Ex Parte Nally et al

Patent Trial and Appeal Board

Jan 9, 2018

11405874 (P.T.A.B. Jan. 9, 2018)

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.
11/405,874 04/18/2006 Martin P. Nally RSW920050201US1 3206
37945 7590 01/11/2018
DTTKFW YFF
EXAMINER
YEE AND ASSOCIATES, P.C. PADOT, TIMOTHY
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
01/11/2018 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte
Appeal 2016-002964
Application 11/405,874
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the
Examiner’s Final rejection of claims 15-17, 20-26, and 28 which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2016-002964
Application 11/405,874
THE INVENTION
The Appellants’ claimed invention is directed to a method and
apparatus for graphically depicting a global process flow graph (Spec., para.
3). Claim 15, reproduced below, is representative of the subject matter on
appeal.
15. A computer implemented method of generating a
decomposed transaction, the computer implemented method
comprising:
a processor receiving a global process flow graph that
describes a global transaction as a network of actions and
flows that are performed by servers, wherein a role of a
server describes a
behavior of the server, wherein actions performed within the
global transaction are arbitrarily assigned to a specific role
for execution by a specific server without regard to details of
message interactions
used to coordinate activities between roles and between
servers in different roles, and wherein a conceptual flow of
data and control between actions is represented in the global
process flow graph;
the processor marking a progress of an execution of
actions in the global process flow graph with a token,
wherein a presence of the token at a specific action indicates
on the global process flow
graph that the progress of the execution of computer-
implemented actions has reached the specific action; and
the processor generating, from the global transaction, a
decomposed transaction that comprises a plurality of
subprocesses, wherein the plurality of subprocesses is created
by the processor auto-generating executable message
interactions between different roles in the decomposed
transaction, wherein each of the different roles comprises one
or more servers executing actions of the
global transaction, and wherein the executable message
interactions control execution of assigned actions by
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Application 11/405,874
different roles that are represented in the global process flow
graph.
THE REJECTIONS
The following rejections are before us for review:
1. Claim 28 is rejected under 35U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement and show
possession of the invention.
2. Claims 15—17, 20-26, and 28 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1
ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
The Appellants have failed to provide any arguments for this rejection
and this rejection of claim 28 is therefore summarily affirmed.
Rejection under 35 U.S.C. §101
The Appellants argue that the rejection of claim 15 is improper
because the claim is not directed to an abstract idea in either a fundamental
economic practice or a method of organizing human activities (App. Br. 6, 7;
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(Explaining the general evidentiary standard for proceedings before the
Patent Office.).
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Appeal 2016-002964
Application 11/405,874
Reply Br. 2—5). The Appellants also argue that the claim improves the
functioning of the computer itself and is rooted in computer technology
(App. Br. 8—10; Reply Br. 5,6).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 3—13). The Examiner has determined that the claim is directed
to depicting the process/behavior of a flow graph which is a fundamental
economic practice and is directed to an abstract idea (Final Rej. 9; Ans. 2—
7). The Examiner has also determined that the claim fails to transform the
abstract idea into significantly more than the abstract idea itself (Final Rej.
10; Ans. 8-13).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a “new and useful process, machine, manufacture,
or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted 35 U.S.C. § 101 to include an implicit exception: “laws
of nature, natural phenomena, and abstract ideas” are not patentable. See,
e.g., Alice Corp. PtyLtd. v. CLS Bank Inti, 134 S.Ct. 2347, 2354 (2014).
In judging whether claim 15 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as “an ordered
combination” to determine whether the additional elements “transform the
nature of the claim” into a patent-eligible application of the abstract idea. Id.
This is a search for an “inventive concept” an element or combination of
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Application 11/405,874
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id. at 2358.
Here, we determine that the claim is directed to the concept of
depicting and tracking a process flow graph composed of subprocesses.
This is a fundamental economic practice long prevalent in our system of
commerce used to track process flow and is an abstract idea beyond the
scope of 35 U.S.C. § 101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
Here, the claim is not rooted in technology but rather directed to the
fundamental economic practice of depicting and tracking a process flow
graph composed of sub processes which is an abstract concept. Further, the
claim limitations fail to transform the abstract nature of the claim into
patent-eligible subject matter. For these above reasons the rejection of claim
15 is sustained.
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Application 11/405,874
The Appellants have also presented specific arguments for claims 16
and 20 in which the limitations from each claim are recited and argued to
provide more than a mere abstract idea. For claim 16 it is argued that the
limitations provide “control/optimization of a computer system”. For claim
20 it is argued that the limitations provide “significantly more” than a
computer system of the prior art and further that the claim is “intertwined
with computer technology” (App. Br. 11, 12).
We have considered but reject these arguments. Both claims 16 and
20 are directed to similar subject matter as claim 15 addressed above in the
fundamental economic practice of depicting and tracking a process flow
graph composed of subprocesses which is an abstract idea. Here, the cited
and argued specific claim limitations in each of the respective claims 16 and
20 fails to transform the abstract nature of the claim into patent-eligible
subject matter. Claim 16 uses generic computer components in a
conventional manner and there is no showing of “transformation” of the
abstract nature of the claim. Claim 20 uses generic computer components in
a conventional manner and there is no showing of “transformation” of the
abstract nature of each claim. In claim 20 merely using a computer to
“control execution of assigned actions by different roles. . . . [i]n the global
process graph” fails to transform the abstract nature of the claim into patent
eligible subject matter. For these above reasons, the rejections of claim 16
and 20 is sustained as well.
The remaining claims contain similar subject matter and the rejection
of these claims is sustained as well as the same arguments has been
presented for these claims.
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Appeal 2016-002964
Application 11/405,874
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims as listed in the Rejection section above.
DECISION
The Examiner’s rejection of claims 1—28 is sustained.
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.
§ 1.136(a)(l)(iv).
AFFIRMED
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