Ex Parte Texier et al

Patent Trial and Appeal Board

Nov 30, 2018

13346396 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/346,396 01/09/2012 Emmanuel Texier
42425 7590 12/04/2018
HICKMAN PALERMO BECKER BINGHAM/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
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.
50277-3895 1638
EXAMINER
CHEN, GEORGE YUNG CHIER
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMMANUEL TEXIER, GIREESH MALAKSAMUDRA,
JENS KAEMMERER, and LOUIS PIRO JR.
Appeal2017-006950 1
Application 13/346,3962
Technology Center 3600
Before BIBHU R. MOHANTY, BRADLEY B. BAY AT, and
MATTHEWS. MEYERS, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-24, which are all the pending claims in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our Decision references Appellants' Supplemental Appeal Brief ("App.
Br.," filed Jan. 12, 2017), Reply Brief ("Reply Br.," filed Mar. 31, 2017), the
Examiner's Answer ("Ans.," mailed Feb. 3, 2017), and Final Office Action
("Final Act.," mailed Apr. 28, 2016).
2 Appellants identify "Oracle International Corporation" as the real party in
interest. App. Br. 2.
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Application 13/346,396
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants' "invention relates to rating an event that reflects an
amount of usage of a service or product by a customer." Spec. ,r 1.
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A method comprising:
generating, for each rate plan of a plurality of rate plans, a rate
plan functional object comprising multiple functional objects;
receiving a particular event, associated with a customer with a
particular rate plan, at an event processing computing device;
in response to receiving the particular event:
extracting data from the particular event;
identifying, based on the particular rate plan, a particular
rate plan functional object that comprises a plurality of
functional objects, wherein each functional object in the
plurality of functional objects contains logic that is executed
when said each functional object is executed;
executing the particular rate plan functional object,
wherein executing the particular rate plan function object
comprises:
executing, based on the data extracted from the
particular event, a first functional object of the plurality
of functional objects to generate a first result;
identifying, based on the first result, a second
functional object of the plurality of functional objects;
executing the second functional object to generate
a second result; and based on the second result,
determining an amount to charge the customer; and
updating, based on the amount, an account
associated with the customer.
App. Br. 36 (Claims App.).
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Rejections3
Claims 1-24 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 2Iand 23 stand rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as indefinite.
Claims 1--4, 8, 10, 11-14, 18, 20-21, and 23 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Crimi et al. (US 2008/0014904 Al,
pub. Jan. 17, 2008) ("Crimi"), Ye et al. (US 7,233,918, iss. June 19, 2007)
("Ye"), and Williamson (US 2011/0055761 Al, pub. Mar. 3, 2011).
Claims 5-7 and 15-17 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Crimi, Ye, Williamson, and Metzger et al. (US
2010/0169234 Al, pub. July 1, 2010) ("Metzger").
Claims 9 and 19 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Crimi, Ye, Williamson, and Black (US 7,117,172 B 1, iss.
Oct. 3, 2006).
ANALYSIS
35 us.c. § 101
Legal Standard
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, we
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,
3 Claims 22 and 24 are indicated as allowable over the prior art of record.
Final Act. 14.
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we 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 Comi] 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 lnt'l, 134 S. Ct. 2347, 2355 (2014)
(citing and quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012)).
Appellants argue claims 1-24 as a group. App. Br. 8-23; Reply Br.
2-4. We select independent claim 1 as representative for this group. Thus,
claims 2-24 stand or fall with claim 1. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
Alice Step One
In contesting the rejection under 35 U.S.C. § 101, Appellants
acknowledge that the Examiner's identification of the "abstract idea of
billing customer[ s ]" as set forth in the final rejection 4 satisfies "prima facie
burden 1" (App. Br. 9), but argue the rejection is "deficient because 'billing
[a] customer' does not qualify as an abstract idea." Id. at 10. According to
Appellants, "[l]ike the claims in Enfzsh, 5 the focus of the claims in the
present application is on a specific asserted improvement in computer
capabilities." Id. at 11 ( citing Spec. ,r,r 6-11 ). Appellants' arguments are
unpersuasive of error in the rejection.
There is a fundamental difference between computer functionality
improvements, on the one hand, and uses of existing computers as tools to
4 Final Act. 2.
5 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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perform a particular task, on the other. "We therefore look to whether the
claims [here] focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." 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."). The plain focus of the
claims in Enfish was on an improvement to computer functionality itself, not
on economic or other tasks for which a computer is used in its ordinary
capacity. Here, representative claim 1 is directed to a result-"determining
an amount to charge the customer" by invoking a generic "processing
computing device." Claim 1. In contrast to the facts in McRO and Enfzsh,
which focused on a specific improvement in computer technology,
Appellants' claim does not concern an improvement to computer
capabilities, but instead relates to an alleged improvement in efficient event
processing, revenue generation, and customer satisfaction (see Spec. ,r 6), for
which a computer is used as a tool in its ordinary capacity. Appellants have
not offered any persuasive evidence or technical reasoning that the computer
implementation improves the functioning of the computing device itself.
Thus, we are not apprised how the performance of the steps recited in claim
1 result in an improvement in computer capabilities.
Although there is no definitive rule to determine what constitutes an
abstract idea, the Federal Circuit has explained that "both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous
cases." Enfzsh, 822 F.3d at 1334; see also Amdocs (Isr.) Ltd. v. Openet
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Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent eligible under § 101, "the decisional
mechanism courts now apply is to examine earlier cases in which
a similar or parallel descriptive nature can be seen--what prior cases were
about, and which way they were decided"). Contrary to Appellants'
assertion under "Prima Facie Burden 2" as to the alleged lack of explanation
in determining the abstract idea (see App. Br. 10), we find the Examiner did
compare claim 1 to concepts found to be directed to an abstract idea in
previous cases by the courts. See Final Act. 2-3; see also Ans. 2. The
concept of "billing customer[ s ]" based on an amount of usage of a service or
product is similar to that found by the Board, and affirmed by the Federal
Circuit, to be directed to the "abstract idea of billing insurance companies,"
which "describes little more than the automation of a 'method of organizing
human activity' with respect to medical information." In re Salwan, No.
2016-2079, 2017 WL 957239 *3 (Fed. Cir. Mar. 13, 2017) (citing Alice, 134
S. Ct. at 2356). As the Federal Circuit recognized in Salwan, although the
concepts recited in the claims may be "practical concepts," they are
nevertheless "fundamental economic and conventional business practices,"
and thus, are abstract ideas. Id. Indeed, the concept of billing and invoicing
customers based on an amount of usage of a service or product has long
been prevalent in our system of commerce.
Moreover, the Federal Circuit has held that claims involving
"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." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). The claims in Electric Power described systems and
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methods for performing real-time performance monitoring of an electric
power grid by collecting data from multiple data sources, analyzing the data,
and displaying the results. Id. at 1352. Claim 1 is similar to the claims
in Electric Power, which did "not go beyond requiring the collection,
analysis, and display of available information in a particular field, stating
those functions in general terms, without limiting them to technical means
for performing the functions that are arguably an advance over conventional
computer and network technology." Id. at 1351. The court explained that
"collecting information, including when limited to particular content (which
does not change its character as information), is within the realm of abstract
ideas" and characterized "analyzing information by steps people go through
in their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category." Id. at 1353-54. In light
of these precedents, we agree with the Examiner that claim 1 is "directed to"
an abstract idea. Because claim 1 is directed to a patent-ineligible concept,
we proceed to the second step in the Alice framework.
Alice Step Two
Step two is "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, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo, 132 S. Ct. at 1294). The Supreme Court in Alice cautioned that
merely limiting the use of an abstract idea "to a particular technological
environment" or implementing the abstract idea on a "wholly generic
computer" is not sufficient as an additional feature to provide "practical
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assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself." Id.
Indeed, claim 1 does not recite any specialized hardware, but instead,
each step is performed by a generic processing device. See Spec. ,r 71
("Hardware processor 404 may be, for example, a general purpose
microprocessor."). To qualify as an inventive concept, the implementation
of the abstract idea must involve "more than performance of 'well-
understood, routine, [and] conventional activities previously known to the
industry."' Content Extraction and 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 23 59).
We agree with the Examiner that the recited method steps fail to
transform the abstract idea into a patent-eligible invention. Claim 1 uses a
generic processor to perform well-understood, routine, conventional
activities previously known to the industry, such as receiving and analyzing
data and performing mathematical calculations. See Bancorp Servs., L.L. C.
v. Sun Life Assur. Co. of Canada (US.), 687 F.3d 1266, 1278 (Fed. Cir.
2012) ("[T]he use of a computer in an otherwise patent-ineligible process for
no more than its most basic function-making calculations or
computations-fails to circumvent the prohibition against patenting abstract
ideas and mental processes."). We have considered Appellants' arguments
but we are not apprised of any claimed element for accomplishing the
claimed solution that is other than what was generically known for
performing those conventional functions. We do not see, and Appellants do
not adequately explain, what particular assertedly inventive technology for
performing the recited functions is required for achieving the claimed result.
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See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1057 (Fed.
Cir. 201 7) ("[T]he claims do not provide details as to any non-conventional
software for enhancing the financing process."); see Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) ("Our
law demands more" than claim language that "provides only a result-
oriented solution, with insufficient detail for how a computer accomplishes
it."); Elec. Power Grp., 830 F.3d 1350, 1354 (explaining that claims are
directed to an abstract idea where they do not recite "any particular
assertedly inventive technology for performing [ conventional] functions").
We cannot agree with Appellants' contention that the claims before us
are similar to the claims held eligible in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the Federal Circuit
determined that although the patent claims at issue involved conventional
computers and the Internet, the claims nevertheless addressed the problem of
retaining website visitors who, if adhering to the routine, conventional
functioning of the Internet hyperlink protocol, would be transported instantly
away from a host's website after "clicking" on an advertisement and
activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The court
determined that those claims were directed to statutory subject matter
because they claim a solution "necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks." Id. No such technological advance is evident in the claimed
invention. Unlike DDR Holdings, Appellants do not identify any problem
particular to computer networks and/or the Internet that claim 1 allegedly
overcomes. In fact, claim 1 does not recite the Internet or any other
computer network.
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To the extent that Appellants maintain the elements of the claim
necessarily amount to "significantly more" than the abstract idea, because
the claimed system is allegedly patentable over the prior art, Appellants
misapprehend the controlling precedent. See App. Br. 24 ("Hence, any
situation in which a claim is held to satisfy the inventiveness standard of 103
and fail the inventiveness standard of 101 is clearly erroneous."). Although
the second step in the Alice framework is termed a search for an "inventive
concept," the analysis is not an evaluation of novelty or nonobviousness, but
rather, a search for "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, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo, 132 S. Ct. at 1294). In other words, a
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent ineligible. See Mayo, 132 S. Ct. at 1304 (rejecting the
suggestion that Sections 102, 103, and 112 might perform the appropriate
screening function and noting that in Mayo such an approach "would make
the 'law of nature' exception ... a dead letter"); see also Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) ("[U]nder the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility.").
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor 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
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categories of possibly patentable subject matter." Diamond v. Diehr, 450
U.S. 175, 188-89 (1981).
We have considered Appellants' remaining arguments regarding
patent eligibility and conclude they are not persuasive of error in the
rejection. Accordingly, we sustain the rejection of claim 1 under 35 U.S.C.
§ 101, and claims 2-24, which fall with claim 1.
35 US. C. § 112, second paragraph
The Examiner determines that claims 21 and 23 are indefinite because
they "contain limitations regarding multiple events while the independent
claim only describes receiving one particular event. It appears that there are
some essential elements missing to describe how one event becomes
multiple events." Final Act. 4.
Appellants disagree and argue that no essential elements are missing.
App. Br. 25-26.
A claim which omits matter disclosed to be essential to the invention
as described in the specification or in other statements of record may be
subject to rejection under 35 U.S.C. 112, second paragraph, as indefinite.
See In re Mayhew, 527 F.2d 1229 (CCPA 1976); In re Venezia, 530 F.2d
956 (CCPA 1976); and In re Collier, 397 F.2d 1003 (CCPA 1968).
We will not sustain this rejection because the Examiner has not
pointed to any disclosure in the Specification or otherwise that indicates the
alleged omitted matter is essential or critical to the invention, as required
supra. As such, a prima facie case of indefiniteness for omitting essential
matter has not been established.
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35 USC§ 103(a)
Independent claims 1 and 11 require, in part, "executing, based on the
data extracted from the particular event, a first functional object of the
plurality of functional objects to generate a first result." App. Br. 36, 39,
Claims App.
Contesting the Examiner's finding as to this disputed limitation,
Appellants argue:
The cited portion of Ye says nothing about a functional object.
In fact, in citing col. 7, line 50 to col. 8, line 62, the Final Office
Action merely states that "the user has achieved a volume
discount, the cost of the dress priced at $89 would be $71.2."
Therefore, the Final Office Action focuses on the result of a
discount rather than on how technology is used to generate the
result of the discount.
Id. at 28.
In response to Appellants' argument, the Examiner asserts that
"the scope of the claim merely describes that a functional object
would contain logic to be executed; and Ye clearly discloses logic to
be executed to determine the charges; therefore, Ye would disclose[]
the functional object." Ans. 5.
Appellants' argument is persuasive. Appellants' Specification
discloses that "a first functor indicated by the rate plan functor is
executed to generate a first result." Spec. ,r 46. "The first result is to
determine which functor to execute next." Id. ,r 47. The cited portion
of Ye describes a process flow diagram of rating an event, but does
not disclose that functional objects are used to rate the event. The
remainder of the passage relied-on by the Examiner "pertain[ s] to
handling an inquiry event where a customer wants to know how
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his/her account would be affected if the customer utilized a certain
amount of a service." Reply Br. 5---6 ( citing Ye, 8: 12---62 ). Based on
the record before us, we are persuaded that the cited portions of Ye
fail to disclose the contested limitations of independent claims 1 and
1 1.
Accordingly, we do not sustain the rejection of independent
claims 1 and 11, including dependent claims 2--4, 8, 10, 12-14, 18,
20-21, and 23. We also do not sustain the rejections of dependent
claims 5-7, 9, 15-1 7, and 19 for the same reasons as their
independent claims because the Examiner reliance on prior art
references Metzger and Black do not cure the deficiency in Ye.
DECISION
The rejection under 35 U.S.C. § 101 is affirmed.
The rejection under 35 U.S.C. § 112, second paragraph, is reversed.
The rejections under 35 U.S.C. § 103(a) are reversed.
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
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