Ex Parte Hayes et al

Patent Trial and Appeal Board

Apr 25, 2018

13843522 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/843,522 03/15/2013 Gayle Hayes
80812 7590 04/27/2018
Trellis IP Law Group/Oracle
1900 Embarcadero Road
Suite 109
Palo Alto, CA 94303
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.
ORACP0079 1083
EXAMINER
KONERU, SUJAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
04/27/2018 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):
docket@trellislaw.com
megan@trellislaw.com
ann@trellislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAYLE HA YES, ANDRE GULDI, DAVID WOLFMUELLER,
BRETT SHANE GOODWIN, JOHN KELLEY, SHANKAR MUTHANE,
CHARU ROY, and DEVENDRA SINGH
Appeal2017-001966
Application 13/843,522
Technology Center 3600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b). Claims 21-27 are withdrawn from consideration. App.
Br. 5.
We affirm.
1 Appellants identify the real party in interest as Oracle International
Corporation. App. Br. 3. Oracle International Corporation is the Applicant
for the instant patent application. See Bib. Data Sheet.
Appeal2017-001966
Application 13/843,522
STATEMENT OF THE CASE
Appellants' disclosed invention "relates to ... facilitating managing
development and implementation of innovations, such as product concepts."
Spec. ,r 1. Claim 1, which is illustrative, reads as follows:
1. A method for facilitating innovation management,
the method comprising the following acts performed by one or
more processors:
rendering a user interface for defining and displaying a
hierarchical data structure for an innovation;
accepting first signals from a user input device to define a
plurality of alternate solution categories for the innovation,
wherein each alternate solution category is associated with an
alternate solution structure, each alternate solution structure
corresponding to one or more alternate solution concepts;
accepting second signals from a user input device to define
a concept as an alternate solution concept belonging to an
alternate solution category;
associating one or more metric attributes with an alternate
solution concept;
performing a comparison operation on the hierarchical
data structure to generate a visual juxtaposition of data pertaining
to the alternate solution categories;
adjusting the juxtaposition of the data to illustrate and
accentuate a contrast or difference between the alternate solution
categories with respect to the one or more metric attributes;
aggregating the one or more metric attributes to generate
an aggregated metric score; and
rendering an integrated display of the hierarchical data
structure according to the visual juxtaposition of the data
pertaining to the alternate solution categories, wherein the
display juxtaposes the alternate solution categories relative to
one another with respect to the one or more metrics and with
respect to the aggregated metric score.
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Claims 1-20 stand rejected under 35 U.S.C. § 101 2 as being directed
to ineligible subject matter. See Final Act. 3-5.
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed July 12, 2016; "Reply Br." filed Nov. 18. 2016) for the positions
of Appellants; the Final Office Action ("Final Act." mailed Feb. 29, 2016)
and Examiner's Answer ("Ans." mailed Sept. 19, 2016) for the reasoning,
findings, and conclusions of the Examiner; and the Specification ("Spec."
filed Mar. 15, 2013). Only those arguments actually made by Appellants
have been considered in this decision. Arguments that Appellants did not
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
ISSUE
The issue presented by Appellants' arguments is whether the
Examiner errs in finding claims 1-20 are directed to a patent-ineligible
abstract idea.
ANALYSIS
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be
statutorily patentable, the subject matter of an invention must be a "new and
useful process, machine, manufacture, or composition of matter, or [a] new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
held there are implicit exceptions to the categories of patentable subject
2 The rejection is under the provisions of 35 U.S.C. in effect before the
effective date of the Leahy-Smith America Invents Act of2011 (AIA). See,
e.g., Final Act. 2.
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matter identified in § 101, including (1) laws of nature, (2) natural
phenomena, and (3) abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2355 (2014). Further, the Court has "set forth a framework
for distinguishing patents that claim [1] laws of nature, [2] natural
phenomena, and [3] abstract ideas from those that claim patent-eligible
applications of those concepts." Id. (brackets added) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The
evaluation follows the two-part analysis set forth in Mayo: 1) determine
whether the claim is directed to an abstract idea; and 2) if the claim is
directed to an abstract idea, determine whether any element, or combination
of elements, in the claim is sufficient to ensure that the claim amounts to
significantly more than the abstract idea itself. See Alice, 134 S. Ct. at 2355
(citing Mayo, 566 U.S. at 75-80).
ALICE STEP ONE
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. Id. ( emphasis added). The Examiner finds the claims are
directed to "organizing human activity or data since innovations are a
specific type of activities and the claims are drawn to organizing and
presenting that type of data." Final Act. 4. Appellants argue the claims are
not directed to an abstract idea of organizing human activity because "the
present invention is directed to a specific improvement to the way computers
operate to render a display, embodied in utilizing data hierarchies and data
relationships to refine a rendered display presentation." App. Br. 14 ( citing
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). In
particular, the claims recite "a very specific way of utilizing hierarchical
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data structure analysis to effectuate a juxtaposed data presentation, not
merely presenting data." Reply Br. 8.
The dispute implicates the "directed to" inquiry. The "directed to"
inquiry cannot simply ask whether the claims involve a patent-ineligible
concept, because essentially every patent-eligible claim involving physical
products and actions involves a law of nature and/or natural phenomenon-
after all, they take place in the physical world. See Mayo, 566 U.S. at 71
("For all inventions at some level embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas"). Rather, "the
'directed to' inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether 'their character as a whole is directed
to excluded subject matter."' Enfish, 822 F.3d at 1335 (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). The court in Enfish put the question as being "whether the focus of
the claims is on [a] specific asserted improvement in computer capabilities .
. . or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfish, 822 F.3d at 1335-36. The
court found that the "plain focus of the claims" there was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id. at 1336.
We find unavailing Appellants' contention that utilizing data
hierarchies in juxtaposing innovation data to refine a presentation of
different innovation concepts directs claim 1 to a specific improvement to
the way computers operate as explained in Enfish, 822 F.3d at 1336. The
claims in Enfish were directed to an improved database configuration that
permitted faster searching for data. Id. at 1330-33, 1336. We note that
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claim 1 is silent regarding a database. Nor do Appellants describe an
advance in hardware or software that, for example, causes a computer to
operate faster or more efficiently. The alleged improvement to "presentation
of different innovation concepts" is still merely a presentation of
information, and does not parallel the improvement in Enfish and does not
impart patent eligibility under Mayo/Alice step one.
Taking independent claim 1 as representative of the claims on appeal,
the claimed method recites eight steps----(a) rendering a user interface to
display an innovation's hierarchical data structure; (b) accepting user signals
that define alternate solution categories for an innovation that correspond to
alternate solution concepts; ( c) accepting user signals that define a concept
as an alternate solution concept belonging to an alternate solution category;
( d) associating metric attributes with an alternate solution concept; ( e)
generate a visual juxtaposition of data pertaining to the alternate solution
categories; (f) adjusting the juxtaposition; (g) generating an aggregated
metric score; and (h) rendering an integrated display of the hierarchical data
structure according to the visual juxtaposition of the data. Thus, the basic
character of the claimed subject matter, as a whole, is focused on presenting
a comparison between alternate solution categories in a hierarchical data
structure, i.e., presenting information, albeit information to "facilitat[e]
innovation management," as recited in the preamble of claim 1.
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Texas, LLC v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
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Cir. 2016)). In that regard, the Background section of the Specification
discusses the problem, which is that conventional "process management
software generally lacks features, methods, and interfaces for fully
informing enterprise decision makers about important factors involved in
developing and managing a particular innovation." Spec. ,r 4. According to
the Specification, the inventors address this problem by providing "new
innovation management capabilities that enable detailed tracking and
analysis of concepts and sub-concepts included in a concept structure
characterizing an overall concept." Id. ,r 19. In light of Specification's
description of the problem and solution, the advance over the prior art by the
claimed invention is in facilitating innovation management by presenting an
innovation's detailed analysis (i.e., information) to enterprise decision
makers.
Given the focus of claim 1 as a whole is presenting a comparison
between an innovation's hierarchical data structure and alternate solution
categories, and, in light of the Specification's description of facilitating
innovation management by presenting an innovation's hierarchical data
structure to enterprise decision makers, the claims are characterized as being
"directed to" presenting an innovation's hierarchical data structure to
enterprise decision makers. Innovation is a human activity. Presenting an
innovation's hierarchical data structure to enterprise decision makers is a
method of organizing, i.e., managing, the human activity. Because methods
of organizing human activities are abstract ideas, we agree with the
Examiner that claim 1 is directed to an abstract idea. Cf Elec. Power, 830
F.3d at 1354 (claims directed to a "process of gathering and analyzing
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information of a specified content," i.e., data describing operations in a
power grid, and then displaying the results were directed to an abstract idea).
ALICE STEP Two
Because we find that claim 1 is directed to an abstract idea, we next
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 ( quoting Mayo, 566 U.S. at 78). The Supreme Court describes the
second step of this analysis as "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 (citing Mayo, 566 U.S.
at 72-73).
We find unavailing Appellants' comparison of the claims to those in a
non-binding District Court decision (Trading Techs. Int 'l, Inc. v. CQG, Inc.,
No. 05-cv-4811, 2015 WL 774655, (N.D. Ill. Feb. 24, 2015)), aff'd 675 F.
App'x 1001 (Fed. Cir. 2017) (non-precedential)) and Appellants' argument
that
"Li]ust as the claims in Trading Technologies Int 'l were directed
to solving problems relating to speed, accuracy, and usability of
graphical user interfaces in the context of computerized trading
... , the present claims are directed to solving problems relating
to speed, accuracy, and usability of data hierarchies in the context
of managing and presenting innovations and related alternative
solutions.
Reply Br. 9-10.
Although the Federal Circuit's affirmance of the district court's
decision is not precedential, we look to it for its instructive value in this
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case. However, the Federal Circuit's discussion of the claims at issue in
Trading Technologies does not lead us to a finding of patent eligibility in
this case. In Trading Technologies, the Federal Circuit affirmed the District
Court's holding that the patented claims (which recited a method and system
for displaying market information on a graphical user interface) did not
solely claim displaying information on a graphical user interface and were
not directed to an abstract idea, but rather required "a specific, structured
graphical user interface paired with a prescribed functionality directly
related to the graphical user interface's structure that is addressed to and
resolves a specifically identified problem in the prior state of the art." Id. at
1004. In particular, the prescribed functionality directly related to the
graphical user interface's structure reducing the time it takes traders to place
a trade on an electronic exchange. Id. at 1003. Appellants' user interface
offers no such equivalent functionality. That is, Appellants "simply claim
displaying information on a graphical user interface." Id. at 1004.
We also find unavailing Appellants' comparison of the claims to those
of DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)
and Appellants' argument that the claimed solution is necessarily rooted in
computer technology, namely, "to overcome various problems specifically
arising in the realm of innovation and to overcome technical difficulties in
obtaining a data presentation that accentuates or contrasts the differences
between alternative solutions to an innovation in order for a user to make a
more informed choice among the alternative solutions." Reply Br. 8. In
DDR Holdings, the Federal Circuit determined that the claims addressed the
problem of retaining website visitors who, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be
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transported instantly away from a host's website after clicking on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
The Federal Circuit further determined that the claims "specify how
interactions with the Internet are manipulated to yield a desired result-a
result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink." Id. at 1258. The Federal
Circuit, thus, held that the claims may pass the second step because they
claim a solution "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
Id. at 1257. New ways of presenting/displaying information related to
innovation is not a challenge particular to the Internet, or any other branch of
computer technology, as in DDR Holdings.
Appellants' preemption argument that claim 1 does "not tie up an
abstract idea as the claims are directed to a specific implementation of a
solution to a problem in the software arts" (App. Br. 14) is unpersuasive
because it does not alter our § 101 analysis. Preemption concerns are fully
addressed and made moot where a claim is deemed to disclose patent
ineligible subject matter under the two-part framework described in Alice.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015). "While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility."
Id.
Thus, "the claims at issue amount to 'nothing significantly more' than
an instruction to apply the abstract idea ... using some unspecified, generic
computer." Alice, 134 S. Ct. at 2360 (citing Mayo, 566 U.S. at 79).
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SUMMARY
Appellants do not persuade us of error in the rejection of claim 1.
Accordingly, we sustain the rejection of (1) independent claim 1; (2)
independent claims 19 and 20, which are argued relying on the arguments
made for claim 1 (see App. Br. 13-15); (3) claims 2-18, which depend,
directly or indirectly, from claims 1, 19, and 20, respectively, and were not
separately argued with particularity (see id. at 15).
DECISION
The Examiner's decision to reject claims 1-20 under 35 U.S.C. § 101
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). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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