Ex Parte Addala et al

Patent Trial and Appeal Board

Oct 30, 2017

12718520 (P.T.A.B. Oct. 30, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/718,520 03/05/2010 Raju ADDALA T9049-19573US01 5038
74739 7590 11/01/2017
MILES & STOCKBRIDGE P.C.
Oracle International Corporation
1751 Pinnacle Drive
Suite 1500
Tysons Corner, VA 22102-3833
EXAMINER
ZURITA, JAMES H
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
Ipdocketing @ Miles S tockbridge. com
bgoldsmith @ miles stockbridge .com
smcvean @ milesstockbridge. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJU ADD ALA, ALOK SINGH,
SRINIVAS PAGADALA, ZEESHAN BUTT,
SUNITA DATTI, and SARITA SRIDHARAN
Appeal 2016-003598
Application 12/718,5201
Technology Center 3600
Before MICHAEL J. STRAUSS, AMBER L. HAGY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3—8, 10—13, and 15—21, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION UNDER
37 C.F.R. § 41.50(b).
Technology
The application relates to ways “to selectively adjust a portion of an
order in an efficient and automatic manner” using “a template that defines
how to create a task.” Spec. H 6, 75.
1 According to Appellants, the real party in interest is Oracle International
Corp. App. Br. 3.
Appeal 2016-003598
Application 12/718,520
Claim 1 is illustrative and reproduced below:
1. A non-transitory computer-readable medium having
instructions stored thereon, when executed by a processor, cause
the processor to utilize task layer service patterns for a distributed
order orchestration system, the utilizing comprising:
creating a task layer service pattern comprising a template
that provides a task layer service, the template comprising
processing logic for one or more task layer services of an
executable orchestration process that orchestrates an order, the
task layer service comprising processing logic to perform an
operation, and the task layer service producing a request that is
sent to an external fulfillment system;
creating the task layer service from the task layer service
pattern using metadata associated with the executable
orchestration process;
assigning the task layer service to a step of the executable
orchestration process;
executing the step of the executable orchestration process;
executing the task layer service to perform the operation,
the operation comprising invoking a fulfillment service of the
external fulfillment system that implements an external task;
receiving a change request to the order; and
executing one of:
an update task layer service that is created from an
update task layer service pattern to adjust the operation
performed by the task layer service; or
a cancel task layer service that is created from a
cancel task layer service pattern to cancel the operation
performed by the task layer service.
Rejections
Claims 1, 3—8, 10—13, and 15—21 stand rejected under 35 U.S.C. § 101
as being directed to ineligible subject matter. Final Act. 7.
Claims 1, 3—8, 10—13, and 15—21 stand rejected under 35 U.S.C.
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Application 12/718,520
§ 103(a) as obvious over Hoffman et al. (US 7,546,257 B2; June 9, 2009).
Final Act. II.2
ISSUES
1. Did the Examiner err in concluding claim 1 is directed to an
abstract idea?
2. Did the Examiner err in concluding Hoffman renders claim 1
obvious?
ANALYSIS
§101
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The Supreme Court, however, has “long held that
this provision contains an important implicit exception” that “[ljaws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). “Issues of patent-eligible subject matter are questions
of law and are reviewed without deference.” CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1369 (Fed. Cir. 2011). To determine
patentable subject matter, the Supreme Court has set forth a two part test.
A) Step One — Whether the Claims Are Directed to an Abstract Idea
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
2 A rejection under 35 U.S.C. § 112, second paragraph was withdrawn after
Appellants amended the claims. See Advisory Act. 2 (June 11, 2015).
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abstract ideas.” Alice Corp. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014).
A court must be cognizant that “all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas” {Mayo, 566 U.S. at 71), and “describing the claims at... a high level
of abstraction and untethered from the language of the claims all but ensures
that the exceptions to § 101 swallow the rule.” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “the claims are
considered in their entirety to ascertain whether their character as a whole is
directed to excluded subject matter.” Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
The Examiner concludes “the claims are directed towards offering
items for sale, which is considered to be an abstract idea inasmuch as such
activity is considered both a fundamental economic practice and a method of
organizing human activity by providing an opportunity for parties to enter
into a contractual relationship.” Ans. 2. “Here, the claims are directed to
shopping, optionally purchasing merchandise and having the merchandise
shipped to the customer.” Id. at 10.
Appellants argue the Examiner’s abstract idea is inapplicable because
“none of the operative words in the alleged abstract idea appear in the
claims, i.e., ‘consumer(s),’ ‘shop,’ ‘purchase,’ ‘products,’ or ‘shipping.’”
App. Br. 9. “Fundamentally, the claimed invention does not provide an
opportunity for parties to enter into a contractual relationship” because “the
claimed invention is directed to an order orchestration process that takes
place after the order has occurred.” Reply Br. 2.
Although we do not agree with all of Appellants’ assertions, we do
agree with Appellants that some of the Examiner’s characterizations of the
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abstract idea are “untethered from the language of the claims.” Enfish, 822
F.3d at 1337. Rather than being directed to pre-contractual offers or
shopping, we agree with Appellants that the claims are directed to
fulfillment of orders after the order has occurred. Reply Br. 2. The
Examiner elsewhere characterizes this as “fulfillment (i.e., the fundamental
economic practice).” Ans. 10. In particular, the claims are directed to order
fulfillment—including a change request—using a “pattern” or template.
Even under this characterization of the claims, however, the claims remain
directed to an abstract idea.
Fulfilling orders and change requests by following a pattern of tasks is
“a fundamental economic practice long prevalent in our system of
commerce.” Alice, 134 S. Ct. at 2356 (quoting Bilski v. Kappos, 561 U.S.
593, 611 (2010)). If anything, fulfilling orders and change requests is even
more basic than the “risk hedging” and “intermediated settlement” at issue in
Bilski and Alice. 134 S. Ct. at 2356; 561 U.S. at 611. Indecisive customers
and changed circumstances make change requests a fact of life in business,
and there is no reason to think that a business owner starts from scratch with
every new change request rather than following the same basic pattern of
tasks he or she employed with the last change request while inserting the
data specific to each particular order (e.g., specific quantity or price).
In Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1054
(Fed. Cir. 2017), the Federal Circuit looked to the “background portion of
the specification” to show that “processing an application for financing a
purchase” was a fundamental economic practice. Here, the “Background”
section of the Specification provides similar guidance in conceding “order
management systems” were known and “implemented by a number of
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industries.” Spec. 12. The Background also explains “a request to modify
the order” was known and could be dealt with by “manual work to make the
proper adjustments to the ongoing fulfillment process in order to reflect the
modifications in the order.” Spec. 1 5; see also Spec. 1161 (discussing
“change requests” as known items currently requiring “special logic”).
Thus, Appellants seek to automate a known manual process. Yet in Credit
Acceptance, the Federal Circuit held “mere automation of manual processes
using generic computers does not constitute a patentable improvement in
computer technology.” 859 F.3d at 1055. The same is true here.
B) Step Two — Whether the Claims Amount to Significantly More
In the second step, we “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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has “described step two of this analysis as a search for
an ‘inventive concept’—i.e., an element or combination of elements that is
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the ineligible concept itself.” Id. (quotation omitted).
Although Appellants argue the claims improve an existing
technological process (App. Br. 12), we agree with the Examiner that aside
from generic computer components performing generic computer functions
(Ans. 6), “[tjhese steps can be performed manually” (Ans. 5). For example,
creating or executing a task from a pattern can be performed by a human.
Moreover, the Specification expressly discloses the claimed processor and
memory can be generic: “[processor 914 may be any type of general or
specific purpose processor” and “[mjemory 904 can be comprised of any
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Application 12/718,520
combination of random access memory (‘RAM’), read only memory
(‘ROM’), static storage such as a magnetic or optical disk, or any other type
of machine or computer-readable medium.” Spec. 1139. As the Federal
Circuit has held, “merely configuring generic computers in order to supplant
and enhance an otherwise abstract manual process is precisely the sort of
invention that the Alice Court deemed ineligible for patenting.” Credit
Acceptance, 859 F.3d at 1056 (quotations omitted). Thus, we are not
persuaded that the claims are directed to any technical problem or technical
solution, or that they add “significantly more” than the abstract idea.
We also are not persuaded by Appellants’ argument that “the recited
claims do not attempt to preempt every application.” App. Br. 12. “While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Id.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 3—8, 10-13, and 15—21, which Appellants argue are patentable for
similar reasons. See App. Br. 7—14; 37 C.F.R. § 41.37(c)(l)(iv).
Although we agree with the Examiner’s conclusion that the claimed
subject matter is not patent eligible, in arriving at our conclusion we have
supplemented the Examiner’s reasoning. Therefore, pursuant to 37 C.F.R.
§ 41.50(b), we designate our affirmance under § 101 as including a new
ground of rejection so as to afford Appellants a full and fair opportunity to
respond.
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§103
Appellants contend “Hoffman fails to disclose any functionality for
sending a request to an external fulfillment system” and specifically fails to
disclose the claimed “change request” or “a template for a task layer service
that produces a request to invoke a fulfillment service of the external
fulfillment system.” App. Br. 15—18. Appellants argue Hoffman’s
“privilege template” is just “a template for each privilege within a domain of
a system.” Id. at 15 (citing Hoffman 106:33—43). However, Appellants’
recitation of the claim language fails to sufficiently explain their arguments
and their discussion of privilege templates fails to sufficiently address the
Examiner’s other findings.
The Examiner relies on “Hoffman Fig. 112 and related text
concerning contract templates.” Ans. 14. “FIG. 112 is a flowchart... for
handling contracts in a supply chain management framework.” Hoffman
131:47-48. In Figure 112, “[o]ne of a plurality of contracts is selected” and
“[t]he selected contract template is transmitted to a supply chain
participant.” Id. at 131:48—51. “[E]ach contract template includes portions
to be filled out by the supply chain participants.” Id. at 131:57—58. “The
contract templates are then enforced in accordance with the data” received
from the supply chain participants. Id. at 131:54—55. We agree with the
Examiner’s finding that the “supply chain participants” teach or suggest an
external fulfillment system, including external participants such as “retail
outlets 6002, franchisees 6004, distributors 6006, suppliers 6008, the supply
chain coordinator 6010 and retailer management 6012.” Hoffman 48:33—36;
Ans. 14. Thus, using a contract template and inserting metadata specific to
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each order, “Hoffman discloses sending data to ‘external’ fulfillment
systems that fulfill orders, thereby completing the tasks.” Ans. 13.
With respect to handling a change request, the Examiner finds
Hoffman teaches or suggests “receiving requests to adjust orders.” Ans. 15
(emphasis omitted). Specifically, Hoffman teaches that either a supplier or a
distributor can submit “a request which includes a plurality of distributor [or
supplier] parameters” and “the amount/rate of finishing goods and/or
supplies can be adjusted based on the information.” Hoffman 43:21—37,
43:41—55. For example, in one embodiment, “the parameters relate to a
forecasted amount of the required goods.” Id. 43:36—37.
Although Appellants recite the claim language and argue the claims
were amended to add the change request, Appellants fail to sufficiently
explain how Hoffman’s “request” to “adjust” an existing order based upon
“parameters” such as a revised forecast fails to teach or suggest “receiving a
change request to the order” and “executing ... an update task layer service”
as claimed. See In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art”); 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.”).
Accordingly, given the record before us, we sustain the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a), and of claims 3—8, 10-13, and
15—21, which Appellants argue are patentable for similar reasons. See App.
Br. 15, 18; 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1, 3—8, 10-13, and 15—21, but designate our decision under 35 U.S.C.
§ 101 to be a new ground of rejection.
TIME TO RESPOND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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
37 C.F.R, $ 41.50(b)
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