Ex Parte Uthe

Patent Trial and Appeal Board

May 3, 2017

11688319 (P.T.A.B. May. 3, 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.
11/688,319 03/20/2007 Robert T. Uthe RSW920060225US1-53 9857
44870 7590 05/05/2017
MOORE & VAN AT .TEN, PLLC For IBM
P.O. Box 13706
3015 Carrington Mill Boulevard, Suite 400
Research Triangle Park, NC 27709
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
05/05/2017 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):
iplaw @ mvalaw. com
u sptomail @ m valaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT T. UTHE
Appeal 2015-001676
Application 11/688,3191
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s rejection of claims 1—8, 10-21, and 23—26. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s claimed “invention relates to processes that may involve
user or human interaction, and more particularly to a method and system to
automate a user out of a process flow.” (Spec. 11.)
1 According to Appellant, the real party in interest is International Business
Machines (IBM) Corporation. (Appeal Br. 1.)
Appeal 2015-001676
Application 11/688,319
Claims 1, 12, 16, and 21 are the independent claims on appeal.
Claim 1 is illustrative. It recites:
1. A method to automate a user out of a process flow,
comprising:
determining, by a processor, if a process template
associated with the process flow exists, wherein the process
template comprises a user interface;
determining, by the processor, if a rule exists for automatic
completion of at least a portion of the process template to
automate the user at least partially out of the process flow in
response to determining that the process template associated with
the process flow exists, wherein determining if a rule exists
comprises evaluating each rule in a list of rules based on a
priority order of the rules in the list to find a rule with an
associated criteria for automatic completion of at least the
portion of the process template;
at least partially completing, by the processor, the process
template automatically without user input in response to an
existing rule for the process template, wherein the process
template is automatically populated based on a content of the
existing rule; and
presenting a graphical user interface for creating, editing
and controlling activation of the list of rules, presenting the
graphical user interface comprises:
presenting the list of rules in the priority order;
evaluating the list of rules sequentially in the
priority order of the list of rules; and
providing a mechanism for selecting a particular
rule and changing a priority order of the particular rule in
the list of rules.
REJECTIONS
Claims 1—8, 10-21, and 23—26 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
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Application 11/688,319
Claims 1—8, 10-21, and 24—26 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Borg (US 2004/0205530 Al, pub. Oct. 14, 2004),
Kirkpatrick (US 7,296,297 B2, iss. Nov. 13, 2007), and Keohane
(US 2008/0126983 Al, pub. May 29, 2008).
Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Borg, Kirkpatrick, Keohane, and Bryant (US 2004/0201690 Al, pub.
Oct. 14, 2004).
ANALYSIS
The £101 rejection
In the Answer, the Examiner enters a new ground of rejection under
§101 “because the claimed invention is directed to non-statutory subject
matter because the claims as a whole, considering all claim elements both
individually and in combination, do not amount to significantly more than an
abstract idea.” (Answer 3.) The Examiner determines that “[t]he claims are
directed to the abstract idea of a method of organizing human activities. The
claims are specifically directed to creating a priority order of rules and using
a GUI to edit the list of rules.” (Id.) The Examiner also determines that
[t]he additional element(s) or combination of elements in the
claim(s) other than the abstract idea per se amounts to no more
than: (i) mere instructions to implement the idea on a computer,
and (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry.
(Id.)
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Application 11/688,319
Appellant disagrees and argues “that the Office has failed to provide
an adequate explanation as is required to meet its burden of establishing that
the pending claims are directed to an abstract idea.” (Reply Br. 3.)
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(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.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied. “We have described step two of this
analysis as a search for an ‘inventive concept’ — i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. (brackets in original).
With regard to the first part of the framework, we agree with the
Examiner that the claims are directed to a method of organizing human
activities and, in particular, to the abstract idea of creating a priority order of
a list of rules and presenting a graphic user interface to edit the list. (See
Answer 3, see also Claim 1.) “The ‘abstract idea’ step of the inquiry calls
upon us to look at the ‘focus of the claimed advance over the prior art’ to
determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016). In this case, the Specification discloses that the
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Application 11/688,319
invention is directed to “processes that may involve user or human
interaction, and more particularly to a method and system to automate a user
out of a process flow.” (Spec. 11.) And claim 1, as a representative claim,
recites “determining ... if a process template . . . exists,” determining ... if
a rule exists for automatic completion ... of the process template,” “at least
partially completing ... the process template,” and presenting a GUI “for
creating, editing, and controlling activation of the list of rules.” (Claim 1.)
Courts have treated claims directed to similar subject matter as directed to an
abstract idea. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1237, 1240-
41 (Fed. Cir. 2016) (providing a GUI interface to generate menus, i.e.,
“list[s] of options available to a user displayable on a computer,” with
certain functions); see also Intellectual Ventures ILLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369—70 (Fed. Cir. 2015) (providing an interactive
interface to the user). Additionally, “the claims are not directed to a specific
improvement in the way computers operate. Cf. Enfish [LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016)].” Apple, Inc., 842 F.3d
at 1241. Therefore, we are not persuaded that these claims are not directed
to an abstract idea.
We now apply the second part of the framework to determine if “the
elements of the claim . . . contain[] an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice Corp., 134 S. Ct. at 2357 (citing Mayo, 132 S. Ct. at 1294, 1298).
Appellant argues that “the pending claims do not grant a monopoly
over the alleged abstract idea of creating a priority order of rules and using a
GUI to edit the list of rules.” (Appeal Br. 5.) Instead, Appellant argues,
“the pending claims recite a particular way to automate a user out of a
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process with a required set of specific operations that are far beyond the
general concept of creating a priority order of rules and using a GUI to edit
the list of rules.” (Id.)
Appellant does not, however, persuasively argue why the cited claim
limitations (e.g., “determining, by the processor, if a rule exists,”
“completing, by the processor, the process template,” “presenting a
graphical user interface”) contain an inventive concept that transforms the
abstract idea into patent-eligible subject matter. The introduction of the
processor into the steps does not change this analysis. The Specification
discloses that the “computer program instructions may be provided to a
processor of a general purpose computer.” (Spec. 116.) But “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice Corp., 134 S. Ct. at 2358.
With regard to Appellant’s argument regarding
monopolization/preemption, “preemption may signal patent ineligible
subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). Moreover, “[w]here a patent’s claims
are deemed only to disclose patent ineligible subject matter under the
[A lice/Mayo] framework . . . , preemption concerns are fully addressed and
made moot.” Id. Therefore, we are not persuaded that the “inventive
concepts” recited by Appellant are sufficient to transform the abstract idea
into patent-eligible subject matter. Thus, we are not persuaded that the
Examiner erred in rejecting claims 1—8, 10-21, and 23—26 under § 101.
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The f103 rejections
Claim 1 recites, in relevant part, “presenting a graphical user interface
for creating, editing and controlling activation of the list of rules, presenting
the graphical user interface comprises: presenting the list of rules in the
priority order.”
The Examiner finds that Keohane “does teach presenting a graphical
user interface for creating, editing and controlling activation of the list of
rules” and that paragraph 59 of Keohane discloses “presenting the list of
rules in the priority order.” (Final Action 6.) The Examiner also finds that
“[w]e can see in [Figure 3 of Keohane] that applicable entries are rules
themselves, and the ordering rules are ordering the applicable entry rules.”
(Answer 5.)
Appellant disagrees and argues
that paragraph [0059] of Keohane is simply describing output
characteristic rules 320 for specifying control of the output
characteristics of a list of ordered, applicable entries for an auto-
complete box from an entry database 306 (paragraph [0057] of
Keohane) and not presenting the list of rules themselves in
priority order as incorrectly suggested on page 6 of the Office
Action.
(Appeal Br. 8 (brackets in original).) Appellant further argues:
The applicable entry rules 320 and ordering rules 322 are merely
components of the auto-complete controller 300. The applicable
entry rules 320 specify rules for selecting those entries that are
applicable for an auto-complete box from among entry database
306 (paragraph [0056] of Keohane). Ordering rules 322 specify
rules for ordering the list of applicable entries for an auto-
complete box (paragraph [0058] of Keohane). Accordingly,
Applicant respectfully submits that there is no teaching or
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suggestion in Keohane that the ordering rules are ordering the
priority order of the applicable entry rules.
(Reply Br. 7 (brackets in original).)
We are persuaded of reversible error. Keohane discloses that “a user
may select rules for controlling which entries to include in a list of entries
for an auto-complete box, the ordering of the entries within the auto-
complete box, and any other preferences for specializing the output of the
list of entries for an auto-complete box for the user.” (Keohane | 55.) In
particular, Keohane discloses that “[applicable entry rules 320 specify rules
for selecting those entries that are applicable for an auto-complete box from
among entry database 306.” {Id. 157.) Keohane also discloses that
“[ojrdering rules 322 specify rules for ordering the list of applicable entries
for an auto-complete box.” {Id. 1 58.) And Keohane discloses that “[ojutput
characteristic rules 320 specify rules for controlling the output
characteristics of the list of ordered, applicable entries.” {Id. 1 59.) In short,
Keohane discloses presenting an ordered list of applicable entries for an
auto-complete box. {See id. Fig. 3, ]Hf 58—59.) But we do not agree that the
“entries are rules themselves” {see Answer 5), and it is not clear where
Keohane discloses “presenting the list of rules in the priority order,” as
recited in claim 1.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 1 under § 103(a). Because independent claims 12, 16, and 21 contain
similar language, we are also persuaded that the Examiner erred in rejecting
claims 12, 16, and 21, and dependent claims 2—8, 10, 11, 13—15, 17—20, and
23—36 under § 103(a).
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DECISION
The Examiner’s rejection of claims 1—8, 10—21, and 23—26 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1—8, 10—21, and 23—26 under
35 U.S.C. § 103(a) are reversed.
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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