Ex Parte Manucha et al

Patent Trial and Appeal Board

Aug 21, 2018

12760067 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/760,067 04/14/2010
29855 7590 08/23/2018
Blank Rome LLP - Houston General
717 Texas Avenue, Suite 1400
Houston, TX 77002
FIRST NAMED INVENTOR
Rajiv Manucha
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.
757-0006US 8317
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
houstonpatents@blankrome.com
mbrininger@blankrome.com
smcdermott@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJIV MANUCHA, STEVEN LLOYD CROZIER, and
ANTONIO GIULIANO
Appeal2017-006825
Application 12/760,067 1
Technology Center 3600
Before HUNG H. BUI, AMBER HAGY, and SHARON PENICK,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-22, which are all pending on appeal.
Claims App. We have jurisdiction under 35 U.S.C. § 6(b ).
WeAFFIRM. 2
1 According to Appellants, the real party in interest is Management Systems
Resources, Inc. App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed
November 30, 2016; Reply Brief ("Reply Br.") filed March 21, 2017;
Examiner's Answer ("Ans.") mailed January 26, 2017; Final Office Action
("Final Act.") mailed December 2, 2015; and original Specification
("Spec.") filed April 14, 2010.
Appeal2017-006825
Application 12/760,067
STATEMENT OF THE CASE
Appellants' invention relates generally to converting an export license
management process into electronic form and, more specifically, "a system
and method for managing creation of export license amendment forms
relating to export and import of defense-related articles and services subject
to regulations and regulatory agencies." Spec. ,r 5; Abstract.
Claims 1, 6, 11, 16, 18, and 22 are independent. Representative claim
1 is reproduced below:
1. A method for operating a computer system to apply
one or more amendments to an approved export license, the
approved export license containing a plurality of fields having
values, the method comprising:
the computer system retrieving current values for each of
the plurality of fields in a current license representative of the
approved export license and application of values changed by
applying one or more amendments;
the computer system receiving values of one or more fields
of current license to be changed by the one or more amendments;
the computer system submitting an amendment to an
outside entity for approval, the amendment based on the received
values of one or more fields of current license to be changed;
the computer system receiving approval of the amendment
from the outside entity;
the computer system saving current values of the one or
more fields of the current license to be changed by the one or
more amendments after approval of the amendment;
the computer system updating the values of the one or
more fields of the current license to be changed by the one or
more amendments to create updated values of the fields; and
the computer system saving the updated values of the
fields as a new set of current values for each corresponding field
of the plurality of fields in the approved export license, wherein
the new set of current values reflects the current license.
App. Br. 25 (Claims App 'x).
2
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Application 12/760,067
EXAMINER'S REJECTION3
Claims 1-22 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter (abstract
idea). Final Act. 2-3.
DISCUSSION
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 79 (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. 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 eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
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." Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). In
3 Claims 1-22 were rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, as being indefinite. Final Act. 4. However,
the § 112(b) rejection was withdrawn by the Examiner and, as such, is no
longer pending on appeal. Ans. 2.
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Application 12/760,067
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, 566 U.S. at 72-73).
In rejecting claims 1-22 under 35 U.S.C. § 101, the Examiner
determines these claims are directed to an abstract idea of "updating a
database with amended values ( electronic data) regarding an approved
export license" that is analogous or similar to those discussed in (1) Digitech
Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344
(Fed. Cir. 2014) (holding that "a process of organizing information through
mathematical correlations" is an abstract idea); (2) Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1353-1356 (Fed. Cir. 2016) (holding
that "[ c ]ollecting information, analyzing it, and displaying certain results of
the collection and analysis" is an abstract idea); and (3) Intellectual Ventures
I LLC v. Capital One Financial Corporation, 850 F.3d 1332 (Fed. Cir.
2017) (holding that "organizing, displaying, and manipulating data of
particular documents" is an abstract idea). Final Act. 2-3; Ans. 2--4. The
Examiner also finds the claims are "[p ]rocesses of organizing information
that can be performed mentally [or by pen and pencil]." Ans. 3 (citing
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011)).
The Examiner further determines the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because "the limitations are merely instructions to implement the
abstract idea on a computer and require no more than a generic computer to
perform generic computer functions that are well-understood, routine, and
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conventional activities previously known to the industry." Final Act. 3; Ans.
5.
Alice/Mayo--Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants "do not
substantially challenge" the Examiner's determination that "the claims [are]
being directed to an abstract idea." App. Br. 17; Reply Br. 3. We agree with
the Examiner that claims 1-22 are directed to an abstract idea of "updating
specific fields of a database with amended values [ ( electronic data)]
regarding an approved export license" (Final Act. 2) or simply "maintaining
electronic data records in a database" (Ans. 2).
Appellants' claimed data gathering and updating are abstract ideas
similar to data gathering and manipulation techniques identified in Digitech,
Electric Power Group, and Intellectual Ventures. In addition, the law is
clear that "a method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under§ 101."
CyberSource, 654 F.3d at 1373. Additionally, mental processes remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. See id. at 1375 ("[T]hat
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.").
Alice/Mayo--Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants do not argue
whether the claims contain "an inventive concept." Instead, Appellants
argue (1) "the analysis does not identify any additional elements recited in
the claim beyond the identified judicial exception [i.e., an abstract idea]";
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(2) "the analysis fails to explain the reason that the additional elements taken
in combination do not result in something 'significantly more'"; and (3) the
analysis fails to ignore that "all prior art rejections have been overcome"-as
evidence "that the computer functions cannot be 'well-understood, routine,
and conventional."' App. Br. 18-21. According to Appellants, (1) the
Examiner fails to perform "combination of elements" analysis as required by
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016); and (2) the prior art rejection withdrawal is evidence
"that the Claims are not 'Well-understood, Routine, and Conventional."'
Reply Br. 3-7.
Appellants' arguments are not persuasive. At the outset, we note that
(1) "the concept of inventiveness is distinct from that of novelty" and
(2) "[t]he inventiveness inquiry of§ 101 should therefore not be confused
with the separate novelty inquiry of§ 102 or the obviousness inquiry of
§ 103." Amdocs (Israel) Ltd. v. Openet Telecom, Inc. 841 F.3d 1288, 1311
(Fed. Cir. 2016). We may even assume that the techniques claimed are
"[g]roundbreaking, innovative, or even brilliant," but that is not enough for
eligibility. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that
claimed techniques be novel and nonobvious in light of prior art, passing
muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 89-90 (2012); Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) ("[A] claim for a
new abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty."); Intellectual
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Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016)
(same for obviousness). The claims here are ineligible because their
innovation is an innovation in ineligible subject matter. Their subject is
nothing but updating electronic data records in a database. An advance of
that nature is ineligible for patenting.
According to the Supreme Court in Alice, 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."' Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 72-73). Under current Federal Circuit
precedent, an "inventive concept" under Alice step 2 can be established by
showing, for example, that the patent claims:
( 1) provide a technical solution to a technical problem
unique to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks" (see DDR, 773 F.3d
at 1257);
(2) transform the abstract idea into "a particular,
practical application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-users,
with customizable filtering features specific to each end user"
(see Bascom, 827 F.3d at 1350); or
(3) "entail[] an unconventional technical solution
([e.g.,] enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously required
massive databases)" and "improve the performance of the system
itself' (see Amdocs, 841 F.3d at 1300, 1302).
Appellants cite Bascom for the legal proposition that the Examiner is
required to perform a "combination of elements" analysis. However,
Appellants' reliance on Bascom is misplaced. First, there is no such
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requirement. Once the Examiner has established a prima facie case of
patent-ineligibility, the burden rests with Appellants to explain why the
Examiner's determination that claims do not contain an "inventive concept"
under Alice step 2, is incorrect, which Appellants have failed to do. Second,
Bascom's invention was directed to a particular arrangement of filtering
software at a specific location, remote from the end-users, with customizable
filtering features specific to each end user, shown in Figures 1 and 2 of U.S.
Patent No. 5,987,606 as reproduced below.
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