Ex Parte Beyda et al

Patent Trial and Appeal Board

Sep 24, 2018

12359059 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/359,059 01/23/2009
23460 7590 09/26/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Peter Beyda
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.
702378 3697
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER BEYDA, CHRIS KATSIKAS and KASOON CHAPMAN 1
Appeal2017-006918
Application 12/359,059
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-14, 16, 24, and 25, all claims currently pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the real party in interest as American International
Group, Inc. App. Br. 1.
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Application 12/359,059
STATEMENT OF THE CASE
Appellants' invention is directed to "a system and method for
electronically managing a business process and business process content,"
and more particularly to "electronic systems and methods that facilitate the
workflow of a business process and manage business process content."
Spec. ,r 1. Claim 1, reproduced below with the disputed limitations in
italics, is representative of the claimed subject matter:
1. A system for managing a business process and business
process content, the system comprising:
a communication network;
a computer server connected to the communication
network;
an electronic central repository connected to the computer
server, the computer server being programmed to store business
process content files in the electronic central repository;
the computer server adapted to execute a management and
workflow software application stored on a physical computer
readable medium, the management and workflow software
application having a management software module for accessing
and organizing business process content files in the electronic
central repository by a group of users through a set of worklists,
each worklist associated with a corresponding user and
comprising a subset list of the business process content files
stored in the electronic central repository associated with said
user, respectively, and a worliflow software module for notifying
a different user to produce business process content files and for
routing a selection from the business process content files from
a first worklist associated with a first user of the group of users
to a second worklist associated with a second user of the group
of users such that the selection from the first worklist is added to
the second worklist;
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the computer server further adapted to present an
electronic user interface to a client over the communication
network;
the computer server further adapted to receive information
through the electronic user interface over the communication
network;
wherein the electronic user interface provides each user of
the group of users access to the management and workflow
software application and business process content files stored in
the electronic central repository through the respective user's
worklist associated with each user of the group of users.
REJECTIONS
Claims 1-14, 16, 24, and 25 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
Ans. 2.
Claims 1-14, 16, 24, and 25 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over Stijn Dekeyser & Richard Watson, Extending
Google Docs to Collaborate on Research Papers, (2006) ("Dekeyser") and
Nixon et al. (US 2008/0058969 Al; published Mar. 6, 2008) ("Nixon").
Ans. 6.
ANALYSIS
35 USC§ 101 Rejection
Alice Corp. Pty. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014), identifies a
two-step framework for determining whether claimed subject matter is
judicially excepted from patent eligibility under 35 U.S.C. § 101. In the first
step, "[ w ]e must first determine whether the claims at issue are directed to a
patent-ineligible concept." Alice, 134 S. Ct. at 2355.
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The Examiner concludes that the claims are directed to the abstract
idea of "accessing management and workflow data." Ans. 2. Specifically,
the Examiner concludes the claims are directed to accessing and using
software to automate mental tasks and manage data across a network,
performing methods of organizing human activity practices. Ans. 4 ( citing
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011)). According to the Examiner, the claims are also directed to receiving
or transmitting data over a network and to using the Internet to gather data.
Ans. 4 (citing Cybeifone Sys., LLC v. CNN Interactive Grp. Inc., 558
F. App'x 988 (Fed. Cir. 2014)).
Although Appellants argue they do not "acquiesc[ e] in any way to the
conclusion in the pending Office Action that the claims are directed to 'the
abstract idea of accessing management and workflow data,"' Appellants do
not present arguments that the claims are not directed to an abstract idea, but
rather, only argue the second step in the Alice analysis. App. Br. 5.
We see no error with the Examiner's conclusion that the claims are
directed to an abstract idea. Specifically, the claimed invention is directed to
organizing and storing information (i.e., accessing and organizing files in an
electronic central repository, through worklists corresponding to users that
comprise subset lists of files), and storing and transmitting information (i.e.,
notifying users to produce files and routing selected files from one worklist
to another worklist). See Cyberfone, 558 F. App'x at 992 ("using categories
to organize, store, and transmit information is well-established .... [T]he
idea of collecting information in classified form, then separating and
transmitting that information according to its classification, is an abstract
idea that is not patent-eligible."). The claimed invention is also directed to
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organizing human activity, performable by human thought (i.e., accessing
and organizing files, and notifying users to produce files and routing
selected files from one worklist to another worklist). See CyberSource, 654
F.3d at 1373 ("[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under§ 101.").
In the second step of Alice, we "consider the elements of each claim
both individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)). In other words, the
second step is to "search for an 'inventive concept' - i.e., 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."' Id. (alteration in original) (quoting Mayo, 566 U.S. at 72-
73).
The Examiner determines the additional elements in the claims ( e.g.,
computer server, electronic central repository, and electronic user interface)
do not provide meaningful limitations to transform the abstract idea into a
patent eligible application of the abstract idea such that the claims amount to
significantly more than the abstract idea itself. Ans. 2-3. Specifically, the
Examiner determines the claimed invention recites a computer readable
medium storing software application with management and workflow
modules, a computer server described at a high level of generality that
performs generic functions of presenting management and workflow
software applications, a graphical user interface that presents worklists, and
an electronic central repository within a simple field of use. Ans. 14--15; see
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Ans. 5. According to the Examiner, the claims are not directed to any
specific improvement or computer functionality and rather to use of
conventional or generic technology in a nascent but well-known
environment. See Ans. 13-17.
Appellants argue that claimed additional elements apply the claimed
concepts to a new and useful end. App. Br. 6. According to Appellants,
claim 1 recites a significant improvement "over any existing technological
system/process known at the time of the invention which improves the
operation of the recited 'electronic central repository."' Id. Appellants
argue the claimed solution is rooted in computer technology "in order to
satisfy persistent needs specifically arising in the field of process content
management," by "providing efficiency-improvement features that allow
several people involved in an electronic business process, including those
residing in different locations, to store and access documents in a central
repository of a content management system and use worklists associated
with each user to coordinate workflow." App. Br. 7.
We are not persuaded by Appellants' argument and agree with the
Examiner's findings and conclusions. See Ans. 3-5, 13-17. Appellants
have not adequately explained how or provided persuasive evidence to show
why the claims add meaningful limits to practicing the abstract idea.
We agree with the Examiner that the claims do not improve another
technology or technical field, or functioning of the computer itself, and do
not have meaningful limitations beyond generally linking use of an abstract
idea to a technological environment. See Ans. 13-17. Rather than reciting
additional elements that amount to "significantly more" than the abstract
idea, the pending claims, at best, add only a computer server, computer
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readable medium, electronic central repository, and electronic user interface,
which are generic computing devices. The systems are described as
including software applications and implementing system features "running
on one or more servers that interact with one or more databases as part of an
electronic central repository." Spec. ,r 44. These systems running functions
on servers interacting with the databases of a repository do not satisfy the
inventive concept. See, e.g., DDR Holdings, 773 F.3d at 1256 ("[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible. The bare fact
that a computer exists in the physical rather than purely conceptual realm is
beside the point." ( citation and internal quotation marks omitted)).
Moreover, Appellants do not point to anything in the Specification to
indicate that any increased efficiency comes from the claimed invention
itself, rather than from the capabilities of the claimed generic computing
devices. See Bancorp Servs., L.L. C. v. Sun Life Assurance Co. of Can.
(US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter."); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent-eligible).
Although the claims describe employing a computer server and
electronic central repository to perform Appellants' method, we agree with
the Examiner that the recited steps describe accessing and using software to
automate mental tasks and methods of organizing human activity practices.
Ans. 4; see, e.g., CyberSource, 654 F.3d at 1375 ("That purely mental
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processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson.");
Bancorp, 687 F.3d at 1279 ("Here, in contrast, the computer merely permits
one to manage a stable value protected life insurance policy more efficiently
than one could mentally. Using a computer to accelerate an ineligible mental
process does not make that process patent-eligible.").
Furthermore, Appellants' argument that the pending claims are patent
eligible because they are novel and non-obvious (see App. Br. 7) is likewise
not persuasive because it improperly conflates the requirements for eligible
subject matter(§ 101) with the independent requirements of novelty(§ 102)
and obviousness(§ 103). Although the second step in the Alice framework
is termed a search for an "inventive concept," the analysis is not an
evaluation of novelty or non-obviousness. Alice, 134 S. Ct. at 2355. A
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. 66 at 78-79. Further,
"under the Mayol 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).
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 1-14, 16, 24, and 25.
35 US.C. § 103 Rejection
Issue: Did the Examiner err in finding that the combination of
Dekeyser and Nixon teaches or suggests
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a workflow software module ... for routing a selection from the
business process content files from a first worklist associated
with a first user of the group of users to a second worklist
associated with a second user of the group of users such that the
selection from the first worklist is added to the second worklist,
as recited in independent claim 1, and commensurately recited in
independent claim 8?
The Examiner relies on Nixon's "sharing and group editing tool that
collaborates users participation and files to create and edit programs by
exporting code files from a library repository" to teach the disputed
limitation. Ans. 8 (citing Nixon ,r 33); Ans. 19 (citing Nixon ,r 33).
Appellants contends neither Nixon's editing tool 100 nor Nixon's
code library master 120 is described as containing the routing functionality.
App. Br. 13-14.
We are persuaded by Appellants' arguments. As Appellants point out
(App. Br. 13-14), Nixon describes a system that "code library master 120
stores the code library file 124 in the code library database 122, and exports
the code library file 126 to the off-line database 104 in a format understood
by the off-line database 104." Nixon ,r 33. Nixon further describes "the
editing tool 100 creates an object of a new composite block within the
workstation's memory from a default configuration for the composite block"
and "the editing tool 100 creates an object of a new phase class within the
workstations memory from a known default configuration." Nixon ,r 40.
We find the Examiner has not provided sufficient findings that Nixon
(i.e., code library master storing a file in one location and exporting it to
another location, or editing tool creating an object) teaches or suggests the
claimed routing a selection, and specifically routing the business process
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content files from a first worklist associated with a first user of the group of
users to a second worklist associated with a second user of the group of
users such that the selection from the first worklist is added to the second
worklist.
Accordingly, we are constrained on the record before us to reverse the
Examiner's§ 103 rejection of independent claims 1 and 8, along with the
§ 103 rejection of claims 2-7, 9-14, 16, 24, and 25, for the same reasons.
See App. Br. 14--15.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1-14, 16, 24, and
25 is affirmed.
The Examiner's 35 U.S.C. § 103 rejection of claims 1-14, 16, 24, and
25 is reversed.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject all of the
pending claims.
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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