Joachim H. Frank et al.

Patent Trials and Appeals Board

Dec 23, 2019

11618182 - (R) (P.T.A.B. Dec. 23, 2019)

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.
11/618,182 12/29/2006 Joachim H. Frank CAM920060157US1 (033) 5405
46321 7590 12/23/2019
Shutts & Bowen LLP
STEVEN M. GREENBERG
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
EXAMINER
BEHNCKE, CHRISTINE M
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/23/2019 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):
docketing@crgolaw.com
patents@shutts.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOACHIM H. FRANK and JAMES E. RUMBAUGH

___________

Appeal 2018-006763
Application 11/618,182
Technology Center 3600
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY,
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON REHEARING
Appeal 2018-006763
Application 11/618,182
2
STATEMENT OF THE CASE
Pursuant to 37 C.F.R. § 41.52(a), Appellant1 filed a Request for
Rehearing on November 25, 2019 (“Req. Reh’g”) seeking reconsideration of
our Decision on Appeal mailed September 25, 2019 (“Dec.”). We have
jurisdiction over the Request for Rehearing under 35 U.S.C. § 6(b).
For reasons explained below, Appellant’s Request for Rehearing is
denied.
ANALYSIS
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the Board.”
37 C.F.R. § 41.52(a). Appellant first contends that, because the Board
determined that the claimed method of handling interrupts in a business
process is not an improvement to a technical field but to a business process,
the Board overlooked “Appellants’ arguments that the process shown in
Figure 3 of Appellants’ specification is not a process improving a ‘business
process’ but a process improving the technical field of interrupt handling
when applied to a business process.” Req. Reh’g 3 (citing Dec. 11).
Appellant asserts that the Specification demonstrates that interrupt handling
is a technical field. Req. Reh’g 4 (citing Spec. ¶¶ 8–9).
The Board did not overlook Appellant’s arguments. As explained in
the Decision, the Board determined that claim 1’s “method of handling an
interrupt in a business process” is not an improvement to a technical field
but merely uses existing computers as a tool to perform a particular task—
handling interrupts in a business process. Dec. 8–9, 11–12. Appellant

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42.
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Application 11/618,182

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merely disagrees with our determination. Mere disagreement with the
Board’s Decision is not a proper basis for rehearing.
Contrary to Appellant’s assertion, Figure 3 and paragraphs 8 and 9 of
the Specification do not describe improvements to a technical field but
improvements to a method of handling interrupts of tasks in a business
process. The Specification describes a known way of handling interrupts as
“immediate and displacing” and describes three other possible ways of
handling interrupts, “immediate and additive,” “deferred and displacing,”
and “deferred and additive.” Spec. ¶ 8. Likewise, Figure 3 depicts “a flow
chart illustrating a logic flow for handling interrupts in a business process
execution system.” Spec. ¶ 15. The Specification does not describe and
Figure 3 does not depict an improvement to a technical field but an
improvement to the ways of handling interrupts in the business process. See
e.g. Spec. ¶¶ 7–9. Further, other paragraphs of the Specification show that
an improvement to interrupt handling in a business process is not an
improvement to a technical field. As noted in the Decision, the
Specification describes the invention as related to “managing interrupting
events in a process flow for a business process” and describes known
handling interrupts in “a real-world [business] process external to the
computer model of a real-world business process.” Dec. 2 (citing Spec. ¶¶
1, 7).
Appellant next argues that because the Examiner allegedly admitted
that the claims were novel and non-obvious, the claims are neither routine,
conventional, nor well-understood and, therefore, patent eligible. Req.
Reh’g 4–5.
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Application 11/618,182

4
Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent eligible. Although the second step in the Mayo/Alice framework is
termed a search for an “inventive concept,” the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for “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.”’ Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18
(2014) (citation omitted). “Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and
non-obvious claim directed to a purely abstract idea is, nonetheless, patent
ineligible. See Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 566 U.S. 66, 90 (2012); see also Diamond v. Diehr, 450 U.S. 175, 188–
89 (1981) (“The ‘novelty’ of any element or steps in a process, or even of
the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter.”).
In the Decision, the Board found that the Specification sufficiently
demonstrates that the additional claim elements simply append well-
understood, routine, and conventional activities previously known to the
industry, specified at a high level of generality, to the abstract idea. See
Dec. 13–15 (citing Spec. ¶¶ 1–8, 28). In the Rehearing Request, Appellant
does not address the Board’s findings with respect to the disclosure of the
Specification. See Req. Reh’g 4–5. Appellant seems to merely disagree
with the Board’s general determination that the additional claim elements,
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Application 11/618,182

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individually and in combination, are well-understood, routine, and
conventional. Mere disagreement with the Board’s Decision is not a proper
basis for rehearing.
Appellant’s Request for Rehearing is denied.

CONCLUSION
Outcome of Decision on Rehearing:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1–9 101 patent ineligible
subject matter
1–9
Overall
Outcome
1–9

Final Outcome of Appeal after Rehearing:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9 101 patent ineligible
subject matter
1–9
Overall
Outcome
1–9
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
DENIED