Ex Parte Mayle et al

Patent Trials and Appeals Board

May 22, 2019

12330182 - (D) (P.T.A.B. May. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/330, 182 12/08/2008
77212 7590 05/24/2019
Cantor Colburn LLP - IBM Endicott
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Wolfgang Mayle
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.
DE920080056US 1 1315
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
05/24/2019 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):
usptopatentmail @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOLFGANG MAYLE and SEBASTIAN ROTHBUCHER
Appeal2018-003820
Application 12/330,182 1
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER,
and SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 1, 2, and 5-18. 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. Appeal Brief filed October 13, 2017, hereafter
"App. Br.," 2.
Appeal2018-003820
Application 12/330,182
BACKGROUND
The invention relates to the formation of an information technology
(IT) plan for an enterprise utilizing an automated enterprise architecture
(EA) system. Specification, hereafter "Spec.," ,r 4. The invention is
directed to creation of a project document, which describes a particular
portion of operations of the enterprise; ranking the criticality of the project
as to other projects; linking products; receiving organization technology
adoption preferences; and creating a list of products to be upgraded. Id. ,r 5.
Representative claim 1 is reproduced from page 8 of the Appeal Brief
in the Claims Appendix (Claims App'x) as follows:
1. A method of forming an IT plan for an enterprise utilizing
an automated enterprise architecture (EA) system, the method
compnsmg:
creating a project document, the project document
describing a particular process performed during operation of
the enterprise;
ranking the criticality of the process as compared to other
processes of the enterprise;
linking products, including product versions, that are
related to the processes of the project document in the EA
system, wherein the link is a two-way link;
receiving organization software version adoption
preferences at a computing device; [ and]
creating, with the computing device, a list of products to
be upgraded based on the technology adoption preferences and
the ranking of the process.
In a Final Rejection, the Examiner rejects claims 1, 2, and 5-18 under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more. Final Action, hereafter "Final Act.," 2-5, mailed May 12, 2017.
2
Appeal2018-003820
Application 12/330,182
DISCUSSION
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas include certain methods of
organizing human activity, such as fundamental economic practices (Alice,
573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker
v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv.
Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible
include physical and chemical processes, such as "molding rubber products"
(Diamondv. Diehr, 450 U.S. 175, 191 (1981) ("Diehr")); "tanning, dyeing,
making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at
182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1853))); and
3
Appeal2018-003820
Application 12/330,182
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical
formula, but the Supreme Court held that "[a] claim drawn to subject matter
otherwise statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."), see also
e.g., id. at 187 ("It is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The USPTO recently published revised guidance on the application of
§ 101, in accordance withjudicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("2019
Guidance"). Under the 2019 Guidance, a claim is "directed to" an abstract
idea if the claim recites any of (1) mathematical concepts, (2) certain
methods of organizing human activity, and (3) mental processes-without
4
Appeal2018-003820
Application 12/330,182
integrating such abstract idea into a "practical application," i.e., without
"apply[ing], rely[ing] on, or us[ing] the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception."
Id. at 52-55. A claim so "directed to" an abstract idea constitutes ineligible
subject matter, unless it recites an additional element ( or combination of
elements) amounting to significantly more than the abstract idea. Id. at 56.
With this context in mind, we evaluate the Examiner's rejection of
representative claim 1.
The Examiner finds that claim 1 is directed to a judicial exception
because it is directed to forming an IT (information technology) plan for an
enterprise. Final Act. 4. The Examiner finds that this is a method of
organizing human activity, which is an ineligible abstract idea. Id. The
Examiner further finds that the claim 1 limitations including "creating a
project document," "ranking the criticality of the process," "linking
products," "receiving organization software version adoption preferences,"
and "creating ... a list of products" are steps for data manipulation related to
the abstract idea of forming an IT plan. Id.
Appellants argue that the formation of an IT plan is not abstract. App.
Br. 4. More particularly, Appellants assert that the specific steps of claim 1
that are implemented are not themselves abstract. Appellants argue that the
steps of creating a project document and ranking the criticality of the
processes are particular processes. Id. Appellants further contend that the
steps of linking products, receiving organizational software adoption
preferences, and creating a list of products for upgrade are not abstract but
are real world processes. Id. at 4--5.
5
Appeal2018-003820
Application 12/330,182
We agree with the Examiner's findings that claim 1 recites the steps
of "creating a project document," "ranking," "linking products," "receiving,"
and "creating," and that these steps are used for "forming an IT plan for an
enterprise" of the claim preamble, which is a method of organizing human
activity, that is, managing activities and following rules and instructions.
See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d
1336, 1344--45 (Fed. Cir. 2013) (determining "system claims ... [that] only
contain 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" to be patent-
ineligible); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1270, 1278, 1280 (Fed. Cir. 2012) (method and system
claims for managing a stable value protected life insurance policy by
performing calculations and manipulating the results held patent-ineligible);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)
( creating a contractual relationship). Further, our reviewing courts have
determined certain claims drawn to manipulating information, a task humans
have always performed, are ineligible. See 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").
The Examiner's findings also align with the intrinsic record. The
specification states that its embodiments are directed to a product for
producing an IT plan for an enterprise. See Spec. ,r,r 4--5. Thus, we find that
representative claim 1 recites the abstract idea of organizing human activity.
We next consider the issue of whether representative claim 1
6
Appeal2018-003820
Application 12/330,182
integrates the judicial exception into a practical application, that is, whether
it "appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception."
See 2019 Guidance, 54--55. Here, the Examiner finds that the claims require
no more than a generic computer to perform generic computer functions.
Final Act. 5. We agree that the method of representative claim 1 is
implemented by a computing system, which may by "any suitable computer
or computing platform," and with no specialized computer or computer
interfaces identified in the specification. Spec. ,r 29, see also id. ,r,r 26-28,
30-32, Fig. 1. Under Alice, instructing one to "apply" an abstract idea and
reciting no more than generic computer elements performing generic
computer tasks does not make an abstract idea patent eligible. See Alice,
573 U.S. at 217-218.
Appellants argue that the processes in the claim are linked to allow the
computing device to operate in an improved manner, which is similar to the
improved computer function in Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335-36 (Fed. Cir. 2016) ("Enfish"). Reply Brief, hereafter "Reply
Br.," 2, mailed February 22, 2018. Appellants further argue that the bi-
directional linking-of-products step allows for better processing. Id. at 2-3.
We are not persuaded by Appellants' arguments. In Enfish the claims were
directed to improvements in the way computers and networks carry out their
basic functions, that is, an improvement in technology. See Enfish, 822 F.3d
at 1335-36 ("[T]he 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'
7
Appeal2018-003820
Application 12/330,182
for which computers are invoked merely as a tool."). Here, we discern no
improvements to technology by the steps of claim 1, and instead the steps
use computers as a tool for implementation. As to the bi-directional linking
of products step, that step may allow improved efficiency in furtherance of
forming an IT plan, an abstract idea, however, there is no identification of a
technology improvement. See Reply Br. 2-3. Moreover, the linking step is
recited at a high level of generality and is performed by generic computer
functions. Thus, we find no reversible error with the Examiner's
determination that representative claim 1 recites an abstract idea.
With regard to the second step of the Alice framework, the Federal
Circuit has held that, after determining that the claim is directed to an
ineligible concept, we assess whether the claim limitations, other than the
invention's use of the ineligible concept to which to was directed, were well-
understood, routine, and conventional. BSG Tech. LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018). Here, the Examiner found that
representative claim 1 limitations of "creating," "ranking," "linking
products," "receiving organization software version," and "creating" are
steps for data manipulation related to the abstract idea of forming an IT plan.
Final Act. 4. Appellants do not assert that there is any unconventional use of
a computer, and merely list all the steps of the claims, but fail to explain or
provide support that the claims entail anything more than the use of a
generic computer to implement the abstract idea of the claims. App. Br. 5-
6. The use of a generic computer performing generic computer functions to
implement an abstract idea has repeatedly been found to not make an
abstract idea patent eligible. See Alice, 573 U.S. at 223-24 (Instructing one
to "apply" an abstract idea and reciting no more than generic computer
8
Appeal2018-003820
Application 12/330,182
elements performing generic computer tasks does not make an abstract idea
patent eligible.); BSG Tech. LLC, 899 F.3d at 1290-91; SAP America, Inc. v.
InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) ("In accordance with
the Supreme Court's conclusion in Alice, ... this court has ruled many times
that 'such invocations of computers and networks that are not even arguably
inventive are insufficient to pass the test of an inventive concept in the
application of an abstract idea."') ( citing Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055-56 (Fed. Cir. 2017)). Thus, we find
no error with the Examiner's determination that the claims implement an
abstract idea through generic computer systems performing generic
computer functions.
Appellants additionally argue that the claims do not preempt the
general field of generating an IT plan. App. Br. 6. However, while
preemption may signal patent ineligible subject matter, "the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-1363
(Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract."). And, "[w]here a patent's claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot." Ariosa, 788 F.3d at 1379.
Accordingly, we are not persuaded of error in the Examiner's
conclusion that representative claim 1 is directed to patent-ineligible subject
9
Appeal2018-003820
Application 12/330,182
matter. Claims 2 and 5-18 are not separately argued and fall with claim 1.
See 37 C.F.R. § 4I.37(c)(l)(iv).
SUMMARY
The rejection of claims 1, 2, and 5-18 under 35 U.S.C. § 101 is
affirmed.
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
10