Ex Parte Behrendt et al

Patent Trial and Appeal Board

Mar 27, 2018

11421804 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111421,804 0610212006 Michael M. Behrendt
46429 7590 03/29/2018
CANTOR COLBURN LLP-IBM POUGHKEEPSIE
20 Church Street
22nd Floor
Hartford, CT 06103
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.
DE920050026US 1 3126
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL M. BEHRENDT, JOCHEN BREH, GERD BREITER,
GEORG OCHS, and ANDREA SCHMIDT
Appeal2016-005812
Application 11/421,804
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R.
MOHANTY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1--4 and 6-9. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
BACKGROUND
Appellants' invention is directed to a method of dynamically
modeling workflows for interacting stateful resources. Spec. 1
Claim 1 is illustrative:
1. A method for dynamically modeling a workflow for interacting
stateful resources in a model-based software development process, wherein
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Application 11/421,804
said workflow is described by an activity sequence description (ASD),
wherein said activity sequence description consists of a sequence of
activities, wherein each activity describes an interaction with at least one
stateful resource, comprising the step of:
modeling an activity as a plurality of in-memory models by using a
keyword identifying a type of interaction with at least one stateful resource,
its parameters, and its semantics, wherein each described activity is
concurrently provided during its modeling as input to an activity sequence
description processor which performs the following steps:
identifying said keyword of said described activity;
updating a current resource type model and a current resource instance
model based on the semantics of the currently processed keyword and the
semantics of a relationship stereotype definition;
wherein said current resource type model and said current resource
instance model are the in-memory models comprising predefined models
provided by a user or resulting from the current ASD modeling process;
wherein a successful updating of said current resource type model and
said current resource instance model automatically indicates consistency of
said described activity with a preceding modeled sequence of activities of an
ASD, wherein said current resource type model is used for generating
resource type implementation code in the model-based software
development process; and
in the case of inconsistency, automatically providing support to the
user for resolving said inconsistency.
Appellants appeal the following rejection:
Claims 1--4 and 6-9 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
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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. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(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--595 (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.").
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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
water-proof 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. Id.
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. CyberSource
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."). Accordingly, the mental
processes recited in independent claim 1, e.g., assimilating information,
creating a hypothetical resource, mapping hypothetical and actual resources,
determining a minimum parameter increase and reconciling a parameter
increase with a scheduling policy, remain unpatentable, even when
automated to reduce the burden on the user of what once could have been
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done with pen and paper. Id. at 1375 ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson, [ 409 U.S. 63
(1972)].").
Further, 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 infmmation, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concepf'); 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).
ANALYSIS
The Examiner holds that the claims were directed to the abstract idea
of modeling a workflow. Final Act. 2-3. This abstract idea includes the
steps of modeling, identifying and updating which are similar to steps
involving comparing new and stored information using rules to identify
options, organizing information and concepts describing mathematical
relationships and algorithms. Ans. 7.
We agree with the Examiner that the claims are directed to modeling
workflow and more specifically dynamically modeling workflow. In
addition, the claims recite providing data (regarding each described activity)
concurrently during modeling, analyzing the data (modeling the activity by
identifying keywords, updating current resource type model which includes
indicating consistencies and current resource instance model) and
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transmitting data in the form of providing support to the user for resolving
any inconsistencies. As such, the claims are directed to the collection and
analysis of data as in Elec. Power. Therefore, we agree with the Examiner
that the claims are directed to an abstract idea.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claims are not directed to a fundamental
economic practice, steps of organizing human activities, an idea itself or a
mathematical formula. We agree with the Examiner's response to this
argument found on pages 5-6 of the Answer. In addition, as held above, the
claims are clearly directed to the collection and analysis of data which is an
abstract idea.
In regard to the second step of the Alice analysis, the Examiner found
that the additional elements do not amount to significantly more than the
judicial exception because the combination of elements amount to mere
instructions to implement the idea on a computer and/or recitation of generic
computer structure that serves to perform generic computer functions that
are well understood, routine, and conventional activities previously known
to the pertinent industry. Final Act. 3.
Appellants argue that the claims include a number of meaningful
limitations beyond generally linking the use of the abstract idea to a
particular technological environment and transforms a particular article or
thing. This argument is not persuasive because the Appellants do not
explain how the claims include meaningful limitations beyond generally the
use to the abstract idea or how the claims recite a transformation of an article
of thing to a different state or thing. In this regard, Appellants merely state
what the claims recite without explaining how the recitations provide
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meaningful limitations or how the recitations relate to the transformation of
an article.
We are also not persuaded of error on the part of the Examiner by
Appellants' argument that the claims improve the technical field of software
development by dynamically modeling the workflow because the dynamic
modeling of the workflow is part of the abstract idea itself.
Appellants also argue that the claims are rooted in computer
technology and are similar to the claims in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) because claim 1 does
something to models through updates, consistency checks, and providing
support to the user for resolving inconsistency.
We are not persuaded by Appellants' argument that the claim is
analogous to that in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d at
1257, where the Court noted that a claim may amount to more than any
abstract idea recited in the claims when it addresses a business challenge,
such as "retaining website visitors," where that challenge is particular to a
specific technological environment, such as the Internet In DDR, the court
stated that "the [] patent's claims address the problem of retaining website
visitors that, if adhering to the routine, conventional functioning of Internet
hyperlink protocol, would be instantly transported away from a host's
website after 'clicking' on an advertisement and activating a hyperlink"
DDR Holdings, 773 F.3d at 1257. This was done in the claim by serving a
composite page with content based on the link that was activated to serve the
page.
Appellants disclose that the problern addressed by the invention is that
static modeling is very rigid and cumbersome. Spec. 4. The way of
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modeling recited in claim 1 allows modeling of the workflow with the
underlying resources at the same time (dynamically) and ensures consistency
between the workflows and the underlying resource model already during
the modeling process. Spec. 5.
Appellants do not explain how the features of claim 1, which relate to
workflow modeling is rooted in computer technology. The fact that the
problem is solved by the use of a computer does not mean that the claim is
rooted in computer technology or overcomes a problem specificaHy arising
in the realm of computer networks. In this regard, the problems associated
with static modeling exist whether a computer is used to do the modeling or
if it is done using pen and paper. Appellants' modeling method allows for
dynamic modeling using computer processing and memory in a conventional
manner and, thus, is not rooted in computer technology. .See Parker v.
Flook, 437 U.S. at 595 ("If a claim is directed essentially to a method of
calculating, using a mathematical formula, even if the solution is for a
specific purpose, the claimed method is nonstatutory.") (internal quotations
omitted); see also Digitech Image Tech. LLC v. Electronics for Imaging,
Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (finding "a process of organizing
information through mathematical coffelations and is not tied to a specific
structure or machine" to be an abstract idea.
\Ve are not persuaded of eITor on the part of the Examiner by
Appellants' argument that the present invention provides a new way of
modeling workflows for interacting stateful resources. 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 mi, Appellants misapprehend the
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controlling precedent Although the second step in the Alicell1vfayo
framework 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
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. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
We are lastly not persuaded of error on the part of the Examiner by
Appellants' argument that the claims are sufficiently narrow and do not risk
monopolization of the basic tools of scientific and technological work that
might impeded innovation. "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); see also OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193
(2015) ("[T]hat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract."). And, "[ w ]here a patent's clairns are deemed only to
disclose patent ineligible subject matter under the 1Wayo framework, as they
are in this case, preemption concerns are fully addressed and made moot."
Ariosa, 788 F.3d at 1379.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 1. We will also sustain the rejection as it is directed to the remaining
claims because the Appellants have not argued the separate patentability of
these claims.
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DECISION
We affirm the Examiner's§ 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)(iv) (2009).
ORDER
AFFIRMED
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