Ex Parte Chancey et al

Patent Trial and Appeal Board

Jul 14, 2017

12546841 (P.T.A.B. Jul. 14, 2017)

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.
12/546,841 08/25/2009 Raphael P. Chancey AUS920070789US1 4143
48916 7590
Greg Goshorn, P.C.
9600 Escarpment Blvd.
Suite 745-9
AUSTIN, TX 78749
EXAMINER
FLEISCHER, MARK A
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
07/17/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAPHAEL P. CHANCEY
and EDUARDO T. KAHAN
Appeal 2016-004864
Application 12/546,8411
Technology Center 3600
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is International Business
Machines Corp. (IBM). App. Br. 3.
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Application 12/546,841
INVENTION
Appellants’ application relates to the management of actionable assets
with respect to a computing solution. Abstract. Claim 1 is illustrative of the
appealed subject matter and reads as follows:
1. A method comprising:
identifying a computing asset, stored on a computer-
readable storage medium, for incorporation into a business
model corresponding to a tooling;
downloading, by a processor, from the computer-readable
storage medium, the asset from an asset repository;
disassembling, by the processor, the asset into a plurality
of artifacts;
identifying an artifact of the plurality of artifacts for
inclusion into the business model;
reconfiguring, by a processor, the business model to
conform with the inclusion of the identified artifact;
incorporating, by the processor, the identified artifact into
a business computing solution represented by the business
model; and
implementing, by the processor, the business computing
solution, including the identified artifact.
REJECTIONS
Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to
patent ineligible subject matter.
Claims 1, 4—8, 11—15, and 18—202 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Carlson et al. (US
2 The Examiner included claim 21 in the rejection heading. Final Act. 8.
Claim 21 has been canceled. App. Br. 23. We find the Examiner’s
inadvertent reference to claim 21 amounts to harmless error. Here, we
identify the correct claims for clarity.
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Application 12/546,841
7,895,563 B2; issued Feb. 22, 2011) (“Carlson”) and Coqueret et al. (US
2009/0083268 Al; published Mar. 26, 2009) (“Coqueret”).
Claims 2, 3, 9, 10, 16, and 17 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Carlson, Coqueret, and Admitted
Prior Art.
Claims 1—20 stand provisionally rejected on the ground of non-
statutory obviousness-type double patenting as being unpatentable over
claims 1—20 of copending Application No. 12/325,288 in view of Carlson.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
Rejection of Claims 1—20 under 35 U.S.C. § 101
Appellants contend the Examiner erred in rejecting claim 1 as directed
to patent ineligible subject matter. App. Br. 8. Appellants argue that the
claimed subject matter is directed to physical components that may change
and, therefore, directly affect the operation of the computer itself. Id. at 9.
Appellants further argue that claim 1 would not preempt others from
“employing the same concept.” Id. Appellants also argue that the claimed
solution is necessarily rooted in computer technology in order to overcome a
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problem specifically arising in the realm of computer networks. Id. (citing
DDR Holdings., LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Alice Corp. Pty, Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66 (2012)). The first step in the analysis is to “determine whether the
claims at issue are directed to one of those patent-ineligible concepts,” such
as an abstract idea. Id. (citing Mayo, 566 U.S. at 77—78). If the claims are
directed to a patent-ineligible concept, the second step in the analysis is to
consider the elements of the claims “individually and ‘as an ordered
combination’” to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 566 U.S. at 79, 78). 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.
(brackets in original) (quoting Mayo, 566 U.S. at 72—73). The prohibition
against patenting an abstract idea “‘cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment’ or
adding ‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593,
610—11 (2010) (citation omitted).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that limitations of the independent claims are directed to
“identifying a computing asset,” “downloading ... the asset from an asset
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repository,” “disassembling ... the asset,” “identifying an artifact [to
include] into the business model,” “reconfiguring, the . . . model,” and
“implementing ... the business computing solution,” and are “directed
towards mathematical concepts and relationships and concomitant
algorithms associated with business modeling and maintaining computer-
based inventories of assets,” and are, therefore, “also a species of
fundamental economic practices and thus directed to abstract ideas.” Final
Act. 7.
The steps of claim 1 are similar to the steps that the Federal Circuit
determined were patent ineligible in Content Extraction & Transmission v.
Wells Fargo Bank, National Association, 776 F.3d 1343 (Fed. Cir. 2014),
and more recently, in Electric Power Group LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016).
In Content Extraction, the Federal Circuit considered the patent
eligibility of a method claim for “processing information from a diversity of
types of hard copy documents.” Content Extraction, 776 F.3d at 1345.
Applying step one of the Alice framework, the Federal Circuit concluded the
claim was “drawn to the abstract idea of 1) collecting data, 2) recognizing
certain data within the collected data set, and 3) storing that recognized data
in a memory”—concepts that the court noted were “undisputedly well-
known.” Id. at 1347.
In Electric Power, the method claims at issue were directed to
“performing real-time performance monitoring of an electric power grid by
collecting data from multiple data sources, analyzing the data, and
displaying the results.” Elec. Power Grp., 830 F.3d at 1351—52. There, the
Federal Circuit held that the claims were directed to an abstract idea because
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“[t]he advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions.”
Id. at 1354.
Here, as in Content Extraction and Electric Power, the advance the
claims purport to make is a process of gathering and analyzing information,
then incorporating the information, and not any particular assertedly
inventive technology for performing those functions. See, e.g., Elec. Power
Grp., 830 F.3d at 1354.
We also agree with the Examiner that the claims do not provide an
improvement to the functioning of the computer itself. Final Act. 2—3; Alice,
134 S. Ct. at 2359-60. Other than generic computer components (e.g., a
computer-readable storage medium and a processor), substantially the same
problem and solution would apply to managing the claimed assets manually.
Thus, unlike DDR Holdings, neither the problem nor the solution is specific
to computers. Viewed as a whole, Appellants’ claims contain no more than
an abstract idea for algorithms associated with business modeling and
maintaining computer-based inventories of assets via some unspecified,
generic computer.
Turning to the second step of the Alice inquiry, we find nothing in
claim 1 that adds anything “significantly more” to transform the abstract
concept of maintaining computer-based inventories of assets into a patent-
eligible application. Alice, 134 S. Ct. at 2357. We are not persuaded by
Appellants’ arguments that the claims recite additional elements that
transform the abstract idea into a patent-eligible application because the
arguments are based on an overly narrow construction of the claimed
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elements and on additional elements not recited or required by the claims.
See App. Br. 8—9; Reply Br. 2. Appellants argue that “[t]he claimed subject
matter is directed to, among other things the selection, disassembly and
incorporation of computing assets, which may include software, hardware
and documentation, all of which are physical components that may change
and, therefore, directly affect the operation of the computer itself.” App.
Br. 9.
Appellants’ argument is not persuasive because it is based upon an
overly narrow construction of the term “computing asset.” When given the
broadest reasonable construction in light of the Specification, that term does
not require software, hardware, and documentation that are physical
components that directly affect the operation of the computer itself.
Appellants’ arguments are also based upon elements not recited or
required by the claims. Appellants argue that “[a]n ‘implementation’ of a
more efficient computing solution may, among other advantages, speed
processing, memory usage and so on, thereby making the computer itself
more efficient.” Reply Br. 2. However, no such limitations appear in the
claims. Claim 1 recites “implementing, by the processor, the business
computing solution, including the identified artifact.” App. Br. 17.
Thus, Appellants have not persuasively rebutted the Examiner’s
finding that the claim is not directed to the types of components and
software that improve the functioning of a computer itself. See Ans. 2;
Reply Br. 2. Instead, when most broadly and reasonably construed, the
claimed gathering of “assets from an asset repository” and the subsequent
“reconfiguring, by a processor, the business model to conform with the
inclusion of the identified artifact” equate to the fundamental business
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practice of considering an inventory of assets and utilizing those assets to
further business objectives. See Ans. 3. No technological advance is
evident in the present invention, and Appellants do not identify any problem
particular to computer networks and/or the Internet that claim 1 allegedly
overcomes.
Moreover, we are unpersuaded by Appellants’ argument that the
claims do not preempt every application of some abstract idea and are,
therefore, patentable. See App. Br. 9. Lack of preemption does not make
the claims any less abstract. See buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture Glob. Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013);
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”).
Accordingly, we sustain the Examiner’s rejection of claims 1—20
under 35 U.S.C. § 101.
Rejections of Claims 1—20 under 35 U.S.C. § 103(a)
In rejecting claim 1 for obviousness, the Examiner found that the
combination of Carlson and Coqueret teaches or suggests all of the recited
limitations of claim 1.
Appellants contend the Examiner erred because the terms “asset” and
“artifacts” are conflated in the Final Action. App. Br. 10. Appellants argue
that “there is simply no suggestion [in Carlson] for the manner in which the
claimed subject matter manipulates artifacts that have been disassembled
from ‘assets,’” as claim 1 requires. Id.
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We are not persuaded by Appellants’ arguments. The Examiner
found that Carlson teaches a software asset that is a set of one or more
related artifacts that have been created or harvested for the purpose of
applying that asset repeatedly in subsequent development environments.
Final Act. 9 (citing Carlson Abstract). The Examiner also explained in the
Answer that “[t]he distinction between ‘assets’ and ‘artifacts’ is principally
one of scale . . . code that is part of a larger body of code.” Ans. 4.
Appellants have not persuasively rebutted the Examiner’s findings.
See Reply Br. 3. In particular, Appellants have not shown that the
Examiner’s interpretations of “assets” and “artifacts” are overly broad,
unreasonable, or inconsistent with the Specification.
Appellants also contend the Examiner “erred by relying upon cited art
that describes using a business model to modify an implementation model to
suggest modifying a business model in response to a change in the
implementation model or solution.” App. Br. 10—11. Appellants argue that
Carlson and Coqueret are directed to employing a business model to select
and retrieve assets that are listed in the business model rather than
identifying assets for “incorporation into the business model,” as claim 1
requires. Id. at 11.
Appellants’ arguments are unpersuasive. The plain language of claim
1 does not require incorporating assets “into the business model,” as
Appellants contend. See Reply Br. 3. Rather, claim 1 recites “incorporating,
by the processor, the identified artifact into a business computing solution
represented by the business model.” App. Br. 17. Moreover, although
Appellants argue that “Specifically, there appears to be some confusion over
the terms ‘business model’ and ‘business solution’” (App. Br. 11; Reply
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Br. 3), Appellants do not persuasively explain how the Examiner’s has
allegedly confused the two limitations. See id.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Carlson and Coqueret teaches of suggests the
disputed limitations of claim 1.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claim 1, as well as the 35 U.S.C. § 103(a) rejection of
independent claims 8 and 15, which Appellants argue are patentable for
similar reasons. App. Br. 8, 10, 12. We also sustain the Examiner’s
rejection of dependent claims 4, 5, 7, 11, 12, 14, 18, and 19, for which
Appellants make no separate arguments for patentability. Id. We also
sustain the Examiner’s rejection of dependent claims 2, 3, 9, 10, 16, and 17,
for which Appellants make no separate arguments for patentability. Id. at
14.
With regard to dependent claims 6, 13, and 20, Appellants argue that
the Examiner has disregarded the term “automatically,” recited in those
claims. App. Br. 13.
We are not persuaded the Examiner erred. The Examiner applied
legal precedent in finding broadly providing an automatic way to replace a
manual activity, which accomplishes the same result, is not sufficient to
distinguish over the prior art. See Ans. 4 (citing MPEP § 2144.04; Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
(“Applying modem electronics to older mechanical devices has been
commonplace in recent years.”)); In re Venner, 262 F.2d 91, 95 (CCPA
1958). Appellants have not provided persuasive evidence or argument to
show that modifying Carlson to provide for automatically adjusting the
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structural model would have been “uniquely challenging or difficult for one
of ordinary skill in the art.” Leapfrog, 485 F.3d at 1162 (citing KSR Int 7
Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)).
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of dependent
claims 6, 13, and 20.
Provisional Rejection of Claims 1—20 for
Nonstatutory Obviousness-type Double Patenting
The Examiner rejected claims 1—20 on the ground of non-statutory
obviousness-type double patenting. Final Act. 14—15. Because Appellants
do not contest the merits of the Examiner's rejection, we pro forma sustain
the Examiner’s rejection on the ground of non-statutory obviousness-type
double patenting.
DECISION
We affirm the decision of the Examiner rejecting claims 1—20.
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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