Ex Parte Mela

Patent Trial and Appeal Board

Dec 27, 2018

11177483 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/177,483 07/07/2005
153728 7590 12/31/2018
Tarolli, Sundheim, Covell & Tummino, LLP and
Oracle International Corporation
1300 East Ninth Street
Suite 1700
Cleveland, OH 44114
FIRST NAMED INVENTOR
JohnM. Mela
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.
ORCL-027441 US CON 4833
EXAMINER
CHEIN, ALLEN C
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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):
rkline@tarolli.com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN M. MELA 1
Appeal2017-009306
Application 11/177,483
Technology Center 3600
Before CARL W. WHITEHEAD JR., JEREMY J. CURCURI, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a non-final rejection of
claims 56-64 and 66-69, which constitute all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Oracle International Corp. as the real party in interest.
App. Br. 2.
Appeal2017-009306
Application 11/177,483
SPECIFICATION
The claimed invention relates to a method for eliminating bounceback
behavior while configuring online products. Spec. ,r 1. The Specification
explains that, when configuring a product online, a user is typically
presented with a number of components or features that can be selected. Id.
at ,r 2. According to the Specification, however, some features that can be
selected are not compatible with other features that can also be selected. For
example, a 500 MHz processor may be compatible with a 10 and 20 GB
(gigabyte) disk drive, but not with a 30 GB disk drive. Id. at ,r 5. In
contrast, a 700 MHz processor may be compatible with the 30 GB disk
drive, but not with a 10 or 20 GB disk drive. Id. at ,r 6.
The Specification explains that, in a typical online configuration
system, incompatible selections may be eliminated or greyed out after a user
has made a first selection. Spec. ,r 4. For example, if a user selects a 500
MHz processor, the system may grey out or eliminate the option of a 30GB
disk drive: an intended result. Id. In some systems, however, the
elimination of the 30 GB disk drive will, in tum, eliminate the option of the
700 MHz processor because the 700 MHz processor requires the 30 GB disk
drive. Id. at ,r,r 5---6. At which point, the system will no longer display the
700 MHz processor as an option even though it is still an option. Id. The
700 MHz processor is greyed out by bounceback propagation of constraints
caused by selecting the 500 MHz processor. Id. The Specification is
directed to solving this problem. Id. at ,r 9.
Claim 56, which is illustrative of the claimed invention, is reproduced
below:
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Application 11/177,483
56. A method comprising:
receiving, at a computer system, a set of one or more
constraints imposed upon a configuration problem having a
plurality of variables and a plurality of domain members
associated to the plurality of variables, the set of constraints
defining a first condition between a first domain member of a
first variable in the plurality of variables and a first domain
member of a second variable in the plurality of variables, the set
of conditions further defining a second condition between a
second domain member of the first variable and a second
domain member of the second variable;
setting a bounce back detection bit vector for each of the
plurality of domain members, wherein the bounceback
detection bit vector includes one bit assigned to each of the
plurality of variables to indicate if the domain member is
compatible with the assigned variable based on the set of
constraints, wherein a first configuration page is configured to
display the plurality of domain members as selectable options
on a display;
(a) receiving, at the computer system from a remote
computer via a network, a selection of the first domain member
of the first variable in the plurality of variables made via the
first configuration page displaying the plurality of domain
members of the first variable;
(b) determining, with a processor of the computer
system, a configuration state for the configuration problem
based on propagating the set of constraints associated with the
selection to the bounceback detection bit vectors of each non-
selected domain member by setting bit values in the
bounceback detection bit vectors to reflect the selection of the
first domain member of the first variable, wherein the bit values
from the bounceback detection bit vectors indicate which non-
selected domain members are eliminated from the display of the
first configuration page as being incompatible with the
selection;
( c) determining, with the processor of the computer
system, if a bounceback is detected for an eliminated domain
member, by determining if the bounce back detection bit vector
of the eliminated domain member has only one bit set and the
one bit set is assigned to a variable that is associated with the
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Application 11/177,483
eliminated domain member, wherein if the bounceback is
detected, then reinstating the eliminated domain member as
being selectable on the display;
( d) modifying, with the processor of the computer
system, the configuration state to include the eliminated domain
member as being selectable on the display; and
( e) generating, with the processor of the computer system
and transmitting to the remote computer, a second configuration
page for displaying the plurality of domain members as
selectable or eliminated based on the modified configuration
state.
REJECTION
Claims 56-64 and 66-69 stand rejected under 35 U.S.C. § 101 as
directed to patent ineligible subject matter. 2 Non-Final Act. 4--5.
ANALYSIS
In Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208
(2014), the Supreme Court reiterated an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (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, 573 U.S. at 217.
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 eligible subject matter, the inquiry ends.
Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
2 In the Non-Final Action, the Examiner rejected claims 54--64 and 66-69
under 35 U.S.C. § 112, second paragraph. Non-Final Act. 6. In the Answer,
however, the Examiner withdrew that rejection. Ans. 6.
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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." Alice, 573 U.S. at 217 ( quoting Mayo, 566 U.S. at 78). In
other words, the second step is to "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."' Id. ( citing Mayo, 566 U.S. at 72-73).
In the Non-Final Action, the Examiner determines that claims 56-64
and 66-69 are directed to ideas that are analogous to those that have been
found to be abstract in Cyberfone Systems, LLC v. CNN Interactive Group,
Inc., 558 Fed. Appx. 988 (Fed. Cir. 2014); SmartGene Inc v Advanced
Biological Laboratories SA, 555 Fed. Appx. 950 (Fed. Circ. 2014); Buysafe,
Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014), and Planet Bingo LLC
v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014). Non-Final Act. 5.
The Examiner further determines that the recitation of a bit vector does not
transform the claims into patent eligible subject matter. Id.
Alice Step One
Appellant argues claims 56-64 and 66-69 are not directed to an
abstract idea because they recite using a bounceback detection bit vector to
detect bounceback and reinstating eliminated domain members based on that
detection. App. Br. 10. Appellant further asserts that the recited use of a bit
vector is a technical solution because a bit vector only exists in computer
structures and its use by Appellant is also an improvement in the
technological process of online product configuration. Id. at 12. Further,
Appellant argues that claim 56 recites additional elements that reinstate and
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redisplay previously eliminated domain members using bounceback
detection bit vectors, which improves online product configuration. Id. The
Examiner responds that Appellant's claims are directed to a constraint
reasoning problem, which is well known problem in academia, purely as
field of study, not tied to any technological environment. Ans. 2. In reply,
Appellant argues that whether claim 56 is directed to a well-known problem
is irrelevant under 35 U.S.C. § 101. Reply 4.
We agree with the Examiner concerning step one. The Examiner has
set forth a basis why the claims are directed to an idea that is abstract and
unconnected to any particular technological solution: constraint reasoning.
Ans. 2. We further agree that constraint reasoning is analogous to ideas that
the Federal Circuit has determined to be abstract, including in Cyberfone,
where the Federal Circuit determined that the "well-known concept of
categorical storage, i.e., the idea of collecting information in classified form,
then separating and transmitting that information according to its
classification, is an abstract idea ... " Cyberfone, 558 Fed. Appx. at 992.
Constraint reasoning is similarly analogous to the transaction performance
guaranty addressed in BuySafe because both constraint reasoning and a
transaction performance guaranty are directed to business issues,
unconnected to any particular technology (e.g., not database operations,
engines). BuySafe, 765 F.3d at 1355. Although Appellant argues that online
product configuration is a technical field, we do not agree. App. 12. By the
time of Appellant's filing, online product configuration had become a
fundamental economic practice and, thus, is not by itself patent eligible
subject matter. Ans. 2; Alice, 134 S. Ct. at 2356.
We also do not agree with Appellant's argument that the recitation of
a bit vector and the detection ofbounceback is necessarily rooted in
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computer technology because a bit vector only exists in a computer. App.
Br. 14--15. The claims in Alice also recited elements that only existed in or
utilized computers: "As stipulated, the claimed method requires the use of a
computer to create electronic records, track multiple transactions, and issue
simultaneous instructions; in other words, ' [ t ]he computer is itself the
intermediary.'" Alice, 573 U.S. at 224. Yet, even with those elements, the
claims in Alice were not directed to a technological invention. Id. (rejecting
the concept that "the determination of patent eligibility would 'depend
simply on the draftsman's art,"' quoting Parker v. Flook, 437 U.S. 584, 593
(2014)). Here, the claims merely recite the use of bit vectors. They do not
recite any mechanism by which bit vectors solve a particular technological
problem (e.g., creating better computer efficiency), nor has Appellant
presented any evidence that they do. Determining that the mere recitation of
this aspect of computer technology, a bit vector, would be sufficient to
render the claims patent eligible would rest the determination of patent
eligibility on the draftsman's art, which we cannot do.
Alice Step Two
Appellant argues that a bit vector is unique to computer technology
and thus Appellant's use of a bit vector is an inventive concept sufficient to
transform the nature of the claims. App. Br. 15; Reply Br. 16. Appellant
also argues that the claims do not preempt all methods of bounce back
detection. App. Br. 16. We are not persuaded by either argument.
First, as discussed above, the mere recitation of a bit vector does not
mean that recitation is technological and is, thus, not by itself sufficient to
transform Appellant's claims into eligible subject matter. Second, the
allegedly narrow preemptive effects of the claims do not render them patent
eligible because although "preemption may signal patent ineligible subject
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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).
Accordingly, we sustain the rejection of claims 56-64 and 66-69
under 35 U.S.C. § 101.
CONCLUSION
We affirm the rejection of claims 56-64 and 66-69 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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