Ex Parte Rangaswamy et al

Patent Trial and Appeal Board

Jun 19, 2017

13671221 (P.T.A.B. Jun. 19, 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.
14291-004-999 2433
EXAMINER
YOUNG, ASHLEY YA-SHEH
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
13/671,221 11/07/2012
140285 7590
Jones Day For SAP
250 Vesey Street
New York, NY 10281-1047
06/20/2017
Girish Bangalore Rangaswamy
06/20/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIRISH BANGALORE RANGASWAMY,
and ALEXANDER GOETZ
(Applicant: SAP SE)
Appeal 2016-001560
Application 13/671,221
Technology Center 3600
Before BRUCE R. WINSOR, DAVID J. CUTITTAII, and
PHILLIP A. BENNETT, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1—16, which constitute all of the pending claims in the application on
appeal. Appeal Br. 1. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
We affirm.
Appeal 2016-001560
Application 13/671,221
STATEMENT OF THE CASE
According to Appellants, the application relates to methods and
“systems to efficiently associate attributes such as work schedules with
employees.” Spec. 17.1
CLAIMED SUBJECT MATTER
Claims 1, 2, 7, and 12 are independent. Claim 1 is representative and
is reproduced below with disputed limitations in italics:
1. A computer-implemented method for automatically
updating an employee business object, the method comprising:
creating, by a processor, a first employment position
business object, wherein the first employment position business
object includes at least one work schedule attribute and
represents a position applicable to at least one category of
employee; and
associating, by the processor, an employee business object
with the first employment position business object, wherein the
employee business object represents an employee and inherits
the at least one work schedule attribute in response to the
association, and wherein at least one of the creating and the
associating is initiated through a graphical user interface.
Appeal Br. (Claims App’x. 1).
1 Throughout this Decision, we refer to the following documents for their
respective details: (1) Appellants’ Specification filed November 7, 2012
(“Spec.”); (2) the Final Office Action (“Final Act.”) mailed January 30,
2015; (3) the Appeal Brief (“Appeal Br.”) filed June 29, 2015; (4) the
Examiner’s Answer (“Ans.”) mailed September 22, 2015; and (5) the Reply
Brief (“Reply Br.”) filed November 19, 2015.
2
Appeal 2016-001560
Application 13/671,221
REJECTIONS
Claims 1—16 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 4.
Claims 1—16 stand rejected under 35 U.S.C. § 102 (b) as anticipated
by Rosenthal et al. (US 6,311,192 Bl; Oct. 30, 2001). Final Act. 6—8.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellants. We have not considered other possible issues
that have not been raised by Appellants and which are, therefore, not before
us. See 37 C.F.R. § 41.37(c)(l)(iv).
ISSUES
(1) Does the Examiner err in rejecting claims 1—16 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter?
(2) Does the Examiner err in finding Rosenthal discloses “creating,
by a processor, a first employment position business object, wherein the first
employment position business object includes at least one work schedule
attribute and represents a position applicable to at least one category of
employee,” as recited in claim 1?
(3) Does the Examiner err in finding Rosenthal discloses
“associating, by the processor, an employee business object with the first
employment position business object, wherein the employee business object
represents an employee and inherits the at least one work schedule attribute
in response to the association,” as recited in claim 1?
3
Appeal 2016-001560
Application 13/671,221
CONTENTIONS AND ANALYSIS
Issue 1
Appellants argue claims 1—16 as a group. Appeal Br. 3—8. We select
independent claim 1 as representative. The remaining claims stand or fall
with claim 1. See 37 C.F.R. §41.37(c)(l)(iv).
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 § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (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 Corp., 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts,” id., e.g., to an
abstract idea. If the claims are not directed to patent-ineligible concept, the
inquiry ends. Otherwise, the inquiry proceeds to the second step where the
elements of the claims are considered “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.” Alice
Corp., 134 S. Ct. at 2355 (quotingMayo, 132 S. Ct. at 1297).
4
Appeal 2016-001560
Application 13/671,221
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, 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 invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, in rejecting claim 1 under 35 U.S.C. § 101, the Examiner finds
the claim “is drawn to the abstract idea of updating an employee business
object, and furthermore does not include much else, individually or as an
ordered combination, that transforms the nature of the claim into a patent-
eligible application.” Final Act. 3. We agree with, and adopt as our own,
the Examiner’s findings and analysis. See Final Act. 2—6; Ans. 2—5. We
add the following primarily for emphasis.
In applying the first step of Alice, the Examiner finds the claimed
method is “directed to the abstract idea of automatically updating an
employee business contact, which is a method of organizing human
activities, and therefore an idea of itself.” Final Act. 5.
Appellants argue the claim is not directed to an abstract idea because
the Examiner’s determination is based “on an over-general characterization
of the present claims.” Appeal Br. 7. Appellants further argue the “claims
are directed to processes tailored for performance by a machine” and
“[ijndeed, a human does not create business objects and provide inheritance
or associations among the business objects.” Appeal Br. 7—8.
We agree with the Examiner’s finding that “[ajlthough the claims
recite specific steps of the abstract idea, those steps are still directed to an
5
Appeal 2016-001560
Application 13/671,221
abstract idea” and so we are not persuaded the analysis under the first step of
Alice is is in error. Ans. 5. Moreover, the recited method steps include the
words “processor,” and “graphical user interface” but otherwise involve no
more than information and steps for associating “an employee business
object with the first employment position business object,” “wherein the first
employment position business object includes at least one work schedule
attribute.” In accordance with the Examiner’s interpretation of the claim
term “business object,” discussed below under Issue 2, this is an activity that
could be performed by a human, e.g., mentally, using pen and paper, and/or
manually, without the use of a computer or any other machine, such as by
placing a paper employment schedule for a job in an employee’s physical
personnel folder. The law is clear that “a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372—73 (Fed. Cir. 2011); see also Gottschalkv. Benson, 409 U.S. 63, 67
(1972) (“[pjhenomena of nature . . ., mental processes, and abstract
intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.”). Although claim 1 recite[s] use of
specific types of information” (Appeal Br. 7), such data and operations are
merely part of the abstract idea itself, and can be performed manually or by
human thought alone. Moreover, mental processes remain outside the realm
of what is eligible for patenting even when automated to reduce the burden
on the user of what once could have been done with pen and paper.
CyberSource, 654 F.3d at 1375 (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalkv. Benson.”).
6
Appeal 2016-001560
Application 13/671,221
Appellants argue “the present claims do not preempt the field of work
scheduling” because “[o]ther solutions to the problem addressed by the
present claims are possible.” Appeal Br. 7.
We find Appellants argument unpersuasive because Appellants do not
explain how one would solve the problem addressed by claim 1 without
falling within the claim scope. In any event, although the Supreme Court
has described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre­
emption” {Alice, 134 S. Ct. at 2354), we note that characterizing preemption
as a driving concern for patent eligibility is not the same as characterizing
preemption 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, 134 S.
Ct. at 2354). And although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id. Moreover, “[w]here a patent’s claims are deemed only to
disclose patent ineligible subject matter under the [Alice/Mayo] framework
. . . , preemption concerns are fully addressed and made moot.” Id.', see also
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir.
2015), cert, denied, 136 S. Ct. 701 (2015) (“[T]hat the claims do not
preempt all price optimization or may be limited to price optimization in the
ecommerce setting do not make them any less abstract.”).
Thus, we agree with the Examiner that “the claims are drawn to a
patent-ineligible abstract idea and are merely requiring generic computer
7
Appeal 2016-001560
Application 13/671,221
implementation, which fails to transform that abstract idea into a patent-
eligible invention.” Ans. 2. We consequently find Appellants’ preemption
arguments unpersuasive.
Appellants next argue independent claim 1 is not directed to an
abstract idea because the claim is “directed to a solution necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks.” Appeal Br. 5 (citing DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). We find this
argument unpersuasive because we agree with the Examiner’s conclusion
that “[wjhile the claimed invention may provide an improved algorithm for
scheduling, there is no evidence (intrinsic or extrinsic) that the
improvements improve the functioning of the computer.” Ans. 4.
In addition to the Examiner’s conclusion, we find Appellants’
argument unpersuasive because we find no parallel between claim 1 and the
claims at issue in DDR Holdings. See DDR Holdings, 773 F.3d at 1249-
1250. In DDR Holdings, the Federal Circuit determined that, although the
patent claims at issue involved conventional computers and the Internet, the
claims addressed the problem of retaining website visitors who, if adhering
to the routine, conventional functioning of Internet hyperlink protocol,
would be transported instantly away from a host’s website after “clicking”
on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at
1257. The Federal Circuit, thus, held that the claims were directed to
statutory subject matter because they claim a solution “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” Id.
8
Appeal 2016-001560
Application 13/671,221
No such technological advance is evident in the presently claimed
invention. Unlike the situation in DDR Holdings, Appellants do not identity
any problem particular to computers, computer networks, or the Internet that
claim 1 allegedly overcomes. Instead, apart from the abstract idea, claim 1
merely employs generic computer components, such as a processor, to
perform generic computer functions, e.g., “creating, by a processor, a first
employment position business object” and “associating, by the processor, an
employee business object with the first employment position business
object.” Claims App’x. 1. Like the claimed invention in Versata
Development v. SAP, the presently claimed invention can “be achieved ‘in
any type of computer system or programming or processing environment,’
and accordingly ‘no specific, unconventional software, computer equipment,
tools or processing capabilities are required.’” Versata Development Group,
Inc. v. SAP America, Inc., 793 F.3d 1306, 1327 (Fed. Cir. 2015).
Because we agree with the Examiner, at step one of the analysis, that
the claims are directed to an abstract idea, we turn to the second step of the
analysis, in which we must determine whether the additional elements of the
claims transform them into patent-eligible subject matter.
Appellants argue the claims recite significantly more than an abstract
idea because they “are provided to improve the functioning of the computer
to be able to update an employee business object.” Ans. 5 (emphasis
removed).
The Examiner finds, however, that because “the advantages cited
assist with the business aspect, the automation of the process by reducing
redundant entry merely reduces the manual input required by the business.
As a whole, this does not change how the computer functions, nor does it
9
Appeal 2016-001560
Application 13/671,221
improve the processing of the computer.” Ans. 4. We agree with the
Examiner’s finding that Appellants’ fail to persuasively establish the
claimed invention improves the functioning of the computer. Id. Here,
unlike in Enfish, the claims are directed to an improvement to the abstract
concept of associating an employee business object with an employment
position business object, without more, and thus are “instead directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery.” Enfish, 822 at 1336.
The Examiner also finds “[t]he claims do not purport to identify new
computer hardware; rather, they merely assume the availability of physical
components for input, memory, look-up, comparison, and output. When
viewed as a whole, the claims amount to nothing more than generic
computer functions merely used to implement the abstract idea.” Ans. 7.
Thus, the claim merely recites “insignificant post-solution activity.”
We agree with the Examiner that claim 1 does not contain an
inventive concept sufficient to “transform the nature of the claim” into a
patent-eligible application. Alice, 134 S. Ct. at 2355. The elements of claim
1 simply recite an abstract idea executed using computer technology. That
is, beyond the abstract idea of updating an employee business object, the
claim merely recites “well-understood, routine conventional activities],”
either by requiring conventional computer activities or routine data-
gathering steps. Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294)
(alterations in original). In addition, we agree with the Examiner that
Appellants’ Specification “supports that the claimed invention is merely
implemented on any computer system,” (Ans. 2) e.g., a generic computer,
laptop, tablet, client computer, or server. Spec. 127. We, therefore, are not
10
Appeal 2016-001560
Application 13/671,221
persuaded the Examiner errs in concluding that “the claims are drawn to a
patent-ineligible abstract idea and are merely requiring generic computer
implementation, which fails to transform that abstract idea into a patent-
eligible invention.” Ans. 2.
For the reasons discussed above, the Examiner correctly determines
that claim 1 is directed to non-statutory subject matter and so we sustain the
rejection of claim 1 under 35U.S.C. § 101. Claims 2—16, which are not
argued separately, are rejected for similar reasons.
Issue 2
The Examiner finds the limitation “creating, by a processor, a first
employment position business object, wherein the first employment position
business object includes at least one work schedule attribute and represents a
position applicable to at least one category of employee,” as recited in claim
1, is disclosed by Rosenthal’s description of “the workflow for change
approval according to type.” Final Act. 7 (citing Rosenthal Figs. 3, 4, and
1:38-55, 5:25-31, and 5:38-43).
Appellants argue the Examiner errs in finding Rosenthal discloses the
disputed limitation because “the modules described by Rosenthal cannot be
interpreted to be the claimed first employment position business object.
This is because a business object, as understood by one of ordinary skill in
the art, models business processes and business data and can exchange data
with other business objects.” Appeal Br. 8.
Appellants’ arguments are unpersuasive. At the outset, we note the
Examiner clarifies that “the modules themselves are not intended to be
analogous to employment position business object, but rather that the
11
Appeal 2016-001560
Application 13/671,221
modules are utilized in the creation and associating of the various business
objects.” Ans. 5. The Examiner next indicates that the claimed business
object is interpreted as “any object that represents a particular entity of the
business.” Id. In view of this interpretation, the Examiner finds Rosenthal
discloses creating a first employment position business object, as claimed,
“where the personnel development module displays attribute change screens,
where position attributes are listed and can be altered to create/customize the
particular position in question.” Ans. 6 (citing Rosenthal col. 5—6).
We find Appellants’ argument unpersuasive because Appellants fail to
establish the Examiner’s interpretation of “business object” is not the
broadest reasonable interpretation consistent with Appellant’s Specification.
See In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Under a broadest reasonable interpretation, the words of the claim must be
given their plain meaning unless the plain meaning is inconsistent with the
specification. Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371,
1372 (Fed. Cir. 2004). The plain meaning of a term is the ordinary and
customary meaning given to the term by those of ordinary skill in the art at
the time of the invention. In re Suitco Surface, Inc., 603 F.3d 1255, 1259—
60 (Fed. Cir. 2010). The presumption that a term is given its ordinary and
customary meaning may be rebutted by Appellants clearly setting forth a
different definition of the term in the specification. In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997).
Here, Appellants provide no express definition of the term from the
Specification. Appellants also fail to establish the Examiner’s interpretation
of “business object” is inconsistent with the Specification {Chef America,
12
Appeal 2016-001560
Application 13/671,221
Inc. 358 F.3d at 1372). Accordingly, we find unpersuasive Appellants’
argument that the Examiner’s interpretation is unreasonably broad.
In light of the Examiner’s reasonable interpretation of the claimed
content, we agree with the Examiner’s finding that Rosenthal’s “creation of
the customized position by selecting the particular combination of position
attributes” such as a work schedule attribute (“Hrs per week”) discloses
creating “a first employment business object,” as claimed. Ans. 6 (citing
Rosenthal col. 5—6), see also Rosenthal Fig. 3.
Appellants further argue Rosenthal does not disclose creating a first
employment position business object because “Rosenthal generally describes
using its modules but does not specifically disclose or suggest creating the
modules.” Appeal Br. 9.
We find this argument unpersuasive because we agree with the
Examiner’s finding that Rosenthal allows for a user to customize attributes
associated with a position using the position attributes screen. Ans. 6 (citing
Rosenthal col. 5—6). Thus, by entering a new job code (Rosenthal Fig. 2,
103, Fig. 5, 106) the user causes the system to create a new employment
position business object along with the relevant attribute information such as
work schedule attributes. Id. As a specific example, Rosenthal explains that
when “the user enter[s] a new job code in blank 106 of FIG. 4 (6:6—7),
“[cjontrol is then transferred at 120 to a SUBMIT routine, which handles
implementation of the proposed change,” i.e., creating the new employment
position business object (6:62—64).
We therefore agree with and adopt the Examiner’s findings, as
discussed above, as they persuade us Rosenthal discloses the limitation
“creating, by a processor, a first employment position business object,
13
Appeal 2016-001560
Application 13/671,221
wherein the first employment position business object includes at least one
work schedule attribute and represents a position applicable to at least one
category of employee,” as recited in claim 1. (Ans. 5—8).
Issue 3
The Examiner finds the limitation “associating, by the processor, an
employee business object with the first employment position business
object, wherein the employee business object represents an employee and
inherits the at least one work schedule attribute in response to the
association,” as recited in claim 1, is disclosed by Rosenthal’s description of
“using the personnel development module and personnel administration
module ... for handling employee specific work force planning.” Ans. 7
(citing Rosenthal 7:8—20, 7:45—60, and 7:61— 8:15).
Appellants argue the Examiner errs because Rosenthal “is silent on
business objects, and, correspondingly, that the employee business object
represents an employee and inherits the at least one work schedule attribute
in response to an association of an employee business object with the first
employment position business object.” Appeal Br. 9.
Appellants’ arguments are unpersuasive. As the Examiner correctly
finds, in Rosenthal, “a user may change the employee/work position
association by altering the administrative assignment.” Ans. 7 (citing
Rosenthal 7:8—20). Thus, in Rosenthal, “a particular person or employee
[may be] temporarily assigned to a different position for a limited time
period, according to the listed position attributes.” Ans. 7 (citing Rosenthal
7:16-38).
14
Appeal 2016-001560
Application 13/671,221
The Examiner continues,
By reassigning a particular person to a different job position
with different position attributes (see col. 8, lines 3—10; i.e.
associating the employee with the employment position
business object), the employee inherits the work schedule
attribute of the position, where the employee is now affiliated
with the particular attributes of the job as defined previously,
(e.g. duration of time for the position, being a full
time/permanent employee or simply being a temporary transfer
employee, etc. (see Fig. 7).
Ans. 7.
That is, by using system 10 to reassign an employee to a different job
position Rosenthal discloses associating an employee business object with a
first employment position business object. The employee then inherits the
work schedule attribute of the position as a result of the associating.
Accordingly, we agree with and adopt the Examiner’s findings discussed
above, as they persuade us Rosenthal discloses the disputed limitation.
Ans. 5—8.
In their Reply, Appellants respond with two arguments. First,
Appellants argue Rosenthal cannot disclose associating the objects as
claimed because “Rosenthal does not teach or suggest the creation of any
business objects.” Reply Br. 4—5. Because we agree with the Examiner’s
finding that Rosenthal discloses business objects, as discussed above under
Issue 2, we find this argument unpersuasive.
Second, Appellants argue “Rosenthal’s description of changing an
employee’s assignment from one position to another and of managing an
employee’s skills does not teach or suggest the inheritance of one or more
15
Appeal 2016-001560
Application 13/671,221
work schedule attributes in response to an association of these objects, as
claimed.” Reply Br. 4—5.
Appellants’ argument is unpersuasive for lack of persuasive evidence
or reasoned explanation in support of the asserted conclusion. Attorney
argument alone is afforded little weight in the absence of persuasive
evidence. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“It is well
settled that mere attorney arguments and conclusory statements, which are
unsupported by factual evidence, are entitled to little probative value.”).
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 102. We also sustain the Examiner’s § 102 rejection of
independent claims 2, 7, and 12, the patentability of which is argued for
similar reasons as independent claim 1. Appeal Br. 8. Dependent claims 3—
6, 8—11, and 13—16, are not argued separately, so the rejection of these
claims is sustained for the reasons given for their respective independent
claims. Appeal Br. 8—10. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision rejecting claims 1—16 under
35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1—16 under
35 U.S.C. § 102.
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
16