12482603 (P.T.A.B. Jun. 5, 2018)

Ex Parte Acker et al

Patent Trial and Appeal BoardJun 5, 2018

12482603 (P.T.A.B. Jun. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/482,603 06/11/2009 46797 7590 06/07/2018 Patterson & Sheridan, LLP 24 Greenway Plaza, Suite 1600 Houston, TX 77046 FIRST NAMED INVENTOR Warren P. Acker UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. ROC920080448US 1 7494 EXAMINER MISIASZEK, AMBER AL TSCHUL ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 06/07/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): Pair_eOfficeAction@pattersonsheridan.com IBM@P ATTERSONSHERIDAN.COM rociplaw@us.ibm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WARREN P. ACKER and RICHARD J. STEVENS Appeal2017-000022 Application 12/482,603 Technology Center 3600 Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and SCOTT B. HOWARD, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1, 3-8, 10-15, and 17-24. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellants indicate that International Business Machines Corporation is the real party in interest. Appeal2017-000022 Application 12/482,603 The claims are directed to dynamically dispatching workflows in response to workflow rules. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A computer-implemented method for dynamically dispatching at least one workflow of a plurality of workflows, the method comprising configuring one or more computer processors to perform an operation comprising: receiving a plurality of dispatch rules, each specifying at least one workflow and at least an associated condition for executing the respective workflow, wherein each workflow comprises a plurality of process steps for performing a different overall process to start, and to complete, a transaction request; receiving the transaction request for executing at least one of the workflows, wherein each of the plurality of workflows is predefined; evaluating during a run-time in a service-oriented architecture (SOA) based system comprising the one or more computer processors, an attribute of the transaction request against at least one of the associated conditions of the plurality of dispatch rules; selecting at least one of the plurality of workflows to execute based on the evaluation; and in response to receiving the transaction request, dispatching the selected workflow with the transaction request for execution to invoke web services managed by the determined workflow. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: DiFilippo et al. Jilk McLaughlin et al. US 2002/0164059 Al US 6,859,523 B 1 US 2007 /0073572 Al 2 Nov. 7, 2002 Feb.22,2005 Mar. 29, 2007 Appeal2017-000022 Application 12/482,603 REJECTIONS The Examiner made the following rejections: Claims 1, 3-8, 10-15, and 17-24 are rejected under 35 U.S.C. Â§ 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1, 3---6, 8, 10-13, 15, 17-20 and 22-24 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over McLaughlin (US 2007 /0073572 Al; published Mar. 29, 2007) in view of Jilk (US 6,859,523 Bl; issued Feb.22,2005). Claims 7, 14, and 21 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over McLaughlin in view of Jilk and further in view ofDiFilippo (US 2002/0164059 Al; published Nov. 7, 2002) ANALYSIS 35 us.c. Â§ 101 We will sustain the rejection of claims 1, 3-8, 10-15, and 17-24 under 35 U.S.C. Â§ 101 as directed to patent ineligible subject matter. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, ... determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, "[ w ]hat else is there in the claims before us?" To answer that question, . . . consider the elements of each claim both individually and "as an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent- eligible application. [The Court] described step two of this analysis as a search for an "'inventive concept"'-i.e., an 3 Appeal2017-000022 Application 12/482,603 element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself." Alice Corp. Pty. Ltd. v CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. Although the Court in Alice made a direct finding as to what the claims were directed to, we find in this case, the claims themselves and the Specification provide sufficient information to inform one as to what the claimed invention is directed to. The steps in claim 1 result in: dispatching the selected at least one workflow with the transaction request for execution to invoke web services managed by the determined workflow. The Specification further describes, "the invention relates to dynamically binding a transaction to a business process workflow." (Spec. i-f 1 ). The Specification further states: In practice, an individual may utilize workflow modeling and runtime technologies and corresponding standards such as Business Process Execution Language (BPEL) to enable workflow-oriented applications, in which each business process is modeled as a workflow. A workflow is a series of steps involving a mix of services (software and human-provided) that may then be deployed and executed on a number of vendor provided, workflow runtime platforms. (Id. i-f 3). Additionally the Specification describes solving business needs: "Workflow-oriented applications are central to the SOA [service-oriented architecture] pattern and allow a set of generic software services to be used 4 Appeal2017-000022 Application 12/482,603 in a variety of different combinations to solve an ever evolving set of business needs. (Id.). Thus, all this evidence shows that claim 1 is directed a method for dynamically dispatching a workflow to meet a new or existing business requirement. It follows from prior Supreme Court cases, and Gottschalk v. Benson, 409 U.S. 63 (1972) in particular, that the claims at issue here are directed to an abstract idea. Here, the Specification states that a workflow can be a business process and can be organized by a human being. We determine the claims to be directed to: abstractly organizing human or business activities and to be a fundamental economic practice (process organization relationship)-which are at the patent-ineligible end of the 35 U.S.C. Â§ 101 spectrum. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2356. That is, we find the claimed steps of, receiving, evaluating, selecting, and dispatching, constitute physical acts by a human and/or "analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category." Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas); Appistry, LLC v. Amazon.com, Inc., 676 F. App'x 1007 (Mem) (Fed. Cir. 2017) ("distributed processing akin to the military's command and control system, a longstanding and intuitive practice used by many large hierarchical organizations that value speed, efficiency, reliability, and accountability. The patents describe systems and methods of using a network of multiple actors to efficiently and reliably process information and/or complete a task 5 Appeal2017-000022 Application 12/482,603 by breaking down the job into small pieces, each handled by a different actor organized within an internal hierarchy.") Thus, a method for dynamically dispatching a workflow to meet a new or existing business requirement is an "abstract idea" beyond the scope of Â§ 101. As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise contours of the "abstract ideas" category in this case. It is enough to recognize that there is no meaningful distinction in the level of abstraction between the concept of an intermediated settlement in Alice and the concept of a method for dynamically dispatching a workflow to meet a new or existing business requirement, at issue here. Both are squarely within the realm of "abstract ideas" as the Court has used that term. That the claims do not preempt all forms of the abstraction or may be limited to dispatching a workflow, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir. 2015). The introduction of a computer into the claims does not alter the analysis at Mayo step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea "while adding the words 'apply it"' is not enough for patent eligibility. Nor is limiting the use of an abstract idea "'to a particular technological environment."' Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to "implement[t]" an abstract idea "on ... a computer," that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our Â§ 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of "additional feature[ e ]" that provides any 6 Appeal2017-000022 Application 12/482,603 "practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself." Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations omitted). "[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea ... on a generic computer." Id. at 2359. 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 take in data, compute a result, and return the result to dispatch a selected workflow -some of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the industry. (See Spec. i-fi-f l--4). In short, each step does no more than require a generic computer to perform generic computer functions. Considered as an ordered combination, the computer components of Appellants' method add nothing that is not already present when the steps are considered separately. Viewed as a whole, Appellants' claims simply recite the concept of dynamically dispatching a workflow to meet a new or existing business requirement. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than instructions for creating a topology of assets relative to an offering to manage distributed offerings to customers based on the topology. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360. 7 Appeal2017-000022 Application 12/482,603 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 has long "warn[ ed] ... against" interpreting Â§ 101 "in ways that make patent eligibility 'depend simply on the draftsman's art.' Jd._at 2360 (alterations in original). We have reviewed all the arguments Appellants have submitted concerning the patent eligibility of the claims before us which stand rejected under 35 U.S.C. Â§ 101. (App. Br. 8-10) 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. Appellants argue, "the claims are directed to significantly more than an abstract idea and therefore overcome and alleviate any abstract idea concerns." (App. Br. 13). Appellants argue "the presently claimed solution is 'rooted in computer technology."' "The present claims do not merely recite the user provides a workflow and the computer simply executes the workflow." (App. Br. 13; see also Reply Br. 4). Additionally, Appellants argue "much like the claims in Enfish, the focus of the claims is on a specific asserted improvement in computer capabilities and not an abstract idea where the processors are merely used as a tool." (Reply Br. 3) We disagree with Appellants' arguments because the workflows are directed to business processes using the computer as a tool, and the 8 Appeal2017-000022 Application 12/482,603 workflows do not necessarily make the computer work in a different manner to improve the computer capabilities. As a result, Appellants' arguments do not show error in the Examiner's factual findings or legal conclusion of a lack of patent-eligible subject matter. Appellants further argue "[ t ]he present case is like Diehr in that respect, as the present claims use a computer to solve a technological problem and do not attempt to tie up all methods of invoking web services by dynamically selecting a workflow based on a user's request." (Reply Br. 4 ). Appellants further argue the claimed invention with respect to paragraphs 2, 4, and 15 of the Specification and generally conclude "that the independent claims do overcome a problem rooted in computer technology and clearly are directed to 'something significantly more' than an abstract idea." (Reply Br. 5). We disagree with Appellants and find that the workflows which are implemented do not overcome a problem rooted in computer technology and does not necessarily improve the operation of the computer itself. The question is whether the claims as a whole "focus on a specific means or method that improves the relevant technology" or are "directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case, claim 1, as a whole, is focused on the idea of dynamically dispatching a workflow to meet a new or existing business requirement. Consequently, Appellants' arguments do not show error in the Examiner's factual findings or conclusion of a lack of patent eligible subject 9 Appeal2017-000022 Application 12/482,603 matter of independent claim 1 and independent claims 8 and 15 and dependent claims 3-8, 11-15, and 18-24 not separately argued. 35 us.c. Â§ 103 Appellants argue that the combination of the McLaughlin and Jilk references do not teach the limitations of claim 1 because the combination result in a workflow being selected based upon a worker being qualified to prefer perform a task before the task has been defined. (App. Br. 29). The Examiner clarifies the grounds of the rejection in the Answer, and the Examiner finds: McLaughlin discloses rece1vmg tasks and then assigning a worker to said task. It is inherent that the tasks would be defined before being assigned so that the resource manager is assigning the proper task to the proper resource/worker. (See McLaughlin page 3, para. 39, Resource allocators receive automatic notification of their assignment to each binding in FIG. 5-- 500 and then associate workers at step 520 to the bindings based upon the site and task parameters. Workers receive automatic notification of their assignment to bindings at step 545 ... The worker level at step 180 accesses the server at step 110 using worker devices 1 through m). Therefore, the task is defined before the worker is assigned to the task. (Ans. 8). Appellants respond to the Examiner's clarifications and contend: As can be seen above, the user at the fourth logical management level selects workers and assigns them to bindings at step 520. See McLaughlin i-f [0039]. However, McLaughlin teaches that "a user at a first or primary logical level 120, is the default planner at job creation time." i-f [0035]. Stated differently, the user at the first step determines the workflow. See McLaughlin i-fi-1 [0035]-[0039]. Thus, the Office asserts that a person at the first step will select the workflow based on a worker at the fourth step. However, it would be nonsensical to evaluate a worker's ability 10 Appeal2017-000022 Application 12/482,603 to complete a task at the fourth step to determine an entire workflow which is created at the first step. Indeed, doing so completely ignores the actions taken in the second and third steps as shown in Figures 3 and 4 of McLaughlin. Therefore, Applicants respectfully submit that combination of McLaughlin and Jilk does not teach "evaluating . . . an attribute of the transaction request against at least one of the associated conditions of the plurality of dispatch rules, [and] selecting at least one of the plurality of workflows to execute based on the evaluation." (Reply Br. 8-9). For essentially the same reasons argued by Appellants (i.), we are persuaded based upon a preponderance of the evidence, that Appellants have shown error in the Examiner's factual findings and legal conclusion of obviousness regarding independent claims 1, 8, and 15 and their respective dependent claims. CONCLUSIONS The Examiner did not err in claims 1, 3-8, 10-15, and 17-24 based upon a lack of patent eligible subject matter, and the Examiner erred in rejecting claims 1, 3-8, 10-15, and 17-24 based upon obviousness under 35 U.S.C. Â§ 103. DECISION For the above reasons, we sustain the Examiner's patent eligibility rejection of claims 1, 3-8, 10-15, and 17-24, and we reverse the Examiner's obviousness rejections of claims 1, 3-8, 10-15, and 17-24. 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. Â§ 41.50(a)(l). 11 Appeal2017-000022 Application 12/482,603 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 12