Ex Parte APTE et al

Patent Trial and Appeal Board

Apr 16, 2018

11848140 (P.T.A.B. Apr. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111848,140 08/30/2007 UMESHAPTE
42425 7590 04/18/2018
HICKMAN PALERMO BECKER BINGHAM/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
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.
50277-3309 3273
EXAMINER
MAGUIRE, LINDSAY M
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
04/18/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UMESH APTE, JASON ARON ALONZO,
and JOHN LEONG YEE
Appeal2016-008640 1
Application 11/848, 1402
Technology Center 3600
Before MICHAEL W. KIM, NINA L. MEDLOCK, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 4, 6-8, 20, and 22-24. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
February 22, 2016) and Reply Brief ("Reply Br.," filed September 19,
2016), and the Examiner's Answer ("Ans.," mailed July 20, 2016) and Final
Office Action ("Final Act.," mailed September 10, 2015).
2 Appellants identify Oracle International Corporation as the real party in
interest. App. Br. 2.
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CLAIMED INVENTION
Appellants' claimed invention "relates generally to information
technology" and, more specifically, to "comparing a financial location
derived from a physical location to a financial location associated therewith
by a financial system" (Spec. i-f 1 ).
Claims 4 and 20 are the independent claims on appeal. Claim 4,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
4. A method comprising:
[(a)] storing in a repository, by a computing system that
comprises one or more processors, data that describes one or
more attributes of one or more devices;
[ (b)] wherein the one or more devices are
communicatively couplable with a network;
[ ( c)] wherein at least one of the one or more attributes
corresponds to a financial location defined by a financial system;
[ ( d)] wherein the repository stores information
associated with each of the one or more devices;
[ ( e)] wherein the repository stores a first mapping
between:
[ ( e 1)] each of the one or more devices, and a
financial location of record corresponding to each device;
[ ( t)] detecting, by the computing system, a router or
switch, which communicatively couples the one or more devices
to the network;
[ (g)] upon detecting the router or switch, identifying, by
the computing system:
[ (g 1)] an identity of the router or switch; and
[(g2)] port numbers, of the router or switch, through
which the one or more devices are communicatively
coupled with the network;
[(h)] determining, by the computing system, a physical
location that is associated with at least one of:
[(hl)] the identity of the router or switch; or
[(h2)] the port numbers of the router or switch; and
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[(i)] storing, by the computing system, a second
mapping between a plurality of physical locations and a plurality
of financial locations, wherein the second mapping associates
each of the physical locations with one or more of the financial
locations;
[ U)] determining, by the computing system, based at
least in part on the physical location and the second mapping, a
physically-derived financial location;
[(k)] determining, by the computing system, based at
least in part on the first mapping, a financial location of record
corresponding to a device of the one or more devices;
[ (1)] performing a comparison, by the computing system,
between the physically-derived financial location and the
financial location of record for the device; and
[(m)] based on the comparison, detecting, by the
computing system, a mismatch between the physically-derived
financial location and the financial location of record for the
device;
[(n)] in response to detecting the mismatch, notifying a
user of the mismatch.
REJECTION
Claims 4, 6-8, 20, and 22-24 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. 3
ANALYSIS
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: "[l]aws of nature, natural phenomena, and
3 We treat the Examiner's reference in the Final Office Action to cancelled
claims 1 7-19 as inadvertent error.
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abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
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 there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"'whether their character as a whole is directed to excluded subject matter.'"
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that the claims are directed to "determining and
mapping a physical location of an asset versus a financial location of
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record," i.e., to "[d]etermining if an asset is in the location that it is supposed
to be," which the Examiner concludes is a fundamental economic practice,
and, therefore, an abstract idea (Final Act. 5). The Examiner also
determined that the claims do not include limitations that are "significantly
more" than the abstract idea because "the claims do not include an
improvement to another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations beyond
generally linking the use of an abstract idea to a particular technological
environment" (id. at 4).
Independent Claims 4 and 20 and Dependent Claims 22-24
Appellants argue claims 4, 20, and 22-24 together (App. Br. 5-23).
We select independent claim 4 as representative. The remaining claims
stand or fall with claim 4. See 37 C.F.R. §41.37(c)(l)(iv).
Appellants variously argue that the rejection under§ 101 cannot be
sustained because the Examiner has failed to identify an abstract idea that
accurately reflects the claimed invention, and also has failed to expressly
address the "additional elements" recited in claim 4, which Appellants
maintain amount to "significantly more" than the judicial exception (see,
e.g., App. Br. 6). Appellants' arguments are not persuasive.
Pointing to the Final Office Action, Appellants maintain that the
Examiner mischaracterizes the claims as directed to "determining a physical
location of an asset" (id. at 16). Appellants assert that, to the extent that
claim 4 mentions a physical location at all, it is the physical location of
either ( 1) the router or switch to which the asset is connected or (2) the port
number of the router or switch through which the asset is connected. And
Appellants argue that detecting this physical location is "merely a
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preliminary step to achieve the overall goal of Claim 1 [sic], which is to
detect and report mismatches between financial locations of record of a
device, and a physically-derived financial location" (id.).
The difficulty with Appellants' argument is that the Examiner did not
merely find that the claims are directed to "determining a physical location
of an asset." Instead, responding to Appellants' arguments, the Examiner
explained that the claims are directed to "determining and mapping a
physical location of an asset versus a financial location of record," i.e., to
"[ d]etermining if an asset is in the location that it is supposed to be" (Final
Act. 5).
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."' See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016) (citing Internet Patents Corp., 790 F.3d at 1346). It asks
whether the focus of the claims is on a specific improvement in relevant
technology 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.
Here, it is clear from the Specification that the claimed invention is
directed to tracking the physical location of business assets, including, in
particular, readily portable assets, which can be transported from one
location to another with relative ease, often without reporting the change in
location. This is done by comparing the asset's "financial location" of
record, i.e., the financial location associated with the physical location where
the asset is reportedly present, to its "physically-derived financial location,"
i.e., the financial location associated with the physical location where the
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asset is actually present, and notifying a user of any mismatches (see, e.g.,
Spec. i-fi-f l ("embodiments of the present invention relate to comparing a
financial location derived from a physical location to a financial location
associated therewith by a financial system"), 8-11, 12 (noting that a location
change may be made, which is not reported to the financial application; as a
result, the financial location associated with the physical location of an asset
may not correspond with the financial location defined by the financial
application), 19-21 )). The claims, in our view, may fairly be characterized
as directed to tracking the location of an asset by comparing the asset's
financial location to its physically-derived financial location, and reporting
any mismatches. As such, we see no legal difficulty with the Examiner's
determination that the claims are directed to "[ d]etermining if an asset is in
the location that it is supposed to be" (Final Act. 5).
We also cannot agree with Appellants that an asserted concept may
only qualify as an abstract idea if it falls within one of the categories set
forth in the USPTO's "July 2015 Update: Subject Matter Eligibility" (App.
Br. 18-20). 4 There is no dispute that the Court in Alice provided several
broad examples of what might constitute an "abstract idea," including
(1) fundamental economic practices; (2) certain methods of organizing
human activities; (3) "an idea of itself'; and ( 4) mathematical relationships
or formulae. Alice Corp., 134 S. Ct. at 2350, 2356. And these examples are
reflected in the US PTO guidance. But there is no indication in Alice that
these examples were intended to be exhaustive, as opposed to providing a
broad framework within which an analysis of patent-eligibility should
4 Available at https://www.uspto.gov/sites/ default/files/documents/ieg-july-
2015-update.pdf.
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appropriately be conducted. Indeed, we are aware of no precedent, nor, for
that matter, do Appellants identify any precedent, that holds that only these
enumerated categories can qualify as abstract ideas.
Moreover, although there may be factual differences, we agree with
the Examiner that claim 4 is analogous to the claims at issue in SmartGene,
Inc. v. Advanced Biological Labs, SA, 555 F. App'x 950 (Fed. Cir. 2014)
(see Ans. 8), and like the claims in SmartGene, involves no more than the
abstract idea of comparing stored data (an asset's financial location) with
input data (the asset's physically-derived financial location), i.e., to detect
and report mismatches between these two locations - a concept that, as the
Examiner observes (Ans. 8), can fairly be considered an "idea of itself," and,
therefore, within the categories set forth in the Office's guidance.
Turning to step two of the Mayo/Alice framework, we are not
persuaded by Appellants' arguments that the § 101 rejection should be
withdrawn because the claims recite "significantly more" than an abstract
idea. Quoting limitations (f) though (n) of claim 4, Appellants argue that
these are not "mere instructions for implementing the abstract idea on a
generic computing device" (App. Br. 9-10) and that these elements are not
well-understood, routine or conventional in the field (id. at 13-14). But,
Appellants do not point to any evidence of record, short of attorney
argument, to support that position. We also find no indication in the
Specification, nor do Appellants point us to any indication, that the
particular operations recited in claim 4 require any specialized computer
hardware or other inventive computer components, invoke any assertedly
inventive programming, or that the claimed invention is implemented using
other than generic computer components to perform the claimed method
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steps. In fact, the Specification expressly states that "embodiments of the
invention are not limited to any specific combination of hardware circuitry
and software" (Spec. i-f 62; see also id. i-fi-1 63---65).
Appellants further argue that these "additional limitations" limit the
claimed invention to a "specific critical practical application" (App. Br. 10-
13 ). Yet, limiting the use of the abstract idea to a particular technological
environment does not make the claims any less abstract. See Alice Corp.,
134 S. Ct. at 2358. Nor is the recitation of a practical application for an
abstract idea sufficient to transform the abstract idea into a patent-eligible
invention. Cf CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1371 (Fed. Cir. 2011) ("The Court [in Parker v. Flook, 437 U.S. 584 (1978)]
rejected the notion that the recitation of a practical application for the
calculation could alone make the invention patentable.").
We also are not persuaded by Appellants' argument that claim 4 is
patent-eligible because the claim recites limitations that "improve upon the
functioning of the computing system itself' (App. Br. 15). Appellants argue
that "[t]he approach of Claim 4 increases the efficiency of determining
mismatches between the 'physically-derived financial location' and the
'financial location of record' for one or more devices" such that the
computing system experiences a decrease in resource utilization (id.). But,
even accepting Appellants' argument, there is a fundamental difference
between computer functionality improvements, on the one hand, and uses of
existing computers as tools to perform a particular task, on the other.
Indeed, the Federal Circuit applied this distinction in Enfish, in rejecting a
§ 101 challenge at the step one stage in the Alice analysis because the claims
at issue focused on a specific type of data structure, i.e., a self-referential
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table for a computer database, designed to improve the way a computer
carries out its basic functions of storing and retrieving data, and not merely
on asserted advances in uses to which existing computer capabilities could
be put. Enfish, 822 F.3d at 1335-36. We are not persuaded that Appellants'
alleged improvement represents an improvement in computer capabilities as
opposed to an improvement in tracking business assets for which a computer
is used as a tool in its ordinary capacity.
Unlike the claims found patent-eligible in previous cases, the focus of
claim 4 is not on an improvement to any particular computer technology.
See, e.g., McRO, 837 F.3d at 1314--15 (finding the claims patent-eligible
because they "focused on a specific asserted improvement in computer
animation"). Instead, claim 4 addresses the business problem of tracking the
locations of business assets (see, e.g., Spec. i-fi-1 4, 8-12).
Dependent Claims 6, 7, and 8
For much the same reasons set forth above with respect to claim 4, we
are not persuaded that the additional limitations recited in dependent
claims 6, 7, and 8 add significantly more to the abstract idea so as to render
the claims patent-eligible. Claims 6, 7, and 8 depend, directly or indirectly,
from claim 4, and specify the actions that are taken upon detecting a
mismatch, i.e., "providing a mechanism with which the mismatch may be
reconciled" (claim 6); "reconciling the mismatch ... [by] changing the
financial location of record to reflect the physically-derived financial
location" (claim 7); and "generating an exception and displaying a report
relating to the exception (claim 8).
Appellants argue that the "additional elements" of the dependent
claims qualify as "significantly more" because they are not generic computer
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functions and improve the functioning of the computer itself (App. Br. 23-
25). But, as with claim 4, there is no indication of record that the particular
operations recited in these claims require any specialized computer hardware
or other inventive computer components, invoke any assertedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform the claimed method steps. We
also are not persuaded that these claims improve the functioning of the
computer itself as opposed to merely providing an improved method for
tracking business assets for which a computer is used as a tool.
Appellants' Additional Arguments
Advancing further arguments, Appellants acknowledge that novelty
does not automatically establish patent eligibility. But, Appellants assert
that "it is not correct that satisfying the non-obviousness requirement of
[35 U.S.C. § 103)] is unrelated to eligibility" (App. Br. 25). Appellants,
thus, ostensibly maintain that the pending claims are automatically patent-
eligible because the Board previously reversed the Examiner's obviousness
rejections (id. at 25-26). We disagree.
The Court, in Mayo, expressly declined "the Government's invitation
to substitute§§ 102, 103, and 112 inquiries for the better established inquiry
under§ 101." Mayo, 566 U.S. at 91. And, in Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307 (2016), the Federal Circuit made clear that
the jury's finding of non-obviousness did not "resolve the question of
whether the claims embody an inventive concept at the second step of
Mayo/Alice." Id. at 1315.
Finally, we are not persuaded by Appellants' argument that the
Examiner's failure to apply a streamlined analysis is contrary to US PTO
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guidelines. Nor are we persuaded that the pending claims are patent-eligible
because the claims do not seek to preempt the judicial exception (App. 28-
29).
As set forth in the Office's "2014 Interim Guidance on Patent Subject
Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), the streamlined
analysis is an optional tool that an examiner may use at his or her discretion.
The Guidance, thus, instructs that "[ fJor purposes of efficiency in
examination, a streamlined eligibility analysis can be used." See Interim
Guidance, 79 Fed. Reg. at 74625 (emphasis added). The Guidance also
instructs that "if there is doubt as to whether the applicant is effectively
seeking coverage for a judicial exception itself, the full analysis should be
conducted to determine whether the claim recites significantly more than the
judicial exception." Id. (emphasis added). The Examiner's decision here to
perform a full § 101 analysis was, in our view, a proper exercise of the
Examiner's discretion.
Regarding preemption, there is no dispute that the Supreme Court has
described "the concern that drives [the exclusion of abstract ideas from
patent eligible subject matter] as one of pre-emption." Alice Corp.,
134 S. Ct. at 2354. But characterizing preemption as a driving concern for
patent eligibility is not the same as characterizing preemption as the sole test
for patent eligibility. "The Supreme Court has made clear that the principle
of preemption is the basis for the judicial exceptions to patentability" and
"[fJor this reason, questions on preemption are inherent in and resolved by
the§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354).
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"[P]reemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility." Id.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 4, 6-8, 20, and 22-24 under 35 U.S.C. § 101. Therefore,
we sustain the Examiner's rejection.
DECISION
The Examiner's rejection of claims 4, 6-8, 20, and 22-24 under
35 U.S.C. § 101 is affirmed.
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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