Ex Parte Upadhyaya et al

Patent Trials and Appeals Board

Jun 4, 2019

12254502 - (D) (P.T.A.B. Jun. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/254,502 10/20/2008
74739 7590 06/06/2019
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
Anadi Upadhyaya
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.
2011-0161 USOl 1524
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/06/2019 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AN ADI UPADHYAYA, TY HAYDEN, and
MANISH AGRAWAL
Appeal2018-000896
Application 12/254,502
Technology Center 3600
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal2018-000896
Application 12/254,502
Appellants 1 request that we reconsider our decision of March 14,
2019 ("Dec."), where we affirmed the Examiner's rejection of claims 1-7,
9-13, 15, 17-19, and 22-25 under 35 U.S.C. § 101. Request for Rehearing
filed May 14, 2019 ("Req. Reh'g"). In particular, Appellants request that we
reconsider our decision in view of (1) Ex parte Smith, Appeal 2018-000064,
2019 WL 764497 (PTAB Feb. 1, 2019) (informative) and (2) an April 19,
2018, Memorandum from Robert W. Bahr, Deputy Commissioner for Patent
Examination Policy to the Patent Examining Corps, entitled "Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" ("Berkheimer
Memo."). 2
For the reasons noted below, however, we deny the request to modify
our decision.
Smith
Appellants assert the panel in Smith found that a claim reciting timing
mechanisms and associated temporary restraints on an execution of trades
provided a technological improvement over prior derivative trading systems,
thereby integrating a judicial exception of derivative trading into a practical
application. Req. Reh'g 2 (citing Smith, 2019 WL 764497, at *5).
Appellants contend that, similar to Smith, determining (1) "if the budget pool
1 Appellants identify the real party in interest as Oracle International
Corporation. App. Br. 3.
2 Smith is available at
https://www.uspto.gov/sites/default/files/documents/fd2018-000064.pdf (last
visited May 21, 2019) and the Berkheimer Memorandum is available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (last visited May 21, 2019).
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Appeal2018-000896
Application 12/254,502
for the compensation plan is not created"; (2) "if the budget pool is not
associated with at least one component of the compensation plan"; and (3)
"if a budgeting style is percent and a percent of eligible salary component is
not configured in the budget pool" ("the recited determinations") as claimed
limits any known conventional practice of setup verification for a
compensation system. Id. at 3.
Appellants' arguments are unavailing. As we noted in our decision,
because the recited determinations could be performed mentally, they fall
squarely within the mental processes category of the USPTO' s guidelines
and, therefore, recite an abstract idea. See Dec. 10; see also 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7,
2019) ("Guidance"). 3 Consistent with the Guidance, the recited
determinations are not additional elements beyond the identified abstract
idea because they are part of the abstract idea. See id. at 55 n.24 (noting the
"[G]uidance uses the term 'additional elements' to refer to claim features,
limitations, and/or steps that are recited in the claim beyond the identified
judicial exception.") ( emphasis added).
Appellants' contention that the recited determinations are analogous
to additional elements of Smith that integrated a recited judicial exception
into a practical application (Req. Reh' g 3) is unpersuasive. To be sure,
Smith is an informative decision that, although not binding authority,
nonetheless provides instructive guidance and Board norms on patent
eligibility issues. See PTAB Standard Operating Procedure 2, Rev. 10 § III,
3 The Guidance is available at https://www.govinfo.gov/content/pkg/FR-
2019-01-07/pdf/2018-28282.pdf (last visited May 21, 2019).
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Appeal2018-000896
Application 12/254,502
at 11. 4 In Smith, however, the claimed timing mechanisms and associated
temporary restraints on execution of trades were the additional elements that
provided a specific technological improvement over prior derivative trading
systems. See Smith, 2019 WL 764497, at *5.
That is not the case here. As we noted in our decision, the only
additional elements in claim 1 beyond the abstract idea are the processor and
graphical user interface (GUI). Dec. 11, 16. As we explained, those
additional elements, when considered individually and as an ordered
combination, do not integrate the abstract idea into a practical application
consistent with the US PTO' s Guidance. See Dec. 10-16. Accord Guidance,
84 Fed. Reg. at 54--55 (instructing Examiners to (1) identify whether there
are any additional elements in the claim beyond the judicial exception; and
(2) evaluate those additional elements individually and collectively to
determine whether they integrate the exception into a practical application).
To the extent Appellants contend that the recited determinations are
additional elements that integrate the exception into a practical application
(see Req. Reh' g 2-3), we disagree. Rather, those determinations are part of
the abstract idea as noted above and in our decision. Therefore, Appellants'
reliance on Smith is not germane to the holding in our decision and is,
therefore, unpersuasive.
Accordingly, as we noted on pages 10 to 15 of our decision, claim 1
does not recite additional elements that improve ( 1) the computer itself or
(2) another technology or technical field. See Guidance, 84 Fed. Reg. at 55
4 This document is available at
https://www.uspto.gov/sites/default/files/documents/SOP2%20R10%20FIN
AL.pdf (last visited May 21, 2019).
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Appeal2018-000896
Application 12/254,502
(citing MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2106.05(a)
(9th ed. Rev. 08.2017, Jan. 2018)). Rather, the above-noted additional
elements merely (1) apply the abstract idea on a computer; (2) include
instructions to implement the abstract idea on a computer; or (3) use the
computer as a tool to perform the abstract idea. See Guidance, 84 Fed. Reg.
at 55 ( citing MPEP § 2106.05([)).
Berkheimer Memorandum
Appellants assert the Berkheimer Memorandum provides specific
requirements to support with evidence any allegation that claim elements are
well-understood, routine, and conventional. Req. Reh'g 3. According to
Appellants, "[ n Jo evidence is provided that the combination of functional
elements implemented by software, which is the core of the invention, is
conventional as required per the [Berkheimer Memorandum.]" Id. at 4.
Appellants' arguments are unavailing. To be sure, the Examiner must
show-with supporting facts-that certain claim elements are well-
understood, routine, and conventional where such a finding is made. See
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (noting that
"[whether] something is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual determination."). After
the Federal Circuit issued its decision in Berkheimer, the United States
Patent and Trademark Office (USPTO) issued the Berkheimer Memorandum
in which the Office revised "the procedures set forth in [Manual of Patent
Examiner Procedure] (MPEP) § 2106.07(a) (Formulating a Rejection For
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Appeal2018-000896
Application 12/254,502
Lack of Subject Matter Eligibility) and MPEP § 2106.07(b) (Evaluating
Applicant's Response)." Berkheimer Memo. 3.
As the Berkheimer memorandum explains, Examiners must provide
evidence to support a finding that an additional element of a claim is well-
understood, routine, and conventional. See id. at 2-3 (noting the Berkheimer
decision clarifies the inquiry whether an additional element ( or combination
of additional elements) represents well-understood, routine, and
conventional activity).
As we noted in our decision, the processor and GUI are the only
additional recited elements beyond the abstract idea-additional elements
whose generic computing functionality is well-understood, routine, and
conventional. See Dec. 16. Appellants' contention, then, that no evidence is
provided that all recited functional limitations are well-understood, routine,
and conventional (Req. Reh'g 4) does not address the determination in our
decision. Notably, our decision merely held that the additional elements,
namely the processor and GUI, provide generic computing functionality that
is well-understood, routine, and conventional-a fact evidenced by relevant
case law cited in our decision and Appellants' own Specification. See Dec.
16 (citing Alice Corp. v. CLS Banklnt'l, 573 U.S. 208,221 (2014)); see also
Spec. ,r,r 13 (indicating the processor "may be any type of general ...
processor"), 14--15, 54; Figs. 1, 4---6. Using a generic computer for
"receiving," "testing," and "displaying" information simply takes advantage
of some of the "most basic functions of a computer." See Alice, 573 U.S. at
225 (the "use of a computer to obtain data, adjust account balances, and
issue automated instructions; all of these computer functions are 'well-
understood, routine, conventional activit[ies]' previously known to the
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Appeal2018-000896
Application 12/254,502
industry") ( quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 71-73 (2012)); see also Gottschalkv. Benson, 409 U.S. 63, 65
(1972) (noting that a "computer operates then upon both new and previously
stored data. The general-purpose computer is designed to perform
operations under many different programs."); Fair Warning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (noting that using generic
computing components like a microprocessor or user interface do not
transform an otherwise abstract idea into eligible subject matter), cited in
Dec. 14; Mortgage. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
1314, 1324--25 (Fed. Cir. 2016) (indicating components such as an
"interface" are generic computer components that do not satisfy the
inventive concept requirement); MPEP § 2106.05( d)(II) ( citing Alice and
Mayo). Accord Berkheimer Memo. 3--4.
Accordingly, we have considered the arguments raised by Appellants
in the Request, but none of these arguments persuade us that the original
decision was in error. We are still of the view the invention set forth in
claims 1-7, 9-13, 15, 17-19, and 22-25 is patent ineligible under 35 U.S.C.
§ 101 for the reasons noted above and in our earlier decision.
CONCLUSION
For the foregoing reasons, we have granted Appellants' request to the
extent that we have reconsidered our decision of March 14, 2019, but we
deny the request with respect to making any changes therein.
DENIED
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