Ex Parte Barker et al

Patent Trial and Appeal Board

Aug 30, 2017

13417753 (P.T.A.B. Aug. 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.
13/417,753 03/12/2012 Bruce G. Barker END920040034US3 5560
30449 7590 09/01/2017
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
JEANTY, ROMAIN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
30449@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE G. BARKER, VINCENT A. BUSCHER,
JUAN P. GIRALDO, CARRIE L. LEBOLT, STEPHEN L. MCLELLEN,
SHARON E. MURPHY, PAUL R. POPICK, DAVID P. RICCI,
and JANET L. SPANN
Appeal 2016-004918
Application 13/417,753
Technology Center 3600
Before THU A. DANG, LARRY J. HUME, and CARL L. SILVERMAN,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 5—10, 13—16, and 19—26, which constitute all
claims pending in the application.1 Claims 3,4, 11, 12, 17, and 18 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Although Appellants state that claims 1, 2, 4—10, 12—16, and 18—23 stand
rejected in the Appeal Brief (App. Br. 1), as Appellants also note, an
amendment was filed deleting claims 4, 12, and 18, and adding claims 24—
26, which was entered by the Examiner (id. at 2). Thus, as the Examiner
indicates in the Advisory Action, claims 1, 2, 5—10, 13—16, and 19—26 are
pending and stand rejected (Adv. Act. 1).
Appeal 2016-004918
Application 13/417,753
STATEMENT OF THE CASE
The Claimed Invention
According to Appellants, the claimed invention relates to “a Systems
Engineering process for managing and implementing a project for a
customer” (Spec. 1,11. 8—9). Claims 1, 9, and 15 are independent. Claim 1
is illustrative of the invention and the subject matter of the appeal, and reads
as follows:
1. A method for implementing a project for a customer, said
method comprising:
a processor of a computer system generating a computer
readable Requirements Traceability and Verification Matrix
(RTVM) as a spreadsheet;
said processor storing the RTVM in a computer readable
storage device;
said processor verifying an acceptability of business
requirements of the project due to business requirements review
(BRR) exit criteria having been satisfied, an acceptability of
system requirements of the project due to system requirements
review (SRR) exit criteria having been satisfied, an
acceptability of component requirements of the project due to
component requirements review (PDR) exit criteria having been
satisfied, wherein the business requirements are decomposed
into the system requirements and the system requirements are
decomposed into the component requirements, wherein the
business requirements, the system requirements, and the system
requirements are hierarchically linked in the spreadsheet; and
in response to said verifying, said processor updating the
RVTM with verification information relating to the business
requirements, verification information relating to the system
requirements, and verification information relating to the
component requirements;
wherein said generating the RTVM comprises:
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Application 13/417,753
inserting row [Rl] into the spreadsheet, wherein
row [Rl] represents a business requirement Rl of the
business requirements;
inserting row [S1.1 ] into the spreadsheet
immediately after row [Rl], wherein row [Sl.l]
represents system requirement Sl.l of the system
requirements, wherein the system requirement Sl.l
represented by row [Sl.l] is hierarchically linked to the
business requirement Rl represented by row [Rl]; and
inserting rows [Cl.1.1], [Cl.1.2]., ... ,[C1.1.K1]
sequentially into the spreadsheet immediately after row
[Sl.l], wherein rows [Cl.1.1], [Cl.1.2], ... ,[C1.1.K1]
respectively represent component requirements C1.1.1,
Cl.1.2., ... ,C1.1.K1 of the component requirements,
wherein the component requirements Cl.1.1, Cl.1.2.,...,
Cl. 1 .K1 respectively represented by rows [Cl. 1.1],
[Cl. 1.2],... ,[C1.1.K1] are hierarchically linked to the
system requirement Sl.l represented by row [Sl.l], and
wherein K1 is at least 1.
The Rejections on Appeal
Claims 1, 2, 5—10, 13—16, and 19—26 stand rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter.
ISSUE
The principal issues before us are whether the Examiner erred in
concluding the claimed method for “implementing a project for a customer”
(claim 1) is directed to patent ineligible subject matter.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made, but did not make in the Brief are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are unpersuaded
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the Examiner has erred. We adopt as our own the findings and reasons set
forth in the rejections from which the appeal is taken and in the Examiner’s
Answer, and provide the following for highlighting and emphasis.
Rejection Under 35 U.S.C. § 101
Appellants argue the Examiner erred in concluding the claims are
directed to an abstract idea and, therefore, constitute patent ineligible subject
matter. App. Br. 11—18.2 Specifically, Appellants contend “the Examiner
has not presented a legal argument as to why a fundamental managing
project practice is an abstract idea.” Id. at 13. According to Appellants, “the
initial burden is on the examiner to explain why a claim or claims are
unpatentable clearly and specifically, so that applicant has sufficient notice
and is able to effectively respond.” Id. at 14. Appellants argue that, because
“the Examiner has not satisfied the Examiner’s burden,” the claimed
invention “is not directed to an abstract idea.” Id.
Further, Appellants contend even if the claims are directed to an
abstract idea, “the claims recite significantly more than the abstract idea.”
Id. In particular, Appellants contend independent claims 1, 9 and 15 “recite
inserting, into a spreadsheet of a Requirements Tracability and Verification
Matrix (RTVM), rows of business requirements, systems requirements, and
component requirements of a project,” wherein the requirements “are
hierarchically linked to the spreadsheet.” Id. at 16. Thus, Appellants
contend that inserting the requirements in the nodes in a hierarchy of
2 Appellants argue the claims, and in particular, independent claims 1,9,
and 15, as a group for purposes of the ineligible subject matter rejection.
We choose claim 1 as representative of the group. 37 C.F.R.
§ 41.37(c)(l)(iv).
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Application 13/417,753
requirements within the RTVM spreadsheet “is analogous to the limitation
(‘inserting the task node under an associated task in a hierarchy of task
nodes representative of a project plan’) in claim 9 of application 13/417,713
in Ex parte Kogan” that resulted in the claim being held patent eligible under
35 U.S.C. § 101 by the Board. Id. at 17, citing Appeal 2012-007800, Ex
Parte Kogan et aid
Based on the record before us, we are not persuaded of Examiner
error.
Although Appellants contend “the Examiner has not satisfied the
Examiner’s burden” under 35 U.S.C. § 101 (App. Br. 14), the Federal
Circuit has repeatedly noted “the prima facie case is merely a procedural
device that enables an appropriate shift of the burden of production.” Hyatt
v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held the USPTO
carries its procedural burden of establishing a prima facie case 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). Thus, all that is required of the Office is that it set forth the
statutory basis of the rejection in a sufficiently articulate and informative
manner as to meet the notice requirement of § 132. Id.
3 Although Appellants reference Application No. 13/417,713 and Appeal
No. 2013-007800, the correct reference numbers for Kogan et al. are
Application No. 11/612,975 and Appeal No. 2012-007800.
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Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
finds the claims, “when taken alone, each execute in a manner routinely and
conventionally expected of these elements” wherein the elements of the
claims, “when taken in combination, together do not offer substantially more
than the sum of the functions of the elements when each is taken alone.”
Final Act. 3^4. Thus, the Examiner notified Appellants of the reasons for
the rejection “together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of [the]
application.” 35 U.S.C. § 132. And, contrary to Appellants’ assertions, in
doing so, the Examiner set forth a prima facie case of unpatentability such
that the burden shifted to Appellants to demonstrate that the claims are
patent-eligible.
Under 35 U.S.C. § 101, the Supreme Court has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CIS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014). As Appellants acknowledge (App.
Br. 11), the Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “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. The first step is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts,” such as an abstract idea,
as the Examiner concludes in this case. If the claims are not directed to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
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and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
Regarding step one of Alice, as Appellants note, the Examiner
concludes the claims are directed to “managing and implementing a project
for a customer using a processor which is a fundamental managing project
practice” and thus, “the claims include an abstract idea.” App. Br. 13, citing
September 4, 2014 Office Action at 2. We agree with the Examiner.
As set forth in Appellants’ Specification, the invention relates to “a
Systems Engineering process for managing and implementing a project for a
customer.” Spec. 1. Representative claim 1 merely recites a method
comprising “generating” a matrix (RTVM) as a spreadsheet, “storing” the
matrix, “verifying” requirements of a project, and then “updating” the matrix
with verification information relating to the various requirements, “wherein”
the “generating” step comprises “inserting” various rows into the
spreadsheet (claim 1). That is, claim 1 merely recites generating a data
structure which includes inserting/collecting data in the data structure, and
updating the data structure with verification data/information.
In this regard, the claims are similar to the claims that our reviewing
courts have found patent ineligible in Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (collecting information and
“analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category”), Versata Dev. Grp., Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1333 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 2510, 195 F.
Ed. 2d 841 (2016) (using organizational and product group hierarchies to
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determine a price), and Parker v. Flook, 437 U.S. 584 (1978) (mathematical
algorithm used for adjusting an alarm limit). That is, claim 1 involves
nothing more than collecting/inserting data in a data structure, without any
particular inventive technology — an abstract idea. See Elec. Power Grp.,
830 F.3d at 1354. We further refer to Content Extraction, where the Federal
Circuit has provided additional guidance on the issue of statutory subject
matter by holding claims to collecting data, recognizing certain data within
the collected data set, and storing that recognized data in memory were
directed to an abstract idea and therefore unpatentable under § 101. Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343
(Fed. Cir. 2014). On this record, we agree with the Examiner’s
determination that the claims include an abstract idea, under step one of
Alice.
As to Alice step two, Appellants contend the steps of inserting the
requirements in the nodes in a hierarchy of requirements within the RTVM
are sufficient to transform the claims into a patent-eligible application. App.
Br. 17. However, we agree with the Examiner’s finding that “[ejach claim
as a whole, does not amount to significantly more than the abstract idea
itself.” Ans. 6. These steps are all part of the process of creating/populating
a data structure (the RTVM) and simply elaborate on the abstract idea.
Here, we also agree with the Examiner that the claim “does not move
beyond a general link of the user of an abstract idea to a particular
technological environment.” Id.
We note that the introduction of a “processor of a computer system”
into the claims to implement an abstract idea is not a patentable application
of the abstract idea. Alice, 134 S. Ct. at 2357—58. The computer
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implementation here is purely conventional and performs basic functions.
See id. at 2359—60. We agree with the Examiner “the claim does not effect
an improvement to another technology or technical field,” and “does not
amount to an improvement to the functioning of a computer itself.” Ans. 6.
Here, Appellants do not adequately show how the claimed steps are done
technically such that they cannot be done manually or that they are not
routine and conventional functions of a generic computer. See Versata, 793
F.3d at 1334 (“the limitations of claim 17 involve arranging a hierarchy of
organizational and product groups, storing pricing information, retrieving
applicable pricing information, sorting pricing information, eliminating less
restrictive pricing information, and determining the price. All of these
limitations are well-understood, routine, conventional activities previously
known to the industry.”).
We are unpersuaded by Appellants’ argument that the claim “is
analogous to the limitation (‘inserting the task node under an associated task
in a hierarchy of task nodes representative of a project plan’) in claim 9 . . .
in Ex parte Kogan” that resulted in the claim being held patent eligible under
35 U.S.C. § 101 by the Board. App. Br. 17. Here, like Versata, the
limitations of claims merely involve generating a RTVM/data structure as a
spreadsheet by inserting/arranging data into the spreadsheet, wherein the
data is hierarchically linked, and then updating the RTVM (Claim 1).
For at least the reasons above, we are not persuaded of Examiner error
in the Examiner’s rejection under 35 U.S.C. § 101 of claim 1, of independent
claims 9 and 15 falling therewith (App. Br. 15), and of claims 2, 5—8, 10, 13,
14, 16, and 19—23, depending respectively therefrom. Id. at 11.
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We are also unpersuaded with Appellants’ similar contentions that
inserting the requirements in the hierarchy requirements within the RTVM
spreadsheet is “significantly more than an abstract idea” in claims 24—26 (Id.
at 18). Here, Appellants merely point out what the claims recite, which will
not be considered an argument for separate patentability of the claim. See
37 C.F.R. § 41.37(c)(l)(vii). Mere attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value. See also In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex
parte Belinne, 2009 WL 2477843, at *3^1 (BPAI Aug. 10, 2009)
(informative).
Thus, on this record, we sustain the patent-ineligible subject matter
rejection of claims 1, 2, 5—10, 13—16, and 19—26.
DECISION
We affirm the Examiner’s rejection of claims 1, 2, 5—10, 13—16,
and 19-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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