Ex Parte Seetharam et al

Patent Trial and Appeal Board

Nov 28, 2018

13906835 (P.T.A.B. Nov. 28, 2018)

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