Ex Parte ADDALA et al

Patent Trial and Appeal Board

Jul 26, 2018

12718475 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/718,475 03/05/2010
74739 7590 07/30/2018
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
RajuADDALA
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.
20 ll -0285USO 1 4918
EXAMINER
DELI CH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/30/2018 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJU ADDALA, ALOK SINGH, LEAK REED, ZEESHAN
BUTT, SARITA SRIDHARAN, and SUNITA DATTI
Appeal2017-005192
Application 12/718,4 7 5
Technology Center 3600
Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER, and
AARON W. MOORE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection2 of
claims 1-18. Notice of Appeal 1. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
1 Appellants indicate the real party in interest is Oracle International
Corporation. App. Br. 2.
2 All citations herein to the "Final Action" are to the Final Action mailed on
January 15, 2016.
Appeal2017-005192
Application 12/718,475
Illustrative Claim
Illustrative claim 7 under appeal reads as follows ( emphasis and
bracketed materials added):
7. A computer-implemented method for configuring for a
distributed order orchestration system, the computer-
implemented method comprising:
[A.] receiving, at an orchestration system, metadata
encapsulating one or more instructions for creating a business process;
[B.] defining a cost of change value for the business process,
wherein the cost of change value represents a cost required to adjust
the business process;
[C.] executing an executable orchestration process that is
generated from the business process, wherein the executable
orchestration process orchestrates an order by dynamically invoking
one or more services stored within a service library configured to
control task execution of an external fulfillment system;
[D.] receiving, at the orchestration system, a change request
from a client device, wherein the change request comprises an
adjustment of the business process;
[E.] determining, by a processor, whether the cost of change
value is greater than an upper threshold value;
[F.] when the cost of change value is not greater than the upper
threshold value, initiating the change request and automatically
adjusting the steps of the executable orchestration process that have
already been executed; and
[G.] when the cost of change value is greater than the upper
threshold value, not initiating the change request.
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Application 12/718,475
Rejection3
The Examiner rejects claims 1-18 under 35 U.S.C. § 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," i.e.,
because the claimed invention is patent-ineligible subject matter. Final
Act. 5.
Appellants argue claims 1-18 as a group. App. Br. 6-15. We select
claim 7 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv). Except for our
ultimate decision, we do not discuss this rejection of claims 1---6 and 8-18
further herein.
Issues on Appeal
Has the Examiner erred in rejecting claim 1 as being patent-ineligible
subject matter?
ANALYSIS 4
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants' conclusions. Except as noted below, we adopt as
our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner's Answer in response to Appellants' Appeal Brief. We
3 The Examiner has withdrawn the rejections of claims 1-18 under
35 U.S.C. § 103(a). Ans. 2.
4 All MPEP citations herein are to MPEP Rev. 08.2017, January 2018.
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Appeal2017-005192
Application 12/718,475
concur with the conclusions reached by the Examiner. We highlight the
following additional points.
A.
Appellants raise the following argument in contending that the
Examiner erred in rejecting claim 1 as being patent-ineligible subject matter.
Although some court cases are cited by the Examiner, a
comparison of the alleged abstract idea to the abstract ideas
identified by the courts shows that there are no similarities.
The Examiner compares the alleged abstract idea to
SmartGene, Inc. v. Advanced Biological Labs., SA, No. 2013-
1186 (Fed. Cir. 2014) (unpublished) ....
However, in contrast to SmartGene, the claimed invention
is clearly not directed to a process that a doctor or any other
professional can and do perform in their heads.
App. Br. 8.
[I]n the instant application, improvements to the functioning of
the computer are provided. For example, the claims taken as a
whole are directed toward particular techniques that overcome
the problems caused by differences between actual business
models and implementations of such models by information
technology designers. See Specification at ,r [0003], for
example.
App. Br. 10.
Should the Examiner continue to allege that the claims are
directed to an abstract idea, Applicant respectfully requests
supporting evidence.
App. Br. 11.
In response, at pages 2-7 of the Answer, the Examiner points to
further case law (i.e., supporting evidence) and provides further analysis.
We agree with the Examiner's response except as to the point that the full
paragraph at page 7 of the Answer does not explicitly recognize that the
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Application 12/718,475
Examiner has already provided supporting evidence ( case law citations) on
pages 3-6 of the Answer as to step 1 of the Alice/Mayo analysis.
Particularly, we agree with the Examiner that:
The difference between an actual business process and a model
or plan for a business process does not illustrate a technical
solution to a technical problem. It merely invokes a
computerized tool to perform analysis and implement the
abstract idea thus improving a business process.
Ans. 6-7. Stated differently, we conclude that Appellants do not set forth a
technological solution to a technological problem, but rather a business
solution to a business problem. See also MPEP § 2106.04(a)(2)II.
B.
Appellants also raise the following argument in contending that the
Examiner erred in rejecting claim 1 as being patent-ineligible subject matter.
Even if the claims are considered to be directed to an abstract
idea (which is not admitted by Applicant), the claims can include
an "inventive concept" or additional elements so that the abstract
idea is transformed into a patent-eligible application. See Alice
at 2357. For at least the reasons discussed below, the claims do
include patentable inventive concepts.
App. Br. 11.
[Claim 7 recites] receiving, at an orchestration system, metadata
encapsulating one or more instructions for creating a business
process and execute an executable orchestration process that is
generated from the business process, wherein the executable
orchestration process orchestrates an order by dynamically
invoking one or more services stored within a service library
configured to control task execution of an external fulfillment
system. These features are neither "conventional" nor "specified
at a high level of generality," and render the claims patent
eligible pursuant to Alice.
Moreover, these are meaningful limitations that add more
than generally linking the use of the abstract idea to a generic
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Application 12/718,475
computer because they solve a problem that is necessarily rooted
in computer technology. The claimed invention addresses the
problems caused by differences between actual business models
and implementations of such models by information technology
designers.
App. Br. 13.
In response, at pages 7-9 of the Answer, the Examiner provides
further analysis as to step 2 ( the not significantly more analysis) of the
Alice/Mayo analysis.
We are unpersuaded by Appellants' argument. First, we agree with
the Examiner that the "dynamically invoking one or more services" is
recited at "a high level of generality." Ans. 7. 5 Second, as previously
discussed, we conclude that Appellants do not set forth a technological
solution to a technological problem, but rather a business solution to a
business problem. Third, as to the claimed "metadata encapsulating one or
more instructions for creating a business process," we conclude the record
shows this to be conventional. Appellants acknowledge that typically an "IT
designer uses an orchestration language, such as business process execution
language ("BPEL"), to code the business process. BPEL processes are
typically created in a BPEL editor and a deployed BPEL process is
invoked." Spec. ,r 3. Further, Boumas at paragraphs 103 and 106 shows
that "normally" BPEL includes metadata representing the production
process.
5 We note the following typographical error at the last line of page 7 of the
Answer: "generated" should read -generality-.
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C.
Appellants furthermore raise the following arguments in contending
that the Examiner erred in rejecting claim 1 as being patent-ineligible subject
matter.
[T]he present claims will not preempt all systems and methods
for performing the alleged abstract idea.
App. Br. 15.
The Examiner now admits that the claims are allowable over the
prior art. See 12/23/16 Examiner's Answer at p. 2. As no
anticipatory or obviousness rejection is pending, the pending
claims contain an inventive concept.
Reply Br. 5.
1.
Appellants' pre-emption argument overlooks that the Court's
Alice/Mayo two-step ( abstract idea/significantly more) analysis is the
Court's framework for determining pre-emption.
[W]e set forth a frame-work for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.
Alice, 134 S. Ct. at 2355; see also MPEP § 2106.04 I.
Moreover, "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, []
preemption concerns are fully addressed and made moot."). Contrary to
Appellants' arguments, the Examiner correctly applied the Alice/Mayo
framework.
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2.
Appellants' "allowable over the prior art" argument does not persuade
us of Examiner error. Although the second step in the Alice/Mayo analysis
includes a search for an inventive concept, the analysis is not an evaluation
of novelty or nonobviousness, but rather, a search for "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."' Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 at 71).
A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 at 89--91; see also MPEP
§ 2106.05 I.
Further, "under the Mayo/Alice framework, a claim directed to a
newly discovered law of nature (or natural phenomenon or abstract idea)
cannot rely on the novelty of that discovery for the inventive concept
necessary for patent eligibility." Genetic Techs. Ltd. v. Merial L.L. C., 818
F.3d 1369, 1376 (Fed. Cir. 2016).
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-18 under
35 U.S.C. § 101, as being patent-ineligible subject matter.
(2) Claims 1-18 are not patentable.
DECISION
The Examiner's rejection of claims 1-18 under 35 U.S.C. § 101, as
being patent-ineligible subject matter, is affirmed.
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Application 12/718,475
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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