Ex Parte Seetharam et alDownload PDFPatent Trial and Appeal BoardNov 28, 201813906835 (P.T.A.B. Nov. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/906,835 05/31/2013 51206 7590 11/30/2018 Kilpatrick Townsend & Stockton LLP/Oracle Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 FIRST NAMED INVENTOR Pradeep Seetharam 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 88325-860292(13101 lUS) 5803 EXAMINER YOUNG, ASHLEY YA-SHEH ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 11/30/2018 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): ipefiling@kilpatricktownsend.com oraclepatentmail@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PRADEEP SEETHARAM, SUMIT CHOUGULE, NEIL EV ANS, and GOP ALAN ARUN Appeal2017-008996 Application 13/906,83 51 Technology Center 3600 Before MAHSHID D. SAADAT, JASON J. CHUNG, and MATTHEW J. McNEILL, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Non- Final Rejection of claims 1, 3-8, 10-15, and 17-20. 2 We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. INVENTION The invention is directed to automating the provisioning, managing and tracking of services provided by a cloud infrastructure system. Spec. ,r 4. Claim 1 is illustrative of the invention and is reproduced below: 1 According to Appellants, Oracle International Corporation is the real party in interest. App. Br. 3. 2 Claims 2, 9, and 16 have been canceled. App. Br. 10, 12, and 13. Appeal2017-008996 Application 13/906,835 1. A method comprising: receiving, by a computing infrastructure system, a subscription order for a customer, the subscription order comprising subscription order information identifying a first service subscribed to by the customer from one or more services provided by the computing infrastructure system, the computing infrastructure system comprising one or more computing devices; identifying, by a computing device from the one or more computing devices, a provisioning task currently being performed for the first service, the provisioning task comprising provisioning at least one of memory resources or processing resources for the first service; prior to completion of the provisioning task, receiving, by a computing device from the one or more computing devices, a request for cancelling processing of at least the first service in the subscription order; identifying, by a computing device from the one or more computing devices, a current stage related to the provisioning task and a current state of execution related to the provisioning task; determining, by a computing device from the one or more computing devices, a recovery workflow for cancelling processing of the subscription order based on the provisioning task currently being performed for the first service, the current stage related to the provisioning task and the current state of execution pertaining to the provisioning task, the recovery workflow determining the number of stages needed to rollback the provisioning task being performed for the first service from the current stage to a different stage in the provisioning task; and executing, by the computing device, the recovery workflow related to cancelling the processing of the subscription order. 2 Appeal2017-008996 Application 13/906,835 REJECTION AT ISSUE3 Claims 1, 3-8, 10-15, and 17-20 stand rejected under 35 U.S.C. § 101 as being directed to an abstract idea without significantly more. Non-Final Act. 10-11. We have only considered those arguments that Appellants actually raised in the Briefs. Arguments Appellants could have made, but chose not to make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). ANALYSIS The Examiner concludes the present claims are directed to an abstract idea of identifying a provisioning task, identifying a current stage related to the provisional task, determining a recovery workflow for canceling processing of the subscription order, and executing the recovery workflow. Non-Final Act. 10. Furthermore, the Examiner concludes the additional elements do not amount to significantly more than the abstract idea because they recite generic components. Id. at 10-11; Ans. 5---6. Additionally, the Examiner concludes the claims recite generic components that execute the functions of the abstract idea in a well-understood, routine, and conventional manner. Ans. 7. Appellants argue the Examiner impermissibly overgeneralizes the present claims in reaching the conclusion that the claims are patent ineligible. App. Br. 5. Appellants argue the present claims are not abstract because the Examiner fails to identify any pertinent cases nor are Appellants 3 The 35 U.S.C. § 103 rejection has been withdrawn. Non-Final Act. 3. 3 Appeal2017-008996 Application 13/906,835 aware of any such cases. Id. at 5---6. Appellants argue, like Enfish, the present claims are not an abstract idea because they solve a unique software problem (i.e., how to halt the execution of provisioning tasks such that the computer infrastructure remains stable). Id. at 6-7; Reply Br. 3--4. Appellants argue the present claims are not abstract because they are not directed to a commercial practice; rather, the present claims are directed to stabilizing rollback of provisioning tasks in a workflow to free up memory, processors, databases, and the like. Id. at 8. Appellants argue the present claims are not abstract because Examiner improperly relies on Electric Power, which is non-analogous, in reaching the conclusion of patent ineligibility. Reply Br. 2. Appellants argue the present claims are not abstract and are significantly more than any abstract idea because Enfish states that patentable algorithms can execute on generic computing hardware. Id. at 2- 3. Appellants argue, under both Alice and Enfish, the present claims are significantly more than any abstract idea because provisioning use to take weeks or months to accomplish, but Appellants' automated provisioning is much faster to complete. App. Br. 7-8. We disagree with Appellants. Following the decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347 (2014), (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-84 (2012)), we analyze claims where the abstract idea judicial exception to the categories of statutory subject matter is at issue using the following two-part analysis set forth in Mayo: 1) determine whether the claim is directed to an abstract idea; and 2) if an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim 4 Appeal2017-008996 Application 13/906,835 amounts to significantly more than the abstract idea itself. See Alice, 134 S. Ct. at 2350. As to the first part of the analysis, examples of abstract ideas referenced in Alice include: fundamental economic practices4; certain methods of organizing human activities 5; "[a]n idea of itself' 6; and, mathematical relationships or formulas. 7 Claims that include abstract ideas like these are examined under the second part of the analysis to determine whether the abstract idea has been applied in an eligible manner. As to the second part of the analysis, we consider the claim as a whole by considering all claim elements, both individually and in combination. Id. at 2355. Limitations referenced in Alice that may be enough to qualify as "significantly more" when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples: Improvements to another technology or technical field 8; improvements to the functioning of the computer itsel:f9; and meaningful limitations beyond generally linking the 4 Alice Corp., 134 S. Ct. at 2350: e.g., intermediated settlement, i.e., the use of a third party intermediary to mitigate settlement risk. 5 Id. at 2356: e.g., a series of steps instructing how to hedge risk ( citing Bilski, 561 U.S. at 599). 6 Id. at 2355: e.g., a principle, an original cause, a motive (citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972) and Le Roy v. Tatham, 14 How. 156, 175 (1852)). 7 Id. at 2350: e.g., a mathematical formula for computing alarm limits in a catalytic conversion process (Parker v. Flook, 437 U.S. 584, 594--95 (1978)), or a formula for converting binary-coded decimal numerals into pure binary form (Benson, 409 U.S. at 71-72). 8 Id. at 2358: e.g., a mathematical formula applied in a specific rubber molding process (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)). 9 Id. at 2359. 5 Appeal2017-008996 Application 13/906,835 use of an abstract idea to a particular technological environment. 10 Limitations referenced in Alice that are not enough to qualify as "significantly more" when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples: adding the words "apply it" ( or an equivalent) to an abstract idea 11; mere instructions to implement an abstract idea on a computer12; or requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. 13 If there are no meaningful limitations in the claim that transform the abstract idea into a patent eligible application such that the claim amounts to significantly more than the abstract idea itself, the claim is directed to non- statutory subject matter under 35 U.S.C. § 101. Alice Step 1 On this record, we see no error in the Examiner's analysis and conclusion that the present claims are directed to an abstract idea of identifying a provisioning task, identifying a current stage related to the provisional task, determining a recovery workflow for canceling processing of the subscription order, and executing the recovery workflow. Non-Final 10 Id. at 2360: noting that none of the hardware recited "offers a meaningful limitation beyond generally linking 'the use of the [ method] to a particular technological environment,' that is, implementation via computers" ( citing Bilski, 561 U.S. at 610-11). 11 Id. at 2357-58. 12 Id.: e.g., simply implementing a mathematical principle on a physical machine, namely a computer (citing Mayo, 566 U.S. at 84--85). 13 Id. at 2359: e.g., using a computer to obtain data, adjust account balances, and issue automated instructions. 6 Appeal2017-008996 Application 13/906,835 Act. 10. Moreover, we disagree with Appellants that the Examiner overgeneralizes the claim (App. Br. 5) and we disagree there are no analogous cases (id. at 5---6); rather, we conclude the present claims are similar to the abstract idea of generating rule-based tasks for processing a claim, wherein a change causes a task engine to process the change and complete the changed task in Accenture Global Services, GMBH v. Guidewire Software, Inc., 728 F.3d 1336, 1338-1344 (Fed. Cir. 2013). We also disagree with Appellants' argument that the present claims are directed to an improvement in technology (App. Br. 6-8; Reply Br. 3--4) because the present claims are directed to an improved abstraction that automate provisioning, which happen to use computer tools in a nominal manner. 14 Additionally, we note that accelerating a mental process with a processor does not make claims patent eligible. Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1279 (Fed. Cir. 2012) ("Using a computer to accelerate an ineligible mental process does not make that process patent-eligible."). Because the present claims are directed to an abstract idea, we proceed to step (2) of the Alice, two-part test. Alice Step 2 On this record, we see no error in the Examiner's analysis and conclusion that the present claims are directed to significantly more than the abstract idea because they merely use computers as generic components that 14 Infra n.15. 7 Appeal2017-008996 Application 13/906,835 are well-understood, routine, and conventional to implement an abstract idea. 15 Ans. 5-7. We also disagree with Appellants' argument that Enfish states that patentable algorithms can execute on generic computing hardware, which means the present claims amount to significantly more than any abstract idea (Reply Br. 2-3) because Appellants' reliance on Enfish is misplaced; that is, Enfish pertains to Alice step 1 (i.e., abstract idea) rather than Alice step 2 (i.e., significantly more). Nonetheless, the present claims are directed to an abstract idea without significantly more for the reasons stated supra and infra. We disagree with Appellants' argument that, under both Alice and Enfish, 16 the present claims are significantly more than any abstract idea because provisioning use to take weeks or months to accomplish, but Appellants' automated provisioning is much faster to complete (App. Br. 7- 8) because accelerating a mental process does not make claims patent eligible. Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d at 1279. 15 The Specification states, "end users 150 that can interact with cloud infrastructure system 100 using various client devices such as desktops, mobile devices, tablets, and the like. The users may also include developers/programmers 152 who may interact with cloud infrastructure system 100 using command line interfaces (CLls), application programming interfaces (APls), through various integrated development environments (IDEs), and via other applications" ( emphases added). Spec. ,r 41. We, therefore, conclude the Specification recites generic elements that are well-understood, routine, and conventional. 16 Appellants' reliance on Enfish is misplaced; that is, Enfish pertains to Alice step 1 (i.e., abstract idea) rather than Alice step 2 (i.e., significantly more). Nonetheless, the present claims are directed to an abstract idea without significantly more for the reasons stated supra and infra. 8 Appeal2017-008996 Application 13/906,835 Accordingly, we sustain the Examiner's rejection of: (1) independent claims 1, 8, and 15; and (2) dependent claims 3-7, 10-14, and 17-20 under 35 U.S.C. § 101. DECISION We affirm the Examiner's decision rejecting claims 1, 3-8, 10-15, and 17-20 under 35 U.S.C. § 101. 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 9 Copy with citationCopy as parenthetical citation