Ex Parte Mahakian et alDownload PDFPatent Trial and Appeal BoardSep 28, 201712900816 (P.T.A.B. Sep. 28, 2017) Copy Citation 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. 12/900,816 10/08/2010 Fred MAHAKIAN T9049-19550US01 8611 74739 7590 10/02/2017 MILES & STOCKBRIDGE P.C. Oracle International Corporation 1751 Pinnacle Drive Suite 1500 Tysons Corner, VA 22102-3833 EXAMINER MISIASZEK, MICHAEL ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 10/02/2017 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): Ipdocketing @ Miles S tockbridge. com bgoldsmith @ miles stockbridge .com smcvean @ milesstockbridge. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRED MAHAKIAN, JOHN STICKLEY, SAMUEL WONG, YAN CUI, and PRAVEEN VIPRANARAYANAN Appeal 2016-008659 Application 12/900,8161 Technology Center 3600 Before HUNG H. BUI, JOSEPH P. LENTIVECH, and AARON W. MOORE, 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—4 and 6—20, the only claims pending in the application on appeal. Claim 5 has been canceled. See App. Br. 13 (Claims App’x). 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 Oracle International Corporation. App. Br. 2. Appeal 2016-008659 Application 12/900,816 STATEMENT OF THE CASE Appellants ’ Invention Appellants’ invention generally relates to “a computer system for monitoring and modifying an orchestration of business processes.” Spec. 11. Claim 1, which is illustrative, reads as follows: 1. A non-transitory computer-readable medium having instructions stored thereon that, when executed by a processor, cause the processor to manage a process request in a distributed order orchestration system, the managing comprising: selecting one or more fulfillment lines of an order being processed by a fulfillment process that are identified as requiring manual intervention; transmitting a process request to one or more fulfillment systems, wherein the process request modifies the fulfillment process, and wherein the process request comprises one or more line requests for the one or more selected fulfillment lines; displaying a first indication indicating that the process request is complete in a user interface, when the process request completes; displaying a second indication indicating that the process request is processing in the user interface, when a predetermined timeout period elapses before the process request completes; displaying a status indicator that represents a status for each line request of the one or more line requests in the user interface; automatically updating the status for each pending line request of the one or more line requests, when each pending line request completes; monitoring the status for each pending line request of the one or more line requests, wherein the status for each pending line request of the one or more line requests is stored within a data store; 2 Appeal 2016-008659 Application 12/900,816 transmitting an update to the user interface when the monitored status for each pending line request is automatically updated, wherein the update comprises an event published by an active data service that binds the user interface with the data store; and automatically updating the status indicator displayed in the user interface for each pending line request of the one or more line requests, in response to receiving the event published by the active data service. Rejection Claims 1—4 and 6—20 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Final Act. 2-4. ANALYSIS In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Supreme Court reiterates an analytical two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (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 Corp., 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” such as an abstract idea. Id. If the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’—i.e., 3 Appeal 2016-008659 Application 12/900,816 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). In rejecting claims 1—4 and 6—20 under 35 U.S.C. § 101, the Examiner finds these claims are directed to an abstract idea of “managing a process request.” Final Act. 2. As to the first step of the Alice inquiry, Appellants contend the claims are not directed to an abstract idea. App. Br. 5—7; Reply Br. 2—10, 12. Appellants argue The pending claims are directed to a specific fulfillment workbench that is part of a distributed computer system, and that is programmed to monitor a fulfillment process, such as an order fulfillment process in a distributed order orchestration system, determine if the fulfillment process requires manual intervention, and transmit a process request to an external fulfillment system, via a fulfillment workbench, to modify the fulfillment process. Moreover, claims 1—4 and 6—20 do not preempt all systems and methods for performing the alleged abstract idea, as the claims are allowable over the prior art. App. Br. 5—6. We do not find Appellants’ contention persuasive. Instead, we find Appellants’ independent claims 1,16, and 19 are directed to a patent- ineligible abstract concept of managing a process request. All the steps recited in Appellants’ claims 1,16, and 19, including, for example: (i) “selecting one or more fulfillment lines of an order being processed by a fulfillment process that are identified as requiring manual intervention”; (ii) “transmitting a process request to one or more fulfillment systems, wherein the process request modifies the fulfillment process, and wherein the process 4 Appeal 2016-008659 Application 12/900,816 request comprises one or more line requests for the one or more selected fulfillment lines”; (iii) “displaying a first indication indicating that the process request is complete in a user interface, when the process request completes”; (iv) “displaying a second indication indicating that the process request is processing in the user interface, when a predetermined timeout period elapses before the process request completes”; (v) “displaying a status indicator that represents a status for each line request of the one or more line requests in the user interface”; (vi) “automatically updating the status for each pending line request of the one or more line requests, when each pending line request completes”; (vii) “monitoring the status for each pending line request of the one or more line requests, wherein the status for each pending line request of the one or more line requests is stored within a data store”; (viii) “transmitting an update to the user interface when the monitored status for each pending line request is automatically updated, wherein the update comprises an event published by an active data service that binds the user interface with the data store”; and (ix) “automatically updating the status indicator displayed in the user interface for each pending line request of the one or more line requests, in response to receiving the event published by the active data service” are abstract processes of collecting, storing, analyzing, and displaying information of a specific content. Independent claim 19, directed to a “fulfillment workbench” recites similar limitations in the context of (i) a memory configured to store instructions and (ii) a processor configured to execute the instructions to perform the collecting, storing, analyzing, and displaying of such information. Nevertheless, information as such is intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007). Information 5 Appeal 2016-008659 Application 12/900,816 collection and analysis, including when limited to particular content, 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., LLCv. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). We also are not persuaded by Appellants’ argument that the claims “do not preempt all systems and methods for performing the alleged abstract idea.” App. Br. 6. “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. Regarding the second step of the Alice inquiry, Appellants contend the claims recite “significantly more” than the abstract idea because they “recite improvements to the functioning of a specific fulfillment workbench that is part of a distributed computer system” and “they solve an Internet-centric problem with a claimed solution that is necessarily rooted in computer technology.” App. Br. 10. We do not find Appellants’ contentions persuasive. We find nothing in Appellants’ independent claims 1,16, and 19 that adds anything “significantly more” to transform the abstract concept of collecting, storing, analyzing, and displaying information into a patent-eligible application. Alice, 134 S. Ct. at 2357. We agree with the Examiner 6 Appeal 2016-008659 Application 12/900,816 [T]he claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment; the claims merely amount to the application or instructions to apply the abstract idea on a computer; and the claims amount to nothing more than requiring a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Final Act. 2—3; see also Ans. 4—9. As recognized by the Supreme Court, “the mere recitation of a generic computer cannot transform a patent- ineligible abstract idea into a patent-eligible invention.” See Alice, 134 S. Ct. at 2359 (concluding claims “simply instructing] the practitioner to implement the abstract idea of intermediated settlement on a generic computer” are not patent eligible); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715—16 (explaining claims merely reciting the abstract idea of using advertising as currency as applied to a particular technological environment of the Internet are not patent eligible); Accenture Glob. Servs., GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013) (concluding claims reciting “generalized software components arranged to implement an abstract concept [of generating insurance-policy- related tasks based on rules to be completed upon the occurrence of an event] on a computer” are not patent eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir. 2012) (“[s]imply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible”). 7 Appeal 2016-008659 Application 12/900,816 We are also not persuaded by Appellants’ argument that the claims recite “significantly more” because the Examiner has indicated that the claims are allowable over the cited prior art. App. Br. 8—9. We understand that claim limitations found to be novel and/or nonobvious can affect a patent-eligibility determination. Cf. Ariosa, 788 F.3d at 1377 (“For process claims that encompass natural phenomenon, the process steps are the additional features that must be new and useful.”) However, a finding of novelty or non-obviousness 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 ’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). Indeed, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” [Diamond v. Diehr, 450 U.S. 175, 188—89 (1981)] (emphasis added); see also Mayo, 132 S. Ct. at 1303-04 (rejecting “the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101”). Here, the jury’s general finding that Symantec did not prove by clear and convincing evidence that three particular prior art references do not disclose all the limitations of or render obvious the asserted claims does not resolve the question of whether the claims embody an inventive concept at the second step of Mayo/Alice. Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (first alteration in original) (footnote omitted). The question in step two of the Alice framework is not whether an additional feature is novel or nonobvious, but whether the implementation of the abstract idea involved “more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’” 8 Appeal 2016-008659 Application 12/900,816 Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (alteration in original) (quoting Alice, 134 S. Ct. at 2359). In that regard, Appellants have not shown the claimed features transform the abstract idea into patent-eligible subject matter. For the foregoing reasons, we sustain the Examiner’s rejection of claims 1—4 and 6—20 under 35 U.S.C. § 101. DECISION We affirm the Examiner’s rejection of claims 1—4 and 6—20 under 35 U.S.C. § 101. 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 9 Copy with citationCopy as parenthetical citation