Ex Parte MORAN

Patent Trial and Appeal Board

Nov 6, 2018

12037833 (P.T.A.B. Nov. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/037,833 02/26/2008
51206 7590 11/08/2018
Kilpatrick Townsend & Stockton LLP/Oracle
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
FIRST NAMED INVENTOR
Seamus MORAN
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.
88325-733061(042700US) 4544
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
11/08/2018 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):
ipefiling@kilpatricktownsend.com
oraclepatentmail@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAMUS MORAN
Appeal2017-002739
Application 12/037,833
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Seamus Moran (Appellant)2 seeks review under 35 U.S.C. § 134 of a
final rejection of claims 26-35, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed October 10, 2015) and Reply Brief ("Reply Br.," filed December
6, 2016), and the Examiner's Answer ("Ans.," mailed October 6, 2016), and
Final Action ("Final Act.," mailed April 30, 2015).
2 The real party in interest is Oracle International Corporation. App. Br. 3.
Appeal2017-002739
Application 12/037 ,833
The Appellant invented a system of accounting, and in particular a
system for tracking performance obligations. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 31, which is reproduced below (bracketed matter and some
paragraphing added).
31. A method of managing performance obligations, the
method comprising:
[ 1] maintaining a performance obligation database that stores
data related to performance obligations;
[2] storing, by the performance obligation database, a first table
and a second table, wherein the first table comprises a first row
associated with a performance obligation, the first row
compnsmg:
a unique identifier of the performance obligation;
release criteria defining logic rules for how the
performance obligation is to be released;
a valuation total indicating the original value of the
performance obligation;
a valuation-satisfied total indicating an amount of the
performance obligation that has been released;
and
a valuation-remaining total indicating an amount of the
performance obligation that has yet to be released;
[3] maintaining a first server that manages the performance
obligation database and populates and modifies entries in the
performance obligation database through interactions with a
plurality of legacy systems comprising an invoicing system, a
delivery system, a costing system, a supply management
system, an ordering system, a customer-management system,
and a general-ledger system;
accessing, by the first server, the first row in the first table;
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[ 4] extracting, by the first server, a subset of the data from the
first row of the first table;
[5] generating, by the first server, a second row in the second
table, the second row comprising:
the unique identifier of the performance obligation;
a debit value indicating how much of the performance
obligation has been satisfied;
and
a credit value indicating how much of the performance
obligation remains to be satisfied;
[6] generating, by the first server, an electronic journal entry
from the second row to be posted to the general-ledger system;
and
[7] sending, by the first server, the electronic journal entry to
the general-ledger system for posting.
Claims 26-35 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
ANALYSIS
Method claim 31 recites maintaining a performance obligation database,
storing two tables, maintaining a server that manages the performance
obligation database, accessing a table row, extracting data from that row,
generating a second row, and generating and sending a journal entry. Thus,
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Application 12/037 ,833
claim 31 recites maintaining tables in a database server, and retrieving,
analyzing, modifying, and transmitting data from and to the database. None
of the limitations recite implementation details for any of these steps, but
instead recite functional results to be achieved by any and all possible
means. Data reception, analysis and modification, and transmission are all
generic, conventional data processing operations to the point they are
themselves concepts awaiting implementation details. The sequence of data
reception-analysis-modification-transmission is equally generic and
conventional. The ordering of the steps is therefore ordinary and
conventional. The remaining claims merely describe parameters used for the
operations and data used for the tables and journal entries, with no
implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] 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. [The Court] described step two 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 Corp. Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
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Application 12/037 ,833
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to
the abstract idea of tracking performance obligation values ( as
shown in the recited steps of keeping and updating debit/credit
values in a table), which involves fundamental accounting
principles and mathematical relationships. The invention is
similar to electronic bookkeeping found to be non-statutory in
Alice, and tracking performance obligations is a practice
already known in the art of accounting
Final Act. 3.
Although the Court in Alice made a determination as to what the claims
were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 31 recites that it is a method of managing
performance obligations. The steps in claim 31 result in generating
accounting table records and accounting journal entries. The Specification
at paragraph 1 recites that the invention relates to systems of accounting, and
in particular to a system for tracking performance obligations. Thus, all this
evidence shows that claim 3 1 is directed to accounting by tracking
performance obligations, i.e. accounting. This is consistent with the
Examiner's finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v. Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of
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accounting is a fundamental economic practice long prevalent in our system
of commerce. The use of accounting is also a building block of ingenuity in
tracking performance generally. Thus, accounting, like hedging, is an
"abstract idea" beyond the scope of§ 101. See Alice, 134 S. Ct. at 23 5 6.
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
risk hedging in Bilski and the concept of accounting at issue here. Both are
squarely within the realm of "abstract ideas" as the Court has used that term.
See Alice, 134 S. Ct. at 2357.
Further, claims involving only data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent-ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 31, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 31 is directed to the abstract idea of receiving, analyzing, and
transmitting data.
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The remaining claims merely describe parameters used for the operations
and data used for the tables and journal entries. We conclude that the claims
at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 134 S. Ct. at 2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, analyze, modify, and transmit data amounts to
electronic data query and retrieval----one of the most basic functions of a
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computer. The limitation of maintaining a server is not an active step, but a
recitation of a role, viz. a server custodian, which is of no import, as database
servers are generic computer equipment. All of these computer functions
are well-understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp. v. Alstom S.A., supra. Also see In re Katz
Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "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." SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant's method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification-transmission is equally generic and conventional or otherwise
held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction),
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (sequence of data retrieval, analysis, modification,
generation, display, and transmission), Two-Way Media Ltd. v. Comcast
Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
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(sequence of processing, routing, controlling, and monitoring). The ordering
of the steps is therefore ordinary and conventional.
Viewed as a whole, Appellant's method claims simply recite the concept
of accounting as performed by a generic computer. To be sure, the claims
recite doing so by advising one to account for performance obligations by
reading data from one system and update accounting tables and journal
entries as the obligations change. But this is no more than abstract
conceptual advice on the parameters for such accounting and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 16+ pages of Specification do
not bulge with disclosure, but only spell out different generic equipment3
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
accounting under different scenarios. They do not describe any particular
improvement in the manner a computer functions. Instead, the claims at
issue amount to nothing significantly more than an instruction to apply the
abstract idea of accounting using some unspecified, generic computer.
3 The server "can be general purpose computers, specialized server
computers (including, merely by way of example, PC servers, UNIX servers,
mid-range servers, mainframe computers rack-mounted servers, etc.), server
farms, server clusters, or any other appropriate arrangement and/ or
combination." Spec. para. 44.
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Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art."'
Alice., 134 S. Ct. at 2360.
We are not persuaded by Appellant's argument that
The claims implement the abstract idea of the IASB
[International Accounting Standards Board] [ accounting for
revenue recognition] proposal in one specific embodiment
specially tailored to interface with an existing ERM financial
system. The claims introduce a new data structure ( the "first
table") that is stored on a new "performance obligation
database" and managed by a new "first" server that is separate
from the existing ERM hardware. The new server includes a
process that communicates with the existing ("legacy")
systems, such as the invoicing system, the costing system, the
ordering system, and so forth. The process on the new server
extracts data from the first table according to logic rules stored
in the release criteria field and generates an entry in a second
table in a new database that translates the obligation valuations
into debits and credits.
App. Br. 5. First, the claims recite automation of the clerical support
operations for revenue recognition rather than the proposal itself, as an
accounting standard is just that, a standard applied by the professional
judgment of accountants, which by definition, cannot be implemented by
others than humans. Second, there is nothing new about a table as a data
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structure, or about a database server separate from the processes that make
database calls. Data extraction according to query criteria is fundamental
data processing operation. Translating accounting data into debits and
credits is as old as bookkeeping. Thus, the claims recite nothing more than
automating the known manual process of supporting the application of
accounting standards to create bookkeeping records using conventional
database technology.
We are not persuaded by Appellant's argument that
The claims improve the functioning of the existing ERM
computer system by providing a new server/database that
isolates performance obligation tracking from the existing
computer systems. Forcing one of the existing systems (e.g.,
delivery, invoicing, supply management, general ledger, etc.) to
monitor and account for performance obligations would
necessarily require more memory, processing power, and
bandwidth from the existing systems. In the real world, the
general ledger, supply management, and invoicing systems are
stretched to their limits handling their own day-to-day
transactions. Tracking performance obligations requires
interactions with at least eight different ERM systems and
constant evaluation of release criteria logic. Appellant's FIG. 2.
Not only would these interactions necessarily require scarce
bandwidth and processing power from an existing system, but
no single existing system is capable of communicating with all
of the other existing systems.
App. Br. 6. Appellant essentially contends that distributed processing
provides the benefits, but Appellant does not contend he invented distributed
processing, which is at least half a century old. The alleged benefits all stem
from the use of an additional computer per se.
The use and arrangement of conventional and generic computer
components recited in the claims-such as a database, user
terminal, and server- do not transform the claim, as a whole,
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into "significantly more" than a claim to the abstract idea itself.
"We have repeatedly held that such invocations of computers
and networks that are not even arguably inventive are
'insufficient to pass the test of an inventive concept in the
application' of an abstract idea."
Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed.
Cir. 2017) ( citations omitted).
We are not persuaded by Appellant's argument that
the independent claims go beyond merely "receiving and
storing" dollar values. The independent claims recite extracting
a subset of data from the first table and translating that
information into a data format that would be recognized by the
existing general ledger system. As described above, this
translation operation allows the existing general ledger system
to be reused without requiring update patches or redesigns.
This novel data transformation operation qualifies as
"significantly more" under the standard set in Research Corp.,
and thus the claims are patent-eligible.
App. Br. 7 ( citing Research Corp. Technologies, Inc. v. Microsoft Corp.,
627 F.3d 859 (Fed. Cir. 2010)). Initially, translation of data is among the
most frequent uses of data processing, and indeed, accounting systems in
general. Translation as such is the epitome of abstraction.
As to Research Corp.,
[ t ]he principal precedent relied on by Bancorp in arguing for
patent eligibility is Research Corp. In that case, the asserted
patents claimed processes for enabling a computer to render a
halftone image of a digital image by comparing, pixel by pixel,
the digital image against a two-dimensional array called a
"mask." 627 F.3d at 863. We reversed the district court's grant
of summary judgment that the asserted claims were invalid
under § 101, concluding that the processes were not "so
manifestly" abstract as to override the statutory language of
§ 101. Id. at 868. In so holding, we observed that the claimed
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"invention presents functional and palpable applications in the
field of computer technology." Id. We also noted that
"inventions with specific applications or improvements to
technologies in the marketplace are not likely to be so abstract"
as to be ineligible for patent protection. Id. at 869.
Research Corp. is different from the present case in two critical
respects. First, the claimed processes in Research Corp. plainly
represented improvements to computer technologies in the
marketplace. For example, as compared to the prior art, the
"inventive mask produce[ d] higher quality halftone images
while using less processor power and memory space." Id. at
865. No such technological advance is evident in the present
invention. Rather, the claims merely employ computers to
track, reconcile, and administer a life insurance policy with a
stable value component-i.e., the computer simply performs
more efficiently what could otherwise be accomplished
manually. Bancorp, 771 F.Supp.2d at 1065.
Second, the method in Research Corp., which required the
manipulation of computer data structures ( the pixels of a digital
image and the mask) and the output of a modified computer
data structure (the halftoned image), was dependent upon the
computer components required to perform it. See CyberSource,
654 F.3d at 1376 ("[T]he method [in Research Corp.] could
not, as a practical matter, be performed entirely in a human's
mind."). Here, in contrast, the computer merely permits one to
manage a stable value protected life insurance policy more
efficiently than one could mentally. Using a computer to
accelerate an ineligible mental process does not make that
process patent-eligible.
Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266,
1278-79 (Fed. Cir. 2012). Analogous to the claims in Bancorp, the instant
claims merely employ computers to track, reconcile, and administer an
accounting entry-i. e., the computer simply performs more efficiently what
could otherwise be accomplished manually, and the computer merely
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permits one to manage a recording of revenue according to international
standards more efficiently than one could mentally.
We are not persuaded by Appellant's argument that
the non-technical problem of how to account for performance
obligations was previously solved by the IASB white paper.
The non-technical solution is tracking incremental recognition
of revenue. The problem solved by the claims is the technical
problem of how to integrate the tracking of partial performance
of obligations into an existing ERM system. As described
above, instead of redesigning the entire existing ERM system,
the new server/database configuration provides the advantage
of being used as an add-on to integrate performance obligations
into the existing journal entry data flow. While new ERM
systems can integrate performance obligation management
directly into the general ledger, the system of the claims
represents a patch that can be used until a customer upgrades its
existing ERM system. In other words, this provides a
technology improvement such that the usable life span of legacy
ERM systems can be extended without requiring a complete
redesign or system upgrade.
App. Br. 8. The alleged solution is abstract conceptual advice to insert some
translation process into the accounting flow. There is nothing technological
about doing so, the advice is merely applied in a computer context.
To be sure, the '379 patent claims the wireless delivery
of regional broadcast content only to cellphones. In that sense,
the claims are not as broad as the abstract idea underlying them,
which could apply to the delivery of out-of-region content to
any electronic device. That restriction, however, does not alter
the result. All that limitation does is to confine the abstract idea
to a particular technological environment-in this case, cellular
telephones. The Supreme Court and this court have repeatedly
made clear that merely limiting the field of use of the abstract
idea to a particular existing technological environment does not
render the claims any less abstract.
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Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed.
Cir. 2016). Translation is routine in both manual and automated accounting
systems, as accounting itself is the translation of business operations into
financial terms.
We are not persuaded by Appellant's argument that the claims do not
preempt the use of an abstract idea. App. Br. 8. "Where a patent's claims
are deemed only to disclose patent ineligible subject matter under the Mayo
[/Alice] framework, as they are in this case, preemption concerns are fully
addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015).
CONCLUSIONS OF LAW
The rejection of claims 26-35 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
DECISION
The rejection of claims 26-35 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.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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