Ex Parte Amancherla

Patent Trial and Appeal Board

Feb 28, 2019

14162114 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/162,114 01/23/2014
67362 7590 03/04/2019
MLO
12707 High Bluff Drive, Suite 200
San Diego, CA 92130
FIRST NAMED INVENTOR
Praveen Amancherla
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.
BUCKP009 1916
EXAMINER
KWONG, CHO YIU
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
MLOPAIR@mlo-ip.com
heather@mlo-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRA VEEN AMANCHERLA
Appeal2018-002152
Application 14/162,114
Technology Center 3600
Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and
IRVINE. BRANCH, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 1-14, which are all of the pending claims. Final Act. 1. Claims
15-20 are withdrawn from consideration. 2014-05-22 Response to
Restriction 9. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
1 Appellant indicates the real party in interest is Quisk, Inc. App. Br. 3.
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Application 14/162, 114
Illustrative Claim
Illustrative claim 1 under appeal read as follows ( emphasis,
formatting, and bracketed materials added):
1. A computer-implemented method of providing
hierarchical administration, comprising:
[A.] creating a first association between a payment
system participant and a hierarchy node, the
hierarchy node being associated with a level of a
hierarchy;
[B.] creating a second association between a set of
payment system data elements and a set of nodes
in the hierarchy;
[C.] storing the hierarchy in a first database, the
hierarchy including hierarchy data stored in a
changeable format;
[D.] storing the set of payment system data elements in
a second database separate from the first database,
the payment system data elements including
transaction data showing transactions that have
taken place within a payment system;
[E.] accepting a request for information from the
payment system participant via a user interface;
[F.] retrieving the hierarchy from the first database;
[G.] using the retrieved hierarchy to traverse the
second database to obtain a subset of the set of
payment system data elements consisting of the
payment system data elements in the set of
payment system data elements that are located at
memory locations associated with each node in a
portion of the hierarchy; and
[H.] providing the subset of the set of payment system
data elements to the payment system participant as
a response to the request for information;
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[I.] wherein the portion of the hierarchy consists of
each node in the hierarchy that is subordinate to
the hierarchy node as indicated by the retrieved
hierarchy and excludes each node in the hierarchy
that is not subordinate to the hierarchy node as
indicated by the retrieved hierarchy.
Sandford et al.
Hahn-Carlson
Donner
References2
US 2007/0179890 Al Aug. 2, 2007
US 2009/0259576 Al Oct. 15, 2009
US 7,617,159 Bl Nov. 10, 2009
Re} ections3
A.
The Examiner rejects claims 1-14 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," that is,
because the subject matter of the claimed invention is patent-ineligible.
Final Act. 2-3.
As to this rejection, our decision as to the § 101 rejection of claim 1 is
determinative as to the § 101 rejection of all the claims. Therefore, except
for our ultimate decision, we do not discuss further herein the § 101
rejection of claims 2-14.
2 All citations herein to these references are by reference to the first named
inventor only.
3 All citations herein to the "Final Action" are to a Final Action mailed on
December 1, 2016.
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Application 14/162, 114
B.
The Examiner rejects claims 1--4, 6, 7, and 9--14 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hahn-Carlson and
Sandford. Final Act. 5-10.
As to this rejection, our decision as to the § 103 rejection of claim 1 is
determinative as to the § 103 rejection of all the claims. Therefore, except
for our ultimate decision, we do not discuss further herein the § 103
rejection of claims 2--4, 6, 7, and 9--14.
C.
The Examiner rejects claims 5 and 8 under 35 U.S.C. § 103 as being
unpatentable over the combination of Hahn-Carlson, Sandford, and Donner.
Final Act. 10-11.
Appellant does not present arguments for claims 5 and 8. Thus, the
rejection of these claims turns on our decision as to claim 1. Except for our
ultimate decision, we do not address the § 103 rejection of claims 5 and 8
further herein.
Issues on Appeal
Has the Examiner erred in rejecting claim 1 as being directed to
patent-ineligible subject matter?
Has the Examiner erred in rejecting claim 1 as being obvious?
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ANALYSIS 4
We have reviewed the Examiner's rejections in light of Appellant's
Appeal Brief and Reply Brief arguments that the Examiner has erred.
A. Section 101
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. Id. 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. Kappas, 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);
4 Any Manual of Patent Examining Procedure (MPEP) citations herein are to
MPEP Rev. 08.2017, January 2018.
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. 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, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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 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. ( 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 tum 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-
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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,
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.
B. USPTO Section 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
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 ("Memorandum"). Under that guidance, we first
look to whether the claim recites:
( 1) (see Memorandum Step 2A - Prong One) 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) (see Memorandum Step 2A - Prong Two) additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a}-(c), (e}-(h)). 5
5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See USPTO's January
7, 2019 Memorandum, "2019 Revised Patent Subject Matter Eligibility
Guidance."
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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
(see Memorandum Step 2B):
(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 Memorandum.
C. Requirement to Provide Sufficient Articulated Reasoning
The requirement that the Examiner must provide a proper notice of
rejection is set forth by 35 U.S.C. § 132:
Whenever, on examination, any claim for a patent is rejected, ...
the Director shall notify the applicant thereof, stating the reasons
for such rejection ... together with such information and
references as may be useful in judging of the propriety of
continuing the prosecution of his application.
The Federal Circuit has held that the Office carries its procedural
burden when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, "together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application." See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (brackets in original, quoting 35 U.S.C. § 132).
Put simply, the Office is required to set forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574,
1578 (Fed. Cir. 1990) (noting that§ 132 "is violated when a rejection is so
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uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection").
D. Examiner's §101 Rejection -Alice/Mayo - Steps 1 and 2
D.1. Memorandum Step 2A - Prong One
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 1 is directed to an abstract idea.
Considering the claim language in the claims, claim( s) 1-14
is/ are directed to managing hierarchical payment information.
Managing hierarchical payment information is a fundamental
economic practice or an idea of itself similar to the concepts that
have been identified as abstract by the courts, such as comparing
new and stored information and using rules to identify options in
Smartgene, Inc. v Advanced.
Final Act. 2 ( emphasis added).
D.2. Memorandum Step 2A - Prong Two
Applying step 2 of the Alice/Mayo analysis, the Examiner concludes:
The independent and dependent claim( s) does/ do not
include additional elements that are sufficient to amount to
significantly more than the judicial exception because claims do
not include an improvement to another technology or technical
field, an improvement to the functioning of the computer itself,
or meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment when
considered both individually and as an ordered combination do
not amount to significantly more than the abstract idea.
Final Act. 2-3.
D.3. Memorandum Step 2B
Further applying step 2 of the Alice/Mayo analysis, the Examiner
concludes:
[T]he limitations, in the instant claims, are done by the
generically recited computer and database. The limitations are
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merely instructions to implement the abstract idea on a computer
and require no more than a generic computer to perform generic
computer functions or generic function of equipment that are
well-understood, routine and conventional activities previously
known to the industry.
Final Act. 3 ( emphasis added).
E. Appellant's§ 101 Arguments6
Appellant contends:
[T]hat: (i) the claims are not directed merely to the stated abstract
idea; and (ii) even if the claims were found to be directed to an
abstract idea, the claimed invention includes significantly more
than that abstract idea.
App. Br. 5.
Similar to the Enfish case, the claims of the present application
are not directed to just a "fundamental economic practice," that
stores information in a conventional manner, but are directed to
an improved technological method for using hierarchy data
( stored in a changeable format) in one database to traverse
transaction data (showing transactions that have taken place
within a payment system, and which is the type of data that is
advantageously stored in a non-changeable format for security
purposes) in another database to physically obtain a subset of the
transaction data in order to provide the subset in response to a
request for information. This rather complicated and involved
process is not encompassed by the stated abstract idea.
As in Enfzsh, the conclusion that the independent claim of
the present application is directed to an improvement of
hierarchical administration technology is bolstered by the
specification's teachings that enables a method that provides
increased flexibility and a faster payment system authorization
6 The contentions we discuss herein are determinative as to the § 101
rejection on appeal. Therefore, we do not discuss Appellant's other§ 101
contentions herein.
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process, thus decreasing data access time, data synchronization
time and redundancy, while utilizing smaller memory
requirements and improving data security. Thus, the claims in
the present application are an improvement to the functioning of
the computer itself ( decreasing data access time, data
synchronization time and redundancy while utilizing smaller
memory requirement).
App. Br. 5---6 (additional emphasis added).
F. Panel's§ 101 Analysis
F .1. Memorandum Step 2A - Prong One
Applying the Alice/Mayo analysis as set forth in the Memorandum,
we concludes claim 1 recites a judicial exception in the form of certain
methods of organizing human activity comprising commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations). We conclude that managing payment information is a
commercial interaction.
F.2. Memorandum Step 2A-Prong Two
However, further applying the Alice/Mayo analysis as set forth in the
Memorandum, we conclude claim 1 integrates the recited commercial
interaction (the judicial exception) into a practical application. Claim 1 is
directed to an improved technological method for using hierarchy data
during data processing.
Unlike Appellant, we do not give weight to the particular data being
processed (payment data). Rather, we look to the argued underlying
improvements, such as "decreasing data access time" and "improving data
security" (App. Br. 6.), due to the use of the claimed hierarchical data access
in the data processing. We conclude these technological improvements are
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independent of the particular type of data being processed and reflect an
improvement in the functioning of a computer.
As discussed supra, we conclude that, when evaluated under the
Memorandum, although claim 1 recites a fundamental economic practice in
the form of a commercial interaction, claim 1 integrates the recited
commercial interaction (the judicial exception) into a practical application
that improves the functioning of a computer. Therefore, we conclude claim
1 as a whole is not directed to a judicial exception and is eligible. We do
not sustain the rejection under 35 U.S.C. § 101 of claim 1.
G. Appellant's§ 103 Arguments7
Appellant contends the Examiner erred in rejecting claim 1 because
"the cited references do not disclose or suggest all the elements of the
claim." App. Br. 14. Appellant particularly contends:
Hahn-Carlson discloses isolating and maintaining information in
a database discretely relative to network managers, sponsoring
participants, and subscribers. However, it does not explicitly
cite, disclose or suggest using a hierarchy retrieved from one
database to "traverse" another separate database to "obtain"
the information. In fact, there would be no reason to do so
because the information for each subscriber is distributed and
maintained discretely for each manager, which means the desired
subset of data for each manager is already separated out
according to the hierarchy. The information in the Hahn-Carlson
system is simply maintained as available and properly isolated
and arranged according to its hierarchy at all times for each user,
due to the distributed manner in which data is stored.
App. Br. 15 (additional emphasis added).
7 The contentions we discuss are determinative as to the § 103 rejections on
appeal, so we do not discuss Appellant's other§ 103 contentions herein.
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H. Panel's § 103 Analysis
In rejecting claim 1 under§ 103, the Examiner determined Hahn-
Carlson discloses "using the retrieved hierarchy to traverse the second
database to obtain a subset of the set of payment system data elements" at
"Paragraph[s] 0040, 0050, 0052-0055, 0085-0086, 0094 and Figure 4-5."
Final Act. 6.
We conclude, after reviewing the Examiner's rejection (including
reviewing the Examiner cited portions of Hahn-Carlson) and consistent with
Appellant's above argument as to claim 1, there is insufficient articulated
reasoning to support the Examiner's findings that Hahn-Carlson discloses
the argued limitation. We do not find in the Examiner cited portions of
Hahn-Carlson the "using the retrieved hierarchy to traverse the second
database to obtain a subset of the set of payment system data elements"
required by Appellant's claim 1. Therefore, we conclude that there is
insufficient articulated reasoning to support the Examiner's conclusion that
claim 1 is rendered obvious by Hahn-Carlson and Sandford based on the
Examiner's articulated reasoning.
CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1-14 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
(2) Appellant has established that the Examiner erred in rejecting
claims 1-14 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-14 have not been shown to be unpatentable.
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DECISION
The Examiner's rejection of claims 1-14 under 35 U.S.C. § 101, as
being directed to patent-ineligible subject matter is reversed.
The Examiner's rejection of claims 1-14 as being unpatentable under
35 U.S.C. § 103(a) is reversed.
REVERSED
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