Ex Parte Carrato et al

Patent Trial and Appeal Board

Jul 23, 2018

12330821 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/330,821 12/09/2008
76933 7590 07/25/2018
IBM (END-KLS)
c/o Kennedy Lenart Spraggins LLP
301 Congress Avenue
Suite 1350
AUSTIN, TX 78701
FIRST NAMED INVENTOR
Anthony L. Carrato
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.
END9200803 SOUS 1 1494
EXAMINER
KONERU, SUJAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
07/25/2018 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
hanna@klspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY L. CARRATO,
SIEDS EITENS,
JOHN A. F ALKI, and
ROBERT G. LAIRD
Appeal2016-007538
Application 12/330,821 1
Technology Center 3600
Before HUBERT C. LORIN, MICHAEL W. KIM, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Anthony L. Carrato, et al. (Appellants) seek our review under
35 U.S.C. § 134(a) of the Final Rejection of claims 1, 5-9, 12-14, and 18-
20. We have jurisdiction under 35 U.S.C. § 6(b).
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 1.
Appeal2016-007538
Application 12/330,821
We AFFIRM.
SUMMARY OF DECISION
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method of evaluating service
oriented architecture ('SOA') governance maturity, the method
compnsmg:
receiving, by a computer, from a plurality of predetermined
stakeholders in the SOA for a plurality of SOA governance
capabilities, a stakeholder assessed value representing the
current maturity of each of the plurality of SOA governance
capabilities;
receiving, by the computer, from the plurality of predetermined
stakeholders in the SOA for a plurality of SOA governance
capabilities, a desired stakeholder maturity value representing a
desired maturity of each of the plurality of SOA governance
capabilities;
determining, by the computer, for each of the plurality of SOA
governance capabilities in dependence upon the plurality of
stakeholder assessed values from the stakeholders, a capability
value for each of the plurality of SOA governance capabilities,
wherein the capability value is a single value representing the
maturity of the SOA governance capability calculated using a
predetermined formula;
assigning, by the computer, each of the SOA governance
capabilities to a domain;
determining, by the computer, in dependence upon the capability
values for each of the plurality of SOA governance capabilities
of each domain, a domain maturity value for each domain,
wherein the domain maturity value is a single value representing
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the maturity of the governance of the domain calculated using a
predetermined formula;
determining, by the computer, in dependence upon the domain
maturity values for each domain an SO A governance maturity
value;
determining, by the computer, for each of the SOA governance
capabilities in dependence upon the plurality of desired
stakeholder maturity values, a desired capability value for each
of the SOA governance capabilities,
determining, by the computer, in dependence upon the desired
capability values for each of the SOA governance capabilities, a
desired domain maturity value for each domain;
communicating, by the computer, the domain maturity value for
each domain, the desired domain maturity value for each domain,
and the SOA governance maturity value to the predetermined
stakeholders of the SOA;
creating, by the computer, recommendations for SOA
governance dynamically in dependence upon the SOA
governance maturity value, the domain maturity value, and the
desired domain maturity value; and
communicating, by the computer, the recommendations for SOA
governance to the predetermined stakeholders.
THE REJECTION
The following rejection is before us for review:
Claims 1, 5-9, 12-14, and 18-20 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
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ISSUE
Did the Examiner err in rejecting claims 1, 5-9, 12-14, and 18-20
under 35 U.S.C. §101 as being directed to judicially-excepted subject
matter?
ANALYSIS
The rejection of claims 1, 5-9, 12-14, and 18-20 under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
The Appellants argued these claims as a group. See App. Br. 7-19.
We select claim 1 as the representative claim for this group, and the
remaining claims 2, 5-9, 12-14, and 18-20 stand or fall with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1 sets out a scheme for communicating recommendations for
SOA (Service Oriented Architecture) governance to predetermined
stakeholders. Generally-speaking, claim 1 describes a method whereby a
generic computer2 performs nine steps for processing eight types of
information in order to provide recommendations. That is, a generic
computer
• "receiv[ es]" information A from a plurality of predetermined
stakeholders in the SOA;
• "receiv[ es] information B from the plurality of predetermined
stakeholders in the SOA;
• "determin[es] information C for each of [a] plurality of SOA
governance capabilities;
2 Specification, 14 :21-24: "Data processing systems useful in evaluating
service oriented architecture ('SOA') governance maturity according to
various embodiments of the present invention may include computers,
servers, routers, other devices, and peer-to-peer architectures, not shown in
Figure 1, as will occur to those of skill in the art."
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• "assign[ s ]" information C to a domain;
• "determin[ es]" information D;
• "determin[ es]" information E;
• "determin[es]" information F;
• "determin[es]" information G;
• "communicat[es]" information D, G, and A "to the predetermined
stakeholders of the SOA";
• "creat[ es]" information H,
where information
A = "a stakeholder assessed value representing the current
maturity of each of [a] plurality of SOA governance
capabilities";
B = "a desired stakeholder maturity value representing a desired
maturity of each of the plurality of SOA governance
capabilities";
C = "a capability value for each of the plurality of SOA
governance capabilities [in dependence upon the plurality of
stakeholder assessed values from the stakeholders] wherein the
capability value is a single value representing the maturity of the
SOA governance capability calculated using a predetermined
formula"·
'
D = "a domain maturity value for each domain, wherein the
domain maturity value is a single value representing the maturity
of the governance of the domain calculated using a
predetermined formula [in dependence upon the capability
values for each of the plurality of SOA governance capabilities
of each domain]"
E = "maturity values for each domain an SOA governance
maturity value [in dependence upon the domain]";
F = "a desired capability value for each of the SOA governance
capabilities [for each of the SOA governance capabilities in
dependence upon the plurality of desired stakeholder maturity
values]";
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G = "a desired domain maturity value for each domain [in
dependence upon the desired capability values for each of the
SOA governance capabilities]";
H = "recommendations for SOA governance dynamically in
dependence upon" information A, D, and G.
The result of this scheme - i.e., information H - is communicated to
predetermined stakeholders.
Alice Corp. Pty. Ltd. 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 3 5 U.S. C. § 101.
According to Alice step one, "[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that claim 1 is
directed to the abstract idea of evaluating service oriented
architecture governance maturity comprising receiving SOA
governance capabilities from stakeholders, receiving a desired
stakeholder maturity value representing a desired maturity of
each of the plurality of SOA governance capabilities,
determining a capability value for each of the governance
capabilities, assigning each of the SOA governance capabilities
to a domain, determining a domain maturity value for each
domain, determining an SOA governance maturity value,
determining a desired capability value and determining a desired
domain maturity value for each domain, communicating the
domain maturity value and the SOA governance maturity value
to the predetermined stakeholders of the SOA, creating
recommendation for SOA governance, and communicating the
recommendations for SOA governance to the stakeholders.
Final Rej. 3--4. According to the Examiner, "[t]his can be considered an
abstract idea because the claims are related to organized human activity
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since stakeholder data is received, determined and communicated and the
claims also are related to mathematical relationships." Final Rej. 4.
The Appellants do not challenge the Examiner's characterization of
the concept claim 1 is directed to, but rather characterize it more simply as,
for example, "[ e ]valuating SOA governance maturity" (App. Br. 16). The
concept can be characterized even more simply; that is, providing
recommendations. 3 The method of claim 1 seeks to provide, more
specifically, "recommendations for SOA governance dynamically in
dependence upon" information A, D, and G. But given that SOA "is an
architectural style" (Spec., 1: 16) and "represents a model" (Spec., 1 :21 ), the
difference between providing recommendations per se and providing the
type of recommendations claim 1 specifically provides for is not patentably
consequential. This is so because "[ c ]laim limitations directed to the content
of information and lacking a requisite functional relationship are not entitled
to patentable weight because such information is not patent eligible subject
matter under 35 U.S.C. § 101." Praxair Distribution, Inc. v. Mallinckrodt
Hospital Products IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018). Cf SAP
America, Inc. v. Investpic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018)
("Contrary to InvestPic' s suggestion, it does not matter to this conclusion
whether the information here is information about real investments. As many
3 Cf Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-1241 (Fed. Cir.
2016) ("An abstract idea can generally be described at different levels of
abstraction. As the Board has done, the claimed abstract idea could be
described as generating menus on a computer, or generating a second menu
from a first menu and sending the second menu to another location. It could
be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.").
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cases make clear, even if a process of collecting and analyzing information
is 'limited to particular content' or a particular 'source,' that limitation does
not make the collection and analysis other than abstract." (quoting Elec,
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)
(citing cases)).
The Appellants challenge the determination that the concept to which
claim 1 is directed to, irrespective of how it is characterized, is an abstract
idea. According to the Appellants, "[t]he emphasis of the [Alice] Court is on
concepts that are fundamental and essential to an area of science or
commerce." App. Br. 14.
[I]n the two leading examples of Bilski and Alice, as interpreted
by the Alice Court, hedging and intermediated settlement are
treated as fundamental economic practices, core to the cultural
domain of contracts. Applicants note in particular that both of
these practices are centuries old and so fundamental that
commerce as we know it simply could not be implemented
without them. Claims reading on such abstract ideas according
to present jurisprudence ought not be patentable.
The disproportionate risk of preemption only comes from patents
that claim abstract ideas in the sense of fundamental building
blocks, not just run-of-the-mill abstract ideas that underlie all
inventions. A patent claim is ineligible only when the claim
directly recites this kind of fundamental, building block abstract
idea (Mayol Alice Step 1 ), and preempts all, or [at] least a broad
range, of implementations of the idea (Mayo/Alice Step 2). The
ordinary type of preemption that comes from patent claims is an
accepted part of the patent system-that is the whole point of
claims, to define the metes and bounds of the invention so that
others are preempted from making, using, and selling what's
inside the bounds.
App. Br. 14--16.
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The Appellants argue that the concept the Examiner characterized
claim 1 as being directed to contains "114 words which on its face cannot
possibly be a fundamental building block of anything, certainly not human
ingenuity, science, or technology, not a thing regarding which there should
be any concern at all regarding preemption." App. Br. 9-10. Even when the
concept is more simply described, "[ e ]valuating SOA governance maturity
... has none of the characteristics of an abstract idea according to Alice and
the other recent jurisprudence of 35 US.C. § 101." App. Br. 16. The
Appellants reason, inter alia, that
[t]aking service oriented architecture or 'SOA' as the underlying
accused abstract idea, applicants respectfully submit that,
although it may be a fertile ground of invention, SOA is not at
all a long prevalent practice, a fundamental building block of
human ingenuity, or a basic tool of science. SOA is in fact
practically a 21st century creation, entirely incapable of the
fundamental nature that composes an abstract idea according to
Alice. In sharp contrast with the arbitrage and intermediate
settlements of Bilski and Alice, both of which are hundreds if not
thousands of years of age and entirely fundamental
economically, SOA in fact is only about fifteen years old, a fact
easily determined by quick reference to any number of sources.
App. Br. 16.
The Appellants' central argument is that the concept - whether it be
the Examiner's 114-word description, or the Appellants' more simple
"evaluating SOA governance maturity" - is not an abstract idea because it is
not a fundamental economic practice. The Appellants would presumably
take the same position if the concept were described as providing
recommendations.
However, the abstract idea category is not so limited.
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[I]n applying the § 101 exception, we must distinguish between
patents that claim the "buildin[g] block[s]" of human ingenuity
and those that integrate the building blocks into something more,
Mayo, 566 U.S., at -, 132 S. Ct., at 1303, thereby
"transform[ing]" them into a patent-eligible invention, id., at -
, 132 S. Ct., at 1294. The former "would risk
disproportionately tying up the use of the underlying" ideas, id.,
at--, 132 S.Ct., at 1294, and are therefore ineligible for patent
protection.
Alice, 132 S. Ct. at 2354--2355. Thus, the abstract idea category of
judicially-excepted subject matter broadly covers building blocks of human
ingenuity. Like fundamental economic practices, providing
recommendations is such a building block. Providing recommendations is a
fundamental practice of human behavior that, for example, has long been
universally resorted to, in order to advance a common course of action.
Therefore, like fundamental economic practices, providing
recommendations is an abstract idea. The Examiner's 114-word concept and
the Appellants' more simple "evaluating SOA governance maturity" are no
less abstract. They merely describe the abstract idea at lower levels of
abstraction. 4
Also,
[t]he problem with articulating a single, universal definition of
"abstract idea" is that it is difficult to fashion a workable
definition to be applied to as-yet-unknown cases with as-yet-
unknown inventions. . . . [Thus, instead] of a definition, then,
the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be
4 See footnote 3.
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seen-what prior cases were about, and which way they were
decided.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016). In that regard, we see little difference between the concept of
providing recommendations and, for example, the concept "providing
personalized recommendations" which has been held to be an abstract idea.
See Personalized Media Communications, LLC v. Amazon.Com, Inc., 161
F. Supp. 3d 325 (D. Del. 2015), aff'd, 671 F. App'x 777 (Mem) (Fed. Cir.
2016).
Finally, the claimed method- whereby a generic computer performs
nine steps for processing eight types of information in order to provide
recommendations - focuses on collecting information, analyzing it, and
presenting results. But when "[t]he focus of the asserted claims" is "on
collecting information, analyzing it, and displaying certain results of the
collection and analysis," the claims are directed to an abstract idea. Elec.
Power Grp., 830 F.3d at 1353. That claim 1 more specifically calls for
"recommendations for SOA governance dynamically in dependence upon
the SOA governance maturity value, the domain maturity value, and the
desired domain maturity value; and communicating, by the computer, the
recommendations for SOA governance to the predetermined stakeholders"
does not affect the determination that claim 1 is directed to an abstract idea.
This is so because "collecting information, including when limited to
particular content (which does not change its character as information), [is]
within the realm of abstract ideas." Id. at 1353.
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The Appellants' arguments with respect to the step one determination
have been considered and are unpersuasive as to error in the Examiner's
determination that claim 1 is directed to an abstract idea. We now tum to
step two.
Step two is "a 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."' Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 US 66, 73 (2012)).
In that regard, the Examiner determined
[t]he claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional elements such as a stakeholder assessed
value representing the current maturity of each of the plurality of
SOA governance capabilities and calculating using a
predetermined formula do not recite anything that is beyond
conventional and routine use of computers and the additional
limitations are for mere data gathering, data transformation and
extra solution activity or are merely an extension of the abstract
idea.
Final Rej. 4.
The Appellants argue that
[i]n this case, the claims address the problem of evaluating SOA
governance maturity as an aid to administering SOA governance,
reciting solutions that are necessarily based in computer
technology in order to overcome problems specifically arising in
the realm of business administration. The claims' particular
organization of attributes of SOA governance step beyond what
is well-understood, routine, and conventional in the field and add
meaningful limitations that amount to more than generally
linking the use of the abstract idea to a particular technological
environment. The claims include such additional elements as
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stakeholder maturity values, capability values for governance
capabilities, and domain maturity. The claim elements are
computer-implemented, but they do not merely recite "use a
computer to carry out a business practice," instead reciting a
particular way to automate evaluating SOA governance maturity
in support of business administration, solving at least one
problem faced by business administrators who work with SOA.
The claims recite a domain maturity value and a desired domain
maturity value for each domain and an SOA governance maturity
value by using a predetermined formula, dynamically creating
recommendations for SOA governance using the domain
maturity value, desired domain maturity value, and SOA
governance maturity value, and so on, and so on, each and every
limitation of which individually and collectively all add
significant patentable elements to any abstract idea that could
reasonably be accused of these claims. The present claims recite
significantly more than any abstract idea of which they
reasonably might be accused and are patent eligible under Step
2B of the Mayo/Alice analysis.
App. Br. 18.
The Appellants' argument is unpersuasive. The elements that the
Appellants identify are all part of what the Examiner identifies as the
abstract idea itself. See Final Rej. 3--4. Furthermore, the Appellants'
argument goes to the type of information being collected, analyzed and
provided as recommendations. But, as we have stated, "collecting
information, including when limited to particular content ( which does not
change its character as information), [is] within the realm of abstract ideas."
Elec. Power Grp., 830 F.3d at 1353.
The claimed method employs no more than a general purpose
computer and the steps are no more than employing such a generic computer
for its most basic functions. Cf Bancorp Services, L.L. C. v. Sun Life Assur.
Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he use of a
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computer in an otherwise patent-ineligible process for no more than its most
basic function-making calculations or computations-fails to circumvent
the prohibition against patenting abstract ideas and mental processes."). As
recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." See Alice, 134 S. Ct. at 2358-2359 (concluding claims
"simply instruct[ing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer" not patent eligible); see
also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014)
( claims merely reciting abstract idea of using advertising as currency as
applied to particular technological environment of the Internet not patent
eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1344--45 (Fed. Cir. 2013) (claims reciting "generalized software
components arranged to implement an abstract concept [ of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer" not patent eligible); and
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012)
("Simply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible" (internal citation omitted)).
The Appellants' arguments with respect to the step two determination
have been considered and are unpersuasive as to error in the Examiner's
determination that claim 1 does not include an element, or combination of
elements, sufficient to ensure that the claim 1 method, in practice, amounts
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to significantly more than the ineligible recommendation-providing abstract
idea itself.
We note the Appellants' discussion that the claimed process does not
suffer from a concern over pre-emption. App. Br. 15-16. However, pre-
emption is not a separate test. "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). Because we find the claimed subject
matter covers patent-ineligible subject matter, the pre-emption concern is
necessarily addressed. "Where a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, [] preemption
concerns are fully addressed and made moot." Id. at 1379.
We have considered all of the Appellants' remaining arguments and
are unpersuaded. Accordingly, because representative claim 1, and claims
5-9, 12-14, and 18-20 which stand or fall with claim 1, are directed to an
abstract idea and do not present an "inventive concept," we sustain the
Examiner's determination that they are directed to ineligible subject matter
under 35 U.S.C. § 101. Cf LendingTree, LLC v. Zillow, Inc., 656 F. App'x
991,997 (Fed. Cir. 2016) ("We have considered all ofLendingTree's
remaining arguments and have found them unpersuasive. Accordingly,
because the asserted claims of the patents in suit are directed to an abstract
idea and do not present an 'inventive concept,' we hold that they are directed
to ineligible subject matter under 35 U.S.C. § 101.").
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DECISION
The decision of the Examiner to reject claims 1, 5-9, 12-14, and 18-
20 is affirmed.
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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