Ex Parte PALLARI et al

Patent Trials and Appeals Board

Jul 8, 2019

11847686 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/847,686 08/30/2007
51206 7590 07/10/2019
Kilpatrick Townsend & Stockton LLP/Oracle
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
FIRST NAMED INVENTOR
Vincent Francis P ALLARI
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.
88325-732417 (041600US) 2540
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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):
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 VINCENT FRANCIS PALLARI and
SHAWN MICHAEL ABERNATHY1
Appeal2017-009985
Application 11/847,686
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the Non-
Final Office Action rejection of claims 1-7 and 22-35, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b). Oral arguments were presented on June 27, 2019.
SUMMARY OF THE DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is Oracle International
Corporation. See App. Br. 3
Appeal2017-009985
Application 11/847,686
THE INVENTION
The Appellants' claimed invention is directed to managing
transactions and particularly to routing employee transactions for approval
(Spec., para 2). Claim 1, reproduced below with the italics added, is
representative of the subject matter on appeal.
1. A method of routing transactions for approval,
compnsmg:
receiving, at a computer processor executing a particular
application, one or more communications from an employee device
that at least partly defines a transaction for approval, the transaction
corresponding to an employee having more than one job and reporting
to more than one manager;
creating, by the computer processor using the particular
application in response to receiving the transaction for approval, an
object of an approval framework, the approval framework supporting
a plurality of applications including the particular application and
providing routing of transactions to the applications for approval, the
object comprising logic to determine routing information for the
transaction, employee information identifying the employee, and job
information identifying which of the jobs of the employee correspond
to the transaction;
passing, by the computer processor, the created object of the
approval framework from the particular application to the approval
framework;
determining, by the computer processor using the approval
framework, an appropriate approval process definition based on the
employee information and the job information of the object of the
approval framework, wherein the approval process comprises
one or more of the following: stages, paths, steps, hierarchies, or
criteria parameters to route transactions that require approvals to one
or more of the plurality of applications;
calling a user-identifying object using at least part of the
employee information, the user-identifying object being accessible to
the approval framework, wherein the user identifying object executes
logic within the user-identifying object to perform a SQL query to
identify, from a database, an identifier of a user;
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Application 11/847,686
receiving, as a response to the call to the user-identifying
object, the identifier of the user, the user including a manager of the
more than one manager for the employee; and
routing, using the computer processor using the approval
framework, the transaction to a device corresponding to the user for
approval through one of the plurality of applications.
THE REJECTION
The following rejection is before us for review:
Claims 1-7 and 22-35 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 2
ANALYSIS
Re} ection under 3 5 U.S. C. § 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (App. Br. 16, 17; Reply Br. 2-4).
The Appellants argue further that the claim is "significantly more" than the
alleged abstract idea (App. Br. 13-15). The Appellants also argue that the
claim does not preempt all transaction routing methods (App. Br. 17, 18).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2-7; Ans. 2-13).
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 11/847,686
We agree with the Examiner. An invention is patent eligible if it
claims a "new and useful process, machine, manufacture, or composition of
matter." 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS
Bankint'l, 573 U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice,
573 U.S. at 219 ("On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010)
("Claims 1 and 4 in petitioners' application explain the basic concept of
hedging, or protecting against risk .... ").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981 )); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment."
Id. (internal citation omitted) ( citing Benson and Flook); see, e.g., id. at 187
("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a
fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP
§ 2106.05(a)-(c), (e)-(h)).
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception
that is not "well-understood, routine, conventional" in the
field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See Guidance.
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an '"inventive
concept'" sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
Here, the Examiner has determined that claim 1 is directed to the
concept of routing transactions for approval by evaluating an approval
process definition and employee, manager, and job information to determine
to whom to route the transaction for approval which is method of organizing
human activities and therefore an abstract idea (Ans. 3). We substantially
agree with the Examiner in this regard as claim 1 is directed to the steps of
in italics in the claim above. These steps are directed to the creating an
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approval framework for employee transactions and routing the transaction to
the user for approval. This is a method of organizing human activities and
an abstract idea. In Intellectual Ventures I LLC v. Capital One Financial
Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) it was held that collecting,
displaying, and manipulating data was directed to an abstract idea. See Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (collecting
information, analyzing it, and displaying results from certain results of the
collection and analysis was held to be an abstract idea).
Thus, we consider the claim to be directed to an abstract idea as
identified above.
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
"transform" the abstract nature of the claim into a patent-eligible application.
The claim does not improve computer functionality, improve another field or
technology, utilize a particular machine, or effect a physical transformation.
Rather, we determine that nothing in the claim imposes a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort to
monopolize the judicial exception.
For example, in claim 1 the steps of [ 1] "receiving ... one or more
communications from an employee device that at least partly defines a
transaction for approval"; [2] "creating ... an object of an approval
framework"; [3] "passing ... the created object of the approval framework
from the particular application to the approval framework"; [ 4] determining .
. . an appropriate approval process definition"; [5] calling a user-identifying
object using at least part of the employee information, the user-identifying
object being accessible to the approval framework, wherein the user
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identifying object executes logic within the user-identifying object to
perform a SQL query to identify, from a database, an identifier of a user;
[6] receiving ... the identifier of the user, the user; and [7] routing ... the
transaction to a device corresponding to the user for approval" are merely
conventional steps performed by a generic computer that do not improve
computer functionality. That is, these recited steps [ 1 ]-[7] "do not purport
to improve the functioning of the computer itself' but are merely generic
functions performed by a conventional processor. Likewise, these same
steps [ 1 ]-[7] listed above do not improve the technology of the technical
field and merely use generic computer components and functions to perform
the steps. Also, the recited method steps [l]-[7] above do not require a
"particular machine" and can be utilized with a general purpose computer,
and the steps performed are purely conventional. In this case the general
purpose computer is merely an object on which the method operates in a
conventional manner and does not provide "significantly more" to the claim
beyond a nominal or insignificant execution of the method. Id. Further, the
claim as a whole fails to effect any particular transformation of an article to
a different state in a manner that would render the claim "significantly
more" than the abstract idea. Id. The recited steps [ 1 ]-[7] fail to provide
meaningful limitations to limit the judicial exception and rather are mere
instructions to apply the method to a generic computer. Considering the
elements of the claim both individually and as "an ordered combination" the
functions performed by the computer system at each step of the process are
purely conventional. Each step of the claimed method does no more than
require a generic computer to perform a generic computer function.
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Further the claim fails to add a specific limitation beyond the judicial
exception that is not well-understood, routine, and conventional in the field.
Rather the claim uses well-understood, routine, and conventional activities
previously known in the art at a high level of generality to the judicial
exception. The Specification at paragraphs 35 and 44 for example describes
using conventional computer components such as general purpose personal
computers, cell phones, and commercially available operating systems in a
conventional manner. The claim specifically includes recitations for a
computer processor to implement the method but these computer
components are all used in a manner that is well-understood, routine, and
conventional in the field. The Appellants have not shown these claimed
generic computer components which are used to implement the claimed
method are not well understood, routine, or conventional in the field.
The Appellants in the Appeal Brief at page 16 have also cited
to Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show
that the claim is not abstract but the claims in that case were not similar in
scope to those presented here in contrast and were in contrast directed to a
self-referential data table.
The Appellants in the Appeal Brief at page 17 have also cited to
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016) but the claims in that case are distinguished from this case in being
directed to rules for lip sync and facial expression animation.
We note the point about pre-emption (App. Br. 17, 18). Although pre-
emption "might tend to impede innovation more than it would tend to
promote it, 'thereby thwarting the primary object of the patent laws'" (Alice,
134 S. Ct. at 2354 (quoting Mayo, 132 S. Ct. 1289, 1293 (2012)), "the
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absence of complete preemption does not demonstrate patent eligibility"
(Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015)). See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362-63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015)("[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.").
For these reasons, the rejection of claim 1 is sustained. The
Appellants have provided the same arguments for the remaining claims
which are drawn to similar subject matter and the rejection of these claims is
sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-7 and 22-35 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1-7 and 22-35 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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