Ex Parte Brown et al

Patent Trial and Appeal Board

Feb 23, 2018

12326390 (P.T.A.B. Feb. 23, 2018)

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.
12/326,390 12/02/2008 William A. Brown END920080133US1 3315
76933 7590
IBM (END-KLS)
c/o Kennedy Lenart Spraggins LLP
301 Congress Avenue
Suite 1350
AUSTIN, TX 78701
EXAMINER
KIM, STEVEN S
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
02/27/2018 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):
office@klspatents.com
kate@klspatents.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM A. BROWN, KERRIE L. HOLLEY,
GARRISON A. MOORE, and WILLIAM J. TEGAN
Appeal 2016-0075411 2 3
Application 12/326,3902,3
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—9. Claim 10 has been withdrawn. We have
jurisdiction under 35 U.S.C. §§ 134 and 6(b).
1 Our Decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
Feb. 23, 2016) and Reply Brief (“Reply Br.,” filed Aug. 3, 2016), and the
Examiner’s Final Office Action (“Final Act.,” mailed Nov. 13, 2015) and
Answer (“Ans.,” mailed June 27, 2016).
2 According to Appellants, the real party in interest is International Business
Machines Corporation (Appeal Br. 1).
3 This application has previously been before the Board in a prior appeal. In
that appeal, the Board reversed a previous rejection of the Examiner. In re
Brown, Appeal No. 2013-000136 (PTAB June 26, 2015).
Appeal 2016-007541
Application 12/326,390
We AFFIRM and enter a NEW GROUND OF REJECTION.
Introduction
Appellants’ application relates to “data processing,” and more
specifically to “methods and systems for governing the design of services in
a Service Oriented Architecture.” See Spec. 1:10-12.
Claim 1, reproduced below, is the sole independent claim on appeal
and is representative of the subject matter on appeal:
1. A computer-implemented method of governing the design
of services in a Service Oriented Architecture ('SOA'), the
method comprising:
receiving, by one or more modules of automated
computing machinery in a computer, a service model, the service
model having preliminary design patterns that include a plurality
of preliminary service components, each of the preliminary
service components allocated to one or more preliminary service
layers of the SOA service architecture;
creating, by the one or more modules of automated
computing machinery, a high level service design from the
service model;
estimating, by the one or more modules of automated
computing machinery, the cost of the SOA in dependence upon
the high level service design;
determining, by the one or more modules of automated
computing machinery, during an architectural inspection,
whether the high level service design and the estimated cost of
the SOA complies with predetermined high-level service design
verification policies;
if the high level service design and the estimated cost of
the SOA complies with predetermined service design
verification policies, creating, by the one or more modules of
automated computing machinery, a low level service design from
the high level service design;
estimating, by the one or more modules of automated
computing machinery, an updated cost of the SOA in dependence
upon the low level service design;
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Application 12/326,390
determining, by the one or more modules of automated
computing machinery, during a follow-up architectural
inspection, whether the low level service design and the
estimated updated cost of the SOA complies with predetermined
low level service design verification policies; and
if the low level service design and the estimated updated
cost of the SOA complies with predetermined low-level service
design verification policies, incorporating, by the one or more
modules of automated computing machinery, the low level
service design in a design specification for the SOA.
(Appeal Br., Claims App.)
Rejection on Appeal
The Examiner maintains, and Appellants appeal, the following
rejection:
Claims 1—9 stand rejected under 35 U.S.C. § 101 as being
directed to an abstract idea.
ANALYSIS
The Court in Alice emphasized the use of a two-step framework for
analysis of patentability under 35 U.S.C. § 101:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[wjhat else is there in the claims before us?” To answer that
question, 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.
See Alice Corp. Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012)).
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Under the first step of the Alice inquiry, the Examiner determines that
claims 1—9 are directed to certain methods of organizing human activity,
which is an abstract idea. Final Act. 4. The Examiner sets forth the claim
steps and determines that “the claim is directed to governing a project
specific to service design, e.g., top-down (high level to low level design),
using cost analysis and compliance determination during each phase which
is similar to the certain methods of organizing human activities, in this case
project management/planning (e.g., meal planning).” Id. at 5—6; Ans. 3, 7
(citing Dietgoal Innovations LLC v. Bravo Media LLC, Case No. 2014-1631,
599 F. App’x. 956 (Fed. Cir. 2015)). The Examiner also submits that the
claim is directed to service models and creating of service model designs,
which is similar to a mathematical relationship/formula. Id. at 6. The
Examiner makes further determinations under the second step of the Alice
inquiry as well, with respect to the additional limitations of the claimed
invention.
Under the second step of Alice, the Examiner determines that:
the additional elements in claims, namely one or more modules
of automated computer machinery, description of service model,
and SOA [service oriented architecture] which represents an
architectural style that guides aspect of architectural style that
guides all aspects of creating and using business processes,
packaged as services, throughout their lifecycle, as well as
defining and provisioning the IT (‘information technology’)
infrastructure when taken alone or in combination do not offer
“significantly more” than the abstract idea itself.
Id. at 6. The Examiner determines that the additional elements, or
combination of elements, amounts to no more than (i) mere instructions to
implement the idea on a computer (here, a generic computer system) and/or
(ii) recitation of generic computer structure to perform computer functions
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that are well-understood, routine, conventional activities. Id. at 6—7. The
Examiner further determines that the recited steps result in incorporating
lower service design in a design specification, and the steps involve a
process of business decision. Id. at 7—8.
The Examiner disagrees with Appellants’ argument that there was a
technological improvement or non-generic function in the step of having an
automated computer receive a service model with components allocated to
one or more preliminary service layers of the SOA service architecture, as
recited in independent claim 1, i.e.,
receiving, by one or more modules of automated
computing machinery in a computer, a service model, the service
model having preliminary design patterns that include a plurality
of preliminary service components, each of the preliminary
service components allocated to one or more preliminary service
layers of the SOA service architecture.
Id. at 8. The Examiner instead determines that receiving a service model
(data) is a generic function of a computer, and notes that the Specification
discloses that the recited steps may be carried out by web servers,
spreadsheets, databases, computer networks, aggregations of software and
hardware, and other tools “as will occur to those of skill in the art.” Id.
Appellants argue that the Examiner has failed to provide a prima facie
case against an accused abstract idea because the Examiner has not made a
clear comparison to cases previously found to be abstract or explained why
the idea is abstract. Appeal Br. 4—6 (citing July 2015 Update: Subject
Matter Eligibility, Section III (July 30, 2015) (“hereinafter “the 2015
Update”); Worksheet Examples in the Abstract Idea Workshop Materials,
Examples 3 and 4 (May 2015) (hereinafter, “Worksheet Examples”)). In
Example 3 of the Worksheet Examples (discussed in Appeal Br. 5—6), an
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abstract idea is identified in detail and determined to be a mathematical
operation or relationship, which is compared to those found in prior cases to
be abstract (whereas in Example 4, the claimed invention contains other
meaningful limitations). Appellants argue that the Examiner here has failed
to explain why the determined idea is a method of organizing human
behavior or a mathematical relationship and has failed to provide a clear
comparison to case law such that Appellants are “left in the dark.” Appeal
Br. 6—7. Appellants assert that governing the design of services in an SO A
(service-oriented architecture) is not an abstract idea, that the Examiner’s
reasoning is conclusory, and that the use of the terms “high” and “low” does
not render the invention mathematical. Appeal Br. 12—14. We are
unpersuaded by Appellants’ contentions for the reasons that follow.
The claimed invention is directed to a method of designing a
computer program. The Examiner states that the claimed invention is
directed to “project management/planning.” Ans. 3. We agree with the
Examiner that the claimed invention is a type of planning that is a method of
organizing human behavior, i.e., creating a high level design before
proceeding to create a low level design. See Claim App’x (claim 1). There
is a further reason why the claimed invention is abstract, i.e., it is directed to
a method of creating a design (without implementing instructions), which is
an attempt to claim the fundamental building blocks of human
ingenuity. See, e.g., Synopsys, Inc. v. Mentor Graphics Corporation,
839 F.3d 1138, 1139 (Fed. Cir. 2016) (claims directed to abstract idea of
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Application 12/326,390
translating a functional description of a logic circuit into a hardware
component description of the logic circuit).4
We have held in the previous appeal from this same application, in
reviewing a prior art rejection, that the claim language “each of the
preliminary service components” is “allocated to one or more preliminary
layers” of the “architecture,” is “on its face a structural recitation.” In re
Brown, Appeal No. 2013-000136 (PTAB June 26, 2015), slip op. at 5.
However, the claim is directed to a method of creating a design rather than
to any particular design itself. The claims and the Specification indicate that
these layers can be created without providing any particular architecture and
without providing instructions on how to implement the method. See
Spec. 23:17—25:4, Figs. 7—10. For example, the Specification states that
“[t]o be technical feasible, a component may be reasonably allocated to a
service layer from both a technical solutions perspective and a business
prospective such that the allocation may be documented in an updated
service model and communicated to relevant stakeholders for later use in
designing the SOA.” Spec. 24:30-25:3. We determine that although the
Specification thereby purports to explain what is “technically feasible,” and
the Specification provides some discussion that changes may be made to one
layer without changes to another layer (Spec. 23:30-24:5), this discussion
does not explain how to create the recited SOA design. As such, we
determine that the claim is not directed to an improvement in structure and is
devoid of the type of implementing instructions that, by itself or as an
4 Appellants themselves argue that the notion of an “abstract idea” goes to
the question of whether the “building blocks” of human ingenuity are being
claimed. Appeal Br. 8—12. Nevertheless, we denominate this reasoning as a
new ground of rejection as it goes beyond the Examiner’s reasoning.
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ordered combination, would remove the claimed invention from the realm of
the abstract. See Affinity Labs, of Texas v. DIRECTV, LLC, 838 F.3d 1253,
1258 (Fed. Cir. 2016) (claims directed to idea itself of out-of-region
broadcasting on a cellular telephone without implementing programmatic
structure deemed ineligible); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229
(Fed. Cir. 2016) (claims directed to idea of generating a second menu from a
first menu and sending the second menu to another location held patent
ineligible); see also Move, Inc. v. Real Estate Alliance, Ltd., Case No. 2017-
1463, 2018 WL 656377, at *3 (Fed. Cir. Feb. 1, 2018) (non-precedential)
(“Claim 1 is aspirational in nature and devoid of any implementation details
or technical description that would permit us to conclude that the claim as a
whole is directed to something other than the abstract idea identified by the
district court.”).
Appellants contend that the claims recite significantly more than an
abstract idea because they recite a particular way to automate arranging SOA
costs in support of business administration, solving a problem often faced by
at least some business administrators. Appeal Br. 14—15. Applicants argue
that the claims are directed towards improving the functioning of automated
computing machinery that creates and incorporates service designs into a
service oriented architecture (SOA) specification that complies with the
SOA. Reply Br. 18 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016)). We are unpersuaded by Appellants’ contention as we
determine that neither the claims nor the Specification provides “a particular
way” to design an SOA. For example, Figure 1—11 of the Specification
provide flow charts that at most instruct a designer to “identify[]”
architectural layers and “defin[e]” rules without providing the layers or the
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rules. See, e.g., Fig. 8. The steps are themselves abstract and aspirational in
nature because they do not themselves provide the particular layers.
Appellants argue that “nothing in these claims seeks in any way to tie
up any abstract idea” and “all analysis of the ‘abstract idea’ exception is
based upon precluding such preemption.” Appeal Br. 7—8. However, a
showing of pre-emption is not required for a determination that an idea is
directed to non-patentable subject matter. Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015) (“Where a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.”). This is a situation where the issue of pre­
emption is adequately addressed by the underlying issues set forth above.
We, therefore, sustain the Examiner’s rejection under § 101 of claims
1-9.
DECISION
The Examiner’s decision to reject claims 1—9 under 35U.S.C. § 101 is
affirmed. Because this decision provides additional reasoning beyond that
provided by the Examiner, we enter this decision with a new ground of
rejection.
NEW GROUND
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
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following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
AFFIRMED: 37 C.F.R, $ 41.50(b)
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