John Clark et al.

Patent Trials and Appeals Board

Sep 3, 2019

13432856 - (D) (P.T.A.B. Sep. 3, 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.
13/432,856 03/28/2012 John Clark JR. 088325-0825461
(120200US)
3499
51206 7590 09/03/2019
Kilpatrick Townsend & Stockton LLP/Oracle
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
CHAMPAGNE, LUNA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
oraclepatentmail@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN CLARK JR., RAJESH BHATIA,
SHAILESH KUMAR, and GREG GETCHELL
____________

Appeal 2017-010187
Application 13/432,8561
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b). A hearing was held on July 23, 2019.

SUMMARY OF DECISION
We affirm.

1 Appellants identify Oracle International Corporation as the real party in
interest. App. Br. 3.
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THE INVENTION
Appellants describe the invention as “[a] method for dynamically
filtering a plurality of accounts in an Account Reconciliation Management
System includes determining a plurality of attributes, wherein each of the
plurality of attributes is associated with at least one of the plurality of
accounts, and receiving a selection of a first attribute in the plurality of
attributes.” Spec. ¶ 3.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for performing multi-stage filtering on a plurality
of accounts, the method comprising:
during a first filtering stage:
determining a plurality of attributes, wherein each of the
plurality of attributes is associated with at least one of the
plurality of accounts;
receiving a selection of a first attribute in the plurality of
attributes;
determining a first plurality of values, wherein each of
the plurality of values are associated with a value type of the
first attribute;
receiving a selection of a first value from the plurality of
values;
creating a first filter expression based on the first
attribute and the first value; and
filtering the plurality of accounts, wherein the filtering
comprises removing accounts from the plurality of accounts
that do not satisfy the first filter expression;
after filtering the plurality of accounts, determining that a
second attribute in the plurality of attributes is not associated
with any of the remaining accounts in the plurality of accounts;
and
removing the second attribute from the plurality of
attributes; and
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during a second filtering stage:
receiving a selection of a third attribute in the plurality of
attributes;
determining a second plurality of values, wherein each of
the plurality of values are associated with a value type of the
third attribute;
receiving a selection of a second value from the plurality
of values;
creating a second filter expression based on the third
attribute and the second value; and
filtering the plurality of accounts, wherein the filtering
comprises removing accounts from the plurality of accounts
that do not satisfy the second filter expression.

THE REJECTION
The following rejection is before us for review2.
Claims 1–20 are rejected under 35 U.S.C. 101 because the claimed
invention is directed to non-statutory subject matter.

FINDINGS OF FACT

We adopt the Examiner’s findings as set forth on page 2 in the Final
Office Action and on pages 2–5 in the Examiner’s Answer.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1–20 under 35 U.S.C. § 101.
The Appellants argue independent claims 1, 13, and 17 as a group,
and we select claim 1 as the representative claim for this group (App. Br. 5),

2 The Examiner withdrew the rejection of claims 1–20 under 35 U.S.C.
§ 103(a). (Answer 2).

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and so the remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See id. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., Diehr, 450 U.S. at
187 (“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
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566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
The U.S. Court of Appeals for the Federal Circuit has explained that
“the ‘directed to’ inquiry applies a stage-one filter to claims, considered in
light of the [S]pecification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
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or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance 84
Fed. Reg. at 53; see also MPEP § 2106.05(a)–(c), (e)–(h).
The Specification states:
Because of the vast number of accounts, and because of the
wide variation in how accounts are denned, filtering methods
may require a user to sift through a large number of options in
order to find needed accounts. Furthermore, finding an account
may include multiple filtering levels that include complicated
decisions at each level. Thus, in order to deal with diverse
business processes, as well as the many different types of
accounts that may be associated with these processes,
improvements are necessary in the art.
Specification ¶ 2. The preamble of the claim states it is “for performing
multi-stage filtering on a plurality of accounts.” (Claim 1.) Understood in
light of the Specification, claim 1, recites in pertinent part: during a first
filtering stage: determining a plurality of attributes, wherein each of the
plurality of attributes is associated with at least one of the plurality of
accounts; receiving a selection of a first attribute in the plurality of
attributes; determining a first plurality of values, wherein each of the
plurality of values are associated with a value type of the first attribute;
receiving a selection of a first value from the plurality of values; creating a
first filter expression based on the first attribute and the first value; filtering
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the plurality of accounts, wherein the filtering comprises removing accounts
from the plurality of accounts that do not satisfy the first filter expression;
after filtering the plurality of accounts, determining that a second attribute in
the plurality of attributes is not associated with any of the remaining
accounts in the plurality of accounts; and removing the second attribute from
the plurality of attributes; during a second filtering stage: receiving a
selection of a third attribute in the plurality of attributes; determining a
second plurality of values, wherein each of the plurality of values are
associated with a value type of the third attribute; receiving a selection of a
second value from the plurality of values; creating a second filter expression
based on the third attribute and the second value; and filtering the plurality
of accounts, wherein the filtering comprises removing accounts from the
plurality of accounts that do not satisfy the second filter expression.
Accordingly, the Examiner found that the claims are directed to
“filtering/sorting records based on certain conditions.” (Final Act. 2).
We agree with the Examiner that claim 1 is directed to
filtering/sorting data, by using successive stage process to remove data that
does not satisfy filter requirements at each stage because claim 1, in part
requires, “filtering the plurality of accounts, wherein the filtering comprises
removing accounts from the plurality of accounts that do not satisfy the first
filter expression.” Filtering/sorting data using a successive stage process to
remove data that does not satisfy filter requirements at each stage is a mental
process involving concepts performed in the human mind which is an
abstraction. Guidance 84 Fed. Reg. 52 citing Mayo, 566 U.S. at 71.
Turning to the second prong of the “directed to” test, claim 1 recites
no basic computer components and/or system device, and thus no
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component and/or system device can be said to integrate the judicial
exception as to “impose[] a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Guidance 84 Fed. Reg. at 53.
Thus, we find that the claims recite the judicial exception of a mental
process that is not integrated into a practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to financial accounts, does not make them any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“And that 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.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at
72–73).
Concerning this step, the Examiner found “that there are no
meaningful limitations in the claim that transform the judicial exception into
a patent eligible application such that the claim amounts to significantly
more than the abstract idea itself. The claims are rejected under 35 USC 101
as being directed to non-statutory subject matter.” (Final Act. 2, Appeal
Br. 2).
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We agree with the Examiner. “[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do
not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to determine, filter, remove, apply decision criteria to data
generate a result, and iteratively repeat same are some of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming”). See also, Glasswall Sols. Ltd. v. Clearswift Ltd., 754 F.
App'x 996, 998 (Fed. Cir. 2018) (claim reciting filtering in generic way
indicated the step was implemented in conventional way). In short, each
step does no more than require a generic computer to perform generic
computer functions.
Considered as an ordered combination, the computer components of
Appellants’ claims (15 and 17) add nothing that is not already present when
the steps are considered separately. The sequence of data reception-analysis
(determine, filter, remove, apply decision criteria to data generate a result,
and iteratively repeat same) and storing is equally generic and conventional
or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772
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F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval,
analysis, modification, generation, display, and transmission was abstract),
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling,
and monitoring was abstract). The ordering of the steps is, therefore,
ordinary and conventional.
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract ideas of a mental process using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice,
573 U.S. at 225–26.
We have reviewed all the arguments Appellants have submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (App. Br. 5–11, Reply Br. 1–4). We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue, “[t]he office defined the idea of the claims too
broadly.” (Appeal Br. 5).
We disagree with Appellants because Appellants’ argument is based
on a matter of degree and “[a]n abstract idea can generally be described at
different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016).
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Citing to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), Appellants argue, “[s]imilarly, the removal of filtering attributes at
each stage of the multi-stage filtering process to simplify filtering
expressions has no applicability outside of computer systems and is
‘inextricably intertwined with database technology.’” (Appeal Br. 6).
We disagree with Appellants that under the holding in Enfish our
decision would be different. In Enfish, the invention at issue was directed at
a wholly new type of logical model for a computer database: a self-
referential table that allowed the computer to store many different types of
data in a single table and index that data by column and row information.
Enfish, 822 F.3d at 1330–32. In finding the claims “not directed to an
abstract idea,” but “to a specific improvement to the way computers
operate,” the Federal Circuit noted that “the claims are not simply directed to
any form of storing tabular data, but instead are specifically directed to a
self-referential table for a computer database.” Enfish, 822 F.3d at 1336–37
(emphasis in original). We find nothing in the claims before us arising to
this level of technical improvement which arises to the level of technical
proficiency as found in Enfish. In fact, as found above, claim 1 recites no
basic computer components and/or system device(s). Instead, we find the
claims are focused on the mental process of filtering/sorting data using
successive stage process to remove data that does not satisfy filter
requirements at each stage.
Appellants argue,
removing just two unnecessary attributes from 10 possible
attributes will improve the processing time by 20%. Searching
250 million data records would be reduced from 4.6 seconds
down to 3.6 seconds. Therefore, because the claims solve the
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computer-specific problem and improve the functioning the
computer itself, they necessarily add ‘significantly more’ to any
alleged abstract idea.

(Appeal Br. 7). Appellants similarly argue,
Dynamically altering selectable attributes for filtering
expressions instead of relying on hard-coded definitions and
filtering software is a technical innovation that provides the
distinct technology improvements of simplifying filtering
expressions at each stage of the filtering process.
(Appeal Br. 8).
We are not persuaded by Appellants’ arguments here because “a claim
for a new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo, 566
U.S. at 90). That is, removing unnecessary attributes in a filter and/or
dynamically altering selectable attributes in filtering are mental processes.
Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed.
Cir. 2016) (filtering is an abstract idea and in combination only with “a set
of generic computer components” … “would not contain an inventive
concept.”) Furthermore, to the extent Appellants are arguing that the use of
a computer gains an advantage not occurring in mental process, we note that
“the fact that the required calculations could be performed more efficiently
via a computer does not materially alter the patent eligibility of the claimed
subject matter.” FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d
1089, 1098 (Fed. Cir. 2016) (citing Bancorp Servs. L.L.C. v. Sun Life
Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)).
Appellants next argue,
by reducing the complexity of filtering expressions and
eliminating attributes from those filtering expressions, the
processing power and processor time required to filter a large
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number of records can be reduced. Removing attributes at each
filtering stage is not an improvement to an abstract idea, but is
rather a ‘specific implementation of a solution to a problem in
the software arts.’
(Appeal Br. 8).
We disagree with Appellants because the question is whether the
claims as a whole “focus on a specific means or method that improves the
relevant technology” or are “directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.” McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016). In this case, claim 1 as a whole is focused on satisfying certain
contingencies for removing undesired accounts in a financial database(s) and
not a particular way of programming or designing the software or a
computer circuit. Although a computer must be programmed, the claims do
not recite any programming, but only the results to be obtained by any and
all means.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269
(2016).
Likewise we fail to see the similarities asserted by Appellants (Appeal
Br. 7) between the claims on appeal here and those adjudicated in DDR
Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245 (Fed. Cir. 2014). In
DDR Holdings, the Court evaluated the eligibility of claims “address[ing]
the problem of retaining website visitors that, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be
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instantly transported away from a host’s website after ‘clicking’ on an
advertisement and activating a hyperlink.” Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no “pre-Internet analog.” Id. at 1258. In contrast, claim 1
before us here, merely describes a mental process of data filtering, without
any technological mechanisms for doing so.
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s determination of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner’s § 101 rejection
of claims 1–20.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–20 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED