Ex Parte Van Der Ploeg et alDownload PDFPatent Trial and Appeal BoardMay 16, 201813314910 (P.T.A.B. May. 16, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/314,910 12/08/2011 51206 7590 05/18/2018 Kilpatrick Townsend & Stockton LLP/Oracle Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 FIRST NAMED INVENTOR Kristine Lois Van Der Ploeg 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. 88325-818482 (l l 1900US) 2712 EXAMINER PRATT, EHRINLARMONT ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 05/18/2018 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 KRISTINE LOIS VANDERPLOEG, SIV AKUMAR SUNDARESAN, JOHN HSIEH, KIRAN MUNDY, SATYA ANUR, PRIYANKA SHETYE, MARGARET WASOWICZ, WILLIAM CAINE, and BORMI SHIN Appeal2016-005266 Application 13/314,910 1 Technology Center 3600 Before BIBHU R. MOHANTY, JAMES A. WORTH, and ROBERT J. SILVERMAN, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134(a) of the final rejection of claims 1-20 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 The Appellants identify Oracle International Corporation as the real party in interest (App. Br. 3). Appeal2016-005266 Application 13/314,910 THE INVENTION The Appellants' claimed invention is directed to updating a project plan with input received from a user (Spec., para. 5). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method of updating a project plan in accordance with input received from a user account, the method comprising: storing a master version of the project plan, wherein the master version of the project plan is stored as live data in a database; receiving, from an administrative account, a threshold value; dividing, using the threshold value, a range of possible values related to changes to the project plan into first and second non- overlapping sets of values such that the first set of values represents types of changes that may be made to the master version of the project plan in real-time without an approval from the administrative account; after receiving the threshold value from the administrative account, receiving, from the user account, a change to the project plan; wherein: the user account can access the master version of the project plan but has limited privileges to update the master version of the project plan in real-time; and the administrative account has more privileges to update the master version of the project plan in real-time than the user account; deriving a change value of the same type as the threshold value that corresponds to the change in the project plan; determining that the change value does not violate the threshold value if the change value is included in the first set of values; and in response to determining that the change value does not violate the threshold value, updating the master version of the project plan in real-time to reflect the change in the project plan. 2 Appeal2016-005266 Application 13/314,910 THE REJECTIONS The following rejections are before us for review: 1. Claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 1, 4--11, 14, 15, and 17 are rejected under 35 U.S.C. § I03(a) as unpatentable over Abrams (Abrams et al., US 7,305,392 Bl, issued Dec. 2007, hereinafter "Abrams") and Kano (Kano et al., US 2008/0033700 Al, published Feb. 2008, hereinafter "Kano"). 3. Claims 2, 3, 12, 13, 16, and 18-20 are rejected under 35 U.S.C. § I03(a) as unpatentable over Abrams, Kano, and Pederson (US 2010/0251247 Al published Sept. 30, 2010). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 2 ANALYSIS Rejection under 35 US.C. § 101 The Appellants argue that the rejection of claim 1 is improper because claim 1 is not directed to an abstract idea (Reply Br. 2-5). The Appellants also argue that the claim is "significantly more" than any alleged abstract idea (Reply Br. 5-10). 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) ( explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal2016-005266 Application 13/314,910 In contrast, the Examiner has determined that rejection is proper (Ans. 2--4). We agree with the Examiner. 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: "laws of nature, natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014). In judging whether claim 1 falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court's two- step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). In accordance with that framework, we first determine whether the claim is "directed to" a patent-ineligible abstract idea. If so, we then consider the elements of the claim both individually and as "an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent-eligible application of the abstract idea. Id. This is a search for an "inventive concept" an element or combination of elements sufficient to ensure that the claim amounts to "significantly more" than the abstract idea itself. Id. The Court also stated that "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Id at 2358. Here, we determine that the claim is directed to the concept of updating a project plan based on a threshold value. This is a method of organizing human activities or an idea in itself and is an abstract idea beyond the scope of§ 101. The Specification at para. 5 indicates that the invention 4 Appeal2016-005266 Application 13/314,910 relates to "updating a project plan in accordance with input received from a user." Similarly, the preamble of the claim indicates that the claim is directed to a method of "updating a project plan in accordance with input received from a user account." We next consider whether additional elements of the claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application of the abstract idea, e.g., whether the claim does more than simply instruct the practitioner to implement the abstract idea over the using generic computer components. We conclude that it does not. Considering each of the claim elements in tum and as an ordered combination, the function performed by the computer system at each step of the process is purely conventional. For example, the Specification at paragraph 22 describes using known available software. The Specification at paragraphs 73-7 6 describes using known software, computer components, and communication networks. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. We note the point about pre-emption (App. Br. 8). While pre-emption "might tend to impede innovation more than it would tend to promote it, 'thereby thwarting the primary object of the patent laws'" (Alice, 134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012)), "the absence of complete preemption does not demonstrate patent eligibility" (Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015), cert. denied, 5 Appeal2016-005266 Application 13/314,910 136 S. Ct. 701, 193 (2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract."). For these reasons the rejection of claim 1, and its dependent claims which were not separately argued is sustained. Claims 1 7-20 are directed to similar subject matter and the rejection of these claims is sustained as well. We reach the same conclusion as to system claims 11-16. Here, as in Alice, "the system claims are no different in substance from the method claims. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea." Alice 134 S. Ct. at 2351. "[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea 'while adding the words 'apply it' is not enough for patent eligibility." Id. at 2358 (quoting Mayo, 132 S. Ct. at 1294). Rejection under 35 USC§ 103(a) The Appellants argue that the rejection of claim 1 is improper because the cited prior art does not disclose or suggest the claim limitations for: receiving, from an administrator account, a threshold value ... [that] represents types of changes that may be made to the master version of the project plan in real-time without an approval from the administrative account .... receiving, from the user account, a change to the project plan ... deriving a change value of the same type as the threshold value that corresponds to the change in the project plan; [and] determining that the change value does not violate the threshold value. 6 Appeal2016-005266 Application 13/314,910 (App. Br. 6, emphasis added). In contrast, the Examiner has disclosed the cited claim limitation in Abrams at Fig. 4, col. 7:41-57, 8:38-52, col. 13:14--16; and Kano at paras. 83-87 (Final Act. 6, Ans. 7, 8). We agree with the Appellants. For example, in Abrams at col. 13: 14-- 16 the claimed "threshold value" is not disclosed by the citation to a "shared value sum" which is disclosed as a "numerical indication of who the user has selected to be able to access the data" in the manner claimed. The citations to Kano at paras. 83-87 fail to disclose the claimed "threshold value" in the manner claimed as well. Regardless, there is no articulated reasoning with rational underpinnings for combining the references to meet the argued claim limitation without impermissible hindsight. For these reasons this rejection of claim 1 is not sustained. The remaining claims contain a similar limitation and the rejection of these claims is not sustained as well. CONCLUSIONS OF LAW We conclude that Appellants have not shown that the Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 101 as being directed to non- statutory subject matter. We conclude that Appellants have shown that the Examiner erred in rejecting claims 1, 4--11, 14, 15, and 17 under 35 U.S.C. § 103(a) as unpatentable over Abrams and Kano. 7 Appeal2016-005266 Application 13/314,910 We conclude that Appellants have shown that the Examiner erred in rejecting claims 2, 3, 12, 13, 16, and 18-20 under 35 U.S.C. § 103(a) as unpatentable over Abrams, Kano, and Pederson. DECISION The Examiner's rejection of claims 1-20 is sustained. 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 8 Copy with citationCopy as parenthetical citation