Ex Parte Nadgir et al

Patent Trial and Appeal Board

Nov 28, 2017

13405334 (P.T.A.B. Nov. 28, 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.
13/405,334 02/26/2012 Devaprasad K. Nadgir IN920110043US2 4074
58139 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
TRUONG, DENNIS
ART UNIT PAPER NUMBER
2152
NOTIFICATION DATE DELIVERY MODE
11/30/2017 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEVAPRASAD K. NADGIR and VIJAY C. TELUKAPALLI
Appeal 2017-000847
Application 13/405,3341
Technology Center 2100
Before BRADLEY W. BAUMEISTER, JOSEPH P. LENTIVECH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Non-Final Rejection of claims 1—7, which constitute all of the
claims pending in the application on appeal. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).
1 Appellants list International Business Machines Corporation as the real
party in interest. App. Br. 1.
Appeal 2017-000847
Application 13/405,334
RELATED APPEAL
Appellants assert that Appeal 2017-000643 is related to the instant
Appeal. App. Br. 1.
STATEMENT OF THE CASE
Appellants ’ Invention
Appellants’ invention generally relates to graphically displaying
lifecycle information of a governed object in a service registry in
combination with the policies associated with the lifecycle states.
Spec. 1:10-12. Claim 1, which is illustrative of the claimed invention, reads
as follows:
1. A method for graphically displaying lifecycle information
of a governed object in combination with policies associated with
lifecycle states, the method comprising:
retrieving properties of said governed object, wherein said
properties comprise an object type and a current lifecycle state;
retrieving lifecycle definitions for said current lifecycle
state and one or more potential future lifecycle states associated
with said governed object;
retrieving policy definitions that apply to said object type,
said current lifecycle state and said one or more potential future
lifecycle states;
building a table correlating said lifecycle definitions for
said current lifecycle state and said one or more potential future
lifecycle states with said policy definitions; and
generating, by a processor, a graphical representation
detailing said current lifecycle state, transitions to said one or
more potential future lifecycle states and said policy definitions
that apply to each transition for said governed object using said
table.
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Rejections
Claims 1—6 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by McCauley et al. (US 2005/0234849 Al; published Oct. 20,
2005) (“McCauley”). Non-Final Act. 3—7.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of McCauley and Martinez et al.
(US 2011/0196940 Al; published Aug. 11, 2011) (“Martinez”). Non-Final
Act. 7—8.
ANALYSIS
Retrieving Properties of Said Governed Object
Appellants contend McCauley fails to disclose “retrieving properties
of said governed object, wherein said properties comprise an object type and
a current lifecycle state,” as recited in claim 1. App. Br. 3—5; Reply Br. 2—3.
Appellants argue McCauley does not disclose “retrieving properties of the
governed object” but, instead, “simply discloses that actions can be
controlled by policies and/or roles associated with the content node.” App.
Br. 4 (citing McCauley Tflf 50, 53). According to Appellants, an “object”
refers to a service object or a logical object derived from documents, as well
as instances of such objects, and an object is said to be governed if it
currently has a lifecycle associated with it. App. Br. 4 (citing Spec. 12:17—
19). Appellants argue McCauley’s content node does not disclose an
“object” because the content node does not correspond to service objects or
logical objects derived from documents as well as instances of such objects.
App. Br. 4—5. Appellants acknowledge that McCauley discloses that the
content node can follow lifecycles, but argue “the content node does not
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Application 13/405,334
correspond to the claimed object, and hence, does not correspond to the
claimed governed object.” Reply Br. 3.
Regarding the disputed limitation, the Examiner finds McCauley
discloses that Figure 2 illustrates an exemplary lifecycle for a content node
representing a news article and, therefore, that McCauley teaches or suggests
the claimed “governed object.” Ans. 2 (citing McCauley, Fig. 2; 1106).
We disagree.
The Examiner essentially finds the broadest reasonable definition of
“governed object” includes any object having a lifecycle associated with it.
See Ans. 2. Although we give claims their broadest reasonable
interpretation, “the construction cannot be divorced from the specification
and the record evidence.” In re Man Machine Interface Technologies LLC,
822 F.3d 1282, 1286 (Fed. Cir. 2016) (quoting In re NTP, Inc., 654 F.3d
1279, 1288 (Fed. Cir. 2011)).
Here, Appellants’ Specification provides a “governed object” is an
object having an associated lifecycle. Spec. 12:18—19. The Specification
further provides that “objects” refer to “service objects or logical objects
derived from documents as well as instances of such objects” (Spec. 12:17—
18) and that “[sjervice objects or logical objects are derived from documents
(WSDF (Web Service Definition Fanguage) documents; XSD (XMF
schema definition) documents; XMF (extensible mark-up language)
documents, WS-Policy documents, etc.) when they are loaded into the
service registry environment” (Spec. 2:27—30). “Web Service Definition
Fanguage (WSDF), Extensible Mark-up Fanguage (XMF) schema, policy or
Service Component Architecture (SCA) documents, capture the technical
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Application 13/405,334
details of what a service can do, how it can be invoked, or what it expects
other services to do.” Spec. 2:9—13; see also Spec. 1:17—19.
Based on these teachings in the Specification, the broadest reasonable
interpretation of “governed object” is an object that (1) has an associated
lifecycle; and (2) is derived from a document capturing the technical details
of what a service can do, how it can be invoked, or what it expects other
services to do (e.g., a service document) when the document is loaded into a
service registry environment.
McCauley teaches “[cjontent nodes represent content/data.”
McCauley 1 53. The Examiner’s findings fail to show how a node
representing content/data and having a lifecycle associated therewith, as
taught by McCauley, teaches or suggests an object having an associated
lifecycle and derived from a document capturing the technical details of
what a service can do, how it can be invoked, or what it expects other
services to do, as required by claim 1. Accordingly, we do not sustain the
Examiner’s rejection of claim 1; and claims 2—6, which depend therefrom.
Claim 7 stands rejected under 35 U.S.C. § 103(a) based on McCauley
and Martinez. Non-Final Act. 7—8. The Examiner’s findings are insufficient
to show that Martinez cures the deficiencies in the teachings of McCauley
discussed supra with respect to claim 1. Accordingly, we do not sustain the
Examiner’s rejection of claim 7 for the reasons discussed above.
Because resolution of this issue is dispositive, we do not reach the
merits of Appellants’ remaining arguments.
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NEW GROUND OF REJECTION
Claims 1—7 are rejected on a new ground of rejection under 35 U.S.C.
§ 101 as being directed to non-patentable subject matter.
In Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 566
U.S. 66, 77—78 (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 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.”
Id. (citing Mayo, 566 U.S. at 78—79). 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.
(citing Mayo, 566 U.S. at 72—73).
Under Alice step one, “claims are considered in their entirety to
ascertain whether their character as a whole is directed to excluded subject
matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015). “We . . . 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 effect that itself is the abstract idea and merely
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invoke generic processes and machinery.” McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016). The prohibition on
the patenting of abstract ideas may not be circumvented simply by drafting
claims to include generic computer hardware. See Alice, 134 S. Ct. at 2359
(explaining that allowing claims to a computer system configured to
implement an abstract idea “would make the determination of patent
eligibility ‘depend simply on the draftsman’s art,’ thereby eviscerating the
rule that ‘[l]aws of nature, natural phenomena, and abstract ideas are not
patentable’”) (citations omitted).
Appellants’ claims 1—7, when considered in light of the Specification,
are directed to the abstract processes of retrieving information of a specific
content (e.g., “retrieving properties of said governed object;” “retrieving
lifecycle definitions for said current lifecycle state and one or more potential
future lifecycle states associated with said governed object;” “retrieving
policy definitions that apply to said object type, said current lifecycle state
and said one or more potential future lifecycle states”), analyzing the
retrieved information (e.g., “building a table correlating said lifecycle
definitions for said current lifecycle state and said one or more potential
future lifecycle states with said policy definitions”), and displaying a result
of the analysis (e.g., “generating ... a graphical representation detailing said
current lifecycle state, transitions to said one or more potential future
lifecycle states and said policy definitions that apply to each transition for
said governed object using said table”). Information as such is intangible,
see Microsoft Corp. v. AT&T Corp., YU S. Ct. 1746, 1756 n.12 (2007), and
information collection and analysis, including when limited to particular
content, is within the realm of abstract ideas. See, e.g., Internet Patents
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Application 13/405,334
Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011).
Turning now to the second step of the Alice inquiry, we find nothing
in these claims that adds “significantly more” to transform the abstract
concepts of retrieving data, analyzing the retrieved data, and displaying a
result of the analysis into a patent-eligible application. Alice, 134 S. Ct. at
2357. Appellants’ independent claim 1 simply incorporates a generic
component of a general-purpose computer such as “a processor” to perform
the abstract concepts of retrieving data, analyzing the retrieved data, and
displaying a result of the analysis.
As recognized by the Supreme Court, “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice, 134 S. Ct. at 2358—59 (concluding claims “simply
instructing] the practitioner to implement the abstract idea of intermediated
settlement on a generic computer” are not patent eligible); see also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715—16 (Fed. Cir. 2014)
(concluding claims merely reciting the abstract idea of using advertising as
currency as applied to particular technological environment of the Internet
are not patent eligible); Accenture Glob. Servs., GmbHv. Guidewire
Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013) (concluding claims
reciting “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” are not
patent eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed.
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Cir. 2012) (“[sjimply adding a ‘computer aided’ limitation to a claim
covering an abstract concept, without more, is insufficient to render [a]
claim patent eligible”).
For the foregoing reasons, claims 1—7 are directed to patent-ineligible
subject matter under 35U.S.C. § 101.
DECISION
We reverse the Examiner’s rejection of claims 1—6 under 35 U.S.C.
§102.
We reverse the Examiner’s rejection of claim 7 under 35 U.S.C.
§ 103(a).
Pursuant to our discretionary authority under 37 C.F.R. 41.50(b), we
enter a new ground of rejection for claims 1—7 under 35 U.S.C. § 101.
Section 41.50(b) provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. §41.50(b).
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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).
REVERSED
37 C.F.R. $ 41.50(b)
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