Ex Parte Angel et al

Patent Trial and Appeal Board

Dec 20, 2018

12603524 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/603,524 10/21/2009
75158 7590 12/25/2018
Verint Systems, Inc.
Meunier Carlin & Curfman, LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
FIRST NAMED INVENTOR
Mark Angel
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.
10171-257US 1 6681
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
laaronson@mcciplaw.com
KCarroll@mcciplaw.com
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK ANGEL, ROB ARSENAULT, MAX COPPERMAN,
CHARLIE ISAACS, SAMIR MAHENDRA,
VIKAS NEHRU, and DILPREET SINGH
Appeal2017-009646
Application 12/603,524
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner's final decision rejecting claims 1-13. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
We affirm.
Appeal2017-009646
Application 12/603,524
BACKGROUND
Appellants' invention is directed to business process modeling, and
more particularly to workflow composition for business process modeling.
A process model is an abstract description of a process such as a business
process or any other process related to the lifecycle of a system. Spec. ,r,r 1,
2.
Claim 1 is illustrative:
1. A user interface workflow composition method
compnsmg:
loading into a composition module executing in memory
by a processor of a computer from a data store coupled to the
computer, a set of references to both human steps of a
workflow, each of the human steps of the workflow referencing
a corresponding user interface, and also automated steps of a
workflow, each of the human steps and automated steps of the
workflow individually comprising contextual data;
visually placing individual graphical elements each
representative of a selected one of the human steps and
automated steps into a canvas rendered by the composition
module;
defining transitions between different ones of the human
steps and automated steps represented by corresponding ones of
the graphical elements in the canvas by creating visual
connections between the different ones of the graphical
elements in the canvas, the human steps and automated steps
represented by the graphical elements in the canvas, and the
transitions defined therebetween setting forth a user interface
workflow; and,
generating computer readable instructions for the user
interface workflow.
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Application 12/603,524
Appellants appeal the following rejection:
Claims 1-13 are rejected under 35 U.S.C. § 101 because the claims
fail to satisfy § 101 requirements.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Alice, 134 S. Ct. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. Ct.
66, 75-78 (2012)). In accordance with that framework, we first determine
whether the claim is "directed to" a patent-ineligible abstract idea. See
Alice, 134 S. Ct. at 2356 ("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."); 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."); Diamond v. Diehr, 450 U.S. 175, 184
(1981) ("Analyzing respondents' claims according to the above statements
from our cases, we think that a physical and chemical process for molding
precision synthetic rubber products falls within the § 101 categories of
possibly patentable subject matter."); Parker v. Flook, 437 U.S. 584, 594--95
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(1978) ("Respondent's application simply provides a new and presumably
better method for calculating alarm limit values."); Gottschalk v. Benson,
409 U.S. 63, 64 (1972) ("They claimed a method for converting binary-
coded decimal (BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices (Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611);
mathematical formulas (Parker, 437 U.S. at 594--95); and basic tools of
scientific and technological work ( Gottschalk, 409 U.S. at 69). On the
patent-eligible side of the spectrum are physical and chemical processes,
such as curing rubber (Diamond, 450 U.S. at 184 n.7), "tanning, dyeing,
making waterproof cloth, vulcanizing India rubber, smelting ores," and a
process for manufacturing flour (Gottschalk, 409 U.S. at 69).
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Alice, 134 S. Ct. at 2355.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. Cy her Source
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
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Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying ceiiain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent-ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016).
Claims that recite an improvement to a particular computer
technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( detennining claims not abstract because they "focused on a specific
asserted improvement in computer animation").
ANALYSIS
The Examiner determines that the claims are directed to a series of
steps for setting up parameters of a graphical user interface. Specifically,
the Examiner determines that the claims are directed to receiving data, and
generating the graphical displayed workflow, which is a method of
organizing human activities and/or using categories to organize, store and
transmit data and/or using a computer to run and display data. Final Act. 2.
The Examiner finds that the claims do not recite additional elements
that are sufficient to amount to significantly more than the judicial
exception, because the additional elements or combination of elements are
recitations of generic computer structure. The Examiner also finds that the
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claims do not recite an improvement to another technology or technical
field, or improvement to the functioning of the computer itself. Final Act. 3.
We agree with the Examiner's determination that the claims are
directed to an abstract idea. The claims are directed to the collection,
analysis, and display of data. We also agree with the Examiner's finding
that the claims do not include significantly more than the abstract idea.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claims are directed to improved workflow
design tools. In particular, Appellants argue that the claims are directed to a
method, system and computer program for the visual composition of flow
and end user interactions with different steps of a workflow, and are not the
mere notation of setting up generic parameters on a computer and, therefore,
are not directed to an abstract idea. Br. 7-9.
We agree with the Examiner that the Appellants have not claimed
specific elements for actually creating an improved workflow design tool,
but rather the claims recite steps for predefining tasks/transition data and
manipulating visual data using well-known computer based tools. Ans. 3.
Claim 1, for example, recites loading data from a data store. The data
is a set of references to both representative human steps of a workflow and
automated steps of the workflow in which each step references a
corresponding user interface. The human steps and automated steps
comprise data. The data is analyzed by visually placing graphical elements
that are representative of a selected one of the human steps and automated
steps into the canvas rendered by the composition module. The data is
further analyzed by defining transitions between different ones of the human
steps and automated steps. Finally, the data is analyzed by generating
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computer readable instructions for the user interface workflow. These steps
are clearly directed to the abstract idea of collecting, analyzing and
displaying data and are well-known computer functions.
Appellants argue that the claimed subject matter is directed to a
specific improvement to the way computers operate. Specifically,
Appellants argue that the claims' graphical user interface method imparts
specific functionality to a system directed to a specific implementation of a
solution to a problem in the software arts. Br. 11.
Appellants' argument does not apprise us of error because Appellants
appear to conflate the conventionality of the steps being performed by a
processor and the conventionality of the computer functions required to
implement the steps. In addition, Appellants do not explain what
improvements to the operation of the computer are referred to.
We are also not persuaded of error on the part of the Examiner by
Appellants' argument that the claims provide a novel and non-obvious
method, system and computer program product for user interface workflow
composition. Br. 10.
To the extent Appellants maintain that the limitations of claim l
necessarily amount to "significantly more" than an abstract idea because the
claimed apparatus is allegedly patentable over the prior aii, Appellants
misapprehend the controlling precedent. Although the second step in the
Alice/Ji!fayo frarnework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "an elernent or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly rnore than a patent
upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355. A novel and
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nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that substantial evidence does not support a finding
that the claims are directed to a series of steps for setting up parameters of a
graphical user interface. Br. 10. Appellants argue that the application
supports a finding that the claims are not an attempt to patent the concept of
setting up parameters on a computer for a GUI.
In making this argument, Appellants rely on an opinion of another
panel of the Patent Trial and Appeal Board in another case. However, since
this opinion was non-precedential, it is not binding on this panel.
In addition, consideration of evidence in making a determination
under the first step of the Alice framework has merit. See Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016). However, there is no
requirement that examiners must provide evidentiary support in every case
before a conclusion can be made that a claim is directed to an abstract idea.
Evidence may be helpful in certain situations where, for instance, facts are in
dispute. But it is not always necessary. It is not necessary in this case
because there is no factual dispute that the claims are directed to the
collection, analysis and display of data.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the steps recited in the claims are not steps that
were being performed in conventional industry practice, and that there is no
evidence that the functions of the computer are well-understood and
conventional activities known in the employment and social network art. Br.
13. Appellants specifically argue that the steps of loading into a
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composition module executing in memory by a processor of a computer
from a data store coupled to the computer, a set of references to both
representative human steps of a workflow and automated of a workflow, in
which each of the human steps of the workflow references a corresponding
user interface were not conventional activities known in the employment and
social network art. Br. 14.
The difficulty with Appellants' argument is that the features of claim
1 that Appellants maintain are not well-understood, routine, and
conventional are part of the abstract idea of collecting, analyzing and
displaying data; they are not additional elements to be considered when
determining whether the additional elements or a combination of elements
amounts to significantly more than the judicial exception. See BSG Tech
LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) ("It has been
clear since Alice that a claimed invention's use of the ineligible concept to
which it is directed cannot supply the inventive concept that renders the
invention 'significantly more' than that ineligible concept.").
In view of the forgoing, we will sustain the Examiner's rejection of
claim 1. We will also sustain the rejection as it is directed to claims 2---6
because the Appellants have not argued the separate eligibility of these
claims.
In regard to claims 7-----13, Appellants argue that these claims recite a
non-conventional and non-generic arrangement of known conventional
pieces similar to the claims in Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016). Br. 14. This
argument is not persuasive because the Appellants do not explain what non-
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Application 12/603,524
generic arrangement of conventional pieces are recited in claims 7-13.
Therefore, we sustain the Examiner's rejection of these claims as well.
DECISION
We affirm the Examiner's 35 U.S.C. § 101 rejection.
TIME PERIOD
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.
§ 1.136(a)(l) (2009).
AFFIRMED
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