Ex Parte Bhagat et al

Patent Trial and Appeal Board

Jun 27, 2018

11081898 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111081,898 03/16/2005
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
06/29/2018
FIRST NAMED INVENTOR
Rajesh M. Bhagat
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.
RSW920050020US 1 6213
EXAMINER
NGUYEN, TAND
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJESH M. BHAGAT, REDHA M. BOURNAS, VISHWANATH
NARAYAN, DAVID NOLLER, PAUL D. PETERS, and
DAVID J. SALKELD
Appeal 2016-006266
Application 11/081,898
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MEREDITH C. PETRA VICK, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-26 and 28. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
Appeal 2016-006266
Application 11/081,898
BACKGROUND
Appellants' invention is directed to systems, methods, and computer
program products for configuring an assembly line. Spec. 1.
Claim 1 is illustrative:
1. A system for dynamically configuring an assembly line
having process points where events are triggered, the system comprising:
a processor;
a memory communicatively coupled to said processor; said memory
comprising executable code stored thereon such that said processor is
configured to execute said executable code to implement:
a service configurator to define a service catalog comprising a listing
of Web Services;
a process configurator to configure processes implemented in
response to triggered events at the process points, wherein each of the
processes comprises a sequenced list of the services to be invoked in
response to the triggered event; and
a tree configurator to define where each of the processes fit into a
hierarchy of categories displayed to a user, in which each process point is
defined as a category node within the hierarchy of categories,
in which said hierarchy of categories of the tree configurator represents:
the assembly line;
the process points along the assembly line;
the services that are invoked in response to triggering events at the
process points; and
a number of processes invoked as a result of the events at the process
points.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Klerk et al.
DiLena et al.
Feyereisen et al.
US 2006/0225032 Al
US 2002/0143653 Al
US 6,289,277 Bl
2
Oct. 5, 2006
Oct. 3, 2002
Sep. 11, 2001
Appeal 2016-006266
Application 11/081,898
Appellants appeal the following rejections:
1) The rejections of claims 1-26 and 28 under 35 U.S.C. § 101.
2) The rejection of claim 26 under 35 U.S.C. § 101.
3) The rejections of claims 1-26 and 28 under 35 U.S.C. § 103(a) as
being unpatentable over Klerk, in view ofDiLena, and Feyereisen, and in
further view of Applicant's allegedly admitted prior art .
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
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Application 11/081,898
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.").
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.
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
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Application 11/081,898
automated to reduce the burden on the user of what once could have been
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)].").
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 certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Communication 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 use generic computer technology to perform data
collection, analysis, and display and do not recite an improvement to a
particular computer technology are directed to an abstract idea. See, e.g.,
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15
(Fed. Cir. 2016) (finding claims not abstract because they "focused on a
specific asserted improvement in computer animation").
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.
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Application 11/081,898
ANALYSIS
Rejections under 35 US.C. §101
The Examiner rejects the appealed claims as being directed to patent
ineligible subject matter, i.e. to graphically configuring a graph/map in
response to triggered events, and alternatively to a method of organizing
human activities and a mathematical relationship or formula. Fin. Act. 12.
The Examiner determines that claim 1 is directed to obtaining existing
information, manipulating the existing information, and generating
additional information. Fin. Act. 12-13
We agree. In essence, the claims are directed to the collection,
analysis, and display of data.
The Examiner finds that the other recitations in the claim of a
processor and memory are recitations of generic computer structure that
perform generic computer functions that are well-understood, routine and
conventional activities previously known to the pertinent industry. Fin. Act.
16. The Examiner further finds that the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of managing
a business by various data processing mechanism using some unspecified
generic computer. Fin. Act. 19. The Examiner also finds that the storage
device merely stores the data and the computer system performs
conventional and routine steps (e.g. configuring, receiving and conjuring a
graph/map etc.) and that these activities do not impose meaningful limits on
the scope of the claim. Fin. Act. 19.
We note that the only aspects of claim 1 that is not included in the
abstract idea of the collection, analysis, and display of data is the recitation
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of a processor, a memory, a service configurator, a process configurator, and
a tree configurator. As such, in the second part of the Alice analysis, we
consider whether the processor, the memory, the service configurator,
process configurator, and tree configurator amount to significantly more
than the abstract idea of the collection, analysis and display of data.
The service configurator, process configurator, and tree configurator
are part of the configuration computer. [Spec. 38, Fig. 2]. The
configuration computer may be any type of computer that is capable of
carrying out the functions of the invention and may be a desktop computer, a
laptop, or a workstation. [Spec. 38]. We agree with the Examiner that the
recitations other than the abstract idea do not amount to significantly more
than the abstract idea.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that claim 1 as a whole does not seek to tie up any
judicial exception. \Vbile 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
lirnited to price optimization in the e-commerce setting do not make them
any less abstract."). And, "[ w ]here a patent's claims are deemed only to
disclose patent ineligible subject matter under the lv1ayo framework, as they
are in this case, preemption concerns are fully addressed and made moot."
Ariosa, 788 F.3d at 1379.
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Application 11/081,898
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claims are not related to a mathematical
formula and thus are not directed to an abstract idea because even if we
agree with the Appellants that the claims are not directed to a mathematical
formula, the claims are still directed to the collection, analysis and display of
data and are directed to an abstract idea on that basis.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claims apply the exception in a meaningful
way, solve a problem in computer technology, improve the computer
capability and improve the dynamic configuration of an assembly line. We
agree with the Examiner's response to these arguments found on pages 4---6
of the Answer and adopt these responses as our own. Specifically, we agree
that it is not clear what Appellants refer to a the problems or improvements
to computer technology or configuration of the assembly line. Appellants
argue that claim 1 improves the dynamic configuration of an assembly line
having process points where events are triggered but Appellants do not
explain how the configuration is improved. We agree with the Examiner
that nothing in the claims deals with the improvement of the operation of the
assembly line. In addition, the Appellants have not shown what
improvements are disclosed in the Specification. Likewise, it is unclear
what problem is overcome by claim 1 or how such a problem is related to
computer technology.
We have considered all of the other arguments Appellants made in the
Appeal Brief in response to this rejection and find them unpersuasive of
error on the part of the Examiner. We find untimely Appellants' arguments
regarding patent eligibility made for the first time in the Reply Brief that are
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Application 11/081,898
not in response to a new issue brought up by the Examiner in the Answer.
Appellants are reminded that:
[T]he purpose of a reply brief is to ensure the Appellant the
opportunity to have the last word on an issue raised by the
Examiner. The reply brief enables the Appellant to address any
new grounds of rejection the Examiner may have raised in the
answer, or to address changes or developments in the law that
may have occurred after the principal brief was filed. The reply
brief is not an opportunity to make arguments that could have
been made during prosecution, but were not Nor is the reply
brief an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Exarniner's
rejections, but were not. Giving cognizance to belated
arguments in a reply would vitiate the force of the requirement
in Board Rule 3 7 (c )( l )(vii) that "[ a]ny arguments or authorities
not included in the brief... will be refused consideration by the
Board, unless good cause is shown." The reference in that
section to the "reply brief filed pursuant to § 41.41" does not
create a right for the Appellant to raise an argument in the reply
brief that could have been raised in the principal brief but was
not. Rather, that reference merely puts Appe11ants on notice that
arguments that could be made in the reply brief but are not, are
waived.
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010).
In view of the forgoing, we will sustain this rejection as it is directed
to claim 1 and claims 2-13, dependent therefrom.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that claim 14 recites significantly more than an
abstract idea because of the recitation of a display device because this is a
recitation of a generic computer element performing generic computer
functions. Appellants have advanced other arguments for the patent
eligibility of claims 14 and 26, which are similar to the arguments made in
regards to the patent eligibility of claim 1. Therefore, we will sustain the
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rejection of claims 14 and claims 15- 24, dependent therefrom and claim 26
as well.
Claim 26 is rejected as being directed to a signal.
Rather than follow the Examiner's invitation to amend the claim to
cover only statutory embodiments by reciting a non-transitmy computer
readable storage device, Appellants' argue that the rejection of claim 26
under 35 U.S.C. § 101 is improper because claim 16 is directed to computer
readable storage "device" and thus is directed to an article of manufacture.
Appellants' Specification describes at pargraph 39 that various the memory
nu~y comprise various data storage such as magnetic media, optical media,
etc., the Specification also discloses that the memory may also be
transrnission media. Thus, the Specification does not exclude employing
non-statutmy subject matter such as signals. Including the terms "tangible"
and "device" in claim 26 does not remedy this issue. See E'x parte
]vfewherter, 107 USPQ2d 1857, 1862 (PTAH 2013) (precedential). \Ve find
that the phrase "computer-readable storage device" does not exclude non-
statutory subject matter, such as transitory signals. \Ve thus affirm the
Examiner's rejection of claim 26 under 35 U.S.C. §101 as covering non-
statutmy subject matter.
Obviousnesss
We will not sustain this rejection because we agree with the
Appellants that the prior art does not disclose a tree configurator to define
where each of the processes fit into a hierarchy of categories displayed to a
user in which each process point is defined as a category node within the
hierarchy of categories as recited in claim 1. The Examiner relies on DiLena
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Application 11/081,898
at paragraphs 101-103 for teaching this subject matter. We find that these
paragraphs of DiLena relate to a hierarchy of product features not a
hierarchy of processes in which each process point is defined as a category
node with a hierarchy of categories as claimed. Although the Examiner may
be correct that all that is necessary to meet this recitation in claim 1 is that
the prior art includes a tree configurator that is capable of defining the
hierarchy of processes, the Examiner has failed to establish that DiLena
teaches this capability. Therefore, we will not sustain this rejection as it is
directed to claim 1 and claims 2-13, dependent thereon. We will also not
sustain this rejection as it is directed to claim 14 and claims 15-25
dependent therefrom and claim 26 because each of these claims includes the
subject matter we found lacking in DiLena.
DECISION
We affirm the Examiner's§ 101 rejections.
We do not affirm the Examiner's§ 103 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).
ORDER
AFFIRMED
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