Ex Parte Liu et al

Patent Trial and Appeal Board

Sep 19, 2018

13602432 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/602,432 09/04/2012 YaowuLiu
45094 7590 09/21/2018
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
ALBANY, NY 12207
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.
BUR920120028US 1 7747
EXAMINER
FIGUEROA, KEVIN W
ART UNIT PAPER NUMBER
2124
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y AOWU LIU, PAUL G. McLAUGHLIN,
and ALICE M. MICHALAK 1
Appeal2017-011726
Application 13/602,432
Technology Center 2100
Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 3---6, 8, 10-13, 15, 17, 18, 21, 23, 25,
and 26. Claims 2, 7, 9, 14, 16, 19, 20, 22, and 24 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 1.
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Application 13/602,432
Appellants 'Invention
The invention generally relates to evaluating business rules with
respect to business objects, and in particular, with respect to a multi-level
collection of business objects. Spec. ,r,r 1, 26, 30. In an example, in the
semiconductor industry, a rules engine can be a checker for a bill of
materials (BOM) that receives as a request a multi-level collection of
business objects and their component relationships. Spec. ,r,r 31-33. In this
case, "rules might cover component requirements for modules (must have at
least one chip in its assembly BOM), requirements for chips (must have
valid technology relationships), and so on for wafers, packaging, and the
like." Spec. ,r 32. When a collection has been checked, the rules engine
returns a response that may be rendered into a suitable report. Spec. ,r 33.
Representative Claim
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A computer-implemented method of evaluating rules for
validating, constructing, or configuring collections of business
objects, the method comprising:
receiving a request including a multi-level collection of
business objects, wherein the multi-level collection of business
objects in the request includes a plurality of business objects and
at least one relationship between two or more business objects in
the collection, and wherein the multi-level collection of business
objects includes business objects at a plurality of levels in a
business object hierarchy;
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processing each object in the collection of business objects
by determining whether the object satisfies at least one rule
condition associated with each of the object in the collection, and
determining whether one of: a type or a component of the object
satisfies the at least one rule condition, wherein each object in
the collection is checked from a node for the object to the rule,
such that only a set of rules associated with the collection of
objects is processed;
executing at least one rule behavior based on satisfying the
at least one rule condition associated with each of the object in
the collection, wherein in response to the relationship existing
between the two or more business objects in the collection, the
executing further comprises executing at least one distinct rule
behavior based on satisfying at least one distinct rule condition
associated with at least one of the two or more objects included
in the at least one relationship between objects in the collection;
and
returning a response based on the processing and the
executing.
Rejections on Appeal
The Examiner rejects claims 1, 3-6, 8, 10-13, 15, 17, 18, 21, 23, 25,
and 26 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter. 2
The Examiner rejects claims 1, 3, 5, 6, 8, 10, 12, 13, 15, 17, 21, 23,
25, and 26 under 35 U.S.C. § I03(a) as being unpatentable over Melamed
(US 2009/0037360 Al, published Feb. 5, 2009), McKay (US 2010/0318556
Al; Dec. 16, 2010), and Liu et al. (US 2013/0091342 Al, published Apr. 11,
2013) ("Liu").
2 The Examiner entered the§ 101 rejection as a new ground of rejection in
the Answer with Technology Center Director approval. See Ans. 2--4, 7.
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The Examiner rejects claims 4, 11, and 18 under 35 U.S.C. § I03(a) as
being unpatentable over Melamed, McKay, Liu, and Zarefoss (US
2002/0095322 Al, published July 18, 2002).
ANALYSIS
Patent-Ineligible Subject Matter
Appellants argue claims 1, 3---6, 8, 10-13, 15, 17, 18, 21, 23, 25, and
26 together as a group. See Reply Br. 9--15. We select claim 1 as
representative in addressing Appellants' arguments below. See 37 C.F.R.
§ 4I.37(c)(l)(iv) ("When multiple claims subject to the same ground of
rejection are argued as a group or subgroup by appellant, the Board may
select a single claim from the group or subgroup and may decide the appeal
as to the ground of rejection with respect to the group or subgroup on the
basis of the selected claim alone.").
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S.Ct. at 2355.
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Assuming that a claim nominally falls within one of the statutory categories
of machine, manufacture, process, or composition of matter, the first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 2355-57. If the claim is directed to a judicial exception,
such as an abstract idea, the second step is to determine whether additional
elements in the claim "'transform the nature of the claim' into a patent-
eligible application." Id. at 2355 (quoting Mayo, 566 U.S. at 78). This
second step is described as "a search for an "'inventive concept"'-i.e., an
element or combination of elements that is ' ... significantly more than ...
the [ineligible concept] itself."' Id. at 2355 (alteration in original) (quoting
Mayo, 566 U.S. at 72-73).
Alice Step One
"The first step in the Alice inquiry ... asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, 822 F.3d at 1335-36.
"The abstract idea exception prevents patenting a result where 'it matters not
by what process or machinery the result is accomplished."' McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)
(quoting O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)). "We
therefore look to whether the claims ... focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
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effect that itself is the abstract idea and merely invoke generic processes and
machinery." McRO, 837 F.3d at 1314.
The Examiner finds claim 1 is directed to "receiving a request
including a multi-level collection of business objects, processing each object
in the collection of business objects by determining whether the object
satisfies at least one rule condition associated with each of the objects in the
collection, executing at least one rule behavior based on satisfying the at
least one rule condition associated with each of the object in the collection,
and returning a response based on the processing and the executing," which
is analogous to the abstract idea found in Accenture Global Services, GMBH
v. Guidewire Software, Inc., 728 F.3d 1336 (2013). Ans. 2-3.
Appellants contend claim 1 is similar to the claims in Enfzsh that were
found not to be abstract because they "provided a software-based
improvement to computer-related technology." Reply Br. 12. Specifically,
Appellants assert the claim 1 limitation "processing each object in the
collection ... wherein each object in the collection is checked from a node
for the object to the rule, such that only a set of rules associated with the
collection of objects is processed" is not abstract in view of Enfzsh. Reply
Br. 12. We are not persuaded by Appellants' argument.
We note that Enfzsh instructs us to consider the focus of claim 1 as a
whole, not as individual limitations, in determining whether the claim is
directed to an abstract idea. See 822 F.3d at 1335. Here, the Examiner
finds, and we agree, that claim 1 embodies an abstract idea, which can be
restated more succinctly as determining whether objects in a collection of
business objects satisfy certain rule conditions associated with the objects
and executing rule behaviors based on satisfying the rule conditions. See
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Ans. 2-3. We note that "[a]n abstract idea can generally be described at
different levels of abstraction," and a "slight revision of [the] abstract idea
analysis does not impact the patentability analysis." Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016).
Appellants' argued claim 1 limitation-"processing each object in the
collection ... wherein each object in the collection is checked from a node
for the object to the rule, such that only a set of rules associated with the
collection of objects is processed" (Reply Br. 12-13}-does not change the
focus of claim 1 from the abstract idea noted above; it is integral with the
abstract idea. That is, the idea of checking that only rules associated with
objects in the collection are processed does not evince a technological
improvement because it is paradigmatic rather than descriptive of how to
accomplish a task, either in software or hardware. In other words, the
argued limitation only provides a greater level of detail for the abstract idea,
as opposed to a technological step.
Appellants cite to the Specification to demonstrate that the claims
provide a technological improvement. Reply Br. 13. Specifically,
Appellants highlight the benefit of the claimed approach to evaluating rules
for validating, constructing, and configuring multi-level collections of
business objects, which object rule evaluation provides improved real-time
performance over attribute value evaluation. See id. We are not persuaded
by Appellants' reliance on the Specification to show claim 1 is not directed
to an abstract idea.
The Specification provides the following in Appellants' cited
paragraphs (see id.):
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This method is an object-rule evaluation; rather, than an attribute
value evaluation, so that real-time performance is improved.
Only rules that are associated with the object in question are
examined during the evaluation.
Spec. ,r 16
In this way, only rules that are associated with the object are
examined. Therefore, rules that would not be executed with the
particular object would be ignored, with ensuring performance
benefits.
Spec. ,r 27.
In the embodiments discussed above, the rules engine server 31
of Rule evaluation program 30 evaluates from node to rule in
order to narrow the evaluation to only rules that are associated
with the objects in a request. In this way, multi-level collection
of objects may be evaluated efficiently.
Spec. ,r 30.
Here, the Specification describes the idea of only evaluating rules that
are associated with objects in a collection of objects in a request. This idea
is the same as that captured by the claim 1 limitation discussed above,
namely, "processing each object in the collection ... wherein each object in
the collection is checked from a node for the object to the rule, such that
only a set of rules associated with the collection of objects is processed."
Even if the idea of only evaluating rules associated with requested objects
improves efficiency over a different "attribute value evaluation" method (see
Spec. ,r 16), the idea does not in and of itself delimit a technological
improvement by specifically explaining how, with software or hardware, to
implement the idea.
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We are, therefore, not persuaded the Examiner erred in finding claim
1 is directed to an abstract idea.
Alice Step Two
The second step in the Alice analysis requires a search for an
"inventive concept" that "must be significantly more than the abstract idea
itself, and cannot simply be an instruction to implement or apply the abstract
idea on a computer." Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349 (2016). There must be more than
"computer functions [that] are 'well-understood, routine, conventional
activit[ies]' previously known to the industry." Alice, 134 S. Ct. at 2359
(second alteration in original) (quoting Mayo, 566 U.S. at 73).
Appellants contend the Examiner has not considered additional
elements in claim 1 that either alone or in combination amount to
significantly more than an abstract idea. Reply Br. 11-12. We are not
persuaded by Appellants' argument. Appellants' argument simply recites
two of the paragraphs in claim 1 and states "[ t ]hese features, alone or in
combination, clearly amount to significantly more than any (yet identified)
abstract idea." Id. Appellants do not specifically explain why any particular
limitations in claim 1 provide significantly more than an abstract idea.
Appellants also contend the claims are directed to a particular solution
for a particular problem, and thus do not preempt all instances of any
judicial exception. App. Br. 13-14. However, preemption is not a separate
test of patent-eligibility, but is inherently addressed within the Alice
framework. See Ariosa Diagnostics, Inc., v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) ("While preemption may signal patent ineligible
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subject matter, the absence of complete preemption does not demonstrate
patent eligibility."). Accordingly, Appellants' argument (see App. Br. 13-
14) that claim 1 does not preempt all methods for performing the idea
embodied therein is not, by itself, persuasive of patent-eligibility.
We are, therefore, not persuaded the Examiner erred in finding claim
1 does not amount to significantly more than the abstract idea itself.
Accordingly, we are not persuaded the Examiner erred in rejecting claim 1,
and claims 3---6, 8, 10-13, 15, 17, 18, 21, 23, 25, and 26 grouped therewith,
as patent-ineligible.
Obviousness
The Examiner finds the combination of Melamed, McKay, and Liu
discloses all the limitations of claim 1, including that Liu teaches "in
response to the relationship existing between the two or more business
objects in the collection, the executing further comprises executing at least
one distinct rule behavior based on satisfying at least one distinct rule
condition associated with at least one of the two or more objects included in
the at least one relationship between objects in the collection." Appellants
contend Liu fails to teach this feature. App. Br. 11. In response, the
Examiner finds the combination of Melamed and Liu discloses the argued
feature of executing a distinct rule behavior based on satisfying a distinct
rule condition associated with at least one of the two objects that have a
relationship. Ans. 4--5. Appellants reply that the Examiner's new finding in
the Answer is in error because the separate teaching of business rules in each
of Melamed and Liu does not disclose a method that requires satisfying both
a "rule condition" and a "distinct rule condition," where the "distinct rule
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condition" is different than the "rule condition" and is associated with two
objects that have a relationship with each other. See Reply Br. 4--6. We
agree with Appellants.
Liu describes a process for tracing a software execution of a business
process that begins by receiving "an input to business objects corresponding
to business rules associated with the business process," and continues such
that "upon detecting an instruction to trigger the execution the business
process, the business rules and corresponding business objects are processed
to compute a process-resultant for the business process." Liu ,r 60; Fig. 2.
Melamed describes an algorithm that determines whether object transactions
impact other data via business rules, in which case "[t]he involved business
rules are applied." Melamed ,r 24; Fig. 2. Although both Liu and Melamed
describe processing multiple business rules (see Liu ,r 60; Melamed ,r 24),
the Examiner has not shown that either Liu or Melamed teaches a "distinct
rule condition" that is associated with two business objects that have a
relationship with each other, as recited in claim 1. Accordingly, the
combination of Liu and Melamed does not disclose a "rule condition" and a
"distinct rule condition" that is different than the "rule condition" in that the
"distinct rule condition" is associated with two related business objects.
We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claim 1, independent claims 8 and 15 which
recite commensurate limitations, and dependent claims 3---6, 10-13, 17, 18,
21, 23, 25, and 26 for similar reasons.
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CONCLUSIONS
Under 35 U.S.C. § 101, the Examiner did not err in rejecting claims 1,
3---6, 8, 10-13, 15, 17, 18, 21, 23, 25, and 26.
Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 1,
3---6, 8, 10-13, 15, 17, 18, 21, 23, 25, and 26.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3---6, 8, 10-13,
15, 17, 18, 21, 23, 25, and 26. See 37 C.F.R. § 4I.50(a)(l) ("The affirmance
of the rejection of a claim on any of the grounds specified constitutes a
general affirmance of the decision of the examiner on that claim, except as
to any ground specifically reversed.").
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.
§ 41.50(±).
AFFIRMED
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