Anuradha Narasimhaswamy. Melkote et al.

Patent Trials and Appeals Board

Jan 31, 2020

13679419 - (D) (P.T.A.B. Jan. 31, 2020)

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.
13/679,419 11/16/2012 Anuradha Narasimhaswamy Melkote ANAQ0102PUS1 1067
28395 7590 01/31/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
LE, CHAU D
ART UNIT PAPER NUMBER
2493
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANURADHA NARASIMHASWAMY MELKOTE,
DAMIAN PORCARI, and KELLY ANNE SLANK
___________

Appeal 2018-008843
Application 13/679,419
Technology Center 2400
____________

Before JEAN R. HOMERE, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 8–11, and 16–23. Claims 6, 7, and
12–15 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Appellant’s invention relates to an on-line invention disclosure
system. (Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter, with bracketed reference numbers added and disputed limitations in
italics:
1. A method of forming an online invention
disclosure comprising:
by at least one processor,
[i] forming an invention disclosure online by receiving a
plurality of selected information that includes identification
information for a plurality of inventors and a predefined
classification code indicative of a type of technical subject
matter described by the disclosure;
[ii] storing the information in a central storage location,
[iii] prompting approval of the disclosure,
[iv] in response to the approval, locking the disclosure
to create a locked disclosure to prevent further editing of the
disclosure, and
[v] in response to the locking, obtaining a docket
number for the disclosure from a docket system, and

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Anaqua,
Inc. (Appeal Br. 2.)
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generating a notification for an invention ranking committee
selected according to the predefined classification code to
prompt the committee to rank the disclosure.

REFERENCES
Name Reference Date
Hager et al. US 5,247,661 Sept. 21, 1993
Lemble US 5,315,504 May 24, 1994

REJECTIONS
Claims 1–5, 8–11, and 16–23 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter.
Claims 1–5, 8–11, and 16–23 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Lemble and Hager.

OPINION
§ 101 Rejection
We are unpersuaded by Appellant’s arguments (Appeal Br. 3–4; see
also Reply Br. 2) that independent claims 1, 16, and 20 are directed to
patent-eligible subject matter under 35 U.S.C. § 101.
The Examiner determined that claims 1, 16, and 20 are “directed to an
abstract idea of drafting [an] ‘invention disclosure’” (Final Act. 2) and “the
claimed limitations . . . could simply be a human performing a role of a
‘processor’ performing the claims limitations” (Ans. 4). Moreover, the
Examiner determined that
Claim 1 includes additional elements of “at least processor”,
Claim 16 includes additional elements of “user computer”,
“server” and database”, and Claim 20 includes additional
element of “at least one processor”, which are components of a
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generic network computer or is a generic network computer
itself.
(Final Act. 3.) We agree with the Examiner’s determinations and ultimate
conclusion that the claims are directed to patent-ineligible subject matter.
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 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
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. 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
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(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 (1853))); 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. (citing Benson and Flook); see also 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 (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. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing]
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generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019); see also USPTO, October 2019
Update: Subject Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019).
Under that 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) (9th ed.
2019)).
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 are 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 84 Fed. Reg. 56.

Are the claims at issue directed
to a patent-ineligible concept?
Step One
Claims 1 and 20 are method claims, which fall within the “process”
category of 35 U.S.C. § 101. Likewise, claim 16 is a system claim, which
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falls within the “manufacture” category of 35 U.S.C. § 101. Therefore,
claims 1, 16, and 20 fall within one of the four statutory categories of
patentable subject matter identified by 35 U.S.C. § 101.
Although claims 1, 16, and 20 fall within the statutory categories, we
must still determine whether the claims are directed to a judicial exception,
namely an abstract idea. See Alice, 573 U.S. at 216. Thus, we must
determine whether the claims recite a judicial exception and whether the
exception is integrated into a practical application. See 84 Fed. Reg. at 52–
55. If a claim recites a judicial exception without integrating the judicial
exception into a practical application, the claim is directed to a judicial
exception under the first step of the Alice/Mayo test. See id.

Step 2A, Prong One
Independent claim 1 is a method claim, and recites the following
limitations: “[i] forming an invention disclosure . . . by receiving a plurality
of selected information that includes identification information for a
plurality of inventors and a predefined classification code indicative of a
type of technical subject matter described by the disclosure” and “[ii] storing
the information in a central storage location.”
Thus, the method steps of claim 1 encompass mental processes. In
particular, the method limitations of claim 1 can be performed either by
human thought alone, by a human using pen and paper, or by humans
without a computer. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372–73 (Fed. Cir. 2011) (“[U]npatentable mental processes”
include “steps [that] can be performed in the human mind, or by a human
using a pen and paper.”); see also Mortg. Grader, Inc. v. First Choice Loan
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Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (“The series of steps
covered by the asserted claims . . . could all be performed by humans
without a computer.”). For example, a legal professional could receive an
invention disclosure, which includes information about the inventors and the
technical subject matter. Upon receipt, the invention disclosure could be
stored in a filing system.
Independent claim 1 further recites the following limitations: “[iv] in
response to the approval, locking the disclosure to create a locked disclosure
to prevent further editing of the disclosure,” “[v] in response to the locking,
obtaining a docket number for the disclosure from a docket system,” and
“[vi] generating a notification for an invention ranking committee selected
according to the predefined classification code to prompt the committee to
rank the disclosure.” Likewise, the method steps of claim 1 can be
performed either by human thought alone, by a human using pen and paper,
or by humans without a computer. See CyberSource Corp., 654 F.3d at
1372–73; see also Mortg. Grader, Inc., 811 F.3d at 1324. For example, the
legal professional can request that the inventors submit updates to the
invention disclosure before a deadline. Once the deadline has passed, the
legal professional assigns the invention disclosure a docketing number and
forwards such invention disclosure for management approval, such that
management prioritizes the invention disclosure based upon technical
subject matter.
Accordingly, claim 1 recites a judicial exception. Claims 16 and 20
recite limitations similar to those discussed with respect to claim 1. Thus,
claims 16 and 20 also recite a judicial exception.

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Step 2A, Prong Two
Because claims 1, 16, and 20 recite a judicial exception, we next
determine if the claims recite additional elements that integrate the judicial
exception into a practical application.
Method claim 1 includes the following limitations: “by at least one
processor, [i] forming an invention disclosure online . . . [ii] storing the
information . . . [iii] prompting approval of the disclosure . . . [iv] in
response to the approval, locking the disclosure . . . [v] in response to the
locking, obtaining a docket number . . . and generating a notification”
(emphases added).
The recited computer hardware, including a “processor” and computer
for “online” access are merely tools for performing the abstract idea. See
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed.
Cir. 2016) (“[T]he claims are directed not to an improvement in cellular
telephones but simply to the use of cellular telephones as tools in the aid of a
process focused on an abstract idea.”).
Accordingly, claim 1 does not recite additional elements that integrate
the judicial exception into a practical application. Claims 9 and 17 recite
similar additional limitations.

Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Step 2B
Because claims 1, 9, and 17 are directed to a judicial exception, we
next determine, according to Alice, whether these claims recite an element,
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or combination of elements, which is enough to ensure that the claim is
directed to significantly more than a judicial exception.
Claims 1 and 20 are method claims, which recite a “processor” and a
computer for accessing an “online” invention disclosure. Similarly,
claim 16 recites a “user computer,” a “server,” a “database,” and “user
screens.”
With respect to the claimed hardware components, Appellant’s
Specification discloses the following:
Referring now to Figure 1, an on-line invention
disclosure system 10 is illustrated. On-line disclosure system
10 is web based system having a web server 12 that is coupled
to a plurality of users, one of which is shown as user computer
14. The web server 12 as will be further described below may
be coupled to a directory server 16 containing user information
and to a database system 18. Database 18 may contain both
docketing information and disclosure information.
(Spec. 6:19–28 (emphasis added).)
In one aspect of the invention an on-line invention
disclosure system [10] includes a user computer [14] and a web
server [12] having an identification subsystem. A database [18]
is coupled to the server [12]. The server provides user screens
to the user to prompt users to provide user information to the
server.
(Spec. 4:7–12 (emphasis added).)
The generalized functional terms by which the computer components
are described reasonably indicates that Appellant’s Specification discloses:
(i) conventional user computer 14; (ii) conventional web server 12 with user
screens; and (iii) conventional database system 18. Although Appellant’s
Specification is silent with respect to the claimed “processor,” such
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processor is also a conventional computer component.2 In addition,
Appellant’s Figure 1 illustrates on-line invention disclosure system 10,
which includes user computer 14, web server 12, and database system 18
functioning cooperatively as an ordered combination.
In view of Appellant’s Specification, the claimed hardware
components, including a “processor,” a “user computer,” a “server,” a
“database,” and “user screens,” reasonably may be determined to be generic,
purely conventional computer elements, as an ordered combination.
Thus, claims 1, 16, and 20 do no more than require generic, purely
conventional computer elements, as an ordered combination, performing
generic computer functions, rather than improve computer capabilities.
Appellant argues the following:
The claims are directed to improvements in the technological
infrastructure used for creating and processing invention
disclosures. Such improvements are evidenced by the fact that,
responsive to approval of a disclosure, the disclosure is locked,
and responsive to the disclosure being locked, a docket number
is obtained, a notification for a ranking committee is generated,
etc.—none of which are abstract ideas.
(Appeal Br. 3; see also Reply Br. 2.) However, Appellant has not
adequately explained why the claim “purport[s] to improve the functioning
of the computer itself” or “any other technology or technical field.” Alice,
573 U.S. at 225. In particular, Appellant has not explained how “creating
and processing invention disclosures” improves the function of a computer
or other technology. Moreover, the Examiner has identified the appropriate

2 A “CPU” (or “processor”) is defined as “[t]he computational and control
unit of a computer” and “is the device that interprets and executes
instructions.” MICROSOFT® COMPUTER DICTIONARY 132 (5th ed. 2002).
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judicial exception as “mental processes” and the Examiner has compared the
claimed concepts of independent claim 1 to the appropriate Federal Circuit
decision (i.e., language from CyberSource).
Appellant further argues the following:
Claim 1, for example, requires that the docket number be
obtained for the disclosure from a docket system, and that a
notification for an invention ranking committee selected
according to the predefined classification code be generated to
prompt the committee to rank the disclosure. These operations
are not mere generic activity, but specifically tailored (or
specialized) to the world of invention disclosures. A generic
computer, for example, is not able to obtain data from a docket
system.
(Appeal Br. 3–4.) However, other than conclusory statements that the
claims recite “something more” because “[a] generic computer . . . is not
able to obtain data from a docket system,” Appellant has not provided any
further arguments or evidence to support this position.
Thus, we agree with the Examiner that claims 1, 16, and 20 are
directed towards patent-ineligible subject matter.
Accordingly, we sustain the rejection of independent claims 1, 16, and
20 under 35 U.S.C. § 101. Claims 2–5, 8–11, 17–19, and 21–23 depend
from independent claims 1, 16, and 20, and Appellant has not presented any
additional substantive arguments with respect to these claims. We sustain
the rejection of claims 2–5, 8–11, 17–19, and 21–23 under 35 U.S.C. § 101
for the same reasons discussed with respect to independent claims 1, 16, and
20.

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§ 103 Rejection
We are unpersuaded by Appellant’s arguments (Appeal Br. 4–5; see
also Reply Br. 2) that the combination of Lemble and Hager would not have
rendered obvious independent claim 1, which includes the limitation “in
response to the locking, obtaining a docket number for the disclosure from a
docket system.”
The Examiner found that the automatic distribution system of Hager
for electronic invention disclosure documents, including determining if the
invention disclosure document is in final form and assigning a unique
disclosure number, collectively correspond to the limitation “in response to
the locking, obtaining a docket number for the disclosure from a docket
system.” (Ans. 4–5; see also Final Act. 5.) We agree with the Examiner’s
findings.
Hager relates to “the automated distribution of an electronic document
to a preselected list of recipients.” (Abstract.) Figures 2 and 3 of Hager
illustrate “creation of an electronic invention disclosure document which
may be automatically distributed.” (Col. 2, ll. 51–58.) In reference to
Figure 2, Hager explains the following:
block 64 depicts the determination of whether or not the
invention disclosure document is now in final form and ready to
be submitted to an evaluation facility by the performance of an
automated error check to determine if all required data for a
complete invention disclosure document has been entered. . . .
Thereafter, block 66 illustrates the transmission of the invention
disclosure document to an evaluation facility and the process
terminates, as depicted in block 68.
(Col. 4, l. 68 to col. 5, l. 12.) Moreover, in reference to Figure 5, Hager
explains that “block 78 depicts the automatic assigning of a unique
identifier, such as a disclosure number, to be associated thereafter with the
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invention disclosure document.” (Col. 5, ll. 57–60.) Because Hager
explains that in block 64, the invention disclosure document is only placed
in “final form” after completion of an error check before proceeding to
block 78, Hager teaches the limitation “in response to the locking, obtaining
a docket number for the disclosure from a docket system.”
Appellant argues the following:
there is a check to determine whether the invention disclosure is
in final form before transmitting it to an evaluation facility
(Figure 2), and there is a check to determine whether a received
invention disclosure is organized in the desired format and
includes all required information before assigning a disclosure
number (Figure 3). . . . But just because operation A occurs
before operation D does not mean that operation D is performed
in response to operation A. Put a different way, assigning a
disclosure number is not in response to finalizing.
(Appeal Br. 5; see also Reply Br. 2.) Contrary to Appellant’s arguments,
Hager explains that placing the invention disclosure document in “final
form” (i.e., block 64) is required before proceeding to the step of assigning a
disclosure number (i.e., block 78).
Thus, we agree with the Examiner that the combination of Lemble and
Hager would have rendered obvious independent claim 1, which includes the
limitation “in response to the locking, obtaining a docket number for the
disclosure from a docket system.”
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 103. Claims 2–5 and 8–11 depend from claim 1, and Appellant
has not presented any additional substantive arguments with respect to these
claims. Therefore, we sustain the rejection of claims 2–5 and 8–11 under
35 U.S.C. § 103, for the same reasons discussed with respect to independent
claim 1.
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Independent claims 16 and 20 recite limitations similar to those
discussed with respect to independent claim 1, and Appellant has not
presented any additional substantive arguments with respect to these claims.
We sustain the rejection of claims 16 and 20, as well as dependent claims
17–19 and 21–23, for the same reasons discussed with respect to claim 1.

CONCLUSION
The Examiner’s decision rejecting claims 1–5, 8–11, and 16–23 under
35 U.S.C. § 101 is affirmed.
The Examiner’s decision rejecting claims 1–5, 8–11, and 16–23 under
35 U.S.C. § 103 is affirmed.

DECISION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 8–11,
16–23
101 Eligibility 1–5, 8–11,
16–23

1–5, 8–11,
16–23
103 Lemble, Hager 1–5, 8–11,
16–23

Overall
Outcome
1–5, 8–11,
16–23

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED