Ex Parte Caldwell et al

Patent Trial and Appeal Board

Dec 19, 2018

12760285 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/760,285 04/14/2010
23460 7590 12/21/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Mark Caldwell
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.
706359 8727
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/21/2018 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 MARK CALDWELL, STEVE BRACK,
ROSEMARY BEAUVAIS, BOHDAN HORYN, ROBERT
FRANCIS ROCHE III, THOMAS G. KELLY, J STEVEN
SENNEFF, and RONALD E. MAHAFFEY
Appeal2017-003571
Application 12/760,285 1
Technology Center 3600
Before St. JOHN COURTENAY III, ERIC S. FRAHM, and
DAVID M. KOHUT, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 21-23, 25-30, 41--46, and 48. 2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is American
International Group, Inc. App. Br. 1.
2 Claims 1-20, 24, 31--40, and 47 were cancelled. App. Br. 1.
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Application 12/760,285
INVENTION
Appellants' invention relates to a system for creating and reviewing
incident reports. Spec. 1, ,r [0001]. Claim 21 is the only independent claim
on appeal and is reproduced below.
21. A computer-assisted system for incident reporting,
compnsmg:
an application server on a computer located on a
network and communicating with a user computer on the
network,
the application server being programmed to
present through user interface screens on the user
computer an incident report form with data fields
for entering information regarding an incident to
create an incident report, the data fields including a
field for a routing profile for the incident report,
the routing profile including a plurality of
sequential review steps with an associated
reviewer for each review step, and
the application server being programmed to
route the incident report to the reviewer associated
with the first review step of the routing profile and
to sequentially route the incident report to each
subsequent reviewer associated with the
subsequent review steps of the routing profile upon
receiving an indication from the prior reviewer that
the incident report is ready for review by the next
reviewer, the application server being programmed
to route the incident report by sending an
electronic notification message to the reviewer
indicating the incident report is ready for the
reviewer's review; and
a database connected to the application
server adapted to store the incident report in an
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encrypted format and adapted to store a review
status of the incident report;
wherein the application server is
programmed to update the review status for the
incident report upon completion of each sequential
review step of the incident report by each reviewer
associated with the routing profile and to update a
field for the review status in one of the user
interface screens, the field for the review status
being adapted to display indicia configured to
indicate the current review step and the action to
be taken in said current review step.
Carlson
Ouchi
Voronov
REFERENCES
US 2003/0135378 Al
US 7,546,346 B2
US 7,788,237 B2
REJECTIONS AT ISSUE
July 1 7, 2003
June 9, 2009
Aug. 31, 2010
The Examiner rejected claims 21-23, 25-30, 41--46, and 48 under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more. Final Act. 2-6.
The Examiner rejected claim 25 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter for which the inventor regards as the
invention. Final Act. 6-7.
The Examiner rejected claims 21-23, 25-29, 41--45, and 48 under
35 U.S.C. § I03(a) as unpatentable over Carlson in view of Ouchi.
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The Examiner rejected claims 30 and 46 under 35 U.S.C. § 103(a) as
unpatentable over Carlson, Ouchi, and Voronov.
ISSUES
Did the Examiner err in finding that claims 21-23, 25-30, 41--46, and
48 are directed to a judicial exception without significantly more?
Did the Examiner err in rejecting claim 25 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter for which the inventor regards as the
invention?
Did the Examiner err in rejecting claims 21-23, 25-29, 41--45, and 48
under 35 U.S.C. § 103(a) as unpatentable over Carlson in view of Ouchi?
Did the Examiner err in rejecting claims 30 and 46 under 35 U.S.C.
§ 103(a) as unpatentable over Carlson, Ouchi, and Voronov?
ANALYSIS
35 U.S.C. § 101 rejection
The issue we consider is whether the Examiner erred in rejecting
claim 21 and claim 21 's dependent claims 22, 23, 25-30, 41-46, and 48 as
being directed to patent-ineligible subject matter. Specifically, (1) did the
Examiner err in determining that the claims are directed to an abstract idea,
and (2) did the Examiner err in determining that claims do not recite
additional limitations amounting to significantly more than the claimed
abstract idea?
The Examiner performs a two-step analysis to determine patent
eligibility as set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1296-97 (2012), and reiterated in Alice
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Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014). In
the first step, the Examiner determines if the claims are directed to a patent
ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If the
claims are directed to an abstract idea, then the Examiner proceeds to the
second step. In the second step, the Examiner considers whether the claims,
individually and as an ordered combination, recite an inventive concept-an
element or combination of elements sufficient to ensure the claims amount
to "significantly more" than the abstract idea and transform the nature of the
claims into a patent-eligible concept. Id. We address each step in tum.
Step 1
The Examiner concludes that "the claim(s) is/are directed to the
abstract idea of managing incident reports, more specifically to the creation
of incident reports and routing the incident reports to reviewers using
predetermine[d] rules." Final Act. 2. The Examiner finds the acts of
presenting an incident report to a user with the ability to define a routing
profile, assigning a reviewer to each step, and routing the incident report to
the reviewer according to the routing profile are based on an abstract idea
that is well understood, routine, and conventional. Final Act. 2-6.
The Examiner further concludes that the claim scope is similar to the
concepts previously identified as abstract ideas, such as in SmartGene, Inc.
v. Advanced Biological Lab, SA, 555 F. App'x 950 (Fed. Cir. 2014)
( comparing stored and inputted data with rules to identify treatment options
which doctors routinely do in their heads.) Final Act. 3. Like the claims in
SmartGene, the Examiner concludes the claims relate to the abstract ideas of
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using rules to determine to whom and when a report should be sent to the
next reviewer, which can be performed as a mental process. Id.
Appellants argue the claims are directed to a statutory class of
invention, i.e., a machine, and are therefore not an abstract idea. App. Br. 5.
In response, we emphasize that the issue of whether a claim is directed to a
judicial exception, such as an abstract idea, is separate and independent from
whether a claim is directed to statutory subject matter (i.e., "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof' -35 U.S.C. § 101). Claims that fall
within one of the four subject matter categories may nevertheless be
ineligible if they encompass laws of nature, physical phenomena, or abstract
ideas. See Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).
Claim 21 recites the steps of receiving information regarding an
incident report, receiving a routing profile associated with the incident
report, routing the incident report to the appropriate reviewers based on the
routing profile, storing the incident report, and updating the status of the
incident report. App. Br. 14, Claims App. We agree with the Examiner's
legal conclusion that the steps in claim 21, like in SmartGene, are directed to
abstract ideas involving an idea of itself, i.e., inputting data (using stored
data and inputted data), inputting routing profile information (rules), and
comparing the data with the routing profile information to process an
incident report ( comparing data with rules to identify treatment options),
which can be performed as mental processes.
"The § 101 inquiry must focus on the language of the Asserted Claims
themselves." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149
(Fed. Cir. 2016); see Accenture Global Servs., GmbH v. Guidewire
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Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (admonishing that "the
important inquiry for a § 101 analysis is to look to the claim"); see also
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n,
776 F.3d 1343, 1346 (Fed. Cir. 2014) ("We focus here on whether the claims
of the asserted patents fall within the excluded category of abstract ideas.").
"An abstract idea can generally be described at different levels of
abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). As our reviewing court has cautioned, however, characterizing
claims at a "high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016); see
Thales Visionix Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir. 2017)
(we must "articulate what the claims are directed to with enough specificity
to ensure the step one inquiry is meaningful.").
Appellants do not persuade us that the abstract ideas identified by the
Examiner are untethered from the language of and over-generalize the
claims. As the Examiner's analysis shows, the focus of the claims is the
abstract idea of an idea of itself. Although the Examiner states at a high
level of abstraction that the claims are "directed to the abstract idea of
managing incident reports," and omits the specifics of how each specific
step in the claim falls within the category of an abstract idea, we determine
that the abstract idea proposed by Examiner still is sufficiently tethered to
the language of the claims. As noted supra, the Examiner properly and
reasonably concluded the claim is directed to an abstract idea involving an
idea of itself, i.e., data collection, analysis, and comparisons using inputted
routing profile rules. Final Act. 2-4.
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Additionally, Appellants argue the claims improve on existing
technological processes by addressing the problem of "difficulties
encountered in routing the incident report to the correct reviewers and in
tracking the progress of the review process." App. Br. 5-7 (citing Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2358 (2014) (holding
claims become patent eligible when "they [improve] an existing
technological process"). We disagree with Appellants.
The Specification states the claims address the problem of distributing
incident reports and "tracking of the progress of the reviews to ensure timely
resolution of the incidents" and solves the problem by using electronic report
forms and following routing profiles for each of the reports that will allow
for auditing of the reports. Spec. 1-4. However, we do not see, nor do
Appellants direct our attention to, where or how the Specification discusses
a specialized process for providing recommendations or specific means to
improve the relevant technology. Providing a simple and reliable way to
create and track incident reports is not a technical improvement in the
claimed generic computer-assisted system, application server, or database;
rather, it is an abstract idea that merely processes incident reports and/or data
using genetic computer components. See Spec. 1--4.
Additionally, we are not persuaded the claims recites a specific
improvement to computer functionality or a computer-related technology,
because Appellants have not provided evidence of such. For example,
Appellants have not demonstrated how the claims improve computer
functionality or improve computer related technology by solving
"difficulties encountered in routing the incident report to the correct
reviewers and in tracking the progress of the review process." App. Br. 6.
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Based on the foregoing reasons, we determine the claims relate to the
concept of managing incident reports, which can be performed as a mental
process by a person having access to the reporting requirements and
processes. 3 Accordingly, we agree with the Examiner that claim 21 and its
dependent claims are directed to an abstract idea.
Step 2
Under the second step of the Alice framework, the Examiner
determines the claims do not recite additional limitations amounting to
significantly more than the claimed abstract idea to transform the nature of
the claim into a patent-eligible concept. Final Act. 3-6; Ans. 5. The
Examiner finds that the additional limitations "amount( s) to no more than a
generic computer system comprised of an application server and a database."
Final Act. 5. Specifically, the Examiner determines that the claimed
invention uses a conventional computer, functions, and network to present
data to a user, obtain data, input rules, and route the data based on the
inputted rules and does not add anything significant beyond the basic
computer, computer functions, and computer network. Final Act. 3-5; Ans.
3 See Synopsys, 839 F.3d at 1146-47 ("While the Supreme Court has altered
the § 101 analysis since CyberSource in cases like Mayo and Alice, we
continue to 'treat[] analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category."' (Brackets in original)
(quoting Elec. Power Grp., 830 F.3d at 1354)); see also CyberSource, 654
F.3d 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.").
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4, 6. The Examiner further finds that the claim elements are conventional in
the art and do not provide an improvement to a computer or any other
technology. Final Act. 3-5; Ans. 5-6.
Appellants argue that the system is not a generic computer, but rather
a "specifically-programmed machine that can provide a system for incident
reporting." App. Br. 6. However, Appellants do not provide sufficient
evidence to show how that is the case other than to quote the Specification.
App. Br. 5-6.
Accordingly, when the limitations of the claims are considered,
individually and as an ordered combination, they amount to nothing more
than an attempt to patent the abstract idea embodied in the steps of the claim.
See Final Act. 3-5; Ans. 4---6. For these reasons, Appellants have not
apprised us of error in the Examiner's determination that the claims are
directed to patent-ineligible subject matter. Accordingly, we are not
persuaded of error and sustain the Examiner's rejection of claims 21-23, 25-
30, 41--46, and 48 under 35 U.S. C. § 101.
35 U.S.C. § 112, second paragraph rejection
The Examiner rejected claim 25 under 35 U.S.C. § 112, second
paragraph, as being indefinite because the claim depends from cancelled
claim 24. Final Action. 6-7. Appellants indicate in the Appeal Brief that
Appellants meant to have claim 25 depend from claim 21. App. Br. 7.
Thus, Appellants request that the Examiner enter an Examiner's Amendment
changing claim 25's dependency to claim 21 and to, thereby, withdraw the
indefiniteness rejection. App. Br. 7. The Examiner did not enter an
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Examiner's Amendment. Therefore, the indefiniteness rejection of claim 25
is sustained.
35 U.S.C. § 103 (a) rejections
Claim 21
Claim 21 is a computer-assisted system that requires a routing profile
to route the incident report through the review process and an application
server that updates the review status of the incident report through the
process. The Examiner finds that these limitations are taught by the
combination of Carlson and Ouchi. Final Act. 7-13. Appellants argue that
the Examiner is in error for several reasons. App. Br. 8-12.
First, Appellants contend that there is no motivation to combine the
references. App. Br. 10. Specifically, Appellants contend that the Examiner
has not provided a credible reason to combine Carlson's incident reporting
system with Ouchi's workflow system. App. Br. 10. We do not find this
argument persuasive as it amounts to attorney argument without supporting
evidence or explanation. See In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (stating that attorney's arguments cannot take the place of evidence).
Additionally, we do not find this argument persuasive as the Examiner
provides a specific motivation to combine the references and Appellants do
not address the Examiner's specific finding. Final Act. 10-11.
Second, Appellants contend that Carlson fails to teach a routing
profile and that Ouchi does not overcome this deficiency. App. Br. 11.
However, the Examiner cited specifically to Ouchi for this limitation where
Ouchi teaches a specific workflow process. Final Act. 9. Additionally, as
indicated by the Examiner (Ans. 7), Appellants do not provide any reason as
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to why either Carlson or Ouchi fails to teach this limitation. Thus, we do not
find this argument persuasive.
And, lastly, Appellants contend that the references fail to teach an
application server for updating the review status. App. Br. 11. Specifically,
Appellants argue that Carlson discloses tracking and updating the status of
corrective actions, which is not the same as updating sequential review steps
of an incident report. App. Br. 11. Additionally, Appellants contend that
Ouchi fails to overcome Carlson's deficiencies. App. Br. 12. We disagree.
The Examiner finds that Carlson teaches a supervisory interface that
allows the tracking and updating of corrective actions. Ans. 8-9.
Additionally, the Examiner finds that Ouchi teaches a system and method of
routing workflow for a particular process. Final Act. 9. Thus, the Examiner
finds that it is the combination of Ouchi' s process of routing workflow with
Carlson's status update of each corrective action (i.e., each workflow step)
teaches the disputed limitation. Final Act. 9-12; Ans. 10-11.
On this record, we are not persuaded the Examiner erred, because
Appellants have not specifically addressed the Examiner's findings. Instead,
Appellants' argument constitutes an attack on the references individually,
rather than a challenge to the Examiner's combination of the teachings of the
references. In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413 (CCPA 1981) (one cannot show nonobviousness by
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attacking references individually where the rejections are based on
combinations of references).
For the reasons indicated above, then, we sustain the Examiner's
rejection of claim 21.
Claims 22, 23, 25-29, 41-45, and 48
Appellants argue that the rejection of claims 22, 23, 25-29, 41-45,
and 48 should be reversed for the same reasons as indicated above with
respect to independent claim 21. App. Br. 12. As such, we affirm the
rejection of these claims for the same reasons indicated above.
Claims 30 and 46
Appellant argues that the rejection of claims 30 and 46 should be
reversed for the same reasons indicated above with respect to independent
claim 21 and because the Voronov reference used for claims 30 and 46 does
not overcome the deficiencies indicated above with respect to Carlson and
Ouchi. App. Br. 12-13. Thus, for the same reasons indicated above with
respect to claim 21, we affirm the rejection of claims 30 and 46.
CONCLUSIONS
The Examiner did not err in finding that claims 21-23, 25-30, 41--46,
and 48 are directed to a judicial exception, without significantly more.
The Examiner did not err in rejecting claim 25 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter for which the inventor regards as
the invention.
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The Examiner did not err in rejecting claims 21-23, 25-29, 41--45,
and 48 under 35 U.S.C. § 103(a) as unpatentable over Carlson in view of
Ouchi.
The Examiner did not err in rejecting claims 30 and 46 under
35 U.S.C. § 103(a) as unpatentable over Carlson, Ouchi, and Voronov.
SUMMARY
We affirm the Examiner's rejection of claims 21-23, 25-30, 41--46,
and 48 under 35 U.S.C. § 101.
We affirm the Examiner's rejection of claim 25 under 35 U.S.C. §
112, second paragraph.
We affirm the Examiner's rejection of claims 21-23, 25-30, 41--46,
and 48 under 35 U.S.C. § 103(a).
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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