Ex Parte Bailey et al

Patent Trials and Appeals Board

Jun 4, 2019

15247141 - (D) (P.T.A.B. Jun. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/247,141
58139 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
08/25/2016
06/06/2019
FIRST NAMED INVENTOR
Thomas J. Bailey
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.
GB920100027US4 3502
EXAMINER
PATEL, HITESHKUMARR
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
06/06/2019 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS J. BAILEY, CHRISTOPHER D. JENKINS,
JONATHAN M. ROBERTS, and KIERAN P. SCOTT
Appeal2017-010817
Application 15/24 7, 141
Technology Center 2400
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
KAMRAN JIVANI, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-18, which constitute all the claims pending in
this application. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b ).
We affirm.
1 Appellants have filed a related Appeal in copending application-U.S.
Patent Application No. 15/219,985. App. Br. 2.
2 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 1.
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Application 15/24 7, 141
STATEMENT OF THE CASE3
Disclosed embodiments of Appellants' invention relate to "service
based deployment within a system based on a service oriented architecture
(SOA), and more specifically, to locating service endpoints from a service
registry." Spec. ,r 1.
Exemplary Claim
1. A computer program product for operating a service
registry in a service oriented architecture system and managing a
service within the system, the computer program product
comprising a computer readable storage medium having program
code embodied therewith, the program code comprising the
programming instructions for:
[a] receiving a request for a service from a service
requester in the environment;
[b] checking details of the requested service as registered
in the service registry;
characterized by;
[ c] in response to the service requested not being
registered, sending the request to one or more service providers
to provide a new service; and
[d] in response to a service provider providing the new
service, updating the service registry with the new service and
responding to the service requester that the service is available.
App. Br. 64 (Claims Appendix) (bracketed indicators added).
Rejections
Independent claims 1 and 9 recite analogous limitations. Appellants
present a unitary argument directed towards independent claims 1 and 9
together. App. Br. 4, 24. Accordingly, we select claim 1 for discussion as
3 We herein refer to the Final Office Action, mailed Jan. 31, 2017 ("Final
Act."); Appeal Brief, filed May 17, 2017 ("App. Br."); Examiner's Answer,
mailed June 28, 2017 ("Ans."); and the Reply Brief, filed Aug. 17, 2017
("Reply Br.").
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representative of the rejected claims. We refer to the rejected independent
claims collectively herein as "claim 1." See, 37 C.F.R. § 4I.37(c)(l)(iv); In
re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
A. Claims 1-18 are rejected under 35 U.S.C. § 101, as being directed to a
judicial exception, without significantly more. Final Act. 2-5.
B. Claims 1-16 are rejected under 35 U.S.C. § I03(a) as being obvious
over the teachings and suggestions of Knauerhase et al. (U.S. Patent
Application Publication No. 2004/0236633 Al; Nov. 25,
2004) (hereinafter "Knauerhase"). Final Act. 5-12.
C. Claims 17-18 are rejected under 35 U.S.C. § I03(a) as being obvious
over the combined teachings and suggestions of Knauerhase, in view
of Esfahany et al. (U.S. Patent Application Publication No.
2005/0262504 Al; Nov. 24, 2005) (hereinafter "Esfahany")). Final
Act. 12-14.
Issues on Appeal
1. Did the Examiner err in rejecting claims 1-18 under 35 U.S.C. § 101,
as being directed to a judicial exception, without significantly more?
2. Did the Examiner err in rejecting claims 1-18, under 35 U.S.C. § 103,
as being obvious over the cited combinations of prior art?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
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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.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "' [L Jaws of nature, natural phenomena, and abstract
ideas'" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185
(1981)).
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. Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208, 217-18
(2014) (citing Mayo, 566 U.S. at 75-77). In accordance with that
framework, we first determine what concept the claim is "directed to." See
Alice, 573 U.S. 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." (emphasis omitted)); see also Bilski v. Kappas, 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 (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diamond v. Diehr, 450 U.S. at 193);
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"tanning, dyeing, making water-proof cloth, vulcanizing India 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 187; 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., id. 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 tum 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 (citation 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.
2019 Revised Guidance re: Subject Matter Eligibility
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). This
new guidance is applied in this opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people); 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))_[4J
See 2019 Revised Guidance, 84 Fed. Reg. at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under § 101. Id.
4 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance at 56; Alice, 573 U.S. at 217-18.
For example, we 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, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
1. Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
2. Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
3. Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or
interactions between people (including social activities,
teaching, and following rules or instructions).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
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According to the 2019 Revised Guidance, "[ c ]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
( abstract idea), and thus are patent eligible, if "the claim as a whole
integrates the recited judicial exception into a practical application of that
exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of "integration into a
practical application" include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field - see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a particular
machine-see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article
to a different state or thing - see MPEP § 2106.05( c ); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception - see MPEP
§ 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application," include:
1. Adding the words "apply it" ( or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea - see MPEP
§ 2106.05(±);
2. Adding insignificant extra-solution activity to the judicial
exception-see MPEP § 2106.05(g); and
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3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP § 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
Examiner's Determination of Patent-Ineligibility
In rejecting claims 1-18 under 35 U.S.C. § 101, the Examiner
determines these claims are directed to receiving a request for a service from
a service requester, checking details of the requested service as registered in
a service registry and in response to a service provider providing a new
service, updating the service registry with the new service, which is
considered as (1) "mental steps" or (2) "certain methods of organizing
human activity" such as a commercial interaction involving "advertising,
marketing, and sale activities"----categories of abstract ideas under the 2019
Revised Guidance. See Final Act. 3--4. Particularly, the Examiner
determines that the claims include limitations that are analogous or similar to
concepts of "collecting and comparing information" as discussed in Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. Aug. 2011)
(holding that claims directed to "collecting and comparing known
information" are patent-ineligible "mental steps" under section 101 ). 5 Id.
The Examiner also determines the claims do not include additional
elements that amount to significantly more than the judicial exception,
because the claims do not "recite an improvement to another technology or
5 The MPEP cites Classen as an example case identifying a mental process.
Specifically, "[c]oncepts relating to data comparisons that can be
performed mentally or are analogous to human mental work." See MPEP
§ 2106.04(a)(2), sections III and III A
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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--5.
The Examiner further finds "the limitations require no more than a
generic computer to perform generic computer functions ( e.g., receiving,
sending, updating etc.) that are well-understood, routine and conventional
activities previously known to the industry." Id. at 4.
For the aforementioned reasons, the Examiner concludes that claims
1-18 are not patent eligible under 35 U.S.C. § 101. 6, 7 Id. at 4--5.
Alice/May~tep 1 (Abstract Idea)
Step 2A-Prongs 1 and 2 identified in the 2019 Revised Guidance
Step 2A, Prong One
Appellants argue that claim 1 is not directed to an abstract idea
because: (1) the claims are directed to an improvement in computer
capabilities or an improvement of an existing technological process rather
than an abstract idea; (2) unlike Classen Immunotherapies, the claimed
invention does not perform collecting and comparing data; and (3) unlike the
claims at issue in Classen Immunotherapies, limitations [ d] and [ e] of claim
1 use and apply data. App. Br. 14--23; Reply Br. 2-9.
Appellants' arguments are not persuasive. Claim 1 broadly relates to
a registry for locating a service in response to a request from a service
6 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed.
Cir. 2013).
7 Throughout this Opinion, we give the contested claim limitations the
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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requester by: determining if a requested service is registered, sending the
request to service providers if the requested service is not registered, and
forwarding the service provider to the service requester. See App. Br. 64.
As correctly recognized by the Examiner (Final Act. 4 ), the steps of
[a] "receiving a request for a service from a service requester"; [b]
"checking details of the requested service ... characterized by"; [ c] "in
response to the service requested not being registered, sending the request to
one or more service providers to provide a new service"; [ d] "in response to
a service provider providing the new service, updating the service registry ..
. and responding to the service requester that the service is available" as
recited in Appellants' claim 1, could be performed alternatively by a person
as a mental process, which is a category of abstract idea identified by the
2019 Revised Guidance. See CyberSource, 654 F.3d at 1372-73 ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101."); see also In re Comiskey, 554
F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental processes-or processes of human
thinking-standing alone are not patentable even if they have practical
application."); Gottschalkv. Benson, 409 U.S. 63, 67 (1972) ("Phenomena
of nature, ... mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work."
(Emphasis added)). Additionally, mental processes remain unpatentable
even when automated to reduce the burden on the user of what once could
have been done with pen and paper. CyberSource, 654 F.3d at 1375 ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.").
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For example, steps of "[a] receiving a request for a service from a
service requester" and "[b] checking details of the requested service" can be
performed by a human administrator who simply receives and checks details
of the request for a service. Similarly, steps of "[c] in response to the service
requested not being registered, sending the request to one or more service
providers to provide a new service"; and "[ d] in response to a service
provider providing the new service, updating the service registry ... and
responding to the service requester that the service is available" can be
performed by a human administrator who updates the service registry in
response to a service provider providing the new service on a paper.
Alternatively, "[a] receiving a request for a service from a service
requester," "[b] checking details of the requested service," "[ c] in response
to the service requested not being registered, sending the request to one or
more service providers to provide a new service," and "[ d] in response to a
service provider providing the new service, updating the service registry ...
and responding to the service requester that the service is available" as
recited in Appellants' claim 1 are also descriptive of a "certain method[] of
organizing human activity," specifically, marketing, sales, and advertising,
as set forth in the 2019 Revised Guidance, because "updating the service
registry," according to Appellants' Specification, is used to support
"business processes" and "is a part of maintaining on demand services." ( see
Spec. ,r 2). See 2019 Revised Guidance, 84 Fed. Reg. at 52. Nowhere in
Appellants' Specification is there any description that "updating the service
registry" is intended to improve computer capabilities or an existing
technology process, as Appellants argue. App. Br. 14--19; Reply Br. 2-5.
Rather, the activities recited in Appellants' claim 1 are squarely within the
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realm of abstract ideas, like: (1) the risk hedging in Bilski v. Kappas, 561
U.S. 593 (2010); (2) the intermediated settlement in Alice, 573 U.S. at 220;
(3) verifying credit card transactions in CyberSource, 654 F.3d at 1370;
(4) guaranteeing transactions in buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1354 (Fed. Cir. 2014); (5) distributing products over the Internet in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014);
( 6) determining a price of a product offered to a purchasing organization in
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015);
and (7) pricing a product for sale in OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359 (Fed. Cir. 2015).
Step 2A, Prong Two
According to the 2019 Revised Guidance, even if the claims recite
"mental processes" or "certain methods of organizing human activity," these
claims are still not "directed to" a judicial exception (abstract idea), and thus
are patent-eligible, if "the claim as a whole integrates the recited judicial
exception into a practical application of that uudicial] exception." See 2019
Revised Guidance, 84 Fed. Reg. at 53. The "integration into a practical
application" prong requires an additional element or a combination of
additional elements in the claim to apply, rely on, or use 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 exception. See 2019 Revised Guidance, 84 Fed. Reg. at 53-
55.
However, for the reasons which follow, we conclude that Appellants'
claims 1-18 do not integrate the judicial exception into a practical
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application. See MPEP §§ 2106.0S(a}-(c) and (e}-(h). Applying the 2019
Revised Guidance, we address these "practical application" MPEP sections
seriatim.
MP EP § 2106. 05 ( a) "Improvements to the Functioning of a Computer
or to Any Other Technology or Technical Field"
This section of the MPEP guides:
In determining patent eligibility, examiners should consider
whether the claim "purport( s) to improve the functioning of the
computer itself' or "any other technology or technical field."
While improvements were evaluated in Alice Corp. as relevant
to the search for an inventive concept (Step 2B), several
decisions of the Federal Circuit have also evaluated this
consideration when determining whether a claim was directed to
an abstract idea (Step 2A).
MPEP § 2106.0S(a)
The MPEP instructs:
Thus, an examiner may evaluate whether a claim contains an
improvement to the functioning of a computer or to any other
technology or technical field at Step 2A or Step 2B, as well as
when considering whether the claim has such self-evident
eligibility that it qualifies for the streamlined analysis.
Id. ( emphasis added).
Regarding the purported improvements of an existing technological
process offered by the claimed invention, Appellants contend:
As a result, the first step in the Alice inquiry in this case
should be whether the focus of the claims is on an improvement
in computer capabilities or an improvement of an existing
technological process or, instead, on a process that qualifies as
an "abstract idea." Enfzsh, LLC v. Microsoft Corp., 118
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U.S.P.Q.2d 1684, 1689 (Fed. Cir. 2016). The claimed invention
is directed to an improvement in computer capabilities or an
improvement of an existing technological process, namely,
allowing the service requester to receive a desired quality of
service and not experiencing a delay or difference in quality of
service even if the requested service had its processing priority
lowered and needed to be reconfigured. See, e.g., paragraphs
[0005 and 0020-0026] of Appellant[ s '] specification. The
claimed invention is not directed to an improvement of economic
or other tasks for which a computer is used in its ordinary
capacity.
App. Br. 14--15 (emphasis added).
Appellants further urge the claimed invention recites an improvement
to the function of a computer:
The U.S. Supreme Court has suggested that claims
"purport[ing] to improve the functioning of the computer itself,"
or "improv[ing] an existing technological process" might not
succumb to the abstract idea exception. Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); See also Alice
Corp. Pty. Ltd v. CLS Bank Int'!, 134 S. Ct. 2347, 2358-59
(2014). Hence, software can be patented even if it does not
improve the functioning of the computer. Although, an argument
can be made that there is an improvement in the functioning of
the computer using Appellant[ s '] claimed invention, such as
improving computer efficiency, by more efficiently managing
low demand services from a service provider's available services
as discussed in paragraph [0025] of Appellant[s'] specification.
As discussed in ... Appellant[s'] specification ... Appellant[s ']
claimed invention can more efficiently uninstall and then
reinstall a service thereby allowing more efficient management
of low demand services from a service provider's available
service.
Reply Br. 2-3 ( emphasis added).
In other words, Appellants assert arguments for ( 1) an improvement to
the functioning of a computer and (2) a more general improvement to an
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existing technological process. However, Appellants' arguments are not
persuasive because Appellants' claim 1 fails to recite ( 1) any limitations
detailing "low demand services", how to efficiently "uninstall and then
reinstall a service" or how management of services are allowed to be more
efficient, and (2) any limitations detailing how "allowing the service
requester to receive a desired quality of service" or how "not experiencing a
delay or difference in quality of service even if the requested service had its
processing priority lowered and needed to be reconfigured" is achieved.
When a claim directed to an abstract idea contains no restriction on how an
asserted improvement is accomplished and the asserted improvement is not
described in the claim, then the claim does not become patent eligible. See
Intellectual Ventures I LLCv. Symantec Corp., 838 F.3d 1307, 1316 (Fed.
Cir. 2016).
Separately, we note the Enfish court held the focus of Enfish's claims
were "directed to a specific improvement to the way computers operate,
embodied in the self-referential table." Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1336 (Fed. Cir. 2016) (emphasis added). As noted by the Enfish
court, "traditional databases, such as 'those that follow the relational model
and those that follow the object oriented model,' '604 patent, col. 1, 11. 37-
40, are inferior to the claimed invention." Enfish, 822 F.3d at 1337.
Citing again to the Enfish '604 patent Specification (col. 2, 11. 10-13),
the court explained "[ t ]he structural requirements of current databases
require a programmer to predefine a structure and subsequent [data] entry
must conform to that structure;" however, the "database of the present
invention does not require a programmer to preconfigure a structure to
which a user must adapt data entry." Id. (alteration in original).
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We emphasize that the self-referential database table considered by
the court in Enfzsh was found to be a specific type of data structure that was
designed to improve the way a computer stores and retrieves data in
memory. Id. at 1339. Because the Enfzsh court found the claimed self-
referential database table improved the way the computer stored and
retrieved data, the court concluded the Enfzsh claims were not directed to an
abstract idea, and thus ended the analysis at Alice step one. Id. at 1336.
Here, unlike the claims of Enfzsh, the present claims are not directed
to "a specific improvement to the way computers operate, embodied in the
self-referential table." Enfzsh at 1336. As correctly noted by the Examiner:
[Appellants'] claims are not focused on improving computer
capabilities but on providing new service in response to service
requested not being registered. Providing new service in
response to service requested not being registered using devices
and processors is solving a business problem, not improving
computer processing or solving a technical problem. In other
words, the benefit is to risk management, not computer
processing. The focus of the claims is not on such an
improvement in computers as tools, but rather on abstract ideas
that use computers as tools.
Ans. 5 ( emphasis omitted).
The Examiner's conclusion that the solution offered by Appellants'
claim 1 is a business rather than a technological solution is evidenced by the
claim's failure to recite anything other than generic hardware (i.e. "service
registry," "service oriented architecture system," "computer program
product comprising a computer readable storage medium having program
code embodied therewith,") outside of the abstract idea. See Spec. ,r 27
("computer system/server 12, which is operational with numerous other
general purpose ... computing system environments or configurations.
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Examples of well-known computing systems, environments, and/or
configurations that may be suitable for use with computer system/server 12
include, but are not limited to ... any of the above systems or devices, and
the like"); ,r,r 40-41 ("flowchart illustrations ... can be implemented by
computer readable program instructions ... instructions may be provided to
a processor of a general purpose computer ... or other programmable data
processing apparatus"); ,r 44 ("cloud computing environment 50 of an
embodiment of the present invention is depicted ... computing nodes 10 and
cloud computing environment 50 can communicate with any type of
computerized device over any type of network and/or network addressable
connection"). The Specification defines the claim 1 limitation "service
registry" as
an index of a subset of information about a service (for example,
the location and name of service document) enabling the
corresponding service document to be located and accessed in a
repository 514 ( or even the corresponding service located at the
service provider).
Spec. ,r 50.
In Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315,
1329 (Fed. Cir. 2017), the Federal Circuit concluded that claims directed to
the use of an index to search for and retrieve data constituted an abstract idea
as well as a well-known, routine and conventional process. See id. at 1327
("the abstract idea of creating an index and using that index to search for and
retrieve data ... organizing and accessing records through the creation of an
index-searchable database, includes longstanding conduct that existed well
before the advent of computers and the Internet" ( quotations omitted)); id. at
1329 (using an index to receive a request for information and delivering
records constitute "no more than the performance of well-understood,
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routine, and conventional activities previously known in the industry"
( citations, brackets, and quotations omitted)). Here, claim 1 broadly recites
a process for sending a request to a service registry, forwarding the request
to service providers based on checking details in the service registry, and
updating the registry. Accordingly, claim 1 does not recite additional details
on how the service registry is improved or implemented that changes the
analysis in Intellectual Ventures.
Similarly, the Supreme Court in Alice (573 U.S. at 226), reviewed a
method claim requiring "the use of a computer to create electronic records,
track multiple transactions, and issue simultaneous instructions." Id. at 224
( citation omitted). The petitioner in Alice emphasized that the method
claims "recite specific hardware configured to perform specific
computerized functions." Id. at 226 ( citation and quotations omitted). The
Alice court found
But what petitioner characterizes as specific hardware-a "data
processing system" with a "communications controller" and
"data storage unit," ... is purely functional and generic. Nearly
every computer will include a "communications controller" and
"data storage unit" capable of performing the basic calculation,
storage, and transmission functions required by the method
claims.
Id. ( citations omitted).
Here, claim 1 does not recite additional details, functionality or
specialized processes to the recited generic components noted supra to
distinguish itself from the analysis in Alice.
Moreover, Appellants acknowledge claim 1 is directed to solving a
business problem. See App. Br. 15 ("The claimed invention is directed to an
improvement in computer capabilities or an improvement of an existing
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technological process, namely, allowing the service requester to receive a
desired quality of service"); id. ("The claimed invention addresses such a
need by provisioning a service within a service oriented environment"). The
Specification clarifies that a service oriented architecture used to operate the
"service oriented architecture system" of claim 1 is directed to "a business-
driven IT architectural approach that supports integrating business processes
as linked, repeatable business tasks, or services as defined in service
documents." Spec. ,r,r 1-2. Rather than addressing a problem unique to the
technology in which the solution is implemented, Appellants' claim l merely
automates, using generic computer technology, a pre-internet process in
which an index is used to determine a suitable service requested by a user
and provides this information to the service requester. Thus, the method is
directed to facilitating a commercial transaction, which is not an
improvement to technology. See MPEP § 2106.05(a).
Thus, we agree with the Examiner (Final Act. 4--5; Ans. 5-8) that
Appellants' claims merely implement generic computer components to
perform the recited steps or functions. In reviewing the record, we find
representative claim 1 on appeal is silent regarding specific limitations
directed to an improved computer system, processor, memory, network,
database, or Internet. Therefore, we find Appellants' claimed invention does
not provide a solution "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
such as considered by the court in DDR Holdings LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014) (emphasis added).
MPEP § 2106.05(b) Particular Machine
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MPEP § 2106.05(c) Particular Transformation
Appellants advance no arguments in the Briefs that are directed to the
Bilski machine-or-transformation test. Arguments not made are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
MPEP § 2106.05(e) Other Meaningful Limitations
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment. 450
U.S. 175,209 USPQ 1 (1981). InDiehr, the claim was directed
to the use of the Arrhenius equation ( an abstract idea or law of
nature) in an automated process for operating a rubber-molding
press. 450 U.S. at 177-78, 209 USPQ at 4. The Court evaluated
additional elements such as the steps of installing rubber in a
press, closing the mold, constantly measuring the temperature in
the mold, and automatically opening the press at the proper time,
and found them to be meaningful because they sufficiently
limited the use of the mathematical equation to the practical
application of molding rubber products. 450 U.S. at 184, 187,
209 USPQ at 7, 8. In contrast, the claims in Alice Corp. v. CLS
Bank International did not meaningfully limit the abstract idea of
mitigating settlement risk. 573 U.S._, 134 S. Ct. 2347, 110
USPQ2d 197 6 (2014 ). In particular, the Court concluded that the
additional elements such as the data processing system and
communications controllers recited in the system claims did not
meaningfully limit the abstract idea because they merely linked
the use of the abstract idea to a particular technological
environment (i.e., "implementation via computers") or were
well-understood, routine, conventional activity[.]
MPEP § 2106.05( e) ( emphasis added).
Appellants contend:
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in Alice Corporation Pty. Ltd v. CLS Bank International, et al.,
... the U.S. Supreme Court indicated that if the claim is directed
to an abstract idea, then "improvements to another technology or
technical fields" or "meaningful limitations beyond generally
linking the use of an abstract idea to a particular technological
environment" may be enough to quality as "significantly more"
to become statutory subject matter ... , the claimed invention
addresses the need in having the service requester receive a
desired quality of service and not experience a delay or
difference in quality of service even if the requested service had
its processing priority lowered and needed to be reconfigured.
App. Br. 17-18 ( citations omitted, emphasis added).
But "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) ( emphasis omitted); see also Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) ("A narrow claim directed to an
abstract idea, however, is not necessarily patent-eligible."). To the extent
Appellants also urge that the purportedly meaningful limitations are not
well-understood, routine, and conventional, we address this issue under Step
2B (Inventive Concept), infra. For the reasons discussed further below, and
on this record, it is our view that Appellants' claims do not add meaningful
limitations beyond generally linking the use of the judicial exception to a
particular technological environment.
MPEP § 2106.05(!) Mere Instructions to Apply an Exception
Appellants contend:
Appellant[s'] claimed invention is not simply directed to
collecting and comparing data and neither is Appellant[s']
claimed invention simply directed to collecting and comparing
data without using or applying the data ... [a]s recited in claim[]
1 ... , in response to the service requested not being registered,
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sending the request to one or more service providers to provide
a new service. Hence, the details are being used and applied.
App. Br. 20-21 ( emphasis added).
However, this limitation of claim 1 cited by Appellants provides no
restriction on how the result of "sending the request to one or more service
providers" is accomplished. In such cases, the instructions do not provide
significantly more because this type of recitation is equivalent to the words
"apply it." See MPEP § 2106.05(±), consideration (1 ); see also Electric
Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016);
Intellectual Ventures Iv. Symantec Corp., 838 F.3d 1307, 1327 (Fed. Cir.
2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348
(Fed. Cir. 2015); Intellectual Ventures v. Erie Indem. Co., 850 F.3d 1315,
1331 (Fed. Cir. 2017) (Remotely accessing user-specific information
through a mobile interface and pointers to retrieve the information without
any description of how the mobile interface and pointers accomplish the
result of retrieving previously inaccessible information).
Accordingly, we are of the view that claims 1-18 invoke generic
computer components as a tool in which the computer instructions apply the
judicial exception. To the extent Appellants urge that the claimed efficient
means for managing multiple referrals for a single patient are not generic,
well-understood, routine, or conventional (App. Br. 19; Reply Br. 5-8), we
address this issue under Step 2B (Inventive Concept), infra.
MP EP § 2106. 05 (g) Insignificant Extra-Solution Activity
Appellants advance no specific arguments in the Briefs contending the
claims do not recite insignificant extra-solution activity. However, we note
the last recited step or function of independent claim 1 merely gathers
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information. Courts have found such data gathering steps to be insignificant
extra-solution activity. See, e.g., Bilski, 545 F.3d at 963 (en bane), aff'd sub
nom Bilski v. Kappas, 561 U.S. 593 (2010) (characterizing data gathering
steps as insignificant extra-solution activity); OIP Techs., Inc. v.
Ama::on.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (presenting offers
and gathering statistics amounted to mere data gathering). To the extent that
data is displayed ( or otherwise made available to the service requester) by
the recited "responding" step or function ("and responding to the service
requester that the service is available" - claim 1 ), we conclude such
displayed or otherwise provided data is an example of insignificant extra-
solution activity.
The Supreme Court guides that the "prohibition against patenting
abstract ideas 'cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment' or [by] adding
'insignificant postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting
Diehr, 450 U.S. at 191-92).
Therefore, on this record, we are of the view that Appellants' claims
do not operate the recited generic computer components in a manner to
achieve an improvement in computer functionality.
MPEP § 2106.05(h) Field of Use and Technological Environment
[T]he Supreme Court has stated that, even if a claim does not
wholly pre-empt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or
post-solution activity-such as identifying a relevant audience,
a category of use,field of use, or technological environment.
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013)
( emphasis added).
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The Examiner finds that "the claims do not include limitations that are
'significantly more' than the abstract idea because the claims do not include
... meaningful limitations beyond generally linking the use of an abstract
idea to a particular technological environment. Ans. 5. The Examiner
further finds that similar to the narrowing of an abstract idea to an
advertising environment in Ultramercial and to particular types of
transactions in buySAFE (765 F.3d at 1354), recitations of a "request for a
service from a service requester," "service registry," and "service providers"
in a service oriented environment fails to render the claim limitations any
less abstract. Ans. 8.
Appellants argue, "[ c ]ontrary to the claim limitations in Ultramercial,
the claim limitations are not conventional steps specified at a high level of
generality." Reply Br. 7. We find Appellants' argument to be conclusory
because, other than reciting the limitations of claim 1, Appellants provide no
further substantive explanation or evidence in support. We afford such
conclusory attorney argument little weight. See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997). See also Enzo Biochem, Inc. v. Gen-Probe,
Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) ("Attorney argument is no
substitute for evidence.").
Accordingly, we agree with the Examiner that Ultramercial is
analogous to the record before us. Like Ultramercial, limiting generic
components in claim 1 such as an index ("service registry"), a computing
environment ("service oriented architecture system"), a processor ("updating
the service registry") and computing device ("service provider") to particular
technological environment does not amount to more than generically linking
the use of the judicial exception to a particular field of use. See MPEP §
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2106.05(h), example ix ("Specifying that the abstract idea of using
advertising as currency is used on the Internet, because this narrowing
limitation is merely an attempt to limit the use of the abstract idea to a
particular technological environment, Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 716, 112 USPQ2d 1750, 1755 (Fed. Cir. 2014)").
After applying the 2019 Revised Guidance, we are of the view that the
Examiner did not err in concluding that claims 1-18 on appeal recites steps
or functions that fall under the category of a method of organizing human
behavior comprising commercial interactions including marketing activities
that could also be performed as a mental process. In light of the foregoing,
we conclude, under the 2019 Revised Guidance, that each of Appellants'
claims 1-18, considered as a whole, are directed to a patent-ineligible
abstract idea that is not integrated into a practical application, under MPEP
§§ 2106.05(a}-(c) and (e}-(h)).
The Inventive Concept - Step 2B
With respect to step 2B, Appellants argue:
The Examiner asserts that Appellant[s'] claimed invention is
only directed to routine, conventional and well-understood
activities[] previously engaged in by those in the field of the
present invention, and therefore, is directed to an abstract idea
. . . . However, the Examiner has not provided any evidence that
any of the claim limitations are routine, conventional and well-
understood that were previously engaged in by those in the field
of the present invention. In fact, if such limitations are so
conventional, why then does the Examiner need reject the claims
under 35 U.S.C. §103(a)?
App. Br. 19 (footnote omitted, emphasis added).
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We disagree with Appellants that the Examiner fails to provide any
factual support for the assertion that the abstract idea is implemented on a
computer using generic components that are well-understood, routine, and
conventional activities previously known to the industry.
Rather, the Examiner's finding that the present claims recite an
abstract idea implemented on a computer using generic components that are
well-understood, routine, and conventional activities previously known to
the industry (Final Act. 4--5, Ans. 5-8) is supported by case law cited by the
Examiner. Ans. 6 and 8 (citing Ultramercial, 772 F.3d at 716-717); Ans. 6
(citing Alice, 573 U.S. at 209); Ans. 8 (citing buySAFE, 765 F.3d at 1355).
According to MPEP § 2106.05(d), section II, Ultramercial, Alice, and
buySAFE are all recognized as cases the Examiner may use to support a
finding of well-understood, routine, and conventional activities. See also
Berkheimer Memo, 83 Fed. Reg. 17536, 17537 (Apr. 20, 2018) (support
element 2, "[a] citation to one or more of the court decisions discussed in
MPEP § 2106.05( d)(II) as noting the well understood, routine, conventional
nature of the additional element(s)").
Additionally, we find Appellants' argument regarding the Examiner's
rejection of the claims under 35 U.S.C. § 103(a) constitutes evidence the
claims are not conventional (App. Br. 19) to be unavailing. "' ... '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."' Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016)
(quoting Diehr, 450 U.S. at 188-89). See also Synopsys, 839 F.3d at 1151
("a claim for a new abstract idea is still an abstract idea. The search for a §
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101 inventive concept is thus distinct from demonstrating § 102 novelty")
( emphasis omitted); MPEP § 2106.05 ("Because they are separate and
distinct requirements from eligibility, patentability of the claimed invention
under 35 U.S.C. 102 and 103 with respect to the prior art is neither required
for, nor a guarantee of, patent eligibility under 35 U.S.C. 101").
As noted supra in Step 2A (Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field), we find the
additional elements of claim 1 (i.e. "service registry," "service oriented
architecture system," "computer program product comprising a computer
readable storage medium having program code embodied therewith,") are
merely generic computer components. Appellants do not present additional
arguments with respect to the limitations of dependent claims 2-8 and 10-18
under 35 U.S.C. § 101. For the reasons discussed above, we conclude
Appellants' claims 1-18 invoke generic computer components merely as a
tool in which the computer instructions apply the judicial exception.
Accordingly, we sustain the Examiner's rejection of claims 1-18 under 35
U.S.C. § 101.
35 U.S.C. § 103(a)
Independent claim 1 [ c] ( as annotated in the Exemplary Claim section
supra), recites "in response to the service requested not being registered,
sending the request to one or more service providers to provide a new
service."
In rejecting claim 1, the Examiner finds a first embodiment of
Knauerhase (citing ,r,r 16, 19, 26-30 and FIGS. 1, 3, and 4) fails to disclose
limitation [ c] and cites to a second embodiment of Knauerhase ( citing
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,r,r 40-45, referencing FIG. 5) as teaching limitation [c]. Final Act. 7-8,
20-21.
The Examiner finds Knauerhase teaches claim 1, limitation [a]
"receiving a request for a service from a service requester in the
environment" ( citing FIG. 3, step 300, "Service Consumer Requests A
Provider," ,r,r 16, 19, and 28) and limitation [b] "checking details of the
requested service as registered in the service registry" ( e.g., citing FIG. 3,
step 3 02, "Registry Determines Machines 102-106 Offer Service,"
,r,r 26-30). Final Act. 6-7.
With respect to limitation [ c], the Examiner finds Knauerhase teaches
determining if a service requested not being registered ( e.g., ,r 36, FIG. 4,
step 402 "Alive," 404 "Delete Unavailable Service Provider From
Registry") and also sending a request to one or more service providers to
provide a new service (e.g., ,r,r 40-45, "registry may use the shelf-life to
evict or renew registration of those services") (e.g., ,r,r 36-37 "Registry may
query 410 a Service Provider for status updates" (emphasis omitted), FIG. 4,
410, 412), which the Examiner maps to claim 1 [c]:
in response to the service requested not being registered, sending
the request to one or more service providers to provide a new
service.
Final Act. 7-8, 20-21 (citing Knauerhase ,r,r 31, 33, 35-37, 40-45, FIG. 3,
steps 304 to 308, FIG. 4, steps 410,412).
Appellants argue Knauerhase does not teach or suggest claim 1,
limitation [c]. App. Br. 24--32; Reply Br. 10-14. Specifically, Appellants
argue the passages cited by the Examiner would not suggest "to one of
ordinary skill in the art to send the request to one or more service providers
to provide a new service in response to the service requested not being
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registered." App. Br. 25 ( emphasis original). Rather, Appellants argue
"Knauerhase only discusses the aspect of a shelf-life attribute associated
with providers where after expiration, the contents (published services) are
deemed less appealing, and may in fact be thrown away ( deregistered from
the service registry database)." Id. We agree with Appellants.
Knauerhase teaches, in response to a particular service request (FIG.
3, 300), determining if an already registered service provider is available to
provide that particular service (FIG. 3, 304, FIG. 4, 400). See Knauerhase
(i1i128-29 "Registry determines 302 providers known to the registry to offer
Service A ... Registry 100 optionally first confirms 304 continued
availability (see also FIG. 4), willingness, etc. of the Service Providers 102-
106 to perform the requested service") ( emphasis omitted). Additionally,
Knauerhase teaches determining if a currently registered service provider
(FIG. 4, 400 "service provider in registry of service providers") is
unavailable (FIG. 4, 404 "Delete Unavailable Service Provider"), but fails to
teach or suggest determining "the service requested not being registered" as
required in claim 1 [ c]. Knauerhase teaches availability is distinct from not
being registered since availability is determined based on checking meta-
data of already registered service providers. See Knauerhase (i1i120, 28-29,
34 "Registry performs various tests to ensure continued availability of a
provider", FIG. 4, 400 "Provider in Registry of Service Providers").
Additionally, Knauerhase teaches registering new service providers
(FIG. 5, step 504, "Register Service Provider and Services") if a service
provider is publishing services (i1 40, FIG. 5, 502, "Publishing?") and the
capability to renew registration of deregistered services (i1i1 40, 45).
However, Knauerhase provides no teaching or suggestion that registration of
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new service providers or renewal of deregistered services is "in response to
the service requested not being registered" as required in claim 1 [ c].
None of Knauerhase's teachings cited by the Examiner can reasonably
be considered as sending a request to a service provider to provide a new
service. Accordingly, we agree with Appellants' arguments (see App. Br.
24--32; Reply Br. 10-14), that Knauerhase does not disclose "in response to
the service requested not being registered, sending the request to one or
more service providers to provide a new service" as recited in claim 1.
Additionally, with respect to claim 17, Esfahany fails to cure this deficiency.
Next, the Examiner finds limitation [ c] of claim 1 is a conditional step
and "an examiner need not find the conditional method steps in the prior art
to establish the claimed method would have been obvious." Final Act. 22;
Ans. 12-13. However, as argued by Appellants (Reply Br. 14--16), we find
the Examiner improperly construes the positively recited limitation in claim
1 [ c] as an if/then statement to find a conditional limitation:
Noting the claim limitation "in response to the service requested
not being registered . . . " is a conditional limitation as "if the
requested service is not registered then sending the request to one
or more providers to provide a new service"; noting the last claim
limitation "in response to a service provider providing the new
service, updating the service registry ... " is a conditional
limitation.
Ans. 13 ( emphasis in original omitted and emphasis added).
"Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim." SuperGuide
Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). See also
Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1369-70 (Fed. Cir. 2003)
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(holding that it was improper to read a specific order of steps into method
claims where, as a matter of logic or grammar, the language of the method
claims did not impose a specific order on the performance of the method
steps); MPEP § 2111.01.
We agree with Appellants' argument (Reply Br. 14--16) that claim 1 [c]
is a positively recited limitation since "in response to" is analogous to a
"whereby" clause rather than an if/then statement. See MPEP § 2111.04.
See also In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005),
the court held that when a "'whereby' clause states a condition that is
material to patentability, it cannot be ignored in order to change the
substance of the invention."). Furthermore, claim 1 is distinguishable from
the precedential PTAB decision Ex parte Schulhauser, Appeal 2013-007847
(PTAB April 28, 2016) because claim 1 does not contain mutually exclusive
method steps triggered by a condition precedent.
The method claim in Schulhauser was directed to monitoring cardiac
conditions and recited, inter alia, (I) collecting electrocardiac signal data,
(2) comparing the data with a threshold electrocardiac criteria for indicating
a strong likelihood of a cardiac event, (3) "triggering an alarm state if the ...
data is not within the threshold," and ( 4) "determining the current activity
level of the subject ... if the electrocardiac signal data is within the
threshold." Schulhauser, slip op. at 1-2. The Board found the "triggering"
and "determining" steps are "mutually exclusive" and that the claim "as
written covers at least two methods"; "one in which the prerequisite
condition for the triggering step is met and one in which the prerequisite
condition for the determining step is met." Schulhauser, slip op. at 7-8.
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Unlike the method claim in Schulhauser, the steps of method claim 1
are not mutually exclusive and the claim, as written, covers only one
method. Moreover, Schulhauser does not require that all conditional claim
limitations are not to be given patentable weight. Rather, Schulhauser gave
patentable weight to the conditional "triggering" step, "triggering an alarm
state if the electrocardiac signal data is not within the threshold
electrocardiac criteria." Schulhauser, slip op. at 6-7.
Thus, we conclude that the broadest reasonable interpretation of claim
1 requires performance of the step "in response to the service requested not
being registered, sending the request to one or more service providers to
provide a new service."
Additionally, the Examiner also finds the above arguments related to
conditional limitations also apply to independent claim 9, reciting a system.
Ans. 13. However, under the precedent of Schulhauser, when analyzing the
claimed system as a whole, the PTAB determined that "[t]he broadest
reasonable interpretation of a system claim having structure that performs a
function, which only needs to occur if a condition precedent is met, still
requires structure for performing the function should the condition occur"
(emphasis added). MPEP § 2111.04 (citing Schulhauser, slip op. at 14).
Therefore, "'[t]he Examiner did not need to present evidence of the
obviousness of the [ ] method steps of claim 1 that are not required to be
performed under a broadest reasonable interpretation of the claim ( e.g.,
instances in which the electrocardiac signal data is not within the threshold
electrocardiac criteria such that the condition precedent for the determining
step and the remaining steps of claim 1 has not been met);'" however to
render the claimed system obvious, the prior art must teach the structure that
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performs the function of the contingent step along with the other recited
claim limitations. Id. ( quoting Schulhauser, slip op. at 9, 14). Accordingly,
we conclude that the broadest reasonable interpretation of claim 9 requires
performance of the step "in response to the service requested not being
registered, sending the request to one or more service providers to provide a
new service" for this additional reason.
Dependent claims 2-8 and 17 each depend from independent claim 1.
Dependent claims 10-16 and 18 each depend from independent claim 9.
Therefore, we cannot sustain the Examiner's rejection of claims 1-16 as
obvious in view Knauerhase or the Examiner's rejection of claims 17-18 as
obvious in view of Knauerhase and Esfahany. This issue is dispositive.
Therefore, we do not reach consideration of Appellants' remaining
arguments. Accordingly, we reverse the Examiner's rejections under 35
U.S.C. § 103(a) of claims 1-18.
DECISION
We affirm the Examiner's decision rejecting claims 1-18 under 35
U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-18 under
35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 37
C.F.R. § 4I.50(a)(l).
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). See
37 C.F.R. § 41.50(±).
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AFFIRMED
35