Hisatoshi Adachi et al.Download PDFPatent Trials and Appeals BoardMar 2, 20212020005794 (P.T.A.B. Mar. 2, 2021) Copy Citation 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. 11/817,041 08/24/2007 Hisatoshi Adachi JP920050006US1 8152-0019 6824 112978 7590 03/02/2021 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER SADANANDA, ABHIJIT B ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 03/02/2021 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HISATOSHI ADACHI, MAKOTO KANO, and YUHJI KIKUMA ____________ Appeal 2020-005794 Application 11/817,0411 Technology Center 3600 ____________ Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and SCOTT C. MOORE, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 56–73. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 Appellant identifies IBM Corporation as the real party in interest. Appeal Br. 1. Appeal 2020-005794 Application 11/,817,041 2 THE INVENTION Appellant states “the present invention relates to a work management system for managing the progress of work, a work management system construction support service, a control method and a program.” Spec. ¶ 1. Claim 56, reproduced below, is representative of the subject matter on appeal. 56. A computer-implemented method within a work management computer hardware system that manages a combined work process that uses a product, respectively, of each of a plurality of prior work processes performed in parallel, comprising: storing data indicating whether or not preceding start is permitted for a particular maturity degree of the combined work process, storing, for each of the plurality of prior work processes and with reference to the particular maturity degree of the combined work process, data indicating a reference maturity degree; storing, for each of the plurality of prior work processes, data indicating a maturity degree; determining, for the particular maturity degree of the combined work process, that a particular one of the prior work processes has a maturity degree that is less than a reference maturity degree of the particular one of the prior work processes; causing, based upon the determining and the data indicating that preceeding start is permitted for the particular maturity degree of the combined work process, the combined work process to be performed at the particular maturity degree of the combined work process; further determining, for the particular maturity degree of the combined work process, that the particular one of the prior work processes has a maturity degree that is equal to or exceeds the reference maturity degree of the particular one of the prior work processes; and Appeal 2020-005794 Application 11/,817,041 3 further causing, based upon the further determining, the combined work process to use a product of the particular one of the prior work processes, wherein a maturity degree represents a contemporaneous state of a process with which the maturity degree is associated, and the product of the particular one of the prior work processes is not usable by the combined work process at the particular maturity degree of the combined work process until the further causing, and the combined work process is caused to progress to a next maturity degree prior to all of the plurality of previous work processes being completed. Appeal Br. 21–22 (Claims Appendix). THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Alexander US 5,781, 454 July 14, 1998 Parr US 2003/0135401 A1 July 17, 2003 Watanabe et al. US 2003/0233387 A1 Dec. 18, 2003 Tada JPH 09259181 Oct. 3, 1997 The following rejections are before us for review. Claims 56–73 are rejected under 35 U.S.C § 101, judicial exception; Claims 56–58, 62–64, and 68–70 are rejected under 35 U.S.C. § 103 as obvious over Tada in view of Alexander; Claims 59, 65, and 71 are rejected under 35 U.S.C. § 103 as obvious over Tada in view of Alexander, further in view of Watanabe; Claims 60, 66, and 72 are rejected under 35 U.S.C. § 103 as obvious over Tada in view of Alexander; Appeal 2020-005794 Application 11/,817,041 4 Claims 61, 67, and 73 are rejected under 35 U.S.C. § 103 as obvious over Tada in view of Alexander, further in view of Parr, further in view of Watanbe. FINDINGS OF FACT We adopt the Examiner’s findings as set forth on pages 7–15 in the Final Office Action2 and on pages 5–10 in the Examiner’s Answer, concerning only the 35 U.S.C. § 101 rejection. 35 U.S.C. § 101 REJECTION We will affirm the rejection of claims 56–73 under 35 U.S.C. § 101. The Appellant argues claims 56–73 as a group. (Appeal Br. 7). We select claim 56 as the representative claim for this group, and so the remaining claims stand or fall with claim 56. See 37 C.F.R. § 41.37(c)(1)(iv) (2015). 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. Pty. Ltd. v. CLS Bank Int’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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with 2 All references to the Final Office Action refer to the Final Office Action mailed on Nov. 15, 2019. Appeal 2020-005794 Application 11/,817,041 5 that framework, we first determine what concept the claim is “directed to.” See id. 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. Kappos, 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 (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 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 Appeal 2020-005794 Application 11/,817,041 6 attempting to limit the use of the formula to a particular technological environment.” Id. (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.”). If the claim is “directed to” an abstract idea, we turn 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 (quotation marks 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. In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).3 “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Id. at 51; see also October 2019 Update at 1.4 3 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”) (available at https://www.uspto.gov/sites/default/files/ documents/peg_oct_2019_update.pdf). 4 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING Appeal 2020-005794 Application 11/,817,041 7 Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5 Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, 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. PROCEDURE (“MPEP”) § 2106.04 and also supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.” See Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”). Accordingly, Appellant’s arguments challenging the sufficiency of the Examiner’s rejection will not be addressed to the extent those arguments are based on now superseded USPTO guidance. 5 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54– 55. Appeal 2020-005794 Application 11/,817,041 8 Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See Enfish, 822 F.3d at 1335–36. In so doing, as indicated above, we apply a “directed to” two prong test: 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 is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53; see also MPEP §§ 2106.04–2106.05. The Specification states: The work management system 40 according to this embodiment is intended to appropriately manage the progress of a whole work even when the work to be managed includes multiple work processes dependent on one another as described above and these work process progress in parallel. It is also intended to appropriately notify both of the person in charge of each work process and the manager of the whole work of information that is important to improve the efficiency of the work. Specification ¶ 14. Appeal 2020-005794 Application 11/,817,041 9 Thus, in the example of this diagram, the maturity degree is equal to or above the reference maturity degree at all the previous processes of the door designing process, and the door designing process has already been started. From this screen, the person in charge of each work process can grasp the progress state of the works of the previous processes in real time and appropriately adjust the schedule of the work process he is in charge of. Id. ¶ 40. It is desirable that input by or notification to the person in charge of the work process is basically performed through this screen. For example, when the maturity degree has risen to the reference maturity degree or above at all the previous processes of the door designing process, the notification section 510 displays a pop-up message to that effect on this screen. The maturity degree acquisition section 508 may cause the user to call the screen shown in Figure 12 on a menu screen which can be called from this screen and input the maturity degree of the product of his work process specified by him. Id. ¶ 41. The preamble of claim 56 states it is for, “manag[ing] a combined work process that uses a product, respectively, of each of a plurality of prior work processes performed in parallel.” (Claims App.) Claim 56 recites in pertinent part, storing data indicating whether or not preceding start is permitted for a particular maturity degree of the combined work process, storing for each of the plurality of prior work processes and with reference to the particular maturity degree of the combined work process, data indicating a reference maturity degree; storing for each of the plurality of prior work processes, data indicating a maturity degree; determining, for the particular maturity degree of the combined work process, that a particular one of the prior work processes has a maturity degree that is less than a reference maturity degree of the particular one of the prior work processes; Appeal 2020-005794 Application 11/,817,041 10 causing, based upon the determining and the data indicating that preceding start is permitted for the particular maturity degree of the combined work process, the combined work process to be performed at the particular maturity degree of the combined work process; further determining, for the particular maturity degree of the combined work process, that the particular one of the prior work processes has a maturity degree that is equal to or exceeds the reference maturity degree of the particular one of the prior work processes; and further causing, based upon the further determining, the combined work process to use a product of the particular one of the prior work processes, wherein a maturity degree represents a contemporaneous state of a process with which the maturity degree is associated, and the product of the particular one of the prior work processes is not usable by the combined work process at the particular maturity degree of the combined work process until the further causing, and the combined work process is caused to progress to a next maturity degree prior to all of the plurality of previous work processes being completed. The Examiner found claim 56 recites a method for ‘manag[ing] a combined work process that uses a product, respectively, of each of a plurality of prior work processes performed in parallel.’ The claim limitations as a whole describe steps for tracking and managing the progress of work processes using rules, which is a method of managing interactions between people. (Final Act. 7). Accordingly, all this intrinsic evidence shows that claim 56 recites managing a combined work process that uses a product, respectively, of each of a plurality of prior work processes performed in parallel by using a unified criterion of the maturity degree of a production stage. This is consistent with the Examiner’s determination. Claim limitations such as, “causing, based upon the further determining, the combined work process to Appeal 2020-005794 Application 11/,817,041 11 use a product of the particular one of the prior work processes,” and “the combined work process is caused to progress to a next maturity degree prior to all of the plurality of previous work processes being completed,” recite interactions between people because these limitations control how a person works as part of a team. According to the Specification at paragraph 40, the system causes a change in worker behavior by hastening or slowing the progress he/she is in charge of: “person in charge of each work process can grasp the progress state of the works of the previous processes in real time and appropriately adjust the schedule of the work process.” Managing personal behavior and/or interactions between people (including social activities, teaching, and following rules or instructions) are ones of certain methods of organizing human activity that are judicial exceptions. Guidance, 84 Fed. Reg. at 52. Turning to the second prong of the “directed to” test, claim 53 has no device limitations.6 Any mention of a system related components in the Specification is described in the Specification at a high level of generality. See Spec. ¶¶ 15, 53, 54, Fig. 3. We fail to see how generic recitations of these most basic computer components and/or of a system, even if recited in the claims, so integrates the judicial exception as to “impose[] a meaningful limit on the judicial exception, such that the claim is more than a drafting 6 Although the preamble recites “a work management computer hardware system,” the body of the claim does not incorporate the term “work management computer hardware system,” into it, and thus we do not count it as one of the device limitations of claim 56. Pitney Bowes, Inc. v. Hewlett- Packard Co., 182 F.3d 1298, 1305, 1306 (Fed. Cir. 1999) (recitations typically found in the preamble of claims, and given weight largely depend on how the recitation is subsequently used in the body of the claim.) Appeal 2020-005794 Application 11/,817,041 12 effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53. Thus, we find that the claims recite the judicial exception of certain methods of organizing human activity that are not integrated into a practical application. That the claims do not preempt all forms of the abstraction or may be limited to managing combined work processes, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“And that 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.”). Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas/judicial exceptions, the claims must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at 72–73). Concerning this step the Examiner found the following: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to the ‘directed to’ inquiry, the invocation of a computer hardware system amounts to nothing more than mere instructions to apply the abstract idea on a generic computer. Final Act. 9. We agree with the Examiner. “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the Appeal 2020-005794 Application 11/,817,041 13 abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. 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, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval—one of the most basic functions of a computer. Limitations such as, “the combined work process to be performed at the particular maturity degree of the combined work process,” and “wherein a maturity degree represents a contemporaneous state of a process with which the maturity degree is associated,” are not steps, but recitations of data characterization, viz. an expectation, which is aspirational. All of these computer functions are well- understood, routine, conventional activities previously known to the industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent Litig., 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. The claims do not, for example, purport to improve the functioning of the computer itself. In addition, as we stated above, the claims do not effect an improvement in any other technology or technical field. The Specification spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios (see, e.g., Spec. Appeal 2020-005794 Application 11/,817,041 14 ¶¶ 15, 48–54, Fig. 3). Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–226. Considered as an ordered combination, the computer components of Appellant’s claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis (successively storing/determining/causing/determining/causing) and storing 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) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. The remaining method claims merely describe process parameters. We conclude that the method claims at issue are directed to a patent- ineligible concept itself, and not to the practical application of that concept. 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 Appeal 2020-005794 Application 11/,817,041 15 has long ‘warn[ed] ... against’ interpreting § 101 ‘in ways that make patent eligibility ‘depend simply on the draftsman’s art.’’ Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any particular machine. We have reviewed all the arguments Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. (Appeal Br. 7–12, Reply Br. 2–7). We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of same. Appellant argues: Assuming, for sake of argument, that the claimed invention involves organizing human activity, the Examiner's analysis on pages 6-8 of the Ninth Office Action fails to identify the specific enumerated sub-grouping identified with the 2019 PEG. Consequently, the Examiner has not established that the claimed invention involves a judicial exception. (Appeal Br. 8). We disagree with Appellant of Examiner error here because the Examiner explicitly found that “[t]he claim limitations as a whole describe steps for tracking and managing the progress of work processes using rules, which is a method of managing interactions between people (emphasis added).” (Final Act. 7). The Guidance is clear, “interactions between people (including social activities, teaching, and following rules or instructions)” is one of certain methods of organizing human activity that are judicial exceptions. Guidance, 84 Fed. Reg. at 52. We also disagree with Appellant that Examiner’s reliance on Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 Appeal 2020-005794 Application 11/,817,041 16 (2015) is “ill formed.” (Appeal Br. 9). Although in Intellectual Ventures I, the court did mention budgeting in terms of an initial “directed to” analysis, the Court ultimately focused on “tailoring information.” Id at 1368. Similarly, the Examiner focused on tailoring data based on a “particular maturity degree” to effect scheduling in a combined work process, noting the claims reflect “progress of work processes to determine whether the progress exceeds certain pre-set thresholds.” (Final Act. 4). Appellant argues, “the Examiner has failed to properly identify those limitations that are beyond the alleged judicial exception.” (Appeal Br. 10). This argument is unpersuasive because as we found above, claim 56 recites no additional elements beyond the judicial exceptions enumerated in the claim. Appellant next argues, The Examiner also asserted that the ‘monitoring the progress of human work’ constitutes a method of ‘managing human behavior.’ If so, the only limitation that arguably involves this monitoring would be the claimed ‘data indicate a maturity degree [for each of the plurality of prior work processes]’ and ‘a particular maturity degree of the combined work process.’ However, this would entail that all of the other limitations are additional elements within the meaning of Prong Two of Step 2A. (Appeal Br. 11). We disagree with Appellant. As found supra, claim 56 includes no device limitations. Claim 54 enumerates other judicial exceptions, such as, a mental process. To assert that because less than all claim limitations recite steps directed to given judicial exception, the remainder limitations are additional elements, ignores that “[a]n abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., Appeal 2020-005794 Application 11/,817,041 17 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case, does not “impact the patentability analysis.” See id. at 1241. For the reasons identified above, we determine there are no deficiencies in the Examiner’s prima facie case of patent ineligibility of the rejected claims. Therefore, we will sustain the Examiner’s § 101 rejection of claims 56–73. 35 U.S.C. § 103(a) REJECTION Each of independent claims 56, 62 and 68 recites in pertinent part, “storing, for each of the plurality of prior work processes and with reference to the particular maturity degree of the combined work process, data indicating a reference maturity degree.” (Claims Appendix). The Examiner found, concerning these limitations that Tada at paragraph 52 discloses this feature stating, “par. [0052], storing a reference completion degree of each preceding work item necessary for the work item to be started, e.g. 100% referring to an execution mode of ‘completed’.” (Final Act. 16–17). Appeal 2020-005794 Application 11/,817,041 18 Appellant argues: Paragraph [0052] refers to Figure 6 of Tada, which is reproduced below: [Figure 6 of Tada is shown above.] Column 1191 is described as ‘[t]he work name 1191 is each work performed in the project.’ Column 1201 is ‘[t]he work name 1201 is the name of the work to be the preceding work.’ The claims require ‘storing, for each of the plurality of prior work processes and with reference to the particular maturity degree of the combined work process, data indicating a reference maturity degree.’ Thus, for a particular maturity degree of the combined work process, there are a plurality of reference maturity degrees stored (i.e., for each of the plurality of work processes). The Examiner's cited paragraph [0052] and accompanying Figure 6 do not disclose a plurality of reference maturity degrees that are associated with a particular maturity degree of a combined work process. In addition, the Examiner's cited passage is completely silent as to the claimed ‘particular maturity degree of the combined work process.’ (Appeal Br. 15–16). Appeal 2020-005794 Application 11/,817,041 19 Paragraph 52 of Tada reads as follows: FIG. 6 shows the data structure of the preceding work table 119 and the execution condition table 120. The preceding work table 119 is a table including items of a work name 1191, a head position 1192, and a final position 1193. The work name 1191 is each work performed in the project. In the work order, when another work b can not be started as a necessary condition for starting a certain work a, work b is called a preceding work of work a (work a is a follow-on work of work b). Information on the preceding work 1191 is stored in the execution condition table 120. The start position 1192 indicates the start record position of the preceding work in the execution condition table 120, and the final position 1193 indicates the last record position of the preceding work. In the case of work in which there is no preceding work, the values of the start position 1192 and the final position 1193 are set to special values (for example, 0). The execution condition table 120 is a table including items of work name 1201, required completion degree 1202 and work time 1203. The work name 1201 is the name of the work to be the preceding work. The required completion degree 1202 is the completion degree of the preceding work necessary for the subsequent work of the preceding work to be started. The working time 1203 is a standard working time required to complete the preceding work. The data of the preceding work table 119 and the execution condition table 120 are set before starting the project. We agree with Appellant. Tada at Paragraph 52 explicitly states that “work b is called a preceding work of work a” and “work a is a follow-on work of work b” meaning the process is serial and not combined. Therefore, there can be no disclosure or suggestion of the claimed “particular maturity degree of the combined work process,” because Tada fails to disclose a combined work process. Appeal 2020-005794 Application 11/,817,041 20 Accordingly, we will not sustain the rejection of independent claims 56, 62 and 68 under 35 U.S.C. § 103(a). Since claims 57, 58, 59, 60, 61; 63, 64, 65, 66, 67; and 69, 70, 71, 72 and 73 depend from claims 56, 62 and 68, respectively, and since we cannot sustain the rejection of claims 56, 62 and 68, the rejection of the dependent claims likewise cannot be sustained. We note that the additional references to Parr and Watanabe used in the rejection of some dependent claims, fail to remedy the deficiency in Tada noted above. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 56–73 under 35 U.S.C. § 101. We conclude the Examiner erred in rejecting claims 56–73 under 35 U.S.C. § 103. CONCLUSION Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). Appeal 2020-005794 Application 11/,817,041 21 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 56–73 101 Judicial exception 56–73 56–58, 62– 64, 68–70 103 Tada, Alexander 56–58, 62– 64, 68–70 59, 65, 71 103 Tada, Watanabe 59, 65, 71 60, 66, 72 103 Tada, Alexander, Parr 60, 66, 72 61, 67, 73 103 Tada, Alexander, Parr, Watanabe 61, 67, 73 Overall Outcome 56–73 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation