Ex Parte Allin et al

Patent Trial and Appeal Board

Oct 19, 2018

13658390 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/658,390 10/23/2012 Patrick J. Allin
51444 7590 10/23/2018
Kraguljac Law Group/Oracle
4700 Rockside Road
Summit One, Suite 510
Independence, OH 44131
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.
T9017-US-CON-03(15600-26) 5121
EXAMINER
LIU,IJUNG
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
10/23/2018 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):
MPusti@KragLaw.com
PTOMail@KragLaw.com
DDay@KragLaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK J. ALLIN, CHARLES C. CHERRY, and
WILLIAM H. EICHHORN
Appeal2017-007810
Application 13/658,390
Technology Center 3600
Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
AARON W. MOORE, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 14--20. Claims 1-13 have been
canceled. See App. Br. 17 (Claims App'x). We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Oracle International
Corporation. App. Br. 2.
Appeal2017-007810
Application 13/658,390
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention generally relates to "a computer-based method
of managing documents." Spec. ,r 9. Claim 14, which is illustrative of the
claimed invention, reads as follows:
14. A computer-based method of managing documents, the
method comprising:
storing a list of a plurality of required documents in a
project document requirement table of a database server, the list
of required documents identifying a required document;
receiving the required document over a computer network
from a first computer device and storing the required document
in a memory of a construction payment management system;
causing, by the construction payment management
system, a receive document notification to be displayed on a
second computer device on the computer network, the receive
document notification indicating the required document is
available for download;
receiving, by the construction payment management
system, an update to a status of the required document over the
computer network from the second computer device;
withholding a payment associated with a payment request
if the status of any of the required documents indicates any of the
required documents is missing or expired; and
transmitting electronically, by the construction payment
management system, payment instructions to a payment system
if the statuses of the required documents indicate none of the
required documents is missing or expired, wherein the payment
instructions indicate the payment associated with the payment
request is to be paid.
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Rejection
Claims 14--20 stand rejected under 35 U.S.C. § 101 because the
claimed subject matter is judicially-excepted from patent eligibility under
§ 101. Final Act. 2-5.
Issue on Appeal
Did the Examiner err in finding that claims 14--20 are directed to
subject matter that is judicially-excepted from patent eligibility under § 101?
ANALYSIS
Appellants do not substantively argue claims 14--18 and 20 separately,
but instead rely on the same arguments for these claims. In accordance with
37 C.F.R. § 4I.37(c)(l)(iv), we select independent claim 14 as the
representative claim. Remaining claims 15-18 and 20 stand or fall together
with claim 14. Appellants present additional arguments for claim 19. App.
Br. 11, 16. We address these arguments below under separate subheadings.
Re} ection under 3 5 US. C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S.Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
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set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (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, 134 S.Ct. at 2355. The first
step in that analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts," such as an abstract idea. Id. The
inquiry often is whether the claims are directed to "a specific means or
method" for improving technology or whether they are simply directed to an
abstract end-result. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1314 (Fed. Circ. 2016). If the claims are not directed to a patent-
ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the
second step, where the elements of the claims are considered "individually
and 'as an ordered combination' to determine whether the additional
elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S.Ct. at 2355 (quoting Mayo, 566 U.S. at 78-79).
We, therefore, look to whether the claims focus on a specific means or
method that improves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea and merely invokes generic
processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
CLAIM 14
Step 1
The Examiner finds claim 14 is directed to "managing documents" by
"storing a list of documents; receiving [a] document, receiving [an] update,
withholding a payment and transmitting payments." Final Act. 3. The
Examiner finds claim 14 is directed to an abstract idea because the recited
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steps "can be performed manually or by a 'processing system' and is similar
to the kind of 'organizing human activity' at issue in Alice Corp." Final
Act. 3. Additionally, the Examiner finds "[t]he claims are directed [to the]
abstract idea of fundamental economic practice in Alice. The current claim
is directed to [the] abstract idea of payment instructions indicat[ing] the
payment associated with the payment request is to be paid, just like [the]
abstract idea of mitigating settlement risk in Alice." Ans. 2. The Examiner
also finds:
In the current case, receiving document (i.e. collecting
information), an update to a status of the required document (i.e.
analyzing it) and transmitting payment instructions (i.e.
displaying certain results of the collection and analysis), [is] just
like collecting information, analyzing it, and displaying certain
results of the collection and analysis in Electric Power Group.
The claim [is] also directed to [the] abstract idea of certain
methods of organizing human activity (TL! Comms. ). The
current claim is directed to [the] abstract idea of . . . identifying
a required document (i.e. classifying digital images) and storing
the required document in a memory of a construction payment
management system (i.e. storing digital images in an organized
manner).
Ans. 3 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016); In re TL! Communications LLC Patent Litigation, 823 F .3d 1607
(Fed. Cir. 2016)).
Appellants contend claim 14 is not directed to an abstract idea. App.
Br. 7-11; Reply Br. 2-5. Appellants argue the Examiner fails to consider
the claim as a whole but, instead, only considers the preamble and the first
few words of each of the recited limitations. App. Br. 8. Appellants argue
"[ w ]hen considered as a whole with the other claim elements, claim 14 is
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directed to a construction project management system that controls
electronic instructions for payments." App. Br. 8.
Claim 14 is directed to managing documents related to a construction
process and controlling electronic instructions for payments based on
managing the documents. The Specification describes the claimed method
as a conventional business practice utilized by contractors and financial
entities as part of residential and commercial construction projects. Spec.
,r,r 2-8. As such, claim 14 is directed to a fundamental business practice and
method of organizing human activity, long prevalent in our system of
commerce. Like the risk hedging in Bilski (see Bilski v. Kappas, 561 U.S.
593 (2010)), the intermediated settlement in Alice (see Alice, 134 S. Ct. at
2356-57), verifying credit card transactions in CyberSource (see
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011) ), collecting and analyzing information to detect and notify of misuses
in FairWarning (see FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093-94 (Fed. Cir. 2016)), and guaranteeing transactions (see
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)), claim
14 is directed to an abstract idea.
Appellants' argument that the claimed invention improves a
technology or technical field arising in the realm of computer networks
(App. Br. 8-10) is not persuasive because the mere application of an abstract
idea on a computer system does not make a claimed invention patentable.
See Alice Corp., 134 S. Ct. at 2358 ("[I]f a patent's recitation of a computer
amounts to a mere instruction to 'implemen[t]' an abstract idea 'on ... a
computer,' []that addition cannot impart patent eligibility.") ( citations
omitted). A claimed invention must embody a concrete solution to a
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problem having "the specificity required to transform a claim from one
claiming only a result to one claiming a way of achieving it." SAP Am., Inc.
v. InvestPic, LLC, 890 F.3d 1016, 1021-22 (Fed. Cir. 2018) (collecting
cases).
Here, the recited limitations of: (1) "storing a list of a plurality of
required documents"; (2) "receiving the required document"; (3) "causing
... a receive document notification to be displayed"; (4) "receiving ... an
update to a status of the required document"; (5) "withholding a payment
associated with a payment request if the status of any of the required
documents indicates any of the required documents is missing or expired";
and ( 6) "transmitting ... payment instructions to a payment system if the
statuses of the required documents indicate none of the required documents
is missing or expired" are the abstract concepts of collecting, storing, and
analyzing information and transmitting a result of the collection and
analysis. Information, as such, is intangible. See Microsoft Corp. v. AT&T
Corp., 550 U.S. 437,451 n.12 (2007). Information collection and analysis,
including when limited to particular content, is within the realm of abstract
ideas. See, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). Recitation, as
in this case, of the collecting, storing, and analyzing information and
transmitting a result of the collection and analysis is abstract absent a
"specific improvement to the way computers [ or other technologies]
operate." Enfish, 822 F.3d at 1336. It is clear, from the claim and the
Specification, that the recited limitations require no improved computer
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resources Appellants claim to have invented, just already available
computers, with their already available basic functions, to use as tools in
executing the claimed process.
Appellants contend claim 14 is akin to the claim at issue in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), in which
claims addressing a business challenge (retaining website visitors) that is
particular to the Internet were held patent-eligible. App. Br. 10-11. This
argument is unpersuasive. Tracking and coordinating required documents
on multiple computer devices and controlling transmission of electronic
instructions for payments based on specific conditions are not business
challenges particular to the Internet, or to any other technological area-the
underlying ideas are for a business method that, as described in the
Specification (i1i1 2-8), may be performed by a human using pen and paper.
Step 2
Turning to the second step of the analysis, the Examiner finds that the
additional elements recited in the claims are not sufficient to amount to
significantly more than the abstract idea. Final Act. 3--4. We find nothing in
Appellants' claims that adds anything "significantly more" to transform the
abstract concepts of collecting, storing, and analyzing information and
transmitting a result of the collection and analysis into a patent-eligible
application. Alice, 134 S. Ct. at 2357. Limiting such an abstract concept to
a general purpose computer having generic components does not make the
abstract concept patent-eligible under 35 U.S.C. § 101. As recognized by
the Supreme Court, "the mere recitation of a generic computer cannot
transform a patent ineligible abstract idea into a patent-eligible invention."
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See Alice, 134 S. Ct. at 2358 (concluding claims "simply instruct[ing] the
practitioner to implement the abstract idea of intermediated settlement on a
generic computer" not patent eligible); see also Dealertrack, Inc. v. Huber,
674 F.3d 1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a 'computer
aided' limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible" (internal citation omitted)).
Appellants argue that "[ c ]laim 14 contains an 'inventive concept' in
its ordered combination of limitations that are not found in the prior art" and
"[ t ]hus claim 14 recites significantly more and is patent eligible under
§ 101." App. Br. 12; see also App. Br. 13-14. Yet the Supreme Court has
held that "[t]he '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." Diamondv. Diehr, 450 U.S. 175, 188-89 (1981). Thus, "under the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility." Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Step 1
CLAIM 19
Appellants argue:
Claim 19 further recites wherein the payment subject to hold
notification comprises a link selectable to review the status of
any of the required documents. Claim 19 further cites "a link"
selected to review a status. This is [sic] adds to the solution of
claim 14 similar to the patent eligible claim from DDR. DDR
recites "a host web page having a link correlated with a
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commerce object." Thus claim 19 recites is patent eligible under
§ 101 for similar reasons as DD R.
App. Br. 11.
We disagree. Appellants' argument overlooks that the argued
"solution" must be a technical solution. Appellants' argument does not
explain how either the problem or solution are technical. Unlike the claims
at issue in cases such as DDR ( claims at issue are "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks" (DDR, 773 F.3d at 1257)) and Enfzsh
( claims at issue are "directed to a specific implementation of a solution to a
problem in the software arts" (Enfzsh, 822 F.3d at 1339)), Appellants' claims
merely address a business issue through the use of generic, computer-related
recitations that do not add meaningful limitations to steps otherwise directed
to an abstract idea.
Step 2
Regarding the second step of the analysis, Appellants repeat the
arguments provided with respect to the first step of the analysis. App.
Br. 16. We find these arguments unpersuasive for the reasons discussed
supra.
CONCLUSION
Because Appellants' claims 14--20 are directed to a patent-ineligible
abstract concept, and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
these claims under 35 U.S.C. § 101.
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DECISION
We affirm the Examiner's rejection of claims 14--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)(l )(iv).
AFFIRMED
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