plurality of
organizational entities based upon the task dependency model for
the plurality of tasks;
determining, using the task dependency model, that the
organizational restructuring is complete;
comparing an original structure representing an
organizational structure with the new structure;
calculating one or more changes to the organizational
structure; and
providing a first user interface that displays the original
structure, the new structure, and the one or more changes to the
organizational structure.
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Application 12/490,511
Claims 1—21 are rejected under 35 U.S.C. § 101 as reciting ineligible
subject matter.
Claims 1,3,4, 6—11, 14, 17, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Harthcryde (US 2007/0198317) Al, pub. Aug.
23, 2007) and Joodi (US 2007/0038490 Al, pub. Feb. 15, 2007).
Claims 2, 12, 15, 16, and 18—20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Harthcryde, Joodi, and Muller (US 2006/0168530 Al,
pub. July 27, 2006).
Claims 5 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Harthcryde, Joodi, and Kreamer (US 2008/0313596 Al, pub. Dec. 18,
2008).
We AFFIRM.
ANALYSIS
Rejection under 35 U.S.C. §101
The Appellants argue claims 1—21 together as a group (Appeal Br. 6—
8), so we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded by the Appellants’ arguments that the claimed
invention is not an abstract idea because, according to the Appellants, the
claimed invention is directed to “a web-based reorganization collaboration
tool” that “provides a user interface that visualizes” structures under
reorganization, and restructuring an organization is not a fundamental
economic practice. Reply Br. 6.
The Supreme Court has made clear that “[pjhenomena of nature,
though just discovered, mental processes, and abstract intellectual concepts
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Application 12/490,511
are not patentable, as they are the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of these concepts.” Alice Corp. Pty. Ltd. v. CLS Bank
Int'l, 134 S. Ct. 2347, 2355. The first step in that analysis is to “determine
whether the claims at issue are directed to one of those patent-ineligible
concepts.” Id. If so, the second step is to consider the elements of the
claims “individually and ‘as an ordered combination”’ to determine whether
the additional elements “‘transform the nature of the claim’ into a patent-
eligible application.” Id. (citing Mayo, 132 S. Ct. at 1291, 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. (citingMayo, 132 S. Ct. at 1294).
We note first that none of the claims recite limitations to web
technologies. Instead, method claims 11—14 recite a “processor” and
“memory” that receive data, execute the steps of the method, and display
information. Independent claim 1 is directed to a “non-transitory computer-
readable medium,” and recites instructions stored on the medium that are
executed by “a processor,” which performs the same steps recited in method
claim 11. Dependent claims 2—10, 17, and 21 do not add additional
technology. System claims 15—20 also recite a “processor” that performs the
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Application 12/490,511
recited steps. Although the claims do explicitly recite the use of a computer
processor, this is not dispositive in an analysis of patentable subject matter.
The Examiner asserts that independent claim 1 is directed to “how to
restructure an organization.” Ans. 2—3. We agree. The steps recited in
independent claim 1 involve receiving information, “deriving a . . . model”
comprising task and organizational dependencies, applying “business
processes defining the plurality of tasks that implement the organizational
restructuring,” determining when a reorganization is complete, and
displaying before, after, and change information about the reorganization.
The tasks and business processes are either “predefined” or “provided by a
user.” Spec. 131, cited by the Appellants at Appeal Br. 3^4. We agree that
all of these steps concern “how to restructure an organization.” See also
Spec. 11 (“[o]ne embodiment is directed generally to organizational
restructuring, and more particularly to a computer system for facilitating the
restructuring of an organization”), 13 (“[o]ne embodiment is a system for
facilitating organizational restructuring”).
We also agree with the Examiner that “how to restructure an
organization” is a method of organizing human activity. Ans. 2—3. All of
the claimed steps can be performed by mental processes with a pen and
paper for displaying information, by a human. 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., deriving a task dependency
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Appeal 2015-004640
Application 12/490,511
model, applying business processes, managing communication, and
determining the reorganization is complete, as recited in claim 1, remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. Id. at 1375 (“That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson,
[409 U.S. 63 (1972)].”). We, therefore, agree with the Examiner that the
claims merely recite an abstract idea, because a machine would not be
necessary to perform the steps of the claim, outside of the requirement that a
processor/memory is recited.
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, the claim must include an “inventive
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. To that end, the
Examiner finds, and we agree, that the claims, at best, utilize a “processor,”
i.e., a generic computer component, which does not satisfy the inventive
concept. See Ans. 3; Spec. 116, cited at Appeal Br. 6 (“[processor 22 may
be any type of general or specific purpose processor.) “[A]fter 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 and quotation marks omitted).
The Examiner finds further that nothing in claims 1—21 purports to
improve computer functioning or “effect an improvement in any other
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Application 12/490,511
technology or technical field.” Ans. 3; Alice, 134 S. Ct. at 2359. We agree.
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).
We are also unpersuaded by the Appellants’ additional arguments
directed to step 2 of the Alice analysis, that the claims recite “significantly
more” than an abstract idea, because the claimed system “can automatically
apply automated reorganization processes,” is “faster and more efficient”
than manual processes, and represents “an improvement in automated
reorganization technology.” Reply Br. 7—9. The claims merely implement a
process to reorganize an organization, which we are persuaded is a “practice
long prevalent in our system of commerce.” Alice, 134 S. Ct. at 2356. The
Appellants only evidence supporting the assertion that the automated system
of the claims is “a concrete and tangible improvement to automated
reorganization technology,” i.e., that the claims are “not taught or suggested
by the cited prior art” (Reply Br. 8—9), are the arguments of non-obviousness
that follow, which we find unpersuasive in the next section, below.
We find no meaningful distinction between independent medium
claim 1 and either independent method claim 11 or independent system
claim 15; the claims all are directed to the same underlying invention.
Accordingly, because claims 1—21 are directed to an abstract idea, and
because we are unpersuaded of sufficient error in the Examiner’s finding
that nothing in the claims adds an inventive concept, we are unpersuaded
that the Examiner’s determination that claims are not patent-eligible under
Section 101 is erroneous. Therefore, we sustain the Examiner’s rejection of
claims 1—21 under 35 U.S.C. § 101.
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Appeal 2015-004640
Application 12/490,511
Rejection of Claims 1, 3, 4, 6—11, 24, and 17 under 35 U.S.C. f 103(a)
We are not persuaded by the Appellants’ arguments that Joodi’s
“process/system map 116 does not include organizational dependencies
between organizational entities associated with an organization
restructuring.” Appeal Br. 12; see also id. at 9-11, 14—17; Reply Br. 11—13.
We adopt as our own the Examiner’s findings and reasoning
expressed in the Response to Argument section of the Examiner’s Answer,
at page 9. More specifically, we agree with the Examiner’s findings that
Harthcryde discloses “applying a plurality of business processes defining the
plurality of tasks that implement the organizational restructuring,” and Joodi
discloses “wherein the plurality of tasks are defined based upon the task
dependencies and the organizational dependencies of the task dependency
model,” as recited by the “applying” limitation of claim 1.
More specifically, the Examiner finds the claimed tasks based on
“organizational dependencies” in paragraph 64 of Joodi, which discloses
“[pjroposed process projects obviously have dependencies on organization
and technology-so the dependencies need to be understood and the projects
grouped into releases.” Joodi 1 64. We are persuaded that the ordinary
artisan would understand that organizational dependencies are understood,
and taken into account, such as when projects are grouped into releases,
which, in Joodi, is a task that is part of reorganization. We are, thus,
persuaded that Joodi addresses adequately the claim language in question.
Indeed, we note further that the Appellants do not advance any
argument relevant to this portion of Joodi. See generally App. Br. 9—17, 20—
22; Reply Br. 10—13. Instead, the Appellants direct their arguments to the
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Appeal 2015-004640
Application 12/490,511
“process/system map 116” of Joodi, which is not mentioned in any
Examiner-cited section relative to the rejection concerning the wherein
clause of the applying limitation. See Final Act. 12—13 (citing Joodi, Figs. 2,
6B, 6C, and paras. 26, 64, 89, and 90). The Appellants have, thus, not
addressed the relevant portion of Joodi, and have focused on elements not
relevant to the claim language.
For these reasons, we sustain the rejection of claims 1,3,4, 6—11, 14,
and 17 under 35 U.S.C. § 103(a).
Rejection of Claim 21 under 35 U.S.C. § 103(a)
Dependent claim 21 recites “assigning at least one task of the plurality
of tasks to at least one reorganization participant; initiating the execution of
the plurality of tasks; and tracking a task assignment time and a task
completion time for the at least one assigned task.”
The Appellants argue Harthcryde fails to disclose “tracking” both an
assignment and completion time, because cited claim 93 merely lists
uncompleted projects, and cited claim 115 merely discloses planned
completion dates. Appeal Br. 20-21; see also Reply Br. 13—14.
We are not persuaded by the Appellants’ arguments, because we are
persuaded that the ordinary artisan would recognize from charts, such as
Harthcryde’s Figure 4, shown below, that tools such as PERT and GANTT
charts are ordinarily used for tracking assignment, planned, and completion
dates for project elements:
9
Appeal 2015-004640
Application 12/490,511
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Harthcryde Figure 4 showing tasks with start and end dates for each.
More specifically, we are persuaded that the ordinary artisan would
know that dates can change in a complex project with task
interdependencies, and keeping track of when tasks actually complete, as
compared to when they are planned to complete, is important to understand
because of the potential effect on other task dates. See Ans. 14; KSR Int'l.
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in making the obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ.”)
We sustain the rejection of dependent claim 21.
Rejections of Claims 2, 5, 12, 13, 15, 16, and 18—20
The rejections of claims 2, 5, 12, 13, 15, 16, and 18—20 are argued
only by reference to the arguments for claim 1. Appeal Br. 22—25. We
sustain these rejections for the same reasons as for claim 1.
DECISION
We AFFIRM the rejection of claims 1—21 under 35 U.S.C. § 101.
We AFFIRM the rejections of claims 1—21 under 35 U.S.C. § 103(a).
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Appeal 2015-004640
Application 12/490,511
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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