ELEMICA, INC.

Patent Trials and Appeals Board

Sep 16, 2020

2020002970 (P.T.A.B. Sep. 16, 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.
14/534,941 11/06/2014 Arun SAMUGA 688196-54U1 1075
570 7590 09/16/2020
PANITCH SCHWARZE BELISARIO & NADEL LLP
TWO COMMERCE SQUARE
2001 MARKET STREET, SUITE 2800
PHILADELPHIA, PA 19103
EXAMINER
GEORGALAS, ANNE MARIE
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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):
usptomail@panitchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARUN SAMUGA, RICH KATZ, and BLAKE SCHNORF
________________

Appeal 2020-002970
Application 14/534,941
Technology Center 3600
____________

Before JUSTIN BUSCH, MATTHEW J. McNEILL, and SCOTT E. BAIN,
Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒20, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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 Elemica,
Inc. Appeal Br. 1.
Appeal 2020-002970
Application 14/534,941

2

STATEMENT OF THE CASE
Introduction
Appellant’s application relates to a trading partner commerce network
that recommends and connects trading partners that generally do not conduct
business together. Spec. ¶ 6. Claim 1 is illustrative of the appealed subject
matter and reads as follows with bracketed numbering added:
1. A method of establishing communications between
supply chain communication partners for supply chain
communications, the method comprising:
[1] receiving, over a network interface of a supply chain
communications system resident on at least one server, an
overall plurality of messages from a first trading partner, each
message of the overall plurality of messages destined for a first
plurality of recipients, the first plurality of recipients including
a first recipient, the first recipient receiving a first plurality of
messages of the overall plurality of messages and having a first
location of operation, the first plurality of messages being sent
from a first enterprise server of the first trading partner to the
supply chain communications system;
[2] determining, by a message translation system, for
each message of the first plurality of messages from the first
trading partner, a message type of each of the first plurality of
messages, the determining producing a first plurality of
message types associated with the first plurality of messages;
[3] determining, by the message translation system, for
each message of the first plurality of messages from the first
trading partner, a required output format for each message of
the first plurality of messages, the determining producing a first
plurality of output formats associated with the first plurality of
messages, respectively, the first plurality of output formats
being determined based upon the first plurality of message
types of the first plurality of messages, respectively, and
configuration information related to the first recipient,
respectively;
Appeal 2020-002970
Application 14/534,941

3

[4] translating, by the message translation system, each
message of the first plurality of messages from the first trading
partner into a determined required output format for the
message, the translating producing a translated first plurality of
messages;
[5] transmitting, using a network interface of the supply
chain communications system, each translated message of the
translated first plurality of messages to the first recipient;
[6] receiving, in a master data store on the at least one
server, first business data from the message translation system
regarding the first plurality of messages, including the first
location of operation;
[7] receiving, in the master data store resident on the at
least one server, second business data from the message
translation system regarding a second plurality of messages sent
to the supply chain communications system from a second
enterprise server of a second trading partner, including
locations for transactions of each of the second plurality of
messages, wherein the second trading partner is not among the
first plurality of recipients, the first trading partner, the second
trading partner and the plurality of recipients connected to the
supply chain communications system;
[8] receiving, at the master data store, a request for
master data, including the first business data and the second
business data, from a pattern recognition engine, the pattern
recognition engine sending the master data to a
recommendation engine;
[9] recognizing, via the pattern recognition engine, a
correlation between the first plurality of messages and the
second plurality of messages in the recommendation engine of
the supply chain communications system based on similarities
between at least a portion of the stored information of the
master data regarding the first plurality of messages and at least
a portion of the stored information of the master data regarding
the second plurality of messages including at least one of the
locations for transactions of each of the second plurality of
messages being the same as the first location of operation;
Appeal 2020-002970
Application 14/534,941

4

[10] recognizing, via the supply chain communications
system, that the first recipient is not doing business with the
second trading partner;
[11] transmitting, by a recommendation engine of the
supply chain communications system through the second
enterprise server, information to the second trading partner
regarding establishment of communications with the first
recipient;
[12] receiving, by the recommendation engine, an
acceptance of connection from the second trading partner that
accepts the establishment of communications between the
second trading partner and the first recipient; and
[13] automatically sending, by a campaign management
engine, a request for the first business data and the second
business data to the master data store and the campaign
management engine creates a program creation alert to
automate transactions by creating convenient connections
between the second trading partner and the first recipient, the
program creation alert facilitating the logging, filtering and
sending of business messages in the message translation system
from the second trading partner to the first recipient.
The Examiner’s Rejections
Claims 1‒20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. See Final Act. 7‒10.
Claims 1‒15 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written-description requirement. See Final Act. 4.
Claims 1‒15 stand rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter regarded as the invention. See Final Act. 5‒7.
Appeal 2020-002970
Application 14/534,941

5

ANALYSIS
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, 69 (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
Appeal 2020-002970
Application 14/534,941

6

rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 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 176; 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. (citation omitted) (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,
Appeal 2020-002970
Application 14/534,941

7

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 PTO published revised guidance on the
application of § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (“Revised
Guidance”). 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 Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).
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 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.
See Revised Guidance.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
Appeal 2020-002970
Application 14/534,941

8

identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. Claim 1 recites “[a] method.”
Appellant does not argue the Examiner erred in concluding claim 1 falls
within the four statutory categories of patentable subject matter. We agree
with the Examiner’s conclusion because claim 1 falls within the process
category.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite 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). See Revised Guidance.
The Examiner determines claim 1 is directed to “establishing
communications between supply chain communication partners for supply
chain communications.” Final Act. 7‒8. The Examiner determines this is a
method of organizing business relations, which is a certain method of
organizing human activities that qualifies as an abstract idea. Id. at 8.
Appellant argues the Examiner errs because the claims are not a
mental process that can be performed in the human mind. See Appeal
Br. 6‒7. Appellant argues the invention is a narrowly claimed solution that
automatically connects trading partners and translates messages between
them without human intervention and that this narrowly claimed solution is
not an abstract idea. Id. at 6.
Claim 1 recites a method of establishing communications between
supply chain communication partners that includes thirteen steps. In
particular, Steps 1, 6, 7, 8, and 12 recite “receiving” various data related to
Appeal 2020-002970
Application 14/534,941

9

communications between trading partners. Steps 2 and 3 recite
“determining” a message type and output format for such messages. Step 4
recites “translating” received messages according to the requirements of
steps 2 and 3. Step 5 recites “transmitting” the translated message. Steps 9
and 10 recite “recognizing” relationships between potential trading partners
and step 11 recites “transmitting” information to a trading partner about
establishing communications with another potential partner. Step 13 recites
“sending” an alert that creates connections between trading partners.
The steps of the claimed method, under their broadest reasonable
interpretation, recite business relations, in particular identifying potential
relationships between members of a supply chain network and
recommending communications between these members. These business
relations comprise commercial or legal interactions, which fall within the
certain methods of organizing human activity category of abstract ideas
identified in the Revised Guidance.
We also note that certain steps of the claimed method, under their
broadest reasonable interpretation, recite concepts that are performed in the
human mind, including observations, evaluations, and judgments. In
particular, steps 1, 6, 7, 8, and 12 recite “receiving” various data related to
communications between trading partners, which is a series of observations.
Steps 2 and 3 recite “determining” a message type and output format for
such messages, which are evaluations or judgments. Step 4 recites
“translating” messages, which is an evaluation or judgment. Steps 9 and 10
recite “recognizing” relationships between potential trading partners, which
is a series of evaluations or judgments.
Appellant argues claim 1 cannot be performed in the human mind, but
Appeal 2020-002970
Application 14/534,941

10

this argument is conclusory and unpersuasive. See Appeal Br. 6. Appellant
has not persuasively identified any portion of the above-recited steps that
cannot be performed in the human mind or using pen and paper. Indeed, but
for the generic computer limitations discussed in more detail with respect to
Prong 2, these steps may be performed in the human mind or using pen and
paper. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.”);
Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015)
(“Courts have examined claims that required the use of a computer and still
found that the underlying, patent-ineligible invention could be performed via
pen and paper or in a person’s mind.”).
Accordingly, we conclude claim 1 recites concepts performed in the
human mind, which fall within the mental processes category of abstract
ideas identified in the Revised Guidance.
Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
The “additional elements” recited in claim 1 include “a network
interface,” “a supply chain communication system,” “at least one server,” “a
first [and second] enterprise server,” “a message translation system,” “a
master data store,” “a pattern recognition engine,” “a recommendation
engine,” and “a campaign management engine.” None of these additional
Appeal 2020-002970
Application 14/534,941

11

elements constitute “additional elements that integrate the exception into a
practical application.”
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See Revised Guidance.
Appellant argues claim 1 integrates the recited abstract idea into a
practical application by “automatically connecting two trading partners and
translating the messages sent between them after a recommendation to
connect is accepted by one of the previously unconnected trading partners.”
See Appeal Br. 7.
Appellant has not persuaded us of Examiner error. Claim 1 recites a
series of steps to translate messages between trading partners and identify,
based on the translated messages, potential additional trading partners for
either party. Thus, as argued by Appellant (see Appeal Br. 7), claim 1
focuses on the business practice of translating messages and identifying
business relationships, not on any particular improvement to technology.
The critical task identified by Appellant—identifying potential trading
partners—is purportedly improved by recognizing potential connections
using translated message data, not any improvement to the underlying
technology. None of these alleged improvements “enables a computer . . . to
Appeal 2020-002970
Application 14/534,941

12

do things it could not do before.” Finjan, Inc. v. Blue Coat Sys., Inc., 879
F.3d 1299, 1305 (Fed. Cir. 2018) (emphasis added). Such claims, whose
focus is “not a physical-realm improvement but an improvement in wholly
abstract ideas,” are not eligible for patenting. SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Our reviewing court has “made clear that mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Like the claims in Credit
Acceptance, the focus of claim 1 is on the business practice, “and the recited
generic computer elements ‘are invoked merely as a tool.’” Id. (citing
Enfish, 822 F.3d 1327); see also Versata Dev. Grp., Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1334 (Fed. Cir. 2015) (collecting cases). The claimed
additional elements are used to achieve the claimed results and are not
focused on “a specific means or method that improves the relevant
technology.” McRO, 837 F.3d at 1314. Also, the Specification notes that
making connections between trading partners was traditionally “difficult and
labor intensive.” Spec. ¶ 4. Appellant claims to improve this business
practice, not any particular technology.
The additional elements of claim 1, including those identified above,
comprise generic computer elements that are invoked as a tool to implement
this improved business practice. The Specification confirms the generic
nature of these additional elements. See, e.g., Spec. ¶¶ 20‒22.
For these reasons, Appellant has not persuaded us of Examiner error
with respect to Step 2A, Prong 2 of the Revised Guidance. We, therefore,
Appeal 2020-002970
Application 14/534,941

13

conclude the judicial exception is not integrated into a practical application
under the Revised Guidance.
Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an “inventive concept” that “must be significantly more
than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer.” BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016). There must be more than “computer functions [that] are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 573 U.S. at 225 (second alteration in original) (quoting
Mayo, 566 U.S. at 73).
Appellant argues claim 1 is extremely specific, which ensures the
claim is more than mere instructions to apply a method of organizing human
activity. See Reply Br. 4. Appellant has not persuaded us of Examiner error.
Narrow claims do not ensure patent eligibility. “As a matter of law,
narrowing or reformulating an abstract idea does not add ‘significantly
more’ to it.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1291
(citing SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir.
2018).
The Examiner determines claim 1 recites generic computer systems
performing generic computer functions and does not recite an inventive
concept. See Final Act. 7‒8; Ans. 10‒12. We agree. Appellant has not
persuasively identified, nor have we found, any “additional elements” that
amount to “significantly more” than the abstract idea recited by claim 1. As
noted above, the Specification confirms the generic nature of the claimed
Appeal 2020-002970
Application 14/534,941

14

additional elements. See, e.g., Spec. ¶¶ 20‒22. We, therefore, sustain the
patent-ineligible subject matter rejection of claim 1. We also sustain the
rejection of independent claim 15, which Appellant argues is patent eligible
for the same reasons.
We also sustain the rejection of dependent claims 2‒14 and 16‒20, for
which Appellant relies on the same arguments. See id.

Written Description
The Examiner finds claim 1 lacks written-description support for:
and the campaign management engine creates a program
creation alert to automate transactions by creating convenient
connections between the second trading partner and the first
recipient, the program creation alert facilitating the logging,
filtering and sending of business messages in the message
translation system from the second trading partner to the first
recipient.
See Final Act. 4; Ans. 3‒5.
Appellant argues the Examiner errs because the Specification supports
this limitation in at least paragraphs 16, 23, 25, and 26 and Figures 1 and 2.
See Appeal Br. 3. Appellant argues the Specification discloses the campaign
management engine creates the program creation alert and sends the alert to
the seller/buyer. See id. (citing Spec. ¶ 25). Appellant argues Figure 2 shows
the program creation alert is sent from the campaign management engine to
the seller/buyer, which facilitates messages being transmitted between the
seller/buyer and the message translation system. Id. (citing Fig. 2).
Appellant has not persuaded us of Examiner error. The Specification
discloses the campaign management engine creates a program creation alert
and sends the program creation alert to the seller/buyer. See Spec. ¶ 25; see
also Fig. 2. The Specification also discloses network 110 logs, filters, and
Appeal 2020-002970
Application 14/534,941

15

sends business messages. Spec. ¶ 23. However, Appellant does not identify,
nor have we found, any disclosure in the Specification of “the program
creation alert facilitating the logging, filtering and sending of business
messages in the message translation system from the second trading partner
to the first recipient,” as claimed.
The fundamental factual inquiry is whether the specification conveys
with reasonable clarity to those skilled in the art that, as of the filing date
sought, applicant was in possession of the invention as now claimed. See,
e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991).
Here, there is no disclosure of a connection between the program creation
alert and the logging, filtering, and sending of business messages, as recited
in claim 1. Accordingly, we sustain the Examiner’s written-description
rejection of claim 1. We also sustain the written-description rejection of
dependent claims 2‒15 for the same reasons.
Indefiniteness
The Examiner identifies multiple limitations in claim 1 that the
Examiner determines render the claim indefinite. See Final Act. 5‒7. In
particular, the Examiner determines the limitation “transmitting, by a
recommendation engine” renders claim 1 indefinite because it is unclear
whether this recommendation engine is the same recommendation engine
that is previously recited twice in claim 1. See id. at 5.
Appellant argues an ordinarily skilled artisan would recognize the
recommendation engine to be the same as the recommendation engine
previously recited in the claim. See Appeal Br. 4.
Appellant has not persuaded us of Examiner error. Claim 1 recites the
limitation “recommendation engine” four times. First, claim 1 recites “the
Appeal 2020-002970
Application 14/534,941

16

pattern recognition engine sending the master data to a recommendation
engine.” Second, claim 1 recites “recognizing, via the pattern recognition
engine, a correlation between the first plurality of messages and the second
plurality of messages in the recommendation engine of the supply chain
communications system based on similarities.” This second recitation is
introduced using “the” to indicate that it is referencing the “a
recommendation engine” previously recited.
Third, claim 1 recites the disputed limitation, “transmitting, by a
recommendation engine of the supply chain communications system through
the second enterprise server, information to the second trading partner
regarding establishment of communications with the first recipient.” In this
instance, claim 1 again recites “a recommendation engine” along with the
qualifier “of the supply chain communications system.” Finally, claim 1
recites “receiving, by the recommendation engine, an acceptance of
connection from the second trading partner.”
We agree with the Examiner that the scope of the claim is unclear,
specifically with respect to the “recommendation engine” limitation in the
third and fourth recitations. The third “recommendation engine” may refer to
the same recommendation engine previously recited twice, as Appellant
contends, but it is unclear whether this is the case from the language of the
claims. Appellant argues this interpretation is clear because the third
recommendation engine recites “of the supply chain communications
system.” We disagree because this qualifier does not clarify whether there is
one or two recommendation engines (or potentially more). Thus, we agree
with the Examiner that as currently drafted, claim 1 is indefinite.
Appeal 2020-002970
Application 14/534,941

17

The Examiner also determines the limitation “automatically sending
by a campaign management engine, a request for the first business data and
the second data” is unclear because the claims do not recite the campaign
management engine receiving or using the requested data. See Ans. 6‒7. The
Examiner determines this limitation seems to imply that the campaign
management engine is performing other claim limitations, rendering the
claim unclear. Id.
Appellant argues the limitation is clear on its face and the open-ended
nature of the claim does not render the limitations indefinite. See Reply
Br. 3. We agree with Appellant. The fact that claim 1 does not specify what
happens after the campaign management engine automatically sends the
claimed data request does not render the limitation itself unclear. Instead,
this open-ended recitation impacts the breadth of the claim.
The Examiner also determines the limitation:
and the campaign management engine creates a program
creation alert to automate transactions by creating convenient
connections between the second trading partner and the first
recipient, the program creation alert facilitating the logging,
filtering and sending of business messages in the message
translation system from the second trading partner to the first
recipient
is unclear because neither the claim nor the Specification explain how the
program creation alert automates transactions or facilitates the logging,
filtering, and sending of business messages. See Ans. 7‒10.
Appellant argues this limitation is clear because these functions are
achieved by the claimed method steps. See Appeal Br. 5. Appellant argues
the program creation alert does not perform these functions, but instead
Appeal 2020-002970
Application 14/534,941

18

alerts other portions of the system that the connection has been created and
is running. See id.
In light of Appellant’s argument, we agree with the Examiner that this
limitation is unclear. Specifically, Appellant argues the program creation
alert does not perform any of the claimed functions, but claim 1 recites the
program creation alert is created “to automate transactions by creating
convenient connections between the second trading partner and the first
recipient.” Further, the program creation alert “facilitat[es] the logging,
filtering and sending of business messages in the message translation system
from the second trading partner to the first recipient.” Appellant’s argument
seems to indicate that the program creation alert does not perform these
steps, but instead is a mere notification that these steps are otherwise
occurring. Accordingly, this limitation is unclear. For these reasons, we
sustain the rejection of claim 1 as indefinite. We also sustain the
indefiniteness rejection of dependent claims 2‒15.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1‒20 101 Eligibility 1‒20
1‒15 112(a) Written Description 1‒15
1‒15 112(b) Indefiniteness 1‒15
Overall
Outcome
1‒20

Appeal 2020-002970
Application 14/534,941

19

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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED