Ex Parte Freire et al

Patent Trial and Appeal Board

Jun 22, 2018

11697922 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111697,922 0410912007
96227 7590 06/26/2018
Bell & Manning, LLC
2801 West Beltline Highway
Ste. 210
Madison, WI 53713
FIRST NAMED INVENTOR
Juliana Freire
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.
00800-0011 7299
EXAMINER
PADOT, TIMOTHY
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
docketing@bellmanning.com
mmanning@bellmanning.com
pporembski@bellmanning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIANA FREIRE, CLAUDIO T. SILVA,
LOUIS BA VOIL, STEVEN P. CALLAHAN,
EMANUELE SANTOS, CARLOS E. SCHEIDEGGER,
andHUYT. VO
Appeal2016-004798
Application 11/697 ,922 1
Technology Center 3600
Before HUBERT C. LORIN, PHILIP J. HOFFMANN and
MATTHEWS. MEYERS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Juliana Freire, et al., (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 1-5, 7-16, and 18-25. We have
jurisdiction under 35 U.S.C. § 6(b ).
1 The Appellants identify The University of Utah Research Foundation as
the real party in interest. Br. 3.
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Application 11/697 ,922
We AFFIRM.
SUMMARY OF DECISION
THE INVENTION
Claim 3, reproduced below, is illustrative of the subject matter on
appeal.
3. A method of presenting a plurality of workflows that
describe an evolutionary workflow process associated with
creating a result, the method comprising:
receiving a first workflow by a first computing device,
wherein the first workflow comprises a first plurality of
modules, wherein a first module of the first plurality of modules
is configured to apply a first mathematical function to data
input to the first module to form a first result input to a second
module of the first plurality of modules, wherein the second
module is configured to apply a second mathematical function
to the first result to form a second result;
receiving a modification of the first workflow by the first
computing device, wherein the received modification comprises
an action indicator indicating an action taken by a user in
modifying the first workflow to create a second workflow,
wherein the second workflow comprises a second plurality of
modules configured to form a third result; and
presenting an evolutionary workflow process by a
presentation device of a second computing device, the
evolutionary workflow process comprising a first indicator
indicating the first workflow and a second indicator indicating
the second workflow, the evolutionary workflow process
further indicating that the second workflow was created by
modifying the first workflow.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Charisius
Aron
Carson
US 2002/0075293 Al
US 2006/0229924 Al
US 2007 /0088957 Al
The following rejections are before us for review:
June 20, 2002
Oct. 12, 2006
Apr. 19, 2007
1. Claims 1-5, 7-16, and 18-25 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
2. Claims 4, 12, and 16 are rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention.
3. Claims 1-5, 7-16, 18-21, 23, and 24 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Charisius.
4. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Charisius and Aron.
5. Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Charisius and Carson.
ISSUES
Did the Examiner err in rejecting claims 1-5, 7-16, and 18-25 under
35 U.S.C. § 101 as being directed to judicially-excepted subject matter?
Did the Examiner err in rejecting claims 4, 12, and 16 under 35 U.S.C.
§ 112, second paragraph, for failing to particularly point out and distinctly
claim the subject matter which Appellants regard as the invention.
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Did the Examiner err in rejecting claims 1-5, 7-16, 18-21, 23, and 24
under 35 U.S.C. §102(b) as being anticipated by Charisius?
Did the Examiner err in rejecting claim 22 under 35 U.S.C. § 103(a)
as being unpatentable over Charisius and Aron?
Did the Examiner err in rejecting claim 25 under 35 U.S.C. § 103(a)
as being unpatentable over Charisius and Carson?
ANALYSIS
The rejection of claims 1-5, 7-16, and 18-25 under 35 US. C. §1 OJ as being
directed to non-statutory subject matter.
The Appellants argued these claims as a group. See Br. 23-29. We
select claim 3 as the representative claim for this group, and the remaining
claims-claims 1, 2, 4, 5, 7-16, and 18-25-stand or fall with claim 3. 37
C.F.R. § 41.37(c)(l)(iv).
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 "the claims are directed
to the abstract idea of receiving and presenting workflow data." Final
Rej. 9.
The Appellants disagree, arguing
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The claims are not directed to receiving and presenting workflow
data. Thus, at the outset, the Examiner has not properly identified an
abstract idea from which any determination of "significantly more"
can be determined. Appellants respectfully submit that the purpose of
the claims is to present an evolutionary workflow process not a
workflow itself even if the workflow itself is presented in a way that
shows how it was created by modifying a previous workflow.
Br. 23.
The Examiner's characterization of what claim 3 is directed to aligns
with what claim 3 describes. The preamble of the claim recites "a method of
presenting a plurality of workflows that describe an evolutionary workflow
process associated with creating a result." This parallels somewhat with the
Appellants' "present[ing] an evolutionary workflow process"
characterization. ("[W]e see no error here in the district court citing to the
preamble in its review of whether the claims are directed to an abstract idea.
Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d
1329, 1340 (Fed. Cir. 2017).) But the remaining steps call for "receiving a
first workflow by a first computing device," "receiving a modification of the
first workflow by the first computing device," and, "presenting an
evolutionary workflow process by a presentation device of a second
computing device," each of which necessarily involves workflow-related
data. While the preamble supports the Appellants' characterization, the
body of the claim supports the Examiner.
Irrespective of how the concept to which the claim is directed is
expressed-whether as "receiving and presenting workflow data" as the
Examiner articulates it or as "present[ing] an evolutionary workflow
process" as the Appellants characterize it or even as a combination of these
concepts (which would more accurately characterize the claim as a whole) -
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claim 3 is directed to an abstract idea. The Appellants do not dispute that if
the concept to which the claim is directed is expressed as "receiving and
presenting workflow data" it is directed to an abstract idea. Claim 3 is no
less directed to an abstract idea by expressing the concept to which it is
directed to alternatively as "present[ing] an evolutionary workflow process"
or even the combination of presenting an evolutionary workflow process via
receiving and presenting workflow data. 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, 1343 (Fed. Cir.
2016).
The Appellants argue that "[ e ]ven if 'presenting an evolutionary
workflow process' is properly considered an abstract idea, independent
Claims 1-3 recite limitations that add significantly more to the abstract idea
and are more than a mere computer implementation of the abstract idea."
Br. 23-24.
In that regard, 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)).
The Examiner determined that
the claims do not include additional elements or a combination of
elements that amount to significantly more than the judicial exception
because the additional elements are merely directed to instructions to
implement the idea on a computer and/or computer implemented
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functions that are well-understood, routine, and conventional activities
previously known to the art.
Final Rej. 5 (citing para. 49 of the Specification for support as an example).
"Appellants respectfully disagree that the claim limitations are
'well-understood, routine, and conventional in the art (e.g., modules,
worliflow, modifj;ing the worliflow, action indicator)'. As discussed in
Section IV and V below, the claim limitations are not well-understood,
routine, or conventional in the art." Br. 25.
This is not a persuasive argument that claim 3 includes limitations
sufficient to ensure that the claimed process in practice amounts to
significantly more than to be upon the abstract idea itself (however, the
abstract idea is expressed). The basis for the argument that claim 3 includes
limitations that are not well-understood, routine, and conventional in the art
is that they are novel and nonobvious. See "Section IV and V" of the Appeal
Brief. However, a finding of novelty or nonobviousness does not
necessarily lead to the conclusion that subject matter is patentable eligible.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
The question in step two of the Alice framework is not whether an
additional feature is novel but whether the implementation of the abstract
idea involves "more than the performance of 'well-understood, routine,
[and] conventional activities previously known to the industry."' Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
1343, 1347--48 (quoting Alice, 134 S. Ct. at 2359). In that regard, claim 3
calls for two receiving steps and one presenting step, the receiving steps
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involving the use of a "first computing device" and the "presenting step"
involving a "second computing step." Said "device''s cover generic
hardware. Spec. i-fi-140-46. Receiving and presenting information per se are
functions commonly associated with conventional processors, for example.
Claim 3 does further require the data received and presented by the
"first computing device" and "second computing device," respectively, to
have particular content; that is, "receiv[ing] a first workflow [] compris[ing]
a first plurality of modules ... "; "receiv[ing] a modification of the first
workflow [] compris[ing] an action indicator indicating an action taken by a
user ... "; and, "presenting an evolutionary workflow process [ ] comprising
a first indicator indicating the first workflow and a second indicator
indicating the second workflow, the evolutionary workflow process further
indicating that the second workflow was created by modifying the first
workflow." The recited modules, workflow, modifying the workflow, and
action indicator describe particular content for the information the
computing devices are to receive and present. But receiving and
presentation information, including when limited to particular content -
whether or not the content of the information would have been known, is
within the realm of abstract ideas. See, e.g., Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs.,
LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011). Cf SAP America, Inc. v. Investpic, LLC, 890 F.3d 1016, 1022 (Fed.
Cir. 2018) ("Contrary to InvestPic' s suggestion, it does not matter to this
conclusion whether the information here is information about real
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investments. As many cases make clear, even if a process of collecting and
analyzing information is "limited to particular content" or a particular
"source," that limitation does not make the collection and analysis other than
abstract." (Quoting Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) (citing cases).).
The Appellants also argue that
The current claims are directed to a system that summarizes
workflow information about how computational tasks . . . evolve over
time during the trial and error process of generating a final data
product. The claimed invention supports both exploration and re-use
of workflows as well as a visualization of how the workflows evolved
over time.
Br. 26. The difficulty with this argument is that it is not commensurate in
scope with what is claimed. Claim 3 does not describe summarizing
workflow information about how computational tasks evolve over time
during the trial and error process of generating a final data product.
Furthermore, even assuming arguendo that claim 3 included a summarizing
step limited to summarizing such a particular type of information, we do not
see how that renders the process any less abstract. While such a claim
would be described at a lower level of abstraction, it would still be abstract.
Cf Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-1241 (Fed. Cir.
2016) (An abstract idea can generally be described at different levels of
abstraction.)
The Appellants also argue that
The claimed subject matter is an improvement to the
functioning of a computer in presenting an evolutionary
workflow process because it presents the information to a user
in a more meaningful way by determining when a workflow is
modified ("receive a modification of the first workflow") and
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by indicating "that the second workflow was created by
modifying the first workflow" so that the user better
understands how the workflow has evolved through user
interaction.
Br. 27. According to the Appellants, "the claimed solution amounts to an
inventive concept for resolving []particular computer-centric
problems and improves numerous technical fields, such as image analysis,
rendering the claims patent-eligible." Br. 28. But presenting information in
a more meaningful way so that a user can better understand it is not only not
mentioned in the claim but the claim does not reflect any particular
computer-centric solution for achieving it. The claim covers generic
computing devices in order to receive and present information, albeit a
certain type if information. The devices as claimed, individually and in the
ordered combination as claimed, operate as they normally would be
expected to. Save for the type of information being processed - which is not
patentably consequential - the claimed process does not reflect an
improvement to the functioning of a computer. Rather, claim 3 recites a
scheme "relate[ d] to the capture and modeling of provenance information
associated with the evolutionary development of workflows to streamline the
discovery process" (Spec. i-f2) involving the generalized use of computers as
tools to conduct said scheme. Claim 3 does not provide any details which
can be interpreted as inventive technology for performing the functions as
claimed. Cf Credit Acceptance Corp. v. Westlake Services, LLC, 859 F.3d
1044, 1057 (Fed. Cir. 2017):
Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process.
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
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claim language that "provides only a result-oriented solution, with
insufficient detail for how a computer accomplishes it"); Elec. Power
Grp., 830 F.3d at 1354 [Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016)]; (explaining that claims are directed
to an abstract idea where they do not recite "any particular assertedly
inventive technology for performing [conventional] functions").
We have considered all of the Appellants' remaining arguments and
have found them unpersuasive. Cf LendingTree, LLC v. Zillow, Inc., 656
Fed.Appx. 991, 997 (Fed. Cir. 2016)
We have considered all of LendingTree '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.
Accordingly, because representative claim 3, and claims 1, 2, 4, 5, 7-
16, and 18-25 that stand or fall with claim 3, are directed to an abstract idea
and do not present an "inventive concept," we sustain the Examiner's
determination that they are directed to ineligible subject matter under 35
U.S.C. § 101. The rejection is sustained.
The rejection of claims 4, 12, and 16 under 35 US. C. § 112, second
paragraph, for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention.
Claim 4 further limits claim 3 so that "the second computing device is
the first computing device."
The Examiner argues that
The term "second computing device" in claim 4 is used
by the claim to mean "first computing device", while the
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accepted meaning for referring to a "second computing device"
is that the second device is another device (hence the additional
language distinguishing a "first device" from a "second device"
in the first place). The term is indefinite because the
specification does not clearly redefine the term.
Final Rej. 7.
The Appellants disagree, arguing that "[ c ]laim 4 merely makes clear,
and in fact, unambiguous[,] that the two devices in Claim 3 may not be
separate and distinct devices." Br. 18.
We think the evidence, on balance, more strongly supports the
Appellants' position. We do not see in the original Specification the claimed
first and second computing devices being defined as representing two
individual machines physically independent of each other. As long as a
computing device (labeled "first" and "second") performs the steps as
claimed, the method as claimed is practiced. As reasonable broadly
construed in light of the Specification, the same device could perform said
steps as both the "first" and "second" device. Accordingly, "the second
computing device [can be] the first computing device." Claim 4 (emphasis
added).
For similar reasons, we do not find that a preponderance of the
evidence supports the Examiner's narrow construction of claim 12 ("wherein
the second user is the user") as having "the accepted meaning for referring to
a "second user" [whereby] the second user is another user (hence the
additional language distinguishing a "second user" from "a user" in the first
place)." Final Rej. 8. We agree with the Appellants that, in light of the
Specification claim 12 is reasonably broadly construed such that the two
users refer to the same "user" (i.e., the same person). Br. 20.
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For similar reasons, we do not find that a preponderance of the
evidence supports the Examiner's narrow construction of claim 16 ("wherein
the second presentation device is the presentation device") as having "the
accepted meaning for referring to a "second presentation device" [whereby]
the second presentation device is another presentation device (hence the
additional language distinguishing a "second presentation device" from "the
presentation device" in the first place)." Final Rej. 9. We agree with the
Appellants that, in light of the Specification claim 16 is reasonably broadly
construed such that the two presentation devices refer to the same
"presentation device" (i.e., the same machine). Br. 21.
The rejection is not sustained.
The rejection of claims 1-5, 7-16, 18-21, 23, and 24 under 35 US.C.
§102(b) as being anticipated by Charisius.
We agree with the Appellants that "[ n ]ow here does the Examiner
indicate where Charisius provides any teaching related to 'wherein the
received modification comprises an action indicator indicating an action
taken by a user in modifying the first workflow to create a second
Workflow' [independent claims 1-3]." Br. 30.
The Examiner does not specifically treat said limitation. Rather, the
Examiner makes the following finding (for claims 1-3) with respect to the
claim step that contains said limitation.
receive a modification of the first worliflow, wherein the received
modification comprises an action indicator indicating an action taken
by a user in modifYing the first worliflow to create a second worliflow,
wherein the second worliflow comprises a second plurality of modules
configured to form a third result (paragraphs 14-17, 184-186, 191-192
and Figs. 91-92: e.g., the tool 200 allows a user to store the
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modifications made to a plan. and allows the user to view the changes
made to a plan over time; See also. paragraph 74: FIG. 88 depicts the
workflow of FIG. 82 with a revision; See also. paragraphs 180 and
184: e.g. may view the changes made to a plan or workflow over time.
or may view the various plans created from a given workflow over
time);
Final Rej. 12-13. Where in Charisius the action indicator as claimed is
expressly or inherently described is not explained. We have reviewed the
cited disclosures but have been unable to find it.
In response, the Examiner maintains that one skilled in
the art would recognize Charisius as teaching this in at least
paragraphs 14-17, 7 4, 180, 184-186, 191-192, and Figs. 82,
88, 91-92, wherein Charisius's teaching of features that allow
for storing modifications and allowing a user to view changes
(i.e., action indicators that modify the workflow)
Ans. 13. But the question under § 102 is not whether one skilled in the art
would recognize Charisius as teaching the action indicator as claimed but
whether Charisius in fact describes it. Since that has not been shown in the
first instance, the rejection is not sustained.
The rejection of claim 22 under 35 US.C. § 103(a) as being unpatentable
over Charisius and Aron.
The rejection of claim 25 under 35 US.C. § 103(a) as being unpatentable
over Charisius and Carson.
Claims 22 and 25 depend from claim 2 and include the limitation as to
the action indicator discussed above. The Examiner relies on the finding
(reproduced above) that one skilled in the art would recognize Charisius as
teaching the action indicator as claimed. Final Rej. 19-21. Because it has
not been established in the first instance that Charisius in fact describes the
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action indicator or renders it obvious these rejections are similarly not
sustained.
CONCLUSIONS
The rejection of claims 1-5, 7-16, and 18-25 under 35 U.S.C. §101 as
being directed to non-statutory subject matter is affirmed.
The rejection of claims 4, 12, and 16 under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention is reversed.
The rejection of claims 1-5, 7-16, 18-21, 23, and 24 under
35 U.S.C. §102(b) as being anticipated by Charisius is reversed.
The rejection of claim 22 under 35 U.S.C. § 103(a) as being
unpatentable over Charisius and Aron is reversed.
The rejection of claim 25 under 35 U.S.C. § 103(a) as being
unpatentable over Charisius and Carson is reversed.
DECISION
The decision of the Examiner to reject claims 1-5, 7-16, and 18-25 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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