Ex Parte O et al

Patent Trial and Appeal Board

Aug 31, 2017

12023161 (P.T.A.B. Aug. 31, 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.
12/023,161 01/31/2008 PATRICK J. O'SULLIVAN RSW920070362US1 6955
8152-0271
112978 7590 09/05/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, EL 33498
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK J. O’SULLIVAN, HEMA SRIKANTH, and
CAROL S. ZIMMET
Appeal 2016-004517
Application 12/023,1611
Technology Center 3600
Before ELENI MANTIS MERCADER, SCOTT E. BAIN, and
JASON M. REPKO, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—10 and 12—21, which constitute all claims
pending in the application. Claim 11 has been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as International Business
Machines Corporation. App. Br. 3.
Appeal 2016-004517
Application 12/023,161
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to managing “relationships” in an
organizational structure (such as an organizational chart of a corporation) for
budgeting and cost purposes, including tracking of “dotted line” (ancillary)
relationships as well as “direct-report” relationships. Spec. 1—6. Claims
1,10, and 16 are independent. Claim 1 is illustrative of the invention and
the subject matter of the appeal, and reads as follows:
1. An automated system for managing ancillary
relationships in an organization comprising:
one or more processors and one or more computer-
readable, tangible storage devices;
a social network graph, stored in the one or more
computer-readable storage devices, configured to graphically
illustrate a plurality of relationships between members of an
organization, wherein a classification of a relationship within
the plurality of relationships comprises at least direct and
ancillary relationships;
a directory services data store of the one or more
computer-readable storage devices, said directory services data
store being configured to contain at least one directory services
tree representing information illustrated in the social network
graph, wherein the at least one directory services tree stores the
plurality of relationships of the social network graph in a
standardized format; and
an ancillary relationship coordinator, comprising
program instructions of the one or more storage devices, said
program instructions executing on the one or more processors
to:
monitor interactions between members to determine a
plurality of ancillary relationships that are not administrative
relationships and are not defined in organizational structure;
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process and manage the identified plurality of ancillary
working relationships, wherein the plurality of ancillary
relationships are incorporated into the social network graph and
the at least one directory services tree, wherein direct
relationships are administrative relationships between members
of the organization.
App. Br. 51 (Claims App.).
The Rejections on Appeal
Claims 1—10 and 12—21 are rejected under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 14—15.
Claims 1—10 and 12—21 are rejected under pre-AIA 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
Final Act. 15—22.
Claims 1—10 and 12—21 are rejected under pre-AIA 35 U.S.C. § 112,
second paragraph as being indefinite. Final Act. 22—23.
Claims 1—5, 7, 9, 10, and 12—21 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Darr (US 2007/0226248 Al;
Sept. 27, 2007) and Chandra (US 2007/0021994 Al; Jan. 25, 2007). Final
Act. 24—30, 31—38.
Claims 6 and 8 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Darr, Chandra, and the Examiner’s Official Notice.
Final Act. 30, 38—39.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are not persuaded
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the Examiner erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner’s
Answer, and provide the following for highlighting and emphasis.
Rejection Under 35 U.S.C. §101
Appellants argue the Examiner erred in rejecting the claims as
directed to ineligible subject matter, namely, the abstract idea of “analyzing
relationships in an organization.” App. Br. 46; Ans. 55; see also Final Act.
14 (claims directed to a “method of organizing human activity, specifically,
“management of ancillary relationships in an organization”). Appellants
argue the claims are not abstract because they require a “special purpose
computer programmed to perform the disclosed algorithm,” and further
argue the claims recite “meaningful limitation[s]” transforming the alleged
abstract idea into patentable subject matter. App. Br. 46—50. We disagree.
Section 101 of the Patent Act provides “[wjhoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The Supreme Court has long held that this
provision contains an implicit exception: “[ljaws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS BankInt’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013)). The Court has
set forth a two-part inquiry to determine whether this exception applies.
First, we must “determine whether the claims at issue are directed to one of
those patent-ineligible concepts.” Alice, 134 S. Ct. at 2355. Second, if the
claim is directed to one of those patent-ineligible concepts, we consider “the
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elements of each 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.” Alice, 134 S. Ct. at 2355 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297
(2012)). Put differently, we must search the claims for an “inventive
concept,” that is, “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, 132 S. Ct. at 1294).
Regarding step one of the Alice analysis, we agree with the
Examiner’s conclusion that the claims are directed to a “method of
organizing human activity.” Final Act. 14. Although Appellants
characterize the Examiner’s ineligible subject matter rejection as
“boilerplate,” App. Br. 43, the Examiner’s rejection specifically identifies
the abstract idea — “managing ancillary relationships in an organization” —
and points to the supporting language in claim 1. Final Act. 14; Ans. 55—56.
As the Examiner finds, claim 1 is directed merely to “monitoring
interactions between employees to categorize those interaction as direct or
ancillary [e.g., so called “dotted line” interactions].” Ans. 56. Appellants do
not persuasively rebut the foregoing findings but, instead, focus their
argument on the second step of Alice.
In the second step of our analysis under Alice,
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. 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].”
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Alice Corp., 134 S. Ct. at 2357 (internal citations omitted). Appellants
contend the recitation (in claim 1) of a “social network graph” and
“monitoring interactions between members” constitute “meaningful
limitation[s] beyond the abstract idea of ‘management of ancillary
relationships of an organization,” thus rendering claim 1 allowable. App.
Br. 47. As the Examiner concludes, however, comparing information about
relationships (e.g., by a graph) and monitoring (collecting) information
about relationships are simply part of the abstract idea of “determining the
type of relationships.” Ans. 57. These steps are performed by a standard
processor and storage elements, the use of which “do not alone transform an
otherwise abstract idea into patent-eligible subject matter.” FairWarning IP,
LLC, v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR
Holdings, LLC, v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014));
Ans. 3.
Similarly, we discern no error in the Examiner’s conclusions that
“synthesizing data,” “capturing data,” and “updating” data, as recited in the
dependent claims, do not amount to significantly more than the above-
identified abstract ideas. Ans. 59-63; see, e.g., Elec. Power Grp. v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that “collecting
information, analyzing it, and displaying certain results of the collection and
analysis” are “a familiar class of claims ‘directed to’ a patent ineligible
concept”); In re TLI Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed.
Cir. 2016).
Accordingly, we sustain the rejection of claims 1—10 and 12—21 as
directed to ineligible subject matter.
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Rejections Under 35 U.S.C. § 112
Appellants argue the Examiner erred in finding “an ancillary
relationship coordinator,” as recited in claim 1, fails to comply with the
written description requirement.2 Specifically, Appellants argue the
Examiner “fails to address or define a claim scope” and is “asserting,
without evidence or explanation that additional details are needed within the
claims.” App. Br. 39-40. Appellants further argue the Examiner is
“conflating” the standards of written description and enablement. App. Br.
40. We, however, are not persuaded of error.
As the Examiner finds, the claimed “ancillary relationship
coordinator” is represented as a “block” in Appellants’ block diagrams of
Figures 1 and 2, but is not otherwise described. Ans. 44-46. Appellants’
Specification “fails to explain how this coordinator works or what the
[necessary] algorithm consists of.” Ans. 47. Although various paragraphs
of the Specification describe the results of the ancillary relationship
coordinator, the Specification does not describe “how” the coordinator
identifies relationships nor the algorithm or “rules” for accomplishing what
Appellants claim. Ans. 48. The ancillary relationship coordinator remains,
in effect, a black box in Appellants’ Specification.
For the reasons set forth by the Examiner, we agree Appellants have
not shown possession of the claimed subject matter at the time of the
invention, nor “fully set forth the claimed invention” such as by “diagrams,
formulas, etc.” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969
(Fed. Cir. 2002); see also In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir.
2 Independent claims 10 and 16 recite similar elements, and are not argued
separately for purposes of the section 112 rejections.
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1983) (written description requirement is satisfied if “the disclosure of the
application as originally filed reasonably conveys to an artisan that the
inventor had possession at that time of the . . . claimed subject matter.'1'’)
(emphasis added). Accordingly, we discern no error in the Examiner’s
rejection of the claims as failing to satisfy the written description
requirement.
Appellants also argue the Examiner erred in rejecting the claims as
indefinite. App. Br. 42. Appellants contend the “metes and bounds” of the
claimed “ancillary relationship coordinator” are clear, and then simply refer
to the arguments regarding error in the written description rejection. Id. We
disagree.
If a claim is amenable to two or more plausible claim constructions,
the Office is justified in requiring the applicant to more precisely define the
metes and bounds of the invention by holding the claim unpatentable under
pre-AIA 35U.S.C. § 112, second paragraph, as indefinite. See Ex parte
Miyazaki, 89 USPQ2d 1207, 1211—12 (BPAI 2008) (precedential); Ex parte
McAward, Appeal 2015-006416, slip op. at 5—6 (PTAB Aug. 25, 2017)
(precedential); Halliburton Energy Servs., Inc. v. M-ILLC, 514 F.3d 1244,
1255 (Fed. Cir. 2008) (“it is highly desirable that patent examiners demand
that applicants” resolve any “ambiguity in the patent claims . . . during
prosecution”). As discussed above, the Examiner finds the meaning of the
claimed ancillary relationship coordinator unclear. Appellants’ reference to
their argument regarding written description (which we found unpersuasive,
for the reasons set forth above), App. Br. 42, and conclusory statement of
Examiner error, are not persuasive. See, e.g., 37 C.F.R. § 41.37(c)(l)(iv).
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For the foregoing reasons, we sustain the rejection of claims 1—10 and
12—21 as indefinite under pre-AIA 35U.S.C. § 112, second paragraph, and
sustain the rejection of the same claims under pre-AIA 35U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Rejections Under 35 U.S.C. §103
Appellants argue the Examiner erred in rejecting independent claims
1,10, and 16 because Darr and Chandra are not analogous art, because there
is no rationale to combine the references, and because the claims require
“automation, which is not present in the combination of Darr/Chandra.”
App. Br. 19—21. For the reasons set forth in the Examiner’s detailed
findings, however, we are not persuaded of error. Ans. 7-42.
As the Examiner finds, both Darr and Chandra are directed to
understanding relationships in an organization, like Appellants’ claimed
invention. Ans. 8—10, 20—21. The references are, therefore, pertinent to the
problem with which Appellants’ invention is concerned, and also are in the
same field of endeavor as the invention. See In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004) (prior art is analogous if “from the same field of
endeavor” or “reasonably pertinent to the particular problem with which the
inventor is involved”). The Examiner thus did not err in finding the
references are analogous art.
Regarding the Examiner’s rationale for combining the references, we
discern no error in the finding that one of ordinary skill would recognize the
benefit of applying Chandra’s analysis of relationship change to Darr’s
relationship network. Final Act. 27; Ans. 12; see also KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (person of ordinary skill in the art is
“a person of ordinary creativity”). Moreover, Appellants have not provided
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persuasive evidence to show incorporating the features of Chandra into
Darr’s network would have been “uniquely challenging or difficult for one
of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int7 Co., 550 U.S. at 418-
19.
Appellants argue the claimed system is distinct from the prior art
because it is “automated.” App. Br. 19-20. As the Examiner finds,
however, Chandra and Darr also utilize automation (computer components
and algorithms) in the relationship-analysis taught in those references. Ans.
19. Moreover, merely automating a known procedure does not render it
nonobvious. See, e.g., Leapfrog Enters., 485 F.3d at 1162 (“adaptation of an
old idea or invention . . . using newer technology [such as computers] that is
commonly available and understood in the art” is obvious). Appellants
remaining arguments regarding the independent claims similarly are not
persuasive of error.
Appellants argue dependent claims 4, 6, and 8 separately, contending
the Examiner erred in taking Official Notice regarding the teachings of the
cited references as applied to these claims. App. Br. 16—18. On the record
before us, however, there is no indication Appellants explained during
prosecution why any noticed fact or finding was not well known in the art.
Ans. 11-14; see also MPEP § 2144.03(C) (9th ed. Rev. 07.2015, Nov. 2015)
(“To adequately traverse ... a finding, an applicant must specifically point
out the supposed errors in the examiner’s action, which would include
stating why the noticed fact is not considered to be common knowledge or
well-known in the art.”); 37 C.F.R. § 1.111(b). Moreover, even in the
appeal briefs, Appellants provide no evidentiary support for their argument.
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See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (mere attorney
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value); see also In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984). We, therefore, are not persuaded the
Examiner erred in rejecting dependent claims 4, 6, and 8.
Appellants do not argue the remaining dependent claims separately.
Accordingly, we sustain the obviousness rejections of claims 1—10 and 12—
21.
DECISION
We affirm the Examiner’s rejections of claims 1—10 and 12—21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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