Ex Parte Saimani et al

Patent Trials and Appeals Board

Jun 10, 2019

13956188 - (D) (P.T.A.B. Jun. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/956, 188
57956 7590
FBFK/Intuit
Robert Lord
9 Greenway Plaza
Suite 500
FILING DATE
07/31/2013
06/12/2019
HOUSTON, TX 77046
FIRST NAMED INVENTOR
Jayanth Saimani
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.
37202/549001; 137626US 9469
EXAMINER
NGUYEN, TIEN C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
06/12/2019 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):
rlord@fbfk.law
jhathaway@fbfk.law
docketing@fbfk.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY ANTH SAIMANI and ANSHU VERMA
Appeal2018-003107
Application 13/956,188 1
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 5, 6, 8-10, 12, 13, 15-17, 19, and 20, which
constitute all the claims pending in this application. Claims 4, 7, 11, 14, 18,
and 21 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest identified by Appellants is Intuit Inc. App. Br. 4.
Appeal2018-003107
Application 13/956,188
STATEMENT OF THE CASE
Introduction
Appellants' described and claimed invention relates to monitoring a
method for configuring a business management application (BMA) for
managing financial aspects of a business entity. See Spec. ,r 2. 2
Claim 1 is representative and reads as follows:
1. A method for configuring a business management
application (BMA) for managing financial aspects of a business
entity, comprising:
obtaining a business name of an unconfigured user of the
BMA, wherein the unconfigured user is associated with the
business entity;
retrieving, by a computer processor, a search result from
an Internet search engine using the business name as a search
keyword;
translating, by the computer processor, the search result
from a first language into a second language;
analyzing, by the computer processor, the search result to
identify a business type of the unconfigured user by:
determining that the search result includes a
hyperlink to a page of an online social network used by the
unconfigured user,
in response to determining that the search result
includes the hyperlink to the page of the online social
network, retrieving, utilizing an application programming
interface that is associated with the online social network,
content from a field of structured data of the page based
on a pre-determined format of the structured data, wherein
2 Our Decision refers to the Final Office Action mailed November 4, 2016
("Final Act."), Appellants' Amended Appeal Brief filed July 12, 2017
("App. Br."), the Examiner's Answer mailed November 2, 2017, and the
original Specification filed July 31, 2013 ("Spec.").
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Application 13/956,188
the retrieved content include the business type of the
unconfigured user, and
extracting the business type from the retrieved
content; and
generating, by the computer processor, a configuration
setting enabling a module of the BMA based on the business
type, wherein the configuration setting is used by the BMA to
generate a customized result specific to the business type;
presenting, in response to generating the configuration
setting, a message confirming the module is enabled.
App. Br. 20 (Claims App 'x).
Rejection on Appeal
Claims 1-3, 5, 6, 8-10, 12, 13, 15-17, 19, and 20 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
ANALYSIS
Applicable Law
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
"Laws of nature, natural phenomena, and abstract ideas are not patentable."
Alice Corp. v. CLS Banklnt'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is "directed to one of those patent-ineligible
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concepts." Alice, 573 U.S. at 217. If so, we then examine "the elements of
[the] 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, 573 U.S. at 217 ( quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an "inventive concept," "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, 573 U.S. at 217-18 ( alteration in original) ( quoting
Mayo, 566 U.S. at 72-73).
The Office recently published revised guidance on the application of
35 U.S.C. § 101. USPTO's January 7, 2019 Memorandum, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 ("Revised
Guidance"). Under the Revised Guidance, we first look to whether the
claim recites: any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as fundamental economic practices, or mental
processes); and additional elements that integrate the judicial exception into
a practical application. See Revised Guidance 54--55. Only if a claim
recites a judicial exception and does not integrate that exception into a
practical application, do we then look to whether the claim adds a specific
limitation beyond the judicial exception that are not "well-understood,
routine, conventional" in the field. See Revised Guidance 56.
Appellants' Arguments
Appellants argue the claims do not describe a concept of organizing,
storing, and transmitting ideas. See App. Br. 11-12. Instead, as argued by
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Appellants, the claims describe using a search engine to retrieve a hyperlink
to a page on an online social network and then extract from the retrieved
online social network page a business type which is then used to configure a
business management application. See App. Br. 12. Appellants additionally
argue that the Examiner's reliance on Cyberfone Systems, LLC v. CNN
Interactive Group, Inc., 558 F. App'x 988 (Fed. Cir. 2014) is not proper
because the Cyberfone decision is a non-precedential decision, and the facts
of the present appeal do not match the facts at issue in Cyberfone. See App.
Br. 11-13. Appellants further argue the Examiner ignores the character of
independent claim 1 as a whole, and that claim 1 is directed toward an
improvement with respect to specific computer functionality, similar to the
claims in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). App. Br. 13. As argued by Appellants, the claims describe
a software improvement to a computer's configurability and therefore falls
within the holding from McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016). See App. Br. 13-14.
Appellants further argue claim 1 includes an inventive concept
sufficient to transform any alleged abstract idea found in the claims into
patent-eligible subject matter. See App. Br. 14. More specifically,
Appellants argue claim 1 provides a claimed solution rooted in computer
technology to overcome a technical problem of configuring a business
management application (BMA), similar to the claims in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). See App. Br. 15-
16. Appellants additionally argue, even assuming arguendo that the
individual elements of claim 1 constitute routine and conventional functions
performed by a computer, that the combination of the aforementioned
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elements fall within the holding of Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), where an inventive
concept was found in a non-conventional and non-generic arrangement of
known and conventional elements. See App. Br. 16-17.3
Step One of Alice
Prong 1 : Whether Claims Recite an Abstract Idea
The Examiner found claim 1 recites the steps of obtaining a business
name of an unconfigured user of a BMA, using the business name to
retrieve, translate, and analyze a search result to identify a business type,
generating a configuration setting using the business type and presenting a
message based on the generated configuration setting. See Final Act. 3; see
also Ans. 8. As found by the Examiner, the aforementioned steps describe a
concept which relates to one of the concepts identified as abstract ideas by
the courts, such as using categories to organize, store and transmit
information. See Final Act. 3 (citing Cyberfone, 558 F. App'x at 988); see
also Ans. 8. The Examiner further found independent claims 8 and 15 recite
limitations substantially similar to claim 1, and, thus, were found to be
directed to abstract ideas based on the same reasoning regarding claim 1.
See Final Act. 4.
Upon review of the Examiner's findings in support of rejection of the
aforementioned claims under 35 U.S.C. § 101, we conclude the Examiner's
findings are not sufficient to establish that the claims recite an abstract idea
that falls within one of the three enumerated categories of abstract ideas (i.e.,
3 Appellants also proffer additional arguments that claims 5, 12, and 19 are
separately patent-eligible. See App. Br. 17-18. We conclude it is not
necessary to reach these arguments in order to resolve the appeal in light of
Appellants' patent-eligibility arguments regarding claim 1.
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mathematical concepts, certain methods of organizing human activity, or
mental processes). However, we note that claim 1 recites "configuring a
business management application (BMA) for managing financial aspects
of a business entity," and that claims 8 and 15 recite similar elements. App.
Br. 20-21, 23 ( emphasis added). Thus, we conclude claims 1, 8, and 15
recite a fundamental economic practice, which falls within the "certain
methods of organizing human activity" category of abstract ideas
enumerated in the Revised Guidance. Further, claim 1 also recites, inter
alia, "obtaining a business name of an unconfigured user of [a] BMA,
wherein the unconfigured user is associated with the business entity,"
"generating ... a configuration setting ... based on the business type,
wherein the configuration setting is used by the BMA to generate a
customized result specific to the business type," and "presenting, in response
to generating the configuration setting, a message," and claims 8 and 15
recite similar elements. App. Br. 20-21, 23. Thus, we also conclude claims
1, 8, and 15 recite a method of managing interactions between people, which
also falls within the "certain methods of organizing human activity"
category of abstract ideas enumerated in the Revised Guidance. Therefore,
we conclude that claims 1-3, 5, 6, 8-10, 12, 13, 15-17, 19, and 20 recite an
abstract idea.
Prong 2: Whether Claims Integrate an Abstract
Idea into a Practical Application
The Examiner found claim 1 recites the additional limitations of an
Internet search engine and a computer processor. See Final Act. 3; see also
Ans. 8. As found by the Examiner, both the Internet search engine and
computer processor are recited at high levels of generality, and, thus, are
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generic computer components performing well-known and routine functions,
which do not amount to significantly more than the identified abstract idea,
when viewed individually or in combination. See Final Act. 3--4; see also
Ans. 8-9. The Examiner further found claims 8 and 15 recite limitations
substantially similar to claim 1, and, thus, were found not to amount to
significantly more than the identified abstract idea based on the same
reasoning regarding claim 1. See Final Act. 4.
We are, however, persuaded by Appellants' argument that claim 1
represents an improvement to the functioning of a computer. More
specifically, we conclude that claim 1 causes a computer to automatically
generate a business type based on a received business name by:
(a) retrieving a search result from an Internet search engine using the
received business name as a search keyword; (b) determining that the search
result includes a hyperlink to a page of an online social network;
( c) retrieving content from a field of structured data of the page based on a
pre-determined format of the structured data; and ( d) extracting the business
type from the retrieved content. In this regard, we agree with Appellants
that claim 1 provides a claimed solution rooted in computer technology to
overcome a technical problem of configuring a business management
application (BMA), similar to the claims found eligible in DDR Holdings.
App. Br. 15-16. Thus, while claim 1 recites an abstract idea, we conclude
claim 1 is not directed to the recited abstract idea, and instead is directed to a
practical application of the recited abstract idea. We further conclude that
claims 8 and 15 are also not directed to the recited abstract idea, and instead
are directed to practical applications of the recited abstract idea, for similar
reasons.
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In light of the above, we conclude that claims 1-3, 5, 6, 8-10, 12, 13,
15-17, 19, and 20 integrate the recited abstract idea into a practical
application. Accordingly, we do not sustain the rejection of the
aforementioned claims under 3 5 U.S. C. § 1 01.
DECISION
We reverse the Examiner's rejection of claims 1-3, 5, 6, 8-10, 12, 13,
15-17, 19, and 20 under 35 U.S.C. § 101.
REVERSED
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