Ex Parte Mullin et al

Patent Trial and Appeal Board

Nov 13, 2017

12052918 (P.T.A.B. Nov. 13, 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.
12/052,918 03/21/2008 John Mullin 016295.3696 3278
31625 7590 11/15/2017
BAKER BOTTS L.L.P.
PATENT DEPARTMENT
98 SAN JACINTO BLVD., SUITE 1500
AUSTIN, TX 78701-4039
EXAMINER
PRATT, EHRIN LARMONT
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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):
juli.luong@BakerBotts.com
tracy. engberg @ bakerbott s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN MULLIN, THOMAS ELLIOT, DAMIAN DWYER,
IAN PORTER, NILAKANTHA RATHA, IAIN GLENNIE,
and GORDON DAVEY
Appeal 2015-007918
Application 12/052,9181
Technology Center 3600
Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Mullin, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1—20. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Dell Products L.P. as the real party in interest.
App. Br. 3.
Appeal 2015-007918
Application 12/052,918
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for generating a configurable workflow for
application packaging, comprising:
receiving input, from a user interface, by a packaging
application configured to manage an application packaging job
configured to install a software application on an information
handling system;
creating a plurality of workflow states based on at least the
received input, each workflow state associated with a particular step
in the application packaging job;
associating at least one action with at least one workflow state
based on at least the received input, each action defining a transition
from its associated workflow state to a target workflow state;
associating an assignee type with at least one action based on at
least the received input, the assignee type defining at least one
assignee that may be assigned to the application packaging job for the
particular action; and
associating an assignee interface component with the at least
one action based on at least the received input, the assignee interface
component comprising a user interface component operable to receive
input from the at least one assignee.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Flores US 5,734,837 Mar. 31, 1998
“Official Notice is taken that installing software applications on
information handling systems is old and well known.” Final Act. 4
and 12. [Official Notice]
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The following rejections are before us for review:
1. Claims 1—20 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 1—20 are rejected under 35 U.S.C. § 102(b) over Flores or, in
the alternative, 35 U.S.C. § 103(a) as being unpatentable over Flores
and Official Notice.
ISSUES
Did the Examiner err in rejecting claims 1—20 under 35 U.S.C. § 101
as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1—20 under 35 U.S.C.
§ 102(b) over Flores or, in the alternative, 35 U.S.C. § 103(a) as being
unpatentable over Flores and Official Notice?
ANALYSIS
The rejection of claims 1—20 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
The Appellants argued these claims as a group. See Reply Br. 3—8.
We select claim 1 as the representative claim for this group, and the
remaining claims 2—20 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under 35
U.S.C. § 101.
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According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that:
Claim(s) 1—20 is/are directed to the abstract idea of creating a
plurality of workflow states based on at least the received input, each
workflow state associated with a particular step using categories (i.e.,
workflow states) to organize, store, and transmit information.
This idea is similar to the basic concept that the courts have
found to be an abstract idea (i.e., Cyberfone [Cyberfone Sys., LLC v.
CNN Interactive Grp., Inc., 558 F. App’x 988 (Fed. Cir. 2014)
(nonprecedential).])
Ans. 3.
The Appellants challenge the Examiner’s determination under Alice
step-one on the ground that the Examiner did not provide ‘“substantial
evidence’ adequate to support [the] rejection.” Reply Br. 3 (“A. The
Examiner has failed to present a prima facie case of unpatentabilitv.”).
“[T]he Examiner fails to provide any evidence in support of his
statements .... Without any evidence to support the premises underlying this
rejection, the Examiner has failed to present a prima facie case of
unpatentability.” Reply Br. 4.
Examiners are not required to cite evidence every time they make a
patent-eligibility determination. See, e.g., para. IV “July 2015 Update:
Subject Matter Eligibility” to 2014 Interim Guidance on Subject Matter
Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) (“The courts
consider the determination of whether a claim is eligible (which involves
identifying whether an exception such as an abstract idea is being claimed)
to be a question of law. Accordingly, courts do not rely on evidence that a
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claimed concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any factual
findings”.). The Appellants (Reply Br. 4) are correct that the Alice Court
relied on evidence. For example, Emery, Speculation on the Stock and
Produce Exchanges of the United States, in 7 Studies in History, Economics
and Public Law 283, 346—356 (1896) was relied on to show that the
intermediated settlement concept the claims were directed to was a
fundamental economic practice and as such an abstract idea. But Alice does
not stand for the principle that every determination of patent-eligibility must
evidentiary support.
A determination under the first step of the Alice framework may rely
on evidence. And evidence may be submitted to challenge that
determination. This is so because although “[pjatent eligibility under § 101
presents an issue of law[,] Bancorp Servs., LLC v. Sun Life Assurance Co. of
Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012)[, this] legal conclusion may
contain underlying factual issues. Ultramercial, Inc. v. Hulu, LLC, 722 F.3d
1335, 1339 (Fed. Cir. 2013).” Accenture Global Servs., GmbHv. Guidewire
Software, Inc., 728 F.3d 1336, 1340-41 (Fed. Cir. 2013). But, cf. Microsoft
Corp. v. i4iLtd. P’ship, 131 S. Ct. 2238, 2253 (2011) (Breyer, Scalia, Alito,
JJ, concurring) (“By preventing the ‘clear and convincing’ standard from
roaming outside its fact-related reservation, courts can increase the
likelihood that discoveries or inventions will not receive legal protection
where none is due.”). However, the Appellants here do not identify any
disputed facts that evidence could help resolve. For instance, the Appellants
do not dispute the concept that the Examiner characterized the claims as
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being directed to an abstract idea. Notably, the Appellants did not avail
themselves of the opportunity to provide evidence that would show that the
concept the Examiner characterized the claims as being directed to is in fact
not an abstract idea. The Appellants do not explain the factual dispute that is
at stake here, and how evidence would bear on that dispute and thereby
affect the ultimate legal issue. Given all this, the Appellants do not make a
persuasive argument that evidence would make a difference. Therefore,
contrary to the Appellants’ assertion, the Examiner’s determination under
Alice step one was not in error for want of evidence.
In the next section — “5. Claims 1—20 are directed to patentable
subject matter” — the Appellants make several points: (a) “[i]n Alice, the
Supreme Court laid out a two-step analysis for determining § 101 eligibility”
(Reply Br. 4); (b) “the Court refers to the underlying concern of preemption
that drives the abstract idea exception” (Reply Br. 5); (c) “[cjlaims 1—20
encompass a method for generating a configurable workflow for application
packaging, not an abstract idea” (Reply Br. 5); (d) “[t]he Examiner,
however, appears not to consider the claims as a whole, instead
overgeneralizing a small portion of the claims while ignoring the remainder”
(Reply Br. 5); (e) “Appellants’ claims share many similarities to the claims
at issue in DDR Holdings” (Reply Br. 7); and, (f) “even if the Examiner was
correct that the claims were directed to the abstract idea of ‘using categories
to organize, store, and transmit information, ’ the claims do not risk
preempting all future inventions related to that idea” (Reply Br. 7).
We have no issue with Appellants’ points (a) and (b).
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Points (c) and (d) are somewhat at odds with each other. While
criticizing the Examiner’s characterization of what the claims are directed to
as “overgeneraliz[ed]” (Reply Br. 5), the Appellants’ characterization is no
less so. Notwithstanding nearly the entirety of claim 1 is reproduced, the
Appellants look to the preamble of claim 1 (“for generating a configurable
workflow for application packaging”) and designate that as what “[cjlaim 1,
as a whole, recites” (Reply Br. 5). Nevertheless, in either case, the question
is not how generally the abstract idea has been articulated but whether the
focus of the claims has been correctly determined (i.e., the “directed to”
inquiry of the Alice step one determination) and whether that focus is an
abstract idea. See Two-Way Media Ltd. v. Comcast Cable Commc ’ns, LLC,
2017 WL 4931936, *5 (Fed. Cir. 2017):
Two-Way Media argues that the district court erred by
oversimplifying the claims down to merely their preamble and failing
to recognize the claims solve technical problems. We disagree.
First, we see no error here in the district court citing to the
preamble in its review of whether the claims are directed to an
abstract idea. See, e.g., BASCOM, 827 F.3d at 1348 (citing preamble
for distillation of abstract idea). The district court’s inquiry centered
on determining the “focus” of the claims, and was thus in accord with
our precedent. E.g., Elec. Power Grp., 830 F.3d at 1353.
Be that as it may, we do not see that the Appellants have made the
case that the Examiner incorrectly determined what the claims are directed
to. The difference between the Appellants’ view (“for generating a
configurable workflow for application packaging” (Reply Br. 5)) and that of
the Examiner (“creating a plurality of workflow states based on at least the
received input, each workflow state associated with a particular step using
categories (i.e., workflow states) to organize, store, and transmit
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information” (Ans. 3) are not substantially different. At best they describe
the concept to which the claims are directed to at different levels of
abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41
(Fed. Cir. 2016) (“An abstract idea can generally be described at different
levels of abstraction. As the Board has done, the claimed abstract idea could
be described as generating menus on a computer, or generating a second
menu from a first menu and sending the second menu to another location. It
could be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.”)
Even if we were to side with the Appellants that the claims are
directed to “generating a configurable workflow for application packaging”
(Reply Br. 5), the Appellants do not make a persuasive case that that concept
is not an abstract idea. The Appellants state that this is “not an abstract
idea” (Reply Br. 5), but do not explain why not. Given the Specification
represents “configurable workflow” as data, “generating a configurable
workflow for application packaging” (Reply Br. 5) is reasonably broadly
construed as covering the generation of data, albeit the data has a particular
content (i.e., contains information representing a configurable workflow for
application packaging). See, Spec. 10:22—24:
The processed and/or generated data may represent a configurable
workflow of an application packaging process allowing for the
creation of an installation package. The processed and/or generated
data may represent tasks associated with an application packaging
process allowing for the creation of an installation package. The
processed and/or generated data may represent costs associated with
an application packaging process allowing for the creation of an
installation package.
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Irrespective of its informational content, generating data per se is an abstract
idea. See Content Extraction and Transmission LLC v. Wells Fargo Bank,
Nat. Assn, 776 F.3d 1343 (Fed. Cir. 2014), cert denied, 136 S. Ct. 119
(2015) (“collecting data” is an abstract idea). “[Collecting information,
including when limited to particular content (which does not change its
character as information), [is] within the realm of abstract ideas.” Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Not
only have the Appellants not made a persuasive case that the concept they
characterize the claims as being directed to is not an abstract idea, the case
law supports the opposite conclusion.
We note the Appellants’ statement that:
the Examiner fails to explain how “associating an assignee interface
component with the at least one action based on at least the received
input, the assignee interface component comprising a user interface
component operable to receive input from the at least one assignee” -
a step that generates or modifies information - constitutes “mere data
gathering.”
Reply Br. 6. We agree with the Examiner. Nothing in the claim limitation
at issue mentions or suggests information is generated or modified. We see
their recited “receiving] input” which reasonably broadly covers data
gathering.
Point (e). The Appellants argue that the “claims share many
similarities to the claims at issue in [DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014)]” (Reply Br. 7). We do not agree. The
court found that “the claims at issue [in DDR] specify how interactions with
the Internet are manipulated to yield a desired result—a result that overrides
the routine and conventional sequence of events ordinarily triggered by the
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click of a hyperlink.” Id. at 1258. The Appellants have not shown anything
claimed that is comparable to “specifying] how interactions with the
Internet are manipulated to yield a desired result.” This is what the
Appellants say:
Although the claims recite computer-related technologies, the claims
do not recite performing some pre-computer practice using a
computer. Instead, like the claims in DDR Holdings, [cjlaims 1,11,
and 17 are inextricably linked to computer technology and directed to
improving existing computer related technologies. As explained
above, [cjlaims 1,11, and 17 are directed to a method for generating a
configurable workflow for application packaging. As the claims
recite, the application packaging job is configured to install a software
application on an information handling system (such as a computer);
such workflows were not needed before computers were invented.
Furthermore, the method, among other steps, associates user interface
components with actions as part of generating the workflow. The
claims are thus inextricably linked to computer technology and
improve an existing technological process.
Reply Br. 7. The Appellants state that the claimed subject matter is
“inextricably linked to computer technology and [directed to] improving] []
existing [computer related] technolog[ies][].” But that is not what is
claimed. Representative claim 1 calls “for generating a configurable
workflow for application packaging” by, generally-speaking, “receiving
input,” “creating a plurality of workflow states,” “associating an assignee
type,” and, “associating an assignee interface component.” How does that
improve existing computer related technologies? The Appellants do not
adequately explain and we do not see it. The Appellants state that “the
application packaging job is configured to install a software application on
an information handling system (such as a computer). Id. We do not see
that in claim 1. For one, the term “computer” is nowhere recited in the
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claim, notwithstanding the Specification cites conventional hardware may be
used. See Spec. 14:5—26. The only arguably computer-related component
that is expressly claimed is an “interface” and even disclosed as covering
conventional means. See Spec. 16:21—22 (“e.g., via a keyboard, pointing
device, and/or other suitable means”).
The court stated that “[i]n some instances, patent-ineligible abstract
ideas are plainly identifiable and divisible from the generic computer
limitations recited by the remainder of the claim.” DDR Holdings at 1256.
That is the case here. The record supports the view that the claims are
directed to an abstract idea performed via a generic interface.
Point (f). The Appellants argue that “even if the Examiner was
correct that the claims were directed to the abstract idea of ‘using categories
to organize, store, and transmit information,’ the claims do not risk
preempting all future inventions related to that idea.” (Reply Br. 7). That is
not a persuasive argument.
It is true that the Supreme Court has characterized pre-emption as a
driving concern for patent eligibility. See Alice, 134 S. Ct. at 2354. But
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 134 S. Ct. at 2354). However, “[wjhile
preemption may signal patent ineligible subject matter, the absence of
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complete preemption does not demonstrate patent eligibility.” Id. at 1379.
Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed.
Cir.) (“[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.”), cert, denied, 136 S. Ct. 701 (2015). “What matters is
whether a claim threatens to subsume the full scope of a fundamental
concept, and when those concerns arise, we must look for meaningful
limitations that prevent the claim as a whole from covering the concept’s
every practical application.” CLS Bank Intern, v. Alice Corp. Pty. Ltd., Ill
F.3d 1269, 1281 (Fed. Cir. 2013) (Lourie, J., concurring). Here, we find the
claimed subject matter covers patent-ineligible subject matter. Accordingly,
the pre-emption concern is necessarily addressed. “Where a patent’s claims
are deemed only to disclose patent ineligible subject matter under the Mayo
framework, [] preemption concerns are fully addressed and made moot.”
Ariosa Diagnostics, 788 F.3d at 1379.
We have considered all of the Appellants’ remaining arguments as to
the Examiner’s determination made pursuant to Alice step one and have
found them unpersuasive.
Step two is “a 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).
In that regard, the Examiner determined, in part, that “[t]he additional
element of ‘a user interface’ includes using a generic computer to perform
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generic computer functions (i.e., see spec.[sic] 10033-0039).” Ans. 3. The
Appellants do not appear to challenge this or the Examiner's final
determination pursuant to Alice step two that ‘Tf|he claim(s) does/do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception.” Ans. 3.
Accordingly, we see no error in as to the Examiner’s determination
made pursuant to Alice step one.
We have considered all of the Appellants’ remaining arguments as to
the Examiner’s final determination that the claimed subject matter is
judicially-excepted from patent-eligibility.
Regarding the patent-eligibility of the dependent claims (a general
concern raised at Reply Br. 6), they focus on broad information processing
schemes (e.g., associating state types; storing; and, displaying) which do
little to patentably transform the abstract idea. Where all claims are directed
to the same abstract idea, “addressing each claim of the asserted patents ...
[is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo
Bank, Natl Assn, 776 F.3d 1343, 1348 (Fed. Cir. 2014).
The rejection is sustained.
The rejection of claims 1—20 under 35 U.S.C. § 102(b) over Flores or, in the
alternative, 35 U.S.C. § 103(a) as being unpatentable over Flores and
Official Notice.
The rejection is reversed for the reasons discussed in the Appellants’
Reply Brief (8 and 9). Namely, all the claims call for associating an
“assignee interface component” with an action or step in a workflow. See
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independent claims 1,11 and 17. We do not see that Flores describes,
inherently or expressly, or renders obvious associating an “assignee interface
component” with an action or step in a workflow.
The Examiner cited col. 8,11. 50-60 of Flores as disclosing said claim
limitation. Final Ans. 4. Said disclosure reads as follows:
The invention supports three different roles for each workflow:
Customer: The organizational role or name of the person that
can declare satisfaction for the completion of the workflow.
Performer: The organizational role or name of the person who
fulfills the conditions of satisfaction of the workflow.
Observer: The organizational role or name of person who
neither declare satisfaction nor fulfill the conditions of satisfaction but
who monitor the workflow for management, training, or to fulfill
other organizational concerns.
Prior to this disclosure, Flores describes a system “utilizing] a graphical
user interface.” Col. 7,1. 49.
To use the system, the user first creates a business process which is
defined in terms of a business process map. A business process map
contains customer and performer names and organizational roles for
the primary workflow, target cycle times for the entire process,
version of the process, when and by whom the process may be started,
and so forth. In addition, it contains workflow and link definitions,
roles, permitted acts, default identities, application data and forms for
each workflow in the process, and trigger act or state, triggered act or
state and condition (if link is conditional) for each link in the process.
Col. 8,11. 20-30. “Workflows are represented graphically as elliptical loops
with four phases as shown in FIGS, la—If. Each workflow and each phase
within the workflow, has a starting point and an ending point.” Col. 8,
11. 31-34.
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While Flores would appear to lead one to graphically display a
workflow on an interface, Flores does not adequately describe or lead one to
associate an “assignee interface component” with an action or step in a
workflow as claimed. The process Flores discloses does not involve
associating a component of an interface and a step or action of a workflow
as the claims require.
The rejection is not sustained.
CONCLUSIONS
The rejection of claims 1—20 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter is affirmed.
The rejection of claims 1—20 under 35 U.S.C. § 102(b) over Flores or,
in the alternative, 35 U.S.C. § 103(a) as being unpatentable over Flores and
Official Notice is reversed.
DECISION
The decision of the Examiner to reject claims 1—20 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
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