Ex Parte Graupner et al

Patent Trial and Appeal Board

Jan 31, 2019

13415803 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/415,803 03/08/2012
146568 7590
ENTIT SOFTWARE LLC
500 Westover Drive
#12603
Sanford, NC 27330
02/04/2019
FIRST NAMED INVENTOR
Sven Graupner
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.
82892275 7991
EXAMINER
SANTOS-DIAZ, MARIA C
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
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 SVEN GRAUPNER, HAMID REZA MOTAHARI NEZHAD, and
CLAUDIO BARTOLINI
Appeal2018-000565
Application 13/415,803 1
Technology Center 3600
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 The Appellants identify Hewlett Packard Enterprise Development LP as
the real party in interest. Appeal Br. 3.
Appeal2018-000565
Application 13/415,803
ILLUSTRATIVE CLAIM
1. A system comprising:
one or more processors; and
memory that stores computer-executable instructions that
control the one or more processors to provide a sales
governance system to:
receive requests from sales personnel with the sales
governance system;
interpret the requests from the sales personnel with the
sales governance system and provide interpretations of the
requests in the context of a sales process with the sales
governance system; and
provide responses to the sales personnel with the sales
governance system based on the interpretations of the requests.
CITED REFERENCES
The Examiner relies upon the following references:
Johnson et al.
(hereinafter "Johnson")
us 6,067,525 May 23, 2000
Park US 2006/0168072 Al July 27, 2006
Wulteputte et al. US 2006/0287932 Al
(hereinafter "Wulteputte")
Campbell US 2008/0066080 Al
Waithman Lanyon et al. US 2011/0225092 Al
(hereinafter "W aithman Lan yon")
REJECTIONS
Dec. 21, 2006
Mar. 13, 2008
Sept. 15, 2011
I. Claims 1-20 are rejected under 35 U.S.C. § 101 as ineligible
subject matter.
II. Claims 1, 3-5, 7, 10, 16, and 17 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Wulteputte.
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III. Claims 2, 6, 8, 9, and 13-15 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wulteputte and Johnson.
IV. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wulteputte and Campbell.
V. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wulteputte, Johnson, Official Notice, and Park.
VI. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Wulteputte, Johnson, Official Notice, Park, and Waithman Lanyon.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, "[a]t some level, 'all inventions ... embody, use, reflect,
rest upon, or apply'" these basic tools of scientific and technological work.
Alice Corp. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (internal citation
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omitted). Accordingly, evaluating ineligible subject matter, under this
judicial exclusion, involves a two-step framework for "distinguish[ing]
between patents that claim the buildin[g] block[ s] of human ingenuity and
those that integrate the building blocks into something more, thereby
transform[ing] them into a patent-eligible invention." Id. (internal quotation
marks and citation omitted). The first step determines whether the claim is
directed to judicially excluded subject matter (such as a so-called "abstract
idea"); the second step determines whether there are any "additional
elements" recited in the claim that ( either individually or as an "ordered
combination") amount to "significantly more" than the identified judicially
excepted subject matter itself. Id. at 217-18.
The USPTO recently published revised guidance on the application of
§ 101, in accordance withjudicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("2019
Revised Guidance"). Under the 2019 Revised Guidance, a claim is "directed
to" an abstract idea, only if the claim recites any of ( 1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
processes - without integrating such abstract idea into a "practical
application," i.e., without "apply[ing], rely[ing] on, or us[ing] 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." Id. at 53-55. A claim so "directed to"
an abstract idea constitutes ineligible subject matter, unless it recites an
additional element ( or combination of elements) amounting to significantly
more than the abstract idea. Id. at 56.
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With regard to the first step of the Alice framework, the Examiner
states that claims 1-20 are directed to the abstract idea of "collaborating and
coordinating services provided by sales professionals," which the Examiner
regards as a "fundamental business practice" and an ineligible "method of
organizing human activity by providing a system that allows collaboration of
sales personnel to participate in a sales process." Final Action 2. The
Examiner further states that "[t]he claimed invention is related to comparing
new (the information received from the user in the request) and stored
information (responding the request with stored information such as the
form claimed) to identify an option (performing transactions based on the
information received in the form[])," which the Examiner regards as similar
to the abstract idea identified in SmartGene, Inc. v. Advanced Biological
Laboratories, SA, 555 F. App'x 950, 955 (Fed. Cir. 2014) (non-
precedential). Id. Viewed through the lens of the 2019 Revised Guidance,
84 Fed. Reg. at 52, the Examiner's analysis depicts the claimed subject
matter as one of the ineligible "[c]ertain methods of organizing human
activity" that include "commercial ... interactions," such as "advertising,
marketing or sales activities or behaviors" and "business relations," as well
as "managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
instructions)."
Addressing the second step of the Alice framework, the Examiner
states:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional element( s) or combination of
elements in the claim( s) other than the abstract idea per se
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amount(s) to no more than: (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 previously known to the pertinent industry which has
been treated by the courts as an attempt to link the abstract idea
to a particular technological environment, Alice Corp. Pty.Ltd.
v. CLS Bank Int 'l (i.e. receive information, store information,
and display information based on rules.).
Final Action 2-3.
The Appellants argue that "[i]ndependent claims 1, 10, an[d] 18
comprise concrete features that are more than an abstract idea and, thus, are
not directed to" a judicially excepted category of subject matter. Appeal
Br. 9.
Yet, the Appellants do not contest the accuracy of the Examiner's
characterization of the claims as "collaborating and coordinating services
provided by sales professionals" (see Final Action 2), nor do the Appellants
dispute that the Examiner's characterization describes an abstract idea.
Rather, the Appellants argue that, "when viewed as a whole,
independent claims 1, 10, and 18 clearly do not seek to tie up the abstract
idea of collaboration and coordination of services provided by sales
professionals so that others cannot practice it." Appeal Br. 11. In short, the
Appellants' argument, regarding the first part of the Alice framework,
amounts to a contention that the independent claims do not preempt the
abstract idea that the Examiner identifies. The Appellants' argument on this
point does not identify reversible 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).
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Further, the Appellants do not identify any basis for error in the
Examiner's analysis, whereby any of the independent claims might integrate
the identified abstract idea into a "practical application," per Step 2A, prong
two, of the 2019 Revised Guidance, 84 Fed. Reg. at 54--55. According to the
Appellants, independent claims 1, 10, and 18 delineate "significant concrete
features" that "provide meaningful improvements in the technical field."
Appeal Br. 10. The Appellants' example refers to page 3, lines 1--4, of the
Specification, wherein "sales governance system 22 employs these concrete
features of independent claims 1, 10, and 18 to mitigates interactions
between personnel, such as sales or other personnel, and the different sales
management systems 24, such as customer relationship management
systems, budgeting systems, and approval systems." Id. at 10-11. Yet,
according to the portion of the Specification that the Appellants cite, the
improvements alleged are attributable to "an email access layer" (Spec. 3, 11.
1--4) - a feature that is not recited in any of claims 1, 10, and 18. As such,
the Appellants do not identify a claimed feature that might integrate the
identified abstract idea into a "practical application" thereof. See 2019
Revised Guidance, 84 Fed. Reg. at 54--55 ("Examiners evaluate integration
into a practical application by: (a) Identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.")
Nor do the Appellants show error, on the Examiner's part, in applying
the second step of the Alice framework ("Step 2B" of the 2019 Revised
Guidance, 84 Fed. Reg. at 56-57). The Appellants contend:
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significant concrete features of independent claims 1, 10, and
18 are specific features other than what is well understood,
routine, and conventional in the technical field of the invention
and are meaningful features beyond generally linking the use of
the judicial exception to a particular technological environment,
such that these specific features amount to significantly more
than the judicial exception itself.
Appeal Br. 13. In particular, the Appellants state:
these specific significantly more concrete features of
independent claims 1, 10, and 18 can provide several
advantages that were not possible prior to the present invention,
such as shield sales personnel from the complexities and
changes in the underlying sales management systems; simplify
interactions with the sales management systems into email
communication mechanisms people are familiar with; provide
sales personnel who travel frequently and rely on mobile
computing devices easy access; simplifies locating information
for a step or action to be performed in a sales process by
including instructions and/or templates in response emails;
reduces roll-out time for sales process changes; create a unified
recording point for ongoing sales activities and build a
warehouse of information that can be exploited for further
analysis, and record information in a string of emails or email
thread facilitates exchanging this information across teams via
the email threads.
Id. at 13-14 (citing Spec. p. 11, 11. 11-27). Yet, the allegedly advantageous
functionality relied upon ( and referenced in the cited portion of the
Specification)- i.e., "shield[ing] sales personnel from the complexities and
changes in the underlying sales management systems," "simplify[ing]
interactions with the sales management systems into email communication
mechanisms people are familiar with," provide "easy access" to "mobile
computing devices" for "sales personnel who travel frequently,"
"simplif[ying] locating information for a step or action to be performed in a
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sales process by including instructions and/or templates in response emails,"
"reduc[ing] roll-out time for sales process changes," "creat[ing] a unified
recording point for ongoing sales activities and build[ing] a warehouse of
information that can be exploited for further analysis," and "record[ing]
information in a string of emails or email thread facilitates exchanging this
information across teams via the email threads" (see id.) - are not recited in
independent claims 1, 10, and 18. Therefore, these referenced features and
advantages identified in the Specification cannot amount to claim recitations
that might amount to significantly more than the identified abstract idea,
under the second step of the Alice framework and "Step 2B" of the 2019
Revised Guidance, 84 Fed. Reg. at 56.
In view of the foregoing, the Appellants' arguments do not persuade
us of error in the rejection of independent claims 1, 10, and 18. Because no
separate argument is provided for dependent claims 2-9, 11-17, 19, and 20
(see Appeal Br. 14), we sustain the rejection of claims 1-20 under 35 U.S.C.
§ 101.
Anticipation
The Appellants assert that Wulteputte' s disclosure lacks all of the
recited functionality of the "sales governance system" of independent claims
1 and 10. See Appeal Br. 15-16.
However, the Appellants do not identify which particular claimed
feature(s) are allegedly not met by Wulteputte, nor do the Appellants
articulate a basis for such contentions. See id. The Appellants' assertions
are not persuasive of error in the rejection, because "[a] statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim." 37 C.F.R. § 4I.37(c)(l)(iv).
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Further, the Appellants allege that Wulteputte "does not teach or
suggest the sales governance system features of independent claims 1 and
10," based upon the following "example sales governance system ...
defined in the Present Specification":
Sales governance system 22 is a central access point for
collateral information, such as forms, spreadsheets, calculators,
pricing, slide decks, brochures, other documents, and reference
contacts for completing each step in a sales process. Sales
governance system 22 is a central access point for locating
correct and up-to-date information on the sales process and for
exchanging this information with personnel. Sales governance
system 22 is accessible to substantially all sales personnel
uniformly and consistently.
Id. at 16 ( quoting Spec. p. 7, 11. 3-9) (Appellants' emphasis).
As the Examiner points out, the features identified in the foregoing
quotation from the Specification are not set forth in either claim 1 or claim
10, such that they cannot provide a basis for distinguishing the claims from
Wulteputte. Answer 9-10.
In view of the foregoing, the Appellants do not persuade us of error in
the rejection of independent claims 1 and 10. Accordingly, we sustain the
rejection of claims 1, 3-5, 7, 10, 16, and 17under35U.S.C. § 102(b).
Obviousness
In regard to independent claim 18, the Appellants contend - in a
manner similar to that discussed, above, regarding the anticipation rejection
of independent claims 1 and 10 - that "claim 18 includes features not
taught or suggested by Wulteputte, alone or in combination with the other
cited references." Appeal Br. 18.
Similar to the argument presented on anticipation, the Appellants do
not identify which particular claimed feature( s) of claim 18 are allegedly not
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taught or suggested by Wulteputte ( whether alone or in combination with
other references) - nor do the Appellants articulate a basis for the
contention. Thus, the Appellants' assertion is not persuasive of error in the
rejection of independent claim 18, because "[a] statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim." 37 C.F.R. § 4I.37(c)(l)(iv).
The Appellants assert that "dependent claims 2, 6, and 8-9 further
define patentably distinct independent claim 1, dependent claims 11-15
further define patentably distinct independent claim 10, and dependent
claims 19-20 further define patentably distinct independent claim 18."
Appeal Br. 18.
Yet, the Appellants do not explain why any of the identified
dependent claims might "further define" the respective independent claims
in a nonobvious manner, such that the Appellants' statement does not
persuade us of error in the rejection of dependent claims 8, 9, 11-15, 19, and
20.
Accordingly, we sustain the rejection of claims 2, 6, 8, 9, 11-15, 18,
19, and 20 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 101.
We AFFIRM the Examiner's decision rejecting claims 1, 3-5, 7, 10,
16, and 17 under 35 U.S.C. § 102(b).
We AFFIRM the Examiner's decision rejecting claims 2, 6, 8, 9, 11-
15, and 18-20 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).
AFFIRMED
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