Ex Parte Dalton

Patent Trial and Appeal Board

Oct 12, 2018

12239316 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/239,316 09/26/2008
146568 7590
ENTIT SOFTWARE LLC
500 Westover Drive
#12603
Sanford, NC 27330
10/16/2018
FIRST NAMED INVENTOR
Dilip Dalton
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.
82243226 3204
EXAMINER
MARCUS, LELAND R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/16/2018 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DILIP DAL TON
Appeal2017-006495
Application 12/239,316 1
Technology Center 3600
Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dilip Dalton (Appellant) seeks our review under 35 U.S.C. § 134(a) of
the Final Rejection of claims 1-24. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies Hewlett Packard Enterprise Development, LP, as
the real party in interest. Br. 3.
Appeal2017-006495
Application 12/239,316
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method executed by a computer for generating messages
compnsmg:
retrieving information regarding a plurality of tasks from a
database, each task in the plurality to be associated with an identifier
that uniquely identifies the particular task and with one or more
recipients, each recipient to be associated with one or more of the
plurality of tasks;
for each recipient, grouping tasks that are associated with the
recipient to create, based on the recipient, a task subset; and
generating, by at least one processor associated with the
computer, a message to send to multiple recipients in a group of
recipients having a same task subset, the message to contain
information about each task in the task subset.
Br. 20 (Claims Appendix).
THE REJECTION
The following rejection is before us for review:
Claims 1-24 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
ISSUE
Did the Examiner err in rejecting claims 1-24 under 35 U.S.C. § 101
as being directed to judicially-excepted subject matter?
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Application 12/239,316
ANALYSIS
The rejection of claims 1-24 under 35 USC§ 101 as being directed to
judicially-excepted subject matter.
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under 35
U.S.C. § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that
[ t ]he claims are directed to the abstract idea of "an idea 'of itself"'
similar to using categories to organize, store and transmit information,
specifically in generating messages. The nature of the abstract idea is
shown by the following claim language:
"retrieving information regarding a plurality of tasks ... , each
task in the plurality to be associated with an identifier that uniquely
identifies the particular task and with one or more recipients, each
recipient to be associated with one or more of the plurality of tasks"
"for each recipient, grouping tasks that are associated with the
recipient to create, based on the recipient, a task subset"
"generating ... a message to send to multiple recipients in a
group of recipients having a same task subset, the message to contain
information about each task in the task subset"
"wherein the tasks have a hierarchical structure"
"includes information regarding the start and end of each task
and wherein generating the message includes generating the message
for tasks that are late"
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Application 12/239,316
"before generating the message, grouping recipients having the
same task subset, and storing information pertaining to the groups of
recipients and task subsets"
"wherein storing information pertaining to groups of recipients
and task subsets includes storing the temporary data structure as a
Hash Map"
"wherein grouping tasks associated with the recipient includes
grouping task identifiers to form a key in the Hash Map and grouping
recipients to form a value associated with the key"
Final Act. 2-3.
Step two is "a 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."' Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 US 66, 73 (2012)).
In that regard, the Examiner determined that
[i]ndividually, the claims recite the use of a generic computer
performing generic computing tasks, specifically:
"from a database ... "
"generating, by at least one processor associated with the
t II compu er ...
"wherein the database"
"storing ... in one of the database and a temporary data
structure".
Taken as an ordered combination, the limitations are directed to
limitations referenced in Alice Corp. that are not enough to qualify as
significantly more when recited in a claim with an abstract idea
include, as a non-limiting or non-exclusive examples: (i) mere
instructions to implement the idea on a computer, and/or (ii) recitation
of generic computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional activities
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Application 12/239,316
previously known to the pertinent industry, such as data entry,
collection, display, or reporting.
Additionally, the claim elements of "sending the generated
message as one or more of electronic mail messages, text messages
and voicemail message" is insufficient to qualify as significantly more
than the judicial exception, as it is of the nature of a simple instruction
to perform the task.
Viewed as a whole, these additional claim element(s) do not
provide meaningful limitation(s) to transform the abstract idea into a
patent eligible application of the abstract idea such that the claim( s)
amounts to significantly more than the abstract idea itself.
Final Act. 4.
Independent claims 1, 8, and 15
Regarding the Alice step one determination, the Appellant argues that
[i]n the present application, claim 1 is directed to a specific way
of generating, by a computer, messages to be sent to multiple
recipients associated with grouped tasks. In particular, claim 1 recites
"retrieving information regarding a plurality of tasks from a database,
each task in the plurality to be associated with an identifier that
uniquely identifies the particular task and with one or more recipients,
each recipient to be associated with one or more of the plurality of
tasks; for each recipient, grouping tasks that are associated with the
recipient to create, based on the recipient, a task subset; and
generating, by at least one processor associated with the computer, a
message to send to multiple recipients in a group of recipients having
a same task subset, the message to contain information about each
task in the task subset." Independent claims 8 and 15 recite related
subject matter.
Br. 11. According to the Appellant, "the claims are not directed to an
abstract idea, as they are necessarily rooted in ( and inextricably tied to)
computer technology in order to overcome a problem specifically
arising in the realm of computing performance." Id. at12.
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Id.
Specifically, in the present case, as noted in paragraph [0009] of
the specification as originally filed, "when a sizeable project is being
managed using such a conventional project management system, a
large number of e-mails are generated, resulting in the use of a
significant amount of processing power and memory on the PPM/mail
server and network bandwidth." Accordingly, as noted in paragraph
[001 OJ of the specification as originally filed, the embodiments of the
present application may, for example, be "directed to helping reduce
the number of messages generated and resources used by a system."
This may, for example, achieve the technical effect of reducing
network traffic in a system such as an IT network, thereby improving
function of the computer systems of the network. Independent claim
8, for example, specifically recites a "system for reducing the number
of generated notification messages".
The difficulty with this argument is that it is not commensurate in
scope with what is claimed. The claims are not focused on managing a
sizeable project using a conventional project management systemthat is
known to generate a large number of e-mails, resulting in the use of a
significant amount of processing power and memory on the PPM/mail server
and network bandwidth. See also Spec. ,r 69 (the invention is "not limited to
project management systems"). Claim 1, for example, calls for retrieving a
type of information from a database, grouping tasks, and generating a
message. The claim is not limited to generating an e-mail. There is no
mention of a network or network traffic. Such an argument about limitations
not in the claims cannot be persuasive as to error in the Alice step one
analytical determination, which determination focuses on the claims.
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir.
2016) ("The § 101 inquiry must focus on the language of the Asserted
Claims themselves."); see also Accenture Glob. Servs., GmbH v. Guidewire
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Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) ("[T]he important
inquiry for a § 101 analysis is to look to the claim.").
The claims have been drafted so that as a whole they provide a result-
oriented solution ("retriev[e]", "group[]", "generat[e]"), but without the
computer-centric details for accomplishing it. The Appellant's argument
about "overcom[ing] a problem specifically arising in the realm of
computing performance" (Br. 12) ( emphasis omitted), citing to the
Specification as evidence, suggests computer-centric details for achieving
the claimed result-oriented solution. These details may support a position
that the invention is rooted in computer technology. But the claims do not
now reflect those details. Cf Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that "[o]ur law
demands more" than claim language that "provides only a result-oriented
solution, with insufficient detail for how a computer accomplishes it") and
Elec. Power Grp., 830 F.3d at 1354 (explaining that claims are directed to an
abstract idea where they do not recite "any particular assertedly inventive
technology for performing [ conventional] functions").
With respect to the Alice step two determination, the Appellant argues
that "[h ]owever, for the sake of argument, even if the claims can be properly
characterized as being directed to an abstract idea ( which Applicant
disputes), it is noted that the independent claims further recites additional
features that are sufficient to transform the claimed subject matter into a
patent-eligible application." Br. 13. In that regard, the Appellant states that
In the present case, as noted in paragraph [0009] of the
specification as originally filed, "when a sizeable project is being
managed using such a conventional project management system, a
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Application 12/239,316
large number of e-mails are generated, resulting in the use of a
significant amount of processing power and memory on the PPM/mail
server and network bandwidth." Accordingly, as noted in paragraph
[001 OJ of the specification as originally filed, the embodiments of the
present application may, for example, be "directed to helping reduce
the number of messages generated and resources used by a system."
This may, for example, achieve the technical effect of reducing
network traffic in a system such as an IT network, thereby improving
function of the computer systems of the network. Independent claim
8, for example, specifically recites a "system for reducing the number
of generated notification messages". The remainder of the
independent claims may also achieve related technical effects.
Accordingly, the present claims may improve a technology/technical
field, and improve the functioning of computer systems.
Br. 14.
As with the earlier argument, this argument is not commensurate in
scope with what is claimed. Even claim 8, which, as the Appellant points
out, recites "[a] system for reducing the number of generated notification
messages" in its preamble, does not reflect the technical improvement being
argued. The Appellant argues that reducing messages "may, for example,
achieve the technical effect of reducing network traffic in a system such as
an IT network, thereby improving function of the computer systems of the
network." Br. 14. But all that claim 8 calls for is a database and a server.
Whatever technical improvement a network might experience is not one the
system as claimed necessarily achieves.
Dependent claims
The Brief divides the dependent claims in separate groups. Br. 15-18.
For each, the Appellant argues
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Application 12/239,316
each of these dependent claims recites additional specific technical
features which further prevent any preemptive effective of the claims,
improve a technology/technical field, and improve the functioning of
computer systems. Therefore these claims are not directed to abstract
idea, and even if they were directed to abstract ideas, they recite
significantly more. The arguments provided above in support of the
independent claims are further applicable to the additional subject
matter recited by these dependent claims.
There is no further discussion. In effect, the Appellant relies on the
arguments challenging the rejection of the independent claims. Thus, for the
reasons discussed, the arguments as applied to the rejection of the dependent
claims are unpersuasive as to error in their rejection.
We have considered all of the Appellant's remaining arguments and
find them unpersuasive. Accordingly, because we are not persuaded as to
error in the determinations that claims 1-24 are directed to an abstract idea
and do not present an "inventive concept," we sustain the Examiner's
conclusion that they are directed to patent-ineligible subject matter for being
judicially-excepted from 35 U.S.C. § 101. Cf LendingTree, LLC v. Zillow,
Inc., 656 Fed.Appx. 991, 997 (Fed. Cir. 2016) ("We have considered all of
Lending Tree's remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an 'inventive concept,' we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101."); see also,
e.g., OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed.
Cir. 2015) and FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016).
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Application 12/239,316
DECISION
The decision of the Examiner to reject claims 1-24 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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