GOPALAKRISHNAN, Prasanth

Patent Trials and Appeals Board

Nov 22, 2019

12821720 - (D) (P.T.A.B. Nov. 22, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/821,720 06/23/2010 Prasanth GOPALAKRISHNAN 2011-0201US01 4451
74739 7590 11/22/2019
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/22/2019 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):
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
patents@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PRASANTH GOPALAKRISHNAN
____________

Appeal 2018-008118
Application 12/821,720
Technology Center 3600
____________

Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 1, 3, 5–7, 10–12, 14, 16, 17, 19, and 21–27. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Oracle
International Corporation. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to “a product management system [that]
allows a user to make modifications to product information.” (Spec. ¶ 32.)
Claims 1, 12, and 17 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A non-transitory computer-readable medium
having instructions stored thereon that, when executed by a
processor, cause the processor to process and use production data
in a production context, the processing and using comprising:
instantiating an observer from a static class, the observer
including a first collection of entities and a second collection of
entities;
creating an entity interface including an application
programming interface that declares a set of methods for
implementation by entities;
retrieving production data associated with a manufactured
product from a product database coupled to a network, the
production data including a description of the manufactured
product and a plurality of attributes of the manufactured product,
the product database including a plurality of data tables, each
data table including a plurality of rows, each row including a
plurality of fields, the production data being stored across one or
more rows of one or more tables of the product database;
creating a product entity associated with the manufactured
product, the product entity including a plurality of entities, each
entity including one or more attributes retrieved from the product
database and an attribute bitmap including a modification bit for
each attribute, each modification bit being set to a first value
indicating that the respective attribute has not been modified;
receiving one or more modifications to one or more
attributes of one or more of the plurality of entities associated
with the manufactured product from a user computer coupled to
the network;
for each received modification, modifying the respective
attribute in the respective entity, and setting the respective
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modification bit in the respective attribute bitmap to a second
value indicating that the respective attribute has been modified;
adding each modified entity that requires approval to the
first collection of the observer entity;
adding each modified entity that requires approval and
each modified entity that does not require approval to the second
collection of the observer entity;
storing each modified entity of the second collection that
is not also of the first collection into the product database using
the application programming interface;
initiating a workflow for at least one change order to
process the modified entities that require approval, including
adding each modified entity of the first collection to
the change order using the application programming
interface, including:
creating a copy of the entity;
extracting one or more modified attributes
from the modified entity based on the modification
bit values in the attribute bitmap;
moving the modified attributes from the
modified entity to the copy of the entity; and
moving the copy of the entity, including the
modified attributes, to the change order;
receiving approval for at least one modified entity of the
first collection; and
storing each approved modified entity of the first
collection into the product database, based on the effective date
of the approved modified entity, using the application
programming interface.

REJECTION
Claims 1, 3, 5–7, 10–12, 14, 16, 17, 19, and 21–27 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.

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ANALYSIS
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Section 101, however,
“‘contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Assoc. for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(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.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
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is more than a drafting effort designed to monopolize the judicial
exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that claim 1 is “directed to processing
data associated with manufactured products (as evidenced by the preamble
of exemplary claim 1; ‘use production data in a production context’), an
abstract idea.” (Final Action 5.) The Examiner also determines that claim 1
is “directed towards a method of organizing information related to
manufactured products.” (Id.)
Appellant disagrees and argues that the “claims are expressly
grounded in the solution uniquely rooted in software” and that the claims
recite a “technical solution to a technical problem.” (Appeal Br. 7.)
Specifically, Appellant asserts that “[c]reating and using attribute bitmaps to
identify product attribute modifications for production data in a production
context as claimed provides a technical solution to [a] technical problem.”
(Id. (quoting Declaration of Gopalakrishnan of July 24, 2017, ¶ 13
[hereinafter “Decl.”]).)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The ‘directed to’ inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the ‘directed to’ inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether
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‘their character as a whole is directed to excluded subject
matter.’ Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to “a product management system [that] allows a user to make modifications
to product information.” (Spec. ¶ 32.) Claim 1 provides further evidence.
Claim 1 recites “instantiating an observer,” “creating an entity interface,”
“retrieving production data,” “creating a product entity associated with the
manufactured product, the product entity including a plurality of entities,
each entity including one or more attributes,” “receiving one or more
modifications to one or more attributes,” “for each received modification,
modifying the respective attribute in the respective entity,” “adding each
modified entity that requires approval to the first collection,” “storing each
modified entity of the second collection that is not also of the first
collection,” “initiating a workflow for at least one change order,” “receiving
approval for at least one modified entity,” “and storing each approved
modified entity.”
This evidence shows that claim 1 is directed to organizing information
related to a manufactured product, i.e., data manipulation. This is in accord
with the Examiner’s determination. (See Final Action 5.) The Federal
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Circuit has found claims directed to similar subject matter to be directed to
abstract ideas. See, e.g., Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332 (Fed. Cir. 2017) (Claims directed to displaying
dynamic documents to a user to permit user modifications to the documents
determined to be directed to an abstract idea.), Bancorp Servs., L.L.C. v. Sun
Life Assur. Co. of Canada (U.S.), 687 F.3d 1266 (Fed. Cir. 2012) (Claims
directed to managing a type of life insurance policy by performing
calculations and manipulating results determined to be directed to an
abstract idea.), Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“[T]he claims of
the asserted patents are drawn to the abstract idea of 1) collecting data,
2) recognizing certain data within the collected data set, and 3) storing that
recognized data in a memory.”), Cyberfone Sys., L.L.C. v. CNN Interactive
Grp., Inc., 558 F. App’x 988 (Fed. Cir. 2014) (Claims directed to
organizing, storing, and transmitting information determined to be directed
to an abstract idea.).
In short, the recited steps in claim 1 are “directed towards a method of
organizing information related to manufactured products,” i.e., commercial
interactions and managing behavior or relationships including following
rules or instructions.” (See Final Action 5; see also 2019 Guidance at 52.)
Thus, the claim recites certain methods of organizing human activity, and
under prong one of the two prong test in the 2019 Guidance, claim 1 recites
an abstract idea.
With regard to prong two, we are asked to determine if additional
elements in claim 1 “apply, rely on, or use the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
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is more than a drafting effort designed to monopolize the judicial
exception.” (2019 Guidance at 54.) Appellant argues that claim 1 does “not
merely recite conventional functionality.” (Appeal Br. 13 (emphasis
omitted); see also id. at 14.) But Appellant does not persuasively argue what
additional elements in claim 1 “apply, rely on, or use the judicial exception
in a manner that imposes a meaningful limit on the judicial exception.” (See
2019 Guidance at 54.)
Appellant has not persuaded us that the Examiner erred in determining
that claim 1 is directed to organizing information related to a manufactured
product, i.e., the abstract idea of certain methods of organizing human
activity. (See Final Action 5.)
Step two of the Alice framework has been described “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, 573 U.S. at 217–
18 (quoting Mayo, 566 U.S. at 72–73). Under step two, we examine, inter
alia, whether a claim element or combination of elements “[a]dds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present.” (2019 Guidance at 56.)
The Examiner determines that “bitmap coding provides a type of data
to be used in the database” and that “[t]he present application and the
claimed invention do not teach an improvement to bitmap coding or
software coding.” (Answer 7.) Additionally, the Examiner determines
that electronic recordkeeping and/or storing information in
memory is well-understood, routine, and conventional activity
that does not amount to significantly more than an abstract idea.
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The present claims recite steps that amount to storing records
for product data pertaining to modifications in a bitmap format.

(Id.)
“Whether something is well-understood, routine, and conventional to
a skilled artisan . . . is a factual determination.” Berkheimer v. HP Inc., 881
F.3d 1360, 1369 (Fed. Cir. 2018). Here, Appellant presents evidence that,
with regard to each modification of an entity attribute, it was not
conventional “to ‘modify the respective attribute in the respective entity, and
set the respective modification bit in the respective attribute bitmap to a
second value indicating that the respective attribute has been modified.’”
(Decl. ¶ 12 (emphasis omitted); see also Appeal Br. 16.) Appellant also
presents evidence that it was not conventional “to employ attribute bitmaps
to identify product attribute modifications” and “extract one or more
modified attributes from the modified entity based on the modification bit
values” as claimed. (Id. (emphasis omitted); see also Appeal Br. 14.)
At best, the Examiner provides support for why bitmap coding is well-
understood, routine, and conventional (see Answer 7), and states that “[t]he
choice of a known binary format to organize the binary information recited
in the claims is extra-solution activity” (id. at 7–8). However, the Examiner
does not sufficiently address or provide support as to why or how the
specific way of employing bitmaps to identify modifications and extract
modified attributes from the modified entities based on the modified bit
values is well-understood, routine, and conventional. Thus, in this case, and
in view of Appellant’s evidence, we determine that the Examiner has not
provided sufficient evidence to support a finding that these steps were well-
understood, routine, or conventional to a skilled artisan. Therefore, we will
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reverse the rejection of claim 1. Independent claims 12 and 17 contain
similar language and for similar reasons, we will also reverse the rejection of
claims 12 and 17, and dependent claims 3, 5–7, 10, 11, 14, 16, 19, and 21–
27.

CONCLUSION

The Examiner’s rejection of claims 1, 3, 5–7, 10–12, 14, 16, 17, 19,
and 21–27 under 35 U.S.C. § 101 is reversed.

Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5–7, 10–
12, 14, 16, 17,
19, 21–27
101 eligibility 1, 3, 5–7,
10–12, 14,
16, 17, 19,
21–27

REVERSED