Ex Parte Banavar et al

Patent Trial and Appeal Board

Aug 21, 2017

13225874 (P.T.A.B. Aug. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/225,874 09/06/2011 Guruduth S. Banavar IN920110083US1 2496
30449 7590 08/23/2017
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
CHONG CRUZ, NADJA N
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
30449@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GURUDUTH S. BANAVAR, SUHAS M. BHIDE,
SUGATA GHOSAL, and RENUKA R. SINDHGATTA
Appeal 2016-002661
Application 13/225,8741
Technology Center 3600
Before BRUCE R. WINSOR, JOSEPH P. LENTIVECH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1—24, the only claims pending in the
application on appeal. 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 International Business
Machines Corporation. App. Br. 1.
Appeal 2016-002661
Application 13/225,874
STATEMENT OF THE CASE
Appellants ’ Invention
Appellants’ invention generally relates to “a data processing method
and system for managing business relationships with clients, and more
particularly to a technique for modeling, monitoring and assessing a
relationship between a provider and a client.” Spec. 11. Claim 1, which is
illustrative, reads as follows:
1. A method of managing a relationship between a provider
and a client, the method comprising the steps of:
a computer generating a first model of one or more
projects in which the provider is providing a service to the client,
wherein the provider and the client are business entities;
the computer generating a second model of first levels of
a first organizational structure of the provider and second levels
of a second organizational structure of the client;
the computer generating a third model of a first set of
stakeholders having respective roles in the provider, a second set
of stakeholders having respective roles in the client, and
interactions between the first set of stakeholders and the second
set of stakeholders;
based on the first, second and third models, the computer
determining factors that influence the relationship between the
provider and the client;
the computer obtaining answers to first and second sets of
questions based on, respectively, the roles of the first and second
sets of stakeholders;
the computer continuously mining data from emails that
include information about the one or more projects;
the computer capturing, in a freeform entry field, first
positive and negative experiences of the first set of stakeholders
as feedback in the one or more projects;
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the computer capturing, in the freeform entry field, second
positive and negative experiences of the second set of
stakeholders as feedback in the one or more projects; and
based in part on the factors, the answers to the first set of
questions based on the roles of the first set of stakeholders, the
answers to the second set of questions based on the roles of the
second set of stakeholders, the continuously mined data from the
emails, the captured first positive and negative experiences of the
first set of stakeholders, and the captured second positive and
negative experiences of the second set of stakeholders, the
computer evaluating trust in the relationship and determining
whether actions are needed to improve the trust in the
relationship.
References
The Examiner relies on the following prior art in rejecting the claims:
Clark et al. US 2006/0184483 A1 Aug. 17, 2006
(“Clark”)
Gupta et al. US 2006/0224437 Al Oct. 5, 2006
(“Gupta”)
Maria Cristina Lander et al., Trust-building Mechanisms Utilized in
Outsourced IS Development Projects: A Case Study, 41 Information &
Management 509—528 (2004) (hereinafter “Lander”).
Heiko Gewald and Kay Helbig, A Governance Model for Managing
Outsourcing Partnerships, A View from Practice, Proc. of the 39th Hawaii
International Conference on System Sciences (2006) (hereinafter “Gewald”).
Rejections
Claims 1—24 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Pinal Act. 2—3.
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Application 13/225,874
Claims 1—24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Gewald, Gupta, Clark, and Lander.
Final Act. 8—28.
Issues on Appeal
Did the Examiner err in finding that claims 1—24 are directed to
nonstatutory subject matter under 35 U.S.C. § 101?
Did the Examiner err in finding that the combination of Gewald,
Gupta, Clark, and Lander teaches or suggests
based in part on the factors, the answers to the first set of
questions based on the roles of the first set of stakeholders, the
answers to the second set of questions based on the roles of the
second set of stakeholders, the continuously mined data from the
emails, the captured first positive and negative experiences of the
first set of stakeholders, and the captured second positive and
negative experiences of the second set of stakeholders, the
computer evaluating trust in the relationship and determining
whether actions are needed to improve the trust in the
relationship
(hereinafter the “evaluating limitation”), as recited in claim 1 ?
ANALYSIS
Rejection under 35 U.S.C. § 101
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). 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
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phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Bank Int 7, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). “The
‘abstract ideas’ category embodies the longstanding rule that ‘[a]n idea of
itself is not patentable.’” Id. at 2355 (quoting Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (quotations omitted)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (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.” Id. (citing Mayo, 132 S. Ct. at
1296— 97) (emphasis added). If so, the second step is to consider the
elements of the claims “individually and ‘as an ordered combination’” to
determine whether the additional elements “‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
1297— 98). In other words, the second step is to “search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting
Mayo, 132 S. Ct. at 1294). Thus, we first analyze the claims to determine
whether the claims embody an abstract idea. If they do, then we proceed to
determine whether the claims are meaningfully limited to a patent-eligible
application of an abstract idea or cover nothing more than the abstract idea
itself.
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Turning to the first step of our analysis, we must determine whether
the claims at issue are directed to a patent-ineligible concept, such as an
abstract idea. See Alice, 134 S. Ct. at 2355. In order to determine whether
claims at issue are directed to an abstract idea, we must first determine what
the claims are directed to. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016).
The Examiner finds the claims “are directed to the abstract idea of
organizing human activities of managing a relationship between a provider
and a client.” Final Act. 2.
Appellants agree that the claims are directed to managing a
relationship between a provider and a client, but contend “the Examiner’s
reliance on ‘organizing human activities’ as at least one of the bases for the
abstract idea allegation is founded on fallacious reasoning.” App. Br. 13;
see also Reply Br. 3. Appellants argue in Bilski v. Kappos, 561 U.S. 593
(2010), “the Court is not asserting that all methods of organizing human
activity are abstract ideas; rather, the Court is saying that some methods of
organizing human activity are abstract ideas, such as the methods of
organizing human activity in Bilski and Alice.” App. Br. 14—15. Appellants
argue the Examiner, therefore, “has not provided a valid rationale (i.e., a
rationale not based on a logical fallacy) for stating that the claims are
directed to the abstract idea characterized by the Examiner as ‘organizing
human activities.’” App. Br. 15.
We do not find Appellants’ contention persuasive. The Examiner
finds, and we agree, the claims recite
[A] method of a computer generating models showing the
relationships, organizational structure and roles between the first
set of stakeholders (provider) and the second set of stakeholders
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(client), based on that the computer determine factors that
influence their relationship between them and gather answers
from both set of stakeholders of their roles, mine data from
emails about their projects, gather positive and negative
experiences feedback from both set of stakeholders related to
their projects, based on the collected data and the factors, the
computer evaluate trust in their relationship and determine if
actions are needed for improvement.
In other words, the claimed method simpl[y] describes the
concept of gathering and analyzing/combining data by reciting
steps of organizing information through a mathematical
relationships e.g., evaluating trust. The gathering and
analysis/combining data merely employs the analysis of the
provider and client relationship e.g. models generated based on
collected attributes that determine factors that are evaluated in
conjunction with the data collected, to manipulate existing
information to generate additional information in the form of a
trust evaluation.
Final Act. 3 (paragraphing added). When “the focus of the asserted claims”
is “on collecting information, analyzing it, and displaying certain results of
the collection and analysis,” the claims are directed to an abstract idea. Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
We are also not persuaded by Appellants’ contention that an abstract
idea “is [a] special legal term, which has a meaning that is distinguished
from its ordinary dictionary meaning” and abstract ideas are “concepts that
are fundamental and essential to an area of science or commerce” (App.
Br. 17 (citing Alice, 134 S. Ct. at 2355—57)) because Appellants’
Specification describes managing the relationship between a service
provider and a client as being within the meaning of Appellants’ proposed
definition of an abstract idea. For example, Appellants’ Specification
provides “[t]he quality of relationships between a service provider and
clients plays a crucial role in the growth of the business of the service
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provider” and “[t]he relationship between the IT service provider and the
client. . . needs to be monitored to sustain the business of the service
provider.” Spec. 2 (emphasis added). Thus, the Specification teaches that
managing a relationship between a provider and a client is a fundamental
and essential economic practice to an area of commerce (e.g., IT services).
Appellants’ contention that no special significance can be assigned to
the presence of a mathematical relationship in the claims (App. Br. 20—21;
Reply Br. 4—5) is not persuasive because analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, has been treated as being essentially a mental process within the
abstract-idea category. See, e.g., In re TLI Commc ’ns LLCPatent Litig., 823
F.3d 607, 613 (Fed. Cir. 2016); Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).
Turning to step two, the Examiner finds the claims recites “a
computer, a generic computer structure that serves to perform generic
computer functions (generating models based on collected attributes,
obtaining answers, mining data, capturing data such as feedback,
analysis/calculation (trust)), that are well-understood, routine, and
conventional activities previously known to the pertinent industry” and,
therefore, “do not amount to more than the abstract idea itself.” Final Act. 4
(citing Spec. Tflf 66, 80).
Appellants’ contend the claims recite “significantly more” because
Appellants’ claims, which indicates that Appellants’ recited step
of “determining whether actions are needed to improve the trust
in the relationship” along with its six bases is a feature that was
not included in known art and thus was not “previously engaged
in by those in the field.” Thus, the aforementioned claimed
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limitation includes additional elements that amount to
“significantly more” than the judicial exception.
App. Br. 23. Appellants argue “[t]he Court in Flook states that ‘[e]ven
though a phenomenon of nature or mathematical formula may be well
known, an inventive application of the principle may be patented” and
“[i]n Appellants’ independent claims, the bases for the trust evaluation are
also the bases for an application of the trust evaluation.” App. Br. 24 (citing
Parker v. Flook, 437 U.S. 584, 594 (1978)). Appellants contend the claims
are analogous to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245 (Fed. Cir. 2014) and California Institute of Technology v. Hughes
Communications Inc., Case No. 2:13-cv-07245-MRP-JEM, Document 156
(CD Cal. Nov. 3, 2014) because the claims include “meaningful limitations
of inventive concepts tied to a defined algorithm for implementing a
particular process of managing a relationship between a provider and a client
so that determining whether actions are needed to improve the trust in the
relationship between the provider and the client is based on [the six bases
described supra\.” App. Br. 28; see also Reply Br. 6—8.
We are not persuaded by the Appellants’ contentions that the claims
represent “significantly more” than the abstract idea exception. We agree
with the Examiner’s findings that the additional elements or combination of
elements in the claims “do not add a meaningful limitation to the abstract
idea because they would be routine in any computer implementation.” Final
Act. 4. Appellants do not direct us to, nor do we discern, any indication in
the record that any specialized computer hardware or other “inventive”
computer components are required. See, e.g., Spec. ]Hf 67—73, Fig. 7. Rather
than reciting additional elements that amount to “significantly more” than
the abstract idea, the pending claims, at best, add only a “computer,”
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“central processing unit,” “memory,” “computer-readable, tangible storage
device,” and/or “read-only memory,” i.e., generic components, which do not
satisfy the inventive concept. See, e.g., DDR, 773 F.3d at 1256 (“[Ajfter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible. The bare fact
that a computer exists in the physical rather than purely conceptual realm ‘is
beside the point.’” (citation omitted)).
The claims are also distinguishable from those in DDR. In DDR, the
Federal Circuit found that the challenged claims were valid because they
“specif[ied] how interactions with the Internet are manipulated to yield a
desired result—a result that overrides the routine and conventional” aspects of
the technology. DDR, 773 F.3d at 1258—59. Here, we do not discern that
these claims “stand apart,” like those in DDR because they merely recite the
performance of a known business practice using a conventional computer.
See DDR, 773 F.3d at 1257. In other words, Appellants have not
demonstrated their claimed generic computer components are able in
combination to perform functions that are not merely generic, as the claims
in DDR.
Appellants’ preemption argument (App. Br. 26—28; Reply Br. 9) is
also unpersuasive of Examiner error. “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). “Where a patent’s claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and made
moot.” Id.
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For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1—24 under 35 U.S.C. § 101.
Rejection under 35 U.S.C. §103
Appellants contend the combination of Gewald, Gupta, Clark, and
Lander fails to teach or suggest the evaluating limitation of claim 1. App.
Br. 33. Appellants argue
Appellants’ recited step of “the computer . . . determining
whether actions are needed to improve the trust in the
relationship” (claim 1) is “based in part on” (A) “factors,” (B)
“answers to the first set of questions based on the roles of the first
set of stakeholders,” (C) “answers to the second set of questions
based on the roles of the second set of stakeholders,” (D) “the
continuously mined data from the emails,” (E) “the captured first
positive and negative experiences of the first set of stakeholders,”
and (F) “captured second positive and negative experiences of
the second set of stakeholders” (claim 1; emphasis added).
A careful review of Gewald in view of Gupta, Clark, and
Lander reveals that the cited combination of art is silent as to
describing the entire feature mentioned above, including the
“based in part on” relationship between “the continuously
mined data from the emails” and the step “the computer . . .
determining whether actions are needed to improve the trust in
the relationship,” between “the captured first positive and
negative experiences of the first set of stakeholders” and the step
“the computer . . . determining whether actions are needed to
improve the trust in the relationship,” and between “captured
second positive and negative experiences of the second set of
stakeholders” and the step “the computer . . . determining
whether actions are needed to improve the trust in the
relationship” (claim 1; emphasis added).
App. Br. 33—34; see also Reply Br. 11—13.
Appellants’ contention is not persuasive because they amount to
allegations that the claimed invention must be expressly suggested in any
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one or all of the references, rather than disputing what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. However,
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
(Citations omitted). See In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner’s findings are reasonable because the skilled artisan would “be
able to fit the teachings of multiple patents together like pieces of a puzzle”
since the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 420, 421 (2007).
Appellants do not present evidence that the resulting arrangement was
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” See Leapfrog Enters.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR,
550 U.S. at 418-19).
Appellants further contend:
Gewald in view of Gupta, Clark, and Lander discloses “email. . .
could be used to feed data into the ontology scheme” (Clark,
paragraph [0021 ]), but tracking the mined emails in the cited art
is the basis for predicting “the progress of the strategic
initiative and important projects” (Clark, paragraph [0021];
emphasis added), which is different from Appellants’ recited
“continuously mined data from emails” being part of the basis
for “the computer ... determining whether actions are needed
to improve the trust in the relationship” (claim 1; emphasis
added) (i.e., predicting progress of the strategic initiative and
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important projects is not the same as Appellants’ claimed
“determining whether actions are needed to improve the trust in
the relationship” in claim 1 ).
App. Br. 34; see also Reply Br. 14.
We do not find Appellants’ contention persuasive. The Examiner
finds, and we agree, Gupta teaches “key drivers of satisfaction are derived
(660), from which improvement initiative can be based to help mend or
enhance the corresponding relationships.” Ans. 12 (citing Gupta 1124).
The Examiner also finds, and we agree, Gupta teaches generating a measure
of relationship health which “can help to identify relationships that are in
critical need of attention, isolate critical areas of improvement, and to
identify trends across various respondent profiles and lifecycle phases in a
manner that optimizes the use of vendor organizational resources.” Ans. 12
(quoting Gupta 134). As such, Gupta teaches or suggests “evaluating trust
in the relationship and determining whether actions are needed to improve
the trust in the relationship,” as recited in claim 1.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 1; or claims 2—24, which are not separately argued with
particularity. See App. Br. 35—41.
DECISION
We affirm the Examiner’s rejection of claims 1—24 under 35 U.S.C.
§101.
We affirm the Examiner’s rejection of claims 1—24 under 35 U.S.C.
§ 103(a).
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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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