Ex Parte Pak et al

Patent Trial and Appeal Board

Jan 16, 2018

13555516 (P.T.A.B. Jan. 16, 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.
13/555,516 07/23/2012 Wai H. Pak 48KK-230062 9582
137610 7590 01/18/2018
Sheppard Mullin Richter & Hampton LLP ■
Oracle International Corporation
379 Lytton Ave.
Palo Alto, CA 94301
EXAMINER
TODD, GREGORY G
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
01/18/2018 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):
svpatents @ sheppardmullin.com
jraynova@ sheppardmullin.com
S heppardMullin_Pair @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAI H. PAK, SANJEEV KUMAR,
ANIL KUMAR ANNADATA, and YU JEN WU
Appeal 2017-007004
Application 13/555,516
Technology Center 2400
Before THU A. DANG, JUSTIN BUSCH, and MATTHEW J. McNEILL,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—43. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims relate generally receiving messages and responses thereto
and converting the responses into different formats. See Spec. 9, 25-21.
Claims 1,11, and 21 are independent claims. Claim 1 is reproduced below:
1. A method comprising:
receiving a message, wherein
the message is in a native format,
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the native format uses a first character set for
displaying text,
the message comprises a customer support request,
the message is received by an application program
server, and
the message is received from a message client that
is communicatively coupled to the application program
server;
receiving a response corresponding to the message,
wherein
the response is responsive, at least in part, to the
message,
the response is received by the application program
server,
the response is received from an application
program client that is communicatively coupled to the
application program server,
the response is in a response format,
the response format uses a second character set for
displaying text, and
the response format differs from the native format;
converting, using one or more processors, the response
from the response format to an independent format, wherein
the independent format is independent of the first
and second character sets;
identifying a final response format, wherein
the final response format is a format configured to
facilitate a subsequent display of the response; and
converting, using the one or more processors, the response
from the independent format to the final response format.
REJECTIONS
Claims 1—43 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2-5.
Claims 1—43 stand rejected under 35 U.S.C. § 103(a) as being obvious
in view of Chesnais (US 2002/0087704 Al; July 4, 2002), Odinak
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(US 2003/0177009 Al; Sept. 18, 2003), and Banerjee (US 2003/0033334
Al; Feb. 13, 2003). Final Act. 5-14.
ANALYSIS
Rejection of Claims Under 35 U.S.C. § 101
The Examiner rejects the pending claims under 35 U.S.C. § 101
because the claims as a whole are directed to an abstract idea and do not
contain “significantly more than the abstract idea” so as to transform the
claimed abstract idea into a patent-eligible application. Final Act. 2-5;
Ans. 2-5. Appellants argue the Examiner fails to meet the basic
requirements for establishing a prima facie case of subject matter
ineligibility under § 101. Br. 11-12. Appellants also contend the Examiner
fails to establish that the claims are directed to an abstract idea and that the
additional elements of the claims do not amount to significantly more than
an abstract idea. Id. at 12-15.
Framework
The Patent Act defines patent-eligible subject matter broadly:
“Whoever 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.” 35U.S.C. § 101. There is no dispute in this
Appeal that the pending claims are directed to one of these categories.
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012), and Alice Corp. v. CLS Bank International, 134
S.Ct. 2347, 2354 (2014), the Supreme Court explained that § 101 “contains
an important implicit exception” for laws of nature, natural phenomena, and
abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185 (1981). In Mayo
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and Alice, the Court set forth a two-step analytical framework for evaluating
patent-eligible subject matter: (1) “determine whether the claims at issue are
directed to a patent-ineligible concept,” such as an abstract idea; and, if so,
(2) “consider the elements of each claim both individually and ‘as an
ordered combination’ to determine whether the additional elements” add
enough to transform the “nature of the claim” into “significantly more” than
a patent-ineligible concept. Alice, 134 S.Ct. at 2355 (quoting Mayo,
566 U.S. at 79); see Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Step one in the Mayo!Alice framework involves looking at the “focus”
of the claims at issue and their “character as a whole.” Elec. Power Grp.,
LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two
involves the search for an “inventive concept.” Alice, 134 S.Ct. at 2355;
Elec. Power, 830 F.3d at 1353. For an inventive concept, “more is required
than ‘well-understood, routine, conventional activity already engaged in’”
by the relevant community. RapidLitig. Mgmt. Ltd. v. CellzDirect, Inc.,
827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80).
Prima Facie Case
Appellants assert the Examiner failed to make a prima facie case of
ineligibility because the Examiner’s “reasoning does not explain why the
claims are unpatentable clearly or specifically.” Br. 12. We disagree.
The Examiner has a duty to give notice of a rejection with sufficient
particularity to give Appellant a fair opportunity to respond to the rejection.
See 35 U.S.C. § 132(a). Here, we find the Examiner’s rejection satisfies the
initial burden of production by identifying that the claims include limitations
similar to the identified abstract idea of a method of organizing human
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activity or receiving data, and that the remainder of the claims do not include
significantly more than the abstract idea because the generically-recited
routine use of a computer, which is merely receiving data to facilitate the
method of organizing human activity (i.e., translation), does not add
meaningful limitations to the abstract idea. Final Act. 2-3; Ans. 2-3. The
Examiner also found that claims courts previously held were directed to
abstract ideas were similar to Appellants’ claims. Final Act. 3—4. Thus, the
Examiner set forth the statutory basis for the rejection—namely 35 U.S.C.
§101, concluded that the claims are directed to a judicial exception to
§ 101—namely an abstract idea, adding too little to the abstract idea to
render the claims patent eligible, and explained the rejection in sufficient
detail to permit Appellants to respond meaningfully. See In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011).
In fact, Appellants specifically argue against the Examiner’s findings
and conclusions relating to what Appellants’ claims are directed to, whether
that is an abstract idea, and whether the claims recite significantly more than
the abstract idea itself. Br. 12-15. Accordingly, we find that the Examiner
set forth a prima facie case of ineligibility.
Step One of Alice Framework
Turning to step one of the Alice framework, the Examiner finds the
claims are directed to an analog of a translator translating a message from
one person to another and the response back from the recipient of the
message to the originator of the message, which is a method of organizing
human activity and has “been used for centuries to facilitate communication
between individuals who speak different languages.” Final Act. 3-4;
Ans. 3-5. The Examiner identifies cases where similar claims were found to
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be directed to abstract ideas. Final Act. 4 (citing Novo Transforma Techs.,
LLCv. Sprint Spectrum L.P., No. 14-cv-00612, 2015 WL 5156526 (D. Del.
Sept. 2, 2015), aff’d, 669 F. App’x 555 (Fed. Cir. 2016)); Ans. 4-5.
Appellants assert the method of organizing human activity to which
the Examiner finds Appellants’ claims are directed (i.e., translation, which is
a form of data collection and manipulation of that data from one format to
another) is not a method that is an abstract idea because the Examiner fails
to explain “why the subject matter of the claims relates to interpersonal and
intrapersonal activities, such as managing relationships or transactions
between people, social activities, and human behavior; satisfying or avoiding
a legal obligation; advertising, marketing, and sales activities or behaviors;
and managing human mental activity.” Br. 13.
In Novo, the Specification of the claims at issue stated “that the
claimed invention addresses the problem of ‘incompatibility between
different communication services employing different media for
communicating information.’” 2015 WL 5156526, at *3 (quoting
Specification of U.S. Pat. No. 5,826,034). The court then explained the
problem the claims addressed was specific to computer networks or rooted
in computer technology. Id. (distinguishing DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). The court further
stated:
Incompatible communication types have existed since before the
emergence of computers and the Internet. Translators have been
used for centuries to facilitate communication between
individuals who speak different languages. The translator
receives a message in one language, translates it into another, and
delivers the translated message. Here, the claims require a
computer system that receives a payload in one media form,
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translates it into a different media form, and delivers the
translated payload. This is no different than the function of a
translator.
Id.; accord Messaging Gateway Solutions, LLC v. Amdocs, Inc., No. 14-cv-
732, 2015 WL 1744343, *4 (D. Del. Apr. 15, 2015) (Finding a claim that
received a short message service text message, converted it to an Internet
Protocol message, and delivered the converted message was directed to the
abstract idea of translation.).
Furthermore, as explained by the Examiner, the claims are directed to
receiving messages and responses and converting messages between
formats. Such a concept is similar to collecting and manipulating data,
which the Federal Circuit has found to be an abstract idea. Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1142, 1150 (Fed. Cir. 2016)
(finding claims reciting “[a] method for converting a hardware independent
user description of a logic circuit. . . into logic circuit hardware
components” were “drawn to the abstract idea of: translating a functional
description of a logic circuit into a hardware component description of the
logic circuit”); Novo Transforma Techs. LLC v. Sprint Spectrum, L.P., 669
F. App’x 555 (Fed. Cir. 2016) (unpublished per curiam mem.) (affirming
district court’s grant of summary judgement of invalidity of patent as being
directed to patent-ineligible subject matter that was directed to nothing more
than the abstract idea of translation of a data from one format to another);
Broadband iTV, Inc. v. Hawaiian Telcom, Inc., 669 F. App’x 555 (Fed. Cir.
2016) (unpublished per curiam mem.) (affirming district court’s grant of
summary judgement of invalidity of patent as being directed to patent-
ineligible subject matter that was directed to nothing more than the abstract
idea of translation of a data from one format to another); see also Elec.
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Power, 830 F.3d at 1353-54 (finding collecting, analyzing, and displaying
information, regardless of particular content, is an abstract idea); Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Assoc., 776 F.3d
1343, 1347 (Fed. Cir. 2014) (finding collecting, recognizing, and storing
information is an abstract idea).
For the above reasons, we are unpersuaded the Examiner erred in
concluding the claims are directed to an abstract idea.
Step Two of Alice Framework
Next, we turn to step two of Alice to determine whether the
limitations, when considered both “individually and ‘as an ordered
combination’” contain an “inventive concept” sufficient to transform the
claimed “abstract idea” into a patent-eligible application. Alice, 134 S.Ct. at
2355-58. The Examiner finds the claims merely recite using a generic
computer system to assist in the translation and delivery of messages, and
determines the recitation of generic computer programs and systems do not
transform the abstract idea into patent-eligible subject matter. Final Act. 3-
4; Ans. 3-4 (citing Alice, 134 S.Ct. at 2358).
Appellants argue the Examiner has failed to show the claims do not
recite significantly more than the abstract idea itself because “they recite a
computer-implemented solution to” the problem of providing international
customer support, which needs to account “for different systems, languages,
and formats of customers and agents.” Br. 14. Appellants further contend
the claims provide a single user interface allowing customers and agents to
communicate in different formats. Id. Appellants also assert the claims
recite “various levels of conversions” and the invention “addresses the
problems encountered when trying to provide customer support across
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various systems, languages, and/or formats.” Id. at 14-15. Appellants argue
the claims provide more than routine or conventional computer activity,
require a device that is configured to manage and convert communications
between formats and character sets, and are rooted in computer technology,
rendering the claims patentable because they recite significantly more than
the abstract idea of translation. Id. at 15 (citing DDR Holdings, 773 F.3d
1245). We are unpersuaded the Examiner erred in concluding the claims are
directed to an abstract idea, and we address Appellants’ contentions below.
Appellants’ contention that the claims are rooted in computer
technology and require a specially configured device performing
unconventional computer activity is unpersuasive because the claims merely
use generically recited computer elements to perform transmission and
translation functions that are routine and not unique to the particular
environment. Appellants provide no persuasive explanation regarding how
the problem solved by the claims is tied to computers other than through the
generic recitation of computers to perform the receiving and converting of
messages, which amounts to merely application of computers to the abstract
idea of exchanging and converting messages.
Appellants’ claims do not address a problem rooted in technology.
These claims are not like those in Enflsh, where the Federal Circuit found
the claims eligible because they were focused on a specific software-based
improvement to database techniques. Enflsh, LLC v. Microsoft Corp., 822
F.3d 1327, 1335-36 (Fed. Cir. 2016). Nor are these claims like those found
eligible when “the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” DDR Holdings, 773 F.3d at 1257. The claims in
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DDR required an inventive device or technique for displaying information.
DDR, 773 F.3d at 1257.
Unlike DDR and Enfish, receiving and converting messages is not a
problem specifically arising in the realm of computers. Instead, the claims’
character, as a whole, lies in longstanding conduct that exists apart from
computers—i.e., receiving and converting messages and responses. See
Novo, 2015 WL 5156526, at *4. In Appellants’ own words, the invention
“enables a single interface to be used to prepare and present messages in a
variety of different formats,” which addresses the identified problem that a
“company must purchase different software products to handle each
messaging system [and] agents must learn to use a different user interface
for each messaging system,” degrading the efficiency of agents. Spec. 6,
8.
Notwithstanding the pending claims’ recitation of a generic computer
devices or programs, the claims are directed to using computers to receive
and convert messages and responses, which is merely the application of
computers to solve a conventional problem of incompatibility. Thus, the
pending claims are not similar to patent-eligible claims that are directed to
“an improvement in computers as tools,” but rather invoke computers
merely as a tool aiding a process focused on an abstract idea. Elec. Power,
830 F.3d at 1354. Furthermore, the Federal Circuit has recognized that
“relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible. See Alice, 134
S.Ct. at 2359 (‘use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions’ is not an inventive
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concept).” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015), cert, denied, 136 S.Ct. 701 (2011).
Appellants’ argument that the claims require a single user interface for
allowing customers and agents to exchange messages in different formats is
similarly unpersuasive because it is not commensurate with the scope of the
claims. The claims merely recited receiving and converting messages. The
claims do not recite any user interface. Moreover, simply reciting a generic
interface that facilitates the claimed abstract idea, without technological
improvements likely would not provide the required “inventive concept” to
render the subject matter patent eligible. See Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240-43 (Fed. Cir. 2016).
For the above reasons, Appellants have not persuaded us of error in
the rejection of the claims under 35 U.S.C. § 101.
Rejection of Claims Under 35 U.S.C. § 103
The Examiner rejects claims 1^13 under 35 U.S.C. § 103(a) as being
obvious in view of Chesnais, Odinak, and Banerjee. Final Act. 5-14.
Appellants identify relevant law and block quote portions of each cited
reference and portions of the Examiner’s rejection, without explaining the
significance of each quoted section. Br. 15-28. Regarding claims 1-33, 36,
37, and 39^43, Appellants contend the cited portions of the references “fail
to teach or suggest the use of four distinct formats (e.g., a native format, a
response format, an independent format, and a final response format) and at
least two distinct character sets (e.g., a first and second character sets) for
providing” the functionality of “receiving a single message, and providing a
response thereto” in “a single environment (e.g., an environment that
comprises an application program server, a message client, and an
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application program client being communicatively coupled to one another).”
Br. 28. With respect to claims 34, 35, and 38, Appellants further argue the
cited combination of references does not teach or suggest, respectively:
using three distinct character sets or a final response format indicating a
third character set; a fourth character set, a response format indicating a third
character set, or converting the response using the fourth character set; and a
native format of a message and a response format of a response comprising
distinct language types. Id. at 28-30. Appellants provide no further
explanation of their arguments, and Appellants did not file a Reply Brief.
Appellants’ arguments, however, do not persuasively address the
Examiner’s findings. Initially, as the Examiner notes, certain aspects of
Appellants’ arguments are not commensurate with the scope of the claims.
Ans. 7. In particular, to the extent Appellants contention that claim 1
requires “four distinct formats” is intended to assert that each of the four
recited formats must be different, we disagree. Rather, claim 1 recites a
message in a native format using a first character set, a response in a
response format, which is different than the native format, using a second
character set, an independent format that is “independent of’ the first and
second character sets (but has no recited relationship to the native or
response format) and a response format, which is not necessarily different
than any of the previously recited formats. Similarly, the claims do not
require four distinct character sets. None of the claims recite that the
character sets are different from any of the other character sets. Thus,
although the claims encompass using four different formats and character
sets, they do not require it.
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Even to the extent the particular details of the type of information are
given patentable weight, the Examiner provides specific mappings and a
rationale for combining the identified teachings.1 Final Act. 5-8. In
particular, the Examiner finds Chesnais teaches or suggests an application
program server receives messages in a native format from a message client,
receiving a response to the message in a format different than the native
format, converting the response to an independent format (e.g., Uniform
Media Format), and converting the response from the independent format to
a final response format according to a subscriber’s selected format. Final
Act. 5-6 (citing Chesnais 38, 41^44, 239, 240); Ans. 5-7. The Examiner
relies on Odinak as teaching or suggesting that the message is a customer
support request and the response is received from an application program
client. Final Act. 6-7 (citing Odinak 42, 50, 53, 60, 61, 66, 67, 76, 88,
Fig. 7). The Examiner finds Banerjee teaches using different character sets
in different messages and converting character sets to Unicode and back to
character sets that are recognizable by a client according to language and
formatting used by that client. Final Act. 7-8 (citing Banerjee IfijlO, 38^4-5),
11-12; Ans. 7-8. Finally, the Examiner provides a rationale for combining
the identified teachings. Final Act. 7-8, 12-13.
Given the Examiner’s findings and Appellants’ lack of specific or
particular arguments identifying allegedly deficient findings or conclusions,
1 See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential)
(“[T]he nature of the information being manipulated does not lend
patentability to an otherwise unpatentable computer-implemented product or
process.”); In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (holding
informational content of non-functional descriptive material is not entitled to
patentable weight).
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we are not persuaded the Examiner erred. Accordingly, on this record and
for the reasons discussed above, we sustain the Examiner’s rejections of
claims 1^13 under 35 U.S.C. § 103(a).
SUMMARY
We sustain the Examiner’s rejections of claims 1—43 under 35 U.S.C.
§ 101 and of claims 1—43 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 1^13.
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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